Tech Transfer Central
University-Industry Engagement Advisor

Technology Transfer Tactics, November 2021


Technology Transfer Tactics, November 2021The following is a list of the articles that appear in the November 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 11, November 2021

  • Start-up board positions must be filled carefully and used appropriately. University leaders have long debated whether it is a good idea to have representation on the board of faculty start-up companies, but for those that favor taking a seat, there are still questions about how to structure that position. Some may want the board seat to be a full voting member, while others may go with an observer seat in which the person does not actively participate.
  • Fred Hutch used this roadmap to dramatically improve its tech transfer results. When Fred Hutchinson Cancer Research Center spun off Juno Therapeutics, which has become a big player in cell therapy and diagnostics after its acquisition by Celgene and later by Bristol Myers Squibb, they might have assumed that success would lead to a surge of interest among VCs and other partners looking for more innovations.
  • Purdue’s link to Boomerang Ventures illustrates value of third-party help for TTOs. There has been a trend developing recently wherein university TTOs — even large ones — work with outside parties to realize commercialization goals by adding expertise or resources they may not have in-house. A case in point: The newly announced partnership between the Purdue Research Foundation’s (PRF) Purdue Foundry and its Office of Technology Commercialization (OTC) and Boomerang Ventures.
  • A fresh take on summer school boosts SUNY’s commercialization pipeline. In popular culture, summer school remains stereotyped as a place for playing catch-up. However, the Albany, NY-based SUNY Research Foundation, which serves The State University of New York and its 64-campus system, is turning that stereotype on its head — even amid a pandemic — via the SUNY Startup Summer School (S4).
  • VCU’s new TTO newsletter sets a high standard in marketing innovations. Virginia Commonwealth University tech transfer office’s new publication, Launchpad, is a textbook example of a TTO creating a high-quality vehicle to publicize the university’s tech talent and commercialization prowess.
  • AUTM, universities support U Michigan in IP assignment dispute. AUTM and a group of prominent universities have filed an amici curiae brief in the case of Omni MedSci, Inc. v. Apple Inc., which addresses how tech transfer programs use general statements in their bylaws and contracts about the assignment of intellectual property rights, and how that relates to specific assignments made for individual inventions.

Posted November 16th, 2021

Technology Transfer Tactics, October 2021


Technology Transfer Tactics, October 2021The following is a list of the articles that appear in the October 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 10, October 2021

  • TTOs continue to adapt to shifting realities of the pandemic. As COVID vaccines became available in early 2021, optimism grew. But, as the Delta variant took hold in the summer of 2021 and now extends into the fall, we wondered how technology transfer offices were handling the resurgence of the virus, how their operations were adjusting, and what they expect in the coming months. We asked 12 TTOs across the country how they were doing.
  • In wake of Omni v. Apple, it’s time to review your IP assignment language again. Tech transfer programs relying on general statements in their bylaws and contracts about the assignment of intellectual property rights may need to reassess whether they are sufficient in light of a recent ruling from a Federal Circuit court. After going through a similar shift after the landmark Stanford v. Roche case a full decade ago, TTOs may want to revisit that assignment language once again.
  • IP attorney’s challenge: Is your TTO developing metrics that matter? There’s certainly a place for traditional TTO metrics like licensing revenues and number of invention disclosures, patent applications, start-ups and issued patents. But they’re not really providing actionable information on whether the office is meeting its goals and optimizing performance in terms of portfolio management, claims IP attorney Tony Gangemi, a partner in Murtha Cullina’s Business & Finance Department and chair of its Intellectual Property Practice Group.
  • U Alaska’s Ambassador Program embeds tech transfer into campus culture. We’ve all heard of student ambassadors, but what about tech transfer ambassadors? At the University of Alaska Fairbanks (UAF) — where a tiny TTO staff needed a way to extend its reach within a limited budget — the concept has taken off and has become woven into its overall culture. The school’s program taps students, faculty and staff as Ambassadors, whose charge is to promote innovation and entrepreneurship as well as raise awareness of the Office of Intellectual Property and Commercialization (OIPC). And it’s working — the ambassadors are not only making more people aware, but their efforts have significantly increased disclosures.

