Tech Transfer Central
Technology Transfer Tactics sample issue

Technology Transfer Tactics, August 2014 Issue


Technology Transfer Tactics, June 2014 IssueThe following is a list of the articles that appear in the August 2014 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. 8, No. 8, August 2014

  • TTOs slash patent costs, boost efficiency with internal patent attorney groups. In anticipation of several years of declining financial support, top leadership at Atlanta, GA-based Emory University let it be known to all departments that they needed to put plans in place to operate with less funding. The directive challenged the Office of Research Administration (ORA) at Emory to devise scenarios involving cutbacks of 3%, 5%, and 10%, not knowing at that point what level of austerity was going to be necessary.
  • “Golden Share” model may appeal to start-ups, but VCs are likely another story. The Computer Laboratory@ University of Cambridge has launched a new approach to licensing its IP to start-ups that it asserts will be attractive to new companies strapped for cash, strengthen relationships between start-ups and the university, and ultimately lead to the creation of more new companies.
  • State schools take note: LSU dodges lawsuit over IP with 11th Amendment defense. One more attempt to cast a successful public school technology transfer office as a private business has failed and, as a result, the school has dodged questions about how it handled intellectual property that was allegedly improperly patented as a result of an industry-paid project .
  • Universities could be breeding ground for new patent troll target: biopharma patents. Institutions with research labs where breakthrough medicines and biotech products are discovered may increasingly become objects of affection for patent trolls.
  • UC system lifts restriction on investing in university start-ups. The University of California system is loosening the reins on some long-held restrictions imposed on relationships with start-up.
  • Top TTOs borrow from each other to create faculty guides. Three of the top TTOs in the U.S. are using a similar strategy to educate faculty on commercialization and start-up activity.

Posted August 15th, 2014

Technology Transfer Tactics, July 2014 Issue


Technology Transfer Tactics, June 2014 IssueThe following is a list of the articles that appear in the July 2014 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. 8, No. 7, July 2014

  • Supreme Court shifts the patent landscape for software, other business methods. The patent landscape may be only slightly altered in the wake of the Supreme Court’s decision in Alice Corp. v. CLS Bank, but it’s been altered in fairly significant ways, according to several IP attorney experts.
  • Raise the bar for new venture creation to fuel start-ups with lasting power. It’s no secret that the business of start-ups is fraught with risk and uncertainty. Most statistics suggest that there is a better than even chance that a new company will sputter before reaching its fifth year. However, new metrics from the University of Colorado’s technology transfer office strongly suggest that there are ways to significantly outperform these odds when launching new, technology-driven companies.
  •  ‘Rock star’ faculty depart to launch private start-up, leave legal quagmire in their wake. When two strawberry researchers announced recently that they were retiring from the lucrative, cutting edge breeding program at University of California-Davis to set up a private company, the protests began quickly and are now the subject of a lawsuit. But it is not the university objecting to the prospect of losing such a major research and revenue source.
  • TTOs add online video to their marketing mix. While videos have long been used as marketing vehicles by a number of industries, they have only begun to take hold in tech transfer, despite the fact that video just may be the best and most compelling way to illustrate an invention’s potential. Recognizing that potential, some leading TTOs are now experimenting with video marketing.
  • Portal helps link faculty, students with start-up co-founders. Finding experienced leadership for a university start-up is one of the toughest challenges in launching sustainable, successful companies – and where there’s a need in this day and age, there’s often a solution online.

Posted July 16th, 2014

Technology Transfer Tactics, June 2014 Issue


Technology Transfer Tactics, June 2014 IssueThe following is a list of the articles that appear in the June 2014 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. 8, No. 6, June 2014

