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Technology Transfer Tactics, December 2018 Issue


Technology Transfer Tactics, December 2018 IssueThe following is a list of the articles that appear in the December 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. 12, December 2018

  • Innovative TTOs look at new ways to leverage the express licensing concept. While many TTOs have adopted express licenses in one form or another, some are still experimenting with new and different ways to leverage the concept — perhaps getting more than just additional licensing transactions out of the process.
  • As faculty start-ups proliferate, so do concerns over COI. This fall, conflict-of-interest (COI) and conflict-of-commitment (COC) issues pushed medical researchers and executives at Memorial Sloan Kettering Cancer Center in New York City into the national headlines via a series of articles co-published by ProPublica and The New York Times.
  • Purdue commercialization roars after TTO itself becomes entrepreneurial. Purdue University has rapidly become a powerhouse in tech transfer, with frequent news about promising start-ups, new discoveries, and impressive financial returns. The quick rise from an ordinary tech transfer program to one that is now the envy of many schools has people wondering: what’s in the secret sauce?
  • U Mich bell-ringing ceremony generates excitement as start-ups double. Sometimes all it takes is a simple idea that snowballs into something greater. In the case of a new tradition started at the University of Michigan’s TTO, it began with the ringing of a bell. Now, they’re celebrating nearly double the number of start-ups this year compared to last.
  • Brown U putting ecosystem pieces together to spur economic growth. A growing number of universities have incorporated strengthening economic development into their missions, often heavily involving the TTO, but few have adopted as ambitious a plan as the initiative recently launched by Brown University. Brown’s “Innovative Economy” initiative, launched in June, outlines five key areas of focus.

Posted December 18th, 2018

Technology Transfer Tactics, November 2018 Issue


Technology Transfer Tactics, November 2018 IssueThe following is a list of the articles that appear in the November 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. 11, November 2018

  • VCU Ventures shakes up standard start-up development process. Aggressive licensing terms and a customized pre-accelerator program that includes a faculty/entrepreneur “dating service” and the early use of end-user feedback are among the features that VCU Ventures plans to use to promote start-up development at Virginia Commonwealth University in Richmond.
  • Express license used by DoD gets deals done at breakneck speed. The only difference between the express license built by TechLink for the Department of Defense (DoD) and the form they previously used for licensing is that it is faster — much faster.
  • Legal disputes with university start-ups often traced to poor contracts. Tech transfer offices focus so much on encouraging faculty entrepreneurs and fostering their start-ups that the need for carefully constructed legal agreements can be seen as just a necessary formality among friends.
  • New tool brings blockchain technology to TTOs for IP protection. Blockchain technology, originally designed for digital currencies like Bitcoin, is now finding its way into other industries — including fields like university tech transfer that need to protect sensitive intellectual property. And, unlike banks’ reluctance to embrace cybercash, the IP industry appears to be welcoming blockchain technology.
  • Oxford updates mission, goals and strategies in bid to expand impact. Although Dr. Matt Perkins, Chief Executive Officer of Oxford University Innovation (OUI), insists that recent shifts in mission statement and strategy are “not really significant changes,” a bullet-point summary begs to differ.
  • Duke’s shift to service-based tech transfer model brings record results. Duke’s Office of Licensing and Ventures (OLV) has hit its stride in 2018, with record setting results in its completed fiscal year.

Posted November 16th, 2018

Technology Transfer Tactics, October 2018 Issue


Technology Transfer Tactics, October 2018 IssueThe following is a list of the articles that appear in the October 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. 10, October 2018

  • New online platforms connecting university start-ups and executive talent. Most universities love the idea of generating technology-based spinoffs, and it’s not hard to see why. Innovative start-ups can showcase an institution’s cerebral prowess while also bringing in revenue to support the academic enterprise and producing coveted jobs for stakeholders keen on economic development.
  • Dartmouth adds new faculty option for handling IP and start-up equity. Dartmouth College has found a new way to reward inventors for their contributions in the form of a new default distribution method for portfolio licenses — The Dartmouth Case Method. It takes into account how many times an inventor appears on different cases that are licensed by a company.
  • UVA’s quick and simple funding program boosts cross-discipline research. A research fund that requires faculty members to work with colleagues from separate disciplines is proving to be more popular than the creators ever imagined, making quick and easy funding available for projects that might never have been attempted without it.
  • StartupTree seeks to meet the “end-to-end needs” of entrepreneurship programs. It’s a sure sign of growth in any industry sector when third parties begin to offer software and services to manage tasks for those who toil in that field, and that’s exactly what’s happened in the burgeoning university entrepreneurship arena.
  • International partnerships bring solid benefits for TTOs. Commercializing discoveries made under international research collaborations with other universities is, of course, more of a hassle than similar deals with domestic partners — because of differences in language and legal systems, and even in expectations about how transferring technology to the commercial marketplace should proceed. But TTOs that have established international arrangements are adamant about at least one thing: It’s worth it.

Posted October 19th, 2018

Technology Transfer Tactics, September 2018 Issue


Technology Transfer Tactics, September 2018 IssueThe following is a list of the articles that appear in the September 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. 9, September 2018

  • TTOs build new ecosystems to keep spinoffs close to home. With economic development high on the priority list for most TTOs these days, it can really sting when promising, high-tech start-ups pull up stakes and move to larger cities or innovation hubs — taking all their potential jobs and investment dollars with them. Unfortunately, though, it’s a repeating scenario for many research institutions — even those that are awash with top-flight researchers and cutting-edge technologies.
  • Do you know what you’re paying for patent renewals? Many universities are wasting a lot of money on patent renewal services that are too expensive, but the tech transfer leaders responsible for the transactions either don’t realize they are being overcharged or are reluctant to let anyone know they negotiated a poor deal, according to one critic of renewal services.
  • Yissum transforms its website to reflect the evolution of tech transfer. The evolution of tech transfer over the past 25 years, and particularly within the past five, demands an approach to marketing that reflects that evolution. That’s a key assertion behind the new website launched this summer by Yissum, the Technology Transfer Company of The Hebrew University of Jerusalem (www.yissum.co.il).
  • Super-accelerator ‘node’ program develops rural tech entrepreneurs. Most rural areas of the United States haven’t seen the same opportunities for technology commercialization and entrepreneurship that are available in more urban technology corridors or university towns. However, a pilot program in rural Iowa aims to change that.
  • Podcast series tells the “untold stories” behind tech transfer. A multi-faceted team at UNeMed – the University of Nebraska Medical Center TTO — has launched a podcast series designed to take some of the mystery out of tech transfer for a broad audience while promoting the school’s research successes as well as a positive message about academic innovation and commercialization in general.
  • Break down barriers to tap alumni funding for commercialization. With so many divisions of the university seeking funding from alumni, the competition can get testy as department leaders stake out their claims and resist incursions from others. TTO leaders may find that they are limited in the use of alumni lists, and the idea of a fundraising campaign for a start-up would be non-starter on many campuses.

Posted September 18th, 2018

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