Tech Transfer eNews Blog

Best Practices for Licensing Research Tools and Materials


By Jesse Schwartz
Published: April 7th, 2021

Mouse models, cell lines, data, reagents, software…. Your university has a vast inventory of research materials and tools that represent valuable IP assets with significant licensing potential. The challenge is to find, categorize, and market them to create a new or expanded revenue stream for your TTO.

These tangible research materials, whether biological, chemical, physical, or otherwise represent significant untapped revenue. The key is identifying these materials and making them readily available for licensing via click-thru licenses for immediate revenue, as well as understanding the structure and negotiation strategy required for larger or bundled licenses.

To ensure you get maximum value from your research tool assets, Tech Transfer Central’s Distance Learning Division has partnered with attorney and UNeMed Business Development Manager Joe Runge for this detailed webinar: Best Practices for Licensing Research Tools and Materials, scheduled for April 21st.

For complete program details or to register, click here.

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Princeton’s innovation ‘czar’ brings new life to campus entrepreneurship


By Jesse Schwartz
Published: April 7th, 2021

A detailed article on Princeton’s push to create a regional innovation hub appears in the March issue of Technology Transfer Tactics. To subscribe and access the full article, click here.  

What can an innovation “czar” accomplish in one year? At Princeton University, a lot, as it turns out.

Under the leadership of Rodney Priestley, Princeton’s first vice dean for innovation, the  university is turning its well-established but not yet well-known standing as a seed bed of innovation and entrepreneurship into a powerhouse. The school hopes to create an innovation hub in New Jersey that school officials believe will rival the impact of other hubs across the country.

With President Christopher Eisgruber at the helm, Princeton took significant steps in its journey in innovation and entrepreneurship almost six years ago when a university advisory committee outlined a future vision for entrepreneurship. The university created the Princeton Entrepreneurial Council (PEC) as an entrepreneurial hub, and also created a position in the Office of Technology Licensing (OTL) for a new ventures associate.

PEC Executive Director Anne-Marie Maman and New Ventures Associate Tony Williams started work within a week of each other, tasked with putting a 21-point entrepreneurship and innovation plan to put in place. The two dug in and implemented the plan within two years. “We’ve gone way past those first 20 points and grown beyond it,” says Maman.

In 2020, feeling the time was right to provide academic leadership in the entrepreneurship arena, Provost Deborah Prentice and Dean for Research Pablo Debenedetti created a vice dean for innovation position and appointed Priestley to fill it. Debenedetti also moved the PEC under the Office of the Dean for Research’s umbrella, reporting to Priestley. Now, the PEC was closer to OTL and Corporate Engagement and Foundation Relations (CEFR), both already part of the Office of the Dean of Research.

More recently, the university sent another powerful signal in support of innovation and entrepreneurship when it hired Andrea Goldsmith, a celebrated engineer and entrepreneur, as Dean of the School of Engineering and Applied Science. Goldsmith came to Princeton after 22 years on the Stanford faculty, starting her new position in the midst of the pandemic in September 2020.

Priestley’s and Goldsmith’s long-term vision is to establish an innovation and tech hub in New Jersey that promotes inclusiveness and diversity, blending science and engineering with the humanities and social sciences.

The pair agree that the time is right for this far-reaching effort, noting the recent exodus of “young techies” from Silicon Valley, many of whom are putting down stakes in the New York City area and seeking work or building companies in fields where Princeton shines — biotech, computer science, data science, quantum tech, and smart cities.

Princeton sits at the halfway mark in the corridor between New York City and Philadelphia, she adds, where there is a growing demand for engineering knowledge and entrepreneurship. Add to those trends the availability of inexpensive land and New Jersey is in a position similar to Stanford University in the 1950s, Goldsmith contends.

It also helps, she says, that “our governor is pushing entrepreneurship in New Jersey in a very new and important and innovative way…. So there are things that are different now about Princeton’s location and opportunity that make it right for this ability to launch and serve as a catalyst for a tech hub.”

The university is preparing for that future by developing a new 500-acre campus across Lake Carnegie that will provide more room for research, innovation, and entrepreneurship activities. The university has also agreed to be the first institutional tenant in a new collaborative innovation site in New Brunswick, NJ, a city 15 miles north of Princeton.

