Tech Transfer University Reporter

Cost-Effectively Report Your TTO’s Economic Development Impact

By Debi Melillo
Published: July 21st, 2014

As universities continue to modernize their economic development efforts, they are refining their initiatives to include:

  • Performing research aimed at solving real-world problems of regional or commercial interest
  • Giving students valuable knowledge, marketable skills, and entrepreneurship training
  • Creating new ventures and transferring technologies to in-state companies for job creation and economic growth

So how do you gauge the impact of these efforts? And more importantly, how do you do it cost-effectively?

Technology Transfer Tactics recently sponsored a webinar on this topic led by Chester Bisbee, PhD, JD, David Conrad, PhD, and Lisa Lorenzen, PhD. In the program, Benchmarks and Metrics for Gauging Your TTO’s Economic Development Impact, these experts offered a plethora of sound advice and best practices, and I have included below just a few time- and cost-saving tips they shared. To purchase the entire recorded session on DVD, on-demand video, or print transcript, click here.

Bootstrap Your Data Gathering and Reporting Efforts by Using:

  • Part-time (but experienced) personnel
  • Interns to aggregate data
  • Outside consultants

Leverage All of Your Resources:

  • Internal resources — development office, public relations, alumni office
  • Local, regional, state, federal resources — both private and public

Gathering and Reporting All That Data

  • One of the challenges when trying to come up with an annual report for economic development activities is that the data is scattered across a lot of different organizations. From the research park, to the tech transfer office, to the incubator, sponsored programs and beyond. Moreover, it’s sometimes on different spreadsheets, so implementing one centralized system is key. 

    When you go about building a system, it’s important for you to think about what questions not only you’re being asked by people government or economic development agencies now, but what future questions they’re going to come up with. Because if you don’t build a database correctly with the right structure, you won’t be able to instantly slice and dice the data in a way that will answer a particular question. 

  • Talk to each user and try to anticipate what they will ask in the future — such as how many of your start-ups raised more than $1 million in venture capital, or how many employees at the start-ups live outside the county or state that the university’s located in. 
  • Use prepopulated web forms that allow companies and organizations to change what’s incorrect or update what’s changed from the last time you did a survey. They’re better at getting the data correct, and it takes a lot of the burden off you. 
  • Find a way to incentivize and reward people who contribute data to the survey or to the data gathering and reporting initiative. The University of Iowa uses Qualtrics, which they have a site license for.  It’s an automated system to collect responses and send automated e-mail reminders. 

Presenting All That Data:

While your vice president may prefer the dashboard with graphs and numbers, the state legislature typically wants to hear a story of some nice successes. You must be able to report your successes using a format and method that speaks to your audience directly.

Thank you to our expert program leaders for providing an outstanding session! To see all our distance learning programs and other valuable resources for tech transfer professionals, click here.

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Aligning Start-Up Equity Negotiations with University Objectives

By Debi Melillo
Published: June 9th, 2014

When your TTO commercializes a technology through an early-stage company, there are a number of different ways — and a lot of complexities — to the way that you structure both economic and management rights.  Whether you choose an equity stake or an ownership stake in the company, these terms must be negotiated and we have some strategies for getting the result that’s right for your university.

Benjamin D. Kern, Partner, Winston & Strawn LLP recently presented a highly rated distance learning program titled: Negotiating Your University’s Equity Stake in Start-Ups for Technology Transfer Tactics that not only reveals the objectives of each player in the negotiating game but  provides solid negotiating tactics as well.

However, before you dive headfirst in to a negotiation, you must first understand who you are negotiating with and what their end-objective is. So, let’s look at the different players in the ecosystem around university technology transfer:


When structuring equity rights, the start-up needs to take into consideration that the company is also going to be dealing with some sort of outside funding.  So obtaining funding and resources — and resources also includes attracting personnel, the people who are actually going to carry the start-up from point A to point B or farther.  The second goal that is worth talking about is bringing a product to market.  So a founder of a company, whether a faculty founder or someone who comes from the business world typically is interested in seeing the idea or the product that’s been developed make it into the marketplace and become a great success. 

Start-up founders are typically interested in their own professional careers, and in achievements as a CTO, or a technical founder, or a CEO of a young company, which can provide, obviously, great personal benefits to someone separate and distinct from all the other objectives.  When someone has developed what they believe is a new technology that needs to be out in the marketplace, it’s also often the case that they want some level of control over how the technology gets into the marketplace, what kind of products are developed using it, and how that product is used, because that will reflect, obviously, on the way that the technology and the founder are regarded personally.  Finally, economic returns. It’s an unavoidable topic, and it’s also a good segue into the next category of players in the ecosystem, and that’s investors.

Looking at the investor bubble, you can see that their key role is helping the company to achieve its number-one bullet point at the top: obtain funding and resources.  An investment fund or a venture capital fund typically has limited partners investors, and the primary mission of the venture capitalist is to make a good return for those investors.  Most venture capital funds, have a ten-year life and broadly speaking, most investment funds have a five-year period where they deploy the funding that they’ve raised, and then a five-year period when they harvest the proceeds from that funding.  So investors have objectives that involve not only achieving a return, but also achieving that return in a defined period of time.  Investors are also typically interested in growing exciting companies and then being part of companies that achieve prominence or great success.

The university has a much broader constituency.  If the fundamental mission of the university is to further the growth of human knowledge and to disseminate that and make the world a better place by virtue of the technology that’s discovered in the university setting, there is a much grander goal than the dollars and cents that we focused on in the overlap between start-ups and investors.  That being said, when a university licenses its technology into a start-up, it’s often the case that that objective is not as prominent as the commercial objectives of the venture.  Universities also, like investors and like individuals who start young companies benefit greatly from having visibility and from having prominence to their achievements. When a university is able to grow prominent companies, and prominent brand names, and labels, and is able to taut those, it’s great for the university’s visibility and can enhance a university’s household name.  That’s why choosing a type of equity to take in a company, figuring out how much of that equity the university should hold, and figuring out how that equity interest might change over time are all key considerations during negotiations. Based on the technology, market and funding opportunities, universities often take one of a number of different positions in the amount of control or management influence that they want to exercise. 

Just because each party is interested in getting a good return from their investment in the start-up doesn’t mean that everybody’s going to agree.  In fact, it often means the opposite. 

Look at the major categories of equity rights in the table below for a snapshot of each party’s main concerns to consider when preparing your equity negotiations.  The university perspective is a particularly interesting one, because there are elements of the university’s perspective that can be common to the perspective of a company founder.  Obviously, if a company founder is an academic and has academic objectives, there can be a lot of commonality between they (faculty company founder) want and what the university tech transfer office wants to see happen from a start-up.  It is also the case that the university is often a key portion of the efforts that go into making a company possible at all, and then university technology is absolutely fundamental to pursue a start-up. 


The university and the founder are often united in many ways as the first groups on the ground with a stake in the success of the venture.  And in many ways, this can lead you to the conclusion that a university’s equity position and a university’s equity rights should look very much like a founder’s equity rights and equity position.  On the other hand, investors who come in and support a business typically take a more measured approach.  Where a founder may put all of his or her eggs in a single basket in a start-up and devote all of their work and time into making the start-up successful, an investor typically has a portfolio of investments and this is only a portion of what the investor is doing.  And an investor is able to spread his or her time across a number of investments, is able to diversify risk, is able to draw from experiences in other situations that are happening concurrently or have had them before.  In all of these ways, the university bears some similarity to an investor.  It’s also the case that both investors and universities may have more limited time frames when they want to see success come out of a young company.  The university often sits somewhere on the spectrum between founder and investor, and this can make for interesting combinations of equity rights. When an investor comes in, they will often say that the university should be treated like a founder, which is shorthand for saying that the investor should have superior rights. 

Even though each player’s interests differ, and those interests directly what they seek in terms of equity interest and equity rights in the company, one common goal remains: the success of the company. Keeping that goal front and center, along with the university’s objectives is paramount to a successful negotiation.

To hear specific negotiation strategies, click here for the DVD, OnDemand Video or PDF version of the distance learning program: Negotiating Your University’s Equity Stake in Start-Ups Presented by Benjamin D. Kern, Partner, Winston & Strawn LLP. 

Upcoming webinars:

Visit for more unique, practical, and advanced strategies, case studies, best practices, and expert guidance on a broad range of challenges and opportunities for technology transfer offices and professionals.

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The Three Pillars of Invention Analysis

By Debi Melillo
Published: May 20th, 2014

There are three main elements to making an invention a commercially viable project, and that invention needs to be strong in all three of these in order to succeed.  First, the technology has to be developable and have limited hurdles to development in terms of time, money, and regulation. Second, the patent needs to be strong, defensible, and enforceable.  And third, the invention must be targeting a compelling market that can be accessed.  A hurdle in any one of these domains can act as a significant barrier and even prevent commercialization.

Dr. Michael Manion recently presented a critically acclaimed webinar for Technology Transfer Tactics that helps technology managers to identify where those hurdles may be and how to sidestep them upon discovery. Read on for a small snippet of what he revealed during his presentation. CLICK HERE for more information on ordering the full recorded program, including a free sample of his Invention Evaluator tool as well as his 35-slide PowerPoint presentation. 


Quite often, we take an invention disclosure and assume that that’s what the invention is.  But the important first step in an analysis of an invention is to take the invention disclosure and describe what the essence of the invention is in your own words. 

This is important to the rest of the process, because this is where the analysts start to use their own language and development strategies for identifying literature, and patents, and so forth down in subsequent sections that you wouldn’t identify if you were using the same language as the inventor.  Part of the value of an analysis is providing objectivity, and this really begins with a robust description of what the essence of the technology is.  Inventions can be one or multiple parts of these things: it can be a material, a component, a device, a method, or a service, or it can be a combination of these. Break out what the features and the benefits are.

Identify hurdles.  The two main hurdles towards technical development of an invention are the regulatory and development hurdles. Identify those early on and place where the technology is within that landscape.


So who’s filing?  Are they large multinational companies, or are they predominantly university or independent inventors, indicating that it might be a very early stage technology, for example?  If it’s a large multinational and it’s dominated and very consolidated in terms of filing activity, there might be a maturing technology.  You can use proprietary software programs to give you the trends in filing activity over the last decade as well, so you can start to see some trends — or make some inferences about the filing activity on that broader level to give you a snapshot of what’s happening in that technology landscape.  And then it’s important for the analysts to take that information, and summarize it, and make inferences about it so that it’s not just a pretty picture; it actually gives you some meaningful information to use on whether to move forward with the patenting process.


