Tech Transfer Central

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

Technology Transfer Tactics, November 2020 Issue


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

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Technology Transfer Tactics
Vol. 14, No. 11, November 2020

  • Tenure criteria incorporating innovation activity move forward with new PTIE recommendations. Recommendations for incorporating innovation and entrepreneurship into university promotion and tenure criteria, delivered recently from a group convened by the National Science Foundation (NSF), appear to be the most significant and organized effort so far to making this change in how academia sees the advancement of faculty who are involved in commercialization activity.
  • Bio I-Corps tackles lack of diversity in pharma and biotech entrepreneurship. Biotech and pharma have a diversity issue, and they know it. In January 2020, the Biotechnology Innovation Organization (BIO) released the report, “Measuring Diversity in the Biotech Industry: Building an Inclusive Workforce,” which assesses the progress that 100 biotech companies have made towards diversity of gender, race and ethnicity.
  • New virtual incubator puts all the pieces together to speed therapies to market. It was both the need and opportunity to provide funding and resources to very early stage research that prompted the formation of a new virtual incubator — Autobahn Labs. The incubator is using a new and comprehensive model of support for early-stage drug innovations, combining a typical incubator’s help with VC deep pockets and a pharma company’s deep expertise. And it’s partnering with university TTOs to gain access to their most promising pharma innovations.
  • U of Utah TTO “PIVOTs” to a more centralized organizational structure. Building on the previous work of its Center for Technology & Venture Commercialization (TVC) while moving to a more centralized structure, the University of Utah has formed the Partners for Innovation, Ventures, Outreach & Technology (PIVOT) Center to serve as a hub to foster partnerships between industry, university and government entities.
  • U Manchester unveils new Innovation Factory as it rebrands, restructures TTO. When Andrew Wilkinson was appointed as the new CEO of The University of Manchester’s technology transfer office in January 2019, it’s been nothing but change — and that’s a good thing, as he sees it.

Posted November 13th, 2020

Technology Transfer Tactics, October 2020 Issue


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

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Technology Transfer Tactics
Vol. 14, No. 10, October 2020

  • A three-pronged approach to controlling costs of managing your patent portfolio. Peter Gordon, a founding and managing member of Patent GC, a team of IP, patent and trademark attorneys, began learning through “grace under fire” some of the keys to managing patent portfolio costs, and he shared those lessons, along with key tools and techniques, with the attendees of an October 5 webinar hosted by Technology Transfer Tactics entitled, “Maintaining a High-Quality Pa­tent Portfolio Under Severe Budget Constraints.”
  • Case shows need to track even minor contributions before patent filing. Inventorship is not always an easy thing to define when dealing with patent law, and even a seemingly minor contribution to a patented invention can determine rights to lucrative revenue streams. A recent Federal Circuit Court ruling decided in favor of the Dana-Farber Cancer Institute is a case in point, and also serves as a pointed reminder that all contributions must be documented and memorialized to ensure those contributions aren’t swept under the rug in the patent office.
  • UC takes next step with filament light bulb case: Manufacturers and ITC. The University of California’s aggressive campaign to protect its patent on so-called “Edison” filament light bulbs has entered a new stage with a complaint filed with the U.S. International Trade Commission (ITC), seeking an investigation into the unauthorized importation of the patented technology.
  • Venture mentoring expands to San Antonio as UT system bolsters start-up support. San Antonio has a long pattern of cooperation and collaboration, especially in the biomedical and life science community. Executive leaders from this community interested in supporting new companies are a rich potential resource for the newly launched Venture Mentoring Service (VMS) San Antonio.
  • Tips for running a successful venture mentoring program. The leadership of the VMS San Antonio and UT System VMS offered these pieces of advice for anyone wanting to create a team-based mentoring group.

Posted October 16th, 2020

Technology Transfer Tactics, September 2020 Issue


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

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Technology Transfer Tactics
Vol. 14, No. 9, September 2020

