Tech Transfer eNews Blog

Don’t lose your university’s IP to faculty “consulting time”


By Jesse Schwartz
Published: October 16th, 2019

It’s the response that tech transfer leaders never want to hear when approaching a faculty member about intriguing new intellectual property: “Oh, I did that as part of my consulting work for a company. It wasn’t done on university time.”

As most tech transfer professionals can attest, heated disputes can arise when university leaders do not agree. Ugly, expensive litigation can result. Even if the university prevails in the end, relationships with faculty and outside companies can be irretrievably broken. That’s why tech transfer leaders should take extensive precautions to avoid such disputes, which will require carefully constructed policies and written agreements.

With the changing nature of the workplace, particularly the 24/7 workday and the ability to work remotely, “university time” becomes more and more difficult to define, says Sally L. Byrne, JD, partner with the Culhane Meadows law firm in Boston, MA. In addition to inventions conceived or developed on “university time,” the university should seek ownership for inventions that were developed using the university’s resources, she says, regardless of faculty’s claims of “when” they were conceived.

It is well worth the effort to avoid ownership disputes through proper policies and procedures, adds Jeffrey B. McIntyre, JD, partner with the Oblon, McClelland, Maier & Neustadt law firm in Alexandria, VA. Companies will understandably try to claim ownership of IP if they paid for the research in a consulting agreement, and universities tend to take a broad view of how their faculty use their work hours. Both sides may refuse to budge, especially when there is the potential for a significant payday stemming from the IP.

“When it does happen, it’s a mess. You have to come to some type of settlement about the rights, but at that point the toothpaste is out of the tube,” McIntyre says. “Nobody’s going to be truly satisfied in the end, and you will just wish you had taken steps to avoid that kind of confrontation.

Once a dispute arises, the university is at a disadvantage, McIntyre says. The company may have much more to gain from revenue generated by the IP than whatever the university would earn in licensing it, he says, and the company may already have deeper pockets and more willingness to pursue litigation. Unless the prior agreements are very clear about ownership, the university can face an uphill battle in the courtroom, he says.

A detailed article on preventing IP disputes over faculty “consulting” work appears in the October issue of Technology Transfer Tactics. For subscription information, CLICK HERE.

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U of Florida launches fund to support faculty-led start-ups


By Jesse Schwartz
Published: October 16th, 2019

The University of Florida (UF) has launched a venture fund to support start-ups based on university innovations. continue reading »

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Improving Data Integrity: Boost TTO Operations and Gain Reliability in Your Invention Management Database


By Jesse Schwartz
Published: October 16th, 2019

Tech transfer offices have a multitude of stakeholders to whom they must provide varying types of information. Inventors want to know the status of their invention disclosures, patents, and licenses. Institutional leadership wants to understand summaries of the same, plus financial information, sliced and diced in various ways. Then there are government agencies and trade associations like NIH and AUTM, as well as economic development agencies and other partners. And beyond all of that, even more important are the operational insights the TTO needs to function at top efficiency and effectiveness.

Your invention management database is a crucial tool in responding quickly and accurately to both operational and stakeholder reporting needs. But all too often the data TTOs produce falls short of needs and expectations due to errors, inconsistencies, and incompleteness. That’s why Technology Transfer Tactics has scheduled this important distance learning program for November 21st: Improving Data Integrity: Boost TTO Operations and Gain Reliability in Your Invention Management Database.

Regardless of what type of system you use, you will learn how to significantly improve data collection and reporting to enhance your office’s performance and its responsiveness to stakeholders. For complete details and to register, CLICK HERE.  

Also coming soon:

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Drexel to launch three-year bachelor’s degree in entrepreneurship


By Jesse Schwartz
Published: October 16th, 2019

Drexel University is introducing a new three-year bachelor’s degree program in entrepreneurship and innovation.

Based in the Charles D. Close School of Entrepreneurship, the program will offer students an experiential learning opportunity to work on their own start-up, family business or for an employer of their choice. Students in the program will graduate as early as two years ahead of students in a traditional bachelor’s degree program.

“The program caters to the most determined entrepreneurs that may find it challenging to balance four to five years of classes while also eager to start and grow their businesses,” says Donna De Carolis, founding dean of the Close School and professor of entrepreneurial leadership.

