Tech Transfer eNews Blog

Considerations for Negotiating and Drafting Enforcement Terms in IP License Agreements


By Jesse Schwartz
Published: January 13th, 2021

Universities and their tech transfer offices must be prudent when negotiating terms for agreements granting rights to third parties in university-developed inventions. Among many considerations a TTO must address during negotiations are the scope of rights granted to the third party (e.g., scope of geographic and field of use grants) and the university’s desire to be involved in, or to avoid, future U.S. litigation. These concepts are interrelated and should be considered together.

Case in point: A recent Federal Circuit ruling in Gensetix v. Board of Regents of the University of Texas System is yielding important lessons about the proper way to construct license agreements — particularly with regard to rights to enforcement among licencees — as well as the role of sovereign immunity when a litigant seeks to force a state university to join an infringement suit.

Tech Transfer Central has teamed up with legal experts from Intellectual Property law firm Oblon, McClelland, Maier & Neustadt to guide TTOs and legal counsel in drafting agreement terms to maximize their ability to achieve desired goals — and avoid involuntary joinder — when granting rights in university inventions to third parties. The case also has critical implications for those bringing infringement suits without participation from “necessary parties.” Join us on February 17th for Considerations for Negotiating and Drafting Enforcement Terms in IP License Agreements.

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

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Reinforcing University IP Policies to Protect Data Ownership & Monetization


By Jesse Schwartz
Published: January 6th, 2021

In recent years, data output among research institutions has expanded exponentially. And while virtually all institutions have patent policies in place covering ownership and handling of patentable inventions, data policies are still very mixed and sometimes completely absent. As more and more institutions monetize their data, the importance of a well-considered institutional data policy has become critical.

That’s why Tech Transfer Central’s Distance Learning Division has teamed up with two attorneys from Amster, Rothstein and Ebenstein, LLP, along with data licensing experts from both MIT and Duke University, to bring you this critical presentation: Reinforcing University IP Policies to Protect Data Ownership & Monetization, scheduled for January 26th.

Register today to learn how to examine your existing IP policies for all types of data coverage, identify gaps that need reinforcing, and gain a solid understanding of the controlling federal regulations as well as potential liabilities. Our world-class panel will also cover licensing and royalty distribution issues, along with risks and best practices related to data storage, retention, and access. For complete details and to register, click here.

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Reinforcing University IP Policies to Protect Data Ownership & Monetization


By Jesse Schwartz
Published: December 23rd, 2020

In recent years, data output among research institutions has expanded exponentially. And while virtually all institutions have patent policies in place covering ownership and handling of patentable inventions, data policies are still very mixed and sometimes completely absent. As more and more institutions monetize their data, the importance of a well-considered institutional data policy has become critical.

That’s why Tech Transfer Central’s Distance Learning Division has teamed up with two attorneys from Amster, Rothstein and Ebenstein, LLP, along with data licensing experts from both MIT and Duke University, to bring you this critical presentation: Reinforcing University IP Policies to Protect Data Ownership & Monetization, scheduled for January 26th.

Register today to learn how to examine your existing IP policies for all types of data coverage, identify gaps that need reinforcing, and gain a solid understanding of the controlling federal regulations as well as potential liabilities. Our world-class panel will also cover licensing and royalty distribution issues, along with risks and best practices related to data storage, retention, and access. For complete details and to register, click here.

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Webinar tomorrow: Creating and Showcasing Technology Maps as an Economic Development Tool


By Jesse Schwartz
Published: December 16th, 2020

When the thought leaders at the University of Houston’s Technology Bridge set out to narrow the divide between the entrepreneurial activities at the university and the local start-up ecosystem, they first needed to map it out. Literally.

UH’s Technology Bridge launched an interactive map that serves as a tool to showcase the city’s robust innovation ecosystem – and the university’s contributions to it. This interactive, “living document” has well over 1,000 companies represented and it’s growing by the day. Feedback from the community has been overwhelmingly positive, and the TECH Map has solidified connections and promoted partnerships by showing the community, the state, and the nation what opportunities Houston holds for their fledgling companies.

Deploying such a tool in your region sounds like a daunting task, but UH’s Technology Bridge has done the extensive legwork and learned a lot of lessons along the way. Creating and Showcasing Technology Maps as an Economic Development Tool is a one-hour webinar, scheduled for TOMORROW, December 17th, that will guide you through the process so you can have a visual representation of your economic ecosystem and the opportunities it presents. It’s a tool that could ultimately bring scores of valuable connections, partnerships, licensees, and jobs to your university.

