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Technology Transfer Tactics, April 2021


Technology Transfer Tactics, April IssueThe following is a list of the articles that appear in the April 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 4, April 2021

AUTM 2021 Annual meeting coverage

This issue features several articles from the 2021 AUTM Annual Meeting, held virtually this year. Coverage begins on page 52, with articles on express licensing strategies, the top mistakes made in patent license agreements, and tactics for encouraging more diversity in university commercialization activity.

  • U Georgia’s new start-up license offers speed and favorable terms in two-phase approach. The University of Georgia’s Innovation Gateway is offering a new “Georgia Startup License” combining technical assistance with a streamlined technology licensing process that offers preferred terms. But in a new twist on the express licensing concept, the start-ups must meet certain criteria to qualify for the deal.
  • Universities offer best practices for fast start-up license packages. Favorable deal terms and business development support were the focus in a discussion of best practices for quick start-up license packages at the 2021 AUTM annual meeting.
  • Attorney outlines top mistakes in patent licensing and how to prevent them. During his 34-year legal career focused on technology transfer and licensing practices, Russell Levine has seen a lot. A partner in the firm of Kirkland & Ellis LLP, he’s widely recognized as an expert in his field. So, his message resonated when he spoke at this year’s virtual AUTM conference about mistakes commonly made when drafting and negotiating patent license agreements.
  • Driving diversity and inclusion: Moving from rhetoric to reality. Many tech transfer programs improve equality, diversity, and inclusion (EDI) in their commercialization activity but may be at a loss as to what strategies or programs will best help them achieve this goal. The Driving Diversity and Inclusion for a More Successful Innovation Strategy session at the AUTM 2021 Annual Meeting provided some answers. Panelists shared specific tips for overcoming roadblocks and turning the desire for EDI into reality.
  • Summit Venture Studio solves software accelerator challenges. When Peter Djokovich and Taylor Bench met at the University of Utah’s Partners for Innovation, Ventures, Outreach & Technology (PIVOT) Center, they quickly realized they had a common interest at heart — to accelerate the commercialization of software solutions created at Utah universities. Together they launched Summit Venture Studio, which provides capital and talent to develop, launch, and scale university software start-ups rapidly and efficiently.

Posted April 13th, 2021

Technology Transfer Tactics, March 2021 Issue


Technology Transfer Tactics, March 2021 IssueThe following is a list of the articles that appear in the March 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 3, March 2021

  • Newly formed UTLP aims to streamline tech licensing by pooling patents. Fifteen leading research universities have come together to create a licensing pool that they hope will encourage innovation by making intellectual property more available to potential licensees and streamlining the tech transfer process for the schools.
  • NIST nears final stretch in changes to Bayh-Dole regulations. The National Institute of Standards and Technology (NIST) is preparing to enter the final phase of considering proposed changes to regulations that support the University and Small Business Patent Procedures Act of 1980, commonly known as the Bayh-Dole Act.
  • Oxford develops an internal methodology for rating ‘suitability’ of licensees. Licensing IP is never without risks — not the least of which involve the licensees themselves. Will they pay on time? Will they accurately follow the development plan? How good is their reporting? Will the two of you develop a positive working relationship?
  • Sweat Equity Challenge attracts software start-ups for NC State. Along with the ongoing challenge to generate invention disclosures from faculty comes the old maxim “be careful what you wish for.” In many cases when disclosures are received, the ideas are not fully conceived or validated enough to warrant allocation of the TTO’s limited resources. And even when the IP is well described, it often arrives with little knowledge of the target market or validation of the market need.
  • Princeton’s innovation ‘czar’ brings new life to campus entrepreneurship. What can an innovation “czar” accomplish in one year? At Princeton University, a lot, as it turns out.

Posted March 15th, 2021

Technology Transfer Tactics, February 2021 Issue


Technology Transfer Tactics, February 2021 IssueThe following is a list of the articles that appear in the February 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 2, February 2021

  • Negotiating VC terms doesn’t have to be a long, contentious affair. Venture capitalists and tech transfer programs should be closely aligned, since their goals are so complimentary, but that is not always the case when it comes to drafting agreements for life science start-ups. That process can lead to negotiations that are longer and more complicated than necessary, and it sometimes even gets testy between parties who should be eager to work cooperatively.
  • U Washington launches express licensing process to ease faculty frustration. The University of Washington’s CoMotion — the school’s tech transfer office — has formally launched Husky FAST Start, a licensing process designed to ease the frustrations of researchers and speed start-up license negotiations.
  • Legal Consult: Litigation funding as a resource for university patent enforcement. In recent years, a small but growing number of academic institutions have undertaken efforts to directly assert their patent rights through litigation.
  • TenU, a trans-Atlantic TTO collaboration, seeks to spread best practices. Earlier this year, a group of ten university technology transfer offices in the United Kingdom, the United States and Belgium announced a trans-Atlantic collaboration project known as TenU. The effort is still in the start-up phase, but its goals are nonetheless ambitious: to leverage the institutions’ combined knowledge on how best to use cutting-edge research outcomes to tackle global challenges.
  • Avoid “exhaustion” of related patents with careful drafting and licensing. It’s the TTO’s job to protect intellectual property while moving inventions into the marketplace, but you may not be protecting it enough.
  • U Arkansas adds tech transfer to factors considered in tenure decisions. The University of Arkansas system will now factor tech transfer achievements into tenure consideration, though it may take some time to achieve the desired results.
  • Penn State’s ‘ENtern­’ program seeks to foster future entrepreneurs. The path to commercialization can be exciting and harrowing, particularly when a technology transfer office’s efforts to bring an idea or invention to the marketplace involves spin-outs that raise venture capital to fund that commercialization.

