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Technology Transfer Tactics, January 2016 Issue


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

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

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

Posted January 19th, 2016

Technology Transfer Tactics, December 2015 Issue


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

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

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

Posted December 16th, 2015

Technology Transfer Tactics, November 2015 Issue


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

Technology Transfer Tactics
Vol. 9, No. 11, November 2015

  • What makes a great university start-up accelerator? Whoever coined the term “accelerator” knew what they were doing. After all, what TTO or university would not want to accelerate the rate at which license agreements were signed, start-ups were successfully launched, or the entrepreneurial ecosystem was strengthened?
  • Free legal clinics offer needed expertise to cash-starved university start-ups. It’s no secret that technology-based university start-ups are generally starved for cash, and that makes it tough to access the legal assistance that budding entrepreneurs need to establish the right kind of structure and negotiate around potential speed bumps.
  • Wake Forest Baptist partners with investment firm for tech development. Tech transfer programs are finding that partnerships with commercial interests can open up possibilities for faculty and student researchers at early stages in the development of a technology.
  • U Buffalo’s TTO revamps logo for greater clarity, linkage with economic development. The University at Buffalo’s Office of Science, Technology Transfer and Economic Outreach has completed a redesign of it signature mark to serve a dual purpose: to more clearly communicate its mission, while at the same time establishing a design linkage with other economic development units.
  • Guest Commentary: Consider outsourcing options when faced with production and scale-up challenges.
  • Alliances become critical as framework for building innovation ecosystems. For innovations from any one organization to have a meaningful impact on a region, it has become clear to most in the research commercialization arena that a vibrant ecosystem is a critical overarching need. Bringing research, funding, mentorship, executive talent, industry, and other resources together is becoming part and parcel of the tech transfer mission as it expands to include not only protecting and licensing university IP, but also supporting economic development and job creation.

Posted November 17th, 2015

Technology Transfer Tactics, October 2015 Issue


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

Technology Transfer Tactics
Vol. 9, No. 10, October 2015

  • Researcher merry-go-round: Best practices for handling departing faculty. This summer, a legal battle between the University of California at San Diego and the University of Southern California in Los Angeles highlighted just how contentious disputes over research and other intellectual property can become when a faculty member departs one university for another institution.
  • Target reluctant deans, department heads to remove barriers to tech transfer. Are your tech transfer efforts being sabotaged? That may seem like a silly question more appropriate for a Hollywood script, but in fact many TTOs have experienced a subtle form of sabotage from their own deans and department heads who eschew innovation efforts in favor of more traditional tenure-focused activity.
  • “Affinity” alumni funds can bring new investments to university technologies. Flying your school’s colors or invoking its spunky mascot in efforts to find investors among alumni can give a big shot in the arm to university-based technologies, whether the investment vehicle is a function of the university itself or that of an outside organization focused exclusively on opportunities emanating from the investors’ alma mater. Just make sure the institution’s administration is fully on board and that the traditional technology transfer office has a seat at the planning and execution table, advise those who’ve launched successful alumni funds.
  • Radio series offers valuable PR, exposure for tech transfer at Ohio U. What university TTO wouldn’t want to see its faculty inventors, start-ups, and other innovation leaders in its region featured on a wide-ranging radio series with the potential of reaching audiences nationwide? The beneficiary of just such an opportunity is Ohio University. The series, called “Innovation Conversations,” will initially include 15 interviews, and because of its early success it will be expanded even further, touting technology commercialization and entrepreneurship both at the university and in the region of southeastern Ohio.