Posted October 15th, 2021

Technology Transfer Tactics, September 2021


Technology Transfer Tactics, September 2021The following is a list of the articles that appear in the September 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 9, September 2021

  • Sublicensing terms must strike right balance between university rights and licensee needs. With myriad ways to go about sublicensing and the potential for the complications involved spoiling a license agreement, university TTOs may put off the question entirely and wait until the issue is forced by a sublicense request. Or they sometimes will establish sublicensing terms up front that seem simple and straightforward, but which actually hinder revenue opportunities.
  • Direct billing streamlines process and saves TTO time and money. About five years ago, Dr. Martin Haardt at the University Health Network (UHN) in Toronto, Canada, had a bit of an epiphany. Haardt, who now is UHN’s senior patent and intellectual property manager for technology development & commercialization, had analyzed various timelines and financial aspects relating to IP protection, licensing, and revenue. The results of his review were intended for office-wide education, but they crystallized for him the amount of time — and, therefore, money — devoted to handling ongoing billing transactions between patent licensees and attorneys.
  • A novel model for getting early-stage life sciences IP across the Valley of Death. Funding for early-stage university life sciences research is a well-known challenge. Some research may get picked up for further development by ad hoc or competitive funding mechanisms, and occasionally some might get picked up into single-asset companies or by early investors. But by and large, a considerable amount of early-stage life sciences research languishes in the “Valley of Death.”
  • Keen attention to detail can prepare you for more successful royalty audits. It may not literally be “found” money, since it is money that is truly owed to your TTO, but a well-run royalty audit can potentially add hundreds of thousands of dollars in revenue to your bottom line, according to Karen Wang, CPA/CFF, CVA, director at Stout, a firm that focuses on litigation consulting and royalty/contract compliance audits.
  • College Ventures Network aims to level the playing field for student start-ups. A consortium of more than two dozen student-led accelerators from the United States, Canada, and the United Kingdom this summer launched College Ventures Network, a global coalition that hopes to link student start-up founders with the money and support they need – but so often can’t access.

Posted September 14th, 2021

Technology Transfer Tactics, August 2021


Technology Transfer Tactics, August 2021The following is a list of the articles that appear in the August 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 8, August 2021

  • Fraud allegations after biotech start-up’s IPO put university in a tough spot. The allegations of research fraud by the chief executive of Athira Pharma, a Washington State University biotech spinout developing treatments for Alzheimer’s and other neurodegenerative diseases, are raising questions about how a university can protect itself when a company using its licensed IP faces class action lawsuits and a potential investigation by the Securities and Exchange Commission (SEC).
  • U-M finds ‘work-around’ to restrictions on licensees’ use of university brand. Any TTO would be pleased to know that a licensee wants to “brag” about their relationship with the university — but like many things in life, it’s just not that simple.
  • Student consulting club supports Emory’s biotech start-up efforts. While it’s in the DNA of TTOs to help faculty and students get start-ups off the ground through a variety of programs and education, a new extracurricular student club at Emory University in Atlanta that also supports these efforts is a horse of a different color. The Emory Biotech Consulting Club (EBCC) is essentially students helping students and faculty get their start-ups off the ground.
  • U Oregon program seeks to address key challenges faced by women innovators. Gender-specific barriers to success in innovation are being addressed at the University of Oregon through the Women’s Innovation Network, a nine-month program launching in October that’s open to UO faculty members, staff, and students as well as members of the community.
  • UChicago innovation fund adds new matching requirement. Innovation funds investing in university start-ups come in a variety of shapes and sizes, but they all share a common goal: find the new ventures with the most promise, and hope that at least a few of them make a big exit and solid returns. But how can you increase those odds? In the case of the George Schultz Innovation Fund, it recently began requiring that start-ups get matching funding from accredited institutional investors, betting that confidence among the professionals signals a realistic chance at success and can bring an extra measure of expertise.
  • U Kentucky continues strengthening innovation culture as it builds on success. Suppose your university research grew by 28% over two years, and during that same period, your commercialization and entrepreneurship activity reached record levels. Would you adopt an ‘if it ain’t broke, don’t fix it’ posture?