Posted February 11th, 2021

Technology Transfer Tactics, January 2021 Issue


Technology Transfer Tactics, January 2021 IssueThe following is a list of the articles that appear in the January 2021 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 15, No. 1, January 2021

  • $32 million award in Washington U dispute with WARF holds important lessons. Trust is important in any relationship, but too much can lead to one party being woefully uninformed about financial matters — so much so that it costs them tens of millions in royalties. That seems to be what happened in a research and licensing deal between Washington University in St. Louis and the Wisconsin Alumni Research Foundation (WARF), which was recently adjudicated after WUSTL sued WARF for severely understating its share of an invention’s proceeds.
  • TTOs making extra effort to educate licensees and smooth license negotiations. A large number of university TTOs have crafted agreement templates, or express licenses, to help ease negotiations and speed up the licensing process, and they have been welcomed by potential licensees. But even these efforts can fall short when it comes to preparing a licensing partner for what to expect.
  • Guest Column: A plethora of data, but a dearth of data policies. While many universities have adapted their IP policies to account for software and other copyrightable innovations, a recent informal survey has illustrated a divide among research institutions on how data is treated, with much variation in how published IP policies cover data.
  • UCR experiments with “Giving Tuesday” campaign to fund innovation programs. Founded in 2012, “Giving Tuesday” was created to balance two days devoted to holiday shopping (Black Friday and Cyber Monday) with a single day dedicated to giving and volunteering. And, while a fundraising solicitation tied to “Giving Tuesday” is not all that unusual, one that’s specifically targeted to raising funds for university innovation and entrepreneurship programs is something a bit different.
  • Student-run VC teaches investing while boosting VC access for minority founders. Although entrepreneurship has become a common element of many college curriculums, the venture capital (VC) side of the equation is not often covered in depth. Students in entrepreneurship programs sometimes are left with a vague idea of how a start-up raises capital or how investors decide where to place their bets.
  • Emory uses simple method to reach potential investors and licensees. Emory University in Atlanta is using a no-cost, low effort way keep potential investors and licensees aware of intellectual property that may interest them. Other tech transfer offices may have the same ability within database software they already use.

Posted January 15th, 2021

Technology Transfer Tactics, December 2020 Issue


Technology Transfer Tactics, December 2020 IssueThe following is a list of the articles that appear in the December 2020 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 14, No. 12, December 2020

  • Ohio IP Promise forges ahead after successful first year of statewide tech transfer collaboration. One of the sure signs that a new initiative has proven successful in its initial stages is how rapidly and how strongly it moves ahead into new areas of growth. Based on that standard, the Ohio IP Promise program has passed with flying colors.
  • Johns Hopkins creates new role to usher life science technologies forward. In a large, busy tech transfer office like Johns Hopkins Technology Ventures, which handles 500 invention disclosures a year, making sure promising assets get the attention they deserve is a significant challenge — and it’s a potentially life-saving challenge when it comes to life sciences innovations. To ensure none of those potential life-savers languish unattended, the university created a new director of life science technology development position.
  • Take steps to avoid traps and pitfalls in faculty consulting agreements. Faculty consulting agreements are full of potentially serious issues involving conflicts of interest, legal liability, and ethical considerations. Unfortunately, the faculty entering into these agreements are often inexperienced with such matters and can find themselves embroiled in serious consequences down the road.
  • Modeling technology transfer income reveals significance of IP portfolio selection. Some technology transfer professionals posit that a TTO achieving a financial return is similar to winning the lottery — a matter of luck. But little effort has been made in trying to understand the underpinnings of income generated by TTOs.
  • Indiana U creates new “Catalyst Medal” to reward innovative faculty. As Indiana celebrated its bicentennial this year, the Office of the Vice President for Research and the IU Innovation and Commercialization Office combined efforts to create the Wylie Innovation Catalyst Medal. It celebrates the university’s longstanding legacy of innovation and the IU inventors who have an impact on the lives of others through their trailblazing discoveries.

Posted December 16th, 2020

Technology Transfer Tactics, November 2020 Issue


Technology Transfer Tactics, November 2020 IssueThe following is a list of the articles that appear in the November 2020 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 14, No. 11, November 2020

  • Tenure criteria incorporating innovation activity move forward with new PTIE recommendations. Recommendations for incorporating innovation and entrepreneurship into university promotion and tenure criteria, delivered recently from a group convened by the National Science Foundation (NSF), appear to be the most significant and organized effort so far to making this change in how academia sees the advancement of faculty who are involved in commercialization activity.
  • Bio I-Corps tackles lack of diversity in pharma and biotech entrepreneurship. Biotech and pharma have a diversity issue, and they know it. In January 2020, the Biotechnology Innovation Organization (BIO) released the report, “Measuring Diversity in the Biotech Industry: Building an Inclusive Workforce,” which assesses the progress that 100 biotech companies have made towards diversity of gender, race and ethnicity.
  • New virtual incubator puts all the pieces together to speed therapies to market. It was both the need and opportunity to provide funding and resources to very early stage research that prompted the formation of a new virtual incubator — Autobahn Labs. The incubator is using a new and comprehensive model of support for early-stage drug innovations, combining a typical incubator’s help with VC deep pockets and a pharma company’s deep expertise. And it’s partnering with university TTOs to gain access to their most promising pharma innovations.
  • U of Utah TTO “PIVOTs” to a more centralized organizational structure. Building on the previous work of its Center for Technology & Venture Commercialization (TVC) while moving to a more centralized structure, the University of Utah has formed the Partners for Innovation, Ventures, Outreach & Technology (PIVOT) Center to serve as a hub to foster partnerships between industry, university and government entities.
  • U Manchester unveils new Innovation Factory as it rebrands, restructures TTO. When Andrew Wilkinson was appointed as the new CEO of The University of Manchester’s technology transfer office in January 2019, it’s been nothing but change — and that’s a good thing, as he sees it.