The market analysis follows and identifies what the opportunities are for that particular invention, and this might be more than one.  In that case you really want to identify what the primary opportunity might be like.  Once you’ve identified that opportunity, then look at what the industry is doing, what it looks like, what trends there might be, and so forth to get a sense of whether there is a market opportunity.  If there is, then you need to understand how you can compete. Understanding what the competitive landscape is for that industry and particularly for that opportunity is really important as well — and to bring it all together into a SWOT analysis to summarize the strengths, the weaknesses, the opportunities, and the threats for the invention. 

commercial opportunity

SWOT analysis is an MBA-focused tool that is useful to pool all this information together.  It looks at the strengths, the weaknesses, the opportunities, and the threats.  So the strengths and the weaknesses are intrinsic attributes that are either positive or negative, and this is focused on the market assessment, really pulling together a lot of the elements in the analysis in terms of the IP analysis and the technology analysis as well.  So intrinsically, what are the strengths and the weaknesses?  What’s good about the technology?  What’s potentially a challenge?  And then the opportunities and threats are externalities: so what’s happening in the industry?  Is it receptive to disruption?  Is it dominated by large multi-nationals that have a strangle hold over the industry?  Are there macro economic sectors?  Are there drivers in particular market segments that might be interesting? 

Pooling that all together into this SWOT analysis is a useful way to summarize the commercial viability of a technology.  It brings together all those hurdles, identifies what needs to be addressed in order to move a project forward, and where the opportunities may lie.

To get the full program, along with access to a free sample of Dr. Manion’s Invention Evaluator tool as well as his 35-slide PowerPoint presentation, CLICK HERE.  

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Get a Bigger Bang for Your Social Media Efforts

By Debi Melillo
Published: April 28th, 2014

It’s safe to say that the majority of tech transfer offices have started using social media with at least one platform. But you may not be familiar with all the different platforms available and the utility that they provide — and it may be hard to decide how much time you should invest in your social media strategy as part of your traditional marketing mix.

In the end, social media, if a targeted effort is put into it, can be one of the best ways to get your technologies out to the audience that counts.

This was given some outstanding context and how-to focus in our recent webinar Marketing Your TTO’s Technologies Via Social Media 2014: New Platforms, Tracking Tools, and Trends. (For info on getting this session on DVD or on-demand video, CLICK HERE.)

But even digital marketing can get diluted, so choosing the appropriate platform and message is key. Take a look at the comical image (lower right) posted to Instagram by digital marketer, Doug Ray.  It really puts social media — and the messaging each platform provides — in its simplest terms.

social-media-explainedWhat message is this image conveying?

  • Pay attention to context. 
    Do you want to tell the world or a select audience about a new technology?
  • Start respecting the platform.
    You must understand the nuances that make each platform interesting and craft your message accordingly.
  • Think about timing.
    The time of day you post your social media accounts can have a huge impact, if/when they even get seen. 
  • Work closely with your communications office.
    They know how to communicate through certain media channels, and they can help you map out a marketing plan that coincides with the university’s mission and message. 
  • Investigate and try new platforms as they arise.
    There may not be a large impact, but it also could lead to an unforeseen success.  For example, at the University of New Mexico, after some research into crowdfunding, the TTO decided to lead the effort for their researchers instead of researchers individually attempting to create a crowdfunding campaign. This has helped inventors bridge the gap between when their government funding ends and their investment funding has yet to begin. They took three different research proposals that ranged from needing $10,000 to $25,000 and tried to seek donations through RocketHub.

    They were not successful in reaching their goals, and on the surface it seemed like a failure. But it really expanded their reach.  An investment firm saw the postings on the crowdfunding site and it led them to UNM STC’s website, which ended up in a very productive phone call in which they discussed their portfolio as a whole. Shortly after came a visit to the university, and ultimately an option license agreement was executed and a new start-up company was formed. 

So, start with some of the key platforms and then figure out what the key supporting platforms could be based on your strategy. For example, if you want to focus on LinkedIn and Twitter, as you’re out at technology seminars and meetings, post presentations on Instagram that you can then feed up to your Twitter account. Knowing the landscape beyond the key social media platforms is helpful and something that should be explored, along with presentation platforms that you can also use to support sort of your priority platform strategy. 

– – – – – – – – – – – – – – – – –

Special thanks to Cara Michaliszyn, New Ventures Development Manager with STC.UNM, the commercialization arm for the University of New Mexico, and Stephen Nappi, Associate Vice Provost for Technology Development and Commercialization at Temple University. For more valuable insight into emerging social media platforms, you may purchase the webinar Marketing Your TTO’s Technologies Via Social Media 2014: New Platforms, Tracking Tools, and Trends on DVD, On-Demand Video and PDF Transcript. CLICK HERE for details and to order.

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Answers to Your SBIR/STTR Funding Questions

By Debi Melillo
Published: April 15th, 2014

A few weeks ago, we hosted a hugely popular webinar titled: Dispelling SBIR/STTR Funding Myths and Misconceptions for University-Based Innovations that was led by Geoffrey White, PhD, President of Discovery Consulting, LLC. The program is filled to the brim with excellent information and factoids about each program and garnered high praise from attendees. The question and answer session lasted over 20 minutes and the program continues to draw attention, so I thought it would be a great idea to include a portion of it as this week’s blog post. But, this is just the tip of the iceberg — Dr. White covered over 30 slides worth of information in the program and you can get it all — just CLICK HERE to purchase the recorded session.

Read on to see a selection of questions from attendees –some of the answers may surprise you.

Employment requirements

Q: “I understand that SBIRs require that PIs at companies be primarily employed by the companies.  Does this mean 50 percent or more?  May those primarily employed PIs at the companies also have a 50 percent appointment at another organization, such as the university?”

Dr. White:  If you’re going to be a PI for an SBIR, it’s 51 percent employed at the company, and 51 percent is measured by dollars, not time.  And the other 49 percent of the time, a person could be employed by a university, or another company, or something else.  And sometimes I’ve had people at universities do just that: they leave the university for the course of the SBIR, and they get 51 percent of their salary during that time from the SBIR.  And the reason they do that is because they don’t have someone else to go and work at the company, and they need to [fill that role].  Otherwise, you may as well just do an STTR.

Another reason for doing this is that some universities get pretty possessive about some of [their] technologies. Some companies simply say, “You know, that’s too much.  I don’t want to pay those kinds of royalties.  So I’m going to go do it at the company, and then I’m going to go back [to the university].” 

New Drug Start-Up Funding

Q:Will NIH fund pharmacodynamics, pharmacokinetic studies and/or toxicology for a new drug in preparation for an FDA IND submission?”

Dr. White:  Absolutely.  I’ve gotten lots and lots of funding for doing that. The Phase I is a test of feasibility — in fact, what we did is we basically showed that this new cancer drug that we have is very effective.  We showed that in preliminary studies, and then the Phase I studies are just showing some more animal models.  And all of Phase II is all the IND enabling studies that one needs to do.  And at the end of the Phase II, we’re going to file an IND, and hopefully we’ll use a Phase IIB to pay for the Phase I/II clinical trials.

Q:Do you think a drug start-up company based on a novel high throughput screen is fundable through SBIR or STTR?”

Dr. White:  In principle it is.  It just depends on the novel screen.  It’s going to have to allow you to do something that can’t already be done, and maybe you’ll do it cheaper, maybe you’ll do it a little bit faster. But unless you fit at least that tenfold better [than existing technologies], or it will now allow you to screen against the disease that was previously just impractical to screen against.  It’s going to be tough.  So I’d have to know more details about that.  But in principle, yes, you can do it.

Q: “Do SBIR and STTR support clinical trials?”

Dr. White:  That’s a very confusing area.  The answer is: yes, they support clinical trials.  They do not support Phase III pivotal clinical trials of efficacy.  They support Phase I and Phase II trials, which are not for efficacy.  That’s the difference.

Application and Business Strategy

Q: “Is it a long-term business strategy for a small business to rent lab space indefinitely from a university?”

Dr. White:  I don’t think it’s a good long-term strategy.  In terms of SBIRs — no, that’s really a personal decision.  In terms of getting SBIRs, you could do that.  I don’t know why you couldn’t do it if the university was willing to do it.  Of course, the downside is that if the university is now going to want to share in the IP. You just have to decide how that all works for you and what your comfort level is.  Now, they’re doing something for you, you want to do something for them, but how much of it do you want to give up?  So you just have to work out those details and see what’s right for you.  So in terms of a business strategy, there are a lot of considerations to come up with, and it’s really going to be a personal decision: risk versus reward.

SBIR vs STTR: Who has more money available?

Q: “Is there more opportunity in SBIR or STTR in terms of the total money available?”

Dr. White:  There’s a lot more money available with SBIRs, and that could be a consideration, but that’s  if you look at the scores. Usually SBIRs are a lot more competitive in terms of scores than STTRs, so it’s really not the amount of money, but it’s really the score that’s important.  If you’ve got a great project, and you’ve got a great team, and you’ve got a great experimental design, you’re going to get a good score. Also, if you did get a really good score, and for some reason the STTR didn’t get funded, you could always call the program person and say, “Hey, if I turn this into an SBIR, will this be fundable?”  And the program people have the right to do that.  If they want to, they can let you change it to an SBIR.  So they have to agree to do that, but it’s not hard to do.  You just have to be able to find a reasonable way to change around where the money is going. If you can find a way to get the right PI in there of equivalent strength, you can change it to an SBIR if you had to. 

Using a Consultant

Q:What is the best strategy for academic university faculty who are first time SBIR applicants to succeed, especially given that they don’t have much business experience?  Should they necessarily have business consultants?”

Dr. White:  It’s a difficult question.  You should certainly be able to go and talk to your tech transfer office and get some good input.  A lot of this is pretty straightforward.  Go talk to other people who have started companies or gotten SBIRs.  You can go and search the NIH reporter and — or the NSF has an equivalent database, and so does the DOD.  Find people who have gotten funded in your general area.  Call them up.  E-mail them.  And find people who have gotten funded multiple times, not one time.  And chances are they’re going to talk to you and give you the benefit of their experience.But going out and hiring a consultant to learn that stuff is probably not what I would do.

CLICK HERE to purchase Dispelling SBIR/STTR Funding Myths and Misconceptions for University-Based Innovations on DVD, On-Demand Video or PDF transcript. We’d like to thank Dr. Geoffrey White for his presentation.

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Best Practices for Fostering University Hyper-Local Innovation Ecosystems

By Debi Melillo
Published: March 31st, 2014

A University Hyper-Local Innovation Ecosystem (Hy-LIE) is defined as a cluster of R&D-oriented entities readily accessible to the campus – including small & large corporations, technology veterans, entrepreneurs and early stage investors as well as related supply chains and service providers.

This notion was born several years ago at UC Berkeley when Mike Cohen, Director of Innovation Ecosystem Development in the Office of Technology Licensing, asked how university innovations get commercialized.  From that came a unique framework that led to several tangible initiatives. He then took his idea one step further and co-founded Berkeley’s SkyDeck, which is an information technology accelerator. 

