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New venture fund model at Georgia Tech boasts major corporate investors


By Jesse Schwartz
Published: June 13th, 2018

What do AT&T, Chick-fil-A, Cox Enterprises, Delta Air Lines, Goldman-Sachs, Georgia-Pacific, The Georgia Power Foundation, Intercontinental Exchange, Invesco, Home Depot and UPS have in common? Besides all having headquarters or regional offices in Atlanta, they are all also board members of Engage Ventures, a venture capital fund and accelerator based at Georgia Tech.

The Engage fund, launched in 2017 with $15 million, has increased to $18 million with the recent addition of board members Goldman-Sachs and Invest Georgia.

While university venture funds have become more prevalent across the country, this model is clearly unique. In addition to having as its foundation a board comprised solely of leading corporations, it also involves mentorship from board members, business intelligence, and a powerful corporate network of contacts and potential customers for the start-ups involved in the program.

Another key factor in the model is that it is much more than just a “university fund.” Engage and its accelerator are located in Georgia Tech’s Technology Square within the Advanced Technology Development Center (ATDC), a start-up incubator. “Most accelerator programs have a funding source, and in this case the [Engage] fund was created for the operation of the accelerator as well as for investment in start-ups,” explains Chris Downing, PE, the vice president of Georgia Tech’s Enterprise Innovation Institute (EI2).

The idea for Engage came from the highest level. “The President of Georgia Tech and local CEOs and myself started talking about the need to connect our large companies with the early-stage ecosystem,” recalls Blake Patton, founder and managing partner of Tech Square Ventures, an Atlanta-based seed and early-stage VC firm, and managing director for Engage. “As we talked, Marty Flannigan, CEO of Invesco and essentially the ringleader from the corporate side, shared a story about how he was looking at emerging technology, and that since he had previously been Co-CEO at Franklin Templeton and knew how to connect that network, what an advantage those relationships would be here.”

Patton adds that Bud Peterson, the Georgia Tech President, pointed out to the group that Tech had more than 20 innovation centers. “So we realized we had an opportunity to do something that not only provided funding, but even more important, connections and relationships; hundreds of executives of companies that dominate industry will know hundreds of innovators,” Patton says. “It could change the trajectory of success for entrepreneurs and what they would work on in the future.”

As the team “hit the road” with their concept, its appeal became apparent. “We talked with a handful of [corporate] peers and there was a tremendous amount of excitement,” Patton reports. “They were looking for activity to increase their pipelines and were also looking for the ability to have an impact on culture by getting their team involved.”

What was intriguing to them, he adds, was not just the opportunity to look at innovations, but to do it together, with the unique vantage point of multiple industries. “We knew we were on to something right off the bat; every single CEO resonated with it,” Patton recalls.

Each interested company was asked to invest in the program, to serve with one of the CEOs on the board, and each company was asked to appoint a “quarterback,” or “Sherpa,” to help the organization navigate in and out of corporate partners.

Georgia Tech, Patton continues, is an integral part of the program. “They provide the platform,” he explains. “They already had one of the country’s largest and oldest incubators, and we used that to build our platform out of. Georgia Tech’s abilities help us stand up to the community. We interface with the venture community through them and Invesco. [The combination] would be hard to organically create.”

A detailed article on the Engage venture fund model appears in the May issue of Technology Transfer Tactics. To subscribe and access the full article, along with the publication’s 11-year subscriber-only archive of best practices and success strategies for TTOs, CLICK HERE

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Stanford start-up developing lymphoma treatment files for IPO, seeks $115M


By Jesse Schwartz
Published: June 13th, 2018

A Stanford University biotech startup has filed for an IPO to advance its novel treatment for lymphoma. continue reading »

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Drafting and Negotiating IP Rights in Sponsored Research Agreements


By Jesse Schwartz
Published: June 13th, 2018

A properly executed sponsored research agreement when partnering with industry is imperative to protect the university’s IP rights. Typically, an SRA will address ownership, licensing rights, confidentiality, publication rights, rights to future IP, and enforcement of all IP rights. Each term and condition of the agreement requires expert analysis and negotiation.

That’s why Technology Transfer Tactics’ Distance Learning Division is hosting an encore presentation of this critically important and highly rated one-hour program: Drafting and Negotiating IP Rights in Sponsored Research Agreements. The encore will be broadcast on June 21 at a special time, 11 a.m. eastern/4 p.m. London, to better accommodate our customers overseas who may have missed the original presentation.