Posted November 13th, 2020

Technology Transfer Tactics, October 2020 Issue


Technology Transfer Tactics, October 2020 IssueThe following is a list of the articles that appear in the October 2020 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 14, No. 10, October 2020

  • A three-pronged approach to controlling costs of managing your patent portfolio. Peter Gordon, a founding and managing member of Patent GC, a team of IP, patent and trademark attorneys, began learning through “grace under fire” some of the keys to managing patent portfolio costs, and he shared those lessons, along with key tools and techniques, with the attendees of an October 5 webinar hosted by Technology Transfer Tactics entitled, “Maintaining a High-Quality Pa­tent Portfolio Under Severe Budget Constraints.”
  • Case shows need to track even minor contributions before patent filing. Inventorship is not always an easy thing to define when dealing with patent law, and even a seemingly minor contribution to a patented invention can determine rights to lucrative revenue streams. A recent Federal Circuit Court ruling decided in favor of the Dana-Farber Cancer Institute is a case in point, and also serves as a pointed reminder that all contributions must be documented and memorialized to ensure those contributions aren’t swept under the rug in the patent office.
  • UC takes next step with filament light bulb case: Manufacturers and ITC. The University of California’s aggressive campaign to protect its patent on so-called “Edison” filament light bulbs has entered a new stage with a complaint filed with the U.S. International Trade Commission (ITC), seeking an investigation into the unauthorized importation of the patented technology.
  • Venture mentoring expands to San Antonio as UT system bolsters start-up support. San Antonio has a long pattern of cooperation and collaboration, especially in the biomedical and life science community. Executive leaders from this community interested in supporting new companies are a rich potential resource for the newly launched Venture Mentoring Service (VMS) San Antonio.
  • Tips for running a successful venture mentoring program. The leadership of the VMS San Antonio and UT System VMS offered these pieces of advice for anyone wanting to create a team-based mentoring group.

Posted October 16th, 2020

Technology Transfer Tactics, September 2020 Issue


Technology Transfer Tactics, September 2020 IssueThe following is a list of the articles that appear in the September 2020 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 14, No. 9, September 2020

  • Gensetix case with U Texas shows need to consider enforcement terms in license agreement. A case involving the University of Texas is yielding lessons about the proper way to construct contracts — particularly with regard to rights to enforcement — as well as the role of sovereign immunity when a licensee seeks to force a state university to join an infringement suit. Unfortunately, it raises as many questions as it answers.
  • Statewide KY partnership to boost economy, compete with innovation centers. When universities are in a rural area, far from the country’s innovation centers, TTOs might think they face an impossible competitive disadvantage against schools near areas like Silicon Valley, Boston, or Chicago. But there is strength in numbers, and some rural schools are partnering with other regional universities, economic development organizations, and government agencies and pooling their resources.
  • UW-Madison’s “Innovate Network” puts access to far-flung resources in one place. A new initiative from UW-Madison and the Wisconsin Alumni Research Foundation (WARF), administered by UWM’s Discovery to Product (D2P) program, is a powerhouse network and online resource involving more than a dozen campus organizations.
  • Whiteboard2Boardroom connects talent to technology across Kansas and Missouri. Whiteboard2boardroom (W2B) has become a clearinghouse for regional commercialization, linking technologies to executive talent and other resources to advance the technologies beyond the research lab.
  • University College Cork rebrands TTO to embrace wider innovation activity. Restructuring and rebranding is no small undertaking at any time — never mind during a global pandemic. But Rich Ferrie, director of innovation at University College Cork (UCC), didn’t let that stop him from changing direction and switching things up. In fact, he saw it as the ideal time to capitalize on a rebranding and re-imagining of the TTO there to embrace a wider innovation mandate.
  • U Oregon video series helps innovation office tell its story. The short video (under four minutes) begins with a close-up focus on researcher Avinash Bala, PhD, of the University of Oregon’s Institute for Neuroscience, co-founder of the start-up company Perceptivo. Bala provides a detailed description of his research into the hearing of barn owls, how that research led to the development of a system that measures pupil dilation and could potentially be applied to address the hearing of infants. He goes on to share how that led to his developing a technology that fills a need expressed by physicians.

Posted September 15th, 2020

Technology Transfer Tactics, August 2020 Issue


Technology Transfer Tactics, August 2020 IssueThe following is a list of the articles that appear in the August 2020 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 14, No. 8, August 2020