Posted August 12th, 2021

Technology Transfer Tactics, July 2021


Technology Transfer Tactics, July 2021The following is a list of the articles that appear in the July 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 7, July 2021

  • Search for improvement leads to revamp of Duke’s innovation activities. Sometimes when university TTOs decide to engage in self-examination, they are pleasantly surprised to find that things aren’t as bad as they may have thought. Such was the case at Duke University, where the university’s Board of Trustees initiated a study to examine the university’s innovation and entrepreneurship ecosystem.
  • UGA hires COI director to tighten up on potential conflicts. With growing interest in commercialization from faculty comes the potential for a concurrent rise in conflicts of interest that can have substantial consequences, so the University of Georgia in Athens is elevating oversight with the addition of its first conflict of interest director.
  • Tell your SBIR/STTR companies about this little-known supplement. Other than classified intelligence, the Technical and Business Assistance (TABA) supplement might be the U.S. government’s best-kept secret. The Small Business Innovation Research (SBIR) program supplement is still new and not well-described on federal agency sites or even listed on www.sbir.gov to help people understand what it’s all about. But if TABA isn’t something you’re encouraging your SBIR companies to apply for, they’re leaving money on the table.
  • Pandemic spurs new venture opportunities in CU Boulder “hyper-accelerator” program. During the first months of the pandemic in early 2020, officials at the University of Colorado Boulder noticed how much organic innovation was happening. By March, researchers already had begun looking at new ways of diagnosing, tracking, and understanding the novel coronavirus known as COVID-19.
  • CRM-based system customized to enhance functionality for TTOs. Recognizing that there’s no need to re-invent the wheel, Tamir Huberman, CIO and head of marketing at Yeda Research & Development Co., Ltd., the TTO of the Weizmann Institute of Science in Rehovot, Israel, has developed a new system for tech transfer management which adds customized tech transfer modules to the out-of-the-box solutions offered by ZOHO CRM.

Posted July 14th, 2021

Technology Transfer Tactics, June 2021


Technology Transfer Tactics, June 2021The following is a list of the articles that appear in the June 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 6, June 2021

  • As pandemic eases its grip, TTOs take stock and look forward. The COVID-19 pandemic slowed the activity of some tech transfer programs and forced an unprecedented dependence on remote work, but others are saying the pandemic year has been a boon for their metrics.
  • TTOs assess potential as Berkeley breaks mold with NFT auction. The advent of blockchain technology has given rise to a whole new vocabulary: Cryptocurrency, non-fungible tokens (NFTs), Dogecoin, Bitcoin, Ethereum, Coinbase and other new terms seemingly spring forth daily. And for technology transfer offices, a looming question is whether there’s something to it all that could benefit their operations.
  • Using stock options as a vehicle for hiring university start-up teams. As TTOs help move inventions from the laboratory to commercial viability, one obstacle that often stands in the way is funding – and the inability without it to build a start-up team. On that topic, Tony Stanco has the makings of an evangelist.
  • U of Arkansas creates new option agreement for ‘pre-incorporation’ teams. A new type of IP agreement has been introduced by Technology Ventures at the University of Arkansas with the defined goal of overcoming a clear barrier to potential start-ups: the inability to secure rights to their IP while still in the earliest stages of their growth.
  • Innosphere Ventures offers TTO partners a no-cost way to help more start-ups. For TTOs looking for an extra hand, Innosphere Ventures, a Colorado-based science and technology incubator, has a University Partner Program that may serve as a good model to study. It works directly with TTOs at leading research universities across a multi-state region to accelerate the success of university start-ups with an exclusive commercialization program, specialized office and laboratory facilities, and a seed stage venture capital fund.

