The following is a list of the articles that appear in the April 2024 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 18, No. 4, April 2024

Special Focus: AI in Tech Transfer

The use of AI in tech transfer is rapidly becoming more than a frequent topic of discussion among TTOs — it is crossing over into actual use as a tool for automating numerous tasks, from marketing and patent analysis to compliance auditing and assisting with inventions and the patents drafted to protect them.

That’s why this month we’re devoting most of an expanded special issue to a variety of AI topics and kicking off a special six-part series of in-depth, how-to articles with the first installment.

• Unlocking the AI advantage: A technology transfer office primer. Artificial intelligence in the technology transfer office is not a sci-fi story set 30 years from now. It is here now, and its use in TTOs — along with its applications to commercialization-related work — is growing rapidly. AI tools are still young, but they’re being nurtured and improved upon through continual interactions with users.
• AI offers great marketing advantages, but be sure to ‘handle with care.’ At the recent AUTM conference in San Diego there was little doubt that having “AI” in a session title would guarantee a packed room. The annual meeting of tech transfer professionals featured standing room only AI-related presentations throughout its three days. The session “AI & IP: A Match Made in Tech Transfer Marketing Heaven” was no exception.
• USPTO clears way for AI-assisted patents, but questions remain. Newly issued guidance from the U.S. Patent and Trademark Office (USPTO) clarifies that an invention can be patented when artificial intelligence was used in its creation, a welcome development for IP attorneys and tech transfer programs that want to take advantage of the technology that is redefining so many industries.
• The coming impact of AI on technology transfer. Conversations about artificial intelligence (AI) among technology transfer professionals bring to the surface an array of emotions including fear, optimism, anxiety, curiosity and skepticism. These feelings are justified, but tech transfer professionals must proactively anticipate and respond to the coming impact of AI on innovation and technology transfer processes.
• ‘Bio on the Bayou’ grows from a solo university event to a regional showcase. How did a biotech marketing event that began as a one-day gathering sponsored by a single university grow in a few short years into a highly successful regional conclave that showcases the best of more than a dozen universities in the ‘Old South’ region?

The following is a list of the articles that appear in the March 2024 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 18, No. 3, March 2024

• Build a team to get a long-term handle on iEdison utilization reporting. The first reports responding to the new utilization requirements in iEdison are in the rear-view mirror. As many technology transfer offices no doubt discovered with that first filing, the task is complicated and laborious. But offices shouldn’t file the subject away until the next due date approaches in October. Now is the time to develop a solid plan for success utilizing a team effort to make it easier in the future.
• Heard in the Hallways: AUTM 2024. The 2024 annual AUTM meeting in San Diego was part celebration and part artificial intelligence learning lab, but as always with a whole lot of outstanding sessions and best practice mixed in covering the wide range of TTO challenges and opportunities.
• Life sciences start-up license template promises to ease negotiations. The group that previously created the US-BOLT Term Sheet Template has now provided a sample template of a full life science license agreement for use between a university and a biotech start-up. The template promises to help tech transfer programs get through some of the most common challenges in the negotiation process with less drama and frustration.
• Federal Demonstration Partnership looks to take the hassle out of DUAs. Data use agreements (DUAs), sometimes known as data transfer agreements, are demanding more and more attention from technology transfer offices as data repositories drive a growing number of innovations in the digital age. The biggest problem many TTOs have with DUAs is the sheer volume, and the time it takes staff to wade through and complete as well as log them.
• Approach to confidentiality with student researchers poses complex challenges. When you have student researchers working in university labs doing confidential work with commercialization potential, what’s the best approach in terms of assignment, NDAs, and the like? When it comes to TTOs, the answers to that question can vary quite a bit. When it comes to attorneys? Not so much.