  • Improve TTO benchmarking by normalizing data and taking a deeper dive behind the numbers. TTOs must understand their own performance data if they are to optimize outcomes, but it also is critical to normalize the data to obtain a useful comparison against other universities that allows you to identify potential areas of improvement.
  • Johns Hopkins contracts team steps up its game amid pandemic. Amid the shutdown of central work locations as a result of the COVID-19 pandemic, the work of technology transfer offices still has to get done. For many, the disruption has been accompanied by an added sense of urgency as research labs pump out coronavirus-related innovations.
  • Defense of Trade Secrets Act: Part of a TTO’s international IP protection toolbox. While technology transfer offices mainly focus on protecting their IP through the patent process, protecting trade secrets is also a concern — and one that’s growing in prominence amid a trend toward more international collaboration.
  • New philanthropic venture fund at U Michigan snags Amazon investment. When a new university venture fund lands Amazon as one of its early investors, it must be doing something right — and, according to its director, such a vote of confidence is especially important given the challenges this fund is taking on. It also illustrates for other universities seeking participants in start-up funds that big corporates could be fertile ground for prospecting.
  • Study: faculty not motivated by financial incentives, so conduct outreach accordingly. It’s been 40 years since passage of the Bayh-Dole Act, and tech transfer professionals have spent a lot of that time trying to get faculty researchers to buy into a philosophical shift toward thinking about their innovations as having commercial value. It’s still not uncommon for “old guard” faculty to resist any suggestion that they should embrace the tech transfer ethos. Thankfully for TTOs the shift away from commercialization as a dirty word has gradually occurred, due in no small part to TTO outreach efforts.

Posted August 18th, 2020

Technology Transfer Tactics, July 2020 Issue


Technology Transfer Tactics, July 2020 IssueThe following is a list of the articles that appear in the July 2020 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 14, No. 7, July 2020

  • ‘Go-in-Peace’ license can help smooth feathers when returning IP to faculty. 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.
  • Spotlight on TTOs in pandemic may reveal path to better performance. Universities and TTOs have delivered solutions to the COVID-19 crisis at lightning speed. From epidemiological modeling, viral gene sequencing, rapid testing and vaccine programs, ventilator production, 3D printed PPE manufacture and AI-driven identification, testing and production of therapeutic treatments, universities have been on the front line of the pandemic with a very public profile. By and large this has produced a silver lining to TTOs and research commercialization activity as university labs and their innovation output are in the public spotlight like never before.
  • Should TTO staff be allowed to participate in new ventures? The story spread through the university technology community last year faster than a Facebook cat video. Executives at the higher reaches of the heralded Memorial Sloan Kettering Cancer Center (MSK) “repeatedly violated policies on financial conflicts of interest, fostering a culture in which profits appeared to take precedence over research and patient care,” The New York Times wrote in an April 4, 2019, article it produced in collaboration with ProPublica. What can TTOs do to avoid a similar fate when their own employees wish to become involved in a start-up that the TTO is supporting?
  • Success rate soars for biotech innovations under Stanford SPARK program. While helping society is often the stated mission of universities, much of their biomedical research never moves beyond the research lab to benefit patients. In many cases, it languishes simply because the inventor just doesn’t know how to take it further. But since 2006, the SPARK at Stanford program has been teaching academics to transform their research so that it can be translated and commercialized for the benefit of society.
  • K-State simplifies disclosure form and sees faculty engagement levels soar. While many disclosure forms are viewed as burdensome for busy innovators, Kansas State University recently worked to revamp its disclosure and create a document that inventors would embrace rather than eschew.

Posted July 15th, 2020

Technology Transfer Tactics, June 2020 Issue


Technology Transfer Tactics, June 2020 IssueThe following is a list of the articles that appear in the June 2020 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 14, No. 6, June 2020

  • Virtual engagement enables TTOs to scale up outreach and augment ecosystem. Recent innovations in virtual engagement have begun to offer TTOs a more enriched world of options for not only fulfilling but expanding their missions, and the need to respond quickly to the dramatic changes brought on by COVID-19 have both sharpened that focus and proven their worth, according to a panel of experts at a recent webinar, “Virtual Engagement Strategies for TTOs: Scaling Up Online Connectivity Now and Building Future Resiliency,” hosted by TTT.
  • Amid various stages of reopening across the country, TTOs plan for next steps. When shelter-in-place restrictions and social distancing began across the country in March in response to the COVID-19 pandemic, university technology transfer offices focused on making sure they could maintain operations remotely. Now that states and universities have begun the staged lifting of prohibitions, the focus for TTOs is on what comes next.
  • TTOs adjusting to shrinking budgets and hiring freezes. Throughout the country, universities are cutting budgets, resulting in hiring freezes, furloughs, and stalled plans for expansion. TTOs are tightening their belts, but so far, they are experiencing more of a bump in the road than a full-blown train wreck. Long-term, it appears that university mission-based goals will remain intact.
  • Leverage your TTO’s database to create impactful technology marketing reports. 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.
  • Equity crowdfunding may be tempting for university start-ups as investments dry up. With venture capitalists less approachable during the pandemic shutdown, TTOs are looking for investment alternatives for university start-ups and some are wondering if equity crowdfunding is a good option. It can be, the experts say, but tread carefully and consider the potential downsides.

Posted June 16th, 2020

Technology Transfer Tactics, May 2020 Issue


Technology Transfer Tactics, May 2020 IssueThe following is a list of the articles that appear in the May 2020 issue of Technology Transfer Tactics monthly newsletter.

