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Technology Transfer Tactics, September 2017 Issue


Technology Transfer Tactics, September 2017 IssueThe following is a list of the articles that appear in the September 2017 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. 11, No. 9, September 2017

  • TTOs assess many factors to make decisions on PCT conversion. Let’s say you have a promising biomedical discovery, but with the provisional patent about to expire, there is still no licensee. A decision must be made on how — or even whether — to keep patent protection on the discovery alive.
  • Moving software through the tech transfer process requires speed, finesse. Apps and software are becoming more common in TTO portfolios, but they may require a slight reworking of how you think about IP and guide it to commercialization, experts say.
  • Indiana U refocuses tech transfer on industry engagement, splits off start-ups. Indiana University is restructuring its tech transfer operations, moving most of its traditional industry-facing work out of the non-profit Indiana University Research and Technology Corp. and back under direct university control, while splitting off start-ups as the sole purview of IURTC.
  • “Commercialization Guide” makes an impact as outreach tool for Penn. The Penn Center for Innovation’s (PCI) Commercialization Guide, published in early June, is a publication designed to serve as a “one-stop-shop” for faculty and graduate students interested in learning about the key steps in the commercialization process, and is considered an important part of PCI’s outreach efforts.
  • GA Tech undergraduate entrepreneurship programs yield three successful exits. CREATE-X, an initiative comprising multiple entrepreneurship programs for undergraduates launched at Georgia Tech in 2014, has already created 81 start-ups from 26 majors, earning over $2 million in follow on investments, including three venture-funded start-ups that have been acquired by other companies. The CREATE-X founder, Raghupathy Sivakumar, professor and Wayne J. Holman Chair in the school of electrical and computer engineering, credits its success with strong support from successful alumni and curricula based on a “learn, make and launch” approach.

Posted September 19th, 2017

Technology Transfer Tactics, August 2017 Issue


Technology Transfer Tactics, August 2017 IssueThe following is a list of the articles that appear in the August 2017 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. 11, No. 8, August 2017

  • Supreme Court takes up inter partes review: Is relief in sight? The U.S. Supreme Court has agreed to hear a case that calls into question the very nature of inter partes review and could relieve patent holders — and TTOs — of what has become a thorn in their sides that has kept many potential licensees on the sidelines given the risk of an IPR challenge.
  • TTOs looking to deal directly with patent annuity management firms. In the classic tune “Accentuate the Positive,” composer Harold Arlen advises the listener, “Don’t mess with mister in-between.” It seems that some TTOs have taken that advice to heart when it comes to managing patent annuities.
  • Analysis of survey data makes the case for a metrics revamp. Is it time to get beyond just counting the number of disclosures, licenses, start-ups and the like to gauge technology transfer success? Arundeep Pradhan, the co-founder of APIO, a Portland, OR-based consulting firm, makes the case.
  • NYU entrepreneurship program using podcasts to promote start-ups. When thinking about social media, TTOs and other university tech transfer organizations may not often consider partnering with a radio station, but that’s exactly what NYU’s Entrepreneurial Institute has done recently, creating a series of podcasts called “Talking Startups at NYU.”
  • Maximize collisions and minimize friction for best TTO performance. TTOs can maximize their performance by adopting a model that fosters as many connections with industry as possible while making it as effortless and trouble-free as possible to license the university’s inventions, according to the experience at Boston University.
  • “Vortex” universities thrive on retaining talent to build innovation ecosystem. The right people with the right skills and ideas are such a critical resource in innovation that universities should prioritize the accumulation of “a supercritical mass of human talent” in the community, suggests a prominent tech transfer expert from the University of California.

Posted August 18th, 2017

Technology Transfer Tactics, July 2017 Issue


Technology Transfer Tactics, July 2017 IssueThe following is a list of the articles that appear in the July 2017 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. 11, No. 7, July 2017