Our experts — who have vast experience on both sides of the table — examine key considerations and outline critical provisions, while offering best practices for drafting and negotiating SRAs that protect your university’s interests without turning off industry sponsors. For complete details and to register, CLICK HERE.

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Start-up licenses novel needle biopsy device from U Arizona


By Jesse Schwartz
Published: June 13th, 2018

A start-up that graduated from the University of Arizona’s i-Corps program has licensed the design for a next-generation needle biopsy instrument from the school. The device uses both electrosurgery and electrocautery to safely increase the size of tissue samples in minimally invasive biopsy procedures. continue reading »

Innovation and Entrepreneurship in the Healthcare Sector: From Idea to Funding to Launch is a 462-page guidebook that provides a clear road map for nurturing the entrepreneurial spirit among clinical innovators and applying proven business principles to fast-track new ideas into the marketplace. For complete details, CLICK HERE.

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U of Florida and Penn ink licensing deal for gene therapy to treat retinal disease


By Jesse Schwartz
Published: June 13th, 2018

Biotech company Ophthotech Corporation has entered into an exclusive global license agreement with the University of Florida (UF) Research Foundation and the University of Pennsylvania (Penn) to commercialize a treatment for a disease that causes blindness. continue reading »

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‘Get in the Ring’ start-up competition is launching its own university


By Jesse Schwartz
Published: June 13th, 2018

Get in the Ring (GITR), an international start-up competition that literally puts founders in a boxing ring, is planning to launch its own university. continue reading »

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Georgia Tech researchers team with Intel on technology to protect AI from malicious attacks


By Jesse Schwartz
Published: June 13th, 2018

Researchers at the Georgia Institute of Technology (Georgia Tech), in collaboration with scientists from Intel, have developed a technology to protect artificial intelligence (AI) systems from malicious software attacks. continue reading »

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Licensing Best Practices for tech transfer professionals


By Jesse Schwartz
Published: June 13th, 2018

The outstanding distance learning collection Topics in Tech Transfer: Licensing Best Practices contains seven practical sessions delivered by world-class experts covering a range of key licensing and negotiation strategies.

From building stronger license agreements and improving your negotiating tactics to new license agreement models and assuring post-license compliance with terms, you’ll gain solid guidance and dozens of takeaways you can use to boost deal flow, negotiate for optimal returns on your technologies, ensure licensees adhere to obligations, and speed the licensing process.

For complete details on all seven programs in this unique collection, CLICK HERE >>

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National U of Singapore, St. Jude license jointly owned Natural Killer cell technology


By Jesse Schwartz
Published: June 13th, 2018

The National University of Singapore (NUS) and St. Jude Children’s Research Hospital have licensed a jointly owned cancer-fighting technology that generates Natural Killer (NK) immune cells to Nkarta Therapeutics, a privately-held cell therapy company. continue reading »

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UC Irvine licenses out stem cell technology to enable the study of Alzheimer’s and other diseases


By Jesse Schwartz
Published: June 13th, 2018

FUJIFILM Cellular Dynamics (FCDI) and the University of California-Irvine (UCI) have entered into a licensing agreement to commercialize a technology that could help researchers develop new treatments for degenerative neurological diseases. continue reading »

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Comings and goings


By Jesse Schwartz
Published: June 13th, 2018

The University of Bridgeport has chosen Gary W. Plourde, an expert in patent law, to serve as director of technology transfer and venture creation. Plourde will lead efforts to boost innovation, entrepreneurship, tech transfer and commercialization at the university. He will also manage the $720,000 CTNext grant, which the school received in January to support tech transfer activities over three years.

Most recently, Plourde served as a patent agent at San Francisco-based Janus Angels. Prior to that, he worked in chemical patent litigation at Goodwin Procter in New York City and at Pfizer Inc.

Source: Westfair

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The Collat School of Business at the University of Alabama-Birmingham (UAB) has brought on Patrick J. Murphy to serve as the inaugural Goodrich Endowed Chair in Innovation and Entrepreneurship. Murphy has more than 15 years of experience teaching entrepreneurship at De Paul University and in Southeast Asia, the Middle East, New Zealand and throughout Europe. He has published multiple research studies of technology ventures and social enterprises.

In his new role at UAB, Murphy will support education and research in innovation and entrepreneurship at the Collat School of Business. “Hiring Dr. Murphy reinforces UAB’s commitment to innovation and entrepreneurship,” says Collat dean Eric Jack. “The Goodrich endowed chair will bring credibility, cross-disciplinary collaboration and the horsepower to significantly enhance our academic and experiential programs to help innovate Birmingham.”