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Technology Transfer Tactics
Vol. 14, No. 5, May 2020

  • TTOs are stepping up to meet the COVID-19 challenge. It will most likely take a village to combat COVID-19. If that’s the case, technology transfer offices around the nation have pitched a giant tent right in the town square. We spoke to many people in TTOs who are going above and beyond to do whatever is possible to help. Here are a few examples.
  • With start-up investments scarce in COVID times, find ways to pivot. The COVID-19 pandemic is affecting the prospects and bottom line of university start-ups as they find investments difficult to come by and their usual work coming to a halt with the rest of the economy. Some are pivoting to other work in the meantime, but the effects of the pandemic are likely to hurt many start-ups for months, if not longer.
  • Are zombie start-ups haunting your TTO? Are university TTOs essentially gaming the system when they dutifully report each year on the number of start-ups they have nurtured? That seems to be the suggestion of a provocative new analysis by professors at Brigham Young University (BYU) and Utah Valley University.
  • Oregon universities band together to set the rules for co-owned IP. Five Oregon research universities — Oregon Health & Science University (OHSU) in Portland, the University of Oregon in Eugene, Oregon State University in Corvallis, Portland State University, and the Oregon Institute of Technology in Klamath Falls — have launched a collaborative model to boost innovation via a series of three agreements that clarify ownership of intellectual property derived from inter-university collaborative research projects, as well as inter-university employment. The goal is to reduce cost barriers and other blockages that can stymie collaborative research.
  • U Chicago TTO has attorney on loan from law firm. The Polsky Center for Entrepreneurship and Innovation at the University of Chicago is enjoying an unusual relationship with a law firm that allows it to have an intellectual property attorney on site full time, devoting all her attention to tech transfer. The unique arrangement means the attorney can aid directly with patent prosecution and implementing new procedures and contracts, while also giving the university favored status with the law firm.

Posted May 14th, 2020

Technology Transfer Tactics, April 2020 Issue


Technology Transfer Tactics, April 2020 Issue

The following is a list of the articles that appear in the April 2020 issue of Technology Transfer Tactics monthly newsletter. Due to the urgent nature of the coronavirus pandemic and our extensive coverage of how TTOs are addressing COVID-related challenges, we are opening up this issue for free to all.

Click here for the April issue

These are the sample agreements mentioned in the first story:

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Technology Transfer Tactics
Vol. 14, No. 4, April 2020

Special Report: Tech transfer and the COVID-19 pandemic. This issue’s first three articles address some of the urgent challenges and profound changes TTOs are facing — and adapting to — as the coronavirus pandemic and the associated shutdown of university offices and labs continues. Technology Transfer Tactics has designated Direct Relief (www.directrelief.org) as its charity of choice for those wishing to assist healthcare workers with needed supplies. For more information see the drawing on page 63, which was kindly donated for reproduction by Italian artist Sara Paglia.)

  • TTOs respond to urgent pandemic needs with ‘war time’ licensing. When a scientist at the University of Dayton Research Institute (UDRI) in Ohio developed software that detects the COVID-19 virus in seconds using an X-ray, the tech transfer leaders knew they couldn’t wait the usual months or years to get it to market. Instead, they had it licensed in two and a half days and on the market in just seven.
  • Coronavirus brings challenges and changes to TTO operations. University researchers and tech transfer leaders have pivoted to prioritize research related to COVID-19, with streamlined licensing and pledges to make technology available free of charge during a time of crisis.
  • TTOs adapt to remote work but still learning on the fly. Leading TTOs from across the country shared their experiences in the COVID-19 crisis during the recent free webinar “Managing TTO Operations During the COVID-19 Pandemic and Planning for Future Disruptions.”
  • Take step to avoid patent-killing ‘pre-print’ disclosures. In the academic world, where publishing is paramount to tenure and career advancement, there is always the risk that a public disclosure will eliminate the innovator’s — and their university’s — ability to protect an invention.
  • U Cincinnati opens its pre-accelerator program to other institutions. The University of Cincinnati has opened its pre-accelerator, Venture Lab, to not only start-ups formed out of UC, but also those from Wright State University, Xavier University, the University of Dayton and Cincinnati State Technical and Community College.

Posted April 16th, 2020

Technology Transfer Tactics, March 2020 Issue


Technology Transfer Tactics, March 2020 IssueThe following is a list of the articles that appear in the March 2020 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue.

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Technology Transfer Tactics
Vol. 14, No. 3, March 2020

  • Are universities doing enough to ensure global access to their innovations? Over the years there has been considerable discussion about the need for universities to ensure their innovations make it into the hands of disadvantaged populations. Indeed, point nine in AUTM’s much heralded In the Public Interest: Nine Points to Consider in Licensing University Technology states “universities should consider including provisions that address unmet needs, such as those of neglected patient populations or geographic areas.”
  • Cornell program offers on-ramp for women entrepreneurs. The number of women and minorities pursuing STEM fields at Cornell University has surpassed the national average and is still growing. That good news is muted somewhat, however, by the fact that the number of Cornell women in STEM who hold patents and participate in entrepreneurial programs lags well behind Cornell men.
  • Turning foreign students into start-up founders: A trip that requires a savvy guide. Universities, research parks, and society at large benefit enormously from the innovative minds that come to America from around the world, but only if our immigration system doesn’t slam the door in their faces.
  • Case Western finds CES to be a goldmine for promoting start-ups. TTOs and other university departments devoted to commercialization and growth for their start-ups have often found benefit from networking at industry conferences and exhibitions — a strategy that may be paused during the coronavirus pandemic but will return as a key marketing strategy. And it’s unlikely that many schools have had as much success as the LaunchNet program at Case Western Reserve University has had at the Consumer Electronics Show (CES).
  • UW creates Innovation Roundtable to help guide ecosystem development. The University of Washington (UW) has tapped a high-powered group of community leaders, investors and entrepreneurs to the UW Innovation Roundtable, which held its first meeting in January. The panel was formed to bring the perspective, expertise, and assistance of a broad range of key stakeholders to help grow the region’s innovation ecosystem and help guide commercialization, economic development, and partnership initiatives in concert with university leadership.

Posted March 17th, 2020

Technology Transfer Tactics, February 2020 Issue


Technology Transfer Tactics, February 2020 IssueThe following is a list of the articles that appear in the February 2020 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue.

