Tech Transfer eNews Blog

‘Go-in-Peace’ license can help smooth feathers when returning IP to faculty


By Jesse Schwartz
Published: July 22nd, 2020

A detailed article on the use of “go-in-peace” licenses for return of IP rights to faculty appears in the July issue of Technology Transfer Tactics. For subscription information and to access the full article, along with 13+ years of archived best practices and success strategies for TTOs, click here.

When a TTO decides not to pursue an invention or patent it, the faculty inventor may want rights to the IP. But how to make that transfer can be a difficult proposition.

One approach used by some TTOs is the “go-in-peace” license, in which the university licenses the IP back to the faculty member who wants to pursue commercialization. Terms are typically simplified, with a minimal or no upfront and a small royalty if the IP ever makes it to the marketplace.

The license is most appropriate when there has been no patent yet, says Daniel Catron, executive director at Allele Biotechnology & Pharmaceuticals in San Diego, CA. He previously served as executive director of the TTO at the Scintillon Institute in San Diego. Prior to that he worked in tech transfer at the Scripps Research Institute and the University of Miami, and he used the go-in-peace license at both.

“The go-in-peace license has minimal terms because we put in minimal work. We give them the market analysis and a license template,” Catron says. “We tell them to take that and go to work on their ideas.”

The typical terms of a go-in-peace license, Catron says, are in the ballpark of $1,000 up front and a 1% royalty if no patents have been filed. Those terms can be scaled to cover the TTO’s prior investments, such as recovery of patent costs. The costs in the license might also escalate if the faculty inventor decides to get attorneys involved in negotiations, he says.

Catron began to see the appeal of this type of license in his previous TTO positions. “We were getting a lot of disclosures in that were not cutting the mustard, didn’t have enough enabling data to support a patent,” Catron says. “We wanted to get away from the faculty’s assumption that if they gave us a disclosure and we didn’t act on it, they wanted to have it back immediately. There’s always that chorus of ‘release to us now!’”

Before adopting the go-in-peace license, the TTO would respond to faculty requests for return of their IP rights by issuing a release letter with terms the inventors had agreed to as part of their employment, but the faculty would say they could not afford the royalty rate of 5% to 20% of top line revenue, not just net sales, Catron says.

“They would be up in arms about how they can’t afford this, but my hands were tied. That was the release letter they agreed to and I couldn’t go back and renegotiate release letters,” Catron says. “So I said why not just do away with the whole thing? MIT had come up with this idea of the [go-in-peace] license for faculty, and since they practically invented tech transfer we figured they knew what they were doing.”

Catron implemented the idea at the University of Miami and found that it spurred faculty to provide more disclosures. “Release letters said the technology was released as it was disclosed at that point, and that’s it. But if it’s going to be licensed out to someone, they want to make sure they cram as much as they possibly can into that, so that they get as much out of the license as they can,” Catron explains. “The go-in-peace license makes sure that the disclosures you get are fully realized, with all the enabling data, and [faculty] can take a real license to a potential backer.”

Click here to read the complete story and gain access to a searchable archive of similar articles.

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Stanford start-up emerges from stealth with $15M to help companies harness AI


By Jesse Schwartz
Published: July 22nd, 2020

A Stanford University start-up that aims to make AI more accessible has launched out of stealth with $15 million in funding. continue reading »

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Encore event: Data Licensing and Privacy Protection Workshop for University TTOs


By Jesse Schwartz
Published: July 22nd, 2020

Data is fast becoming one of the hottest topics in university licensing — particularly with AI-related innovations and other research projects that rely on huge data sets. Universities — especially those with affiliated health systems — are putting skin in the game, but there are big issues with the legalities of using even blinded clinical data, images, and health records.

With a myriad of laws relating to consent and privacy to be navigated, as well as issues related to the rights of the licensee, how royalties are distributed, and more, Tech Transfer Central’s Distance Learning Division recently hosted two data licensing and privacy experts to lead this  webinar: Data Licensing and Privacy Protection Workshop for University TTOs.

