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Tech Transfer eNews

Tech Transfer E-News provides a weekly round-up of current news and information in the world of tech transfer, delivered every Wednesday (sign up here). It is published by Technology Transfer Tactics newsletter, which is available as a monthly subscription. For more information or to order a subscription click here, or for a sample issue, click here.

Approach to confidentiality with student researchers poses complex challenges

A detailed article on issues related to confidentiality and the use of NDAs with student researchers appears in the March issue of Technology Transfer Tactics. To subscribe and access the complete article, or for further subscription details, click here.

When you have student researchers working in university labs doing confidential work with commercialization potential, what’s the best approach in terms of assignment, NDAs, and the like? When it comes to TTOs, the answers to that question can vary quite a bit. When it comes to attorneys? Not so much.

“While we in the UC system have a lot of policies systemwide — and we do not break those — ultimately the decision I made in these situations is we’re not going to have [a student] in the lab sign something nobody else needs to sign,” says Jeffrey Jackson, MS, JD, University of California, Santa Cruz (UCSC) director of innovation transfer. “We do not have an overall NDA in the system for anybody — be it faculty or staff…. There’s an assignment with patent acknowledgement, and that’s what people sign.”

“NDAs — that’s too ‘blanket’ a policy,” asserts Joe Runge, JD, MS, associate director with UNeTech and UNeMed at the University of Nebraska Medical Center. Rather, he explains, those decisions are made on a case-by-case basis. “We do use assignments; we treat those students as inventors under our university policy.”

At Australia’s Queensland University of Technology, things are perhaps a bit tougher. “We do have a student protocol under our IP policy,” says Kate Taylor, director of industry engagement with QUT. “Part of that deals with assignment.” Signing an NDA, however, is “purely an option for the student if they want to participate in a project [that requires one] — or [they can] find another. If they do opt in and are obligated to confidentiality or there’s a requirement to assign IP, those are put in place with them.” It is “probably a more common scenario where there are both confidentiality requirements and assignment,” Taylor says.

Not surprisingly, perhaps, attorneys take a less flexible stance on confidentiality. “NDAs? absolutely; there needs to be some level of control of the information,” says Jim Chester, IP attorney with Klemchuk PLLC in Dallas. Still, he adds, the needs may vary due to the innovations involved. “If you’re researching some new finance formula or sociology, it may be more about academic integrity, but a pharmaceutical or treatment for cancer or energy innovation could have tremendous commercial potential, so at a minimum you have to make sure not to post anything outside [the lab] environment,” he notes.

“At the very least, if there are some discussions happening [about a project] you need NDAs of course,” says Kirby Drake, partner in the Dallas law firm that bears her name. “But in terms of what goes on within the labs it gets to be trickier, because especially in university settings there may be agreements or other contracts that people working in labs — professors or students — may already be under, but they may not necessarily realize they are either protected by or need to adhere to them.”

That may be an employment agreement, but there may be other agreements that already specify they have certain confidentiality requirements if work is done within the lab, she explains. “I’ve looked at a lot of those, and they can be all over the map as to what may already be provided, which makes it difficult,” says Drake.

These variations in policy often reflect a different perception of these students, and whether they should in fact be treated any differently than, say, the other “inventors” in the lab. Sometimes distinctions are drawn based upon whether the student receives “consideration” for their work (not necessarily financial) or whether the student is an undergrad or graduate.

“You have slightly more leverage with paid students, but you should approach it the same way — they have the same access, the same risk,” says Chester. “When they’re not paid, they may be more likely to share things — to treat it like a class. But they should have the same document and training — at whatever level, even professors.”

“My personal belief is as much as possible you should treat everyone under the same standard, because more often than not even with undergrads they may not be getting paid by the hour, but credits or other considerations come to them by being exposed to this information,” adds Drake. “Any student or anyone involved can destroy the potential for being able to patent something.”

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U Buffalo biopharma start-up acquired by Merck in deal worth up to $208M

A University at Buffalo (UB) start-up focused on antibody-drug conjugates (ADCs) has been acquired by global biopharmaceutical company Merck in a deal worth up to $208 million. continue reading »

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IP License Agreement Primer: Understanding Key Provisions Without the Legalese

The License Agreement is the lifeblood of the TTO and the key documents that so much of what you do revolves around. It’s what you depend on to provide a roadmap to license compliance, revenue recognition and tracking, IP protection, and how your valuable innovations are commercialized. That’s why it’s essential for tech transfer staff at all levels to understand each section of the contract so they can carefully review and negotiate each component — and ensure that the university’s rights and obligations are clearly defined and adequately protected.

We’ve teamed up with licensing gurus Jonathan Gortat and Evan Elder of Stanford University’s Office of Technology Licensing to bring you this 90-minute, comprehensive webinar: IP License Agreement Primer: Understanding Key Provisions without the Legalese, scheduled for April 16th. In this “A to Z” webinar, participants will obtain a clear understanding of key provisions of a license agreement in everyday language as opposed to legalese. Important issues to consider and look out for will be discussed, and the webinar will be aimed at educating those newer to licensing or not in traditional licensing roles within the university. 

Use this expert-led primer to train your newer and less experienced staff, and keep the recorded program in your training library for future use whenever it’s needed. For complete details or to register, click here.