  • Call for changes to promotion and tenure policies grows louder. It’s no secret that promotion and tenure policies that reward publishing, teaching, and service but turn a blind eye toward commercialization activities have long hampered the efforts of technology transfer professionals to engage young professors and researchers in market-focused innovation. However, despite all the talk on the subject, the pace of change in this area is glacial at best, according to a new report.
  • TTOs shift focus to customer service and see disclosures soar. Treating your TTO’s stakeholders like customers — and focusing on servicing them — requires financial and human resources and a firm commitment from the highest reaches of university administration. But the payoff can be tremendous.
  • Use this royalty audit checklist to identify “red flag” licensees. Don’t let concerns about how a licensee will respond if you initiate a royalty audit keep you from doing so. True, an individual license can represent a significant revenue stream, and technology transfer offices are wise to proceed with caution when the future profitability of any arrangement is at stake. But, the days of licensees breaking off relations in a huff over an initiated audit are long gone.
  • Case Western “spin-in” model offers key benefits to both parties. A unique partnership between Case Western Reserve and Intwine Connect, LLC, an emerging company, varies from more traditional relationships between universities and start-ups in a number of ways and is already yielding benefits to both parties.
  • Corporate venture funding coming soon to a TTO near you. Funding strategies for tech transfer are evolving in response to ongoing reductions in federal dollars as well as private VC money, and one of the options likely to come across your desk sooner or later is corporate venture funding. Though this funding path has its critics, some leaders in tech development say you should take it seriously and understand how you can make it work for you.

Posted June 17th, 2014

Technology Transfer Tactics, May 2014 Issue


Technology Transfer Tactics, May 2014 IssueThe following is a list of the articles that appear in the May 2014 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. 8, No. 5, May 2014

  • Researchers revolt over IP ownership of summer work. Researchers at the University of Kansas in Lawrence are pushing back hard over what they say are overly restrictive work agreements that give the university rights to everything they work on, even if that work is done over the summer, off site, and for a private company.
  • With closer ties in sponsored research agreements, ignore tax issues at your peril. More universities are getting comfortable with deeper, more integrated forms of sponsored research as they attempt to improve industry relationships and move more IP to market. But tech transfer programs must be careful not to violate certain tax rules that these arrangements can violate.
  • Penn State goes it alone in IP auction, with mixed results. IP auctions have been going on for years, but until recently they have all involved brokers. This trend was broken on March 31 when Penn State launched its Intellectual Property Auction Website — reportedly the first time a university has held its own IP auction without the assistance of a broker.
  • TTOs rebrand, revamp, and make major strides with faculty, industry. A growing number of technology transfer offices have opted to undergo a rebranding to position themselves for long-term success with both internal partners such as faculty and external partners in the business community. While a new name and logo are the most visible indicators of a rebranding, on their own they reap limited rewards. True rebranding starts from a place of significant internal change, say executives involved with four TTO rebrandings.
  • How to manage the “care and feeding” of faculty researchers. At a lively session called “The Care and Feeding of Faculty Inventors” during the AUTM national conference in San Francisco, speakers defined some of the common researcher types you’re likely to encounter.

Posted May 16th, 2014

Technology Transfer Tactics, April 2014 Issue


The following is a list of the articles that appear in the April 2014 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. 8, No. 4, April 2014

  • Simplified IP model charts a different course for digital tech. Could a small experiment underway in New York City prompt an overhaul in the way universities manage IP from digital innovations?
  • Lessons learned in early university crowdfunding efforts help point the way to success. For TTOs that are planning to raise money for start-ups or technologies through crowdfunding, you may find resistance from an unexpected and especially frustrating source: your own inventors.
  • Vanderbilt unveils its automated MTA model; improved efficiency seen. MTAShare, a new automated system from Vanderbilt University that enables the processing and management of MTAs for “the entire spectrum of materials commonly transferred between institutions,” was introduced publicly at the recent AUTM meeting. Currently available only to Vanderbilt providers, it is being tested by several universities and will shortly be available nationwide.
  • Rapidly evolving case law changing the rules for damages in infringement cases. When courts assess damages in technology commercialization-related litigation, they increasingly look to comparable licenses — and the talks that led to them — to determine the financial stakes.
  • Purdue relies on faculty who’ve ‘been there, done that’ to mentor other researchers. Not all faculty members are right for entrepreneurship, or other facets of tech transfer for that matter, but in some cases their reluctance to pursue commercialization can be due to perceived sacrifices that in reality may not even be necessary.
  • Canadian universities use online “scavenger hunt” to pique interest in research. The Council of Ontario Universities (COU) has employed a unique approach to generate knowledge of and interest in the research conducted at its member universities — a month-long “virtual scavenger hunt” that was open to both students and the general public.

