Tech Transfer eNews Blog

Spotlight on TTOs in pandemic may reveal path to better performance


By Jesse Schwartz
Published: July 29th, 2020

A detailed article on the higher profile among TTOs during the COVID-19 crisis, and the potential opportunities that presents for future improvements in process and performance, appears in the July issue of Technology Transfer Tactics. For subscription information, click here.

Universities and TTOs have delivered solutions to the COVID-19 crisis at lightning speed. From epidemiological modeling, viral gene sequencing, rapid testing and vaccine programs to ventilator production, 3D printed PPE manufacture and AI-driven identification, testing and production of therapeutics, universities have been on the front line of the pandemic with a very public profile. By and large this has produced a silver lining to TTOs and research commercialization activity as university labs and their innovation output are in the public spotlight like never before.

Keith Marmer, DPT, MBA, associate vice president for technology & venture commercialization and corporate partnerships at the University of Utah, notes that governments, politicians, and the public have become more aware of the promising university research that leads to new therapies, vaccines, and diagnostics. He speculates that this awareness will reinforce and shine a fresh spotlight on the need to continue to not only support but also to expand funding for academic research and tech transfer activity.

Chris Donegan, PhD, co-founder of Invention Capital Associates, a strategic consulting and investment firm, believes that governments are betting on science and innovation to pull world economies out of the current recession. One way they might seek to do this, he believes, is by leveraging the considerable infrastructure of academic labs, engineering facilities, and TTO expertise to deliver innovations that will power a recovery. “The infrastructure found in the university system is incredibly valuable, and I think that this value is almost certainly recognized more widely after COVID than it ever was before.”

However, the continued ascendance and increasing funding of innovation and technology transfer are not guaranteed. As Donegan points out, “universities have prominently led the science guidance for many governments, and while this leadership was initially greeted with universal praise, trust in academic epidemiological forecasts is waning and splitting along party political lines. There is a real risk of public disappointment as the reality of vaccine science emerges, and as retractions in major journals like The Lancet happen more frequently — due to poor publications discipline — may further [weaken] this support.”

Marmer conjectures that post-COVID, universities will vary in how much they can maintain the pace of technology transfer they reached during the pandemic, with its urgent need for innovation, quick licensing models, and rush of funding. But one thing the pandemic has confirmed and clarified, he adds, is that technology transfer is a fast-evolving field, and there’s always room for improvement. This improvement, he stresses, needs to happen as a collaborative effort among all stakeholders in the innovation environment, rather than just at universities.

“Technology transfer is a complicated process involving lots of moving parts,” explains Marmer. He mentions university policies, historically decentralized management in universities, conflict of interest issues for faculty, state and federal requirements, and the patent process as factors that can all conspire to slow down commercialization efforts. “These factors preclude TTOs from accelerating certain things. And a lot of companies and investors are just not used to dealing with those things.”

The coronavirus helped expose some of these issues, ironically, by revealing how quickly TTOs and others in the ecosystem could act when necessary. “With the COVID crisis,” adds Marmer, “we had the luxury of a common cause that doesn’t tend to exist in our day-to-day environment. I would use COVID-19 as an example of how we can view the world not from an adversarial standpoint, but [in terms] of what learnings universities — and those entities that work with universities and technology transfer — can recognize. We all can come together to make improvements in the university-industry interface.”

He draws a comparison between universities and drug companies. During the COVID crisis, Marmer notes, universities are primarily focused on delivering solutions; they are not thinking about profit. “Drug companies are doing much of the same,” he says. “But academia and drug companies normally must go through highly complex processes to deliver solutions to society. Neither do a consistently good job of explaining why they are so complex. Hopefully, our office and our university will use this potential day in the sun to do a better job communicating why we do things the way we do them. And to that end, all we can do is ask other stakeholders in the community likewise to do an equally better job of communicating with us. And we’ll take the time to understand them and hope that they’ll take the time to understand us.”

Marmer adds: “We have to use this time not as a window just to say tech transfer folks are good people, and we work hard. That’s been true for decades. Let’s use it as an opportunity to recognize we all have to come together and have a common conversation about how we all work together in a better manner.”