Posted October 20th, 2015

Technology Transfer Tactics, September 2015 Issue


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

Technology Transfer Tactics
Vol. 9, No. 9, September 2015

  • Don’t let disputes over royalty splits, inventorship spoil TTO relationships. It can take many years for a discovery to make it to the marketplace, so it is always a great day when the royalties start rolling in. But when an innovation has many fathers, perhaps from multiple institutions, disputes can arise over how to divide up the earnings. This can and does happen despite what it may say in contracts or agreements, and even though the matter may have been “settled” years earlier. And long, expensive court battles can certainly put a dent on those royalties.
  • As IPO market booms, should universities be managing their equity stakes? Technology transfer offices eyeing the IPO market may wish they could stay involved with more of their start-ups through the initial public offering phase and beyond — and thereby reap far greater financial benefits than they do by simply selling off equity at the first opportunity.
  • Research tools are great licensing opportunity — if you do it right. Licensing research tools presents enormous opportunity for tech transfer offices, potentially bringing in needed revenue while you wait for a long-term technology to mature, suggests a university leader experienced with this strategy.
  • Third-party firms seek to assist resource-starved TTOs. One of the most common complaints heard from TTO executives is that they suffer from inadequate resources, be it budget, financing for startups, staffing – you name it. Recognizing these needs, a number of new companies have sprung up with the goal of providing some or all of the services most TTOs are not able to fund in-house. TTT spotlights three such firms: Apervita, which has chosen to tightly focus on health analytics and data; Market Square IP Ltd., which is willing to take on the challenge of marketing IP that TTOs have decided to abandon; and IN-PART, which seeks to strengthen universities’ ties with industry by locating the precise individual in each company best suited to respond as a potential partner.

Posted September 16th, 2015

Technology Transfer Tactics, August 2015 Issue


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

Technology Transfer Tactics
Vol. 9, No. 8, August 2015

  • In move to boost economic development, ASU’s TTO offers services outside the university. In a move signaling the increasing importance of regional economic development to TTOs, Arizona State University has launched the “Startup Mill,” offering the university’s commercialization services and resources on a fee-for-service basis to non-university entrepreneurs and start-ups.
  • In wake of painful state audit, new review charts a course for Utah tech transfer efforts. When a high-profile, multifaceted commercialization effort runs aground, how do you turn things around? It certainly isn’t easy, especially when there are several stakeholders involved. However, this is precisely what administrators of the Utah Science Technology and Research (USTAR) initiative intend to do.
  • UNC-Chapel Hill cancer center hastens medical innovation with “speed dating” event. The UNC-Chapel Hill Lineberger Comprehensive Cancer Center recently hosted a “speed dating” forum and medical technology competition in an effort to boost innovation and solve real-world clinical problems. The event matched surgeons with engineers – two groups who, despite working in the same university system, don’t often have a chance to interact.
  • Accelerator programs for health technologies fill gaps in funding and expertise. There are ways to successfully navigate the “valley of death” in health-related technology commercialization, but it takes the right connections to make it happen.
  • Lessons learned from university crowdfunding: Don’t expect too much. Crowdfunding has gained in popularity among tech transfer offices and university research labs, but some also are learning that raising money this way isn’t simple or guaranteed. Those who have been through the process a few times say they learned lessons along the way that can make any crowdfunding effort more successful.

Posted August 18th, 2015

Technology Transfer Tactics, July 2015 Issue


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

Technology Transfer Tactics
Vol. 9, No. 7, July 2015

  • U Washington TTO relaunches as CoMotion and expands focus to ‘innovation transfer.’ By any measure, the University of Washington (UW) in Seattle has seen some significant successes in the realm of technology transfer. However, this past January UW embarked on a three-year plan to rebrand and relaunch its former TTO (the Center for Commercialization) as CoMotion, a collaborative, entrepreneurial hub for what the university is calling “innovation transfer.”
  • MIT lab’s Translational Fellows Program injects a needed dose of entrepreneurship. An MIT professor and lab director has devised a way to help assess promising technologies while also encouraging post-docs to get involved in entrepreneurship by putting budding scientists to work on what has typically been a tech transfer professional’s job – doing what amounts to customer discovery as part of invention analysis.
  • As negatives rise, PAEs become less attractive to TTOs. Many TTO directors have long been wary of working with patent assertion entities (PAEs), but have been tempted nonetheless by the prospect of someone else doing the work of patent enforcement and the university receiving part of the revenue.
  • LLCs offer advantages for university start-ups, but beware of tax implications. The acronym “LLC” has become an easily recognizable term in the business community, but while these entities certainly have come into favor among entrepreneurs, limited liability companies have not yet become a staple in tech transfer.
  • Wichita State promotes local economic development with new job creation program. Wichita State University (WSU) is pursuing its goals of fostering local economic development and enhancing student experiential learning through a new self-funded organization called Ennovar. The unique partnership not only creates new jobs for university grads, it also generates revenue for the school in the form of company stock for every new hire culled from the campus.