 

Posted April 21st, 2014

Technology Transfer Tactics, March 2014 Issue


The following is a list of the articles that appear in the March 2014 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. 8, No. 3, March 2014

  • U Minnesota launches “Try and Buy” program, allows companies to “test drive” IP. Following up on the positive response to its MN-IP Create program, which takes a lot of the “guesswork” out of sponsored research agreements and offers industry-friendly terms, the University of Minnesota has launched “MN-IP Try and Buy,” which is designed to provide easy access to technologies already developed by the university.
  • BU stands behind patent litigation despite criticism. Universities are warming to the idea of aggressively pursuing patent infringement claims, and the recent mass settlements won by Boston University are fueling that fire but also spurring some criticism.
  • Kansas TTO uses IT overhaul to help boost results and efficiency. In the game of technology transfer, one TTO has shown that a strategically designed information technology infrastructure can propel your enterprise from playing catch-up to playing leapfrog.
  • Schools establish formal links with economic development groups to drive start-ups, jobs. Under increasing pressure to create jobs and nurture new and expanded business opportunities, universities are beginning to get more creative in how they partner with regional economic development groups.
  • Heard in the Halls: AUTM 2014: AUTM 2014. The annual AUTM meeting in San Francisco was by all accounts another big success for the association, with good attendance from all over the world, a sold out exhibit hall, lots of packed meeting rooms, and a growing sense that the business of technology transfer is becoming by necessity more and more business-like to meet the growing demands for more industry ties, more sustainable start-ups, deeper connections with commercialization partners, and more impact in terms of economic development and jobs.
  • Murphy’s Law is often in evidence for tech transfer offices. The bad news is there’s a growing body of Murphy’s law specific to technology transfer. The good news is the tales of woe are more than just tough-luck anecdotes. 

Posted March 21st, 2014

Technology Transfer Tactics, February 2014 Issue


The following is a list of the articles that appear in the February 2014 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. 8, No. 2, February 2014

  • Universities take on new responsibilities, challenges as they focus on economic development. Despite an improving economy, the long and painful recession left a legacy of fear that may well produce a positive long-term effect: a focus on state-level job creation and an increasing prominence of university research and commercialization as a means of generating those jobs.
  • Economic development surveys help TTOs demonstrate results. Two university TTOs, separated by the Atlantic Ocean, have adopted similar creative strategies for marketing the results of their economic development efforts.
  • ‘Cashless giving’ allows start-ups to donate stock to school. Finding ways to fund university technologies and start-ups is one of a TTO’s biggest challenges that increasingly requires creative solutions. Here’s one from the University of California, Los Angeles, which is using a novel concept in funding that creates a sort of circular giving.
  • Master Reagent Agreement boosts efficiency for both TTO and licensees. With the typical TTO holding more invention files than they can handle with current staff, boosting efficiency and speeding throughput are critical goals for many. Emory University in Atlanta has made a big stride in that direction with a 23-page “Master Reagent Agreement” for routine reagent licenses.
  • Guest Commentary: New insight into TTO performance from Oxford’s Isis Innovation.
  • Company launches an online “dating service” for IP assets. A new online service called idealAsset is billing itself as “The Match.com for IP assets.” It works like this: If you are a subscriber seeking to market your IP and information about your technologies has previously been loaded onto the site, you can log in and review the potential buyers who have expressed interest in one or more of your technologies. Then, for each of them you check out, you have three options: you can request idealAsset to send an invitation to the buyer; you can indicate that you “like” the buyer, or you can pass.

