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UNH addresses student IP with policy, targeted agreements, communication


By Jesse Schwartz
Published: March 15th, 2017

With a growing number of programs helping undergrads become more active in entrepreneurship and commercialization, issues surrounding student IP ownership have taken on increased importance. At the University of New Hampshire, tech transfer leaders have invested much time and effort in developing a systematic approach to the issue.

“We encourage these students to find all sorts of opportunities to conduct research at the university . . . along a continuum,” says Maria E. Emanuel, PhD, associate director for UNH Innovation and head of the Intellectual Asset Management unit. “It could be anywhere from a student designing their own independent study and seeking mentorship from a UNH faculty member or perhaps seeking mentorship from an external partner, to a student that’s involved with a faculty member’s grant-funded research and working in their laboratory.” Each year, she noted, about 1,800 undergraduates present their research at an annual conference.

With such a large number of student researchers, the need for a systematic approach was clear. Emanuel said that approach is comprised of three categories of tools:

  • the IP policy;
  • agreements to provide guidance and outline responsibility;
  • “engagement” agreements (confidentiality, IP).

Under the university’s newly revised policy, “covered individuals” are defined as all members of the university community — faculty and staff and students, visiting scholars, and others who have a role or a place at the institution. “It can be funded or unfunded efforts, it could be externally funded, internally funded, and other variations,” added Emanuel. Fairness, she noted, was a prime concern.

Basically, a covered individual will own any IP that is created, with three exceptions:

  1. A) Any IP that is created while the individual is conducting their university duties for which they’re employed. “It could be for somebody who receives a salary, or wages, or stipends, or any grant funds,” Emanuel offered.
  2. B) Any IP that is created while an individual is making use of university resources. “This won’t apply to somebody who is using our library or even our network, but it’s more for scenarios like somebody who is using a laboratory or bench or instrumentation,” she explained.
  3. C) IP that involves legal or contractual restrictions on IP ownership. “We see it very frequently with sponsored research agreements, grants, contracts, material transfer agreements, and confidentiality agreements,” noted Emanuel.

There are also specific provisions for graduate students. While they generally fall under similar guidelines to those of other covered individuals, “we do clarify that in those situations where research is carried out in the university or making use of university resources during the course of employment, or part of their degree or postdoc program, the IP rights are owned by the university,” said Emanuel. In addition, she noted, if the IP is developed from work performed under a grant or sponsorship, or also undertaken with other covered individuals who have the duty to assign to the university, then the institution can take IP ownership rights. However, the university waives its ownership rights in favor of the creator, including students, of exempted scholarly works (i.e, dissertations, theses). “But we do retain a non-exclusive royalty-free right to use it for non-commercial purposes only,” she observed.

Undergraduates are treated equally under the policy, which was an important consideration in its development. “We also made sure in the policy that undergraduate students receive appropriate royalty distributions if they are an innovator who create IP that is assigned to the university,” Emanuel stated. “The value I see is we really feel that it supports and encourages this dynamic culture of research, which is one of the values we offer as part of our education.” “If an undergraduate works in a lab side by side with faculty and graduate students, you have to fairly recognize their contribution.”

What is not explicitly stated in the policy, she noted, but an outcome of what she described, is that “all work that is produced by a student for a class assignment remains the property of the student, unless any of the [policy exceptions] are invoked.” A detailed article on UNH’s IP policies and procedures appears in the February issue of Technology Transfer Tactics. To subscribe and get the full article, as well as full access to the publication’s 10-year archive of best practices and success strategies for TTOs, CLICK HERE.

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Why start-ups should care about exit preparedness


By Jesse Schwartz
Published: March 15th, 2017

In his recent blog post, Scott Munro of VC firm iNovia Capital discusses exit preparedness for start-ups, and why it matters. continue reading »

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EAR/ITAR Compliance Workshop: Understanding and Managing Export Control in University Research and Technology Transfer


By Jesse Schwartz
Published: March 15th, 2017

One of the most challenging elements of export control for university research and tech transfer offices is dealing with the transition of controls over technology and technical data. Under U.S. export control regulations, many common university research practices could put you at risk of thousands of dollars in civil or criminal fines or debarment from federal contracts if you haven’t received a “Deemed Export” or technology transfer license.

EAR/ITAR Compliance Workshop: Understanding and Managing Export Control in University Research and Technology Transfer, scheduled for March 23, is an interactive webinar that will review the EAR/ITAR regulations and discuss key definitions of terms related to deemed exports.

Additionally, you will learn about how to establish procedures that ensure you are informed of potential issues early on, allowing you to work with researchers and the export control office to manage them effectively. And at the bottom line, you’ll learn critical steps needed to make certain you can commercialize valuable IP without the threat of noncompliance.

Join expert Kay Ellis, MHR, director of the export control program with the University of Arizona, for this practical and essential webinar – for complete details and to register, CLICK HERE.