The following is a list of the articles that appear in the February 2024 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 18, No. 2, February 2024

• To get more disclosures, double down on faculty outreach and communication. Maintaining good relationships with faculty is a key function of tech transfer, but the execution can be less than ideal when other tasks seem to dominate the limited staff time and energy available. Rededicating the tech transfer program to some fundamental — but often neglected — faculty relations strategies can result in more disclosures and better commercialization experiences for your key constituents — your researchers.
• TTO execs share their keys to successfully onboarding new TTO staff. There are many challenges facing TTO executives when bringing new staff members onboard, from training them in policies and procedures to helping them learn new systems and expectations in their new position. But maintaining continuity seems to rank at the top.
• ‘Founders at the University of Cambridge’ assembles powerful mentor network. Founders at the University of Cambridge, a new initiative focused on helping start-ups break into the market, features a massive mentorship cohort of 100 established entrepreneurial tech experts and a handful of corporate partners that, together, will offer the know-how and the large playing field the fledgling companies need.
• Guest Commentary: Solving the equity equation for university start-ups. Start-up compensation is often an opaque and awkward topic for first-time academic founders. How much equity do I receive? My CEO? The PI(s)? Other co-founders? How will my choices affect future compensation? The truth is, equity allotment is not a one-size-fits-all proposition.
• Redesign takes MIT’s TLO website to a new level of welcoming and fun. When Robyn Bunch assumed the title of communications and marketing manager for MIT’s Technology Licensing Office about three years ago, she already knew coming in what one of her first major goals would be. “Before I even started, I looked at the website,” she recalls. “I had zero experience in tech transfer, but I did have experience with websites, and when I saw ours, it was a bad user experience. I knew a redesign needed to happen.”
• Dutch company uses AI to spot academic research with commercialization potential. A Dutch company with an eagle eye for academic research with strong potential for commercialization is making its move in the world of higher education, leasing out its AI search tool to clients who can then view a highly curated list of scientific papers and abstracts that could ultimately spark the creation of spinouts and start-ups.

The following is a list of the articles that appear in the January 2024 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 18, No. 1, January 2024

• Growing PTIE coalition shows more TTO interest, but changes still slow in coming. The inclusion of commercialization, innovation, and entrepreneurship activities in promotion and tenure decisions has been promoted by some TTOs for quite a while now, but that trend has clearly gained momentum with the establishment and growth of a coalition called PTIE (Promotion & Tenure — Innovation & Entrepreneurship), which currently involves about 70 universities.
• Proposed ‘price’ criteria for march-in rights poses threat to U.S. innovation, critics say. In what’s being described as a potential doomsday scenario for U.S. innovation and tech transfer, President Joe Biden’s Interagency Working Group for Bayh-Dole is proposing that price be considered when exercising march-in rights for prescription drugs and other taxpayer-funded inventions.
• Terminating license may be the right move, but proceed carefully. Nearly every license agreement includes a stipulation that the license can be terminated if the licensee fails to get the technology commercialized or make substantial progress, but it can be a difficult decision for the university to exercise that option.
• Georgia Tech OTL ramps up social media marketing, boosts engagement. Social media can be a pivotal tool for university TTOs. It can offer a platform for effective and broad-based communication and showcase research breakthroughs, novel technologies, and cutting-edge inventions to a global audience. Posts on LinkedIn and other social media channels – when employed expertly and regularly — can serve as a catalyst for licensing, partnerships, and collaborations.
• Efforts progressing to head off Section 174 tax disaster. There are reasons to be hopeful that the untenable burden imposed on start-ups by the Section 174 fiasco could be alleviated, but any progress still depends on convincing legislators of the detrimental impact on innovation.
• ‘Commercialization Success Partners’ drive growth for reimagined TTO. About six months ago, Brad Phelan became assistant vice president for commercialization and business development at University of Texas Southwestern Medical Center. It was the latest uptick in a four-year tenure at UTSW that has been punctuated by a series of moves calculated to bring about big payoffs in tech transfer — starting with a change in the name itself.

