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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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New reference: Determination of Royalty Rates for Technology Licensing


By Jesse Schwartz
Published: August 16th, 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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Webinar tomorrow: Marketing Strategies that Attract and Engage Industry Partners


By Jesse Schwartz
Published: August 9th, 2017

Seeking out and establishing industry partnerships shouldn’t wait until an innovation is patented — it should start at disclosure, and the marketing opportunities and efforts must continue to evolve with the technology through the pipeline. Re-evaluating the market space at critical intervals during the evolution of the technology, and involving multiple parties, dramatically increases your chances of getting your innovations to the marketplace.

That’s why we’ve scheduled a targeted, practical webinar program that will provide you with a wealth of how-to advice on developing your marketing strategies to attract and secure solid, long-term industry partnerships.

Technology Transfer Tactics’ Distance Learning Division is partnering with two in-the-trenches experts from Emory University’s Office of Technology Transfer — Marketing Manager Quentin Thomas and Assistant Director of Licensing Cliff Michaels — to share their best practices for attracting lucrative corporate sponsorship agreements. Join them this Thursday, on August 10 for Marketing Strategies that Attract and Engage Industry Partners.

For complete program details and to register, CLICK HERE.

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Webinar tomorrow: Opportunities and Pitfalls in Joint Development and Patent Licensing under the AIA


By Jesse Schwartz
Published: August 2nd, 2017

The America Invents Act created new benefits — but also some unexpected traps — in the patent laws surrounding university-industry collaborations. One key change involves carve-outs for “prior art” that would otherwise invalidate a patent. For example, the work of a “joint inventor” will be disregarded as prior art in certain circumstances. Likewise, an earlier-filed application does not count as prior art against a later-filed application if both applications were commonly owned (e.g., through a joint venture or partnership) at the time the second application was filed. This same prior-art avoidance can be achieved by entering into a “joint research agreement” without formally assigning ownership of the patent.

On the other hand, applicants must be aware of some traps in the law that can jeopardize the validity of patents. Filing an application in the name of the owner (as opposed to the inventor) may forfeit priority rights to a provisional application. Also, the Patent Office and the courts disagree whether a secret offer to sell the invention will be treated as prior art against the patent.

There’s much to consider, and Tech Transfer Central’s Distance Learning Division has scheduled a practical webinar will clarify the risks and benefits facing universities and their industry partners seeking to license jointly developed innovations. Join us tomorrow, August 3rd,  for Opportunities and Pitfalls in Joint Development and Patent Licensing under the AIA. For complete program and faculty details, CLICK HERE.           

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Proven Strategies for Reducing TTO Patent Expenses without Sacrificing Quality


By Jesse Schwartz
Published: August 2nd, 2017

Your TTO’s patent budget is a major line item, and probably the single biggest area where your office can save significant dollars. The technologies you file on, the foreign filing decisions you make, the attorney fees you negotiate, and the firms you use are just some of the key factors that play into whether you spend wisely.

Technology Transfer Tactics’ Distance Learning Division has created a new collection of distance learning programs that target key areas within your patent budget that should be redlined for cost and quality reviews. Each program is led by experts in the field and offer strategic takeaways you can implement immediately. The three-program collection includes:

  • How University TTOs Can Slash Patent Expenses While Improving Patent Quality: Learn real-world lessons directly from the hard-fought cost reductions won by Hamid R. Piroozi, JD, an experienced patent attorney who now serves as the associate director in charge of legal affairs for Purdue’s Office of Technology Commercialization.
  • Best Practices for Cost-Effective Filing of PCT and EPO Patent Applications: While foreign patent applications can certainly be handled stateside, many law firms farm out the work to German firms. You can save thousands by cutting out the middle man, while securing high quality international patent protection. This crucial webinar will teach you how.
  • Maximize Your TTO’s Patent Budget through Effective Use of Patent Counsel: There are dozens of specific ways for you to stretch your budget and get more patents filed for less than you currently spend. This program will feature how-to advice that specifically focuses on the needs and concerns of TTOs. You’ll come away with creative strategies for immediate bottom-line benefits, significantly reducing your legal bills while improving the number and overall quality of your patent filings.

