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Global EIR programs spreading across U.S. to fill start-up visa gap


By Jesse Schwartz
Published: February 6th, 2019

According to Science and Engineering Indicators 2018, a National Science Board report, there were about 240,000 international students on temporary visas enrolled in science and engineering graduate programs in 2015. This represented 36% of total U.S. graduate enrollment. The proportion of international enrollment was highest — 47% or higher — in computer sciences, engineering (particularly high in electrical engineering), mathematics and statistics, and economics.

Any of these students who opted to stay in the U.S. to create a business encountered immigration laws that, absent a start-up visa, make it difficult for them to stay here. This likely created a significant loss for the U.S. economy: in 2013, a report from the Kauffman Foundation estimated that a start-up visa statute could create anywhere from 500,000 to 1.6 million jobs over 10 years.

The Global EIR Coalition, a nationwide program that grew out of a local effort at the University of Massachusetts, is working to keep those founders and jobs in the U.S.

When attempts failed in 2014 to get Congress to include a start-up visa in immigration reforms, William Brah, assistant vice provost for research and executive director of the UMass Venture Development Center, along with Jeff Bussgang, entrepreneurship professor at Harvard Business School and co-founder of Flybridge Capital, developed the Global Entrepreneur in Residence (EIR) model. This model presented a legal way to help international entrepreneurs stay in the U.S. to start businesses after they graduated.

The Global EIR model taps into the visa cap exemption that universities have relied on since 2000, but it uses the exemption for a different purpose — something schools have to adjust to in the program. “Universities are used to hiring just researchers with a certain background using the visa and they may not be used to hiring people with the same qualifications, but instead of doing research they’re doing innovation and entrepreneurship. So, it’s sort of a leap,” Brah says.

Global EIRs work part-time for a college or university as a student mentor. Because they are working for a university, they qualify for a standard work visa that is exempt from the visa lottery. When they are not fulfilling their work obligations to the university, they are free to build their businesses. Eventually, these businesses mature to the point where the entrepreneurs are able work for the company they started and obtain a visa sponsored by that company.

In just four years the Global EIR program at UMass has hosted 50 international entrepreneurs who’ve gone on to start companies, raising over $416 million in funding and creating about 850 jobs.

With the success of the program proven at UMass, Bussgang and Brad Feld, an early-stage investor and entrepreneur, wanted to introduce the Global EIR program to other colleges and universities. They formed a nonprofit entity, the Global EIR Coalition, and expanded nationwide in 2015.

The Global EIR Coalition serves in an advisory role for colleges and universities who want to use the model for keeping entrepreneurs in the U.S. When the schools have questions, they reach out to the Global EIR Coalition. Global EIR provides information about the basics of how the program works, free of charge.

“They reach out to us when they have an opportunity that they’d like to take advantage of that involves the problem of an international grad student, which is not within their knowledge base right now,” says Craig Montuori, executive director of the Global EIR Coalition. “Any school can do what we call a Global EIR on their own. What we do is we make it as easy as possible and as comfortable as possible for the school to make it happen.”

A detailed article on Global EIR programs appears in the January issue of Technology Transfer Tactics. To subscribe and access the full article, as well as the publication’s entire 11-year archive of best practices and success strategies for TTOs, CLICK HERE.

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Ontario researchers land major investment for groundbreaking leukemia treatment


By Jesse Schwartz
Published: February 6th, 2019

Researchers at the Ontario Institute for Cancer Research (OICR) have developed a groundbreaking treatment for leukemia, attracting an investment that could exceed $1 billion. continue reading »

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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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Alumni investment group in the Research Triangle adds Duke to its roster


By Jesse Schwartz
Published: February 6th, 2019

Alumshares, an investment company focused on bringing alumni investors start-ups coming out of their alma maters, has added Duke University to its roster.

According to co-founder and CEO Michael McCord, the goal of Alumshares is to enable alumni to invest in promising start-ups launched out of universities, with an initial focus in the Research Triangle area. The company will kick off its partnership with Duke by giving alumni members free investment access to start-ups from several top research universities.

“People identify who they are with where they went to school,” says McCord. “They have ties to their school’s athletics or their degree… but the research space is largely invisible to them.”

Alumshares works with universities’ own investment platforms, such as NC State’s Wolfpack Investor Network (WIN), which often boast significant capital and investing experience, yet they are typically comprised of just a few hundred individuals. As McCord points out, there are thousands of alumni who might be interested in funding start-ups from their schools.

“We want to bring that third leg to build companies around academic affiliation,” he says. “We want to work with existing infrastructure and be a force multiplier of what they’re doing.”

Joe Sinsheimer, managing director of WIN, stands behind McCord and his mission. “Alumshares makes investing for our members so simple,” says Sinsheimer. “Instead of worrying about coordinating complicated closings, I’m able to focus on expanding our network of alumni and getting great companies in front of them. With Alumshares, I’m able to ensure our university ecosystem receives the support it deserves.”

Source: WRAL TechWire

Establishing Affinity Funds for University Startups: Tap Into Alumni for a New Investment Stream is a strategy-filled distance learning program that guides you in creating a vibrant alumni-focused fund, featuring experts from UC San Diego. For complete details, CLICK HERE.

