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Technology Transfer Tactics, November 2016 Issue


Technology Transfer Tactics, November 2016 coverThe following is a list of the articles that appear in the November 2016 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 10, No. 11, November 2016

  • Do you practice what you preach on patent prosecution? Check your data. Many technology transfer office directors believe they have established a coherent patent prosecution strategy — but they might be surprised if they look back at their own decisions.
  • As their mission expands, TTOs adopt new metrics to showcase a broader view of contributions. Performance metrics have long been a topic of hot debate among technology transfer professionals as TTOs try to find new and better ways to document their.
  • UPenn lawsuit shows need for keeping close watch on licensees. The University of Pennsylvania’s lawsuit against biotechnology company Genentech illustrates the importance of monitoring royalty payments closely and taking action on underpayments before the situation gets out of hand.
  • Idea Champions are key in total revamp of Notre Dame’s commercialization efforts. Rising expectations have led to a total revamping of the University of Notre Dame’s commercialization structure, resulting in the recently formalized “IDEA (Innovation, Discovery and Enterprise Acceleration) Center.”
  • Pros, cons, and practical challenges of sabbaticals for faculty involved in start-ups. Universities looking to facilitate more start-up activity increasingly are eyeing sabbatical and faculty leave policies to make sure they’re as commercialization-friendly as possible.
  • University in UK creates “managed service solution” for express licensing. University TTOs seeking to become involved with express licensing have, depending upon their resources, several different options. They can create a new agreement and employ their internal IT department to integrate it into their system; they can work with an outside consulting firm to do the same; or they can invest in the use of a platform that, while being used by a number of other TTOs, can be customized for their marketing and licensing purposes.

Posted November 21st, 2016

Technology Transfer Tactics, October 2016 Issue


Technology Transfer Tactics, October 2016 coverThe following is a list of the articles that appear in the October 2016 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 10, No. 10, October 2016

  • Expert blasts standardized equity share agreements for university start-ups. The equity shares required by many universities in their standard license agreements with faculty start-ups cause such agreements to ultimately be unfair to one of the parties, according to Scott Shane, PhD, the A. Malachi Mixon III Professor of Entrepreneurial Studies and professor of economics at Case Western University.
  • TTOs largely silent about new effort pressuring universities to cut ties with patent trolls. Do university TTOs do too much business with patent assertion entities, also referred to as patent trolls? The Electronic Frontier Foundation (EFF), a donor-funded nonprofit that advocates for civil liberties in the digital world, certainly thinks so.
  • New quick license does not include equity share element. A new quick license model, introduced about a year ago by Kansas University, differs from many that have preceded it in at least one important area: It does not require an equity share from the start-up.
  • Easy Access IP model still gaining users as option in TTO licensing toolkit. The Easy Access IP model continues to attract adherents and interest from universities hoping the approach will spur interest in IP that otherwise might go unlicensed and undeveloped.
  • How industry-sponsored research can dovetail with funding for faculty start-ups. The twin mandates to produce more start-ups and at the same time generate more industry sponsorship can be aligned by better bridging the two disciplines, according to several tech transfer leaders.
  • ‘Physicianeers’ to spur innovation in novel medical/engineering school. It sounds like a dream come true for tech transfer professionals — a physician inventor who understands the engineering every bit as much as the clinical side of the innovation. It might sound unlikely, but finding that unique combination of talents could become more common when Texas A&M University opens its new medical school for physician engineers.

Posted October 17th, 2016

Technology Transfer Tactics, September 2016 Issue


Technology Transfer Tactics, September 2016 coverThe following is a list of the articles that appear in the September 2016 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 10, No. 9, September 2016