Courses will include “Ready, Set, Fail,” which prepares students for the risk associated with launching a business, how to appreciate and learn from failure, and how to use that knowledge to build future successes. Another course called “Social Entrepreneurship” will examine how people launch successful ventures aimed at addressing the world’s most challenging social and environmental problems.

“We have developed a curriculum that teaches resilience, collaboration, negotiation and communication,” says De Carolis. “The three-year degree program is particularly appealing to a student who is determined, disciplined and goal-oriented, as we find that many entrepreneurship students are.” The program is slated to launch in fall of 2020.

Source: Drexel Now

Student Innovation: Tapping Into the Gold Mine of On-Campus Talent is a two-session distance learning program spotlighting two student-focused innovation and business development programs, with dozens of lessons you can apply in creating an ecosystem of experiential learning to foster start-up creation. For complete details, CLICK HERE.

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Qrons licenses Dartmouth technology that uses 3D printing to treat brain injury


By Jesse Schwartz
Published: October 16th, 2019

Qrons, a biotech company developing hydrogel-based solutions for brain injuries, and Dartmouth College have entered into an exclusive licensing agreement to commercialize 3D-printed treatments for penetrating brain injuries. continue reading »

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KAUST start-up aims to bring supercomputing power to companies of all sizes


By Jesse Schwartz
Published: October 16th, 2019

A start-up from King Abdullah University of Science and Technology (KAUST) in Saudi Arabia has landed a $2 million investment to support its groundbreaking cloud-based supercomputing technology. continue reading »

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2020 edition of Export Controls Compliance Practices Benchmarks for Higher Education released


By Jesse Schwartz
Published: October 16th, 2019

The just-released 2020 edition of Export Controls Compliance Practices Benchmarks for Higher Education contains a wealth of data and in-depth analysis that’s become more critical than ever in light of intense scrutiny of foreign influence in research activity.

This one-of-a-kind resource provides a rich set of benchmarks and data to compare against your own practices and procedures regarding compliance with U.S. export control regulations and related strictures. You’ll find detailed data on staffing, budgets, data protection, legal costs, compliance training, and risk assessment, along with invaluable peer advice. This 92-page study is jam-packed with dozens of easy to scan charts and figures displaying critical data you can’t find in any other publication.  

For complete details and to order, CLICK HERE.

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Start-up at UMass Lowell advances platform for creating universal flu vaccine


By Jesse Schwartz
Published: October 16th, 2019

A start-up being supported by the University of Massachusetts-Lowell is developing a method that can quickly create vaccines, hoping to improve the effectiveness of flu vaccine even as it mutates and resists immunization efforts. continue reading »

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Chicago-based start-up licenses U of Michigan software that helps patients going through in-vitro fertilization


By Jesse Schwartz
Published: October 16th, 2019

A Chicago-based start-up has licensed a technology from the University of Michigan (U-M) designed to bring more fertility tools and resources to patients going through in-vitro fertilization (IVF). continue reading »

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U of Edinburgh start-up raises £2.75M to help lower death rates among dialysis patients


By Jesse Schwartz
Published: October 16th, 2019

A University of Edinburgh start-up has raised £2.75 million to advance a technology that could help reduce the high death rates among dialysis patients. continue reading »

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Comings and goings


By Jesse Schwartz
Published: October 16th, 2019

The University of Texas at San Antonio has named Bernard Arulanandam vice president for research, economic development and knowledge enterprise. Arulanandam is charged with shaping the university’s research and commercialization operations, as well as more fully integrating UTSA’s economic development initiatives into its knowledge enterprise to help the university achieve its 10-year strategic plan, which includes securing National Research University Fund eligibility and an R1 designation from the Carnegie Commission on Higher Education.

Arulanandam, a professor in bioscience at UTSA who has been serving as interim vice president for research, was elected to the National Academy of Inventors in 2018. He has directed a research program focused on the body’s immune response to bacterial diseases, with a goal of developing vaccines and therapies. He has several other leadership positions at UTSA, including assistant vice president of research support from 2012 to 2016 and associate dean of research for scientific innovation in the UTSA College of Sciences from 2009 to 2012. He also was director of the South Texas Center for Emerging Infectious Diseases from 2012 to 2016.