For complete details on this cost-cutting collection and to order, CLICK HERE.

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Don’t miss it tomorrow: Critical workshop on Bayh-Dole compliance


By Jesse Schwartz
Published: July 26th, 2017

The compliance requirements of the Bayh-Dole Act have been a fact of life for universities for the past 37 years, and it’s easy to fall into a sense of complacency, assuming that what these well-establish rules are ingrained in the fabric of the institution. But in most cases, that’s a dangerous and most likely inaccurate assumption.

In fact, that is the conclusion of NIH officials, who have expressed increasing concern that many universities are not fully honoring their obligations to report inventions, provide confirmatory licenses, and submit utilization reports. Their alarm bells went off after their internal reviews noted a significant discrepancy between the number of grants awarded versus the number of subject inventions being reported.

Staff turnover, inadequate training, poor record keeping, and simple complacency all contribute to an alarming lack of compliance, and universities are being urged by both NIH and AUTM to redouble their compliance and auditing efforts. That’s why we’ve scheduled the critical webinar workshop, Bayh-Dole Compliance Check-up: Effectively Address the Challenge of Complacency, scheduled for this Thursday, July 27. For complete details and to register, CLICK HERE.

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The Complete Start-Up Boot Camp for University TTOs


By Jesse Schwartz
Published: July 26th, 2017

For organizations looking to educate their faculty and staff on the challenges associated with launching and successfully managing university start-ups, Technology Transfer Tactics’ Distance Learning Division has created a resource that’s inexpensive, comprehensive, and can be accessed by your staff and faculty wherever and whenever it’s needed.

The Complete Start-Up Boot Camp for University TTOs is the perfect resource to walk you, your staff, and your faculty step-by-step through the venture creation process from launch to exit. This 22-session distance learning series – in three outstanding volumes led by a world-class roster of academic start-up experts – contains over 25 hours of detailed guidance and advice. Each program will provide you with the detailed training and strategies your faculty and staff need to more effectively launch and manage start-ups, as well as foster a vibrant entrepreneurial ecosystem to support them.

For complete details, CLICK HERE.

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Opportunities and Pitfalls in Joint Development and Patent Licensing under the AIA


By Jesse Schwartz
Published: July 19th, 2017

The America Invents Act created new benefits — but also some unexpected traps — in the patent laws surrounding university-industry collaborations. One key change involves carve-outs for “prior art” that would otherwise invalidate a patent. For example, the work of a “joint inventor” will be disregarded as prior art in certain circumstances. Likewise, an earlier-filed application does not count as prior art against a later-filed application if both applications were commonly owned (e.g., through a joint venture or partnership) at the time the second application was filed. This same prior-art avoidance can be achieved by entering into a “joint research agreement” without formally assigning ownership of the patent.

On the other hand, applicants must be aware of some traps in the law that can jeopardize the validity of patents. Filing an application in the name of the owner (as opposed to the inventor) may forfeit priority rights to a provisional application. Also, the Patent Office and the courts disagree whether a secret offer to sell the invention will be treated as prior art against the patent.

There’s much to consider, and Tech Transfer Central’s Distance Learning Division has scheduled a practical webinar will clarify the risks and benefits facing universities and their industry partners seeking to license jointly developed innovations. Join us on August 3rd for Opportunities and Pitfalls in Joint Development and Patent Licensing under the AIA.

For complete program and faculty details, CLICK HERE.

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Finally, a publication devoted to helping universities attract and manage industry partnership! Introducing Industry Sponsored Research Management

CLICK HERE to get a free sample issue

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Marketing Strategies that Attract and Engage Industry Partners


By Jesse Schwartz
Published: July 12th, 2017

If your TTO is like most these days, you are working hard to adapt and thrive in a more partnership-driven world, and your marketing efforts are shape-shifting to meet those demands. One thing should be clear by now: Seeking out and establishing industry partnerships shouldn’t wait until an innovation is patented — it should start at disclosure, and the marketing opportunities and efforts must continue to evolve with the technology through the pipeline.