Posted June 15th, 2021

Technology Transfer Tactics, May 2021


Technology Transfer Tactics, May 2021The following is a list of the articles that appear in the May 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 5, May 2021

  • MIT experts propose a roadmap for easier passage across the Valley of Death. The typical life cycle of a cancer drug from the laboratory to the clinic and, finally, to patients is long and fraught with obstacles. There is a significant bottleneck — known as the Valley of Death — when lack of funding prevents ideas from moving from the university into the market.
  • As university start-ups look to go public, consider license renegotiation and SPACs. Two big university start-up exits are getting attention for the way they launched, one with an IPO and one using an innovative maneuver more often seen among Wall Street mavens than universities. Both might become more popular in the near future.
  • Refresh your technology listings regularly to maintain industry attention. You may get only one chance to make a first impression, but when it comes to technology listings, updating them with new relevant information can sometimes create the opportunity for a “second” first impression.
  • TTU’s ‘Commercialization Roadmap’ educates faculty and brings efficiency to TTO. Faculty and student innovators at Texas Tech University who have been tasked with navigating the path to commercialization recently got a big boost of support in the form of “The Commercialization Roadmap,” a comprehensive document created by the TTO as a step-by-step guide for bringing technologies to market. It helps the nascent innovator/entrepreneur to find resources available over a sprawling university system and provides a self-directed assessment to learn how to pilot a complex and growing ecosystem.
  • Yale’s amplifyHERscience program focuses on gender equity in commercialization. It took less than six months to pull together a new initiative at Yale University – called amplifyHERscience – created to encourage and support women faculty to extend the impact of their research beyond academia. It was during a “Shark Tank”-like event towards the end of 2019 that Morag Grassie, PhD, senior associate director of the Blavatnik Fund for Innovation at Yale, and Michelle McQueen, a communications officer for Yale’s Office of Cooperative Research (OCR), first noticed an alarming lack of women presenters.

Posted May 13th, 2021

Technology Transfer Tactics, April 2021


Technology Transfer Tactics, April IssueThe following is a list of the articles that appear in the April 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 4, April 2021

AUTM 2021 Annual meeting coverage

This issue features several articles from the 2021 AUTM Annual Meeting, held virtually this year. Coverage begins on page 52, with articles on express licensing strategies, the top mistakes made in patent license agreements, and tactics for encouraging more diversity in university commercialization activity.

  • U Georgia’s new start-up license offers speed and favorable terms in two-phase approach. The University of Georgia’s Innovation Gateway is offering a new “Georgia Startup License” combining technical assistance with a streamlined technology licensing process that offers preferred terms. But in a new twist on the express licensing concept, the start-ups must meet certain criteria to qualify for the deal.
  • Universities offer best practices for fast start-up license packages. Favorable deal terms and business development support were the focus in a discussion of best practices for quick start-up license packages at the 2021 AUTM annual meeting.
  • Attorney outlines top mistakes in patent licensing and how to prevent them. During his 34-year legal career focused on technology transfer and licensing practices, Russell Levine has seen a lot. A partner in the firm of Kirkland & Ellis LLP, he’s widely recognized as an expert in his field. So, his message resonated when he spoke at this year’s virtual AUTM conference about mistakes commonly made when drafting and negotiating patent license agreements.
  • Driving diversity and inclusion: Moving from rhetoric to reality. Many tech transfer programs improve equality, diversity, and inclusion (EDI) in their commercialization activity but may be at a loss as to what strategies or programs will best help them achieve this goal. The Driving Diversity and Inclusion for a More Successful Innovation Strategy session at the AUTM 2021 Annual Meeting provided some answers. Panelists shared specific tips for overcoming roadblocks and turning the desire for EDI into reality.
  • Summit Venture Studio solves software accelerator challenges. When Peter Djokovich and Taylor Bench met at the University of Utah’s Partners for Innovation, Ventures, Outreach & Technology (PIVOT) Center, they quickly realized they had a common interest at heart — to accelerate the commercialization of software solutions created at Utah universities. Together they launched Summit Venture Studio, which provides capital and talent to develop, launch, and scale university software start-ups rapidly and efficiently.

