Tech Transfer Central
Archer Norris

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

Technology Transfer Tactics, January 2015 Issue


Technology Transfer Tactics, December 2014 IssueThe following is a list of the articles that appear in the January 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. 1, January 2015

  • TTO leaders have diverse opinions on ‘right’ case load for licensing staff. Is there an appropriate number of new disclosures TTO managers should assign to members of their licensing staff each year? Some observers say that AUTM statistics indicate the proper range is between 20 and 26 per year, while authors have also cited 25 as a sensible target. But while many individuals contacted by TTT agree that as a target the number 25 makes sense, they still expect a wide range of performance and cases handled among their licensing managers for a number of reasons.
  • Universities tinker with policies, royalty formulas to boost tech transfer. In more evidence that universities are increasingly looking to their technology transfer operations to show benefits to the community and bring in new revenue, some schools are giving researchers added incentives to engage in commercialization activities.
  • U Minnesota sues four major wireless companies for infringement. The University of Minnesota’s unexpected patent infringement lawsuit against the nation’s four largest wireless service providers is simply an example of an IP owner protecting its valuable property, according to both school officials and tech transfer observers.
  • ‘Nearshot’ model targets potential licensees on the periphery of primary market. Sometimes a straight line is not the shortest way, at least when it comes to finding licensees. One veteran licensor says in many cases it makes more sense to steer just outside what logically is your primary target and seek out licensees on the periphery of that target group.
  • Patent Utility’ seeks to innovate the licensing process. The United States Patent Utility (“Utility”), a new marketplace developed by Patent Properties, Inc., clearly seeks to encourage licensing activity, but its creators have a more ambitious goal than that: their hope is to significantly enhance the way patented solutions find their way into the economy.

Posted January 16th, 2015

Technology Transfer Tactics, December 2014 Issue


Technology Transfer Tactics, December 2014 IssueThe following is a list of the articles that appear in the December 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. 12, December 2014

  • NJ tax case could have dire consequences for tech transfer. A lawsuit in the Tax Court of New Jersey could throw a very large wrench into university-based technology transfer.
  • Creative works programs can bring sizable revenues and quick ROI. Hitting a multimillion-dollar home run with STEM-derived intellectual property remains the big prize for technology transfer offices. Yet without the research dollars of the behemoths to reach for that brass ring, some small and mid-sized TTOs are turning to a quieter yet still profitable reality.
  • Student entrepreneurship stirs review, revision of IP ownership policies. With more students becoming entrepreneurs and developing IP before they graduate, universities across the country are taking another look at their policies on ownership of that IP.
  • Jumpstart creative works IP with proof-of-concept grants. CSU Ventures regularly gets engagement from the four STEM-focused colleges at Colorado State University in Fort Collins. “However, we almost get none from the other four colleges that are more humanities-oriented,” says Denichiro Otsuga, PhD, vice president. “Our goal is to widen the scope of engagement on campus from all colleges, not just hard-core STEM colleges, and money is always a good incentive.”
  • Yes or no? The commercialization question and creative works. The parameters that TTOs use to determine whether to move forward and commercialize creative works IP once an invention disclosure comes in the door often hinge on how established the program is, but all TTOs leave wiggle room to account for the unique nature of these innovations. Here’s a roundup of how three TTOs approach the commercialization decision.
  • U of Miami launching new Idea Portal to spur invention disclosures. U Innovation, the technology advancement center of The University of Miami, hopes to boost research commercialization by simplifying and streamlining invention disclosure procedures with a new online Idea Portal.

Posted December 12th, 2014

Technology Transfer Tactics, November 2014 Issue


Technology Transfer Tactics, October 2014 IssueThe following is a list of the articles that appear in the November 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. 11, November 2014

  • External reviews pull no punches, help TTOs drive improvements. The idea of giving outsiders free rein to put your TTO under a microscope would strike many tech transfer managers as off-putting, to the say the least, but that is exactly what some university administrations are doing.
  • Faculty ire over IP assignment illustrates continuing struggle in wake of Stanford v. Roche. When the University of Pittsburgh attempted this summer to update its intellectual property assignment processes — with an eye directly on the Supreme Court’s ruling in Stanford v. Roche — the pushback from faculty was so strong the school withdrew its proposal and retooled it.
  • UCLA establishes non-profit affiliate to enhance tech transfer efforts. UCLA has launched Westwood Technology Transfer, a separate non-profit that will have a big say in the direction of tech transfer and the investments made in specific.
  • In structuring agreements involving joint invention, avoid the “patent law punt.” Joint inventions can be a boon for both groups contributing to their development, but when the invention moves to commercialization, negotiating who owns what and how much can get sticky.
  • CCI’s online Inventor Toolkit designed to keep ideas flowing. With the release of its new online Inventor Toolkit to guide staff through the technology transfer process, Cleveland Clinic Innovations hopes to build on what has already been a stellar record.
  • Bulletproof your patents to avoid post-grant review disasters. Post-grant reviews have been on the horizon since the America Invents Act (AIA) first came to be, but TTOs haven’t had to worry much about them until now. Patents issued after June 2013 can now be reviewed, and that means there is a growing pool of IP that can be challenged and rights revoked. But it remains to be seen if post-grant actions will be as much of a threat as inter partes review.