Based on a high level of continuing interest and the high marks received from attendees of the original live program, we’re hosting an encore presentation of the entire session, including all powerpoints, both in a repeat airing on August 26th and in the on-demand video you’ll receive upon registration. It’s an outstanding opportunity to share the program with your entire staff for at-home learning.

For complete program and faculty details or to register, click here.

Also coming soon:

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Colorado State researchers rework a paper-based viral RNA test to diagnose COVID-19


By Jesse Schwartz
Published: July 22nd, 2020

Researchers at Colorado State University (CSU) have entered into a licensing agreement with Quara Devices to commercialize a viral RNA-testing platform to diagnose COVID-19. continue reading »

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U of Kentucky partners with Launch Blue to expand support program for university innovators


By Jesse Schwartz
Published: July 22nd, 2020

The University of Kentucky (UK) Office of Technology Commercialization (OTC) is partnering with regional start-up accelerator Launch Blue to help Kentucky innovators interact and learn from each other’s experiences as entrepreneurs.

UK and Launch Blue are enhancing the school’s UKAccel program to include other Kentucky universities. Renamed UAccel, the program will provide biweekly cohort meetings in which all innovators can interact. There will also be individual biweekly coaching sessions to provide more individualized coaching and assistance.

UK researchers can benefit from UAccel by receiving support in Small Business Innovation Research (SBIR) grant applications, start-up formation, or technology licensing.

According to Taunya Phillips at OTC, one of the key features of the program is that it guides researchers through the process of engaging with potential customers.

“Learning how to do customer discovery is a game changer for an innovator or start-up trying to commercialize a technology,” says Phillips, who is the senior associate director for OTC’s New Ventures & Alliances team. “They will never approach their research or products the same way again. Customer discovery is a key part of the overall Launch Blue program that we are very excited to offer to the UK community through UKAccel.”

Laura Hallian, executive director at Launch Blue, comments, “Launch Blue is excited to partner with UK OTC and Kentucky institutions of higher learning from across the state to offer the UAccel program. The curriculum and personalized coaching offered through the program will help innovators to develop a commercialization pathway for their technology that positions them for long term success.”

Source: UK Now

The all-new World Benchmark Report 2019/2020: Data, Insights, and Best Practices from Business Incubators and Accelerators features best practices and performance data from 364 of the world’s top programs incubators and accelerators. Click here for complete details.

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Research England funds two UK programs to boost tech transfer and innovation


By Jesse Schwartz
Published: July 22nd, 2020

Research England, the university tech transfer arm of UK Research and Innovation, has awarded two grants totaling £1.5 million to boost innovation and entrepreneurship at universities in the UK and beyond. continue reading »

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U of Maryland-Baltimore start-up licenses decision-making support system for health care workers


By Jesse Schwartz
Published: July 22nd, 2020

A University of Maryland-Baltimore (UMB) start-up has developed a system that combines AI with traditional methods to arm healthcare professionals with the best data to provide personalized treatment trajectories for their patients. continue reading »

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Student Innovation: Tapping Into the Gold Mine of On-Campus Talent


By Jesse Schwartz
Published: July 22nd, 2020

Student Innovation: Tapping Into the Gold Mine of On-Campus Talent is a valuable distance learning collection featuring two fascinating case studies of student innovation strategies in action.

Program One focuses on the University of Illinois-Urbana Champaign’s iVenture Accelerators, while Program Two spotlights the USC Stevens Center for Innovation. These practical, how-to programs will provide proven ideas and strategies for building out the student innovation ecosystem, and ultimately getting more start-ups launched and more students engaged with your office. Click here for complete details.

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Northwestern U start-up wins Nature journal prize for premature baby monitoring device


By Jesse Schwartz
Published: July 22nd, 2020

A start-up from Northwestern University has received the Spinoff Prize, a new international award from the journal Nature, for its wireless sensor system that monitors premature babies. continue reading »

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Leverage your TTO’s database to create impactful technology marketing reports


By Jesse Schwartz
Published: July 15th, 2020

A guest column with detailed guidance on creating technology marketing reports from your TTO’s database – including sample reports and specific guidance – appears in the June issue of Technology Transfer Tactics. The column was authored by Jacob Lissoos, Business Development Associate in the University of Chicago’ Polsky Center for Entrepreneurship and Innovation, and Khera Douglass, consultant with KLD Enterprises LLC in Phoenix, AZ. To subscribe and access the full article, along with the publication’s 13-year archive of best practices and success strategies for TTOs, click here.  