Posted February 14th, 2014

Technology Transfer Tactics, January 2014 Issue


The following is a list of the articles that appear in the January 2014 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. 8, No. 1, January 2014

  • Working with ‘patent trolls’ could bring income, but at what cost? Patent assertion entities (PAEs) can be seductive to tech transfer programs that are looking for some yield out of patents that otherwise don’t have much prospect for commercialization. It sounds like a no-brainer — the PAE will work on your behalf to enforce patent rights against infringers and collect licensing fees, so you might reap some benefit from a real dud of a project. What could go wrong?
  • Penn’s “AppItUP” challenge lights fire under university-based mobile app businesses. A growing number of universities are becoming involved in the commercialization of mobile apps, and the University of Pennsylvania has come up with a great way to jump-start those efforts.
  • Tech transfer leaders share their resolutions for the New Year. As 2014 begins, we thought it an opportune time to check in with some leading tech transfer directors and see what their New Year’s resolutions are for their offices.
  • U Minn’s sponsored research agreement model is a hit with corporations. The most common complaint that corporations have when it comes to sponsored research agreements is that universities are difficult to deal with. The University of Minnesota has attempted to overcome that challenge with a new model that dramatically simplifies the agreements.
  • Take it outside: FSU tries arm’s-length entrepreneurship to boost SBIR/STTR funding. Given the amount of technology they have available, many universities haven’t had as much success as they would like obtaining funding for start-ups via the federal Small Business Innovation Research and Small Business Technology Transfer grant programs.
  • USF gap funding program uses convertible debt structure, focuses on rapid ROI. Having a Warren Buffett type in your pocket to provide university start-ups with millions of dollars in funding is a nice daydream for most TTOs, but the reality is that most spinouts must scrounge for the money needed to keep going and reach critical milestones toward success.

Posted January 16th, 2014

Technology Transfer Tactics, December 2013 Issue


The following is a list of the articles that appear in the December 2013 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. 7, No. 12, December 2013

  • Diligence practices key to capturing misreported, underreported royalties. With budgets under constant assault from cost-containment efforts, the last thing TTOs want to do is leave hard-earned royalty earnings on the table, but there is evidence that this is exactly what’s happening on an all-too-frequent basis.
  • ‘Quick and dirty’ provisionals can come back to haunt your TTO under the AIA. The America Invents Act and recent court rulings have delivered a one-two punch to provisional patent applications, making them much more of a headache than they used to be.
  • Rural university taps into crowdfunding platform to secure much-needed early-stage investment. Small-town America is great for raising children, but investment capital — not so much.
  • Unique licensing model creates win-win for Cornell and New York apple growers. Most intellectual property coming through a tech transfer program won’t involve anything that you could snack on or put in your kid’s lunchbox, but Cornell University is finding that agricultural innovations can be a lucrative way to expand the typical IP offerings.
  • Use these best practices to make your next technology showcase a blockbuster success. “Share the Vision,” an event designed to showcase the technologies and start-ups coming out of the University of Illinois at Urbana-Champaign, drew more than 200 attendees in October 2013, the second year it was held. This represented a “significantly increased number” compared with 2012, according to the university, and received “rave reviews” from attendees.
  • U Michigan medical school creates its own TTO to accelerate commercialization. The University of Michigan Medical School has created a new initiative, Fast Forward Medical Innovation, and will now have its own TTO to enhance commercialization opportunities for its research, providing more effort and focus than could be applied to medical staff innovations by the university TTO.

Posted December 20th, 2013

Technology Transfer Tactics, November 2013 Issue


The following is a list of the articles that appear in the November 2013 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. 7, No. 11, November 2013

  • In unique patent cost-sharing pilot, USF invites faculty to kick in funds. With government funding becoming stingier by the day, commercialization budgets are getting squeezed at a time when disclosures are on the increase.
  • Site miners dig out IP gems and harvest new commercialization opportunities. Would your TTO benefit from using “site miners” to dig up intellectual property diamonds from the fertile ground of your research labs?
  • Tough love sometimes best for non-performing patents. Every TTO has the equivalent of a once promising son or daughter who now lives in your basement, pays no rent, and doesn’t seem to be going anywhere soon. These patents and IP once held enough promise that you put them on the active track for commercialization, but now it looks like their potential will never materialize.
  • Temple uses LinkedIn to help get promising IP into start-up mode. Many universities use social media to spread the word about their technologies, and for most it has proven to be an effective adjunct marketing strategy to enhance awareness. However, few TTOs can point to any specific deals struck because of social media marketing. Temple University recently broke through that barrier.
  • Rights to improvements may open Pandora’s box of troubles. There’s a simple way to ensure that granting rights to improvements in your license agreements doesn’t get out of control: Don’t do it.
  • Meet-up brings TTO leaders from “competing” schools together to share best practices. On the football field and the basketball court, Big Ten schools are fierce competitors — but not, apparently, in the field of tech transfer. Top professionals from these “competing” schools recently got together to hear from experts and share information on common challenges and best practices — the second year in a row they have done so  in what is planned to be an annual event.