The following is a list of the articles that appear in the December 2023 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 17, No. 12, December 2023

• In new model for university start-ups, shared carry funds offer big returns for UC Berkeley. For years, universities have benefitted financially from the performance of their start-ups through a standard set of options — fees, royalties, and in some cases by taking equity positions in those companies. Now, however, the University of California, Berkeley has demonstrated that a new model for academia — shared carry funds — offers another viable template for “sharing the wealth” generated by academic start-ups. The Berkeley Catalyst Fund, the first such vehicle, was launched in 2017. Today, the eighth fund is about to be launched.
• Joint ventures can be more lucrative than traditional licensing for TTOs. For universities willing to undertake a more detailed and substantive involvement with the commercial development of their IP, a joint venture can be a good option to consider, with the potential for significantly greater returns to the university compared with traditional licensing deals, says K. Lance Anderson, JD, member and deputy CEO with the law firm of Dickinson Wright in Austin, TX.
• UCSC builds innovation ecosystem through strategic approach, pooled efforts. The University of California Santa Cruz’s research impact has been on a strong upward trajectory, bolstered by a roughly 63% increase in extramural funding over the past five years, reaching more than $203 million in 2022. The campus innovation portfolio now includes more than 350 U.S. patents.
• Technology Readiness Level Scale: Is it useful for TTOs? The Technology Readiness Level (TRL) scale, first conceived at NASA in 1974 and formally defined in 1989, can hold great initial attraction for those seeking “scientific” guidelines for determining the progress of an innovation and its readiness for marketing or licensing. It has been widely adopted by DoD and several other government agencies, as well as some universities, sometimes with the organization modifying the scale based on its own specific needs and strategy.
• U of South Florida strategies bring 25% rise in invention disclosures. The University of South Florida has seen a sharp rise in the number of inventions and technologies submitted to the USF Tech Transfer Office. The number of new inventions, technologies and works of authorship formally disclosed by USF researchers is up nearly 25%.
• Donation brings $5M windfall to U Miami student entrepreneurship program. For most universities, the advancement office is the center of charitable giving and other departments, like TTOs and entrepreneurship programs, are often met with resistance when they try to garner donations directly for their programs. But that barrier may be preventing valuable contributions.

The following is a list of the articles that appear in the November 2023 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 17, No. 11, November 2023

• Faculty consulting can force TTOs into difficult decisions on asserting IP ownership. Faculty consulting with companies to help them design or improve products, or otherwise develop ideas that might become commercially viable, is common and can be a significant revenue stream for faculty members. World class experts in technology or medicine are frequently called upon by corporations, but how does a TTO handle these side deals that do not involve university licenses and formal agreements with the university?
• iEdison’s new utilization reporting coming due, and many TTOs are not ready. The deadline for responding to the new utilization requirements in iEdison is quickly approaching, and technology transfer offices may well be sweating the details.
• Harvard legal fight muddies the water over licensing and antitrust claims. Harvard University’s litigation with two biotech companies raises questions about the requirements for making federally funded innovations widely available to industry players and how to handle exclusive licenses to university start-ups.
• Only experienced founders need apply to ORNL’s ‘Safari’ start-up program. Oak Ridge National Laboratory (ORNL) has launched a new entrepreneurial startup program, called Safari, designed to connect entrepreneurs with “commercially relevant” technologies in the lab’s portfolio. However, this program is not for everyone: It’s only open to post-exit or serial entrepreneurs – a distinction that helps ensure the start-ups get the best chance at success, and something TTOs may wish to consider in their own start-up matching programs.
• U of Utah’s Master of Business Creation crafted for company founders. The University of Utah takes entrepreneurship education a big step further than most. Now in its fifth year, the university’s Master of Business Creation (MBC) is a unique program that helps students manage and grow the businesses they themselves have founded, rather than preparing them for management in a company founded by someone else, as is the case with a typical MBA.
• Inadvertent IP disclosures happen: Here’s how to handle them. It can happen — and it has happened — in the enthusiasm of wanting to tell others about one’s research and discoveries: As part of a presentation, or a poster session, or class notes, or a seminar, or an article, a professor or graduate assistant discloses some part of his or her work that is deemed essential to obtaining a future patent.