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U of South Florida study shows unique benefits of university-based funding for start-ups


By Jesse Schwartz
Published: March 15th, 2017

A recent study from researchers at the University of South Florida (USF) finds that “seed capital” for university start-ups may be especially beneficial if the funding comes from within the universities themselves. continue reading »

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Major India tech transfer organization is shut down for lack of support, CEO says


By Jesse Schwartz
Published: March 15th, 2017

CSIR-Tech, the commercialization arm of India’s Council of Scientific and Industrial Research (CSIR), has been shut down. According to the company’s CEO Amitabh Shrivastava, a lack of legal support, low funding and delays in executing commercial deals with CSIR labs were major causes of CSIR-Tech’s decline. continue reading »

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Cincinnati Children’s and Ben Gurion U launch needle precision start-up


By Jesse Schwartz
Published: March 15th, 2017

Cincinnati Children’s Hospital Medical Center and Ben Gurion University (BGU) in Israel have jointly launched a start-up that aims to make it easier for clinicians to place a needle successfully when attempting vascular access. continue reading »

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Now available: Calculating Economic Damages in Intellectual Property Infringement Cases, 2nd Edition


By Jesse Schwartz
Published: March 15th, 2017

In the all-new 2nd edition of Calculating Economic Damages in IP and Patent Infringement Cases, you’ll find a comprehensive overview of strategies, analysis, case studies, and legal insight to help you calculate and recover the maximum damages incurred due to patent infringement.

Nowhere else will you find such a complete and thorough analysis of current case law and the valuation methods that form the basis of damage awards in IP and patent infringement cases. This completely updated 790-page guide also features new material on case law relating to reasonable certainty and motions to exclude experts in lost profits damages cases. This comprehensive resource is a must-have for all IP professionals, tech transfer executives, and IP attorneys. For complete details, CLICK HERE >>

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WARF licenses myeloma-fighting compound to biotech company


By Jesse Schwartz
Published: March 15th, 2017

The Wisconsin Alumni Research Foundation (WARF), the commercialization arm of the University of Wisconsin, has entered into a licensing agreement with Cellectar Biosciences to commercialize a treatment for myeloma. continue reading »

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Comings and goings


By Jesse Schwartz
Published: March 15th, 2017

•  StartX, a renowned start-up accelerator partnered with Stanford University, has brought in entrepreneur Joseph Huang as its new CEO.

Huang himself is an alumnus of StartX. In 2013, he sold his company WiFiSLAM to Apple for $20 million and has spent the last four years working for the tech giant. Still, Huang has remained active in the StartX community as a mentor and adviser. As he learned during his years at Stanford, “the greatest [teachers] were those who had taken the class in the past.”

The accelerator now has about 1,000 entrepreneurs as part of its network, and the Stanford StartX Fund, a collaborative start-up fund between the university and the accelerator, is looking to create more ways to support not only Stanford entrepreneurs, but also serial entrepreneurs and growth-stage companies. In his new role as StartX CEO, Huang will help lead some of that initiative.

With Huang’s appointment, StartX founder and CEO Cameron Teitelman will move to a chairman role and will remain active in advising, admissions and start-up recruitment.

Source: TechCrunch

– – – – – – – – – – – – – – – – – – –

• The University of Michigan (U-M) has brought on six new members of its technology licensing team to better serve U-M faculty and business partners.

Janai Ramaswamy, a licensing professional and health tech portfolio manager, will serve as a licensing specialist at U-M, with a special focus on medical devices and other health technologies.

Dick Greeley, former director of licensing at Microsoft and former director of strategic planning and investing at Hewlett-Packard, is joining the U-M team as a senior licensing specialist.

Intellectual property and tech licensing expert Stefan Koehler will serve as senior licensing specialist for the life sciences.

Anne Juggernauth, manager of the U-M Tech Transfer Fellows program, will be the new licensing and market specialist, providing market analysis and marketing support for U-M’s patent portfolio.

Hui Chen, who spent four years at Cornell’s Center for Technology Licensing, will help with licensing and technology marketing.

Former U-M lab instructor John Corthell will serve as technology licensing associate, and will be responsible for Material Transfer Agreements (MTAs).

Source: U-M Tech Transfer

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Ohio’s state budget would require commercialization activity be considered in tenure decisions


By Jesse Schwartz
Published: March 8th, 2017

The state of Ohio is introducing a set of proposals in the state budget to encourage its universities to commercialize their research.

The proposed 2018-2019 operating budget would require the boards of trustees at Ohio’s state universities to update their policies on faculty tenure to “promote excellence in instruction, research, service and commercialization.” In other words, faculty members could use their efforts to commercialize technologies as a factor in attaining tenure. In addition, any university seeking incentive funds through the Ohio Department of Higher Education would be required to have such tenure policies.

While universities face new requirements under the budget, faculty members would see more flexibility, says Jeff Robinson, spokesperson for the Ohio Department of Higher Education. The budget would simply add a new option for faculty pursuing tenure, not a requirement.

According to Charles See, assistant deputy chancellor for external relations at the department, Ohio has more than enough innovation and expertise in its university’s faculty members. The trick is to steer them toward research that has market potential, and See believes the new budget would help accomplish this.