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

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Creating and Showcasing Technology Maps as an Economic Development Tool


By Jesse Schwartz
Published: December 9th, 2020

When the thought leaders at the University of Houston’s Technology Bridge set out to narrow the divide between the entrepreneurial activities at the university and the local start-up ecosystem, they first needed to map it out. Literally.

UH’s Technology Bridge launched an interactive map that serves as a tool to showcase the city’s robust innovation ecosystem – and the university’s contributions to it. This interactive, “living document” has well over 1,000 companies represented and it’s growing by the day. Feedback from the community has been overwhelmingly positive, and the TECH Map has solidified connections and promoted partnerships by showing the community, the state, and the nation what opportunities Houston holds for their fledgling companies.

Deploying such a tool in your region sounds like a daunting task, but UH’s Technology Bridge has done the extensive legwork and learned a lot of lessons along the way. Creating and Showcasing Technology Maps as an Economic Development Tool is a one-hour webinar, scheduled for December 17th, that will guide you through the process so you can have a visual representation of your economic ecosystem and the opportunities it presents. It’s a tool that could ultimately bring scores of valuable connections, partnerships, licensees, and jobs to your university. For complete program and faculty details or to register, click here.

Also coming soon:

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Webinar tomorrow: Understanding Equity Dilution and Its Effects on University Start-ups


By Jesse Schwartz
Published: December 1st, 2020

Most university-based start-ups face the reality of needing to raise capital to escape the Valley of Death and grow the business – and offering equity shares for cash is a common move. But is it the right move, and can it be handled in a way that minimizes the dilution of equity among founders and earlier investors – including the university itself?

Making the wrong moves at the wrong time can have devastating and unexpected impact on not only the value of each party’s equity stake but on the prospects for future fundraising rounds, on valuation, and on the ultimate issue: whether the business succeeds or fails. That’s why Tech Transfer Central has tapped a leading attorney expert for this important webinar: Understanding Equity Dilution and Its Effects on University Start-ups, scheduled for tomorrow, December 3rd.

We’ve teamed up with attorney Tyson Benson to provide you with clear guidance on the critical understanding needed to draft equity share dilution provisions that walk the fine line between leaving your founders or your university out in the cold and attracting needed funds, while ensuring immediate funding needs aren’t sacrificing critical valuation and future fundraising rounds.

For more details or to register, click here.

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Understanding Equity Dilution and Its Effects on University Start-ups


By Jesse Schwartz
Published: November 24th, 2020

Most university-based start-ups face the reality of needing to raise capital to escape the Valley of Death and grow the business – and offering equity shares for cash is a common move. But is it the right move, and can it be handled in a way that minimizes the dilution of equity among founders and earlier investors – including the university itself?

Making the wrong moves at the wrong time can have devastating and unexpected impact on not only the value of each party’s equity stake but on the prospects for future fundraising rounds, on valuation, and on the ultimate issue: whether the business succeeds or fails. That’s why Tech Transfer Central has tapped a leading attorney expert for this important webinar: Understanding Equity Dilution and Its Effects on University Start-ups, scheduled for December 3rd.

We’ve teamed up with attorney Tyson Benson to provide you with clear guidance on the critical understanding needed to draft equity share dilution provisions that walk the fine line between leaving your founders or your university out in the cold and attracting needed funds, while ensuring immediate funding needs aren’t sacrificing critical valuation and future fundraising rounds.

For more details or to register, click here.

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Next week: Best Practices for De-Risking University Innovations from Discovery to Exit


By Jesse Schwartz
Published: November 18th, 2020

The Valley of Death yawns wide for cutting edge university inventions. One way to bridge the gap from basic science to venture funding is an internal de-risking program that can overcome investor reluctance to back too-early opportunities.  

A de-risking effort can also provide a solid evaluation of an innovation’s potential at each developmental and financial milestone, allowing you to avoid wasting time – and tens of thousands of dollars – on projects that should have been “killed” early and devote resources to developing and de-risking discoveries that have big potential payoffs.

UNeMed has seen outstanding results with their method for de-risking and moving technologies forward to the marketplace, using an approach that looks at technology transfer and start-up formation using an entrepreneur’s mindset. That’s why Tech Transfer Central has teamed up with UneMed’s Joe Runge, JD, for this critically important webinar: Best Practices for De-Risking University Innovations from Discovery to Exit.

