Tech Transfer eNews Blog

Bridge the Gap Between Inventor and IP Attorney: How to Bullet-Proof Your Patents with Airtight Written Descriptions


By Jesse Schwartz
Published: September 27th, 2023

The written description is one of the most important elements of any patent, impacting not only overall patentability but the validity of every claim, while also serving as the front line of defense against invalidity challenges. And that description starts with the inventor, not the attorney drafting the patent.

Yet the language of the inventor and the patent attorney are different, and failure to adequately bridge this gap can result in weaker patent protection, delays, and higher cost. This problem is especially critical when the inventor is working on an emerging technology, often requiring the patent attorney to spend a great deal of time – and billable hours — figuring out the fundamental principles of the invention.

To help IP practitioners and TTOs ensure maximum protection while saving time and money in the patent drafting process, we’ve teamed up with Peter Hanik, Founder and President of Pretium Innovation, LLC, for this practical webinar: Bridge the Gap Between Inventor and IP Attorney: How to Bullet-Proof Your Patents with Airtight Written Descriptions, scheduled for October 24th. Mr. Hanik will share his proven method for ensuring inventors provide the right information, in the right way with the right level of detail and background, so the patent attorney can translate it into the strongest possible patent, while saving time and expense.  

For complete details or to register, click here.

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The Guide to Commercializing Mobile Apps on Campus


By Jesse Schwartz
Published: September 27th, 2023

For university TTOs, mobile apps present a tremendous opportunity for new revenues as well as new relationships with the hundreds of students and faculty creating apps on campus. But the fast-moving mobile app market is a different animal with its own unique challenges and complexities — as well as unfamiliar legal issues that can derail your efforts and lead to time-consuming, costly litigation.

The Guide to Commercializing Mobile Apps on Campus — a 4-session distance learning collection — is designed to help you tap into the massive apps marketplace as a way to enhance TTO revenue and better serve your student and faculty app developers. Along with over 4 hours of solid advice and takeaways, you’ll receive 50 pages of program materials created by the session leaders.

For complete details, click here.

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Proven Strategies for Rebranding and Revitalizing your TTO


By Jesse Schwartz
Published: September 27th, 2023

The role of technology transfer has evolved. And for some TTOs, the structure, branding, marketing, and modes of operation have simply not kept pace with those changes — nor with changes in expectations from administrators, legislators, faculty, and other key stakeholders.

The days of being strictly faculty-service oriented are gone, as are the days of vanity start-ups and patenting every disclosure. The focus has shifted to one that translates research into tangible economic development — jobs, tax revenues, start-ups, and return on research investments. While some forward-thinking offices have stayed ahead of the curve, others are lagging behind — and need a radical makeover.

That’s why we created Proven Strategies for Rebranding and Revitalizing your TTO, a distance learning case study collection that focuses on two standout rebranding projects from the University of New Hampshire and the University of Virginia. Each university embarked on a major renovation that involved upper administration as well as the entire researcher community — and required significant changes to the organizational structure and culture alike. And both restructuring efforts also brought huge rewards.

The collection includes on-demand videos, transcripts, and original program materials – and comes with unlimited access for your entire organization. For complete details, click here.

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Bridge the Gap Between Inventor and IP Attorney: How to Bullet-Proof Your Patents with Airtight Written Descriptions


By Jesse Schwartz
Published: September 20th, 2023

The written description is one of the most important elements of any patent, impacting not only overall patentability but the validity of every claim, while also serving as the front line of defense against invalidity challenges. And that description starts with the inventor, not the attorney drafting the patent.

Yet the language of the inventor and the patent attorney are different, and failure to adequately bridge this gap can result in weaker patent protection, delays, and higher cost. This problem is especially critical when the inventor is working on an emerging technology, often requiring the patent attorney to spend a great deal of time – and billable hours — figuring out the fundamental principles of the invention.

To help IP practitioners and TTOs ensure maximum protection while saving time and money in the patent drafting process, we’ve teamed up with Peter Hanik, Founder and President of Pretium Innovation, LLC, for this practical webinar: Bridge the Gap Between Inventor and IP Attorney: How to Bullet-Proof Your Patents with Airtight Written Descriptions, scheduled for October 24th. Mr. Hanik will share his proven method for ensuring inventors provide the right information, in the right way with the right level of detail and background, so the patent attorney can translate it into the strongest possible patent, while saving time and expense.  

