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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

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