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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

Technology Transfer Tactics, August 2013 Issue


The following is a list of the articles that appear in the August 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. 8, August 2013

  • With new outside board, UCLA makes move to boost commercialization. The University of California at Los Angeles has all kinds of academic accolades, world-famous scientific faculty, and a sterling reputation. However, UC regents have concluded that for too long the school’s commercialization engine has lagged behind its peer institutions, and that it’s time to take the operation in a new direction.
  • NJ case challenges Princeton’s tax-exempt status based on licensing “profit” distributions to faculty. The tax-exempt status of research universities is being challenged in a case brought against Princeton University based on the school’s distribution of profits to faculty from research commercialization activity. Though the case is taking place in New Jersey, the outcome has implications for universities countrywide.
  • Uncertainty reigns in wake of Supreme Court’s Myriad decision. It may seem like the future value of gene-based patents took a serious hit with the recent Supreme Court decision in AMP v. Myriad Genetics — and the same-day announcement from two of Myriad’s competitors that they would begin offering a cheaper version of the company’s cancer diagnostic at issue in the case. Just weeks later, a lawsuit was filed to invalidate the seminal Wisconsin Alumni Research Foundation stem cell patent, arguing in part that the Myriad case was precedential in its reliance on a “products of nature” argument, which the plaintiffs contend applies equally to the WARF technology.
  • Case scenarios provide lessons in proper COI management of faculty start-ups. While the term “conflict of interest” often has a negative connotation, two COI experts agreed that conflicts in and of themselves are not a problem — but managing those conflicts effectively is a critical challenge.
  • U-Michigan alum fills “Innovation Evangelist” role on campus. The title — “Innovation Evangelist” — has an almost romantic ring, but the new position at the University of Michigan had slightly more mundane origins — the timely combination of a recognized need and the availability of the ideal candidate.

Posted August 20th, 2013

Technology Transfer Tactics, July 2013 Issue


The following is a list of the articles that appear in the July 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. 7, July 2013

  • U Utah’s renowned start-up engine takes time to reflect and refocus. Known for churning out start-up companies at a dizzying pace, the commercialization arm of the University of Utah is now moving into a new phase, according to school administrators.
  • Emory’s multi-stage triage process ensures all technologies get equal consideration. While triage processes are designed to optimize the potential for commercializing new technologies, a new multi-stage process at Emory University has a second — and equally important — goal.
  • Do open records laws threaten premature disclosure of university IP? The University of Wisconsin-Madison is seeking enhanced exemptions from the state’s open records law, a move it says is necessitated by the advent of the first-to-file patent-granting scheme laid out under the America Invents Act. Without an exemption, the school contends, industry sponsorships and other partnerships will be lost to private schools that aren’t affected by the records law, scared off by the very real risk that an invention in progress will lose its cloak of secrecy and thus its inside track on a prospective patent.
  • Employ better metrics to get more out of social media and digital marketing efforts. Tech transfer executives have a wide variety of tools available to measure the effectiveness of their social media and digital marketing efforts, but in many cases these tools are not being taken advantage of.
  • Legal Consult: Qualifying for reduced patent fees as a micro-entity: Implications for universities and TTOs.
  • New portal for university IP offers “comprehensive” search for industry, free marketing for TTOs. CollectiveIP.com, a new web portal designed as an all-in-one site for those seeking and offering university-developed IP, has capabilities that set it apart from other IP portals.

Posted July 19th, 2013

Technology Transfer Tactics, June 2013 Issue


The following is a list of the articles that appear in the June 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. 6, June 2013