  • Mayo tech transfer team uses “reverse pitch” strategy to attract more entrepreneurs. Mayo Clinic’s “Think Big Challenge” is not brand new; this month will see the second annual iteration of the event. However, what will be new is an element that appears to flip the traditional approach of “pitching” on its head.
  • Industry-sponsored research deals getting more attention, coming in more varieties. Examples of innovative arrangements between university researchers and corporate product development are increasingly common. One veteran tech transfer executive says that’s at least in part a function of the corporate side of the equation improving its input into the collaborations.
  • NC State’s “IP Free Zones” help define policy, attract student innovators. The term “IP Free Zone” is so relatively new that there is not common agreement as to exactly what it means – and a number of leading tech transfer executives are totally unfamiliar with the term.
  • ‘Startup-in-a-box’ program goes the extra mile to help faculty launch companies. The Indiana University Research & Technology Corporation in Indianapolis has found success with a program called “Spin Up” that devotes an extra measure of assistance to university start-ups.
  • More TTOs work with non-university IP to spur regional economic development. More technology transfer offices are working with non-university IP. In many cases, it’s part of an overhaul of the commercialization ecosystem — often to better integrate the school’s efforts with the economy of the surrounding community.
  • Cambridge Enterprise outreach effort extends to non-technology departments. At Cambridge Enterprise at the University of Cambridge, would-be entrepreneurs in departments not traditionally associated with commercialization have a unique resource in the form of a program called Enterprise Champions.

Posted September 16th, 2016

Technology Transfer Tactics, August 2016 Issue


Technology Transfer Tactics, August 2016 coverThe following is a list of the articles that appear in the August 2016 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 10, No. 8, August 2016

  • Patience, creativity required to find top CEO talent for university start-ups. People involved in nurturing university start-ups will tell you the toughest challenge they face is finding capable talent to come in and take the reins from the scientific founders. Such a move is almost always essential to giving these ventures the kind of launch that brings in investors and gives the fledgling companies a shot at success, they maintain. However, successfully building a business based on new technology requires a specific skill set that is especially hard to find.
  • Harvard’s proactive PR in justifying patent litigation called best practice for tech transfer. As university tech transfer officials begin to see litigation as a more viable option when their patents are infringed, some are also seeing the need to explain themselves better to the public. Most people know little about tech transfer and intellectual property rights, but litigation has a bad reputation and critical media reports are sure to explain the idea of a “patent troll” to readers.
  • Pre-accelerators offer critical early-stage guidance and a bridge to start-up creation. University and investor efforts to support technology commercialization at the earliest possible stage have created entities termed “pre-accelerators,” whose name pretty well explains where they fit in the tech transfer process. But what some call “a trend” others call “business as usual.” Many universities, it turns out, already perform or support the functions of a pre-accelerator without actually calling it by that trendy name.
  • U Denver’s Project X-ITE offers lessons in building an integrated model of innovation. It’s no secret that Denver, Colorado is experiencing an entrepreneurial renaissance, and a novel new initiative at the University of Denver (DU) aims to centralize and drive innovation both within the institution and throughout the city’s booming start-up scene.
  • Licensing Law Roundup: Cases address arbitration in IP license agreements.

Posted August 16th, 2016

Technology Transfer Tactics, July 2016 Issue


Technology Transfer Tactics, July 2016 coverThe following is a list of the articles that appear in the July 2016 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 10, No. 7, July 2016

  • TTOs hunt for investors, new commercialization opportunities in overseas markets. Virtually every TTO is under constant pressure to find more partnerships and sign more deals that are far from easy to secure. But what if you expanded your territory — and your potential chances for success — by setting up shop on the other side of the globe? That’s the thinking behind a growing number of international initiatives TTOs are spearheading in the hopes that they can eventually leverage new ties overseas into benefits with lasting impact at home.
  • Standardized four-phase process leads to influx of industry partnerships. This past June, the Office of Innovation and Industry Alliances at Moffitt Cancer Center in Tampa, FL, announced a three-year deal with Incyte Corp. in Wilmington, DE, to fund three new oncology research programs. This latest agreement caps off a roughly two-year span where the Innovation Office has reaped some $35 million in funding from industry partnerships.
  • NIH, AUTM warn about lax Bayh-Dole compliance among TTOs. Tech transfer programs may need to reassess their Bayh-Dole compliance program after recent warnings from the National Institutes of Health and the Association of University Technology Managers, which both say universities are risking the rights to their inventions if they get complacent.
  • Yissum maximizes IP marketing efforts by harnessing social networks. As the effectiveness of social networking in tech transfer has become increasingly apparent, more and more TTO leaders have engaged with a number of social networks to enhance their marketing efforts. But while many have enjoyed some level of success from their endeavors, it is unlikely that few, if any, can match the nearly 40,000 LinkedIn connections and impressive business achievements achieved by Tamir Huberman, MSc, BSc, vice president of business development for computer science and IT director at Yissum Research Development Company of the Hebrew University of Jerusalem Ltd.

