Tech Transfer Central

Direct Billing for Licensee Patent Expenses: Save Time and Gain Efficiency for your TTO

Format: On-Demand Video/Transcript, or DVD
Originally presented: Thursday, January 27, 2022
Price: $197
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“Time is money” as the old adage goes. And that certainly applies when referring to the time TTOs spend acting as an intermediary between their licensees and law firms to manage the billing process for patents and other IP-related matters. Putting the TTO in the middle of this process — as most do — comes with an average of more than 10 touch points per invoice from submission through to payment. That means hours and hours of staff time spent tracking payment status, following up, forwarding, responding to and re-issuing invoices, and logging payments.

There is a rather simple solution: Direct billing. A growing number of TTOs — including Texas Tech University — are making huge efficiency gains by adopting a direct billing system, and it’s being embraced by their law firms and licensees alike.

But it takes a little time and a big dose of communication and planning to gain buy-in and make the switch without losing appropriate controls.

To show you how using a real-world example, Tech Transfer Central has scheduled this practical distance learning session featuring Texas Tech’s Commercialization Director Cameron Smith and the attorney he partnered with in the direct billing effort, K. Lance Anderson of the Austin, TX, office of Dickinson Wright.  

Direct Billing for Licensee Patent Expenses

During this one-hour program, our team of presenters will detail how Texas Tech created a direct billing system while continuing to support both licensees and the law firm — and saved hundreds of staff hours in the process. Here’s a brief look at the agenda:

  • Understanding direct billing — benefits and potential drawbacks
  • Handling pushback from licensees and licensors
  • How direct billing can affect state vendor contracts
  • Gaining buy-in from your finance department and staff
  • How to be “hands-off” but not “knowledge-free” of the invoice’s lifespan
  • Communication tips to ensure licensee compliance
  • Best practices for evaluating your current billing system and incorporating a direct billing system on a case-by-case basis
  • Lessons learned along the way

Meet your session leaders:

Cameron SmithCameron Smith
Commercialization Director
Texas Tech University
Office of Research Commercialization

As the director of the office, Cameron oversees the intellectual property portfolio, actively managing the filing and prosecution of patent applications through outside counsel. He also approves and executes new license agreements as well as manages both the IP and office budgets. He is a licensed Patent Attorney with experience in intellectual property asset protection and management and is a Certified Licensing Professional with technology transfer and licensing expertise.

Cameron works to guide System inventors to both patentable and marketable aspects of their research in both the life sciences and engineering. With experience in private practice as well as in-house, he is a valuable resource for faculty and students with questions about the patenting and commercialization process. The focus of Cameron’s work revolves around bridging the gap between industry and academia by first identifying and protecting intellectual assets within the System, and then negotiating and executing commercialization agreements to bring the invention to market, ultimately generating revenue back the inventor and the institution.

Cameron frequently guest lectures to classes across the TTU System. He has also developed and teaches a Patents, Innovation, and Science Policy semester-long course within the Texas Tech Honors College, as well as serves in an adjunct role to the Masters in Biotechnology program at the TTU Health Sciences Center, teaching the cohort on Patent Law and Entrepreneurship.

K Lance AndersonLance Anderson
Member and Deputy CEO
Dickinson Wright, PLLC

Lance Anderson has extensive experience preparing and negotiating technology and intellectual property-focused transactions, as well as technology aspects of mergers and acquisitions, joint ventures, and other complex commercial transactions. A registered patent attorney, Mr. Anderson also conducts patent prosecution, due diligence for licensing and acquisitions, technology agreements, strategic planning, trade secrets, employment mobility, and related operational legal issues.

Prior to private practice, Lance served for over ten years as in-house counsel and lead intellectual property attorney for both a large public research university system and an early-stage venture capital company, overseeing all facets of intellectual property development, management, and transactions. His experience and background contribute to skill sets applicable to technology transfer and emerging technology.

Lance represents universities, foundations, and start-up clients within the innovation and research enterprise, including with regard to licensing, R&D, policy development, clinical and regulatory matters, strategic collaborations, CRADAs, manufacturing, distribution, engineering services, institutional technology transfer, confidentiality and materials exchange, and related strategic alliances. In addition to representing clients on intellectual property issues, he has been involved in many aspects of corporate law, operations, venture financing, and litigation.

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