During his webinar on the subject, Mike shared his top 10 best practices to foster a Hy-LIE in your university’s region, and we are pleased to share them here with you. He also identified the four pathways of innovation as well as systematic activities that have an asymptotic impact on commercialization and how organic activities can have an exponential impact while staying cost-effective. Read below for the top 10 best practices and CLICK HERE to order this valuable webinar on DVD, On-Demand Video or PDF Transcript.

10 Best Practices to Foster University Hy-LIEs:

  1. Students & Faculty
    Provide entrepreneur-oriented MBA and technology management programs as part of your curriculum that feed the local innovation culture.
  2. YAPS: Yet Another Poster Session
    Get students, mentors, faculty, and local business to meet through poster sessions. That’s a good mechanism to get MBA and applied engineering science students, grad students, and faculty to mingle and get to know each other. 
  3. Competitions: start-ups, business plans, tech innovations, big ideas
    Business competitions have evolved into start-up competitions, especially with the notion of lean start-up, and are a great way to keep entrepreneurialism in the forefront.
  4. Project Courses:
    Research-to-market, project-based classes with interdisciplinary teams are key. A great example of this is UC Berkeley’s Cleantech-to-Market course. It brings interdisciplinary teams of students to focus on the commercialization of a research effort.  One caveat: the purpose of these teams is not to create a business plan: it’s more to learn about a research team’s area, and provide them with feedback on the direction of the research.
  5. University start-up accelerators
    Have a place where entrepreneurs, teams, mentors, etc. can meet, dish on ideas, create companies and utilize the resources that accelerators are known for.
  6. Mentoring
    Having mentoring office hours with VCs and serial entrepreneurs is critical to keeping the university/local community relationships intact.
  7. Start-up service packages
    Leverage your business resources: accountants, attorneys and marketers in your local area that can help companies form, incorporate, and apply for SBIRs and STTRs.
  8. IP Management with an “impact-oriented approach to IP” (not just money)
    It’s good to have a tech transfer office that has more of an impact orientation on managing their intellectual property.  So it’s not just about making money; it’s really about how to manage intellectual property to maximize its commercialization.  And sometimes — for example, in the software area — that can mean open sourcing and putting it into the public domain.  It doesn’t always mean licensing the technology exclusively to make the absolute most money in the short term, which can sometimes impede a start-up’s progress and the success of commercialization. 
  9. Partnering between university, local businesses & government
    We are talking between universities, local businesses, and government. If you go to or .com, you’ll see how the university came together with local businesses and the local government to establish this start-up cluster in downtown Berkeley, adjacent to the UC Berkeley campus. 
  10. Office parks for mature corporations to leverage university & anchor start-ups
    As start-ups mature, they incrementally grow into bigger space.  And office parks also have opportunities for anchored tenants, large companies that can help, again, with the critical mass of your Hy-LIE. 

One thing to remember is that Hy-LIEs are all about a “start here, stay here” mentality. Maintaining a heavy focus on a certain type of technology, whether it’s a biotechnology, information technology, or a subset therein that your university excels in will give you a competitive advantage that encourages local innovation and business growth.

More in-depth advice is provided in the archived webinar, “University Hyper-Local Innovation Ecosystems: How to Grow and Leverage Their Strategic Potential”, which is available on DVD, On-Demand Video and PDF Transcript. To order or for more information, CLICK HERE. Technology Transfer Tactics would like to thank Mike Cohen, Director of Innovation Ecosystem Development in the Office of Technology Licensing at the University of California-Berkeley, for his valuable insight and leadership in the distance learning program. 

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Avoid Litigation When Patent Trolls Come Knocking

By Debi Melillo
Published: March 13th, 2014

Trolls, NPEs, patent assertion entities; they go by many different names, and these entities have received a lot of interest of late.  Did you know that 60% of all patent cases now involved such entities?  In 2012 there were 4,700 patent suits, and over 2,400 of those cases were filed by NPEs or patent trolls. 

In this week’s post we’ll discuss the dynamics involved with a troll case and talk about ways you can avoid litigation when faced with an infringement lawsuit brought on by an NPE.  For starters, you can expect about four entities to be working together on a troll case against you:

Patent Troll 
They hold the patent. They may be the entity who sues as well or funds litigation, but sometimes not. 

Licensing Company
The patent licensing company will help a patent troll assert their patent, and sometimes they act as a broker connecting the patent troll to a law firm who’s going to actually handle the litigation.  The patent licensing organization for connecting both the patent troll and the law firm is going to get a percentage of the recovery as well. 

Law Firm
A law firm will usually takes these patent troll cases on contingency. 

Investment Fund
Believe it or not, there are funds dedicated solely to investing in intellectual property cases.

While you can have up to four entities on the other side of the table, what’s key to the whole patent troll business model is that it’s set up to get near-term revenue.  They’re not set up to withstand long-term, multi-year litigation that may risk the patent.  It brings their whole business model to a screeching halt, and that’s what the new proceedings under the AIA do: inter partes review, covered business method patent review, and post-grant review. 

AIA is working, and these new trials are successfully resolving and fast-tracking resolutions.  Right now, the PTAB is the busiest patent court in the country; much more popular than inter partes reexaminations.  So the question is: do we need further reform?  We have the industry pretty much resoundingly jumping onboard and filing these contested cases, and ever since the proceedings started September 16th of last year, you’ve seen a straight upward trajectory. 

This is a first true alternative to litigation.  These proceedings are fast, they’re easy, they’re cheap, and they’re lethal. 

They’re fast because you go from trial institution to final written determination in a year. 

They’re easy because the claim construction that the PTAB uses is the broadest reasonable construction, not the Phillips standard that a district court uses.  It is a broader standard.  Also in front of the PTAB, the burden of proof is preponderance of the evidence.  It’s not the district court’s clear and convincing, and there’s no presumption of validity before the PTAB.  So it’s easy to invalidate a patent.

It’s cheap, because when you think of a typical patent case in a district court, it runs between $3 million to $5 million. These cases come in at the $300,000 range.

They’re lethal. The PTAB has no problem invalidating a patent whatsoever. In fact, the SAP case dealt with section 101, and they showed no deference to the examiner’s determinations during prosecution  and showed no deference to the patent office itself.

So how high this will go remains to be seen, but inter partes review really is a true option to litigation, and a great weapon to use when the patent trolls come knocking.

More in-depth advice is provided in the recorded distance learning program, Patent Trolls Under Fire: Strategies, Tactics and Legislation Impacting University Patents & Licensing, which is available on DVD, On-Demand Video and PDF Transcript. For complete details and to order, CLICK HERE.

Technology Transfer Tactics would like to thank Michael Kiklis and Kevin B. Laurence from the law firm Oblon Spivak for their valuable insight and leadership in the distance learning program.

Upcoming webinars:

Visit for more unique, practical, and advanced strategies, case studies, best practices, and expert guidance on a broad range of challenges and opportunities for technology transfer offices and professionals.

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Pre-launch Considerations for University Innovations

By Debi Melillo
Published: March 3rd, 2014

Arguably, one of the most challenging issues for technology transfer professionals is choosing which technologies to move through the pipeline and whether to license out or create a start up around the innovation. In fact, each decision your team makes can run the risk of degrading relationships with researchers (when you tell them “the baby is ugly,” or alternatively wasting tens of thousands of scarce dollars on technologies that just aren’t commercially viable. So how do you make these tough decisions and make sure you back more winners and fewer losers?

You can start by adopting the proven best practices covered in our recent distance learning program Focus Your TTO Staff and Budget on the Winners: Pre-launch Considerations for University Innovations. The specific strategies covered by our expert panel will bring higher success rates, more effective use of staff time and patent budgets, and better relationships with faculty inventors.

In this week’s feature post, we’re going to focus in on some of the key pre-launch questions you must ask yourself regarding the market — rather than the science behind the technology:

  1. Does your technology/science/product address a critical unmet need and market opportunity? If so, how large is the opportunity? What is the model? Who are the customers and are they obtainable?  Can you articulate what the need is and why it exists?  What does your technology offer in terms of the solution that does not already exist in the market? Is there competition?  The alternative solutions, if they exist, have got to be examined as if they were the technologies that you were trying to bring forth to the market; not dismissively, not redundantly. And finally, if not for your technology, what would the customer actually do? 
  2. Can you describe the customers and quantify the sales of the nearest competitors or comparable companies? Are those sales significant? Are they enough to justify the investment? Are they sufficient to justify the launch of a new product? Who writes about or covers the specific areas that you’re talking about? Almost every successful technology will have some public company embodiment. It’s worth finding out from brokerage houses and investment bankers who writes about it, and talking to them. These individuals, these analysts, live with the products and the competition and are an invaluable resource. And what do these same analysts have to say about your product or solution?  
  3. Is the technology market-ready and promotable? What methods should be employed to promote the product?  On what basis do clients know to buy this product?  How do you know that’s the basis on which they buy the product?  What are the most important reasons they buy? If not your product, whose would the buy?  What will your clients tell you about the product, and how will you tell your clients about the product?  What will make them buy?  How will you keep others from displacing you or competing with you?  The barrier to displacement, or the barrier to competition, is a critical element of the decision to go forward in commercialization.
  4. Do you have proof of concept? How do you know your product or service is going to work?  What makes it a proof of concept?  Do you need to build prototypes?  Who will make them?  How will you test them?  And after the tests succeed, are there standards of proof which once reached will be taken as objective — as evidence of risk reduction? 

Most likely, these elements of market analysis, of opportunity, of competitiveness are addressed in a limited fashion by the academic inventor, and that’s where the TTO’s expertise comes in to play. While this is a very small sample of the considerations you need to home in on before launching a start-up around a technology, the highly rated 90-minute distance learning program includes much more detailed information and guidance. You can purchase the full program, complete with all handoutmaterials, on DVD, On-Demand Video or as a PDF Transcript by CLICKING HERE.

Technology Transfer Tactics would like to thank the following individuals for their valuable insight and informative presentation.

  • Margaret Offerman, MD, PhD – Principal at The Salutramed Group
  • T. (Teo) Forcht Dagi, M.D. – Partner, HLM Venture Partners
  • Jack D. Capers, Jr. Partner, King and Spalding
  • Russell M. Medford, MD, PhD – Co-founder, President and CEO, Salutria Pharmaceuticals, LLC

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Technology Transfer Tactics’ Distance Learning Division wants you!
If you have a case study, topic of expertise and are interested in presenting a webinar, please send the topic and your bio to Debi Melillo for consideration.

– – – – – – – – – – – – – – –

Upcoming webinars:

Visit for more unique, practical, and advanced strategies, case studies, best practices, and expert guidance on a broad range of challenges and opportunities for technology transfer offices and professionals.