Posted November 22nd, 2013

Technology Transfer Tactics, October 2013 Issue


The following is a list of the articles that appear in the October 2013 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. 7, No. 10, October 2013

  • Model for right-sizing TTO staff generates cost savings. Can increasing your staff actually save your TTO money? Though it may seem counterintuitive, that’s exactly what the Vanderbilt University Center for Technology and Commercialization has done.
  • Emory creates drug development arm and a new model for de-risking pharma technologies. Moving promising therapeutics from university labs into the marketplace is not getting any easier, but a new model developed at Emory University in Atlanta is attempting to circumvent the development hurdles that doom so many early-stage drug candidates.
  • Purdue launches website focused on faculty outreach, support and engagement. Recognizing the growing dominance of digital marketing and social medial, many TTOs have retooled their web site to be more user-friendly, easy to navigate, and focused on marketing inventions rather than merely describing them. But the Purdue Research Foundation has gone a significant step further.
  • Careful drafting can head off the perils of sublicensing. Sublicensing is often the Achilles heel of university tech transfer professionals. As Wesley D. Blakeslee, executive director at Johns Hopkins Technology Transfer, puts it, sublicenses represent “a very complicated area, and one which probably causes the most post-license difficulty and controversy.”
  • Statewide researcher retreat educates faculty, encourages university start-ups. All four of Arkansas’ research universities are collaborating on an annual retreat for faculty innovators that enhances researchers’ commercialization know-how and helps get more IP into the pipeline for licensing as well as start-ups.
  • Northwestern’s menu of support services focus on building start-ups with staying power. Northwestern University in Evanston, IL, is among a growing number of schools whose TTOs have shifted their start-up activity away from generating high numbers of spinouts, instead focusing on fewer start-ups of high quality.

Posted October 22nd, 2013

Technology Transfer Tactics, September 2013 Issue


The following is a list of the articles that appear in the September 2013 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. 7, No. 9, September 2013

  • Ready-to-sign licensing boosts deal flow, saves time, and gets dormant IP off the shelf. Finding an interested party to license one of your projects is only half the battle, because then you start the often arduous, drawn out process of developing a license agreement, negotiating terms, and sealing the deal. Sometimes a potential buyer is put off by that prospect and doesn’t even make an offer.
  • TTO advisory panels: Best practices to optimize success. Whether technology transfer offices opt to incorporate external expert advisory panels into their tech transfer processes or use the panels as a one-time resource, decisions about how to create and run a panel often will be “context-specific.”
  • One-time expert advisory panels can slash IP backlogs. Having external expert advisory panels available to offer free advice on patenting and commercialization issues is an attractive concept, but such panels may not be sustainable long-term for many technology transfer offices.
  • As TTOs focus on economic development, ‘innovation districts’ come of age. Across the country, university-initiated economic development is becoming a major focus for many TTOs. Pressure from lawmakers and civic leaders is putting the economic potential of university research and start-ups in the spotlight like never before, and the focus is more than trickling down to tech transfer leaders.
  •  “Roadmap” helps educate faculty inventors and supports rigorous review of IP. When you hear the word “roadmap,” you immediately picture an outline of how to get from “here” to “there.” In tech transfer parlance, that means moving from disclosure to the market. But while the University of South Alabama’s (USA’s) “Commercialization Roadmap” certainly does that, it is designed to do more, according to W. K. “Ker” Ferguson, the school’s assistant vice president of research and economic development.

Posted September 20th, 2013