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Drafting Equity Terms for University-Based Start Ups


By Jesse Schwartz
Published: October 18th, 2017

How you structure equity deals with faculty start-ups can have profound effects on both the new venture and the university’s ultimate stake in the fortunes of the company. The wrong moves in the initial license can scare off future investors and dampen the start-up’s prospects for long-term success, but terms that are too favorable for founders and investors can severely reduce the university’s returns when the business reaches a liquidity event.

Striking the right balance is a delicate challenge that requires a full understanding of the financial levers in the deal, and how each party will be impacted as the new venture gains value while taking on new partners — and a more complex cap table. Tech Transfer Central’s Distance Learning Division has teamed up with two university technology licensing experts to bring you this detailed, practical webinar: Drafting Equity Terms for University-Based Start Ups, scheduled for October 26.

For complete program and faculty details or to register, CLICK HERE.

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Webinar tomorrow: Ensuring Cybersecurity to Protect University IP Assets


By Jesse Schwartz
Published: October 11th, 2017

The U.S. government recently identified cybersecurity as “one of the most serious economic and national security challenges we face as a nation,” and the threats are equally severe in countries across the globe. Recently press reports in Britain showed research universities there had experienced more than 1,100 hacking episodes over a one-year period, with cyber thieves targeting IP among other pieces of valuable information.

So what can you do to safeguard your trade secrets and IP? Technology Transfer Tactics and Industry-Sponsored Research Management have teamed up with a world expert on university cybersecurity from Baker Tilly to offer this critically important webinar: Ensuring Cybersecurity to Protect University IP Assets, scheduled for October 12. For complete details and to register, CLICK HERE.

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Save thousands of dollars in staff training costs with the Tech Transfer Central’s All Access Pass


By Jesse Schwartz
Published: October 11th, 2017

Imagine having one affordable resource to meet all of your tech transfer training and education needs…

With Tech Transfer Central’s All Access Pass, you’ll have unlimited access, for your entire staff, to these resources:

  • All live distance learning programs and more than 300 recorded webinars;
  • Current issues of Technology Transfer Tactics each month and all 10 years of best practices and TTO success strategies in our searchable online archive;
  • Anytime access to our subscriber-only online resources – reports, metrics, tools, templates and more!

With this incredibly valuable collection of resources at your fingertips to use whenever you need it, you’ll save thousands of dollars in staff training costs while dramatically expanding professional development opportunities for your entire office – and your faculty.

For complete details and to schedule a quick demo with Distance Learning Director Debi Melillo, CLICK HERE.

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Ensuring Cybersecurity to Protect University IP Assets


By Jesse Schwartz
Published: October 4th, 2017

The U.S. government recently identified cybersecurity as “one of the most serious economic and national security challenges we face as a nation,” and the threats are equally severe in countries across the globe. Recently press reports in Britain showed research universities there had experienced more than 1,100 hacking episodes over a one-year period, with cyber thieves targeting IP among other pieces of valuable information.

With the growing volume and sophistication of cyber attacks, a new level of effort and expertise is required to protect sensitive and confidential information related to your university’s IP assets. So what can you do to safeguard your trade secrets and IP?

Technology Transfer Tactics and Industry-Sponsored Research Management have teamed up with a world expert on university cybersecurity from Baker Tilly to offer this critically important webinar: Ensuring Cybersecurity to Protect University IP Assets, scheduled for October 12.

For complete details and to register, CLICK HERE.

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Drafting Equity Terms for University-Based Start Ups


By Jesse Schwartz
Published: September 27th, 2017

How you structure equity deals with faculty start-ups can have profound effects on both the new venture and the university’s ultimate stake in the fortunes of the company. The wrong moves in the initial license can scare off future investors and dampen the start-up’s prospects for long-term success, but terms that are too favorable for founders and investors can severely reduce the university’s returns when the business reaches a liquidity event.

Striking the right balance is a delicate challenge that requires a full understanding of the financial levers in the deal, and how each party will be impacted as the new venture gains value while taking on new partners — and a more complex cap table. Technology Transfer Tactics’ Distance Learning Division has teamed up with two university technology licensing experts to bring you this highly informative webinar: Drafting Equity Terms for University-Based Start Ups, scheduled for October 26.

For complete program and faculty details or to register, CLICK HERE.

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Patent Eligibility of Software Innovations in a Post-Alice Environment


By Jesse Schwartz
Published: September 20th, 2017

Since the Supreme Court’s decision in Alice v. CLS Bank in 2014, protecting software innovations through the patent process has become more challenging and filled with uncertainty. However, the Federal Circuit and the Patent Trial and Appeal Board (PTAB) have increasingly decided cases interpreting the Alice decision, providing more clarity as well as specific examples of how claims can be structured to maneuver around the Alice decision’s restrictions.

Technology transfer and IP professionals need to be aware of the shifting sands of patent practice for software-related innovations so they can effectively evaluate software-related invention disclosures and craft the strongest, most defensible claims when making an investment in patent protection.

Technology Transfer Tactics’ Distance Learning Division has teamed up with attorney Tyson Benson to lead this detailed session, scheduled for October 4th, that will feature dozens of critical strategies and takeaways: Patent Eligibility of Software Innovations in a Post-Alice Environment.

For complete program details and to register, CLICK HERE.

