Tech Transfer eNews Blog

AI-derived IP and NFTs: Protection Strategies and Licensing Considerations


By Jesse Schwartz
Published: February 1st, 2023

AI-generated or AI-assisted inventions as well as NFTs are largely untested in the IP legal landscape. While they present a fast-growing, potentially lucrative opportunity for universities to diversify and strengthen their IP portfolios, their cloudy IP status makes them risky bets.

Headlines addressing the controversy surrounding inventorship and ownership of AI-generated innovations and content are increasingly common and highlight some of the legal challenges faced in protecting and licensing these assets. Thus far most U.S. and foreign courts have declined AI-generated patents, but the issue is far from settled and courts in at least two countries have allowed some patent protection. 

And though NFTs are gaining popularity as licensable assets, particularly in areas like student-athlete brand imaging, art, historical items, and fundraising, do they live up to the hype? Are the risks worth the potential reward?

It’s imperative that TTOs and IP attorneys understand the unique aspects of NFTs and AI-derived technology to maximize revenue, protect their IP, and avoid patent, copyright, and trademark liability. That’s why we’ve secured Mitchell S. Feller, Principal with Gottlieb, Rackman and Reisman, P.C. to lead this insightful, one-hour webinar: AI-derived IP and NFTs: Protection Strategies and Licensing Considerations, scheduled for February 28th.

For complete details or to register, click here.

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Strategies for Drafting and Converting Provisional Patents


By Jesse Schwartz
Published: February 1st, 2023

Provisional patent applications are often devalued and tossed off as a quick and easy way to protect an invention for a temporary period of time, with minimal effort spent in drafting this application. But this early misstep can result in highly consequential problems during examination of the conversion application later.

That’s why our Distance Learning Division has created this practical distance learning program. Strategies for Drafting and Converting Provisional Patents features two expert-led sessions that provide a detailed roadmap for drafting a solid provisional, along with critical guidance on assessing those provisionals and determining whether to invest in conversion. The two programs are:

  • Protect University Innovations by Drafting High Quality Provisional Patent Applications. This 90-minute session, led by an expert legal team from Baker Donelson, will discuss drafting best practices for provisional patent applications to ensure they protect your IP and support your full application later.
  • Best Practices for Performing Provisional Patent Conversion Evaluations.
    Featuring Rakhi Gibbons, Associate Director for Biomedical & Life Sciences Licensing at Tech Launch Arizona, this session focuses on what factors TTOs should consider in making their patent conversion decisions, and how to arrive at a solid determination among competing priorities and issues – budget, faculty pressure, competition, IP and development risks, licensee interest, and more.

For compete details or to order, click here.

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Trade Secret Protection, Management and Licensing: What TTOs Need To Know


By Jesse Schwartz
Published: January 25th, 2023

Trade secrets are a unique form of IP whose value, unlike patents, trademarks, and copyrights, relies upon preventing competitors and others from discovering those secrets. Properly identifying what constitutes a trade secret, understanding its commercial value, and legally protecting it can be considered an important element of your overall IP strategy — or you risk losing that IP altogether. 

Many TTOs have an incomplete understanding of the trade secret aspects of their IP portfolios and may fail to capture the value it can represent either alone or when paired with patent licenses. Of course, the academic right to publish must be factored in as well. That’s why we’ve partnered with Richard Cahoon, PhD, and attorney Peter Toren for this important 90-minute webinar: Trade Secret Protection, Management and Licensing: What TTOs Need To Know, scheduled for February 15th.

In this expert-led session, you’ll learn what’s needed to facilitate the creation, management, and commercialization of trade secrets. You’ll get practical advice on ongoing management and licensing issues related to trade secrets, and a key topic will focus on how patents and trade secrets can be integrated to protect a new technology and increase its licensing value.

For complete details or to register, click here.

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Employing Metrics in Technology Transfer and University-Industry Engagement


By Jesse Schwartz
Published: January 25th, 2023

In a perfect world, the metrics used to gauge the performance of tech transfer and industry engagement offices would clearly identify areas of strength and improvement while also pinpointing weak spots needing extra attention. The data would provide a meaningful assessment of both how you’re doing and how to get better, and also offer a fair report card on your team’s effectiveness in achieving a set of well-defined goals.