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Gene sequencing spinout from Oxford, valued at £2.3B, is going public


By Jesse Schwartz
Published: April 7th, 2021

A gene sequencing company with roots at Oxford University is going public, and its three founders stand to pocket up to £150M (over $207M US) between them. continue reading »

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Case Western biotech start-up acquired by Amgen for $55M


By Jesse Schwartz
Published: April 7th, 2021

A start-up from Case Western Reserve University has been acquired by global biotech company Amgen for $55 million. continue reading »

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Library of royalty rate benchmarking references


By Jesse Schwartz
Published: April 7th, 2021

2Market Information Inc., publisher of Tech Transfer eNews, offers a wealth of benchmarking resources filled with real-world royalty rates, license fees, milestone payments and other deal terms. Click on the titles below for detailed information, including tables of contents, and to order:

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New structure brings Ohio State’s innovation activity under one umbrella


By Jesse Schwartz
Published: April 7th, 2021

The Ohio State University has reorganized its departments supporting innovation and entrepreneurship under a new umbrella group in a bid to “provide stronger supports for our entrepreneurial and business community while also better connecting our world-class researchers to the resources they need to translate their research discoveries,” according to a university release.

The new entity overseeing it all is Enterprise for Research, Innovation and Knowledge (ERIK), which has been formed under the leadership of Executive Vice President Grace Wang. It joins tech transfer, economic development, corporate engagement, sponsored research, with an office administration arm supporting all those efforts. In addition, the new unit will focus on the development of the Innovation District on Ohio State’s West Campus.

“This is an exciting time for our storied institution,” said Wang. “We have the opportunity to drive the growth of research, creative expression, and innovation, build our Innovation District, and advance Ohio State as a leading research institution and economic engine.”

The new structure includes these five pillars:

  • The Office of Innovation and Economic Development — currently known as the Corporate Engagement Office — will continue to work to advance innovation and technology commercialization, manage intellectual property, build corporate partnerships, stimulate entrepreneurial and start-up activities, and support the region’s economic development efforts.
  • The Office of Research will lead efforts to grow Ohio State’s research and creative expression enterprise, including operations, sponsored programs and research compliance.
  • The Office of Knowledge Enterprise will work to identify existing and emerging research opportunities and provide resources and support to grow research talent.
  • The Business Development and Innovation District pillar will handle communications, marketing, business development and strategic events to support the unit as well as economic development activities related to the Innovation District.
  • The Office Administration pillar will support the leadership team in effective execution of the enterprise agenda and operations, including strategic planning, budget, human resources and more.

Source: Ohio State University

Proven Strategies for Rebranding and Revitalizing your TTO is a distance learning collection focusing on the standout rebranding projects at the University of New Hampshire and the University of Virginia. Click here for details.

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Ohio State start-up raises $116M to advance treatments for neuromuscular diseases


By Jesse Schwartz
Published: April 7th, 2021

The new innovation structure at Ohio State (see article above) got off to a fast start with the announcement of a $116 million investment secured for one of its most promising start-ups. continue reading »

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KAHR licenses immunotherapy drug candidates from Thomas Jefferson U


By Jesse Schwartz
Published: April 7th, 2021

Cancer immunotherapy company KAHR has entered into a licensing agreement with Thomas Jefferson University (TJU) to advance multiple new drug candidates developed at the university. continue reading »

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Purdue researchers develop engine monitoring device based on electrocardiograms


By Jesse Schwartz
Published: April 7th, 2021

Researchers at Purdue University have developed a turbine engine monitoring device based on the medical devices used to monitor heart rhythms. continue reading »

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Sweat Equity Challenge attracts software start-ups for NC State


By Jesse Schwartz
Published: March 31st, 2021

A detailed article on the NC State Sweat Equity Challenge appears in the March issue of Technology Transfer Tactics. To subscribe and access the full article, click here.  

Along with the ongoing challenge to generate invention disclosures from faculty comes the old maxim “be careful what you wish for.” In many cases when disclosures are received, the ideas are not fully conceived or validated enough to warrant allocation of the TTO’s limited resources. And even when the IP is well described, it often arrives with little knowledge of the target market or validation of the market need.

With these challenges in mind, Jason Lamb, JD, LLM, senior licensing associate in North Carolina State University’s Office of Research Commercialization (ORC), created the NC State Sweat Equity Challenge with the help and enthusiastic support of ORC Director of Licensing Kultaran Chohan and Assistant Vice Chancellor Wade Fulghum. The program encourages a way for innovators to take their less than fully formed ideas through vetting and a rigorous customer discovery process.

Lamb manages a portfolio of technologies centered around software, industrial design, and data technologies from the Department of Electrical and Computer Engineering and the College of Design. While the disclosures in his area are plentiful, says Lamb, “by and large, most of the people I was engaging with . . . just had great software ideas and they didn’t know how to connect the rest of the dots. They often do not have a true sense of market demand nor do they have the coding resources to create a basic prototype.”