The following is a list of the articles that appear in the October 2023 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 17, No. 10, October 2023

• Cedars-Sinai start-up’s $11 billion exit shows the value of de-risking, market feedback. Every TTO dreams of a tech transfer ‘home run,’ but not many have duplicated the grand slam that Cedars-Sinai hit with the acquisition of its spin-off, Prometheus Biosciences, Inc., by pharma giant Merck, which resulted in a $10.8 billion transaction and nearly $1 billion to its TTO. Leaders at Cedars-Sinai credit the success to its innovative scientific and clinical teams, a unique TTO model, and a number of critical decisions made along the way.
• AI tools hold promise for efficiency gains in TTOs, but expect challenges. Artificial intelligence promises to revolutionize many industries, but whether for better or worse is still being determined. For tech transfer programs, however, there are clear signs that AI tools can offer substantial benefits in efficiency — if some significant challenges can be overcome.
• ASU’s innovative community incubator wants to serve 1,000 start-ups at a time. What if you had $275,000 in seed money for an innovation incubator intended to serve 1,000 aspiring entrepreneurs? How would you make it work?
• Innovative strategies can cut patent costs for TTOs and their start-ups. The high costs of patenting have long been a challenge for TTO leaders, but experts say there are a number of strategies that can make the process more cost effective. For example, attorneys at Kilpatrick Townsend & Stockton LLP recently focused on two in particular during a recent seminar. And while the presentation was entitled “A Cost-Effective Patent Strategy for Startups,” they assert that these recommendations are applicable to other TTO patent expenses as well as their start-ups.
• Lehigh Ventures Lab partners with local credit union for start-up loans. Lehigh Ventures Lab, Lehigh University’s business incubator, is piloting a partnership with People First Federal Credit to commit $600,000 per year for start-up loans to faculty and student founders who satisfactorily complete all the growth milestones. The executive director of the Baker Institute for Entrepreneurship formed the relationship with the credit union, which was looking to support early-stage businesses.
• U Michigan’s Accelerate Blue Fund brings big returns in follow-on investments. The University of Michigan (U-M) is not the only university out there that has an internal venture fund, but there is something about this one that has investors talking. The Accelerate Blue Fund (ABF) is an early-stage venture fund that is solely focused on start-ups that are commercializing licensed IP and research resulting from U-M’s 19 schools and three campuses. It’s managed by U-M’s Innovation Partnerships office, the main portal for commercialization activity.

The following is a list of the articles that appear in the September 2023 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 17, No. 9, September 2023

• Data licensing opportunities abound, but deals are not without challenges. It appears, at first glance, like a no-brainer: Universities, particularly those with affiliated health care centers and organizations, have virtually immeasurable stores of data — the kind of data that companies in the forefront of areas like AI, machine learning and quantum computing would love to have. It seems like an obvious source of significant potential licensing revenue.
• Don’t undervalue or under-protect your data for use in AI systems. Artificial intelligence is making its way into virtually every industry, and tech transfer programs are finding opportunities to work with AI both as developers and as owners of data and other IP that might be joined with AI systems to make something new. But this exciting new frontier brings with it questions and challenges about how to manage co-developed innovations and address all the facets of licensing and commercialization that are more familiar in other areas.
• Executive Order on domestic manufacturing brings both relief and concern for TTOs. The Biden administration’s long-rumored Executive Order on “Federal Research and Development in Support of Domestic Manufacturing and United States Jobs” landed in late July, and while laudable in its intent, there is little indication of how it will actually affect technology transfer offices, observers say. Most are just relieved it didn’t follow in the footsteps of what has been described as the “deeply flawed” DOE policy.
• Syracuse U brings together law school and TTO to boost commercialization. A new partnership between the Office of Technology Transfer (OTT), which is housed in the Office of Research at Syracuse University (SU), and the Innovation Law Center (ILC), which is housed in the SU College of Law, is something of a poster child for collaboration. Last year, the two entities got together to test out a pilot program and, so far, it looks like it’s here to stay.
• Pitt makes internal IP portal more accessible and streamlines disclosure forms. As part of its ongoing commitment to better serve its internal customers, The Innovation Institute, an operating unit of the University of Pittsburgh’s Office of Innovation and Entrepreneurship, has made access to its portal for handling intellectual property management, licensing, and start-up company creation much simpler, while implementing several changes to its disclosure form in an effort to offer a more user-friendly tool. The changes took effect on July 17.