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New reference: Determination of Royalty Rates for Technology Licensing


By Jesse Schwartz
Published: September 20th, 2017

The just-published Determination of Royalty Rates for Technology is packed with in-depth, expert information to help you determine an appropriate royalty rate for your specific technology. You’ll find straightforward descriptions and guidance on different models used in calculating royalty rates and valuation. With this 42-page resource you’ll receive:

  • A comprehensive review of surveys, data analysis, rules of thumb, profit differential methods and discounted cash flow analysis for determining an appropriate royalty rate for technologies.
  • Guidance on the impact on royalty rates associated with exclusivity, minimum royalty payments, upfront license fees, naked patents, and royalty rates for trade secrets.
  • Examples of various methods used to establish a royalty rate range for use in licensing negotiations including
  • Royalty rate ranges and benchmarks in specific technology sectors

Act now to get this new reference packed with tables and graphics, data analysis, and how-to information on calculating royalty rates for your technologies. For complete details and to order, CLICK HERE.

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Best Practices for Safeguarding University IP When Structuring Deals in China


By Jesse Schwartz
Published: September 13th, 2017

Business opportunities abound in China, both for licensing IP and for university start-ups seeking cost-effective manufacturing options for their products. And while the opportunities are significant and shouldn’t be ignored, neither should the fact that IP theft in China is still a huge problem — and universities need to protect their valuable IP.

Deals made in China can threaten IP rights not just in China, but in markets around the world. If your university is involved in the huge Chinese market or plans to be, it’s critical you understand China’s IP landscape and know how to manage key IP issues — and avert big problems that can demolish the value of your innovations.

That’s why we’ve scheduled an information-packed webinar with one of the world’s foremost experts on licensing and contracting in the Chinese market. Best Practices for Safeguarding University IP When Structuring Deals in China, scheduled for September 26, features renowned China legal expert Dan Harris, an attorney with Harris Bricken in Seattle. He will explore the nuts and bolts of constructing good business deals (including licensing deals) with Chinese partners, what your agreements should include, and how to minimize China-related IP risks. For complete details and to register, CLICK HERE.

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The University-Industry Partnership Distance Learning Collection


By Jesse Schwartz
Published: September 13th, 2017

In this 4-session distance learning collection, top experts outline proven strategies and best practices for drafting partnership agreements, managing COIs, and gaining both new licensing dollars and critical economic development benefits. The University-Industry Partnership Distance Learning Collection includes these four detailed programs:

  • Best Practices for Drafting University-Industry Partnership R&D Agreements
  • Managing Conflicts of Interest in Large-Scale Industry Partnerships
  • The Anatomy of a Great Industry-University Partnership
  • New Models of University-Industry Partnership: U Minnesota’s “MN-IP Create” and “Try and Buy” Programs

To make this outstanding collection most useful to you and your organization, with your purchase you receive all programs on DVD, as well as on-demand video and print transcript. You also receive all program supplemental materials. For complete details on this valuable collection, CLICK HERE.

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Patent Eligibility of Software Innovations in a Post-Alice Environment


By Jesse Schwartz
Published: September 6th, 2017

Since the Supreme Court’s decision in Alice v. CLS Bank in 2014, protecting software innovations through the patent process has become more challenging and filled with uncertainty. However, the Federal Circuit and the Patent Trial and Appeal Board (PTAB) have increasingly decided cases interpreting the Alice decision, providing more clarity as well as specific examples of how claims can be structured to maneuver around the Alice decision’s restrictions.

Technology transfer and IP professionals need to be aware of the shifting sands of patent practice for software-related innovations so they can effectively evaluate software-related invention disclosures and craft the strongest, most defensible claims when making an investment in patent protection.

Technology Transfer Tactics’ Distance Learning Division has teamed up with attorney Tyson Benson to lead this detailed session, scheduled for October 4, that will feature dozens of critical strategies and takeaways: Patent Eligibility of Software Innovations in a Post-Alice Environment.

For complete program details and to register, CLICK HERE.

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NEXT WEEK: Sovereign Immunity as Inter Partes Defense: Legal Guidance and Analysis of Impact on Licensing


By Jesse Schwartz
Published: August 30th, 2017

Legal analysts predict the use of a sovereign immunity defense against inter partes patent challenges will become a reliable strategy for state universities and research institutions — and recent cases appear to support that view. Having the option in their back pocket also opens up the potential for state universities to more easily market their IP to risk-averse licensees, as well as demand a premium when it comes to negotiating terms and royalties.

The University of Florida has led the way by recently using the sovereign immunity defense to successfully end an inter partes challenge, and the University of Maryland soon followed with more to come. But as with most aspects of patent law, it’s not a simple proposition. Timing of your response, joint inventorship, IP ownership entity, and prior legal filings can all impact your defense, and one mistake can mean a waiver of sovereign immunity.

That’s why we’ve asked threeo expert attorneys – including the counsel of record in the UF case — to lead this critical webinar: Sovereign Immunity as Inter Partes Defense: Legal Guidance and Analysis of Impact on Licensing. For complete program and faculty details or to register, CLICK HERE.

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Sovereign Immunity as Inter Partes Defense: Legal Guidance and Analysis of Impact on Licensing


By Jesse Schwartz
Published: August 16th, 2017

Legal analysts predict the use of a sovereign immunity defense against inter partes patent challenges will become a reliable strategy for state universities and research institutions — and recent cases appear to support that view. Having the option in their back pocket also opens up the potential for state universities to more easily market their IP to risk-averse licensees, as well as demand a premium when it comes to negotiating terms and royalties.

The University of Florida has led the way by recently using the sovereign immunity defense to successfully end an inter partes challenge, and the University of Maryland soon followed with more to come. But as with most aspects of patent law, it’s not a simple proposition. Timing of your response, joint inventorship, IP ownership entity, and prior legal filings can all impact your defense, and one mistake can mean a waiver of sovereign immunity.

That’s why we’ve asked two expert attorneys to lead this critical webinar: Sovereign Immunity as Inter Partes Defense: Legal Guidance and Analysis of Impact on Licensing.

For complete program and faculty details or to register, CLICK HERE.

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