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Technology Transfer Tactics
Vol. 14, No. 2, February 2020

  • Foreign courts may offer cheaper, faster alternative in patent infringement litigation. As anyone who has experienced it knows, engaging in a patent infringement fight in the U.S. is a serious undertaking. It’s expensive, time consuming, and can distract an organization from its core business. But when a valuable invention is being challenged, there are only a few routes a university can take. Litigation is one of the roughest, but there are ways to reduce the pain and even gain leverage over more well-heeled adversaries — and it may involve foreign jurisdictions.
  • Legal Consult: Universities should consider ITC for IP protection. In an era of globalized supply chains, products incorporating university IP are frequently made abroad in jurisdictions where IP protection is unavailable or ineffective. That’s among the reasons that, in their enforcement efforts, universities and other research institutions should not overlook a powerfully effective venue: the U.S. International Trade Commission (ITC).
  • Gateway to IP program seeds patent know-how in students, cuts legal costs. Wichita State University in Kansas aims to promote its IP as much as any other major university, but it faces a challenge that many others don’t: There are hardly any registered patent practitioners in Wichita, compared to more than 50 in nearby Omaha or Tulsa.
  • To optimize social media, differentiate between branding and tech marketing. Social media can be used effectively both to enhance brand-building and to spread your tech marketing messages. However, cautioned two experts in the field, it’s important for you to understand the difference between the two in making optimal use of your social media tools.
  • Innovation@UCalgary provides holistic, integrated support for inventors. It takes an inventor with an entrepreneurial mindset to come up with ideas that benefit society. But it also takes a team of technical people, legal advisors, investors, marketing specialists, and more, to deliver the inventor’s idea.
  • FounderHunt pitching event seeks to pair entrepreneurs with new technologies. Kind of like a university ‘Shark Tank,’ FounderHunt is a start-up pitch event — just in reverse. A new University of Louisville (UofL) program, FounderHunt is in an annual event pitching IP from research universities to entrepreneurs to use for their next start-up.

Posted February 14th, 2020

Technology Transfer Tactics, January 2020 Issue


Technology Transfer Tactics, January 2020 IssueThe following is a list of the articles that appear in the January 2020 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. 14, No. 1, January 2020

  • Oxford U’s unique model brings student power to bear on languishing IP assets. Tech transfer programs usually have a portfolio of commercialization projects that are in that iffy zone: They do have potential but they are not the obvious choice for a spinout with a high likelihood of success. They also are not right for repeat non-exclusive licensing to companies, and they don’t have a ready-made home with a company where the inventor has a longstanding relationship.
  • TTO New Year’s resolutions: Here’s what your colleagues are focusing on in 2020. From more diversity and inclusion to improving inventor education and staff support, TTOs have a slew of New Year’s resolutions to tackle in 2020. TTT spoke with tech transfer execs across the country to get a flavor for what they see as their biggest challenges and priorities for the coming year.
  • Law firm sued over missed publication date, potentially costing a school millions. When it comes to patenting new inventions, the publication date is critical one because it starts a one-year clock for filing a patent application. But in the digital world, what constitutes a publication date may get confused, particularly for those who’ve long assumed the meaning to be associated with a print publication.
  • Consistency, standardization are keys to solidifying your TTO’s data integrity. It takes a good deal of time to plan properly when implementing a new database (or cleaning up an existing one) and instituting processes that will lead to greater data integrity. However, failure to do so will take even more time and will ultimately cost more money.
  • WVU’s Vantage Ventures helps start-ups overcome hurdles. A new initiative at West Virginia University (WVU) is described as “the finishing piece of the puzzle” for university start-up support in the state. The program — Vantage Ventures — is the latest addition to a series of developments by the university to enhance the state’s business environment.
  • ‘Accelerator’ classes teach entrepreneurial mindset with an academic focus. Are there necessary skills that all professionals need, whether they work in business, public service, science, education, medicine, or anything else? Some would suggest that entrepreneurial thinking is critical across all professions. Entrepreneurial thinking encompasses the concepts of problem-solving and solutions validation, risk mitigation, and managing failure. The need for these skills explains why entrepreneurship has become a popular curriculum at the undergraduate level.

Posted January 16th, 2020

Technology Transfer Tactics, December 2019 Issue


Technology Transfer Tactics, December 2019 IssueThe following is a list of the articles that appear in the December 2019 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue.

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Technology Transfer Tactics
Vol. 13, No. 11, December 2019

  • A new push to recognize innovation activities in promotion and tenure. Technology transfer professionals have long lamented how difficult it is to coax promising young researchers — even those with entrepreneurial aspirations — into actually engaging in commercialization activities until they have achieved tenure. The issue is highlighted at technical meetings and academic conferences year after year, but not much seems to change in the minds of many observers. Why is that?
  • TTOs introduce awards programs to recognize outstanding staff. Employee morale may be difficult to quantify, but nonetheless several TTOs have instituted awards programs whose main rationale is to let outstanding staff members know that their work has been noticed and appreciated.
  • ‘Double Down Experiment’ seeks to help Purdue start-ups scale up. The Purdue Foundry has completed the selection of the first cohort for its Double Down Experiment — nine businesses they’d helped launch that are now ready “to reach the next level” of their development.
  • Leveraging data in healthcare innovations while protecting patient privacy. Collection and analysis of aggregated patient data is both a source of disease-fighting discoveries — new procedures, methods and products — and a potential source of revenue for universities and their health systems, who are increasingly using data in a host of new technologies.
  • Equalize 2020: Symposium and pitch competition seeks to empower women innovators. A little over a year ago, Nichole Mercier, assistant vice chancellor and managing director of the Office of Technology Management at Washington University in St. Louis (WashU), got a call from the Association of American Medical Colleges. The association wanted to nominate WashU’s Women in Innovation & Technology program for their “Innovations in Research and Research Education Award.” Mercier was flattered and honored and put together a package for them to consider. In doing so, she reached out to women who had gone through the program — and what she heard was disheartening.