Posted July 20th, 2015

Technology Transfer Tactics, June 2015 Issue


Technology Transfer Tactics, December 2014 IssueThe following is a list of the articles that appear in the June 2015 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 9, No. 6, June 2015

  • Avoid post-grant reviews with defensive prep, but know when to settle. It used to be that getting a patent was the big hurdle for commercializing your IP, and after that you could focus on getting it to market without worrying too much about protecting your rights. That is changing dramatically with the advent of patent challenges in the form of post-grant reviews at the Patent Trial and Appeal Board.
  • TTO creates roadmap to recovery from nightmare of financial disarray. It’s the stuff of nightmares for tech transfer professionals, but for MSU Technologies it was a living disaster.
  • Universities in high-stakes battle over CRISPR patents advised to settle. The potentially billion-dollar battle over gene splicing technology under way between the University of California and the Massachusetts Institute of Technology was probably unavoidable, given the proximity of the closely related discoveries made at both institutions. But the combatants in this case, if they’re smart, will end up sharing the financial benefits after the dust settles — and may well have an agreement in place already to do just that.
  • Cases illustrate importance of both oversight and outreach on ethics, conflict-of-interest. With research institutions pushing harder than ever for faculty to commercialize IP and test their entrepreneurial prowess, conflict-of-interest issues have become more complicated — indeed, some would say treacherous — than ever. But tempting as it may be to simply relegate ethics and COI rules to thick faculty manuals, the evidence is quite strong that this will hardly suffice.
  • A win-win: Business students get great experience, TTOs get extra manpower. Two prominent research universities have established innovative arrangements that give business students valuable real-world experience by providing opportunities to perform due diligence and other commercialization activities, which in turn contribute to the market advancement of institutional discoveries.

Posted June 17th, 2015

Technology Transfer Tactics, May 2015 Issue


Technology Transfer Tactics, December 2014 IssueThe following is a list of the articles that appear in the May 2015 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 9, No. 5, May 2015

  • Realizing potential: Keys to nurturing female-led innovation. Female participation in innovation and technology transfer activities is becoming a spotlight issue at many universities, thanks in part to the forward-thinking women leaders participating in the Association of University Technology Managers’ Women Inventors Committee.
  • Don’t accept equity dilution as inevitable with university start-ups. Dilution of the university’s equity is sometimes seen as an unfortunate but inevitable part of the start-up process, with any efforts to mitigate the dilution bringing their own risks of scaring away investors. That’s not the only way to look at preserving your equity, however, and some TTOs are taking a more proactive approach to keeping their share of promising companies.
  • Engage in customer discovery process to ensure innovations have a ready market. Ensuring that your TTO’s innovations have a market to sell into is one of the most critical challenges in managing your IP portfolio. Getting assurance that a product or start-up will find enough customers — or alternatively finding that a ready source of eager customers does not exist — helps ensure you’re putting your eggs in the right basket.
  • Washington U puts women innovators on the fast track. The Office of Technology Management (OTM) at Washington University in St. Louis just completed its second annual Women in Innovation and Entrepreneurship (WIE) event, an education and networking series that builds the commercialization knowledge and skills of women, who are traditional innovation underperformers at universities nationwide.
  • New Reg A+ rules from the SEC broaden access to capital. At last, the U.S. Security and Exchange Commission (SEC) has issued rules for Regulation A+ under Title IV of the JOBS Act — a long-awaited move that will enable companies to seek investment from both accredited and unaccredited investors in what could be called small-scale initial public offerings of up to $50 million within a 12-month period.

Posted May 19th, 2015

Technology Transfer Tactics, April 2015 Issue


Technology Transfer Tactics, December 2014 IssueThe following is a list of the articles that appear in the April 2015 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 9, No. 4, April 2015