By constantly re-evaluating the market space and involving multiple parties, you dramatically increase your chances of getting your innovations to the marketplace. But it requires not only the right strategies, but also diligence, dedication, and a healthy dose of hard work. That’s why our Distance Learning Division has scheduled a targeted webinar program that will provide you with a wealth of how-to advice on developing your marketing strategies to attract and secure solid, long-term industry partnerships. Join us on August 10 for Marketing Strategies that Attract and Engage Industry Partners.

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

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Improve the Quality of Invention Disclosures through Researcher Outreach and Education


By Jesse Schwartz
Published: July 5th, 2017

When it comes to invention disclosures, quality far outweighs quantity. In fact, too many weak disclosures can seriously bog down your office, leaving less time to focus on the high-potential IP that is your bread and butter. But how do you ensure that the disclosures you receive are consistently well drafted, so you can efficiently make “go/no go” decisions and focus on the best ones with the greatest chance at successful commercialization?

Most TTOs use a standard disclosure form for researchers to complete, and that can be helpful to get the ball rolling and assist in triage efforts. But it’s not enough. No form can give your TTO the complete picture of the patentability or market potential of an invention. That’s why researcher outreach and education is so vital to the disclosure process. With up-front efforts by the TTO guiding researchers on how to articulate their invention’s commercial viability, your staff will be better prepared to keep your disclosure pipeline well stocked and get your success rate soaring.

Fuentek LLC has had great success assisting universities and research organizations worldwide with this exact task, and Technology Transfer Tactics Distance Learning Division has secured the firm’s Vice President Rebecca Stoughton to lead this high-impact session: Improve the Quality of Invention Disclosures through Researcher Outreach and Education, scheduled for July 31.

For complete program details and to register, CLICK HERE.

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Bayh-Dole Compliance Check-up: Effectively Address the Challenge of Complacency


By Jesse Schwartz
Published: June 28th, 2017

The compliance requirements of the Bayh-Dole Act have been a fact of life for universities for the past 37 years, and it’s easy to fall into a sense of complacency, assuming that what these well-establish rules are ingrained in the fabric of the institution. But in most cases, that’s a dangerous and most likely inaccurate assumption.

In fact, that is the conclusion of NIH officials, who have expressed increasing concern that many universities are not fully honoring their obligations to report inventions, provide confirmatory licenses, and submit utilization reports. Their alarm bells went off after their internal reviews noted a significant discrepancy between the number of grants awarded versus the number of subject inventions being reported.

Staff turnover, inadequate training, poor record keeping, and simple complacency all contribute to an alarming lack of compliance, and universities are being urged by both NIH and AUTM to redouble their compliance and auditing efforts – before the unthinkable happens. That’s why we’ve scheduled the critical webinar workshop,Bayh-Dole Compliance Check-up: Effectively Address the Challenge of Complacency, scheduled for July 27. For complete details and to register, CLICK HERE.

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Don’t miss it next week — CRISPR Confusion: A Legal and Practical Analysis for IP Professionals


By Jesse Schwartz
Published: June 21st, 2017

CRISPR technology holds the promise of providing researchers and technologists with the most powerful genetic tool since the biotechnology revolution began forty years ago. However, legal disputes over patent rights have clouded the prospects for broad dissemination of the technology. In particular, the two university owners of the patents and applications for CRISPR, MIT/Harvard’s Broad Institute and the University of California-Berkeley, have been locked in a bitter interference over which group of inventors has priority.

The Patent Trial and Appeal Board decided earlier this spring that there was no interference between the competing claims. But this is not a best outcome for potential licensees, leaving open the prospect that separate licenses will be needed from both patent owners. The case has not only complicated the promulgation and commercialization of CRISPR-based research, it is also raising important issues surrounding patent practice and licensing, particularly in biotech.

Technology Transfer Tactics’ Distance Learning Division has recruited Kevin E. Noonan, partner with McDonnell Boehnen Hulbert & Berghoff LLP and Chair of the firm’s Biotechnology & Pharmaceuticals Practice Group, to lead this critical and timely webinar, scheduled for June 27th: CRISPR Confusion: A Legal and Practical Analysis for IP Professionals. For complete program details and to register, CLICK HERE.

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