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How to Double your Faculty’s Invention Disclosure Rate

By Debi Melillo
Published: February 17th, 2014

I hope everyone came through last week’s weather unscathed. Here in the Northeast, we had over a foot dumped on us in some areas. The kids loved yet another snow day… us parents, not so much! Fortunately, I’ll be getting far away from the white stuff and heading to the Annual AUTM conference in San Francisco tomorrow. If you’ll be there, visit us at our booth in the exhibit hall. We’ll have really cool new “Tech Transfer Warrior” t-shirts to give away as prizes and bonuses as well as show-only special deals on distance learning programs, newsletters and references. We are looking forward to meeting you and enjoying a much-needed break from winter weather!

In today’s post we’re highlighting a distance learning program we hosted last year that was led by Gary Breit, who is the Director of Innovation Management with the University of Louisiana, Lafayette. Gary has a proven track record of significantly increasing the disclosure rates in each tech transfer program he’s headed. His proven method shapes invention disclosures to affect the marketability of those technologies while controlling costs.  This process is really the first step towards building a collegial relationship and providing excellent service.  While this approach is a bit labor-intensive on the front end, the results can be astonishing. Read on for some of Gary’s best practices for building the foundation… and if you’d like to get the entire recorded webinar on DVD or on-demand video, CLICK HERE for details.

Think of tech transfer as a sales and marketing issue with heavy overlays of the technical and legal.
When you recruit, recruit brand managers from industry. It’s difficult to do in the academic milieu, so recruit scientists and try to back-in or teach something about sales and marketing tactics.

Create a case for a new, compelling opportunity. 
Meet first with the chief academic officer.  In some universities, that’s called the provost.  Regardless of the official title, this academic officer needs to understand, number one, your commitment to the academic milieu, and subsequent to that the approach you’re going to take to tech transfer, the policies that you’re going to follow, the practices that you’re going to use. 

Then talk to the dean.  The dean wants to hear about service expectations.  And, finally talk with the department chairs.  Now, you want to do two or three things with the department chairs… Remind them of the process from the faculty viewpoint, secure a departmental seminar invitation (impact the faculty members through a newsletter, if you have one, through the direct visits that you make, and through the departmental presentations.) It’s important that you get to that head of the department or chair and secure an invitation to present.

Finally, engage with faculty and understand the faculty’s pressures.  During this meeting, you want to find out what their goals are, what their needs and their pressures are.  Where are they in terms of tenure and promotion?  How well are they funded and by whom? 

Get your hands on each faculty member’s research plan.
Every faculty member constructs one and has communicated the plan to funding agencies, so you need to understand that plan to anticipate the resultant IP, the timeline (and shared inventorship or ownership , etc). This is where electronic and personal follow-up meetings in the faculty’s own space or lab are most beneficial.

The Southern Paradigm.
The Paradigm is based on the notion that faculty service results from understanding faculty through an orderly series of communications.  These communications ensure that you understand the faculty member’s field, personal aspirations and concerns. The ultimate goal is to increase the number of new IP disclosures and to “shape” those disclosures to increase value and lower expenses.

For more in-depth details regarding the Gary’s approach, please CLICK HERE to order the archived webinar, Get Aggressive and Double Your Faculty’s Invention Disclosure Rate, which is available on DVD, On-Demand Video and PDF Transcript.

We thank Gary Breit, who is the Director of Innovation Management with the University of Louisiana, Lafayette for his valuable insight.


Technology Transfer Tactics’ Distance Learning Division wants you!
If you have a case study, topic of expertise or are interested in presenting a webinar on a program listed in our 2014 roster (found here) please send the topic and your bio to Debi Melillo at for consideration.

Upcoming webinars:

Visit for more unique, practical, and advanced strategies, case studies, best practices, and expert guidance on a broad range of challenges and opportunities for technology transfer offices and professionals.

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Unleash the power of a finely tuned intern program

By David Schwartz
Published: February 3rd, 2014

If you’re like most TTOs, increasing demands for results, yet no increase in staff, means you could face rising backlogs of invention disclosures, slower response times, missed revenue opportunities, and disgruntled faculty.  But there is a proven way to bring on aggressive and talented help without busting your budget — and process more invention files than ever while breeding the next generation of entrepreneurial scientists, lawyers and business professionals.

How? By expanding your tech transfer intern program.

Adding highly motivated students to your team, and improving the intern program’s effectiveness and usefulness to your TTO,  will not only significantly expand your office’s manpower and productivity, you’ll also provide a richer, more valuable, real-world learning experience for your student interns. 

Lesley Millar from the University of Illinois at Urbana-Champaign, and Jarett Rieger Esq., MBA, from Moffitt Cancer Center, have each created finely tuned and well-oiled intern programs that bring huge rewards to both the TTO and the students. In today’s blog, we’re going to highlight some of their best practices that were featured in our recent webinar: Beyond Internships: Creating a Student-Based Workforce in Your TTO (CLICK HERE for webinar details and to order).

Make interns a part of your commercialization team

  • In many offices, interns feel like outsiders and rarely interact with staff members.  Invite interns to staff meetings so they can learn about your office goals, different projects that are ongoing, and some of your recent accomplishments.
  • Make interns a part of your team-building activities, which helps them develop rapport with staff members.  Whether it’s joining staff on an off-site retreat or attending an educational webinar, these activities lend themselves to building a cohesive working relationship between staff and intern workforces.
  • Have interns give a presentation to the office after they complete an assignment so that staff can have a better appreciation for what the interns are working on and the value they represent.
  • Provide as many educational opportunities as possible to the interns. 

At Moffitt, the interns are offered the ability to attend the Investor Forum at Business of Biotech, which is an annual conference hosted by Moffitt Cancer Center. As part of the conference, Moffitt faculty start-ups present to investors, and interns are given the opportunity to observe those investor presentations. 

At UIL, interns have a chance to be selected for an AUTM student membership courtesy of the TTO.

  • Make sure that get the chance to shadow staff members. This is extremely valuable to the interns, because they get to observe interactions with faculty as well as prospective licensees.
  • If one of your technology sectors is building momentum from non-traditional sources, use an intern to test the waters! For example, UIL has hired an intern specifically to handle mobile app commercialization.

All in all, interns provide a tremendous value to the commercialization team because they are hungry and willing to put in the time. Both Moffitt and UIL have kept tabs on where their interns have landed professionally – some have become patent and corporate counsel, some of them have gone into start-up companies, some are in market research and some are in business development. Regardless of where your interns end up, their TTO experience will stay with them throughout their careers.

For more in-depth details regarding the University of Illinois at Urbana-Champaign and Moffitt Cancer Center’s intern programs, please CLICK HERE to order the archived webinar, Beyond Internships: Creating a Student-Based Workforce in Your TTO, which is available on DVD, On-Demand Video and PDF Transcript. This distance learning program covers each program’s recruitment and application processes, procedural details, and mentoring and coaching tips.

We thank Lesley Millar from the University of Illinois at Urbana-Champaign, and Jarett Rieger Esq., MBA, from Moffitt Cancer Center for their valuable insight. 

Upcoming webinars:

Visit for more information on how to hasten and streamline the commercialization process, as well as maximize the financial benefits of that process for your organization.

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University TTOs and licensing professionals beware: A “non-binding” term sheet can be anything but…

By David Schwartz
Published: January 21st, 2014

If you haven’t paid much attention to the Delaware Supreme Court  decision in SIGA Technologies v. PharmAthene, Inc., No. 314, 2012 2013 Del. LEXIS 265, 1-2 (Del. May 24, 2013), it’s time to get familiar with the frightening case – BEFORE you sign your next term sheet.

Here’s the background story: SIGA Technologies, Inc. developed the smallpox antiviral drug Arestvyr™ (ST-246) and needed more funding to continue the project. The company reached out to a competitor in the space, Pharmathene, for the money. The parties decided to structure the deal through a license agreement, and they agreed to the particulars in a non-binding term sheet. Then, some months later, it was decided Pharmathene would acquire SIGA.  The merger agreement stated that if the merger fell through, the Parties agreed to negotiate in good faith a license in accordance with the term sheet they had previously agreed upon.

However, before the merger closed, SIGA received a large grant to further develop ST-246 and no longer wanted to be acquired by Pharmathene. This led the parties back to the negotiating table — but SIGA proposed much higher economic terms than the ones in the original term sheet, and the parties reached an impasse.

Then, things got ugly.

Justice ScalesPharmathene sued SIGA in Delaware trial court for failure to negotiate in good faith in accordance with the original “non-binding” agreement. And won! 

So how does this decision affect your TTO? Take a look at your current “non-binding” agreements. Are you sure that the same situation won’t repeat itself in your own organization? What should you do when similar fact patterns occur in your licensing negotiations?

  • Clarify intentions and expectations upfront
  • Determine if you’re willing to renegotiate “already agreed upon terms” to get the deal done

Here are some additional steps to take to ensure non-binding agreements stay non-binding, in light of the court decision:

  • Additional care should be taken in drafting term sheets or preliminary documents  (options, letter agreements, MOUs)
  • Don’t agree to a term sheet unless it is explicitly non-binding or you are prepared to continue negotiations in good faith, consistent with the term sheet.  Even when the term sheet states that it is “Non Binding” — as was true of the term sheet in Siga Technologies — incorporating that term sheet into a later agreement may create a binding obligation.
  • Appropriate disclaimer language should be included.  For example:
    • “The parties intend material terms to be merely preliminary in nature”
    • “such terms merely represent our present understanding with respect to the intended transaction described herein, and is not binding upon and creates no rights, express or implied in favor of any party”

Special thanks to Emily Williams, a licensing associate at Johns Hopkins University Technology Transfer Office focusing on the physical sciences portfolio.  She presented a webinar for Technology Transfer Tactics and we captured every word and dozens more practical strategies. This program is currently available on DVD, On-Demand video and PDF Transcript. For more information and to order, CLICK HERE

Upcoming webinars:

Visit for more unique, practical, and advanced strategies, case studies, best practices, and expert guidance on a broad range of challenges and opportunities for technology transfer offices and professionals.

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You CAN cut your patent budget without cutting the quality of prosecution or reducing the number of patents filed …

By David Schwartz
Published: January 6th, 2014

Patent prosecution costs are at the very top of every TTO’s expense list – and that means your office has a big opportunity to reduce costs and make a major budget impact in 2014.

But before you go and reduce the number of patent applications your office files, read below for an excerpt from our recent webinar: How University TTOs Can Slash Patent Expenses While Improving Patent Quality (for details on ordering this full recorded session, CLICK HERE.)

1). Establish and memorialize relationship expectations between the TTO and outside counsel. 

This can be accomplished by engagement letters that are executed by an individual with signature authority in the TTO, and outside counsel.  Even though the engagement letter may go to the account manager, we can also ask for a particular attorney in that law firm to be working on the project.  The engagement letter contemplates key aspects of the relationship for a specific technology or portfolio of technologies.  It also specifically identifies the scope of work to be performed: for example, preparing a patent application or performing a patentability opinion. 

