Tech Transfer eNews Blog

Rogue EIRs and mentors can bring trouble, need limits and guardrails


By Jesse Schwartz
Published: June 22nd, 2022

A detailed article on working with entrepreneurs-in-residence and other university start-up mentors, and ensuring they adhere to university policy and act in the best interests of the founder and the university, appears in the June issue of Technology Transfer Tactics. To subscribe and access the complete article, or for further subscription details, click here.

Entrepreneurs-in-residence and mentors play important roles in guiding university start-ups, but the same independent streak responsible for their success can sometimes lead them to do things that are contrary to the university’s policies or expectations. Experts say tech transfer programs need to establish guidelines and guardrails to keep EIRs in their lane.

A rogue EIR can bring plenty of trouble for a tech transfer program and its start-ups, says K. Lance Anderson, JD, member and deputy CEO with the law firm Dickinson Wright in Austin, TX. He represents licensees and universities, and he previously worked in tech transfer from the university side.

“An entrepreneur-in-residence is a double-edged sword. It is so valuable to have that mentorship and perspective, but it can sometimes trigger things that are traps for the unwary,” he says. “That ranges from breaches of confidentiality to full-on circumvention of opportunity. While that often is not intentional, EIRs come from a perspective of private sector business and sometimes that does not mix well with innovation in an academic setting.”

EIRs typically are highly motivated people, which is part of what made them successful in business and why they are valuable as role models and mentors, Anderson notes. That can lead to conflicts of interest, however, with EIRs taking pieces of deals or having a consulting role that allows them to capitalize and benefit from the relationship to the exclusion of the university, he says.

“The EIR can be thinking that this is totally normal behavior, and from their perspective it is. But the university may have quite a different expectation,” Anderson says. “There ensues the drama.”

Anderson recalls one horror story in which an EIR claimed an inventorship position on the IP being developed. It created joint and several ownership, so if the relationship soured and an application were filed, that EIR would have rights in the IP — not at all what the university desired when connecting the EIR and the start-up.

“It was hard to tell if that was the EIR trying to get a piece of it in an illegitimate way or just interpreting the law, but because things like that are often done without a consulting agreement that has work-for-hire provisions, it can become a big problem,” he says. “Often you are talking about innovators coming from academic settings who have only nascent businesses at that point or perhaps no business at all, and they are trying to link up with EIRs, mentors, and other supporters of the cause.”

Anderson also has seen cases in which an EIR shepherds an investment round and essentially leverages control of the company, with the inventors cast aside.

Questionable relationships with EIRs can be a byproduct of the lean start-up methodologies that encourage operating with minimal structure and governance, Anderson says. The companies are bootstrapping and spending little or no money on consulting agreements, governance agreements, equity incentive plans, or profit-sharing agreements, he explains.

Under those formal arrangements, an EIR’s role as a consultant would be well documented, he says. “Instead, they are getting significant access to the new venture through these entrepreneurship programs without much constraint or defined limits,” Anderson says. “Most programs have them sign general confidentiality agreements and some statements about roles and responsibilities, and to some extent that’s helpful. But you can see where there are opportunities for a pretty big grey area.”

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Report highlights importance of tech transfer to U.S. economic growth


By Jesse Schwartz
Published: June 22nd, 2022

University and nonprofit tech transfer has made a huge contribution to U.S. gross domestic product (GDP), industrial gross output, and jobs over the past 25 years, according to a new study released at the annual BIO convention. continue reading »

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Returning Intellectual Property to the Inventor: An encore distance learning program


By Jesse Schwartz
Published: June 22nd, 2022

Once an invention is disclosed, the path to commercialization begins with critical assessments to determine whether the technology has a market, a market need, and can be patented or otherwise IP-protected. In some cases those assessments return with too many negatives — there may be too little interest among licensees or investors, difficulty in scaling up, competition and regulatory risks, and many other challenges that can be too difficult to overcome despite the TTO’s best efforts.