  • Sovereign immunity growing as inter partes defense, effect on licensing terms unclear. The University of Florida’s successful use of sovereign immunity to end an inter partes challenge was no fluke, as two other schools are using the same defense and legal analysts say it will become a reliable strategy for some universities.
  • Faculty-friendly IP policy nurtures innovation, attracts industry sponsors. Without the Bayh-Dole Act, research institutions in Canada are free to develop IP policies without worrying about whether or not research is funded by government entities. This has prompted many universities there to adopt some version of a creator-owned IP policy, granting generous rights to inventors.
  • NMSU offers ‘research-only’ license to stimulate more start-ups. The TechMatch program at New Mexico State University’s Arrowhead Center offers a research-only license as an incentive to get would-be entrepreneurs interested in one of several hundred technologies just waiting for someone to turn them into start-ups. It’s a key element of the program — essentially a self-serve menu of innovations backed by a web of interlocking support services designed to push products to market — but it’s just one arrow in the quiver.
  • Silicon Valley event opens doors for U of Arizona research. Musicians dream of playing Carnegie Hall and start-ups dream of pitching in Silicon Valley. Both can be long shots, but Tech Launch Arizona, the commercialization arm of the University of Arizona in Tucson, recently held an event at which its start-ups told their stories to investors in the epicenter of innovation and entrepreneurship.
  • ‘Creative Destruction Lab’ launches successful start-ups accross Canada. If a start-up program set as its goal to have its “graduates” create a total of $50 million in equity over the first five years, and those companies instead created over $1 billion in equity in four and a half years, you’d have to say that was a pretty darn successful program.

Posted July 18th, 2017

Technology Transfer Tactics, June 2017 Issue


Technology Transfer Tactics, June 2017The following is a list of the articles that appear in the June 2017 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. 11, No. 6, June 2017

  • University cozies up to patent troll and sparks more debate. University tech transfer offices usually want to stay far away from the criticism aimed at patent trolls trying to squeeze money out of companies with questionable infringement claims, so eyebrows were raised when Louisiana Tech University partnered with a company widely criticized for trolling.
  • TTOs struggle to adjust patenting, licensing strategies under the America Invents Act. As its moniker suggests, the America Invents Act (AIA) was supposed to make things better for innovators, but nearly seven years after the AIA was signed into law, reviews in the university technology transfer community are decidedly harsh.
  • Emory uses data on workload and efficiency to help manage staffing decisions. In many ways, the world of tech transfer is not unlike other industries in the U.S. when it comes to staffing challenges: to hear employees and management tell it, there is constant pressure to do more with less. Lack of resources is certainly not a new issue in technology transfer, but there can be specific instances when it really hits home.
  • UT-Austin’s start-up ‘studios’ make valuable connections for faculty innovators. The University of Texas at Austin’s Innovation Center — housed at the Cockrell School of Engineering — is hosting monthly get-togethers where faculty inventors present their discoveries, inventions and start-ups to small, informal groups of local industry experts and entrepreneurs.
  • The top 10 license agreement issues that lead to litigation, and how to avoid them. As difficult as license agreement negotiations can be, when they are not handled with utmost care they can lead to something even more challenging: Litigation. To help tech transfer professionals minimize that threat, Anne Stratman, associate general counsel at the University of Arizona, prepared the “Top Ten Most Frequently Litigated Provisions in University Agreements” for attendees at the 2017 AUTM annual meeting.

Posted June 19th, 2017

Technology Transfer Tactics, May 2017 Issue


Technology Transfer Tactics, May 2017 IssueThe following is a list of the articles that appear in the May 2017 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. 11, No. 5, May 2017

  • Lean Startup principles offer valuable insights for tech commercialization. While Lean Startup methodology, first put forward in 2008 by Eric Reis and widely disseminated by serial entrepreneur Steve Blank, has been adopted by many in industry, it has not caught on quite as quickly in technology transfer circles.
  • U of Arkansas goes where the money is for funding — to the Athletics Department. Tech transfer leaders might admit to gazing out at the football stadium on a Saturday afternoon and dreaming of seeing the massive revenues generated by college games funneled to research and innovation. Sure, universities might direct a trickle of athletic funds in that direction, but at some schools there is just so much revenue generated from football, basketball, and other sports.
  • Changing the mindset: Boosting faculty engagement still a challenge for TTOs. Quick: Name a major department at a university that has been in place for years, and yet many faculty members are not aware that it exists and/or have little idea what it does. If you said “tech transfer office” you’d be dead on, at least in the minds of several experts who participated in a panel at the AUTM 2017 annual meeting.
  • Legal Consult: Mistake by Congress in AIA puts thousands of university patents at risk.
  • Make “reverse pitch” part of your strategy for bringing technologies to marketplace. A “reverse pitch” approach to moving technologies to market — the umbrella name for any number of variations on the theme of potential partners pitching their technology needs to innovators instead of pitching technologies to potential partners — should be an arrow in every university’s commercialization quiver, its proponents stress. It focuses on technologies that companies already know they want, and moves them forward with an eye on the business realities of creating new markets.

