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Technology Transfer Tactics, August 2018 Issue


Technology Transfer Tactics, August 2018 IssueThe following is a list of the articles that appear in the August 2018 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 12, No. 8, August 2018

  • Fine tune your technology briefs to avoid missed opportunities. Constructing the technology briefs used to market new innovations may seem like a simple enough task. Ideally, these are short write-ups designed to get the attention of interested suitors. But too many TTOs are failing to prioritize this basic but highly important function. As a result, promising technologies that really should have a shot at getting licensed may never get a look from potential licensees.
  • Chart helps guide TTOs in compliance with new Bayh-Dole revisions. The language of government regulations can be difficult to understand, and the recent updates to the Bayh-Dole regulations are no exception. To help TTO executives wade through them, and more importantly, ensure they comply with the new requirements, Tyson Benson, an attorney with the law firm of Harness Dickey, has created an easy to follow chart summarizing the actions required.
  • Entrepreneurship programs increasing their focus on job placement. While university entrepreneurship programs and the creation of start-ups would seem to go hand in hand, some recent research indicates universities may be making a more valuable contribution to the ecosystem through job creation than through generating start-ups.
  • Macquarie U takes on faculty engagement, introduces “Impact Canvas.” Engaging your faculty in the tech transfer process and bringing their expertise to bear on developing a commercialization plan are tall orders for every TTO. But those efforts can pay off handsomely, as they have at Macquarie University in Sydney, Australia.
  • New structure at U Alaska generates improvements in disclosures, start-ups. What’s behind the dramatic improvement at The University of Alaska Anchorage (UAA) since 2011? A complete shift in focus and creative new strategies under the guidance of Helena Wisniewski, PhD, FNAI, vice provost for research and graduate studies and chief research officer.

Posted August 16th, 2018

Technology Transfer Tactics, July 2018 Issue


Technology Transfer Tactics, July 2018 IssueThe following is a list of the articles that appear in the July 2018 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 12, No. 7, July 2018

  • Adopt these best practices and boost the impact of inventor recognition programs. Inventor recognition programs can excite and motivate faculty and other inventors to participate in the innovation ecosystem, says Laura Schoppe, MBA, MSE, president of the technology transfer consulting firm Fuentek LLC in Cary, NC. But it takes more than just a quick thank you lunch to have a significant impact. “When you have an awards event and do it well, it has a lot more meaning for inventors than you may realize,” Schoppe says. “Everyone comes back from the event talking about how wonderful it was, and the people who didn’t attend ask, ‘Why wasn’t I invited?’ So it creates a conversation — and a desire to be part of the party the next time.”
  • Amgen decision puts billions in antibody patents at risk. Universities are facing the potential loss of billions of dollars from some of their most valuable assets in the wake of a recent decision on antibodies from the Federal Circuit Court of Appeals. TTOs should expect more PTAB challenges for antibody patents after the ruling, experts caution, and the best defense is understanding the complex legal reasoning that led to the vulnerability of these profitable patents.
  • Indiana U taps alumni for philanthropic venture fund. A $15 million venture fund at Indiana University is soliciting donations from the school’s 700,000 alumni, but the return on their investment will come only in the form of a tax deduction and the knowledge that they’re helping bring important discoveries to the marketplace. The fund works, according to its leader, because alumni can be motivated in venture funding the same way they can be for other donations that do not provide a financial return.
  • Leverage tools to pull potential licensees into the “marketing funnel.” Given the burgeoning array of internet-based tools, how do you optimize a marketing strategy for early-stage assets? Most agree that nothing beats face-to-face communications in terms of effectiveness, but such a strategy can only go so far when you’ve got hundreds of technologies in search of a match.

Posted July 11th, 2018

Technology Transfer Tactics, June 2018 Issue


Technology Transfer Tactics, June 2018 IssueThe following is a list of the articles that appear in the June 2018 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 12, No. 6, June 2018

Special Focus: Women in Research Commercialization

If an internal audit found that, through some technical glitch or twist of fate, your TTO was ignoring a significant percentage of researchers and, as a result, was missing out on scores of potential inventions, patents, licenses, and start-ups, chances are you’d rush headlong into corrective action. But as this month’s issue points out, that’s exactly what’s happening at most universities, not due to a technical glitch — but rather an intrinsic, perhaps unconscious set of biases and barriers against women in research commercialization. It’s a huge issue for TTOs, and correcting it holds the possibility of unleashing a huge stockpile of latent inventiveness among faculty of the so-called “weaker” sex (yes, even our language and idioms contribute to these barriers).