“The depth of the discovery and innovation taking place across the university’s research and economic development enterprise rivals that of top research institutions in the nation,” Arulanandam said. “I look forward to further collaborating with faculty, staff, students and university leaders to serve this growing ecosystem and help propel UTSA to national recognition.”

Source: San Antonio Business Journal

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The Ion, Rice University’s hub for start-ups housed in the $100 million renovated space that was formerly the Midtown Sears building, has chosen Gaby Rowe, CEO of innovation hub Station Houston, to serve as executive director.

Since the Ion’s plans were first announced in April 2018, Rowe has worked closely with Rice Management Co., which manages the university’s $6.3 billion endowment, as CEO of Station Houston.

Station Houston was originally slated to oversee the Ion’s entrepreneurial workshops, conferences, job training, educational classes and other programming. But Rice Management Co. says that Station Houston will not be the exclusive provider of start-up services, since “the Ion plans to house a wide range of incubators and accelerators to serve the broader needs of the innovation ecosystem.” In her new role, Rowe will oversee the Ion’s programming and operations as a Rice employee.

“We know that under Gaby’s leadership, the Ion will become an innovation hub for not only all Houstonians, but for anybody looking to thrive and collaborate in an entrepreneur-first, tech-forward environment,” says Allison Thacker, president and chief investment officer of Rice Management Co.

Source: mySA

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Paul Nichols has been named executive director of the UT-Dallas Institute for Innovation and Entrepreneurship, replacing Steve Guengerich, has who led the institute since 2017. Nichols has worked as an academic, a venture capitalist and as the leader of a start-up. He plans to tap into those experiences to help more students launch their ideas into the Dallas-Ft. Worth marketplace.

“I’ve literally been on both sides of the table, not just as an investor and a start-up founder but also from the university perspective,” Nichols says.

Celebrating its 50th birthday this year, UT-Dallas has been gaining a reputation as one of the top STEM programs in the country, and Nichols expects the Institute for Innovation and Entrepreneurship to help continue that growth.

Two of the main components of the institute are its co-working and incubator space: the Blackstone LaunchPad and the Venture Development Center. The space is open to students, but also to faculty and alumni, creating an environment where entrepreneurs from all walks of life can work in tandem. It helps students develop ideas and then connect with others in the North Texas market who could help bring that product to life, and it helps regional businesses connect not just with products and technology but also with a highly-skilled, young workforce. “You get the right people in the room together with the right idea, that’s where the magic happens.… That’s how really interesting things get started.”

Nichols has plans for growing the institute both internally and externally. Internally, he is looking to increase the amount of interdisciplinary study for students in the program and giving them more tools needed to thrive after graduation. Externally, he wants to increase the amount of collaboration between the business and academic community — something he says UT-Dallas is well-positioned to do.

Source: Dallas Business Journal

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Supreme Court won’t hear U Wisconsin’s patent infringement appeal against Apple


By Jesse Schwartz
Published: October 9th, 2019

In a big win for Apple and a setback for the University of Wisconsin, the Supreme Court on Monday did not take up an appeal by UW involving an infringement case over chips in iPhones and iPads.

In 2015, a jury sided with the university’s claims that Apple had infringed on its patents, and the tech giant was ordered to pay $234 million in damages. Then, in 2017, a judge more than doubled the verdict to $506 million, ruling that Apple owed up to $2.34 in royalties for every device it sold.

Last year, Apple managed to convince the Court of Appeals for the Federal Circuit to throw out the ruling. The court ultimately decided that “no reasonable juror could have found infringement based on the evidence presented.”

The University of Wisconsin then filed its appeal, arguing that the court wrongfully reinterpreted a question that should have been left to the jury — a point support by a number of prominent patent scholars.

Now that the Supreme Court has decided not to hear the appeal, the university is out of legal options, and Apple has won the case.

The Wisconsin Alumni Research Foundation (WARF), the university’s commercialization arm, comments, “While we are disappointed with the Supreme Court’s decision, we are still pursuing Apple’s infringement in U.S. District Court.”

Source: Fortune

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