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Setting TTO Performance Benchmarks Based on Comparable Data Sets of Peer Institutions


By Jesse Schwartz
Published: July 29th, 2020

When comparing your tech transfer office’s funding, spin-out, disclosures and licensing data to other universities, it’s only fair to compare apples to apples.

For example, if your university’s research expenditures are $50 million, comparing it to a TTO whose spending is $500 million doesn’t give you an accurate picture of your relative performance. Any meaningful comparison requires normalizing data to ensure consistency in identifying strengths and vulnerabilities in areas such as funding, patents, licenses, revenues, staffing, start-ups, and more. And now, when many TTOs are faced with harsh budget cuts, this kind of analysis can help pinpoint and validate where adjustments are needed, as well as offer critical evidence of the impact on commercialization efforts. These measures can also provide TTOs with the data needed to convince administrators they require more resources if they are expected to help the institution attain new, lofty objectives.

Tech Transfer Central’s Distance Learning Division has teamed up with Laura A. Schoppe, President of Fuentek, LLC, and current chair of the AUTM Foundation board, to present a highly detailed webinar that will explore methods for setting reasonable benchmarks for your TTO’s performance based on linear peer data comparisons. Join us on September 9th for Setting TTO Performance Benchmarks Based on Comparable Data Sets of Peer Institutions.

Click here for complete program information or to register.

Also coming soon:

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Nobel laureate loses multi-billion dollar patent dispute with Dana-Farber Cancer Institute


By Jesse Schwartz
Published: July 29th, 2020

Nobel laureate Tasuku Honjo and his commercial partners have lost a U.S. Federal Circuit appeal in a patent dispute with the Dana-Farber Cancer Institute over revolutionary new methods for cancer immunotherapy.

The Federal Circuit upheld a Massachusetts court finding that two researchers who Dana-Farber claimed contributed to the invention must be listed as inventors, leaving Honjo and his partners Ono Pharmaceuticals and Bristol-Myers Squibb without exclusive ownership of the rights.

The six patents in question cover methods of treating cancer that involve boosting the body’s immune response to cancer cells by blocking the PD-1/PD-L1 pathway. The patents provide the basis for several major immune-oncology treatments including Opdivo, which earned Bristol-Myers Squibb $6.7 billion in 2018.

Honjo began applying for U.S. patents to protect the technologies in 2002. When granted, the patents listed only Honjo himself, two fellow Kyoto University researchers, and an Ono Pharmaceutical researcher as inventors.

However, in the course of his research, Honjo also collaborated with Gordon Freeman at Dana-Farber and Clive Wood at the Genetics Institute. The three worked on a joint journal article about the ligand that triggers PD-1 and discussed the possibility of using anti-PD-L1 antibodies to treat cancer. The same year, Honjo and Wood presented their collaborative research results at a conference.

In 2015, Dana-Farber challenged its exclusion from the patents, and the District Court for the District of Massachusetts decided that the institute had “presented clear and convincing evidence” that Freemand and Wood had “collaborated extensively” with Honjo and were, in effect, joint inventors.

Ono challenged this before the Federal Circuit, arguing that the lower court had not only erred in findings of fact, but that it also had applied an insufficiently tough inventorship test. According to Ono, the patents were novel and non-obvious over inventions patented by Freeman and Wood in 1999. In addition, the collaboration between Honjo and the two researchers was published in 2000 and “no longer qualifies as a significant contribution to conception” since it was made public, Ono says.

Nevertheless, the Federal Circuit found that “Ono asks us to adopt an unnecessarily heightened inventorship standard,” which would require each joint inventor to individually have conceived the complete invention and participated in a particular moment of conception.

Maria Zacharakis of McCarter & English says that inventorship disputes often arise from research collaborations involving multiple companies and institutions, and this case offers important guidance on questions of who gets credit.

“Some courts have called a joint inventorship analysis one of the muddiest concepts in the muddy metaphysics of patent law,” Zacharakis says, although scientists can mitigate related risks by maintaining records of the conception. “Such records may take the form of, for example, lab notebooks or copies of email communications between collaborators.”