The engagement letter fully describes the cost structure: for example, a fixed-fee cost for the scope of work, a blended billing rate between all the attorneys that touch the work, or a combination of fixed-fee and blended rate.  Next, it will include a calendar of events, such as delivery of a full set of claims, delivery of figures, delivery of the first draft, delivery of the second draft, etc., to allow time for the inventors and the TTO to ensure sufficient coverage, quality, and that the application is actually on-point.  It may also include legal guidelines provided in an appendix or schedule and may include pricing expectations for various follow-on legal work involved with the prosecution.  Examples include preparation in filing of IBSs; preparation in filing of office action responses, including interview with examiners; appeal briefs; pre-appeal requests for review briefs; filing of continuation applications; filing of nationalization applications.  The engagement letter may also include invoicing instructions and expectations of when invoices should be provided to the TTO.  Internally, a TTO may wish to develop provisions to monitor the invoices and compare the invoices with the guidelines as well as provisions for departure from the guidelines in specialized circumstances. The clarity of engagement letters serve to relieve cost pressures placed on the outside counsel.


2). Establish a common customer number (CCN)

The CCN is used between the technology transfer office, the firm of the outside counsel and the USPTO.  Once the common customer number has been established, all the legacy cases that are residing at that firm can be transferred to that common customer number, as well as all the new cases that are filed in that firm under that new common customer number. 

The TTO can then set up a system to utilize the CCN by receiving alerts from the USPTO at the same time as the law firm that a new communication is available.  This allows a TTO to send a new communication to the inventors to begin the analysis as soon as it becomes available.  This type of system really helps in situations where there is a time sensitive office action provided by the TTO: for example, if you have to give a response to a restriction requirement, but you only have a one-month timeframe to respond, the CCN can allow the TTO to provide meaningful comments from the inventors to the outside counsel by elongating the time that inventors have in reviewing the communications from the patent office.  In addition to that, setting up the CCN can result in a significant reduction in petitions for extension of time, which can result in cost saving, as well as term of any patents that result from the applications. 

3). Obtain written patentability opinion prior to filing the patent application

The written patentability opinion will include closest prior art, and it will include a rationale as to why the technology is still patentable in view of that prior art.  I suggest a different firm prepare the written patentability opinion than the firm that actually prepares the application.  While the cost of preparing the patentability opinion seems to be additive to the cost of preparing the application, it can actually reduce the cost in the long run by either informing the TTO to not even file the application in the first place, or to provide information to the law firm that is going to be preparing the application of the closest prior art available in the particular field.That way, the application is not drafted blindly. 

4). Review invoices against legal fees

This step may require grouping invoices for a particular activity, which can be accomplished internally at the TTO, or can be accomplished by asking the law firm to group those activities and report a particular group of activities all at once.  This will allow the TTO to compare the invoices against the pricing guidelines, and make sure that the TTO stays on budget for that particular project.

5). Analyze the office actions in-house prior to any analysis by the outside counsel. 

Many times the outside counsel provides a very well written description of the office action and a theory of how we can overcome that office action rejection.  But by that time, the TTO may have already decided to completely cancel that project.  If analysis is done internally, that can preempt that analysis by the outside counsel, which can result in the reduction of legal fees that would otherwise be wasted.  Next, establish a patent tree chart for portfolios to avoid duplication of claim scope.  In many cases where there are large patent portfolios, it becomes very difficult to determine which application claims what subject matter, and without a tree structure, it becomes very difficult to manage that portfolio.  Establishing such a tree structure will avoid unnecessary duplication.

Other strategies that can make a big dent in the patent costs include preparation and recording of assignment in-house using templates for various situations, including, for example, single or multiple inventors, patent assignments versus copyright assignments versus trademark assignments.  Preparing those assignments and having the assignments executed by the inventors in-house and recording those can result in a significant cost reduction overall.

Special thanks to Hamid R. Piroozi, JD, an experienced patent attorney who now serves as the associate director in charge of legal affairs for Purdue’s Office of Technology Commercialization for sharing all of his real-world lessons with our live audience. We captured every word and dozens more practical strategies so you can also benefit from his experience. This program is available on DVD, On-Demand video, and PDF Transcript and can be ordered by CLICKING HERE.

Upcoming webinars:

Visit for more unique, practical, and advanced strategies, case studies, best practices, and expert guidance on a broad range of challenges and opportunities for technology transfer offices and professionals.

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Answers to the Top NIH Manufacturing Waiver Questions

By David Schwartz
Published: December 16th, 2013

When federal funding is involved, the “preference to U.S. manufacturing” is a requirement (See 35 U.S.C. 204 of the Bayh-Dole Act below).

Since manufacturing activities in industries such as electronics, medical devices and consumer products are mostly conducted outside of the U.S., obtaining a manufacturing waiver is an attractive route for exclusive licensees and can only be obtained if U.S. manufacturing is not commercially feasible or if the university is unable to find a licensee that can — or will — engage in U.S. manufacturing.

Waivers are issued sparingly and if you don’t dot every “i” and cross every “t,” the approval process can drag on for many months. 

In today’s blog post, we’ll review the top concerns regarding manufacturing waiver requirements and how to address them in your exclusive licenses. We’re also including a few minutes worth of the Q&A that was held at the conclusion of our recent webinar: Best Practices for Fast-Tracking Your U.S. Manufacturing Waiver Application for Federally Funded IP. Attendees brought up a lot of great scenarios, and you’ll find lots of time-saving tips (without them, most applications can take up to 40 hours to complete). For full details on the program and to order, CLICK HERE.

35 U.S.C. 204

Notwithstanding any other provision of this chapter, no small business or firm or nonprofit organization which receives title to any subject invention and no assignee of any such small business firm or nonprofit organization shall grant to any person the exclusive right to use or sell any subject invention in the United States unless such person agrees that any products embodying the subject invention or produced through the use of such invention will be manufactured substantially in the United States. However, in individual cases, the requirement for such an agreement may be waived by the Federal agency under whose funding agreement the invention was made upon a showing by the small business firm, nonprofit organization, or assignee that reasonable but unsuccessful efforts have been made to grant licenses on similar terms to potential licensees that would be likely to manufacture substantially in the United States or that under the circumstances domestic manufacture is not commercially feasible. 

Who should apply for a manufacturing waiver?

The licensee, since they need it for their business purposes, right? Wrong. 35 USC section 204 of the Bayh- Dole Act is clear that the tech transfer office should be the one to submit the application since it relates to the licensing and historical efforts related to that. Applications won’t be rubber-stamped, and they are very fact-specific, so completing it will require digging into your own records, and then detailing those efforts with proof in hand to backup all of your assertions.  Also, you’ll need to provide extensive and detailed information regarding the licensee’s manufacturing plans and attempts to secure a US-based manufacturing contract.

When should one apply? 

Only apply for a waiver at the request of a licensee who wants an exclusive license to your intellectual property that was federally funded and who wants to manufacture substantially outside of the U.S.  Because Johns Hopkins has applied for and been awarded waivers in the past, they have redrafted their exclusive license template, and the new template actually includes Bayh-Dole language that puts licensees on notice of their obligations: 

JHU’s Exclusive License Template Language
Government Rights. This Agreement is subject to Title 35 Sections 200-204 of the United States Code as implemented in 37 CFR Part 401, as may be amended from time to time. Among other things, these provisions provide the United States Government with certain nonexclusive rights in a LICENSED PATENT if federal funds were used to develop the TECHNOLOGY. They also impose the obligation that LICENSED PRODUCTS sold or produced in the United States be “manufactured substantially in the United States”.  LICENSEE will ensure all required obligations of these provisions are met.

What happens if you’re not granted a waiver and the licensee goes forward with their plans?

The licensee will be in breach of your license if you have incorporated the government rights language noted above in your licenses. Plus, the Government has the ability to exercise march-in rights. March-in rights, the right of the government to grant additional licensees (exclusive and non-exclusive) to other reasonable applicants are limited, but are a real possibility and should be taken seriously.

What if the licensee hasn’t determined a manufacturing location yet, as there is significant development to be done?  When should we submit for a manufacturing waiver?

You can apply for a waiver once they think they’ve identified a location, but if that changes down the road, you’ll need to submit another application because you won’t be able to amend your prior application.  So, it’s really up to the licensee as to when they want to do this.   

Could you please touch upon how the TTO and licensee can understand what “substantial” means with respect to manufacture, and whether a waiver is needed to be applied for?

I don’t think the TTO should be construing what “substantial” means.  I think construing that statute is really a legal opinion, and it’s up to the licensee to get that legal advice from their counsel.  If they feel like their manufacturing is not substantial, then there’s a section in the application that talks about the percentage produced outside the U.S.  And maybe they can have you put in an application just to be on the safe side.  And if they decide for themselves that they don’t need to put in the application, then they bear the risk because if it’s deemed that they’re not compliant down the road, there’s this possibility of march-in rights.  It’s a tricky issue.  I think it’s one, really, for the licensee and their lawyer to figure out.

Assuming that the manufacturing does not occur until 10 years after the license is entered into, is there any special advice that you would have regarding the application in such case?  We are thinking about the life sciences context, where the parties are not really even thinking about manufacturing until a number of years after the license has been entered into.

I think that you could either fill out the application at the time that you’re doing the license with the best information that you have, or else you could enter into the license, but then agree that there will be some other agreement or consideration for going down this waiver route down the road. It’s a very time-consuming process; it’s going to cost the university money in terms of your administrative time to do this. And so, if they want you to do this, I think that it’s not unreasonable to ask for some fee and put some parameters around you doing this application for them. 

Where should I go to find an application? 

A waiver application must be submitted to the applicable funding agency or agencies, and generally can be submitted online through iEdison, the federal government’s online tool for reporting under the Act. (

Application form can be found here.

For a complete list of agency contacts, click here.

The professional development webinar, Best Practices for Fast-Tracking Your U.S. Manufacturing Waiver Application for Federally Funded IP  is available on DVD, On-Demand Video and PDF Transcript.  For more detail or to order, CLICK HERE. Technology Transfer Tactics would like to thank our speaker for her valuable insight and advice on this topic:

  • Ami Gadhia, a portfolio director for physical sciences and engineering at the Johns Hopkins Technology Transfer Office.

Visit for more unique, practical, and advanced strategies, case studies, best practices, and expert guidance on a broad range of challenges and opportunities for technology transfer offices and professionals.

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Tips for recruiting your next great start-up CEO

By David Schwartz
Published: December 3rd, 2013

Too many start-ups have failed or stalled because they lack leadership talent. The problem is even more acute for university start-ups, since the CEO must mesh with the faculty inventor as well as the campus culture – an environment that some business pros find difficult and frustrating. 

In short, it takes a special individual to successfully lead a university start-up: someone who’s passionate about the technology, can work collegially with faculty “stars,” has a get-it -done work ethic, can focus on long-term value rather than short-term compensation, and has an eye always focused on the upward trajectory of the company.

But why would a qualified executive be interested in taking over a university spin out or spinning a technology out of a university?