Rather than having the case files simply gather dust, the intellectual property can be — and in many cases should be — released back to the inventor. But that also has its challenges. For one, you must be very clear on restrictions and rights when doing so because there are many players and factors to consider. There’s also the valuable relationship with the inventor, which should be preserved and even strengthened. A delicate touch is necessary to communicate why the IP is being released, what led to the decision, and what the rights of the university, funding sources, and faculty are in relation to the innovation.

To address these issues, Tech Transfer Central’s Distance Learning Division recently teamed with Magdalena K. Morgan, PhD, Director of Licensing at Virginia Commonwealth University’s Innovation Gateway, for this insightful distance learning program: Returning Intellectual Property to the Inventor: How, Why, When…Then What? Based on rave reviews from attendees and continuing interest in the topic, we’ve scheduled an encore presentation for July 21, 2022.

For complete program details or to register, click here.  

Also coming soon:

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Korea Advanced Institute of Science and Technology sues its own IP arm over $200M patent infringement settlement


By Jesse Schwartz
Published: June 22nd, 2022

A patent owner and its own IP licensing arm are in dispute over the proceeds of a $200 million patent infringement case. continue reading »

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Potentially groundbreaking brain injury treatment from U of Texas reaches clinical trials


By Jesse Schwartz
Published: June 22nd, 2022

Researchers have tested an experimental therapeutic developed at the University of Texas Health Science Center at San Antonio that could transform the treatment of stroke and traumatic brain injury (TBI) patients. continue reading »

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MIT and Northpond Ventures partner to accelerate life science start-ups


By Jesse Schwartz
Published: June 22nd, 2022

MIT and science-driven VC firm Northpond Ventures have launched a new program to connect experienced investors with academic entrepreneurs to boost the commercialization of life science innovations.

The five-year MIT-Northpond Program will identify MIT researchers working on proof-of-concept research projects in life science fields such as diagnostics, therapeutic platforms, biomanufacturing, and software for treatment optimization. The researchers will receive mentorship from Northpond’s investors, as well as funding through the program. The Northpond initiative will also provide funding to the School of Engineering for its work in the life sciences.

“We are honored to be a part of this incredible collaboration and to have the opportunity to provide our faculty, postdoctoral fellows, and students working at the intersection of engineering and biology with the chance to drive fundamental change and impact,” says Angela Belcher, head of the MIT Department of Biological Engineering.

The MIT-Northpond Program will provide funding for up to five translational research projects per year, support two postdoc research fellowships with an emphasis on underrepresented groups, and also support for two faculty mentors.

“We have a shared mission and vision to promote and advance science and engineering and to make a marked impact on humanity. We see ourselves as a part of an ecosystem with the potential to advance engineering, science, innovation, and entrepreneurship,” says Michael Rubin, founder and CEO of Northpond Ventures, who will also serve as a visiting scholar in the Department of Biological Engineering.

“This unique program was established with the intent to couple incredible advancements in engineering and biology with innovative entrepreneurial and business opportunities,” says Anantha P. Chandrakasan, dean of the MIT School of Engineering. “There is tremendous potential for the MIT-Northpond Program to impact human health by accelerating and commercializing visionary breakthroughs in engineering and life science.”

Source: India Education

Get your copy of the 2022-23 Directory of Life Science VCs. Click here for more details.

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Student-led fund provides capital to start-ups with underrepresented founders


By Jesse Schwartz
Published: June 22nd, 2022

A student venture fund aimed at supporting underrepresented entrepreneurs has completed its first round of investments. continue reading »

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Alternative Equity and Exit Strategies for University Start-ups


By Jesse Schwartz
Published: June 22nd, 2022

In a fast-changing world — including the world of university start-ups — evolving and adapting to changing market conditions is imperative. And that applies perhaps most directly to two specific areas: the way equity stakes are handled, and the way exits are planned and executed.

Those changes are reflected in the rise of convertible notes and SAFE instruments as alternatives to typical start-up equity, and in the rise of special purpose acquisition companies as alternatives to traditional exits via acquisition or a traditional IPO. To help TTOs and their start-ups assess these alternatives and weigh their pros, cons, risks, and benefits, we’ve assembled this detailed, two-session distance learning collection: Alternative Equity and Exit Strategies for University Start-ups.