Murphy comments, “I am very excited to join the world-class team at UAB and lead the academic entrepreneurship program. Our team is going to build and launch high-impact initiatives, serve aspiring student entrepreneurs and work with faculty members across the university, and support Birmingham’s amazing entrepreneurial ecosystem.”

Source: UAB News

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The University of California (UC)-Davis has selected landscape architect Robert Segar to serve as planning director of Aggie Square, the school’s new innovation campus. As planning director, Segar will manage the many people, programs and activities that will help the innovation hub grow. He is already known for planning many projects on the UC Davis campus including the Manetti Shrem Museum, the Mondavi Center for the Performing Arts, and the UC Davis Arboretum.

“Bob has played a central role in the growth and transformation of the UC Davis campus over the last 25 years, and I can’t think of anyone more qualified to live and breathe what Aggie Square should become,” says university chancellor Gary S. May. “He understands the complexities involved in such a major project, and he has demonstrated ability to work with a variety of communities to identify and achieve shared goals.”

Segar comments, “I have always viewed campus planning as an opportunity to connect people to their place and to each other, and I am thrilled the chancellor asked me to dive into this major initiative. I’m looking forward to working with community members, potential industry partners, faculty and students, all of whom have a vested interest in how we move forward.”

Source: UC Davis

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SAS decision could have chilling effect on university licensing


By Jesse Schwartz
Published: June 6th, 2018

The recent Supreme Court decision in SAS Institute v. Iancu could change how the Patent Trial and Appeal Board (PTAB) conducts future proceedings, with the Court directing it to provide a full written decision for all claims challenged. The court rejected the PTAB’s practice of “partial institution,” in which it provided a written decision that only addressed claims under review post-institution.

SAS had challenged the validity of a patent’s claims and PTO determined that some of the claims were likely valid and should proceed to trial. Other claims were not allowed to proceed to a final decision and SAS petitioned for a full written decision explaining why.

The decision notes that Section 314(a) of Title 35 prohibits the PTO director from initiating a review unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.” If the Director does initiate that review, Section 318(a) states that PTO “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).”

Justice Neil Gorsuch wrote for the 5-4 majority in the SAS case, noting that the law seemed clear. Nevertheless, PTAB only instituted review and issued a final written decision on a subset of the claims that SAS initially challenged. The Federal Circuit had affirmed the PTAB’s “partial institution,” saying the board’s final written decision only needed to address the claims under review post-institution. The Supreme Court reversed the Federal Circuit and remanded the case for further proceedings.

The SAS decision may change how universities address patent challenges, says Rubén H. Muñoz, JD, partner with the law firm of Akin Gump Strauss Hauer & Feld in Philadelphia. IPRs will now be a binary decision, either yes or no rather than one answer on some claims and no decision on others, he explains.

“Everything that was challenged will be subject to that decision from the moment of institution to the final written decision,” Muñoz says. “There is nothing the patent owner can do to change that other than withdrawing or amending claims along the way.”

Previously with PTAB’s partial institution practice in IPRs, the university might choose to forgo the other claims and go back to the district court saying that of the 10 claims that were challenged, for instance, only four were instituted.

“If the district court had stayed the patent infringement suit, the university could very go well go back and say it wanted to go forward with this case because it was only instituted on four claims and I have six I can still go forward with,” he says. “That will be less likely going forward, because even if the threshold weren’t met for all 10 claims to be under review, they’re still going to be part of the proceedings. This is not good news for universities, because now all the claims are at risk.”

The SAS decision can be seen as yet another blow to patent owners, but it may be an especially troublesome complication for universities and research institutions trying to generate licensing revenue, says Lauren E. Schneider, partner with the Lewis Roca Rothgerber Christie law firm in Los Angeles. She works with many of Southern California’s major universities.

“Obtaining a decision of invalidity may be easier in an IPR in front of the PTAB than in a case before a federal district court, so the Supreme Court’s mandate that the PTAB decide the validity of every challenged claim in an instituted IPR may make IPRs even more attractive to potential patent challengers,” Schneider says. “And as the risk of being pulled into an IPR proceeding can have a deterrent effect on licensing, universities and research institutions may find procuring lucrative licensing agreements for their patents to be even more challenging, requiring innovative negotiation and licensing strategies.”

A detailed article on the SAS decision and its impact on university licensing appears in the May issue of Technology Transfer Tactics. To subscribe and get the complete article, plus access the publication’s rich, 11-year archive of best practices and success strategies for TTOs, CLICK HERE.

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