According to Craig Titmus of Mathys & Squire, “It is very important to determine who the inventors are right from the start because, as we can see from this case, getting it wrong can have significant consequences for IP ownership. This is sometimes difficult to achieve when there is a history of free and open collaboration between institutions, as is often the case for university academics, but it’s a critical part of determining the rightful owner(s) of collaborative IP.”

Source: iam

Determining Inventorship for University IP is a distance learning program that will help you fully understand the parameters of each type of inventorship and avoid the damaging consequences of inventorship disputes. Click here for complete details.

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UCLB and Apollo Therapeutics sign license agreement for gene therapy with Deerfield Management


By Jesse Schwartz
Published: July 29th, 2020

UCL Business (UCLB), the commercialization arm of University College London, has entered into a license agreement with Apollo Therapeutics and healthcare investment firm Deerfield to advance a novel gene therapy program developed at UCL. continue reading »

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Harvard start-up develops vesicle-based drug delivery system


By Jesse Schwartz
Published: July 29th, 2020

A Harvard University start-up aims to commercialize a novel drug delivery system that uses tiny, mobile vesicles to direct therapeutic molecules where they’re needed. continue reading »

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Amend Surgical licenses Harvard technology to improve oral surgery


By Jesse Schwartz
Published: July 29th, 2020

Amend Surgical, a Florida-based medical device company, has licensed a technology from the Wyss Institute for Biologically Inspired Engineering at Harvard University that could improve the quality of care in the field of oral surgery. continue reading »

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New reports on research, funding, and patent activity in four key technology sectors


By Jesse Schwartz
Published: July 29th, 2020

In partnership with Primary Research Group, Tech Transfer Central is offering four new reports filled with detailed information on research activities, funding, contracts, patents in the fast-moving fields of Solar Energy, Alzheimers & Dementia, Unmanned Aerial Systems, and Water Desalination & Decontamination.

If your organization is involved in any of these dynamic research arenas, you won’t want to be without these important resources that can help you navigate the current research and funding environment and gain critical insight into current developments. Each study is jam-packed with dozens of easy to scan charts and figures displaying data and analysis you can’t find in any other publication. Click on any of the titles below for details and tables of contents:

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U of Kentucky, Jackson State and XLerateHealth launch accelerator program for HBCU innovators


By Jesse Schwartz
Published: July 29th, 2020

The University of Kentucky (UK) and national start-up incubator XLerateHealth are partnering with Jackson State University (JSU) to launch a program aimed at accelerating healthcare innovations developed at Historically Black Colleges and Universities (HBCUs). continue reading »

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New private-public partnership in Kentucky aimed at turning university innovations into job-creating tech companies


By Jesse Schwartz
Published: July 29th, 2020

Governor Andy Beshear last week announced the creation of Kentucky Commercialization Ventures (KCV), a new public-private partnership unique in the U.S. that aims to develop academic innovations into job-creating tech companies. continue reading »

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British start-up develops 3D printed medical devices that speed recovery from surgery


By Jesse Schwartz
Published: July 29th, 2020

A company spun out of the Universities of Birmingham and Warwick aims to commercialize a 3D printing technology that helps patients recover from major medical procedures more quickly. continue reading »

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Researchers at MIT and Brighman and Women’s Hospital develop reusable mask for healthcare workers


By Jesse Schwartz
Published: July 29th, 2020

Researchers at MIT and Brigham and Women’s Hospital have developed a reusable face mask that appears to prevent viral infection just as well as the non-reusable N95 masks. continue reading »

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Toyota IP Solutions licenses out automatic emergency brake testing system developed with IUPUI


By Jesse Schwartz
Published: July 29th, 2020

Toyota IP Solutions and Hebei Pride have entered into a license agreement to commercialize a new automatic emergency brake (AEB) testing system. The system was developed through a partnership between the Toyota Collaborative Safety Research Center (CSRC) and the Indiana University-Purdue University-Indianapolis Transportation Active Safety Institute (IUPUI-TASI). continue reading »

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