But that perfect world is often not the reality for many offices, whose metrics may seem less than meaningful and less than fair. Are strictly financial metrics an accurate reflection of your office’s broader contribution to the university? Is goal setting and achievement really within your control? Are data normalized so your results and judged against true peers? While disclosures, licenses, start-ups, partnerships, and research dollars will always factor in, what other metrics can give a fuller picture of activity and impact?

To help you assess and refine your performance measurement and metrics, we’ve produced Employing Metrics in Technology Transfer and University-Industry Engagement, a three-session collection of distance learning programs filled with expert guidance on how to improve the way your office’s activity and results are tracked, analyzed, and judged. For complete program and faculty details or to order, click here.

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The EU Unitary Patent and Unified Patent Court: What Universities Need to Know


By Jesse Schwartz
Published: January 18th, 2023

After many stops, starts and delays, the Unitary Patent and Unified Patent Court (UPC) are scheduled to take effect in June 2023, ushering in enforcement across the EU in a single action. This can greatly reduce your international patent costs and time spent on managing the application process, but the savings come with risks – including the potential for a single revocation action effective across the EU.

The new regime includes an opt-out option to remove a patent or application from the UPC and return it back to the jurisdiction of individual countries, and it’s critical that you understand the benefits and drawbacks of opting out before making this permanent decision. And then there are the new procedures to prepare for, as well as the potential impact on licensing terms.

There’s a lot to unpack, and universities must prepare and ensure a solid understanding of the benefits and risks of the Unitary Patent and the UPC. That’s why we’ve partnered with UK and European patent attorneys Matthew Howell and Isobel Finnie, both partners with HLK-IP, for this important and practical session: The EU Unitary Patent and Unified Patent Court: What Universities Need to Know, scheduled for January 24th.

For compete details or to register, click here.

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The EU Unitary Patent and Unified Patent Court: What Universities Need to Know


By Jesse Schwartz
Published: December 21st, 2022

After many stops, starts and delays, the Unitary Patent and Unified Patent Court (UPC) are scheduled to take effect in June 2023, ushering in enforcement across the EU in a single action. This can greatly reduce your international patent costs and time spent on managing the application process, but the savings come with risks – including the potential for a single revocation action effective across the EU.

The new regime includes an opt-out option to remove a patent or application from the UPC and return it back to the jurisdiction of individual countries, and it’s critical that you understand the benefits and drawbacks of opting out before making this permanent decision. And then there are the new procedures to prepare for, as well as the potential impact on licensing terms.

There’s a lot to unpack, and universities must prepare and ensure a solid understanding of the benefits and risks of the Unitary Patent and the UPC. That’s why we’ve partnered with UK and European patent attorneys Matthew Howell and Isobel Finnie, both partners with HLK-IP, for this important and practical session: The EU Unitary Patent and Unified Patent Court: What Universities Need to Know, scheduled for January 24th.

For compete details or to register, click here.

Also coming soon:

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Employing Metrics in Technology Transfer and University-Industry Engagement


By Jesse Schwartz
Published: December 21st, 2022

In a perfect world, the metrics used to gauge the performance of tech transfer and industry engagement offices would clearly identify areas of strength and improvement while also pinpointing weak spots needing extra attention. The data would provide a meaningful assessment of both how you’re doing and how to get better, and also offer a fair report card on your team’s effectiveness in achieving a set of well-defined goals.

But that perfect world is often not the reality for many offices, whose metrics may seem less than meaningful and less than fair. Are strictly financial metrics an accurate reflection of your office’s broader contribution to the university? Is goal setting and achievement really within your control? Are data normalized so your results and judged against true peers? While disclosures, licenses, start-ups, partnerships, and research dollars will always factor in, what other metrics can give a fuller picture of activity and impact?

To help you assess and refine your performance measurement and metrics, we’ve produced Employing Metrics in Technology Transfer and University-Industry Engagement, a three-session collection of distance learning programs filled with expert guidance on how to improve the way your office’s activity and results are tracked, analyzed, and judged.

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

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Contracts and Agreements in Research Commercialization: A Primer for New Staff, Faculty, Interns, and Students


By Jesse Schwartz
Published: December 14th, 2022

NDA, MTA, CRADA, SRA, MSRA, CRA, IIA, DTUA, MOU…. To newer staff and faculty researchers, the dizzying array of contracts and agreements involved in research commercialization can seem like alphabet soup.