We’ve devoted the entire June issue to exploring this problem, offering guidance from many of the leading voices tackling gender equity in tech transfer. You’ll find data, resources, examples of approaches and programs, and plenty of advice. Here’s what’s inside:

  • TTOs can take steps to move toward gender parity in commercialization.
  • Is an SBIR/STTR focus right for your women faculty?
  • Outreach and messaging tweaks bring in more women.
  • Money tight? Small, low-cost steps can boost women’s participation.
  • AUTM WIC toolkit: First step in tech transfer’s national push for parity.
  • 4 key internal barriers can close the door on women innovators.
  • Role modeling: Showcase achievements among women faculty.
  • Ohio State REACH sees big jump in patent applications after hiring EIR.
  • U of Florida Collaboratory aims to support the full innovation lifecycle.
  • At Washington U, invention disclosures among women hit 5-year growth of 45%.

Posted June 19th, 2018

Technology Transfer Tactics, May 2018 Issue


Technology Transfer Tactics, May 2018 IssueThe following is a list of the articles that appear in the May 2018 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 12, No. 5, May 2018

  • Apply a systems approach to prioritize technologies and improve time management. Managing a large portfolio of technologies has always been a daunting task, but now that additional responsibilities are being thrust upon university TTOs, time management has taken on increasing importance. This was a big topic of discussion at AUTM’s annual meeting in February.
  • Get ready for extra compliance burden under revised Bayh-Dole rules. The anticipated revisions in Bayh-Dole regulations, published in the Federal Register on April 13, will no doubt have a significant impact on TTO activities. And while one crystal ball may be more or less clearer than the next, TTO leaders agree they will significantly increase the amount of time needed to assure full compliance — and thus the amount of resources required to do that.
  • Venture search funds floated as way to tap endowments, attract start-up talent Tech transfer leaders know the frustration of having valuable, innovative research that could be translated into a potentially valuable start-up if only the right entrepreneur expressed interest and could secure necessary funding.
  • SAS decision could have chilling effect on university licensing. The recent Supreme Court decision in SAS Institute v. Iancu could change how the Patent Trial and Appeal Board conducts future proceedings, with the Court directing it to provide a full written decision for all claims challenged.
  • New venture fund model at Georgia Tech boasts major corporate investors. What do AT&T, Chick-fil-A, Cox Enterprises, Delta Air Lines, Goldman-Sachs, Georgia-Pacific, The Georgia Power Foundation, Intercontinental Exchange, Invesco, Home Depot and UPS have in common? Besides all having headquarters or regional offices in Atlanta, they are all also board members of Engage Ventures, a venture capital fund and accelerator based at Georgia Tech.

Posted May 15th, 2018

Technology Transfer Tactics, April 2018 Issue


The following is a list of the articles that appear in the April 2018 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 12, No. 4, April 2018

  • Ace the customer discovery process for the best shot at start-up success. Eric Mathews, the founder and CEO of Start Co, a Memphis, TN-based accelerator, sees it all the time: would-be entrepreneurs who are so jazzed about their plans for a new business that they dive head-first toward getting their product or service on the market. “They will spend a lot of time, energy, money, resources and social capital, and they will end up taking it to market only to find out that nobody wants it.”
  • Columbia adopts AI-based machine learning model for technology marketing. Apparently there are technology listings, and then there are technology listings.
  • AUTM 2018 coverage: Faculty arrivals, departures require a careful approach to tracking IP.
  • U Queensland’s new ‘chief student entrepreneur’ helps spread the word. Universities pretty much all want to promote student entrepreneurship, which is becoming a bigger factor not only in terms of tech transfer and getting more start-ups created, but also in terms of drawing top students who increasingly see entrepreneurial education as a major draw. To further those aims, the University of Queensland in Brisbane, Australia has hatched a rather brilliant idea — appointing a “chief student entrepreneur.”
  • Microgrant programs: ‘Small’ amounts of support can have a large impact. It is not difficult to imagine modest amounts of financial support — say, $1,000-$2,000 — having a positive impact on nascent innovation efforts. But what about $100-$200? Even these awards, insist program leaders involved in such “microgrant” programs, can be a significant boost to the blossoming of new ideas.
  • UCSD touches all the bases in two-day commercialization event. Many universities sponsor networking events. Many run pitch competitions, start-up fairs, meetings with mentors, and presentations by expert speakers — but how many of them do all of that in a single event?