  • Gensetix case with U Texas shows need to consider enforcement terms in license agreement. A case involving the University of Texas is yielding lessons about the proper way to construct contracts — particularly with regard to rights to enforcement — as well as the role of sovereign immunity when a licensee seeks to force a state university to join an infringement suit. Unfortunately, it raises as many questions as it answers.
  • Statewide KY partnership to boost economy, compete with innovation centers. When universities are in a rural area, far from the country’s innovation centers, TTOs might think they face an impossible competitive disadvantage against schools near areas like Silicon Valley, Boston, or Chicago. But there is strength in numbers, and some rural schools are partnering with other regional universities, economic development organizations, and government agencies and pooling their resources.
  • UW-Madison’s “Innovate Network” puts access to far-flung resources in one place. A new initiative from UW-Madison and the Wisconsin Alumni Research Foundation (WARF), administered by UWM’s Discovery to Product (D2P) program, is a powerhouse network and online resource involving more than a dozen campus organizations.
  • Whiteboard2Boardroom connects talent to technology across Kansas and Missouri. Whiteboard2boardroom (W2B) has become a clearinghouse for regional commercialization, linking technologies to executive talent and other resources to advance the technologies beyond the research lab.
  • University College Cork rebrands TTO to embrace wider innovation activity. Restructuring and rebranding is no small undertaking at any time — never mind during a global pandemic. But Rich Ferrie, director of innovation at University College Cork (UCC), didn’t let that stop him from changing direction and switching things up. In fact, he saw it as the ideal time to capitalize on a rebranding and re-imagining of the TTO there to embrace a wider innovation mandate.
  • U Oregon video series helps innovation office tell its story. The short video (under four minutes) begins with a close-up focus on researcher Avinash Bala, PhD, of the University of Oregon’s Institute for Neuroscience, co-founder of the start-up company Perceptivo. Bala provides a detailed description of his research into the hearing of barn owls, how that research led to the development of a system that measures pupil dilation and could potentially be applied to address the hearing of infants. He goes on to share how that led to his developing a technology that fills a need expressed by physicians.

Posted September 15th, 2020

Technology Transfer Tactics, August 2020 Issue


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

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Technology Transfer Tactics
Vol. 14, No. 8, August 2020

  • Improve TTO benchmarking by normalizing data and taking a deeper dive behind the numbers. TTOs must understand their own performance data if they are to optimize outcomes, but it also is critical to normalize the data to obtain a useful comparison against other universities that allows you to identify potential areas of improvement.
  • Johns Hopkins contracts team steps up its game amid pandemic. Amid the shutdown of central work locations as a result of the COVID-19 pandemic, the work of technology transfer offices still has to get done. For many, the disruption has been accompanied by an added sense of urgency as research labs pump out coronavirus-related innovations.
  • Defense of Trade Secrets Act: Part of a TTO’s international IP protection toolbox. While technology transfer offices mainly focus on protecting their IP through the patent process, protecting trade secrets is also a concern — and one that’s growing in prominence amid a trend toward more international collaboration.
  • New philanthropic venture fund at U Michigan snags Amazon investment. When a new university venture fund lands Amazon as one of its early investors, it must be doing something right — and, according to its director, such a vote of confidence is especially important given the challenges this fund is taking on. It also illustrates for other universities seeking participants in start-up funds that big corporates could be fertile ground for prospecting.
  • Study: faculty not motivated by financial incentives, so conduct outreach accordingly. It’s been 40 years since passage of the Bayh-Dole Act, and tech transfer professionals have spent a lot of that time trying to get faculty researchers to buy into a philosophical shift toward thinking about their innovations as having commercial value. It’s still not uncommon for “old guard” faculty to resist any suggestion that they should embrace the tech transfer ethos. Thankfully for TTOs the shift away from commercialization as a dirty word has gradually occurred, due in no small part to TTO outreach efforts.

Posted August 18th, 2020

Technology Transfer Tactics, July 2020 Issue


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

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Technology Transfer Tactics
Vol. 14, No. 7, July 2020

  • ‘Go-in-Peace’ license can help smooth feathers when returning IP to faculty. When a TTO decides not to pursue an invention or patent it, the faculty inventor may want rights to the IP. But how to make that transfer can be a difficult proposition.
  • Spotlight on TTOs in pandemic may reveal path to better performance. Universities and TTOs have delivered solutions to the COVID-19 crisis at lightning speed. From epidemiological modeling, viral gene sequencing, rapid testing and vaccine programs, ventilator production, 3D printed PPE manufacture and AI-driven identification, testing and production of therapeutic treatments, universities have been on the front line of the pandemic with a very public profile. By and large this has produced a silver lining to TTOs and research commercialization activity as university labs and their innovation output are in the public spotlight like never before.
  • Should TTO staff be allowed to participate in new ventures? The story spread through the university technology community last year faster than a Facebook cat video. Executives at the higher reaches of the heralded Memorial Sloan Kettering Cancer Center (MSK) “repeatedly violated policies on financial conflicts of interest, fostering a culture in which profits appeared to take precedence over research and patient care,” The New York Times wrote in an April 4, 2019, article it produced in collaboration with ProPublica. What can TTOs do to avoid a similar fate when their own employees wish to become involved in a start-up that the TTO is supporting?
  • Success rate soars for biotech innovations under Stanford SPARK program. While helping society is often the stated mission of universities, much of their biomedical research never moves beyond the research lab to benefit patients. In many cases, it languishes simply because the inventor just doesn’t know how to take it further. But since 2006, the SPARK at Stanford program has been teaching academics to transform their research so that it can be translated and commercialized for the benefit of society.
  • K-State simplifies disclosure form and sees faculty engagement levels soar. While many disclosure forms are viewed as burdensome for busy innovators, Kansas State University recently worked to revamp its disclosure and create a document that inventors would embrace rather than eschew.