Posted April 13th, 2021

Technology Transfer Tactics, March 2021 Issue


Technology Transfer Tactics, March 2021 IssueThe following is a list of the articles that appear in the March 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 3, March 2021

  • Newly formed UTLP aims to streamline tech licensing by pooling patents. Fifteen leading research universities have come together to create a licensing pool that they hope will encourage innovation by making intellectual property more available to potential licensees and streamlining the tech transfer process for the schools.
  • NIST nears final stretch in changes to Bayh-Dole regulations. The National Institute of Standards and Technology (NIST) is preparing to enter the final phase of considering proposed changes to regulations that support the University and Small Business Patent Procedures Act of 1980, commonly known as the Bayh-Dole Act.
  • Oxford develops an internal methodology for rating ‘suitability’ of licensees. Licensing IP is never without risks — not the least of which involve the licensees themselves. Will they pay on time? Will they accurately follow the development plan? How good is their reporting? Will the two of you develop a positive working relationship?
  • Sweat Equity Challenge attracts software start-ups for NC State. Along with the ongoing challenge to generate invention disclosures from faculty comes the old maxim “be careful what you wish for.” In many cases when disclosures are received, the ideas are not fully conceived or validated enough to warrant allocation of the TTO’s limited resources. And even when the IP is well described, it often arrives with little knowledge of the target market or validation of the market need.
  • Princeton’s innovation ‘czar’ brings new life to campus entrepreneurship. What can an innovation “czar” accomplish in one year? At Princeton University, a lot, as it turns out.

Posted March 15th, 2021

Technology Transfer Tactics, February 2021 Issue


Technology Transfer Tactics, February 2021 IssueThe following is a list of the articles that appear in the February 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 2, February 2021

  • Negotiating VC terms doesn’t have to be a long, contentious affair. Venture capitalists and tech transfer programs should be closely aligned, since their goals are so complimentary, but that is not always the case when it comes to drafting agreements for life science start-ups. That process can lead to negotiations that are longer and more complicated than necessary, and it sometimes even gets testy between parties who should be eager to work cooperatively.
  • U Washington launches express licensing process to ease faculty frustration. The University of Washington’s CoMotion — the school’s tech transfer office — has formally launched Husky FAST Start, a licensing process designed to ease the frustrations of researchers and speed start-up license negotiations.
  • Legal Consult: Litigation funding as a resource for university patent enforcement. In recent years, a small but growing number of academic institutions have undertaken efforts to directly assert their patent rights through litigation.
  • TenU, a trans-Atlantic TTO collaboration, seeks to spread best practices. Earlier this year, a group of ten university technology transfer offices in the United Kingdom, the United States and Belgium announced a trans-Atlantic collaboration project known as TenU. The effort is still in the start-up phase, but its goals are nonetheless ambitious: to leverage the institutions’ combined knowledge on how best to use cutting-edge research outcomes to tackle global challenges.
  • Avoid “exhaustion” of related patents with careful drafting and licensing. It’s the TTO’s job to protect intellectual property while moving inventions into the marketplace, but you may not be protecting it enough.
  • U Arkansas adds tech transfer to factors considered in tenure decisions. The University of Arkansas system will now factor tech transfer achievements into tenure consideration, though it may take some time to achieve the desired results.
  • Penn State’s ‘ENtern­’ program seeks to foster future entrepreneurs. The path to commercialization can be exciting and harrowing, particularly when a technology transfer office’s efforts to bring an idea or invention to the marketplace involves spin-outs that raise venture capital to fund that commercialization.

