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Attorney outlines top mistakes in patent licensing and how to prevent them


By Jesse Schwartz
Published: May 12th, 2021

A detailed article on the top patent licensing mistakes appears in the April issue of Technology Transfer Tactics. To subscribe and access the full article, click here. 

During his 34-year legal career focused on technology transfer and licensing, Russell Levine has seen a lot. A partner in the firm of Kirkland & Ellis LLP, he’s widely recognized as an expert in his field. So, his message resonated when he spoke at this year’s virtual AUTM conference about mistakes commonly made when drafting and negotiating patent license agreements.

Noting that patent licensing is a highly specialized and technical field within law and within business, Levine said courts expect participants on both sides of the process to anticipate the variety of issues that — if not addressed in the agreement — can lead to disputes later. Parties to licensing deals are expected “to address within the four corners of the agreement what happens to a sublicense when the master license is terminated. They expect us to identify what terms survive or do not survive the termination of the agreement. They expect us to set forth the details as to whether or not the findings of an audit can be challenged, and if so, how.” IP attorneys, he stressed, “are the ones who are expected to put in the four corners of the agreement language that reflects the intent of our client.”

Once an agreement is signed, the words used are the same words courts will use in any dispute. “We need to recognize that … patent license agreements are contracts,” Levine stated. “Most contracts are enforced by courts as they are written. The court is not going to rewrite the contract for us no matter how inequitable it may seem.”

To help TTOs prevent disputes and ensure all their rights and revenues are preserved, Levine delved into a range of common mistakes made when drafting and negotiating patent license agreements. Here’s the list – more details describing each mistake and strategies for avoiding them are available to subscribers in the April issue of Technology Transfer Tactics

  1. Failing to include “administrative convenience” language when royalties are paid on worldwide sales.
  2. Failing to distinguish between in-house and outside counsel.
  3. Failing to address whether or how licensees can challenge the findings of an audit.
  4. Failing to recognize that a forum selection clause may preclude a PTAB proceeding.
  5. Limiting the clauses that survive termination of the agreement.
  6. Failing to address the question of whether a sublicense survives termination of the licensor-licensee agreement.
  7. Assuming there’s no real difference between U.S. laws and the laws of other countries.
  8. Including inconsistent provisions.
  9. Conducting inadequate or incomplete due diligence.

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Harvard start-up aiming to improve gene therapy raises $100M


By Jesse Schwartz
Published: May 12th, 2021

A Harvard University start-up has raised $100 million to develop a more efficient delivery method for gene therapy. continue reading »

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Protect University Innovations by Drafting High Quality Provisional Patent Applications


By Jesse Schwartz
Published: May 12th, 2021

Poorly drafted provisional patent applications can be useless or even worse, they can actually work against you when it comes time to convert.

Provisionals are often devalued and tossed off as a quick and easy way to protect an invention for a temporary period of time, with minimal effort spent in drafting this application. But this early misstep can result in highly consequential problems during examination of the non-provisional application later.

Our Distance Learning Division recently teamed with a pair of experts from the Baker Donelson Law Firm on a critical distance learning event packed with best practices and expert tips for drafting a high-quality provisional patent application. Due to continuing demand and high praise for the program, we’re hosting an encore presentation on May 18, 2021, complete with all original materials.

For complete faculty and program details or to register, click here.

Also coming soon:

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Harvard spinout advances technology that could make COVID-19 testing 10 times faster


By Jesse Schwartz
Published: May 12th, 2021

Rhinostics, a start-up developing innovative solutions for lab workflow, has licensed a nasal swab technology developed at Harvard University that could dramatically reduce the time and effort required for COVID-19 diagnostic testing.

Developed in a collaboration between researchers at Harvard Medical School (HMS) and Harvard’s Wyss Institute for Biologically Inspired Engineering, the technology involves a capped swab that can be manipulated by robotic systems to allow efficient removal and transfer, as well as sample release. The researchers also created collection tubes with barcodes to allow clear sample-to-patient assignments.

Using this approach, the researchers estimate that the throughput of COVID-19 test samples in labs could be increased by a factor of 10 at the least, providing an effective solution to bottlenecks in COVID-19 diagnostics.

Richard Novak, lead staff engineer at the Wyss Institute, co-founded Rhinostics alongside HMS researcher Michael Springer. The start-up licensed the technology from HMS and the Wyss Institute through Harvard’s Office of Technology Development in accordance with the university’s commitment to the COVID-19 Technology Access Framework.