Also coming soon:

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Why economic development initiatives should rethink their start-up funding strategy

In his recent blog post, Rob Lowe, consultant at UI Collab and CEO of TechPipeline, discusses the shortcomings of economic development initiatives that provide funding for start-ups. continue reading »

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Internship program at UNLV connects students with local start-ups

The University of Nevada, Las Vegas (UNLV) is offering an internship program that connects entrepreneurial students with regional start-ups. continue reading »

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Beyond the Patent: Maximizing IP Licensing Revenues with Trade Secrets and Know-How

It’s quite possible, and even likely, that your tech transfer office is leaving significant licensing revenues on the table by ignoring two categories of IP: Know-how and trade secrets. These oft-overlooked areas represent valuable assets that can increase total revenues when paired with a patent license or, particularly with trade secrets, bring in new revenues by monetizing what otherwise would be unpatentable IP. 

Know-how can be negotiated into a license but is often disregarded simply because assigning it an actual value is a difficult concept for licensees and licensors alike, making negotiations tricky.

Trade secrets can be both integrated with a patent license and negotiated as distinct IP assets, but first you must identify what constitutes a trade secret, understand its commercial value, and make sure it’s protected in the absence of a patent.

By aggressively negotiating these often-overlooked assets, you can capture very significant dollars that would otherwise be lost, while cementing valuable relationships with companies and supporting the progress of their innovations to the marketplace. To help you tap into these underutilized assets, Tech Transfer Central has curated a two-program distance learning collection: Beyond the Patent: Maximizing IP Licensing Revenues with Trade Secrets and Know-How. The two strategy-filled sessions provide a detailed roadmap for drafting and negotiating rights and terms for both know-how and trade secrets. For complete faculty and program details, click here.  

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Tips for deep tech founders on attracting investment

In his recent blog post, Mark M.J. Scott, president of Northern Pixels Inc., offers start-ups advice on navigating the deep tech funding landscape. continue reading »

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Australian students launch the country’s first student-led VC fund for start-ups

A group of students from Australian universities has launched the country’s first student-led VC fund for student-founded start-ups. continue reading »

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Download the 2023-24 Directory of Life Science VCs

The 2023-24 Directory of Life Science VCs is available for immediate download. This time-saving source of contact information on life science VC firms can be incorporated immediately into your outreach and fundraising activities.

With 60 new entries and 380 firms in total, all directory listings include the firm website, contact information, and a brief summary of the firm’s investment profile.

It comes to you immediately in both printable digital format and as an Excel spreadsheet that can be used to create mailing lists, your own contact database, merge letters, and e-mails. You can click on links to find out more details about each firm and use the quick descriptions to narrow your VC contacts to those that match your start-up or project.

For complete details, click here.

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LSU professor develops novel technology for detecting pipeline leaks

A professor at Louisiana State University (LSU) is working to commercialize a novel technology that can rapidly and accurately identify pipeline leaks. continue reading »

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U.S. Army researchers develop wearable device to diagnose head injuries

A new U.S. Army technology could provide medics and first responders with a portable, easy-to-use diagnostic tool for monitoring head injuries. continue reading »

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Federal Demonstration Partnership looks to take the hassle out of DUAs

A detailed article on the template data use agreements created by the Federal Demonstration Partnership, and their potential to streamline the DUA negotiation process – including access to the full-text templates – appears in the March issue of Technology Transfer Tactics. To subscribe and access the complete article, or for further subscription details, click here.

Data use agreements (DUAs), sometimes known as data transfer agreements, are demanding more and more attention from technology transfer offices as data repositories drive a growing number of innovations in the digital age. The biggest problem many TTOs have with DUAs is the sheer volume, and the time it takes staff to wade through and complete as well as log them. Each university may have its own agreement template, and in some cases one office may be responsible for handling incoming data, while another is responsible for sharing outgoing data. Depending on the type of data to be exchanged, there may be specific compliance requirements, such as with HIPAA or FERPA.

For offices swamped with these routine but important agreements, there is help. The Data Stewardship Committee of the Federal Demonstration Partnership has designed a template that can significantly speed up the process for those universities who opt to use it. It was first unveiled in a pilot project in 2017, yet many offices continue to use their own agreements, creating unnecessary additional work and friction. (TTT subscribers can access the DUA templates here.)  

According to Jennifer Murphy, director of research agreements and contracting at Brown University, “that first iteration was the result of members of the FDP discussing how we all have different DUAs, and we were spending increasingly crazy amounts of time reviewing DUAs. It was in response to [the question], ‘Can we all come together and make one thing we can agree to use?’” The template is strictly for academic and nonprofit use where intellectual property is not an issue.

“It was also done in the context of greater scrutiny on data sharing — the appropriateness of it,” says Diana Boeglin, senior contracts manager at the University of Iowa. “When a lot of stories started hitting the news about companies sharing data inappropriately, a lot of universities decided to take a closer look at their own practices and make sure what they were doing was more compliant, as well as strengthening data terms around HIPAA.” The initial working group included individuals from 30 universities and two federal agencies.

“We’ve actually come up with some really nice data [indicating] that schools like the DUA because it takes the pressure off of negotiating terms,” continues Boeglin. “They are consistent — we can do this quick and easy passing it back and forth once we make sure all the facts and content is correct. It puts more of the administrative focus on ensuring compliance, internally and externally. In doing that, schools are more confident that when they do share data, they are doing it appropriately and with all of the correct controls in place.”

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