Posted November 20th, 2014

Technology Transfer Tactics, October 2014 Issue


Technology Transfer Tactics, October 2014 IssueThe following is a list of the articles that appear in the October 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. 10, October 2014

  • Royalty monetization nets $42M as Rush cashes in on MS drug. Rush University Medical Center in Chicago, IL, just inked a $42 million dollar deal for the sale of worldwide royalties stemming from Ampyra, an FDA-approved drug that helps to improve walking in people with multiple sclerosis.
  • K-State co-founds new company in novel effort to de-risk and commercialize more IP. In an effort to expand commercialization opportunities, several universities have recently partnered with third-party companies to help them assess IP and to reach out to potential licensees and partners. But Kansas State University has taken that approach a step farther.
  • U Arizona shifts gears, aligns tech park strategy with tech transfer mission. Reaching the 20-year point in its history might in and of itself be sufficient reason for a university technology park to reassess and perhaps revamp its strategy, but at the University of Arizona there is an added incentive.
  • TTO applies ‘lean’ principles to individual labs and faculty in effort to match industry needs. The “lean start-up” is all the rage in tech circles, and it made an impression on Dan Langford, manager of industry partnerships at University of Nevada Reno and its Desert Research Institute.
  • Harvard’s IP evaluation “toolkit” helps standardize factors considered in patent decisions. The Harvard University Office of Technology Development has developed an IP evaluation “toolkit” that “embodies many of the questions instinctively asked by an experienced business development team with the aid of a knowledgeable patent counsel.”
  • Life sciences IP suffers from pinball effect in licensing as new indications emerge. A trio of business professors from Georgia Institute of Technology recently documented what they say are significant inefficiencies in the drug commercialization process and have offered their prescription for reducing the time and cost required for a new drug to reach FDA approval.

Posted October 16th, 2014

Technology Transfer Tactics, September 2014 Issue


Technology Transfer Tactics, June 2014 IssueThe following is a list of the articles that appear in the September 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. 9, September 2014

  • Bid for more innovation prompts dramatic changes at U of Missouri.It has been two years since Pennsylvania State University overhauled its IP policies, attracting a lot of attention, and in some cases criticism, for a new approach to sponsored research agreements.
  • Universities face an increasing likelihood of inter partes reviews. Inter partes review (IPR) can have a staggering impact on your TTO if it results in the loss of valuable patents, and some legal experts say you can expect to see more of this strategy in the future. IPRs cannot be avoided entirely, but there are ways to make this new form of patent challenge as difficult as possible.
  • Crowdfunding for university start-ups still taking baby steps as do-it-yourself options emerge. Crowdfunding is taking university fundraising by storm, as students and faculty have flocked to platforms like Kickstarter and Indiegogo in search of support for research projects, philanthropies, clubs and scholarships.
  • Boosting disclosures at St. Michael’s Hospital by walking the halls. MaRS Innovation, a member institution of the Networks of Centres of Excellence of Canada, has dramatically increased invention disclosures at St. Michael’s Hospital in Toronto by providing hospital researchers with an embedded technology transfer expert who offers commercialization guidance and access to other vital tech transfer resources.
  • Stanford adds widgets on website that map IP and research connections. Stanford University’s Office of Technology Licensing has debuted a new feature on TechFinder, its online technology transfer portal: embedded widgets that visually illustrate the connections between researchers, technologies, projects, publications, and patents.
  • Universities use third parties to invest in and de-risk their technologies. Two universities — one in the U.S. and one in Canada — are taking an approach to commercialization that few of their colleagues are employing: they are making deals with third-party organizations to market and/or invest in their inventions.

Posted September 17th, 2014

Technology Transfer Tactics, August 2014 Issue


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

Technology Transfer Tactics
Vol. 8, No. 8, August 2014

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

Posted August 15th, 2014

Technology Transfer Tactics, July 2014 Issue


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

Technology Transfer Tactics
Vol. 8, No. 7, July 2014

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

Posted July 16th, 2014