For complete details or to register, click here.

Also coming soon:

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University Start-Ups: Building Foundations for Investability and Sustainable Growth


By Jesse Schwartz
Published: September 20th, 2023

Far too many university start-ups never reach their potential – often because they don’t have the foundational structure, leadership, and early funding needed to achieve sustainable growth.

The outstanding distance learning collection University Start-Ups: Building Foundations for Investability and Sustainable Growth will assist your staff, faculty, and student entrepreneurs in understanding how to overcome these major foundational challenges and become not only “investable,” but get on a path to real traction and ultimately a successful scale-up and/or exit.

Pitching strategy, corporate structure, capitalization and equity, internal conflicts, and the founding team are all factors that can make or break a fledgling venture – and we cover it all in the seven hours of expert guidance you’ll receive in this collection.

The individual programs included in the collection are:

For complete details or to order, click here.

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Coming Friday – IP Negotiation Strategies in University-Industry Partnerships: Perspectives from Both Sides of the Table


By Jesse Schwartz
Published: September 13th, 2023

Intellectual property rights are at the heart of virtually every research collaboration between academia and industry, and the negotiation around IP is often complex, contentious, frustrating – and too often a deal-breaker. By gaining practical knowledge of the various situations that arise in these negotiations — and the creative solutions used to resolve them — you can dramatically increase the chances of resolving IP issues and establishing long-term relationship that bring critical benefits to both partners.

We’ve teamed with a pair of experts who have extensive experience on both sides of the table to provide their guidance in resolving thorny IP issues that can make or break a deal. Join DJ Nag, PhD, MBA, CLP, RTTP, President of Innovaito, LLC, and Tatiana Litvin-Vechnyak, PhD, Vice President of Technology Commercialization for Georgetown University, for this important program: IP Negotiation Strategies in University-Industry Partnerships: Perspectives from Both Sides of the Table, scheduled for this Friday, September 15.

This practical session will focus on arriving at a win-win strategy for resolving IP-related issues and structuring a deal that benefits both parties. The session will draw from the direct experiences of the speakers in handling sensitive situations, including a role-playing exercise in a mock negotiation to illustrate specific sticking points and showcase proven strategies for resolving them. For complete details and to register, click here.

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Improve TTO performance with The Tech Transfer Operations Video Toolkit


By Jesse Schwartz
Published: September 13th, 2023

When it comes to the day-to-day function of the tech transfer office, operations staff are the “unsung” heroes. While they don’t get the headlines and kudos for patents issued, big licensing deals, and new start-ups, tech transfer professionals know that it’s their work behind the scenes that underpins every commercialization achievement.

Whether it’s docketing, royalty distribution, Bayh-Dole compliance, database management and reporting, licensee compliance, keeping up with attorney fees, or any of the hundreds of tasks often taken for granted in the complex world of university tech transfer, these critical team members are doing the dirty work, day in and day out.

That’s why we’ve created an extensive collection of resources focused specifically on many of the most difficult TTO operations challenges. The Tech Transfer Operations Video Toolkit is an instant library of 20 detailed distance learning programs addressing everything from budgeting, productivity, and data management to staffing, risk mitigation, auditing, MTA management, and more. The guidance contained in the toolkit’s programs can make a critical difference in your TTO’s efficiency and performance, and it’s priced at less than $25 per program.

Even better, every session can be shared freely within your office with other staff and viewed repeatedly, making The Tech Transfer Operations Video Toolkit about the most cost-effective investment you can make.

For complete details, click here.

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Best Practices for TTOs and University Spinouts in Working with Contract Research Organizations


By Jesse Schwartz
Published: September 6th, 2023

As industry and investors have become more risk averse, universities have increasingly turned to internal de-risking strategies for drug candidates to better attract potential licensees or to advance their faculty start-ups. However, the de-risking process can present a daunting hurdle that can stop what could be a life-saving innovation in its tracks. As a result, many TTOs and university spinouts have begun working more closely with contract research organizations (CROs).

One big benefit of a CRO is speed. University labs often struggle with competing priorities, personnel shortages, and equipment limitations; CROs offer quick turn-around-times, along with high quality, deep expertise, and airtight regulatory compliance. Additionally, studies performed at CROs can produce the quality of reports expected by pharmaceutical companies and investors, offering external validation to previously performed university studies.