Posted December 12th, 2019

Technology Transfer Tactics, November 2019 Issue


Technology Transfer Tactics, November 2019 IssueThe following is a list of the articles that appear in the November 2019 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue.

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Technology Transfer Tactics
Vol. 13, No. 11, November 2019

  • Take steps to soften the inevitable dilution of start-up equity. Universities often are eager to invest in their promising start-ups, getting in on the ground floor of what they hope will be financial success for everyone. But in so many cases, the university feels like they’re left out of the party when the company hits it big.
  • Indiana U’s new Alumni Angel Network adds arrow to its funding quiver. For many universities, fundraising is the primary focus of their relationship with their alumni. However, some universities are offering alums a different way of engaging with their alma maters: alums who qualify as angel investors can invest in university start-ups.
  • Research Bridge Partners looks to level the playing field for mid-continent universities. Did you know that over the past five years, 75% of federal research funding has gone to institutions outside of California, Massachusetts and New York, while nearly 80% of venture investment went to companies located in those three states? Research Bridge Partners is working hard to change that.
  • UCSD launches new innovation portal driven by user feedback. At a large university, students with entrepreneurial ambitions may face a myriad of choices when it comes to resources. Faculty and staff, alumni, and other stakeholders in the ecosystem have similar challenges. Helping them explore more easily through their options and arrive more quickly at the resource they seek is one of the overriding goals of the new Innovation Portal at the University of California-San Diego.
  • U Buffalo students BLAST their way to an invention and start-up in five days. Your mission, if you choose to accept it: Work with a multidisciplinary team to create a solution to a major surgical complication and start a business around the idea.
  • WPI: The tiny tech transfer office that could. Worcester Polytechnic Institute, a “tiny tech transfer office,” is hitting it out of the ballpark. With a research budget of just $32 million, the TTO brought in 67 invention disclosures in 2018, a threefold increase since 2012.
  • School mascot stars in Auburn TTO’s patent process video. The Office of Innovation Advancement and Commercialization at Auburn University recently came up with a novel way to explain the patent process to faculty and students.

Posted November 14th, 2019

Technology Transfer Tactics, October 2019 Issue


Technology Transfer Tactics, October 2019 IssueThe following is a list of the articles that appear in the October 2019 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue.

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Technology Transfer Tactics
Vol. 13, No. 10, October 2019

  • Ohio IP Promise aims to boost tech transfer, end the exodus of high-tech talent. Frustrated that too many businesses, entrepreneurs, venture capitalists and potential research partners have been looking elsewhere for opportunities in the high-tech arena, the state of Ohio, along with its 14 public and two private universities in the region, has announced an initiative aimed at showcasing to the world that the state is open for business.
  • Don’t lose your university’s IP to faculty “consulting time.” It’s the response that tech transfer leaders never want to hear when approaching a faculty member about intriguing new intellectual property: “Oh, I did that as part of my consulting work for a company. It wasn’t done on university time.”
  • Guest Column: Beware of employee equity, the credit cards of the venture community. When hiring venture executives and employees in the early stages of a university start-up, the buzz centers around equity. For successful ventures, these equity rights, often issued when the equity is worth pennies a share, hold the potential of delivering great wealth to those fortunate enough to receive them. However, there is an often ignored drawback to equity compensation.
  • ‘Executives into Business’ program offers pay linked to key milestones. Northern Accelerator — an innovative partnership among a network of UK universities in England’s North East — Durham, Newcastle, Northumbria and Sunderland — is driving a step-change in research commercialization. Connecting academics and business leaders and providing funding and business support, it’s accelerating the translation of outstanding research into commercial opportunities, forming sustainable businesses and creating more and better jobs.
  • Does your university need an innovation czar? Universities have been focusing on innovation and entrepreneurship for many years, forming complex research partnerships with major corporations, building incubators and accelerators, hosting an array of competitions, launching and funding start-ups, and encouraging researchers to focus on the commercial potential of their work. On top of all this, some schools are trying to unify these efforts and reach an even higher level by creating new academic leadership positions.

Posted October 11th, 2019

Technology Transfer Tactics, September 2019 Issue


Technology Transfer Tactics, September 2019 IssueThe following is a list of the articles that appear in the September 2019 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. 13, No. 9, September 2019

  • UC light bulb case may signal more aggressive infringement defense by schools. Those vintage-looking light bulbs that hang in so many trendy bars and restaurants are the subject of a massive lawsuit campaign in which the University of California (UC) system is taking on some of the world’s biggest retailers.
  • Policy alone can’t resolve complications that arise in royalty distribution. It’s tempting to think that in most instances when a patent is issued and then licensed, the royalty situation is fairly straightforward, and that the royalty sharing policy will be adequate to cover any issues that might arise. But that’s rarely the case, states Chris Harris, PhD, director of licensing for Vanderbilt University. “It’s the rarity when something goes by the books,” he says. “This is a complicated topic — much more complicated than most people acknowledge. How you address the complexity depends on many factors that are not often detailed in a policy.”
  • TTOs leverage social media to create their own buzz. Brian Shedd, the director of licensing in the Office of Technology Transfer at the University of Houston (UH), is intrigued by the potential of social media to quickly spread the word about UH technologies, but in seeking guidance from social media veterans, he has come to the realization that some of his early assumptions on how to best jump into the social media space were a bit off.
  • Fellows programs bring extra hands and new blood to TTOs. Technology transfer office-based fellowship programs — typically aimed at training postdocs to learn the ins and outs of research commercialization — can create a win-win situation for the host offices and for PhD students. The offices increase their manpower at lower cost, while PhD students gain exposure to non-academic career paths. These programs, according to those who run them, also enhance the education and research missions of their universities by providing training for graduate students for non-academic careers and increasing the university’s capacity for moving innovation out of the labs into service to society.