Posted February 11th, 2021

Technology Transfer Tactics, January 2021 Issue


Technology Transfer Tactics, January 2021 IssueThe following is a list of the articles that appear in the January 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 1, January 2021

  • $32 million award in Washington U dispute with WARF holds important lessons. Trust is important in any relationship, but too much can lead to one party being woefully uninformed about financial matters — so much so that it costs them tens of millions in royalties. That seems to be what happened in a research and licensing deal between Washington University in St. Louis and the Wisconsin Alumni Research Foundation (WARF), which was recently adjudicated after WUSTL sued WARF for severely understating its share of an invention’s proceeds.
  • TTOs making extra effort to educate licensees and smooth license negotiations. A large number of university TTOs have crafted agreement templates, or express licenses, to help ease negotiations and speed up the licensing process, and they have been welcomed by potential licensees. But even these efforts can fall short when it comes to preparing a licensing partner for what to expect.
  • Guest Column: A plethora of data, but a dearth of data policies. While many universities have adapted their IP policies to account for software and other copyrightable innovations, a recent informal survey has illustrated a divide among research institutions on how data is treated, with much variation in how published IP policies cover data.
  • UCR experiments with “Giving Tuesday” campaign to fund innovation programs. Founded in 2012, “Giving Tuesday” was created to balance two days devoted to holiday shopping (Black Friday and Cyber Monday) with a single day dedicated to giving and volunteering. And, while a fundraising solicitation tied to “Giving Tuesday” is not all that unusual, one that’s specifically targeted to raising funds for university innovation and entrepreneurship programs is something a bit different.
  • Student-run VC teaches investing while boosting VC access for minority founders. Although entrepreneurship has become a common element of many college curriculums, the venture capital (VC) side of the equation is not often covered in depth. Students in entrepreneurship programs sometimes are left with a vague idea of how a start-up raises capital or how investors decide where to place their bets.
  • Emory uses simple method to reach potential investors and licensees. Emory University in Atlanta is using a no-cost, low effort way keep potential investors and licensees aware of intellectual property that may interest them. Other tech transfer offices may have the same ability within database software they already use.

Posted January 15th, 2021

Technology Transfer Tactics, December 2020 Issue


Technology Transfer Tactics, December 2020 IssueThe following is a list of the articles that appear in the December 2020 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 14, No. 12, December 2020

  • Ohio IP Promise forges ahead after successful first year of statewide tech transfer collaboration. One of the sure signs that a new initiative has proven successful in its initial stages is how rapidly and how strongly it moves ahead into new areas of growth. Based on that standard, the Ohio IP Promise program has passed with flying colors.
  • Johns Hopkins creates new role to usher life science technologies forward. In a large, busy tech transfer office like Johns Hopkins Technology Ventures, which handles 500 invention disclosures a year, making sure promising assets get the attention they deserve is a significant challenge — and it’s a potentially life-saving challenge when it comes to life sciences innovations. To ensure none of those potential life-savers languish unattended, the university created a new director of life science technology development position.
  • Take steps to avoid traps and pitfalls in faculty consulting agreements. Faculty consulting agreements are full of potentially serious issues involving conflicts of interest, legal liability, and ethical considerations. Unfortunately, the faculty entering into these agreements are often inexperienced with such matters and can find themselves embroiled in serious consequences down the road.
  • Modeling technology transfer income reveals significance of IP portfolio selection. Some technology transfer professionals posit that a TTO achieving a financial return is similar to winning the lottery — a matter of luck. But little effort has been made in trying to understand the underpinnings of income generated by TTOs.
  • Indiana U creates new “Catalyst Medal” to reward innovative faculty. As Indiana celebrated its bicentennial this year, the Office of the Vice President for Research and the IU Innovation and Commercialization Office combined efforts to create the Wylie Innovation Catalyst Medal. It celebrates the university’s longstanding legacy of innovation and the IU inventors who have an impact on the lives of others through their trailblazing discoveries.

Posted December 16th, 2020