Industry-specific feedback on early stage technologies is critical to technology transfer offices in informing patenting strategy, providing feedback to inventors, and nominating technologies for further de-risking. Many offices recognize the value of this information and have formed marketing teams and internship programs specifically tasked with sourcing industry feedback.

At the same time, TTOs have a surplus of unlicensed technologies. The 2017 AUTM data shows that among all reporting institutions, there were 3.2 times more patent applications filed in a given year than licenses and options issued. Therefore, it would be bandwidth-prohibitive for a TTO marketing team to execute technology marketing campaigns on every elected technology. However, using a data-driven and metrics-based approach can increase the efficiency of TTO tech marketing programs, allowing for more of these technologies to be marketed.

To implement a system and process for leveraging data in technology marketing, start to build out your marketing analytics platform by establishing a list of questions you want answered with that data to ensure you have a targeted approach. These questions will likely revolve around the two main goals of technology marketing: converting leads to deals and sourcing industry feedback. Examples of questions include:

  • What is the engagement level of industry around this technology?
  • How does industry engagement around this specific technology compare to others the office has marketed in the past?
  • What specific industry sectors are most interested in this technology?
  • What type of feedback was provided on this technology and how can I use that feedback to make this asset more attractive to potential licensees?

Building out a customer relationship management system (CRM) will allow you to capture marketing data in a streamlined manner. While some offices think using third-party CRMs, such as Salesforce or Hubspot, is necessary to effectively collect and store this marketing data, both Wellspring/Sophia and Inteum have customization capabilities through user-defined fields. This allows the user to add custom dropdown menus, checklists, and date menus within the marketing module. Not only does this save money, but it allows for effective linking and interconnected data collection within technology records and patents.

For example: a dropdown menu or checkboxes within a contact record can be used to track the source of the lead; a checklist under e-mail correspondence can capture the specific type of feedback provided; a date menu can be used to mark where a given lead is within the overall marketing process.

A well-designed CRM system enables the user to both organize workflow on the front end and analyze aggregate data on the back end. The system design must balance these two functionalities — a system that overemphasizes data aggregation could have a cluttered front end interface that reduces office-wide compliance. TTOs should consider prioritizing the most essential data to collect and running usability testing with those who will be working with the system the most. Consistent data management around the new CRM process is also important to ensure data integrity.

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U of Houston researchers develop air filter that kills SARS-CoV-2 instantly


By Jesse Schwartz
Published: July 15th, 2020

Researchers at the University of Houston (UH), in partnership with others, have developed a “catch and kill” air filter that can trap SARS-CoV-2, destroying it instantly. continue reading »

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Budget and Productivity Hacks for University TTOs


By Jesse Schwartz
Published: July 15th, 2020

At universities across the globe, the purse strings are tighter than ever – and tech transfer offices are feeling it. Many TTOs report being busier than ever as technologies related to COVID-19 pour in, but staff and budget dollars are likely to decline, while expectations from administration are not likely to see a similar reduction.

Tech transfer professionals are a determined and innovative bunch, and they’ll need every bit of that ingenuity to keep up with disclosures, tech assessments, patents, licensing negotiations, start-up support, marketing and outreach, and the myriad tasks that make up a busy TTO’s days.

It will take some creative “hacks” to boost productivity and squeeze every drop out of your budget.

To help guide you, we’ve teamed up with TTO directors from two distinctly different offices to share their plans and strategies for getting the job done — and done well — with fewer resources. Please join Andrew R.O. Watson, PhD, CLP, Senior Director of OHSU Technology Transfer, and H. Victoria Bryant, Director of the Wyoming Technology Transfer and Research Products Center at the University of Wyoming, for this strategy-filled webinar: Budget and Productivity Hacks for University TTOs, scheduled for next Wednesday, July 22nd.

Click here for complete details and to register.

Also coming soon:

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