University spin-out opportunities really do have some attractive elements, and you have to be prepared to really sell these as good opportunities to the entrepreneurs.  Here are a couple of key points:

  1. If the technology has a significant base of research, it typically represents a passion of a faculty member, or group of faculty members — something that’s really developed out of their entire career and their thinking. This makes a really strong foundation for a start-up company.
  2. The university-faculty affiliation, the support that the technologies get from the university, the fact that patent work has already been done, and that ongoing research can be done by the university are all attractive elements. 
  3. Experienced entrepreneurs know that it really takes a lot of work to develop IP.  Building off of something that’s been developed at a university creates a great opportunity for them.

Network, network, network

handshakeYour A-level leader won’t just fall into your lap, so make sure to tap into these local resources to find solid recommendations:

  • Business and patent attorneys
  •  Other entrepreneurs
  • Local business groups
  • Local investors
  • Alumni networks
  • CEO-in-residence programs

We’ve got the what and where… how about the who?

Once you’ve brought in a number of candidates, it’s time to apply some key criteria to selecting the right leader. One of the driving factor in that decision is finding a leader who has had some success in the entrepreneurial world and achieved some sort of an exit. They have some money in the bank, an ability to go without salary for some amount of time, and they’re really hungry for that next big win. 

Experience and eagerness are not enough to bring your start up out of the woods. A candidate with fundraising experience is a big plus, as is being easy to work with. Look for a personality that meshes well with your inventor and TTO staff.  Also, be on the lookout for any patterns of litigation, bankruptcy,   or other negative feedback.

Remember, don’t dilute your mission for anyone. Successful startups are really, really hard. But, this mixture of elements makes the university spin-out opportunity attractive to experienced entrepreneurs, and your start-up will have a solid chance at survival with this type of leader at the helm.

NOTE: More in-depth advice is provided in the archived webinar, Securing Senior Level Talent for University Start-Ups and How to Best Structure CEO Compensation, which is available on DVD, On-Demand Video and PDF Transcript. CLICK HERE for more information.

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Technology Transfer Tactics would like to thank for these speakers for their valuable insight and compilation of data:

  • Heather A. Steinman, PhD, Senior Associate Director of Licensing and Senior Advisor to UPstart, Center for Technology Transfer at the University of Pennsylvania.
  • Michael D. Poisel, MBA, Program Director of the UPstart program, Center for Technology Transfer at the University of Pennsylvania.
  • Gerard Eldering – Founder and President, InnovateTech Ventures

Visit for more information on how to hasten and streamline the commercialization process, as well as maximize the financial benefits of that process for your organization.

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Writing Technology Summaries to Pique the Potential Partner’s Interest

By David Schwartz
Published: November 19th, 2013

If you’re a member of a technology transfer office licensing team and you have written an initial summary about a technology, in many cases the reader will be someone from the business development or the scouting team in industry.  It’s imperative that you gear your message to them. Consider that your audience (the target person at that company) is probably reviewing many different technology pitches from many different universities. Your summary should be short, succinct, and tick the right boxes on their technology match-making list.

It is not enough to sell the science

Selling science alone will not work. Rather, you want to be selling the solution to a problem using the science as the foundation.  A lot of technology summaries make the mistake of being very “academic-y”; of focusing on the science and how the science is innovative, and how it’s a groundbreaking mechanism, etc. etc.– and not really paying enough detail to what solution the technology can bring. 

Focus on solution-based writing

The technology summary is there to introduce, portray and package the technology as a solution to a problem that the company will be interested in, and a solution that will make the company money. You must avoid the easy temptation of cutting and pasting from a professor’s publication or from a patent application. Following the advice from the team of panelists who presented the webinar: Marketing Writing Workshop for Tech Transfer Professionals will help you to write a solution-based technology summary:



  • Selling solutions to problems is more critical than selling the technology
  • Technology summaries are NOT scientific abstracts


  • Keep the title brief and catchy
  • Write for a broad audience
  • Start with the problem and/or commercial opportunity then describe your technology and how it addresses the problem
  • Include quantitative information about a market or industry
  • Be aware of your university’s style preferences
  • Follow up with more detailed information


  • Assume your readers are experts in the field
  • Use statistics that date the technology
  • Cut & paste from the disclosure or patent application

Additionally, with text-heavy documents it’s especially important to make the layout as engaging and user-friendly as possible.  Make it as easy as possible for readers to jump to the specific content they’re interested in. 

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Technology Transfer Tactics would like to thank for their valuable insight and compilation of data:

Margy Elliott, MPH, Marketing & Communications Manager for Columbia Technology Ventures, manages CTV’s branding, events, Fellows Program, web, and social media presence.

Nicole Nair, Senior Marketing Coordinator for the University of Illinois at Urbana-Champaign Office of Technology Management.

Nadim Shohdy, PhD, Business Venture Analyst for New York University Office of Industrial Liaison.

Margy, Nicole and Nadim provide more in-depth advice as well as marketing writing best practices in the recorded distance learning program, Marketing Writing Workshop for Tech Transfer Professionals, which is available on DVD, On-Demand Video and PDF Transcript. 

Visit for more information on how to hasten and streamline the commercialization process, as well as maximize the financial benefits of that process for your organization.

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How Five TTOs Are Using Express Licenses… Successfully

By David Schwartz
Published: October 28th, 2013

Since they were first developed several years ago, “express” licenses have become a widely used tool and many organizations are using various versions of standardized license agreements to dramatically speed licensing and start-up formation. In this post, we’ll take a look at statistics compiled from interviews with five TTOs that actively use express licenses. Use the handy side-by-side comparison to leverage terms and conditions for use in your license. But first, let’s look at the parameters used to describe express licenses during the information gathering process:

  • Pre-determined terms across all technologies, or determined by technology area, or based on status of development
  • Little or no negotiation
  • Having a set timetable for completion
  • “Promotion” or “discount” concept
  • Economies of scale concept

Most of the organizations interviewed said that their express licenses were driven by faculty and the main goals are to expedite the licensing process, provide a transparent and easy process for industry while saving money on resources.  Let’s take a look at some of the key terms included in express licenses:

express licensing chart

Interestingly, none of the TTOs interviewed claimed “increase of revenue” as their reason for utilizing express licenses. However, the more deals done this way will lead to increased revenue and possibly even an increase in “one-click” licenses, which will be covered in our upcoming webinar on November 19th: Ready to Sign Licenses: Bring in More Licensing Revenue With Less Effort.

We’ve included additional terms in an expanded chart which can be found here. Technology Transfer Tactics would like to thank for their valuable insight and compilation of data:

Kevin Lei, MS, MBA
Director, Faculty and Start-Up Services
Office of Technology Transfer
Emory University
  Dean Stell, BS, MBA
Associate Director, Commercialization
Wake Forest innovations

Kevin and Dean provide a more in-depth analysis of the chart above as well as best practices for drafting express licenses and discuss the incentives, benefits, and drawbacks for both your TTO and for your partners in this archived webinar, The Continuing Evolution of Express Licensing: Maximizing the Benefits and Minimizing the Drawbacks, which is available on DVD, OnDemand Video and PDF Transcript.

Visit for more information on how to hasten and streamline the commercialization process, as well as maximize the financial benefits of that process for your organization.

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‘Ecosystem’ is the magic word in economic development strategy

By David Schwartz
Published: October 28th, 2013

As an increasing number of TTOs add economic development to their mission statements, new models are being developed for most effectively injecting the university commercialization arm into this process. As a number of experts have recently indicated, one of the keys to success is the coalescing of the diverse audiences that comprise what has become commonly known as the “innovation ecosystem.” Bringing key players in that ecosystem together to focus their energies on job creation is fast becoming a key priority as state and federal efforts to push for growth through new technology-driven businesses continues to intensify.

“It’s not just about patents anymore; it involves capital, entrepreneurs, facilities, and human capital,” says Brian Darmody, associate vice president for research at the University of Maryland, speaking in a recent webinar entitled “Transform Your TTO into an Economic Development Engine,” sponsored by Tech Transfer University. “The TTO is at the heart of job creation, and elected officials are looking for help from the TTOs.

For example, he continues, the University of Maryland system is working with an innovation coalition that includes not just TTOs but research parks, angel capitalists, state technology institutions, incubators, and seed and venture funds. “To the extent we can work with these organizations and partner with VCs and the state technology council, it’s a way to engage more broadly,” he observes.

 Successful harnessing the broader innovation ecosystem depends on establishing a direct tie between the tech transfer organization and its IP portfolio, entrepreneurial capacity building efforts, and the business community, asserts Steven Ceulemans, vice president of innovation and technology with the Birmingham (AL) Business Alliance.

Forces in the city are doing just that through a strategic plan called “Blueprint Birmingham,” which recognized the University of Alabama Birmingham as one of the major drivers of innovation and hubs of research and technical expertise, while also identifying a number of areas for the business community and UAB to collaborate and facilitate start-ups or proofs of principle. “As a direct outcome of that [effort], the BBA opened up my position solely to support tech innovation,” says Cuelemans, who assumed the position in September 2011.

Creating a continuum with industry

“There are many ways now to work with corporations,” Darmody told participants at the webinar. “It’s no longer just ‘please fund my research.’ We now have a richer dialogue, which creates a win-win situation.”

That continuum includes not only what Darmody calls “traditional engagement,” but “holistic engagement” as well. Traditional engagement includes “awareness” activities like career fairs and PR; “involvement” via research grants, internships, and industry affiliate/advisory board programs; and “support,” include use of student consultants, workshops and seminars, philanthropic support, and guest speaking/lectures. 

“Holistic engagement,” on the other hand, has “sponsorship” and “strategic partner” components. Sponsorship includes undergraduate research program support; graduate fellowships; and outreach programs, among others. The strategic partner programs include executive sponsorship; state education lobbying; business development; major gifts; and other partnership opportunities.

“We’re trying to develop easier ways for corporations to connect with the university,” Darmody adds. For example, a web portal entitled “One-Stop Shop for Business Connections” includes 11 links, such as “Recruiting students,” “Corporate and Foundation Relations,” “Licensing University of Maryland Technology,” “Connecting with our Entrepreneurial Network,” and “Finding Research Partners.”

These engagement efforts have become embedded in the university system’s mission statement as the result of a recently completed 10-year strategic plan, notes Darmody. “It was only a couple of pages, but one metric is the creation of 325 new companies over the next decade, and that drives a lot of policy and budgetary decisions,” he explains. “For example, we’re looking at entrepreneurial sabbatical leaves” that allow researchers to focus on start-ups.

The UM system also created a standing committee on economic development and technology commercialization. “This puts more emphasis on the role of the TTO,” says Darmody.

Internal focus also needed

“I agree the ecosystem in the community around the university is important, but you also need an internal ecosystem,” notes webinar co-presenter Michael J. Pazzani, PhD, vice president for research and economic development at Rutgers University. “Then, activities need to be coordinated across all offices.” Part of that, he says, must involve an organizational framework that ensures all the moving parts in the commercialization system are working in concert.