Posted May 17th, 2017

Technology Transfer Tactics, April 2017 Issue


Technology Transfer Tactics, April 2017 IssueThe following is a list of the articles that appear in the April 2017 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. 11, No. 4, April 2017

  • With start-ups given more weight, TTOs look for new ways to gauge performance. With stakeholders pushing universities to show more results in the economic development realm, tech transfer professionals are more favorably disposed toward nurturing start-ups than ever before. However, given that traditional metrics demonstrating performance in this area can be misleading, innovative TTOs are coming up with new and different ways to not only show that their start-ups are real and sustainable, but also that their value is being compounded down the line.
  • Study suggests that university incubators may impair innovation quality. Even the authors admit they were surprised by their findings: that incubators, by draining resources from other university departments and offices, can impair the overall quality of university innovations.
  • Indiana U partners with nearby engineering school to make prototypes. A unique technology commercialization collaboration between affiliates of two universities – Indiana University Research and Technology Corp. and Rose-Hulman Ventures – is coming off its most productive year yet, and the two say the key is each institution focusing on what it does best. The partnership is giving IURTC an easy, hand-off means of creating prototypes for many of its innovations.
  • How to use peer review to guide TTO performance improvement. We’re all familiar with the warning: Be careful what you wish for. And that can certainly be true if you seek to learn the “absolute truth” about your TTO’s performance. But that is the aim of a peer review assessment process discussed in a panel session at the AUTM 2017 Annual Meeting last month.
  • Social responsibility clauses in university IP license remain rare. Social responsibility efforts seem to fit well with the TTO mission to serve the public good, but despite a number of efforts to promote IP license clauses focused on social responsibility, few deals actually contain these provisions.

Posted April 18th, 2017

Technology Transfer Tactics, March 2017 Issue


Technology Transfer Tactics, March 2017 IssueThe following is a list of the articles that appear in the March 2017 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. 11, No. 3, March 2017

  • Prioritizing customer service goals, Hopkins TTO promises quick response on disclosures. When Neil Veloso, the executive director of technology transfer at Johns Hopkins Technology Ventures in Baltimore, MD, began looking for a way to improve the TTO’s approach to reviewing invention disclosures, he had multiple goals in mind. “We wanted to be responsive to the PTO’s first-to-file model, and we wanted to provide transparency and more rigor in how we are responding to our inventors.”
  • UF’s sovereign immunity case bodes well for state schools, may offer a marketing advantage. The University of Florida’s reliance on sovereign immunity to prevail in a patent challenge could represent a new defense for state schools, but the ruling isn’t a get-out-of-jail-free card.
  • TTO adopts new strategy based on ‘technology scoping and venture packaging.’ The commercialization team at Missouri University of Science & Technology set out about four years ago to tweak the school’s approach to moving innovations into the marketplace. They didn’t want to abandon the old ways, but the need to build a better mousetrap was clear.
  • Four TTOs join forces for first-ever online technology showcase. Even technology transfer itself can use a better mousetrap now and then, and commercialization staffers at four universities came together last month to produce what they’re calling the first-ever live online Technology Showcase.
  • Heard in the Halls: AUTM 2017.
  • Tech transfer veterans share best practice guidance on gap funding. Nobody said setting up and operating a gap fund was easy. If it were, there wouldn’t be an initiative like Mind the Gap.
  • Pooled mentors-in-residence assist U Michigan’s “sister” universities statewide. Universities challenged by a lack of resources (and who isn’t these days?) have often found that collaboration can be an effective way to expand their commercialization efforts.

