Tech Transfer eNews Blog
University-Industry Engagement Advisor

Preventing Legal Disputes with Faculty Start-Ups: Drafting Agreements that Avoid Future Conflicts


By Jesse Schwartz
Published: March 20th, 2019

Every tech transfer office knows its role is largely one of service to faculty, assisting researchers in moving their innovations through the commercialization pipeline. Typically, this means the researcher sees the TTO as an ally and advisor, often assisting with everything from disclosure to patent to start-up creation and funding. But, the feelings of “we’re in this together” can quickly turn sour when it comes time to negotiate licensing terms or the university’s equity stake in the start-up. And it can get downright nasty when things get real in term of money, leadership, control, and exit.

Many universities rely on boilerplate contracts for ease, quickness, and transparency, but start-ups are as unique as the inventions they are founded upon. And, while some terms and conditions are prime for cut-and-paste, this overall approach brings great risk of misunderstandings that can lead to bad blood and costly litigation. That’s why Technology Transfer Tactics’ Distance Learning Division is teaming up with K. Lance Anderson, attorney with Dickinson Wright PLLC, for this important webinar: Preventing Legal Disputes with Faculty Start-Ups: Drafting Agreements that Avoid Future Conflicts, scheduled for April 4th. For complete program details or to register, CLICK HERE.

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The Supreme Court Ruling in Helsinn v Teva: Impact on Prior Art and Patent Eligibility for University Innovations


By Jesse Schwartz
Published: March 13th, 2019

In the closely-watched Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. case, which directly affects the scope of §102 prior art under the America Invents Act, the Supreme Court’s controversial decision effectively endorses a “catch-all” category of prior art.

At issue was whether a sale of an invention continues to qualify as prior art under revised AIA rules, even when the details of what was covered by that sale were not made public. In a unanimous decision, the Court held that such sales qualify as prior art under the AIA. The Court also left open what the phrase “otherwise available to the public” is intended to cover, but ruled that it did not alter the meaning of prior art established pre-AIA.

The ruling’s impact on patent eligibility is expected to be a major factor in future court cases and PTAB reviews. That’s why Technology Transfer Tactics’ Distance Learning Division is teaming up with patent law experts Charles R. Macedo and Brian J. Amos, PhD, of the law firm Amster, Rothstein and Ebenstein, to discuss on-sale and public use bars, prior art rulings under both AIA and pre-AIA law, and how you can minimize risk of patent infringement and invalidity claims. Join them for this critical webinar on March 26: The Supreme Court Ruling in Helsinn v Teva: Impact on Prior Art and Patent Eligibility for University Innovations.

For complete program details and to register, CLICK HERE.

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The USPTO’s Updated Guidance on Section 101: Adjusting Your IP Evaluations for Maximum Protection


By Jesse Schwartz
Published: February 27th, 2019

Since the Supreme Court issued its landmark opinions in Mayo and Alice, patentability has been a moving target – and technology transfer offices have struggled to obtain patent protection in certain areas, including computer-implemented and diagnostic technologies. 

With so little clarity, evaluating IP in these areas and making commercialization decisions has been more of a guessing game than a reliable process. However, on January 4, 2019, the USPTO published updated examination guidance regarding the subject matter eligibility of technologies involving abstract ideas. This new guidance marks a course correction for how patents — and particularly software patents — are examined.

Technology Transfer Tactics’ Distance Learning Division is teaming up next Tuesday, March 5th, with IP attorney Tyson Benson, Associate with Harness, Dickey and Pierce, PLC, for The USPTO’s Updated Guidance on Section 101: Adjusting Your IP Evaluations for Maximum Protection. Mr. Benson will guide attendees in what adjustments should be made to your IP evaluations in light of the new 101 guidance, and how to best prepare your applications for maximum patent protection. For complete details or to register, CLICK HERE.

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Invention Disclosure Management: Proven Strategies for Boosting Quantity and Assessing Quality


By Jesse Schwartz
Published: February 27th, 2019

Disclosures are the lifeblood of the university innovation cycle, and a huge portion of your TTO’s time is spent vetting and analyzing them for potential commercialization. On one hand, you don’t want to skim over your backlog and potentially miss a windfall. And on the other, too often you find yourself spinning your wheels on disclosures that just don’t make the grade to appease faculty egos.

Technology Transfer Tactics’ Distance Learning Division has created a collection of three distance learning programs that target key disclosure management challenges, including faculty outreach and engagement, effective triage, and standardizing post-disclosure activity and communication.