Unprecedented turnover in the tech transfer and sponsored research world has given rise to a new and inexperienced workforce that may be less familiar with the intimate workings of the commercialization process. And then there are faculty researchers and students, who may have even less understanding of the mechanisms used to protect and commercialize their innovations – or how they can jeopardize their own IP without realizing it.

That’s why we’re hosting the webinar workshop Contracts and Agreements in Research Commercialization: A Primer for New Staff, Faculty, Interns, and Students, scheduled for December 21st — and giving all attendees the on-demand video to keep for future training. Featuring Jessica L. Boyle, JD, Associate Director, Division of Sponsored Programs with The University of Iowa, and Bryce Pilz, Executive Director of Licensing & Strategic Alliances with Innovation Partnerships at the University of Michigan, this outstanding primer will focus on the fundamentals needed to understand the various documents, agreements and contracts that involve the protection and commercialization of university IP.

For complete details or to register, click here.

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Proven Strategies for Rebranding and Revitalizing your TTO


By Jesse Schwartz
Published: December 14th, 2022

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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Staffing Your TTO: Managing turnover, remote work, and other HR challenges


By Jesse Schwartz
Published: December 7th, 2022

How can your office best address these worrisome trends, maintain a full staff, manage an increasingly virtual staff, and keep your commercialization activity flowing?

University tech transfer offices across the country are experiencing turnover, staffing shortages, and recruitment challenges like never before. A perfect storm has erupted creating difficult conditions for keeping and attracting staff, and scores of TTOs are suffering under the weight of too-few-hands while struggling to train the new staff they’ve hired to fill the gaps. And the remote work challenge comes as the icing on the cake, potentially stripping away the office’s sense of camaraderie and the ability to “drop-in” for a quick chat on important items.

But there are creative, effective strategies aimed at retaining your current staff, recruiting top candidates for open positions, and addressing HR issues head on. That’s why we’ve lined up a stellar team of presenters from MIT, UPenn, and U Michigan to discuss their staffing and HR challenges – and offer their key tactics for overcoming those challenges. Join us on December 14th for Staffing Your TTO: Managing turnover, remote work, and other HR challenges, a practical round table-style webinar featuring MIT’s Lesley Millar-Nicholson and Marieta Hurtado, Penn’s Micheal Poisel, and U Michigan’s Kelly Sexton.

For complete details and to register, click here.

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


By Jesse Schwartz
Published: December 7th, 2022

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.

We’ve 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 on-demand video, and print transcript so they can be shared conveniently throughout your organization when and how you wish. Also included are all handouts and Powerpoints prepared by our expert faculty. For complete details and to order, click here.

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Staffing Your TTO: Managing turnover, “quiet quitting,” remote work and other HR challenges


By Jesse Schwartz
Published: November 30th, 2022

You’ve heard the buzzwords “quiet quitting” and “Great Resignation,” and your TTO may have been one of many affected by the dramatic increase in turnover they refer to. How can your office best address these worrisome trends, maintain a full staff, manage an increasingly virtual staff, and keep your commercialization activity flowing?

No one is immune — university tech transfer offices across the country are experiencing turnover, staffing shortages, and recruitment challenges like never before. A perfect storm has erupted creating difficult conditions for keeping and attracting staff, and scores of TTOs are suffering under the weight of too-few-hands while struggling to train the new staff they’ve hired to fill the gaps. And the remote work challenge comes as the icing on the cake, potentially stripping away the office’s sense of camaraderie and the ability to “drop-in” for a quick chat on important items.

But there are creative ways aimed at retaining your current staff, recruiting top candidates for open positions, and addressing HR issues head on. That’s why we’ve lined up a stellar team of presenters from MIT, UPenn, and U Michigan to discuss their staffing and HR challenges – and offer their key strategies and tactics for overcoming those challenges. Join us on December 14th

for this practical round table-style webinar featuring MIT’s Lesley Millar-Nicholson and Marieta Hurtado, Penn’s Micheal Poisel, and U Michigan’s Kelly Sexton.

For complete details and to register, click here.

Also coming soon:

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