Posted March 21st, 2017

Technology Transfer Tactics, February 2017 Issue


Technology Transfer Tactics, February 2017 IssueThe following is a list of the articles that appear in the February 2017 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. 11, No. 2, February 2017

  • Standardized processes, skilled mentorship ensure the success of new licensing managers. how do TTOs go about the task of preparing new recruits to take on the job of licensing manager?
  • TTOs standing ground on infringement, more willing to sue. Universities are increasingly finding the courage and the resources to stand up and fight when their patents are infringed, with the University of Minnesota’s lawsuit against Gilead Sciences just the latest in a series of challenges to powerful companies. The stakes are high enough for UM to risk defeat, and that calculation is likely to be the determining factor when other schools decide whether to pursue litigation.
  • Emory’s proof-of-concept funding program: A little can mean a lot. Funding for early-stage university start-ups doesn’t have to mean big money — in fact, often it’s the little bit of initial funding that gets these fledgling business over a critical early hurdle and on their way to bigger things. That’s why a growing number of universities are establishing pre-seed funding programs — many of which make only a handful of awards and award only a few thousand dollars at a time.
  • UNH addresses student IP with policy, targeted agreements, communication. 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.
  • UNeMed’s boot camp training program brings new blood into tech transfer. 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.

Posted February 15th, 2017

Technology Transfer Tactics, January 2017 Issue


Technology Transfer Tactics, January 2017 coverThe following is a list of the articles that appear in the January 2017 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. 11, No. 1, January 2017

  • Tech transfer leaders find pathways to change are full of obstacles and opportunities. No one escapes the process of change, and every few years, it seems, a university’s innovation engine goes through a process of realignment.
  • Universities creating more pre-seed funds to fill the gap, attract later investors. The importance of early stage financing isn’t a recent discovery, but universities across the nation are establishing — and, in many cases, continuing to pump money into — pre-seed funds designed to maximize the often scarce very early money that can make or break a promising idea.
  • Video campaign helps expand awareness of UC system innovations. A new campaign whose basic marketing vehicles are videos shot by entrepreneurs out of the University of California system has been launched to help innovators gain exposure to each other, to potential investors/partners, and to increase awareness of the depth of creativity that has been generated at UC campuses.
  • Student-led innovation center boosts start-ups, provides real-world experience. Universities go to great lengths and expense to provide the latest and greatest technology and tools for innovators, but students don’t always have easy access and they often are not encouraged to work together on multidisciplinary projects. The engineering school at New Mexico State University is addressing those issues with a peer mentoring program.
  • Discovery-based learning for undergrads feeds more campus innovation. During the 2015-16 academic year, a select group of undergraduate students at North Dakota State University had six invention disclosures, applied for one patent, had 13 grants funded, published nine journal papers, gave 32 conference presentations, received 11 awards and earned seven master’s degrees. These students were all participants in the “discovery-based learning” program at NDSU, designed to provide real-world experience in research, project planning, budget development, negotiation, collaboration and dissemination of findings.

Posted January 18th, 2017

Technology Transfer Tactics, December 2016 Issue


Technology Transfer Tactics, December 2016 coverThe following is a list of the articles that appear in the December 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. 12, December 2016

  • Hopkins’ restructuring enables specialization, nets impressive commercialization results. A little over two years ago Johns Hopkins embarked on a restructuring which resulted in Johns Hopkins Technology Ventures, comprised of three distinct but interrelated arms. The Hopkins restructuring, carefully molded together over a period of study and benchmarking, could serve as a roadmap of sorts for other TTOs looking to position their commercialization efforts for future growth.
  • For early-stage start-ups, try a SAFE approach to attracting investors. Not many technology transfer offices have used a Simple Agreement for Future Equity (SAFE) to help fund a pre-income start-up, probably because it isn’t specifically a TTO-focused instrument. But it’s a tool that TTOs and their start-ups may wish to consider.
  • Departing and incoming faculty present IP challenges for TTOs. Any employee departure requires attention from the human resources department, but what if the departing employee is a university faculty member with IP interests? What if their invention is now being handled by a corporate partner? What if an incoming faculty member has interests they retain?
  • Global EIR programs help universities retain foreign start-up founders. The U.S. election and the incoming administration’s harsh immigration stance may change things moving forward, but universities seeking to boost their technology commercialization efforts can still set up global entrepreneur-in-residence programs that facilitate foreign-born innovators’ entry into the U.S.
  • Marketing Roundup: Tech transfer marketing ideas literally saved from natural disaster.
  • Despite the hype, equity crowdfunding has few takers among university start-ups. Tech transfer leaders and their university start-ups now have the option to use equity-based crowdfunding, but relatively few are using it and success stories are hard to come by.

Posted December 21st, 2016

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