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Technology Transfer Tactics, July 2016 Issue


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

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

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

Posted July 18th, 2016

Technology Transfer Tactics, June 2016 Issue


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

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

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

Posted June 20th, 2016

Technology Transfer Tactics, May 2016 Issue


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

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

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

Posted May 19th, 2016

Technology Transfer Tactics, April 2016 Issue


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

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

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

Posted April 20th, 2016

Technology Transfer Tactics, March 2016 Issue


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

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

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

Posted March 18th, 2016

Technology Transfer Tactics, February 2016 Issue


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

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

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

Posted February 19th, 2016

Technology Transfer Tactics, January 2016 Issue


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

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

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

Posted January 19th, 2016

Technology Transfer Tactics, December 2015 Issue


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

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

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

Posted December 16th, 2015

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