Posted July 18th, 2016

Technology Transfer Tactics, June 2016 Issue


Technology Transfer Tactics, June 2016 coverThe following is a list of the articles that appear in the June 2016 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 10, No. 6, June 2016

  • TTO’s focus on service, business metrics wins over faculty and boosts commercialization output. Additional resources will help any technology transfer operation improve its performance, but what if you also set new expectations and metrics that are specifically aimed at catering to the needs of faculty and researchers? Would such an approach have an appreciable impact on commercialization output? That’s what new leadership at Morgantown, WV-based West Virginia University wanted to know.
  • $25 million settlement with Apple puts NPE licensing strategy back in spotlight. A $24.9 million settlement is noteworthy for the value alone, but how Rensselaer Polytechnic Institute came to that agreement offers insight to tech transfer programs about working with non-practicing entities and challenging big players like Apple. The strategy can work, and it may be more common than you think.
  • What is the “right” royalty share for faculty inventors? Would your university be signing more licensing deals if it would just give its faculty a bigger slice of the royalty pie?
  • Arizona State’s California outpost leads to unique EdTech partnership with west coast VC. They say that few “overnight sensations” really happen overnight, and that is true as well for commercialization partnerships — even though there may often be a dash of good fortune in the recipe. That certainly seems to apply to the recent announcement of The ASU Draper GSV Accelerator.
  • Licensing law roundup. Each year at the AUTM Annual Meeting, Russell E. Levine, a partner at Kirkland & Ellis LLP, gives a talk on the Top 10 Court Cases Affecting Licensing, and a key message from the past year’s crop is this: There are few bright lines around what to do and what not to do. Courts still struggle to balance the many moving parts of license agreement negotiation and contracting, often leaving university TTOs to use their best judgment in crafting documents. Here’s what Levine has to say about the latest patent licensing lawsuits and what TTOs need to know about them.

Posted June 20th, 2016

Technology Transfer Tactics, May 2016 Issue


Technology Transfer Tactics, May 2016 coverThe following is a list of the articles that appear in the May 2016 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 10, No. 5, May 2016

  • To grow more valuable start-ups, focus on scaling up from day one. With all the work, resources, and expertise required to form a start-up, it can be easy to forget that you haven’t crossed the finish line and really have only begun the race.
  • New model of industry collaboration relies on systematic start-up creation. A new model of industry-academia collaboration being applied by a pharmaceutical giant is very rapidly turning university innovations into start-up companies — and in many cases just as quickly shutting the start-up down if the technology fails to reach early milestones.
  • Tech Launch Arizona brings SBIR/STTR assistance under its wing. Tapping into a rich pool of nondilutive funding for university start-ups seems like the perfect job for tech transfer offices, but many TTOs are letting some of that money slip away.
  • Pitt runs successful crowdfunding campaign to boost its student accelerator. Crowdfunding is a relatively new tool in the TTO arsenal for raising start-up funding, but as the University of Pittsburgh has now demonstrated, it can also be a fantastic means of attracting dollars for tech transfer initiatives.
  • University angel networks joining forces to boost start-up funding. “. . . And Duke passes the ball to UNC, who in turn passes it to NC State . . .” You’d never hear those words during the broadcast of an athletic event, and yet universities well-known for their athletic rivalries have proven once again that “competition” is a tricky word when it comes to commercialization of research.
  • Ohio Attorney General boosting tech transfer with unique statewide resource. Technology transfer offices in Ohio are benefitting from an unconventional resource provided through the State Attorney General’s Office: a dedicated Intellectual Property Counsel who supports entrepreneurship throughout the state with best practice information, legal guidance, and an online commercialization reference portal.