The collection features these two expert-led sessions:

  • SPACs and University Start-ups: Understanding and Assessing the Pros and Cons. Michael J. Blankenship, partner in the Houston office of Winston and Strawn, LLP, leads this program and explains what a SPAC is and why it has become such a popular option for going public – and why it can be especially attractive for university start-ups that may be undersized and wish to avoid the more difficult route to a traditional IPO.

For complete details or to order, click here

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Lenire Biosciences license Fragile X Syndrome therapeutic from U College London


By Jesse Schwartz
Published: June 22nd, 2022

Biopharma company Lenire Biosciences has entered into a license agreement with University College London (UCL) to commercialize a potential treatment for Fragile X Syndrome (FXS). continue reading »

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U of Cincinnati start-up aims to make healthcare more accessible through remote physical exams


By Jesse Schwartz
Published: June 22nd, 2022

A start-up from the University of Cincinnati (UC) aims to make healthcare more convenient and more equitable through remote appointments with physicians that incorporate real physical exams. continue reading »

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U Buffalo start-up develops tech to store human immune cells


By Jesse Schwartz
Published: June 22nd, 2022

A start-up from the University at Buffalo (UB) aims to commercialize a novel technology designed to store people’s healthy immune cells for future therapies when needed and also to serve as a source of valuable material for pharma companies looking to develop immunotherapies. continue reading »

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‘Dare to Discover’ campaign at U Iowa creates buzz for research and tech transfer


By Jesse Schwartz
Published: June 15th, 2022

A detailed article of the University of Iowa’s “Dare to Discover” campaign highlighted inventive students and postdocs appears in the May issue of Technology Transfer Tactics. To subscribe and access the complete article, or for further subscription details, click here.

TTOs looking for a new and impactful way to boost their brand in the community and generate goodwill among their early career researchers may want to take a page — or a banner — from the University of Iowa’s “Dare to Discover” campaign.

Since 2016, the school has shined a light on its innovators by displaying a series of banners on prominent streets in downtown Iowa City, with the researchers’ photos and descriptions of their research accomplishments beaming out at passersby. This year, for the first time, the campaign will feature postdocs in addition to undergraduate and graduate students.

“These exemplary students and postdocs, who were nominated by their faculty mentors and colleagues, show incredible commitment to their pursuit of new knowledge that advances our understanding of ourselves and the world around us,” says Marty Scholtz, ISU’s vice president for research. “They’re shining examples of what is possible when you pair research and creative activities with an undergraduate, graduate, or professional education.”

During the fall semester, the Office of the Vice President for Research releases a campus-wide call for nominations for outstanding researchers, creators and scholars from a wide range of disciplines, and the banners go up on January 1.

A typical year averages more than 200 nominations. Approximately 50 individuals are selected each year for the campaign, which, in addition to the displayed banners, also includes a social media component (#DiscoverUI) and a companion website (https://dare.research.uiowa.edu).

The 2022 campaign has 82 featured innovators — a larger-than-average number because it includes those who were selected for the digital-only 2021 campaign and missed out on a downtown banner due to the COVID-19 pandemic.

It takes between two and three months from the time featured students and postdocs are selected until marketing staff pull together all of the headshots, write the content, design the banners, and create the website.

“It’s a very tight timeline, but this is really an opportunity for us to raise the profile of research, scholarship and creative activity in our community, and to celebrate the innovative and transformative work that is happening here — in biomedicine, public health, the arts, engineering, dentistry, pharmacy, nursing, education and more,” says Leslie Revaux, the OVPR’s interim director for strategic communications.

The university partners on the campaign with the city and the Downtown District, which manage the banner poles on four busy streets around the city’s Pedestrian Mall. The UI banners occupy the poles from January through March.

The partnership started in 2016 and has been so successful that the city has continued to reserve spaces in their banner system for this campaign.

“We’re really grateful for their partnership on this,” Revaux says. “From their perspective, I think that it’s a great way to have fresh and vibrant content downtown throughout the year. For us, it’s a great way to showcase UI community members who are doing important work in labs, archives, and studios, across our campus — which often goes unrecognized — and celebrate their roles in our community.”

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