For example, at Rutgers the Vice President for Research and Economic Development oversees all of the following offices: the Office of Technology Commercialization; the Office of Research and Sponsored Projects; the Office of Research Alliances; the Office of Proposal Development; Laboratory and Animal Services; and the Associate Vice Presidents for Research, New Ventures, and Economic Development.

Other offices that do not report to Pazzani include Career Services; Corporate and Foundation Relations; the Business School; Agricultural Extension; and the Office of Continuous Education and Outreach. Two centers, the NSF Engineering Research Center and the NSF Industry & University Cooperative Research Program, round out the internal ecosystem. “When we talk to companies they tell us they want across-the-board, multi-faceted relationships,” Pazzani emphasizes.

A city-wide effort

In Birmingham, the newly formed coalition is moving forward with its first initiatives, with the major players including the BBA’s Ceulemans; Dennis Leonard, an innovation consultant for the UAB Research Foundation; and Joel Dobbs, an executive in residence at the UAB Business School.

“Right now we’re focusing on two different aspects of cultivating potential opportunities,” says Cuelemans. “One is new venture creation ­– identifying high potential innovations from UAB and supporting their initial commercial or economic development research to proof of concept or a commercial venture.”

The new venture creation effort is being undertaken through the Invention to Innovation initiative (i2i), which is currently being launched. “Dennis Leonard will go scout inventions we can vet and evaluate for commercial development,” Ceulemans explains. “Then Joel Dobbs, as opportunities arise, will build entrepreneurial teams around those inventions.”

The school, he explains, has a certificate program in technology entrepreneurship, comprised of four courses which take students through the start-up process over a full year. “We are formally forging a link to UAB by scouting technologies, attaching those technologies to teams, and then matching each of those teams with mentors experienced in that industry,” says Ceulemans. “That’s where BBA comes in; we have an investor base of over 500 local CEOs and investors who in the past had no direct connection with UAB. My goal for each of those teams is to identify an entrepreneurial backer, a market expert, and a technology expert.”

As the technology “talent scout,” Leonard has a clear idea of what he’s looking for. “The first question is, is it a well-articulated problem that needs a solution?” he poses. “It’s easy to find lots of great ideas, but they may not be sustainable in the marketplace. If the answer is yes, we throw multi-disciplined solutions towards it.”

This last point is critical, he continues. “Lots of universities have a tremendous amount of silos built within them,” Leonard notes. “Our campus is very, very open for reaching out. So if someone has an idea for cardiological monitoring I can call up the chair of the cardiology department, find the chair of the department of mechanical engineering, materials, and electrical, and we will all sit down and discuss how large the problem is. Then, if we have found a solution, we’ll ask how many people it could serve, and how much money it would take to get it into proof of prototype.”

Multiple sources of funding

Once i2i is up and running, says Ceulemans, “we’ll take the start-up companies that emerge from i2i and facilitate their growth.” Many of those efforts, he continues, will be undertaken in partnership with regional organizations like Innovation Depot (an incubator in Birmingham), the Birmingham Venture Club, which serves entrepreneurs, and Tech Birmingham, a tech support organization with broad membership.

In the new venture creation stage, a small amount of Proof of Principle funding is available, he adds. “Each venture gets $10,000 just to do some basic enabling work,” says Ceulemans. “Another program in the state ­–­ the Alabama Launchpad — is a business competition that has two tracks: Proof of Principle, which awards $25,000, or venture acceleration, which provides $100,000.”

As start-ups progress, seed funding from angels and grants such as SBIR will come into the picture. “Market forces will be at play, so our goal is to make these ventures as attractive as possible,” says Ceulemans. “One thing we want to avoid is a situation where we basically pick someone because we like them personally and continue to support them — without a direct tie to what the market is looking for.”

Contact Ceulemans at 205-241-8122 or sceulemans@birminghambusinessalliance; Darmody at 301-405-1990 or; Leonard at 205-934-2838; and Pazzani at 732-932-1500 or

Editor’s note: The full recording of the webinar "Transform Your TTO into an Economic Development Engine" is available on DVD and on-demand video. For complete information, click here.  

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Experts identify the best tools available for marketing metrics

By David Schwartz
Published: October 28th, 2013

Tech transfer executives have a wide variety of tools available to measure the effectiveness of their social media and digital marketing efforts, but in many cases these tools are not being taken advantage of.

Speaking at a recent webinar sponsored by Tech Transfer University, “Tech Transfer Marketing Metrics in the Digital Age: What’s Working and What’s Wasting Time and Money,” Cara Michaliszyn, marketing manager for the University of New Mexico-STC, made it clear that though many TTOs are using new digital marketing methods, far fewer are getting good data on the effectiveness of those efforts. Citing a recent survey, she noted that only about 1/8th of the respondents said they use SEO metrics. “Those findings are pretty surprising,” she observed. In fact, she added, 40% of the respondents are not currently using social media, and the vast majority of them rank one-to-one meetings as their greatest source of lead generation, with e-mail second and press releases third. Within social media, Twitter and LinkedIn ranked highest.

Evaluating brand marketing

Michaliszyn focused on the importance of TTO brand marketing, for which she employs her office’s website, profile alerts, webinars for entrepreneurs and investors, e-mail marketing, marketing videos, and social media.

With each of these areas, she continued, there are be several sets of metrics to track. For example, for her website she employs the following metrics:

  • Daily visitors
  • Page views
  • Social media shares
  • Domain names

 Press releases are also posted on the website, promoting events, successes, and featured technologies, and for these the number of inquiries is tracked. In addition, the website includes the TTO newsletter and e-zine, for which she tracks views and technology inquiries.

Michaliszyn also lists the TTO’s profile and subscribes to profile alerts with sites such as LifeSciencesLink and CommNexus. “They will let you know when requests are made,” she explained, allowing her to follow up with the leads provided.  

Her blog is also used to create awareness for the TTO, and she tracks its performance based on followers and re-posts. Other vehicles she uses to brand the TTO and the university’s research capabilities are webinars, which she said “are good to use if you can’t afford to go to trade shows,” direct marketing via e-mail, and social media including Facebook, Twitter, LinkedIn, Vimeo, and Pinterest — as well as her blog posts.

To generate much of the data to track the results of all that activity, Michaliszyn recommended Google Analytics as an essential starting point. “One of the most important metrics to track is daily visitors [to your website] — and you want to focus on new visitors,” she advised. “If they are decreasing, consider adding new content; if they’re increasing, keep doing what you’re doing.”

Google Analytics, she continued, can track visits by country or state, and can be used to target specific areas to see if certain industries are responding. “Page views can also tell you if the site is working,” Michaliszyn added, noting that the bounce rate is also an important metric. “Do they only look at your newsletter and then leave, or do they spend more time?” she posed.

Other metrics than should be tracked, said Michaliszyn, include social media shares and visitor domain names. With showcase services like Flintbox, where clicks on your technologies can be tracked, “you can view the numbers of visitors on a particular technology. You can also reach out to the companies that looked at the technology as well as similar companies; this is very helpful for data mining,” she offers.

Press releases can also be effective in boosting site traffic, and that activity can also be tracked with each release to see what topics are stimulating the most activity, she added. “We also track any posts we do or appearances in the local paper; we can share these with inventors to demonstrate the promotion we do and the impact it has,” she said.

E-mail generates results

Of course the most gratifying use of metrics occurs when you can clearly demonstrate the success of a marketing campaign, and Teresa Fazio, PhD, portfolio analyst with Columbia Technology Ventures, has been able to do just that with an e-mail marketing program that transmits technology briefs to prospective licensees, investors and partners. Its average success rate with 400 campaigns sent between 2008 and 2012 includes a 21% click-through rate and a 10% reply rate.

The campaigns, said Fazio, “extend the reach of our licensing officers.” And the data  gathered from the e-mail efforts can be helpful even when a specific technology isn’t licensed, she noted, because it can be used to get marketing feedback before a major patent decision and to let the researchers know their invention is being promoted.

The e-mail blasts and responses are monitored through a central Outlook mailbox. “You can also use Salesforce,” she noted, “but we found it was overkill.” The key metrics used include click-throughs, bounces, opens, and replies.

Like Michaliszyn, Fazio said she employs several different resources to gather data. The first is human — student interns. They create the entire marketing package, which includes a list of potential licensees, e-mail addresses, positions, and names. “We subscribe to internal and external sources,” Fazio noted, such as the Jigsaw business contact database. Information gathered includes company sites and internal contacts.

“The key to targeted marketing like this is constant gardening,” noted Fazio. “If a source replies, that tells you that you used a good e-mail address, but they may also say they’re not the right contact. If they tell you who is, you add them to your database.” Another valuable tool, said Fazio, is Mail Tester, which checks whether an e-mail is valid or not. “It’s good for guerilla marketing,” she noted.

The email responses are also auto-forwarded to the licensing officers. “This is helpful in compiling metrics because it allows the licensing officers to follow up in real time,” Fazio explained.

There’s one additional — and critical — metric for the program: ROI. “It costs $180 to do a campaign, so one licensing fee pays for at least a year of interns,” noted Fazio, who added that the revenue from licenses generated by the program has more than paid for all of the campaigns to date.

Fazio also uses internal e-mails for faculty outreach, and tracks metrics there as well. She will schedule ‘blasts’ to faculty members who have won grants, been hired recently, authored a publication, and so forth. “If an initial assessment has been done [on an invention] we’ll let them know,” she added, “And we will scout them through recent patent notices. This is important in soliciting more inventions and improves our internal brand.” Fazio said she also tracks metrics here (opens, bounces, responses) to measure penetration in different schools within the university.

Humans and ‘robots’

Search Engine Optimization, or SEO, is a big topic in any conversation about web and social media marketing. Fazio says one of the keys to SEO is making your content easily consumable for both of your “audiences” — humans and ‘robots.’ “Storytelling is for humans and information is for search robots,” she explained.

Before she even starts optimizing, she continued, she searches the Internet for the types of technologies she’s promoting. “Google will highlight words that match, which is helpful because that tells you good keywords,” she explained. Google Adwords, she said, is an “incredibly helpful” tool to search for keywords.

“You’ll want to use keywords in the title, early in the content, within your URL, and within the browser tab,” she stressed. “You also want the heading in bold fonts.”

The metrics you use to track social media results can be varied, as there are many tools available, added Margaret Elliott, MPH, marketing & communications manager for Columbia Technology Ventures. “Once you’ve selected a platform, begin by following people and organizations that align with your mission,” she advised. “You’re about to have a dynamic discussion, so you must ensure you have the resources to engage or respond accordingly. Then as you get a better sense of your audience, you can begin to track metrics.”