In this practical session, scheduled for next Tuesday, November 24th, you’ll learn multiple approaches to de-risk your portfolio and learn UNeMed’s “secret sauce” of processes and strategies to help your university significantly improve its own vetting and de-risking efforts.

For complete details or to register, click here.

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Protect University Innovations by Drafting High Quality Provisional Patent Applications


By Jesse Schwartz
Published: November 11th, 2020

Poorly drafted provisional patent applications can be useless — or even worse, they can be used against you at conversion. Provisionals are often devalued and tossed off as a quick and easy way to temporarily protect an invention, 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.

That’s why Tech Transfer Central’s Distance Learning Division has secured a pair of experts from the Baker Donelson Law Firm in to bring you this critical webinar: Protect University Innovations by Drafting High Quality Provisional Patent Applications, scheduled for November 19th. You’ll learn best practices as well as common mistakes to avoid when drafting provisionals in this practical, detailed program.

For complete details and to register, click here.

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Strategies for Planning and Executing Successful Virtual Events


By Jesse Schwartz
Published: November 11th, 2020

Tech transfer and industry engagement offices rely on close relationships with peers, faculty, students, government agencies and business partners to keep the innovation wheels greased and the pipeline flowing. In pre-COVID times, the “contact sport” that TTOs and industry engagement professionals played took place largely in person at conferences, lab tours, innovation fairs, and in office meeting rooms.

It’s a different playing field now. But as the pandemic has dragged on, a growing number of tech transfer and engagement professionals have come to realize “different” is not necessarily “worse.” In fact, they’re finding that – when handled with expertise and careful attention to interactive formats and follow-up, virtual events can keep your momentum strong and come with many “silver linings,” including broader reach and dramatic savings on overhead expenses such as space rental, food and beverage costs, lodging, and travel.

To help you prepare the best possible virtual event strategy for 2021, Tech Transfer Central’s Distance Learning Division has produced a 3-hour collection that is guaranteed to help you lay the groundwork for — and execute — successful virtual events of any size. With Strategies for Planning and Executing Successful Virtual Events, The collection includes:

For complete details, click here.

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Best Practices for De-Risking University Innovations from Discovery to Exit


By Jesse Schwartz
Published: November 4th, 2020

The Valley of Death yawns wide for cutting edge university inventions. One way to bridge the gap from basic science to venture funding is an internal de-risking program that can overcome investor reluctance to back too-early opportunities.  

A de-risking effort can also provide a solid evaluation of an innovation’s potential at each developmental and financial milestone, allowing you to avoid wasting time – and tens of thousands of dollars – on projects that should have been “killed” early and devote resources to developing and de-risking discoveries that have big potential payoffs.

UNeMed has seen success with their method for de-risking and moving technologies forward to the marketplace, using an approach that looks at technology transfer and start-up formation using an entrepreneur’s mindset. That’s why Tech Transfer Central has teamed up with UneMed’s Joe Runge, JD, for this critically important webinar: Best Practices for De-Risking University Innovations from Discovery to Exit.

In this practical session, scheduled for November 24th, you’ll learn multiple approaches to de-risk your portfolio and learn UNeMed’s “secret sauce” of processes and strategies to help your university significantly improve its own vetting and de-risking efforts.

For complete details or to register, click here.

Also coming soon:

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Understanding Equity Dilution and Its Effects on University Start-ups


By Jesse Schwartz
Published: October 28th, 2020

Most university-based start-ups face the reality of needing to raise capital to escape the Valley of Death and grow the business – and offering equity shares for cash is a common move. But is it the right move, and can it be handled in a way that minimizes the dilution of equity among founders and earlier investors – including the university itself?

Understanding equity dilution is critically important for the tech transfer and university space, and for any entrepreneur who has who plans on raising growth capital. But making the wrong moves at the wrong time can have devastating and unexpected impact on not only the value of each party’s equity stake but on the prospects for future fundraising rounds, on valuation, and on the ultimate issue: whether the business succeeds or fails. That’s why Tech Transfer Central has tapped a leading attorney expert for this important webinar: Understanding Equity Dilution and Its Effects on University Start-ups, scheduled for December 3rd.

We’ve teamed up with attorney Tyson Benson to provide you with clear guidance on the critical understanding needed to draft equity share dilution provisions that walk the fine line between leaving your founders or your university out in the cold and attracting needed funds, while ensuring immediate funding needs aren’t sacrificing critical valuation and future fundraising rounds.

For more details or to register, click here.

Also Coming Soon:

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