Posted April 19th, 2018

Technology Transfer Tactics, March 2018 Issue


Technology Transfer Tactics, March 2018 IssueThe following is a list of the articles that appear in the March 2018 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 12, No. 3, March 2018

  • Not resting on its laurels, MIT beefs up tech transfer efforts. Based on averages for patents and licenses issued, licensing income generated, and start-ups created over the span of 2012–2015, the Massachusetts Institute of Technology (MIT) in Cambridge ranked as the eighth-best university for technology transfer in the United States, according to the April 2017 report “Concept to Commercialization: The Best Universities for Technology Transfer” from the Milken Institute in Los Angeles. In addition, last September, MIT came in second in the annual ranking The World’s Most Innovative Universities for the third straight year, according to Reuters.
  • Fully leverage licensing, faculty resources to pick up on potential infringement. No TTO relishes the idea of patent litigation, but if a university is losing out on significant revenue due to infringement that could be plowed back into the institution’s research endeavors, there is a good case to be made that the public is losing out as well.
  • LLCs can be smart for university start-ups, but only if you know the risks. Faculty start-ups have a few different options when it comes to forming a corporation, and the limited liability corporation (LLC) can be appealing. It has favorable aspects for entrepreneurs and it can be smart for universities that wish to take equity in the company, but there are potential complications to consider before making a decision.
  • Best Practice Spotlight: Making lemonade out of lemons: Communicating unwelcome news to scientists
  • Heard in the Halls: AUTM 2018
  • Penn State challenge to industry nets $1 million gift to support start-ups. Penn State University President Eric Barron had an idea that he put to the test. He offered $1 million in matching funding for the school’s start-up accelerator, Happy Valley LaunchBox, if a company or companies would donate $1 million. He pitched it as an economic development booster, and longtime partner PNC Bank quickly stepped forward to offer the first $1 million gift.

Posted March 23rd, 2018

Technology Transfer Tactics, February 2018 Issue


Technology Transfer Tactics, February 2018 IssueThe following is a list of the articles that appear in the February 2018 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 12, No. 2, February 2018

  • TTOs eliminate barriers, expedite the licensing process for start-ups. With a few years of experience with various types of streamlined licensing procedures, most experts say it is still unclear what overall impact they have had on the creation of university start-ups or their overall return-on-investment. However, debate still rages over just how streamlined such licensing processes should be.
  • Latest PTAB decision weakens sovereign immunity defense. A Patent Trial and Appeal Board (PTAB) decision regarding sovereign immunity throws more cold water on the idea of state universities using it to defend against inter partes review (IPR), but it is not the end of the road.
  • U Toronto center partners with Chinese firm to give start-ups ‘soft landing.’ A growing number of university start-ups are seeking to access the Chinese market, but that’s something often easier said than done. Who do you contact in China to help you make connections? Who are the manufacturers you can trust? What regulations could impede your efforts? What about funding sources?
  • Clinician entrepreneurs present distinct challenges but big opportunities for TTOs. It is often noted by observers that the commercialization of medical innovations offers a unique set of challenges. It is not so often recognized, however, that the individuals who create these innovations are also unique, and that optimizing the potential they present requires targeted approaches — recognizing not only the uniqueness of their genre, but even drilling down to their areas of specialization.
  • UK universities band together to drive research and attract industry. Its tagline is: ‘Research Excellence. Powering Growth,’ and it appears to be doing just that. The Midlands Innovation partnership is a collaboration that started with five universities in 2012 sharing a vision to raise the profile of the research taking place in the Midlands universities.