“COVID-19 has shined a light on the need for novel materials and innovation to allow laboratories to bring in more samples, faster,” says Cheri Walker, CEO of Rhinostics. “The elegant solution developed by the Harvard teams brings needed change to this segment of the laboratory workflow. We are excited to work to bring these innovations to market.”

Source: Wyss Institute

Global Licensing Terms & Agreements in Pharma, Biotech & Diagnostics is a 2,600+page research report providing comprehensive and up-to-date access to the latest licensing agreements announced in the pharmaceutical, biotechnology, and diagnostic sectors from 2014 through 2021. Click here for details.

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Duke start-up lands $7M in seed funding to accelerate purification technology for viral vectors


By Jesse Schwartz
Published: May 12th, 2021

A Duke University start-up has raised $7 million in seed funding to advance its purification technology for biotherapeutics. continue reading »

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Duke revamps its tech transfer model to boost innovation and economic development


By Jesse Schwartz
Published: May 12th, 2021

Duke University is revamping its tech transfer model to better support entrepreneurial faculty and staff while also boosting economic development in North Carolina’s Research Triangle. continue reading »

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CU Boulder launches accelerator to bring pandemic-focused technologies to market


By Jesse Schwartz
Published: May 12th, 2021

The University of Colorado (CU) Boulder has launched a new program to speed the commercialization of technologies designed to tackle the various challenges brought on by the pandemic. continue reading »

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World Benchmark Report: Data, Insights, and Best Practices from Business Incubators and Accelerators


By Jesse Schwartz
Published: May 12th, 2021

The 5th Edition of the World Benchmark Report: Data, Insights, and Best Practices from Business Incubators and Accelerators features data and best practices from 364 university, private, and corporate incubator and accelerator programs from 82 countries and 509 locations worldwide — the largest sample to date. Programs are benchmarked within their own peer groups based on three categories, seven subcategories, and twenty-one KPIs to reach an overall impact and performance score. And for the first time research has been extended beyond university incubators and accelerators to include public, private and corporate programs.

The World Benchmark Report is the only resource of its kind, presenting key figures and detailed guidance from top performing incubators that readers can compare and adapt to their own situation. No other resource will provide you with the quality or depth of information covered.

Priced at just $249 and delivered immediately in portable document format, this report is an affordable must-have for every incubator and accelerator.

Click here for complete details.

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U of Alabama Birmingham start-up raises $3M to advance treatments for lung disease


By Jesse Schwartz
Published: May 12th, 2021

A start-up from the University of Alabama at Birmingham (UAB) has secured $3 million in seed funding to develop and commercialize novel probiotic formulations for lung health. continue reading »

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WIPO launches executive course on IP and genetic resources in the Life Sciences


By Jesse Schwartz
Published: May 12th, 2021

The World Intellectual Property Organization (WIPO) has launched a new executive course, “Intellectual Property and Genetic Resources in the Life Sciences,” and registration is open through May 16, 2021 on the WIPO eLearning Center website. The course is scheduled to run from May 31 to July 17, 2021. continue reading »

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Comings and Goings


By Jesse Schwartz
Published: May 12th, 2021

UF Innovate, the venture arm of the University of Florida, has hired Karl R. LaPan to serve as Director of Incubation Services. In his new role, LaPan will lead both of UF Innovate’s award-winning start-up incubators, Sid Martin Biotech and the Hub. The facilities are home to more than 60 start-up and growth companies, offering a combined 150,000 square feet of labs, office space, conference rooms and scientific equipment.

LaPan comes to UF Innovate with over 20 years of experience in business incubation and has served as president and CEO of the NIIC, a non-profit entrepreneurial support organization, since its launch in 2000.

“The incubation industry is a small community, and it is very difficult to find people with extensive experience in entrepreneurial education, marketing, mentoring, and other facets of start-up development,” says Mark S. Long, current director of incubation services at UF Innovate. “I am personally thrilled to welcome Karl LaPan to the UF Innovate community. I know he can take UF Innovate Incubation Services to newer and greater heights, continuing the legacy of global award-winning programs established over the past several years.”