The following is a list of the articles that appear in the August 2023 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 17, No. 8, August 2023

• Lost gold in your portfolio? Forgotten patents can yield infringement revenue. Every TTO has files full of patents that never proved particularly successful and were eventually forgotten as the program focused on newer IP with more promise. But experts say it can be worthwhile to audit those older patents for potential infringement and turn them into new sources of revenue with an assertion strategy that can often lead to licenses and settlements.
• FSU ‘Fast Start’ program offers favorable terms and six-month free option. Florida State University recently launched a licensing program called Fast Start, a “streamlined” license process with favorable terms for FSU start-ups. As part of this program, the FSU Research Foundation (FSURF) “will grant an exclusive option (at no cost) to license the identified intellectual property for up to six months to allow the start-up company to develop a business plan and outline commercially reasonable diligence milestones.”
• Licensee welcome package helps drive 90% collection rate at NIH. The National Institutes of Health Office of Technology Transfer is achieving a 90% collection rate on average from licensees, and they attribute much of their success to a “welcome package” that provides everything the licensee needs to make required payments.
• Northwestern’s FoundHer Fellows program narrows the gender gap. The data speaks volumes about the gender gap in research commercialization and entrepreneurship. Take, for example, a 2017 study by Osage University Partners revealing that only 11% of university start-ups had a woman scientific founder or co-founder. Or more recent data from PitchBook, which shows that women-founded startups received just 1.9% of all VC funds last year. A new program at Northwestern University is aiming to do something about it.
• U Vermont taps undergrads to help its small TTO get more technology to market. Smaller tech transfer offices that struggle to devote enough time and resources to launching start-ups may want to take a page out of a new playbook being rolled out at the University of Vermont. In fact, the strategy being employed there — a novel approach utilizing undergraduates to commercialize research discoveries — could be an effective add-on for any TTO.
• To teach start-up founders, adapt these principles from Wake Forest guru’s model. A browse through Wake Forest University’s top-rated Center for Entrepreneurship website prompts a deluge of Wake grads’ business success stories across a wide array of products and services.

The following is a list of the articles that appear in the July 2023 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 17, No. 7, July 2023

• Adjusting faculty royalty shares can assist with recruiting, retention. The way royalty shares are split — particularly the faculty share — can be a critical factor in the success of a commercialization program, but there is no single right way to slice up the pie. Still, experts say the policy your university employs can make your campus attractive to desirable faculty, but it can also encourage them to look elsewhere for a better deal.
• Purdue and Indiana U reorganize their innovation activity into ‘umbrella’ offices. A number of leading universities have been consolidating existing units into larger “umbrella” organizations in an effort to optimize commercialization of their innovations. In many of these cases, their TTOs have taken on more prominent roles, expanding their staff and often the services they provide — particularly to other internal stakeholders. Two major Indiana-based universities have recently adopted this model to focus more heavily and, they say, more efficiently, on tech transfer, start-ups, and student entrepreneurship.
• A critical relationship opens up a global network for Baptist Health Innovations. Triventures, a global, early-stage venture capital firm, has offices in Israel and Silicon Valley. It boasts a global footprint and an established international network of top-tier strategic corporate limited partners, including the world’s leading health systems and companies, finance groups, consumer electronics enterprises, insurance companies, and telecommunication groups.
• UConn’s TTO expands its footprint by collaborating with engineering ‘eHub.’ One of the common drawbacks of being a small technology transfer office is that the staff has little time to focus on anything but its core role in shepherding faculty innovations. For many small TTOs, the rest of the campus community is rarely addressed or only “when I have time,” meaning not often. That means potentially ignoring engagement with student entrepreneurs or faculty who aren’t pursuing commercialization because the process is unfamiliar or mysterious.
• NC State looks to make the most of $900K gift to support commercialization efforts. A recent gift of $900,000 to North Carolina State University (NC State) is earmarked specifically to boost tech transfer and innovation activity at the school, and its genesis holds lessons for TTOs looking to attract philanthropic dollars to support their programs.