Invention Disclosure Management: Proven Strategies for Boosting Quantity and Assessing Quality includes all presentations in three formats – DVD, on-demand video, and print transcript — so they can be shared conveniently throughout your organization when and how you wish. For complete details and to order, CLICK HERE.

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Impact Convergence: A New Model for Building Scalable Relationships between Industry and Universities


By Jesse Schwartz
Published: February 20th, 2019

The Office of Industry Engagement & Commercial Venturing at Brown University has built a successful model for industry engagement using a scale-up concept called Impact Convergence (ICON). There are several layers of the ICON experience, beginning with ICON Exploration, moving to the ICON Challenge Hub, and ultimately to ICON Impact. Hyundai Motor Company is the first company to enter a new relationship with the university under the ICON model.

Technology Transfer Tactics, in partnership with University-Industry Engagement Advisor, is sponsoring this practical webinar that will take an inside look at Brown’s new scale-up model and address common issues that face these complex relationships, as well as best practices for impact-driven alignment between industry and universities.

Join Tracey Dodenhoff, head of strategic industry engagement at Brown University and Principal of Onovo, Inc., on February 27 for Impact Convergence: A New Model for Building Scalable Relationships between Industry and Universities. For complete program details or to register, CLICK HERE.

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Case Study of the University at Buffalo UB Swift Program: Drafting Sponsored Research Agreements with Industry-Focused Terms


By Jesse Schwartz
Published: February 13th, 2019

Taking cues from the University of Minnesota’s MN-IP program, The University at Buffalo has created UB SWIFT — Sponsorship With Industry Focused Terms — an option to sponsor research at UB through an agreement including preferred licensing terms for IP resulting from the project.  The UB SWIFT approach allows both entities to set research and licensing terms at the project planning stage, providing financial certainty for both parties, eliminating ongoing and costly negotiations and drastically reducing transaction time.

Reaction from industry has been overwhelmingly positive, and that’s why Technology Transfer Tactics, in partnership with University-Industry Engagement Advisor, is sponsoring this valuable webinar that will dissect the UB Swift model and offer you guidance on how to incorporate their best practices into your future partnership negotiations: Case Study of the University at Buffalo UB Swift Program: Drafting Sponsored Research Agreements with Industry-Focused Terms, scheduled for February 21.

For complete program and faculty details or to register, CLICK HERE.

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The USPTO’s Updated Guidance on Section 101: Adjusting Your IP Evaluations for Maximum Protection


By Jesse Schwartz
Published: February 6th, 2019

Since the Supreme Court issued its 2014 opinions in Mayo and Alice, patentability has been a moving target — and technology transfer offices have struggled to obtain patent protection in certain areas, including computer-implemented and diagnostic technologies. 

With so little clarity, evaluating IP in these areas and making commercialization decisions has been more of a guessing game than a reliable process. However, on January 4, 2019, the USPTO published updated examination guidance regarding the subject matter eligibility of technologies involving abstract ideas. This new guidance marks a course correction for how patents — and particularly software patents — are examined.

Technology Transfer Tactics’ Distance Learning Division is teaming up with IP attorney Tyson Benson, associate with Harness, Dickey and Pierce, PLC, for this critical webinar: The USPTO’s Updated Guidance on Section 101: Adjusting Your IP Evaluations for Maximum Protection, scheduled for March 5. Attendees will learn what adjustments should be made to your IP evaluations in light of the new 101 guidance, and how to best prepare your applications for maximum patent protection.

For complete details or to register, CLICK HERE.

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Equity Terms and Distribution in University Start-Ups: A Best Practice Collection


By Jesse Schwartz
Published: February 6th, 2019

Striking the right balance when structuring equity deals with faculty start-ups is a delicate challenge that requires a full understanding of the financial levers involved. Each party will be impacted as the new venture gains value while taking on new partners — and a more complex cap table. And when founder’s equity must be divided at the outset, it’s even tougher to sort out an agreement that works for all — and for the health of the company — over the long term.

Equity Terms and Distribution in University Start-Ups: A Best Practice Collection, produced by Technology Transfer Tactics’ Distance Learning Division, provides over 3 hours of instruction on how to best draft equity and dilution clauses with the long-term in mind. We have partnered with top IP licensing experts to help you draft agreements that walk this tightrope effectively, protect your university’s and your faculty’s interests, and prevent investor turn-offs that can doom the start-up’s prospects at critical stages of growth. For complete program details, CLICK HERE.