LaPan comments, “This is an exciting time for me to join the UF Innovate team and lead Incubation Services. With a team of talented incubation professionals at two world-class incubation facilities, a vibrant Gainesville Innovation District and a growing entrepreneurial ecosystem in Alachua, we are poised to ‘build, drive, and support the spirit of entrepreneurship’ so our companies can ‘feed, fuel, and heal the world.’ Combine that with UF’s world-leading resources to move promising research discoveries from the lab to the market, and we’re on our way to being a top-energized tech community in the Southeast.”

Source: University of Florida News

– – – – – – – – – – – – – – – – – –

The University of Cambridge has brought on Diarmuid O’Brien, a leader in tech transfer and innovation, to serve as chief executive of Cambridge Enterprise, the university’s venture arm.

O’Brien most recently served as chief innovation and enterprise officer at Trinity College Dublin, where he oversaw the development and enhancement of the school’s innovation and entrepreneurship strategy.

He has also served as director of Trinity Research and Innovation, where he led the establishment of the University Bridge Fund, which is ranked in the world’s top five collaborative university funds. In addition, O’Brien has held senior management roles in several university start-ups.

Source: University of Cambridge

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Universities offer best practices for fast start-up license packages


By Jesse Schwartz
Published: May 5th, 2021

A detailed article on express licensing models appears in the April issue of Technology Transfer Tactics. To subscribe and access the full article, along with our 14-year archive of best practices and success strategies for TTOs, click here.

Favorable deal terms and business development support were the focus in a discussion of best practices for quick start-up license packages at the 2021 AUTM annual meeting, held virtually this year.

Yale University developed its quick start-up license package eight years ago after finding that some negotiations with start-ups took up an inordinate amount of time, says John Puziss, PhD, executive director of business development in Yale’s Office of Cooperative Research.

“Faculty are not allowed to negotiate on behalf of the start-up, so we had to get someone to act as the entrepreneur, and in the absence of a seasoned entrepreneur this often fell to a student. So you had the administration of Yale negotiating against a student,” he says. “It led to some uncomfortable power dynamics, and we wanted to really streamline the process and make this very business friendly.”

Yale developed a template with a law firm that was representing some of the start-ups and wanted to work additional spinoffs from the university. The law firm did not represent Yale — and in fact was negotiating from across the table — but it worked cooperatively with the university to develop a template for a final deal that their lawyers would be comfortable presenting to start-up clients.

“The important thing is that this is no negotiation, take it or leave it as is. That has some benefits for the start-ups, in particular when we have faculty spinning out a company,” Puziss explains. “Otherwise they are not allowed to negotiate on behalf of the company, but here they can sign a license, take it to an entrepreneur or an investor and say they have a license.”

The license is designed to be business friendly, with “significantly watered down” due diligence requirements, Puziss says. The benefits to the tech transfer office are that it has accelerated the ability to get companies out the door, particularly with companies are that are essentially just the faculty member and a couple of students, he says.

“It allows them to have an incubation period within the university during which they can put together a pitch deck or a business plan, do some customer discovery and market discovery, and then they can sign a license and take this out to prospective investors,” he says.

The template has been used for software, research tool platforms, and similar engineering start-ups, and it has accelerated the TTO’s ability to support start-ups from the engineering departments, Puziss says. The template is not used for therapeutics because life sciences start-ups typically require much larger investments and investors expect a seasoned management team.

Washington University in St. Louis (WUSTL) has taken a similar path, says Leena Prabhu, PhD, associate director of the Office of Technology Management and Tech Transfer. WUSTL’s quick start licensing program was developed five years ago, also because the tech transfer staff was spending way too much time discussing licensing terms with start-ups, she says.

“We thought we could have this back-end loaded deal structure with favorable deal terms. We were very cognizant that we were leaving money on the table, but we wanted to enable the companies,” she says.

The template is non-negotiable, and Prabhu says there is an understanding between both parties that the deal is fair and reasonable. To qualify for the quick start license at WUSTL, the inventor must be a co-founder of the start-up and it must involve a single IP asset, Prabhu says. Software assets are excluded because — in contrast to the Yale model — the WUSTL non-negotiable template is designed more for therapeutic and diagnostic assets, she says.

“It also needs to be an early-stage IP asset,” Prabhu says. “The reason for that is that we waive patent expenses. If the IP asset is a provisional, non-provisional or a PCT filing, it will qualify for a quick start. In the post-nationalization stage, it wouldn’t because it would be deemed a mature asset where the patent expenses would be significant.”

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