The following is a list of the articles that appear in the June 2023 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 17, No. 6, June 2023

• Purdue nets $100M in royalty monetization deal, shares its decision-making process. Purdue Research Foundation gained the attention of the tech transfer community recently with its $100 million-plus deal to monetize royalties on a cancer drug, and the long path to that accomplishment holds lessons for others who want to pursue such a windfall.
• Much to ponder when considering whether to launch IP litigation. The decision as to whether to go to court to protect your IP is rarely cut and dried, argued a panel of experts at the recent AUTM 2023 annual convention, and it’s important to consider a number of factors so that you can make a powerful case to administration on the need to move forward.
• Tech Launch Arizona co-locates licensing staff in IP-producing units. Every TTO understands the need to stay close to areas that could produce intellectual property for potential commercialization. Tech Launch Arizona (TLA) at the University of Arizona takes that concept as far as it can, embedding most of its licensing managers within various IP-producing units.
• CU-Boulder brings in outside entrepreneurs to take on deep tech orphans. Too many innovations with high potential — particularly those requiring major investments and long development timelines, which can also bring the greatest societal benefits — never make that transition due to the lack of interest on the part of the inventor to create and run a start-up. To bridge that gap, CU Boulder has developed the Embark Deep Tech Startup Creator to provide an alternate mechanism for forming a new business
• Advisory boards bring solid benefits with the right makeup and TTO support. While many TTOs have internal advisory boards or committees, external boards that focus strictly on assisting with commercialization efforts are a bit more of a unicorn.
• Denmark’s Open Entrepreneurship program: A model to emulate? Eight Danish universities have been collaborating in a commercialization model they call Open Entrepreneurship (OE), working across and beyond university boundaries to turn world-class research into industry-leading spinouts.

The following is a list of the articles that appear in the May 2023 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 17, No. 5, May 2023

• Focus on start-up readiness prior to inking a license agreement and improve chances of success. A common challenge for tech transfer leaders is dealing with faculty start-ups that may have a great idea but not much more. They may lack a solid business plan, have little experience in venture-building, don’t have investor interest, and lack a credible CEO or leadership team. Yet they want to license “their” IP from the university — a move that the TTO suspects will lead nowhere, at least at such an early stage and without considerable development.
• Problematic tax law change could devastate start-ups as groups push for deferral. A recent change to tax law that could have a devastating impact on university start-ups could be deferred if Congress listens to the pleas of TTOs and the research community, but companies should still plan for the impact.
• Priority review vouchers: A potential windfall for TTOs when negotiated into license. More than 15 years ago, Congress created a way to incentivize development of drugs designed to treat neglected diseases that affect mainly developing countries. Those who did so would win a prize: a voucher that could be used to get priority review from the Food and Drug Administration (FDA) for a different drug — for example, one that might have the potential to become a blockbuster.
• Texas State experiments with paying faculty for invention disclosures. What would happen if universities paid their faculty to disclose innovations? Texas State University (TXST) is finding out. Its pay for disclosures program is still in its infancy, but based on early returns it looks like the idea will pay off in spades for the small TTO.
• ASU launches equity crowdfunding pilot as part of start-up funding strategy. For the first time, ownership stakes in Arizona State University (ASU) start-ups will be available to all through equity crowdfunding. Currently, in its pilot phase, ASU’s equity crowdfunding is just one piece of the funding support network for early-stage companies at ASU, but its one that’s touching on many different parts of the pipeline.
• NIH grant funds U New Mexico effort to train other universities in tech transfer. Technology transfer is inherently local. What works for one tech transfer office doesn’t always work for another TTO, and even when it does work, sometimes significant adaptations must be made to fit the commercialization ecosystem at that TTO’s university.