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Impact Convergence: A New Model for Building Scalable Relationships between Industry and Universities


By Jesse Schwartz
Published: January 30th, 2019

The Office of Industry Engagement & Commercial Venturing at Brown University has built a successful model for industry engagement using a scale-up concept called Impact Convergence (ICON). There are several layers of the ICON experience, beginning with ICON Exploration, moving to the ICON Challenge Hub, and ultimately to ICON Impact. Hyundai Motor Company is the first company to enter a new relationship with the university under the ICON model.

Technology Transfer Tactics, in partnership with University-Industry Engagement Advisor, is sponsoring this practical webinar that will take an inside look at Brown’s new scale-up model and address common issues that face these complex relationships, as well as best practices for impact-driven alignment between industry and universities. Join Tracey Dodenhoff, head of strategic industry engagement at Brown University and Principal of Onovo, Inc., on February 27 for Impact Convergence: A New Model for Building Scalable Relationships between Industry and Universities.

For complete program details or to register, CLICK HERE.

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Case Study of the University at Buffalo UB Swift Program: Drafting Sponsored Research Agreements with Industry-Focused Terms


By Jesse Schwartz
Published: January 23rd, 2019

Taking cues from the University of Minnesota’s MN-IP program, The University at Buffalo has created UB SWIFT — Sponsorship With Industry Focused Terms — an option to sponsor research at UB through an agreement including preferred licensing terms for IP resulting from the project.  The UB SWIFT approach allows both entities to set research and licensing terms at the project planning stage, providing financial certainty for both parties, eliminating ongoing and costly negotiations and drastically reducing transaction time.

Reaction from industry has been overwhelmingly positive, and that’s why Technology Transfer Tactics, in partnership with University-Industry Engagement Advisor, is sponsoring this valuable webinar that will dissect the UB Swift model and offer you guidance on how to incorporate their best practices into your future partnership negotiations:

Join Jennifer Mandina, JD, MS, Contract Manager in the University at Buffalo’s Technology Transfer Office, on February 21st for Case Study of the University at Buffalo UB Swift Program: Drafting Sponsored Research Agreements with Industry-Focused Terms. For complete details or to register, CLICK HERE.

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Save thousands of dollars in staff training costs with Tech Transfer Central’s All Access Pass


By Jesse Schwartz
Published: January 23rd, 2019

Imagine having one affordable resource to meet all of your tech transfer training and education needs. With Tech Transfer Central’s All Access Pass, you’ll have unlimited access, for your entire staff, to these resources:

  • All live distance learning programs and more than 400 recorded webinars and distance learning collections;
  • Current issues of Technology Transfer Tactics each month and all 11+ years of best practices and TTO success strategies in our online archive;
  • 48 archived issues of Intellectual Property Marketing Advisor;
  • Anytime access to our subscriber-only online resources – reports, metrics, tools, templates and more!

With this incredibly valuable collection of resources at your fingertips to use whenever you need it, you’ll save thousands of dollars in staff training costs while dramatically expanding professional development opportunities for your entire staff — and your faculty. For more details or to schedule a quick demo with Distance Learning Director Debi Melillo, CLICK HERE.

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The SBIR/STTR Proposal Playbook: A Webinar Workshop for Drafting Winning Applications


By Jesse Schwartz
Published: January 16th, 2019

The Small Business Innovation Research and Small Business Technology Transfer programs dole out $2 billion to university-based ventures every year, and their awards can be significant sources of non-dilutive funding – if you know how to craft a proposal that will win over the reviewers. University researchers, start-up founders, TTOs, and research development staff must ensure their proposal has what it takes to earn the funding their projects need.

That starts with knowing what agencies such as the NSF, NIH and DoD are looking for in fundable projects and how to prepare your proposal for review. To give you the best chance of success, Tech Transfer Central’s Distance Learning Division has partnered with Kristen Parmelee of PCG, Inc. — one of the country’s top SBIR/STTR experts — to bring you this critically important program: The SBIR/STTR Proposal Playbook: A Webinar Workshop for Drafting Winning Applications,scheduled for January 23rd.

In this detailed workshop session, you’ll come away with a solid understanding of what makes a good SBIR/STTR proposal and what the largest agencies are looking for, so you can maximize your chances of getting the funding you need. For complete details and to register, CLICK HERE.

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