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U of Arkansas launches multimillion dollar fund to help faculty commercialize their research


By Jesse Schwartz
Published: February 6th, 2019

The University of Arkansas (UA) has announced a new fund aimed at helping faculty members take their research to the marketplace. continue reading »

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U of Akron start-up launches online sales of its super-strong adhesive


By Jesse Schwartz
Published: February 6th, 2019

A start-up from the University of Akron has developed a new, super-strong adhesive with a wide range of potential applications. continue reading »

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U of Plymouth start-up secures £1.2m UK grant to develop novel antibiotic that combats MRSA


By Jesse Schwartz
Published: February 6th, 2019

A University of Plymouth start-up has landed a £1.2 million grant from the UK Department of Health and Social Care to advance its lead antibiotic candidate targeting antimicrobial resistant superbugs. continue reading »

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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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Rowan University launches $50 million fund to accelerate research commercialization


By Jesse Schwartz
Published: February 6th, 2019

Rowan University in New Jersey has launched a 10-year, $50 million fund to boost economic development in the region through the commercialization of research. continue reading »

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UConn start-up gets help from local accelerator to advance new rheumatoid arthritis therapy


By Jesse Schwartz
Published: February 6th, 2019

A University of Connecticut (UConn) start-up is advancing a promising new supplemental therapy for rheumatoid arthritis, with help from a local accelerator. continue reading »

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U of Manchester researcher develops coating to improve the visibility of microscopic cells


By Jesse Schwartz
Published: February 6th, 2019

A researcher from the University of Manchester has developed a technology to make living cells and tissues more visible to scientists during analysis. continue reading »

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$31.6M award illustrates risks in co-development deals, even decades later


By Jesse Schwartz
Published: January 30th, 2019

The $31.6 million awarded to Washington University of St. Louis (WUSTL) in a lawsuit levied against its patent license partner the University of Wisconsin is a reminder that co-development deals can come crashing to the ground years after they were initiated. And when they do, more often than not the cause is traced to poorly defined terms.

As co-development agreements become more prevalent, universities also may need to pay more attention when another entity is given the power to assign relative value to patents involved in a license, because millions can be lost if those valuations are skewed.

A court recently ordered the University of Wisconsin to pay WUSTL for breaching a royalty agreement related to the sale of a drug used in treating kidney disease. Researchers from the two universities collaborated on research in the 1990s and applied for the drug patent in 1995. They agreed to have the University of Wisconsin’s licensing arm, Wisconsin Alumni Research Foundation (WARF), handle licensing of the patent, known as the ‘815 patent.

In 1998 WARF licensed the patent to Abbott Laboratories, which later spun out AbbVie and used the patent — along with dozens of others — to create the blockbuster kidney drug Zemplar. More recently Washington University questioned the royalties passed on by WARF and in a suit filed in 2013 claimed that WARF breached the terms of the agreement by undervaluing the patent. In addition to breach of duty, WUSTL claimed a breach of fiduciary duty and a breach of the covenant of good faith and fair dealing.

Washington University had received less than $1 million in royalties from the patent when it pursued litigation, while WARF had received more than $426 million. The university sought more than $38 million in the lawsuit and was awarded $31.6 million. WARF has stated that it is considering an appeal.

The court seems to have focused on the claim concerning a breach of the covenant of good faith and fair dealing, says J. Derek Mason, PhD, CLP, partner with the Oblon intellectual property firm in Alexandria, VA. Though not spelled out in this or most other contracts, the covenant of good faith and fair dealing is an accepted tenet of contract law, Mason explains — a presumption that parties to a contract will deal with each other honestly, fairly, and in good faith.

WARF did not do so and denied WUSTL the benefits it deserved from the contract, the court said. “If you look at the actions of WARF, they appear to fall within the four corners of the contract, absent that implied covenant,” Mason says. “Ultimately that’s where WARF got in trouble.”

The no-so-fair dealing was related to how the agreement granted WARF the authority to license the patent, which included the authority to assign relative value to any patents involved in the license, Mason says. When WARF granted a license to Abbott that included the patent in question, it also included almost three dozen other patents. WARF assigned 70% of value to compound patents owned by WARF, lumping the ‘815 patent co-owned with WUSTL into what it called “ancillary patents.” There were 31 patents in that group with total value of 30%, meaning each one accounted for less than one percent of the value of the contract.

At the subsequent trial, Washington University attorneys said WARF told the university in 2013 that the patent was “meaningless and largely irrelevant.” Evidence indicated, however, that WARF told Abbott in 1998 that the patent “directly supports” Zemplar.

“They had the authority to assign these values and did so, and they were paying out to Washington University over the years on that basis. They even enforced this patent in litigation and had damages awarded for infringement,” Mason says. “However, that doesn’t seem to jibe with designating [the ‘815] as an ancillary patent. Washington University argued that it was a gateway patent, meaning without it this license wouldn’t have been possible in the first place.”

Although WUSTL ultimately prevailed in the case and was awarded most of the money denied to them through the relative value assessment, it took years and costly litigation. Mason says the case should serve as a lesson to retain some control over how patent values are assigned.

“Any time a party enters an agreement with someone else and the other party is going to be the one licensing things, you don’t want to give them the authority to control your value proposition. Washington [University] didn’t have anything in the contract that gave them the chance to have input on those values,” Mason says. “They just said ‘you do it,’ and 18 years later they have to fight for what they should have gotten all along. If they had some provision in the contract that allowed them to have some input on the value, they might have avoided going to litigation.”

This full article appears in the January issue of Technology Transfer Tactics. To subscribe and access the full article, along with the publication’s 11+ year archive of best practices and success strategies for tech transfer professionals, CLICK HERE.

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