Posted February 16th, 2018

Technology Transfer Tactics, January 2018 Issue


Technology Transfer Tactics, January 2018 IssueThe following is a list of the articles that appear in the January 2018 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 12, No. 1, January 2018

  • Cold Spring case illustrates Bayh-Dole risk in midst of drug price controversy. Recent complaints made by a consumer advocacy group revealed a lack of Bayh-Dole compliance by Cold Spring Harbor Laboratory surrounding a drug that costs a single patient hundreds of thousands of dollars annually, illustrating the risk of failing to properly report federally funded inventions as required by the Act.
  • APLU report: TTOs urged to put economic development front and center. It’s no secret that TTOs are being asked to do much more than they have in the past; they’ve moved beyond traditional licensing and patenting activities into start-up generation and partnering with governmental and private-sector entities to drive economic development. In fact, a new report by the Technology Transfer Evolution Working Group of the Association of Public and Land-Grant Universities (APLU) argues that the economic development mission should be the primary task at hand for TTOs going forward, and it calls on university leaders to redefine their stated expectations for TTOs accordingly.
  • UNeMed took the data bull by the horns and created its own customized solution. For TTOs looking to improve their data management and CRM systems or evaluating new options, the experience of UNeMed — the tech transfer arm of the University of Nebrask Medical Center — is well worth studying. They didn’t buy a solution — they built one that they could continually update and tweak to meet their evolving needs.
  • ‘Founders Pie Calculator’ offers a more nuanced way to determine equity shares. So you’re getting a start-up going, and it’s time to divvy up the equity shares among the four partners. The most logical thing to do is to award 25% to each of the partners, right?
  • STRIDE’s industry scientists to support start-ups based on chemical innovations. One of greatest challenges in creating viable new companies sprung out of universities is developing strong relationships with industry. It’s only logical that a support program with industry experts at its foundation could go long way towards overcoming that challenge.

Posted January 19th, 2018

Technology Transfer Tactics, December 2017 Issue


Technology Transfer Tactics, December 2017 IssueThe following is a list of the articles that appear in the December 2017 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 11, No. 12, December 2017

  • TTOs link with third parties in bid to expand licensing of research tools. While it is always a challenge to motivate faculty to disclose their innovations, many observers agree it is particularly difficult when it comes to the disclosure of research tools — mouse models, cell lines, antibodies, and so forth.
  • Hopkins collaborates with investment firm to de-risk early-stage therapeutics. The Johns Hopkins University and investment advisor Deerfield Management have launched a clever collaboration called Bluefield Innovations that will sponsor research into early-stage therapeutics then license the results.
  • Attorney: Don’t put too much faith in sovereign immunity. Sovereign immunity can add to the value of patents owned by state universities, but it is not an ironclad defense against patent challenges — at least not until we hear more from the courts, an attorney cautions.
  • Creative solutions found for improving reporting between IIA participants. In any organization where resources are limited, choices must be continually made on the allocation of those resources. In TTOs, shortages of time and staffing are common, and lack of either or both can cause some processes to fall by the wayside.
  • UTRF makes deal with defensive patent aggregator RPX. A deal between the University of Tennessee Research Foundation and a patent aggregator illustrates one possible outcome when a university asserts patents. Rather than settling an infringement matter through litigation, a defensive patent aggregator may step in and negotiate a deal to purchase the patents and take the case out of the courtroom.
  • Tech Navigator program helps guide New Mexico entrepreneurs. Getting new technology to market in New Mexico is getting a helping hand thanks to a new program — Tech Navigator — which is helping to connect the region’s best and brightest in technology commercialization.

Posted December 20th, 2017

Technology Transfer Tactics, November 2017 Issue


Technology Transfer Tactics, November 2017 IssueThe following is a list of the articles that appear in the November 2017 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 11, No. 11, November 2017

  • UC Santa Cruz goes all out to engage students from non-STEM fields in entrepreneurship. Getting “creative” students from non-STEM disciplines involved with innovation and entrepreneurship always sounds like a great idea, but making it happen is another matter.
  • Multi-party auction used to create U of Arizona start-up culminates in $35M acquisition. When you have a mature product and several potential buyers, a tech transfer office can find itself in the unusual position of dictating terms and waiting for the best offer.
  • Private equity fund bets on litigation finance, sees high potential in university patents. Litigation financing holds appeal for universities trying to protect valuable IP because they typically can’t afford to gamble on a complex patent case against a deep-pocketed corporation.
  • Pitt TTO takes business-like approach with surveys to improve customer engagement. While they certainly have ongoing relationships with many businesses, and have a number of the same processes and structures as businesses, it is clear that in many ways TTOs are not businesses — at least in the traditional sense.
  • Contrary Capital offers a new funding option for student start-ups on 55 campuses. You may have heard something about Contrary Capital after a PR blitz resulted in numerous articles in local news outlets at some of the 50+ campuses around the country where the new student-focused pre-seed fund will have its outposts.
  • New tech scouting platform offers help for TTOs seeking to get IP off the shelf. Technology transfer offices struggle to capture the attention of industry for many of their inventions — in fact in most offices the vast majority of IP assets never find a commercial partner. Enter Resolute Innovation, a new technology matchmaking and scouting software platform that connects companies with TTOs, federal laboratories, start-ups, hospitals, and other research organizations.