Beyond whether the audience engages with your posts, she continued, you should track re-tweets, mentions, and shares. “The quality of interactions is at least equal to the quantity,” she added – meaning a re-tweet from a thought leader is more valuable, for example, than a mention by a teenager who stumbled on your post and liked it.  

Other metrics include how many clicks are received from your platforms, where they click to, and how long they stay on your site. Your social media management, she added, can be enhanced through the use of services like Hootsuite and, which enable you to track clicks.

In this rapidly evolving area, she continued, new services are constantly being launched, many of which might be considered experimental. “You must figure out which reports are best for you,” she concluded.

Contact Elliott at Contact Fazio at Contact Michaliszyn at

Editor’s note: The full recording of the webinar “Tech Transfer Marketing Metrics in the Digital Age: What’s Working and What’s Wasting Time and Money” is available on DVD and on-demand video. For complete information, click here

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Case scenarios provide illustrations of proper COI management in faculty start-ups

By David Schwartz
Published: October 25th, 2013

While the term “conflict of interest” often has a negative connotation, two COI experts who recently presented at a Tech Transfer University webinar, “Best Practices for Managing Conflicts of Interest in Faculty Start-ups,” agreed that conflicts in and of themselves are not a problem – but managing those conflicts effectively is a critical challenge.

In fact, they added, if you are not creating conflicts you may be doing something wrong. “It helps to bring technologies from bench to bedside,” noted David T. Wehrle, CPA, CIA, CFE, director of the COI Office for the University of Pittsburgh.

The arena most susceptible to COI is spinout formation and management – and Wherle and co-presenter Dipanjan (DJ) Nag, PhD, CLP, RTTP, president and CEO of IPShakti LLC, used a variety of case scenarios to help tech transfer professionals better recognize and manage these conflicts.

Professor’s potential conflicts

The presenters illustrated a number of common conflicts, and ways to manage them, through a series of hypothetical cases. In the first, the professor is the inventor and wants to be involved in the new venture. Potential issues include:

  • Double dipping in equity
  • Serving as the start-up’s Chairman of the Board
  • Serving as CEO or CTO
  • Serving as a consultant

“When a faculty member is the inventor and the university goes out and licenses it to a medium or large-sized company and shares the revenue with the inventor — typically 25%-40% — there is no COI issue with that,” said Nag. “But take a situation where the university licenses to a start-up, and the start-up gives the university equity — say 10%. In most universities it is dealt with in the same way as royalties, so 25% to 40% of that is shared with the inventor. But the inventor can also get additional equity in that company itself — say, 10%. That is double-dipping.”

Some universities allow this, he continued, while others don’t, and this is something the COI committee should manage. “The way it is typically decided is that the inventor’s share in addition to the university’s will be determined by the role the inventor plays,” he explained. “If the inventor says he invented the technology and his work is done, then he gets nothing in addition to what the university gets. But in the other extreme, if he wants to work with the start-up and take the invention to market — so much so that he is taking the role of chief technology officer — then clearly he would be eligible for additional equity beyond what the university gets.”

For example, if a researcher were to get 10% equity as the inventor of the technology on the start-up side and the university got 5%, if the faculty member could negotiate a deal such that the university only got 2% and the faculty member got 13%, there is a direct conflict that already needs to be managed. “Faculty might want to increase their equity in the start-up on their side as opposed to the university side; they then would be negotiating against the university — but they are [also] an employee of the university,” Nag noted. Because of this possibility, he continued, certain universities prohibit employee researchers from having a greater percentage of equity than the university if they are active players in their start-ups.

“You might want to consider imposing a cap on the total amount of equity the faculty member and the institution can own in a start-up,” added Wehrle. “We have a 49% equity cap – with certain exceptions. You could also require the faculty inventor to forfeit their right to licensing proceeds if they receive equity (usually stock options) as compensation for consulting services.”

If the faculty member wants to serve as Chairman of the Board of the start-up as well as being a university employee, added Nag, “during the time they do both, there are certain risks associated with the university. The same with the CEO position; there’s even a lot more exposure for the university. At most universities they would have to take a leave of absence.” 

If a faculty member is going to take an officer position with the start-up, said Wehrle, it’s important that the department chair and the COI committee have the right to approve the arrangement to determine if the conflict can even be managed. “Get pre-approval if you allow them to take management positions — and that may be necessary, especially for a very early-stage company to try to attract VC funding,” he observed.

“You might also want to establish triggers for when they need to step down as an officer,” Wehrle continued. “For instance, they might need to step down as CTO after the company exercises its option agreement and it converts to a licensing agreement. Or, [the trigger might be] once a certain significant amount of money comes in – say, $500,000.”

“To have the faculty member as an interim CEO is healthy,” added Nag. “There should not be much of a conflict because the time commitment is not as great. As soon as you have a real license or real capital comes in, it becomes a real job, and you then need to consider risks from time and financial commitments.”

Keep faculty out of negotiations

Having the faculty member participate in negotiations concerning the financial terms of options or licensing agreements when they are officers of the start-up is also fraught with perils, noted Wehrle. “It’s important to exclude faculty members who are officers from any negotiations like that,” he stressed. This is difficult if they serve as CFO, he added, because it’s part of their job. “It’s helpful if you have pre-set financial terms so there is no negotiation of royalties,” said Wehrle. “When it comes to research at an academic institution, it’s important to exclude the faculty member from involvement in any negotiations about sponsored research. Ensure that the company pays for the full cost of the research, like salaries for researchers.”

“Carnegie Mellon has a standard package, where equity is pre-defined,” added Nag. “When I have been involved in negotiations and faculty is on the other side, we have to very politely ask for outside counsel to represent them — that they not personally do the negotiations. The point here is that if faculty takes part in a start-up, they cannot be negotiating on [behalf] of the start-up — they are an employee of both the start-up and the university; which is it? If outside counsel represents the company in negotiations, there will be no conflict.”

When the faculty member is functioning as a consultant to the start-up, said Wehrle, it’s a little less difficult to manage. “They have no legal obligation to work on the company’s behalf,” he explained. “But it’s still important to get the department chair and COI committee’s approval; the university will want to ensure the terms of that agreement comply with its policies. And you need to look at the time commitment, so it is not a case where the faculty member has two full-time jobs. This is very extreme, but you need to keep track of it.”

For example, if the faculty member is to serve as chair of the start-ups’ scientific advisory board, you must be sure that any IP clause notes that if the faculty member invents new IP through consultancy, their assignment of that IP to the company is subject to any rights the university may have.

“Also, be sure the consultancy agreement does not require use of university facilities and labs,” he added. “Say such work cannot be performed under a consulting agreement, but is covered instead under a sponsored research agreement — and they then could do the work as a university employee. Also, whether they are taking a management or a consulting position, limit the faculty member’s outside work in the start-up so it will not exceed more than one day a week, to ensure there is not a conflict of commitment and that they are fulfilling their responsibility to the university.”

According to Nag, a consulting agreement is “one of the most hairy” potential COI situations. “There can be IP, financial, and time conflicts, so it needs to be managed,” he asserted. “It really needs to be reviewed by the COI committee.”

“If a consultant is retained, then he or she is being retained because of a core competency in the company’s research area. But the faculty member is also retained by the university [based on]  their core competency in a research area, so where they create and generate IP the university should own it,” he explained. “If IP is created in a consulting contract, it is problematic for the company to own it. The way to manage that is if there is any IP clause in the consulting agreement it should be reviewed by the university, but in most cases they don’t get a chance to review those contracts, and that’s part of the problem.” Most often, he added, that is not because of bad faith on the part of the faculty member, but because faculty members are not experts in negotiating IP clauses.

“Be sure to manage this pro-actively so there is no pipeline of new IP to the company,” added Wehrle. “Touch base with the faculty member at least once a year to ensure they are in compliance, or that new conflicts can be identified and managed quickly.” To determine this, he noted, ask the faculty member questions such as: “Have you received any additional equity? Is there any sponsored research at the academic institution you are involved with that the university had not been previously made aware of?”

Blurred lines

Another scenario dealt with a situation where the faculty inventor forms a start-up with the following potentially complicating factors:

  • He now wants to write an SBIR.
  • He is working on his company research for more than 50% of his time.
  • He is paid by the university for 100% of his time.
  • He is allowed to work one day a week in consulting.

“Federal regulations require that the PI of an SBIR award have primary employment with the start-up company, which is not possible for a full-time faculty member,” noted Wehrle. “Institutions might consider not permitting faculty members to submit SBIR proposals on behalf of the company, but instead require that any participation in projects funded by these grants be done as an employee of the academic institution under an appropriately executed a sponsored research agreement between the company and the institution. Faculty should not be permitted to engage in research on behalf of the company as an independent consultant. If an individual spends 10% of his time on the company’s budget for grants, but is listed at 100% effort by the university, then he is putting in 110% of his efforts; obviously the funding people will demand repayment of funds”

This also helps address concerns about who owns any IP developed through this arrangement, he added. In addition, he said, if the faculty member wants to engage in research on behalf of the company or serve as the company’s PI for an SBIR submission, he or she could take an unpaid entrepreneurial leave of absence. “They could serve as PI; it would eliminate any questions of who owns the new IP since they’re on leave from the university,” he explained. He also pointed out that if the company has an option or license to university intellectual property and the inventor is involved, it’s important to try to at least somewhat determine if the company has a lab and personnel to complete its portion of the work.

Wehrle went on to say that faculty members who wish to conduct evaluative research on technology they invented that was licensed to a start-up company, funded by the SBIR, and who has management or ownership in the company have a “pretty significant” financial COI that has to be managed, because such research could increase the value of the company. “You may want to consider if this individual can be permitted to serve as PI under this sub-contract,” he observed.

Whether or not permission is granted, he continued, might depend on the type of research involved — i.e., bench, animal studies, or human subjects. “The risk increases as you move up,” he noted. “At the University of Pittsburgh the person with a conflict can be PI of bench research, but not animal or human. If they are not permitted to serve as PI, the institution may allow them be co-investigator with a conflict management plan.”

Under such a plan, he explained, the inventor would not be solely involved in the interpretation of the results, but instead would do so as part of a committee, and the final decision on the appropriate interpretation should lie with the PI.

“Ensure that any potential conflict is disclosed to the agency that awarded the grant,” he advised. “You might also want to require the individual with the conflict to expose it in publications, releases, abstracts, and future grants where evaluations are involved.” In addition, he said, consider requiring that faculty disclose potential conflicts to others involved in the research that occurs at a university funded by SBIR under subcontract with the university. “If it involves human subjects, you might want to disclose it in the informed consent form,” he added. “Exclude the individual from performing the research subject to informed consent, and retain a data steward to ensure the data is collected and interpreted within the proper standards.”

Contact Nag at 732-640-2301 or; contact Wehrle at 412-383-1774 or

Editor’s note: The full recording of the webinar “Best Practices for Managing Conflicts of Interest in Faculty Start-ups” is available on DVD and on-demand video. For complete information, click here.

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