  • Streamlined approach to faculty-owned start-ups eliminates haggling, up-front expenses. A top-tier university in terms of research productivity should be brimming with opportunities for innovation and entrepreneurship, but bureaucracy and other obstacles can certainly get in the way, and that is precisely what has been going on at Washington University in St. Louis.
  • When licensees go belly up: Here’s what TTOs need to know. In the world of early-stage technology, bankruptcy is an unfortunate fact of life.
  • TTOs urged to move ‘at the speed of business’ and increase deal flow. Veteran technology transfer executive Lee M. Taylor, JD, MBA, who’s now Vice President of Technology Sourcing at Edison National Medical, Charlotte, NC, has this to say about negotiating license agreements: “Negotiating for royalty rates is an almost complete waste of time.” While the wording of his assertion is, he acknowledges, intentionally provocative, his point is not.
  • Emory OTT celebrates staff achievement with unique teambuilding activities. Staff in Emory University’s OTT are treated to clever and amusing diversions such as monthly contests and celebratory bell-ringing to encourage and reward achievements.
  • U of Arizona creates a full menu of opportunities to attract student innovators. If your TTO’s outreach and support efforts are focused solely or primarily on faculty, there’s a very high likelihood that you’re not capturing potentially blockbuster IP and high-growth start-ups.
  • Early X Foundation does deep dive on latent IP to find new markets and applications. Early intervention is proving to be one of the strongest drivers for commercialization of IP.
  • Lines blur between tech transfer, economic development as schools focus on impact. As pressure continues to mount on universities to demonstrate the impact of commercialization efforts, the lines between tech transfer and economic development functions are blurring.

Posted April 17th, 2015

Technology Transfer Tactics, March 2015 Issue


Technology Transfer Tactics, December 2014 IssueThe following is a list of the articles that appear in the March 2015 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 9, No. 2, March 2015

  • TTO advocates for patent utilization rate as new performance metric. In an effort to demonstrate that it is not in the business of stockpiling patents, the technology transfer office at the University of Colorado in Boulder has developed a metric it refers to as the patent utilization rate — a measure that  simply denotes what percentage of all the university’s active U.S. patents have been licensed to commercial partners.
  • Angels pair with universities to create low-risk ‘Startup Factory’ for IP. A group of angel investors has been so successful in helping develop companies out of IP at the University of New Mexico that they are launching a second “Startup Factory” to find and nurture potentially marketable technologies out of the state’s research universities and national labs.
  • ASU’s satellite office extends TTO’s reach to vibrant SoCal ecosystem. In the technology transfer game, universities need to focus on disseminating knowledge and not on creating the most new start-ups or generating the most investor cash. That’s the thinking that led Arizona State University, based in Tempe, to open a satellite office in Santa Monica, CA, and to use it as a home base for a number of joint activities with other institutions.”
  • Heard in the Halls: AUTM 2015.
  • AUTM 2015: Experts share strategies tools and metrics for assessing TTO marketing. Just as important as developing marketing strategies is the ability to evaluate those activities and determine how effective they have been. At one of the sessions at the recent AUTM annual meeting in New Orleans, the panelists shared a number of tools they have used for metrics.
  • Experienced “Commercialization Partners” help guide start-ups to market at U Arizona. For entrepreneurs who are expert in their fields but know little about how to turn IP into a business venture, the guiding hand of experience can be invaluable.

Posted March 18th, 2015

Technology Transfer Tactics, February 2015 Issue


Technology Transfer Tactics, December 2014 IssueThe following is a list of the articles that appear in the February 2015 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 9, No. 2, February 2015

  • Purdue OTC hitting its stride after bevy of philosophical, operations, and policy changes. Purdue University’ Office of Technology Commercialization is coming off of a banner year: The number of IP-based startups in fiscal year 2014 is triple what the university generated the year before; global and U.S.-issued patents are up by a third; and licensing deals have increased by 20%. The increases are no accident .
  • Tech transfer office morphs into accelerator in new commercialization model. The University of Cincinnati has completely revamped its approach to tech transfer, and so far the new model appears to be a success.
  • Foreign outposts for TTOs increase opportunities, but come with challenges. Opening an extension of your tech transfer program in another country is not like opening one across the state, especially when the other country is as culturally and politically different as China. But some TTO programs are finding that the opportunities for commercialization make the effort worthwhile.
  • Start-Up Snapshot highlights Emory OTT’s successes. Emory University’s Office of Technology Transfer (OTT) has produced a unique infographic that concisely organizes and highlights its start-up activity including demographics, funding activities, key successes, and direct impact on employment and product discovery.
  • As patents become harder to protect, trade secrets emerge as viable option. Recent legislative and legal changes to patent protection paired with enhancements to trade secret protection have many technology transfer executives wondering if foregoing the high cost of patenting in favor of trade secret protection might be a better move in some cases. But while trade secrets may have a legitimate place in a TTO’s overall IP tool chest, keep in mind that keeping knowledge under wraps runs directly counter to a university’s educational mission, and favoring trade secret protection over patents can stymie licensing efforts, which remain a mainstay of TTO activity and revenue.

Posted February 13th, 2015