Posted November 21st, 2017

Technology Transfer Tactics, October 2017 Issue


Technology Transfer Tactics, October 2017 IssueThe following is a list of the articles that appear in the October 2017 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 11, No. 10, October 2017

  • Imperial College establishes two tiers of support for academic inventors. All inventors are not created equal, nor do they all need the same level of support from their institutions.
  • UCLA credits environment, change in culture for driving start-up success. As economic development has gained prominence in state government, it has seen a parallel rise in importance for universities and their TTOs, which are churning out technology-based companies. Indeed, start-ups are routinely tallied as one of the prime indicators of commercialization success.
  • Old Dominion pulls in $41 million with risky IPO strategy. What’s the secret behind a university not necessarily known as a research powerhouse coming away with $41.6 million from a start-up going public? Being gutsy enough to take the money up front and risk a long dry spell in the future.
  • Indiana schools will bundle their IP in licensing deal with research institute. Four Indiana universities will make some of their innovations available to a research institute there so the institute can commercialize them, then split the proceeds with the schools. The quartet — Ball State University, Indiana University, Purdue University, and the University of Notre Dame — signed a Memorandum of Understanding with the Indiana Biosciences Research Institute in Indianapolis that sketches out the details of IBRI licensing each university’s “available life sciences technologies at pre-defined terms.”
  • WSU spreads innovation culture with a dramatic shift in program focus. It was not that long ago — 2016 in fact — that Washington State University saw the launch of the Entrepreneurial Faculty Ambassadors (EFA) initiative, a peer-to-peer mentoring program designed to broaden faculty outreach and ultimately lead to more disclosures and revenue. With a recent announcement, however, it has become clear the program will not only be significantly expanded, but that it will be guided by a distinctly redefined shift in messaging.

Posted October 24th, 2017

Technology Transfer Tactics, September 2017 Issue


Technology Transfer Tactics, September 2017 IssueThe following is a list of the articles that appear in the September 2017 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics
Vol. 11, No. 9, September 2017

  • TTOs assess many factors to make decisions on PCT conversion. Let’s say you have a promising biomedical discovery, but with the provisional patent about to expire, there is still no licensee. A decision must be made on how — or even whether — to keep patent protection on the discovery alive.
  • Moving software through the tech transfer process requires speed, finesse. Apps and software are becoming more common in TTO portfolios, but they may require a slight reworking of how you think about IP and guide it to commercialization, experts say.
  • Indiana U refocuses tech transfer on industry engagement, splits off start-ups. Indiana University is restructuring its tech transfer operations, moving most of its traditional industry-facing work out of the non-profit Indiana University Research and Technology Corp. and back under direct university control, while splitting off start-ups as the sole purview of IURTC.
  • “Commercialization Guide” makes an impact as outreach tool for Penn. The Penn Center for Innovation’s (PCI) Commercialization Guide, published in early June, is a publication designed to serve as a “one-stop-shop” for faculty and graduate students interested in learning about the key steps in the commercialization process, and is considered an important part of PCI’s outreach efforts.
  • GA Tech undergraduate entrepreneurship programs yield three successful exits. CREATE-X, an initiative comprising multiple entrepreneurship programs for undergraduates launched at Georgia Tech in 2014, has already created 81 start-ups from 26 majors, earning over $2 million in follow on investments, including three venture-funded start-ups that have been acquired by other companies. The CREATE-X founder, Raghupathy Sivakumar, professor and Wayne J. Holman Chair in the school of electrical and computer engineering, credits its success with strong support from successful alumni and curricula based on a “learn, make and launch” approach.

Posted September 19th, 2017