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Preventing Tax Compliance Nightmares in University Tech Transfer and Industry-Sponsored Research


By Jesse Schwartz
Published: December 4th, 2018

Commercialization activity being managed in university tech transfer, corporate engagement, and sponsored research offices runs a significant risk of running afoul of tax exemption statutes – and that can create a compliance nightmare for your university and severe headaches for you.

What’s worse, these compliance threats are getting more numerous and more complex as commercial ventures and initiatives multiply and take new forms — for instance, companies that open on-campus labs, start-ups that use tax-exempt buildings and services, revenue from start-up equity, and industry partnerships that rely on campus resources. Non-compliance can result in fines, reputational damage, and even loss of non-profit status.

That’s why Technology Transfer Tactics, in partnership with Industry-Sponsored Research Management, is sponsoring this critical webinar: Preventing Tax Compliance Nightmares in University Tech Transfer and Industry-Sponsored Research. This session, scheduled for December 12, will address common tax issues associated with university research commercialization efforts, offering practical guidance from a seasoned university tax director, including a real-world case study of tax challenges faced by a major research institution.

You will leave this program with a thorough understanding of the tax issues that affect technology transfer and other research commercialization activities – and gain a full appreciation for the impact these issues can have on an institution when not managed appropriately. Plus, you’ll take home compliance guidance and strategies you can use to ensure you steer clear of common tax problems and complications.

For complete details and to register, CLICK HERE.

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WARF ordered to pay Washington U $31.6M in royalty dispute


By Jesse Schwartz
Published: December 4th, 2018

In a long-running legal battle over royalties from a successful kidney treatment, the tech transfer arm of the University of Wisconsin (UW) has been ordered to pay $31.6 million to Washington University in St. Louis (WUSTL). continue reading »

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Bipartisan bill seeks to support entrepreneurship among U.S. scientists


By Jesse Schwartz
Published: December 4th, 2018

A new bipartisan bill aims to fuel the commercialization of research and support entrepreneurship among U.S. scientists by expanding the popular I-Corps program. continue reading »

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Cincinnati Children’s Hospital lands its biggest commercialization deal yet with launch of new biopharma company targeting sickle cell


By Jesse Schwartz
Published: December 4th, 2018

Roivant Sciences, a biotech commercialization company based in Switzerland, and Cincinnati Children’s Hospital Medical Center have launched a drug development company targeting hematological conditions such as sickle cell disease. continue reading »

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


By Jesse Schwartz
Published: December 4th, 2018

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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U of Toronto legal start-up raises $7M, aims to expand into U.S.


By Jesse Schwartz
Published: December 4th, 2018

A legal start-up from the University of Toronto (U of T) has raised US$7 million to commercialize a technology that uses artificial intelligence to predict the outcomes of tax and employment law cases. continue reading »

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Lithuanian researchers develop binding material made completely from industrial waste products


By Jesse Schwartz
Published: December 4th, 2018

Researchers at Kaunas University of Technology (KTU) Lithuania have developed a way to produce a high-strength gypsum binding material using only industrial waste products. continue reading »

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VCU Ventures shakes up standard start-up development process


By Jesse Schwartz
Published: November 28th, 2018

Aggressive licensing terms and a customized pre-accelerator program that includes a faculty/entrepreneur “dating service” and the early use of end-user feedback are among the features that VCU Ventures plans to use to promote start-up development at Virginia Commonwealth University in Richmond.

VCU Ventures, the new sister organization to VCU Innovation Gateway, is designed to complement the technology transfer office, providing a path to commercialization for technologies that the TTO has tried to license but can’t because they are too early stage or disruptive.

“We saw significant potential for start-up opportunities — enough potential to merit an office dedicated to supporting start-up activity based on faculty and staff intellectual property,” explains Nicky Monk, BS, MBA, director of VCU Ventures. “Obviously, start-ups are one of the major pathways to commercialization, but especially in the healthcare field, where we have a large slice of our pie.”