The proposed budget also includes the establishment of the Ohio Institute of Technology, which would “prioritize, coordinate and focus all state-funded research.” The Institute would also help universities connect with outside partners to commercialize innovations more rapidly.

Martin Abraham, provost and vice president for academic affairs at Youngstown State University, says that not all faculty research is suited for commercialization, yet the inclusion of tech transfer activity as an avenue for getting tenure is a good idea. “We need to have a lot of different ways for our faculty to get tenure,” Abraham says. In fact, some programs at Youngstown already include commercialization as an option.

Source: Crain’s Cleveland Business

Time is running out on our $100-off charter subscription offer – order by March 31 for only $297 and get three distance learning programs free!

DON’T MISS THIS CHARTER OFFER FOR INDUSTRY-SPONSORED RESEARCH MANAGEMENT, the all-new publication on attracting and managing corporate-sponsored research agreements. Save $100 and get the distance learning collection “Best Practices in Forming and Managing Industry-University Partnerships” (a $397 value) FREE! Click here for details >>

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Next week: Determining Inventorship for University IP


By Jesse Schwartz
Published: March 8th, 2017

The legal standard for inventorship is complex and can be particularly difficult in the context of university research. While filing a patent involving sole inventorship is a breeze, it’s rarely the case in the university setting. Joint inventorship is more common, and it is necessary to evaluate whether the contribution of each individual in the lab — including students and post-docs — constitutes inventive activity.

Even more complexity arises when researchers and labs from more than one institution are involved, or when a scientist with a corporate partner has contributed to the innovation. Things can start to get sticky, egos get bruised, and relationships with key inventors and partners can get damaged. Additionally, incorrectly determining inventorship can lead to patenting and commercialization delays and costly legal headaches.

That’s why Technology Transfer Tactics’ Distance Learning Division has secured patent attorney Sherry L. Murphy of Myers Bigel to lead this important webinar: Determining Inventorship for University IP, scheduled for next Thursday, March 16.

For complete details and to register, CLICK HERE.

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UNeMed’s boot camp training program brings new blood into tech transfer


By Jesse Schwartz
Published: March 8th, 2017

The long-term health of any tech transfer office depends in large part on building the knowledge base of students and faculty across campus — getting those who have an inkling of interest to better understand and participate in university commercialization activity. Having a formal education and training program has been a big step in the right direction for UNeMed, the University of Nebraska Medical Center’s TTO.

UNeMed’s “Tech Transfer Boot Camp” has clearly benefited the students and faculty who have participated in it, but also has also helped strengthen the TTO itself.

“It’s almost like an accelerated training program,” says communications associate Charlie Litton. “We have two interns here [in the TTO] who went through the camp and hit the ground running.” As for the students, “one interviewed at another TTO and was basically offered the position on the spot,” reports Agnes Lenagh, PhD, the licensing specialist who orchestrated the boot camp. “We feel it’s been very strong.”

“One of our mandates is to help educate the campus, and we started with an internship in the office,” adds Steven J. Schreiner, PhD, vice president and director of marketing for UNeMed, and assistant professor of pathology and microbiology at the University of Nebraska Medical Center. “We got a great response, but we can’t take that many people [for internships]. So, the question was, how could we get to more people?”

One of the options was an intense set of classes, and that’s how the boot camp originated. “You can expose them to a lot of information in a hurry,” Schreiner explains.

Litton says that word of the program was spread through “in-house advertising,” including the web site, social medial, and internal communications at the university. “We also used the postdoc association, the graduate student association, the medical school, a video display board — everywhere we could put it out,” adds Schreiner. “It went a little viral, plus we promoted it at other events we held.”

Litton adds that the boot camp did not take all comers. “There was an application process,” he explains. “That was a big factor since when dealing with graduates and PhD candidates you want to make sure they can take the time necessary from other duties. So, for example, they might have needed permission from their PIs.”

The program takes place over a month and meets for two-hour sessions twice a week, representing 14 lecture hours for participants. In addition to the lectures, students may have independent reading assignments, review archived presentations, engage in class and small group discussions, case studies, writing assignments, worksheets, and so on. A commercialization plan is due near the end of the program.

The lecture topics include:

  • Intro to Program & Tech Transfer Basics
  • Opportunity & IP Assessment
  • Marketing Strategy
  • Contract Negotiation & Licensing
  • Science Writing for Marketing
  • Licensing Strategies
  • Project Discussion

The faculty is entirely in-house representing a variety of tech transfer areas of expertise, such as IP, licensing, or marketing. For the exercises, “we provide actual past inventions,” notes Schreiner. “We have exercises to evaluate them, look at the technology scientifically, and understand it. For IP, you have to do IP searches on those same inventions.”

Litton adds that students had to perform their own prior art searches, produce marketing materials, and essentially handle the technology from start to finish. “There was even a little bit of setting up what a licensing agreement looks like,” he adds.

A detailed article on UNeMed’s boot camp program appears in the February issue of Technology Transfer Tactics. To subscribe and get the full article, plus gain access to the publication’s nearly 10-year archive of best practices, case studies, and success strategies for TTOs, CLICK HERE

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