Posted May 19th, 2016

Technology Transfer Tactics, April 2016 Issue


Technology Transfer Tactics, April 2016 coverThe following is a list of the articles that appear in the April 2016 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 10, No. 4, April 2016

  • Student IP policies under scrutiny as universities seek balance, but pitfalls persist. It has always been a challenge to make sure that an ever-revolving roster of faculty researchers fully understands an institution’s IP policies. However, in recent years, as undergraduate students have become increasingly engaged in entrepreneurial activities, this challenge has intensified.
  • Special Focus: Start-up strategies for rural universities Technology transfer offices in “flyover” states and more rural areas rarely have easy access to start-up essentials like investors and seasoned entrepreneurs. However, the lack of a ready-made entrepreneurial ecosystem doesn’t mean that universities outside of urban tech corridors can’t launch viable start-ups that contribute to regional economic development.
    • Finding money for start-ups: No easy answers for rural TTOs.
    • Case study 1: University of Wisconsin-Madison.
    • Case study 2: Iowa State University.
    • Case study 3: Oregon State University.
  • UCLA’s blockbuster Xtandi deal shows value of royalty monetization. A hot property can put tech transfer leaders in the position of having to decide whether to bank on future royalties or take the money and run, and the recent blockbuster deal the University of California, Los Angeles made for its cancer drug Xtandi shows just how important that decision can be.
  • Experts share top strategies for creating sustainable proof-of-concept centers. Establishing a proof of concept (POC) center can give a tremendous lift to university tech transfer efforts, but based on a panel of presenters discussing POC best practices at the recent AUTM annual conference in San Diego, not everyone agrees on how and where POC programs work best.

Posted April 20th, 2016

Technology Transfer Tactics, March 2016 Issue


Technology Transfer Tactics, March 2016 coverThe following is a list of the articles that appear in the March 2016 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 10, No. 3, March 2016

  • Establish rigor, system of regular review to optimally manage IP assets. Granted, there is no quick-and-easy way to manage a patent portfolio, but letting things slide is certainly not the answer. Not unless you like the public scorn that often accompanies financial mismanagement.
  • Bring in outside CEO at the right time, when founders are no longer enough. The most successful start-ups have founders who are passionate about the company and eager to lead it into the next stage, but in most cases the faculty founder is not going to be the right person to serve as CEO in the long run. Helping researcher-entrepreneurs understand that and make the transition requires some finesse from tech transfer leaders.
  • U Minnesota unveils royalty-free option in its MN-IP program. Listening to your customers is a key to success in virtually any field, and it is clear that the operators of the University of Minnesota’s MN-IP licensing program have put that principle to good use. While their initial standardized licensing options in the program have proven very successful, the university recently introduced a third option.
  • How to enhance integration between TTOs and sponsored research. Technology transfer, sponsored research and corporate engagement offices must work more closely together than ever, but as activity in each accelerates, finding common ground can be difficult.
  • Heard in the Halls: AUTM 2016.
  • University start-ups benefiting from event scholarship program. What if university tech transfer offices could reduce or eliminate barriers to entrepreneurship by providing business-minded, but financially strapped, students with the funds needed to attend start-up events such as pitch competitions and venture fairs? That’s precisely what’s happening at a select handful of universities, thanks to a campus-based entrepreneurship program called Blackstone LaunchPad.

Posted March 18th, 2016

Technology Transfer Tactics, February 2016 Issue


Technology Transfer Tactics, February 2016 coverThe following is a list of the articles that appear in the February 2016 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 10, No. 2, February 2016

  • New program gives faculty the time and space to test out promising technologies. Proof-of-concept funding is great, but what if faculty innovators also have the gift of time to prove out the viability of their discoveries, the guidance of successful entrepreneurs, and the ability to take students along on the ride? This is the thinking behind the new Faculty Entrepreneurial Fellows program in the College of Engineering at the University of Illinois at Urbana-Champaign.
  • Navigate carefully around duty-to-enforce clauses in license agreements. Duty-to-enforce clauses in IP licenses are often tricky, since TTOs and their licensees are typically at polar opposites. Licensees want the university to commit to enforcement, and universities want no part of it. Something’s gotta give.
  • TTO’s online platform offers easy access to low value technology. Every university has technology that may be promising for commercial development but not in a way that has buyers rushing to offer huge sums of money, and those projects often are neglected in favor of technology that promises a bigger return. The technology transfer office at the University College Dublin in Ireland has developed an online platform that increases the exposure of lower-value technology and offers a streamlined, cost efficient way to sell it.
  • WSU’s peer mentoring program aims to build on tech transfer successes. Success breeds more success, and that’s exactly the rationale behind a new peer-to-peer faculty mentoring program launched at Washington State University.
  • Best Practice Spotlight: A successful strategic partnership between a business school and a TTO.
  • Non-profit start-up aims to get more Purdue drug candidates across Death Valley. Only a small fraction of drug candidates ever make it out of the lab to the commercial marketplace, and in many cases – tragically – it’s not because the drugs fail, it’s because the money to bring the drugs forward fails to materialize.