Posted July 15th, 2020

Technology Transfer Tactics, June 2020 Issue


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

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Technology Transfer Tactics
Vol. 14, No. 6, June 2020

  • Virtual engagement enables TTOs to scale up outreach and augment ecosystem. Recent innovations in virtual engagement have begun to offer TTOs a more enriched world of options for not only fulfilling but expanding their missions, and the need to respond quickly to the dramatic changes brought on by COVID-19 have both sharpened that focus and proven their worth, according to a panel of experts at a recent webinar, “Virtual Engagement Strategies for TTOs: Scaling Up Online Connectivity Now and Building Future Resiliency,” hosted by TTT.
  • Amid various stages of reopening across the country, TTOs plan for next steps. When shelter-in-place restrictions and social distancing began across the country in March in response to the COVID-19 pandemic, university technology transfer offices focused on making sure they could maintain operations remotely. Now that states and universities have begun the staged lifting of prohibitions, the focus for TTOs is on what comes next.
  • TTOs adjusting to shrinking budgets and hiring freezes. Throughout the country, universities are cutting budgets, resulting in hiring freezes, furloughs, and stalled plans for expansion. TTOs are tightening their belts, but so far, they are experiencing more of a bump in the road than a full-blown train wreck. Long-term, it appears that university mission-based goals will remain intact.
  • Leverage your TTO’s database to create impactful technology marketing reports. Industry-specific feedback on early stage technologies is critical to technology transfer offices in informing patenting strategy, providing feedback to inventors, and nominating technologies for further de-risking. Many offices recognize the value of this information and have formed marketing teams and internship programs specifically tasked with sourcing industry feedback.
  • Equity crowdfunding may be tempting for university start-ups as investments dry up. With venture capitalists less approachable during the pandemic shutdown, TTOs are looking for investment alternatives for university start-ups and some are wondering if equity crowdfunding is a good option. It can be, the experts say, but tread carefully and consider the potential downsides.

Posted June 16th, 2020

Technology Transfer Tactics, May 2020 Issue


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

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Technology Transfer Tactics
Vol. 14, No. 5, May 2020

  • TTOs are stepping up to meet the COVID-19 challenge. It will most likely take a village to combat COVID-19. If that’s the case, technology transfer offices around the nation have pitched a giant tent right in the town square. We spoke to many people in TTOs who are going above and beyond to do whatever is possible to help. Here are a few examples.
  • With start-up investments scarce in COVID times, find ways to pivot. The COVID-19 pandemic is affecting the prospects and bottom line of university start-ups as they find investments difficult to come by and their usual work coming to a halt with the rest of the economy. Some are pivoting to other work in the meantime, but the effects of the pandemic are likely to hurt many start-ups for months, if not longer.
  • Are zombie start-ups haunting your TTO? Are university TTOs essentially gaming the system when they dutifully report each year on the number of start-ups they have nurtured? That seems to be the suggestion of a provocative new analysis by professors at Brigham Young University (BYU) and Utah Valley University.
  • Oregon universities band together to set the rules for co-owned IP. Five Oregon research universities — Oregon Health & Science University (OHSU) in Portland, the University of Oregon in Eugene, Oregon State University in Corvallis, Portland State University, and the Oregon Institute of Technology in Klamath Falls — have launched a collaborative model to boost innovation via a series of three agreements that clarify ownership of intellectual property derived from inter-university collaborative research projects, as well as inter-university employment. The goal is to reduce cost barriers and other blockages that can stymie collaborative research.
  • U Chicago TTO has attorney on loan from law firm. The Polsky Center for Entrepreneurship and Innovation at the University of Chicago is enjoying an unusual relationship with a law firm that allows it to have an intellectual property attorney on site full time, devoting all her attention to tech transfer. The unique arrangement means the attorney can aid directly with patent prosecution and implementing new procedures and contracts, while also giving the university favored status with the law firm.

Posted May 14th, 2020