  • In policy shift, commercialization activity will factor into promotion and tenure. In a unanimous vote, the University of Arizona Faculty Senate recently approved changes to the institution’s P&T criteria that not only remove the traditional barriers to innovative work, but also recognize such activities as important when making P&T decisions.
  • Jumpstart industry-sponsored research by reducing IP barriers. In March, two Iowa universities announced that they would tackle the IP issue by offering for-profit companies an exclusive licensing option for research sponsorships.
  • In bid to get IP off the shelf, Purdue policy deems “automatic reconveyance” after six months. Technology transfer officials at Purdue University have tweaked the school’s patent “reconveyance” policy, firming up the time frame for returning patents to inventors when the official commercialization apparatus takes a pass.
  • Individual research labs developing web sites with a focus on attracting industry. The typical research lab’s website is not exactly a marketer’s dream. You’re likely to see dense descriptions of scientific endeavors and a few press releases about the latest research paper — not the stuff to attract hordes of page views and attention from “customers.”
  • New Creighton TTO director outlines his formula for success. What does it take to develop a successful TTO, or dramatically improve an existing one? Lee Taylor, JD, LLM, MBA, who recently assumed the position of TTO director at Creighton University, has brought with him a number of creative ideas that he believes will lay a strong foundation for an effective tech transfer operation.
  • ‘National Advisory Board’ guidance spurs important initiatives for U Michigan. While most TTO advisory boards are local, the University of Michigan instead relies on what it calls its “National Advisory Board.”

Posted June 20th, 2013

Technology Transfer Tactics, May 2013 Issue


The following is a list of the articles that appear in the May 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. 5, May 2013

  • Reporting templates generate higher licensee compliance, stronger data. Many TTOs struggle to effectively monitor their many licensees for compliance with license terms, progress toward milestones, and adherence to royalty payment terms. It’s a big task, and some offices have made it much easier by developing reporting templates.
  • University hopes new faculty-friendly leave policy will spur start-ups. Many universities allow faculty inventors to take a leave of absence in order to get their start-ups off the ground, but for the faculty member typically must relinquish perks such as health care coverage, retirement plans, and life insurance for the duration of the leave. However, the University of Minnesota has just introduced a liberal new policy that will enable faculty members to retain those benefits.
  • Beef up internal tracking of start-ups. Fostering the success of start-up companies that are based on university technologies can be a difficult task, but collecting and monitoring the appropriate data can smooth the process.
  • Need an issued patent fast? Go to Canada first, then turn onto the Patent Prosecution Highway. Technology transfer offices at U.S. universities can fast-track — and cut the cost of — patenting some innovations by launching prosecution in Canada first, according to a Toronto IP professional.
  • Guest Commentary: Valuation of patent applications is no simple matter, but this method can help.
  • Use this “coachability checklist” to assess faculty’s readiness for start-up role. The assertion is clear and succinct: “Finding entrepreneurs that are truly coachable can mean the difference between success and another lost venture.”

Posted May 22nd, 2013

Technology Transfer Tactics, April 2013 Issue


The following is a list of the articles that appear in the April 2013 issue of Technology Transfer Tactics monthlynewsletter. 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. 4, April 2013

  • Universities inject scientific process into the business of start-up creation. One commonly heard refrain in the entrepreneurial realm is that researchers and scientists don’t make particularly good start-up artists. But what if the very practices that good scientists engage in on a routine basis are precisely what’s missing in the way new academic spinouts and other businesses are typically launched?
  • U Utah, RocketHub collaborate to launch new crowdfunding platform for universities. One of the most productive technology transfer operations for start-up creation in the nation — the University of Utah’s Technology Commercialization Office — aims to refine its process even further through a collaboration with crowdfunding platform operator RocketHub.
  • Students help create, operate novel start-up services for student entrepreneurs. Two new and novel efforts
    to stimulate student entrepreneurship on campus are the latest in what has been a near avalanche of university activity aimed at fostering student
    start-ups.
  • Columbia start-ups hit the jackpot in Vegas with CES demonstrations. It’s not something every TTO does (it may in fact be a first), but Columbia Technology Ventures is more than pleased that it recently backed the promotion of five of its start-ups at the massive Consumer Electronics Show in Las Vegas.
  • Guest Commentary: Stanford’s “No-MTA” policy cuts administrative burden for staff and eases delays for researchers.
  • Two major clinical organizations take big steps to expand commercialization activity. Experts in tech transfer have long recognized that medical devices represent a distinct class of inventions when it comes to commercialization — so does that mean an equally unique approach is required for optimal results?

Posted April 19th, 2013