However, navigating the vast, growing expanse of CROs — with varying specializations and capabilities — is not an easy or straightforward task. That’s why we’ve teamed up with Judy Prasad, PhD, Assistant Director of UNC-Chapel Hill’s KickStart Venture Services, for this informative distance learning program: Best Practices for TTOs and University Spinouts in Working with Contract Research Organizations, scheduled for September 20th.

During this one-hour program, you will learn why, how, and when to contract with a CRO, how to choose the best CRO for your project(s), and how to ensure the CRO relationship works optimally for your TTO to support your university’s innovators and spinouts. For complete details or to register, click here.

Also coming soon:

FREE WEBINAR COMING SEPTEMBER 26th: Career Development Strategies for Tech Transfer Professionals and Recent Trends in Hiring and Retaining TTO Staff. For complete details and to sign up without cost, click here.

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University Technology Marketing Boot Camp – on-demand distance learning


By Jesse Schwartz
Published: September 6th, 2023

Technology and licensing managers often are well-versed in a wide range of technical and scientific fields, have an excellent grasp of IP law, and have a good handle on business and financial issues too. But when it comes to marketing, they are often at a near-total loss.

By focusing on shoring up this critical but often neglected area of professional development, your TTO will reap huge dividends in its ability to attract the licensees, investors, entrepreneurs, and partners you need. The University Technology Marketing Boot Camp is a four-program, on-demand distance learning collection featuring university technology marketing experts who will lead you in making critical improvements in your marketing approaches and strategies. The four session topics are:

Session One: Understanding Your Technology, Inventor and Market

Session Two: Marketing Writing Best Practices

Session Three: Marketing by Channel

Session Four: Content Strategy and Analytics

For complete program and faculty details, click here.

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Webinar tomorrow: Interns as Force Multipliers and Difference Makers for TTOs


By Jesse Schwartz
Published: August 30th, 2023

A well-oiled intern program is more than just extra help — it can actually have a huge impact on your TTO’s productivity and overall performance. Whether they’re assisting with disclosure screenings, IP searches, or market research, interns have the potential to save the TTO time and money while providing the intern with valuable work experience. But to make internship programs work best, it takes a lot more than just getting warm bodies behind a desk.

When internship programs are properly structured and managed, they can free up the professionals in your office to handle the really critical work and boost team productivity — ultimately creating greater bandwidth and allowing more deals to get done. On the flip side, poorly constructed and managed programs can simply get in the way and waste time for your staff and the intern – leaving everyone dissatisfied.

We’ve teamed up with a panel of experts from Stanford, Columbia, NCI/NIH, and the University of Illinois Urbana-Champaign to share the details of their standout internship programs, and help you ensure your own program – and your interns – are getting maximum benefit. Join us tomorrow, August 31st, for Interns as Force Multipliers and Difference Makers for TTOs. We’ll review each organization’s unique structure, management practices, and tech transfer intern training programs so you can put their proven strategies into play right away while avoiding key mistakes and problems.

For complete details or to register, click here.

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New resource offers expert guidance on trade secret and know-how licensing


By Jesse Schwartz
Published: August 30th, 2023

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, we’ve 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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Webinar coming next Tuesday – University Plant Breeding Programs: Key IP Protection and Licensing Considerations


By Jesse Schwartz
Published: August 23rd, 2023

For many TTOs, plant breeding is a huge part of their tech transfer licensing activity that’s not only a source of revenue, but also a source of economic growth for the agricultural economy.

It’s a massive industry with plenty of competition between universities and private plant breeding companies trying to stake a claim to a growing market.

It is imperative that universities aggressively protect their valuable plant assets via patents, plant variety protection, trademarks, and trade secret protection not only to secure their IP, but also to encourage continued R&D investments and bring new innovations to farmers. Yet there’s little guidance available for universities in terms of the specific intellectual property and licensing issues unique to this complex arena.

That’s why we’ve teamed up with two experts from JMIN to provide critical guidance on key IP protection and licensing considerations for new plants and plant varieties in this important webinar: University Plant Breeding Programs: Key Intellectual Property Protection and Licensing Considerations, scheduled for next Tuesday, August 29th. They’ll provide detailed advice on the use of utility patents, plant patents, plant variety protection, trademarks, and trade secrets as applied specifically to this unique area of innovation. The 90-minute session will also feature a review of a well-drafted plant license and address relevant case law.

For complete details or to register, click here.

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