This drive to increase start-up activity begins with highly favorable licensing terms, which VCU Ventures makes publicly available. “Some universities remain a little close to the vest about terms and negotiate hard on start-up licenses,” points out Monk. “That can make talented entrepreneurs shy away from working with universities. Having favorable terms encourages trust in the university so that experienced entrepreneurs are more willing to take options to evaluate technologies. We want to attract people who have the experience and interest in taking the next steps for these technologies.”

The VCU Ventures website lays out its “Founders First Express Licensing” terms point by point, as well as providing a brief explanation of the reasoning behind each requirement. Highlights of the non-negotiable terms include the following:

  • VCU receives 5% ownership/common equity;
  • VCU gets an assignment fee of 5% of the transaction value if the start-up assigns or transfers the license;
  • The company can sublicense;
  • VCU doesn’t receive any royalties, milestone payments, or sublicensing fees; and
  • The company has one to three years to pay back VCU’s documented patent prosecution costs for licensed patents and will pay all ongoing patent costs as well.

VCU Ventures conducted an extensive listening tour to guide its decision-making process, says Monk. “We talked to faculty members, entrepreneurs who had worked with the university, entrepreneurs who had not worked with the university, early stage investors, and later-stage investors,” she explains. “Our goal was to understand their perception of working with university start-ups, what they would tolerate, and what they felt may inhibit the growth of a start-up.”

The specific licensing terms that VCU Ventures developed as a result of that listening tour should avoid key scenarios that would challenge growth, such as the university taking cash that may need to be reinvested in the company, says Monk. “These licensing terms allow companies to be successful and attract downstream investment without renegotiation of the terms.”

A detailed article on VCU’s Founders First Express Licensing model appears in the November issue of Technology Transfer Tactics. To subscribe and get the full article, as well as the publication’s subscriber-only archive filled with hundreds of best practices and success strategies for TTOs, CLICK HERE.

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Visa exemption program helps universities attract foreign entrepreneurs


By Jesse Schwartz
Published: November 28th, 2018

A program launched by the University of Massachusetts (UMass) is spreading to other campuses and helping universities attract foreign entrepreneurs to support start-up activity. continue reading »

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TOMORROW: Drafting Technology Listings for Marketing University IP: A Webinar Workshop


By Jesse Schwartz
Published: November 28th, 2018

Technology listings are one of the most important and potentially powerful marketing tools in your arsenal — but they can also be complete duds if they’re filled with technical jargon and lack the key elements that expert marketers use to grab attention and then move prospects to action.

The most effective tech listings tell the innovation’s story, stress its benefits and market potential, and clearly demonstrate why the technology is suited for licensing, valuable to partners, or ready to be spun out. The importance of these stories can’t be overstated since they typically form the basis for multiple prongs in your marketing strategy, including web postings, social media, conference fliers, e-mail blasts, and online tech listings. It’s no exaggeration to say that the quality of these summaries can make or break a technology’s path to the marketplace.

That’s why we’ve partnered with one of the world’s top technology marketing teams, from leading tech transfer consulting firm Fuentek LLC, for this dynamic and interactive program: Drafting Technology Listings for Marketing University IP: A Webinar Workshop, scheduled for tomorrow, November 29th. Fuentek’s experts will guide you and your staff through a step-by-step process for preparing an effective marketing brief and leveraging its power by incorporating it into a comprehensive marketing strategy.

For complete details, CLICK HERE.

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Kentucky launches new initiative to encourage commercialization across state universities


By Jesse Schwartz
Published: November 28th, 2018

A new initiative in Kentucky will bring the state’s universities together to share resources and expertise in an effort to bring more technologies to the marketplace. continue reading »

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U of Kentucky lands funding to support regional start-up activity


By Jesse Schwartz
Published: November 28th, 2018

The University of Kentucky (UK) Office of Technology Commercialization (OTC) has received a grant from the Kentucky Cabinet for Economic Development to support start-up activity in the region. continue reading »

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