Posted February 19th, 2016

Technology Transfer Tactics, January 2016 Issue


Technology Transfer Tactics, January 2016 coverThe following is a list of the articles that appear in the January 2016 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 10, No. 1, January 2016

  • New APLU report recommends including tech transfer work in P&T decisions. With pressure to contribute more on the economic development front, universities appear to be slowly coming to the realization that important changes are needed in the way faculty are recognized and rewarded in decisions regarding promotion and tenure.
  • UChicagoTech unveils new ‘one size fits all’ express license. They may not be the first to do so, but the University of Chicago’s Center for Technology Development & Ventures believes it has benefitted from the experiences of others, benchmarking existing express license programs to help develop its own, called the UCGO! Startup License.
  • Contingency fee deals for universities remove key barrier to patent enforcement. The cost of enforcing a patent in court may lead some TTOs to shy away from litigation, but with an increasing number of contingency-based law firms looking to work with university patent owners, cost should no longer be a deciding factor.
  • WARF’s big infringement win over Apple offers lessons for universities. The recent jury verdict and $234 million award in favor of the Wisconsin Alumni Research Foundation over tech juggernaut Apple Inc. is the latest victory for university licensors over well-heeled corporate giants, and it offers some lessons for TTOs.
  • Guest Column: 8 lessons learned from the Model IIA project. A diverse group of research institutions from across the U.S. created a Model Inter-Institutional Agreement (IIA) as a common starting point to streamline the IIA process. This article discusses some of the important lessons learned from the project.
  • In ‘Buy Blue’ program, U of Toronto becomes early customer of its own start-ups. Universities often talk about supporting their faculty and student start-ups, offering everything from space to mentorship. But at the University of Toronto, that support is now also coming in the form of a major customer — the university itself — thanks to a new initiative called “Buy Blue.”

Posted January 19th, 2016

Technology Transfer Tactics, December 2015 Issue


Technology Transfer Tactics, December 2015 coverThe following is a list of the articles that appear in the December 2015 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 9, No. 12, December 2015

  • Universities getting more attention as new models of early-stage investing emerge. As universities continue to push for more commercialization of their valuable research, venture capital firms are taking notice like never before, finding new ways to lock in access to these technologies at just the right time.
  • Purdue launches express license, adds more start-up support. That Purdue University has simultaneously launched two initiatives aimed at increasing entrepreneurial activity in Indiana is not a coincidence; while each is an independent program, one will likely not succeed without the other.
  • Universities revising IP policies in response to evolution of tech transfer. The world of tech transfer is no more static than the industries it serves, and some universities are realizing that their intellectual property policies are out of date or just need clarification for today’s challenges.
  • TTO at U New Hampshire takes charge of trademark licensing. The licensing of trademarks, especially at large universities with prominent Division I teams, has typically been handled by athletic departments. Even at smaller institutions, such as the University of New Hampshire, athletic directors have had a lead role — either for the entire trademark licensing effort, or at least when it came to athletics trademarks. But at UNH the situation has changed significantly.
  • VC partnership models highlight importance of early stress-testing. As university technology transfer offices strive to expand commercialization, an increasing number of them are turning to the services of venture capital firms to manage and maximize early-stage development of their start-up companies.
  • TTOs devise creative partnerships to help their start-ups grow. University TTOs are expanding their partnership efforts in new ways, looking to expand their services and impact by linking up efficiently with outside entities in a variety of creative ways.

Posted December 16th, 2015