Lamb also suspected that many potentially good ideas floating around campus never came to the ORC’s attention. “You look around, and you see successful companies that are software-based,” says Lamb. “But we’re not launching many of those companies. The same types of ideas are bubbling around NC State. They’re just not getting out.” Lamb saw this disparity as a potential opportunity to discover, nurture and commercialize these software ideas at ORC, so he launched the Sweat Equity Challenge as the mechanism to accomplish this.

One might think that if a person comes up with a good idea for software, they also would know how to create code for that software. However, as Lamb points out, this is very often not the case. Furthermore, they do not necessarily have the wherewithal to connect with the professional services needed to get the coding done for them. Tapping into computer science students on campus is often not a good solution because the deliverable schedule might not fit into their coursework or the students may not have the level of professionalism required to work on a start-up project. Freelance work is another option, but the cost might be prohibitive.

Enter the Software Challenge, which not only overcomes these obstacles but generates a clear sense of market demand and market fit for the idea.

The Sweat Equity Challenge is open to anyone; it doesn’t necessarily have to be a university faculty member, employee, or university student. The only requirement is that if the applicant decides to form a start-up, the venture must use and license university-owned IP. The IP is created after market validation and during the Phase 3 prototype development phase. If an undergraduate applies with an idea based on IP they’ve already created (such as an existing prototype or design), they retain ownership of the existing IP under university policy. The same is true for non-NC State applicants or any existing IP not owned by the university. However, if the idea holds up to market validation, the applicants have the choice to go and create their own start-up or to work with the university and sign over existing IP. The university would then issue a license to the start-up to use the existing and any newly created IP developed during Phase 3 the program.

Each year, NC State sees about 40 to 50 Sweat Equity Challenge applicants. Each applicant submits a two-page document identifying a problem in the market and their proposed solution. They also disclose whether they have any existing code or a version of the solution already made.

The program hasn’t yet become well known on campus, but Lamb has plans to remedy that by “painting the entire campus” with the message that the program is meant for everyone in the NC State community and encouraging anyone with an idea to fill out an application.

The number of students vs. faculty who apply to the program is about an even 50/50 split. However, of the applications selected for the customer discovery step, about 80% are faculty, many with graduate students and postdocs as part of their team. “We get many applications that aren’t as fully formed from the student groups, and typically faculty will be submitting something that they’ve done research on over a number of years,” explains Lamb. He hopes to create a course in the future that would help students to write higher-quality applications.

ORC and their selection committee review the applications and choose about 10 individuals or teams to go through the market validation step. Those selected go through a four-week market assessment short course, a version of the National Science Foundation’s I-Corps program. During this course, the participants interview potential customers and strategic partners to see if they can validate their business hypotheses in the market. “We’re teaching teams to divorce themselves from their particular technology and think more about market needs and desires,” explains Lamb.

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Australian National U start-up creates a quantum computer the size of a lunch box


By Jesse Schwartz
Published: March 31st, 2021

A start-up from Australian National University (ANU) has developed a quantum computer that is smaller, easier to operate, and capable of performing at room temperature – features that could open quantum technology to many more businesses. continue reading »

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Post-License Royalty Audits: Strategies for Discovering, Managing and Avoiding Discrepancies in Reporting


By Jesse Schwartz
Published: March 31st, 2021

A successful licensing compliance program should be a self-sustaining effort that utilizes multiple compliance tools — including onsite audits — and delivers a strong message to licensees that you intend to enforce and protect your IP rights. Royalty audits can and should be a critical part of every TTO’s license compliance efforts.

Studies show that over 90% of royalty audits reveal underpayments. There are myriad factors that contribute to the underreporting of royalties: misunderstanding of the terms in the original agreement, financial hardship of the licensee, new products launched and not accounted for, sublicensing payments, and many others.

An effective royalty audit program can pay for itself many times over, since instances of underreporting can represent hundreds of thousands of lost dollars — dollars that could have been reinvested in research or IP development, not to mention the TTO’s own operating budget. To help you unearth that “missing” revenue, we’re producing this practical webinar: Post-License Royalty Audits: Strategies for Discovering, Managing and Avoiding Discrepancies in Reporting.

Join us on April 27th when Karen Wang, Director in the Disputes, Compliance, & Investigations group with Stout, discusses critical issues associated with royalty reporting and compliance, and proven strategies to ensure you receive every penny you deserve.

For complete details or to register, click here.

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