Posted September 9th, 2019

Technology Transfer Tactics, August 2019 Issue


Technology Transfer Tactics, August 2019 IssueThe following is a list of the articles that appear in the August 2019 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. 13, No. 8, August 2019

  • Court ruling undermines sovereign immunity, puts university patents at risk. State universities are now in a weaker position when protecting patents from inter partes review (IPR) petitions, after the Federal Circuit court ruled that sovereign immunity does not apply in patent challenges. The ruling could require some universities to reassess their patent enforcement strategies and brace for significantly higher costs from increased IPRs.
  • NYU’s Future Labs blazes path for scalable start-ups and exits-by-acquisition. New York University’s Future Labs has been churning out one start-up after another, and it just crossed the threshold of 20 exits via acquisition – an astounding record of financial success that many TTOs would like to emulate. So how do they do it? The answer involves carefully selecting start-ups to back with the greatest chance for success and monitoring their progress carefully. It also helps that the incubator’s main goal is not to cultivate IP from NYU.
  • Commercialization fellowships help get more innovations off the shelf. Many good ideas are born in university labs. However, the road from an idea to commercialization is fraught with many pitfalls. In some cases, a valuable idea may languish in a lab for lack of an available entrepreneurial scientist to take it further. To help overcome that gap, a number of universities are creating commercialization fellowship programs.
  • Legal Consult: UK court decision highlights need for U.S. patent reform. A recent UK court ruling that a European patent on a groundbreaking invention is valid and infringed contrasts with a U.S. court invalidating a similar patent as not patent eligible. This disconnect between jurisdictions highlights the importance of current efforts to fix U.S. patent law.
  • UGA launches digital images and artwork licensing program. Patented and patentable technologies may “rule the roost” in tech transfer, but that doesn’t mean universities are ignoring other creative forms of innovation that may be desirable to licensees and could represent potential new revenues — not to mention the chance to get more faculty involved in commercialization activity.
  • Should your TTO have its own dedicated grant writer? Usually, grant writers are situated in a sponsored research office. But at Indiana University the Innovation & Commercialization Office, the school’s TTO, has a grant writer of its own.

Posted August 15th, 2019

Technology Transfer Tactics, July 2019 Issue


Technology Transfer Tactics, July 2019 IssueThe following is a list of the articles that appear in the July 2019 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. 13, No. 7, July 2019

  • As innovation-focused competitions flourish on campus, best practices emerge. The tide of competitions focused on innovation and entrepreneurship being sponsored by universities worldwide is nearing flood stage. Business plan competitions, student start-up contests, faculty pitch fests, and Shark Tank style events have become a regular part of campus life. But are they worthwhile, and if so how do you wring the greatest value from them? After all, staging an effective competition on campus requires considerable time, effort and resources, so why go to the trouble when there are so many other priorities?
  • Rutgers team outlines the “Do’s and Don’ts” for faculty pitching to investors. Triggered by a specific event, a team of commercialization experts at Rutgers University set out to fill what they considered to be a significant void in teaching tools for faculty inventors who are about to make their pitch to potential investors.
  • U of AZ’s Asset Development program helps innovations bypass the ‘Valley of Death.’ Good inventions run on their own timeclock. Sometimes, a grant runs out and a funding source is not interested in continuing to invest in the research. In other cases, funding is not available because the project is outside of the grant’s scope of basic scientific discovery. There are almost as many ways to run out of money as there are ideas to develop. In most cases where the funding tap runs dry, the invention is not developed enough gain interest from licensees — a gap in funding now being filled by the U of Arizona’s asset development program.
  • Case Study Spotlight: Culture of patient-centric innovation at Mount Sinai. With 40 full-time employees, Mount Sinai Innovation Partners (MSIP) at the Mount Sinai Health System is one of the larger commercialization offices. Last year, the office engaged with 717 inventors and handled 128 disclosures and 209 patent filings. Behind those numbers are a bevy of programs and strategies that make MSIP an organization to watch and model. TTT spoke with leaders there to get an inside look at key tactics that drive their results, as well as the guiding principles that underlie their successes.
  • Memorial U adopts creator-owned IP policy. Deciding that loosening the grip on IP rights may yield more commercialization in the long run, Memorial University in Newfoundland and Labrador, Canada, has revised its IP policy to make dealing with the university easier. In fact, the university is giving up its stake in much of the IP developed by students and faculty.

Posted July 15th, 2019

Technology Transfer Tactics, June 2019 Issue


Technology Transfer Tactics, June 2019 IssueThe following is a list of the articles that appear in the June 2019 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. 13, No. 6, June 2019

  • Despite the financial risks, new drug discovery vehicles proliferate on campus. There is nothing like a big hit in the pharmaceutical space to put a university’s long-range plans for new research and infrastructure on a solid footing. In fact, large pharmaceutical companies are increasingly leaving the early-stages of drug development to universities and other research institutions. However, while opportunities in the drug discovery space abound, there is no denying the long, difficult road involved with bringing a new therapeutic to market.
  • Many models can work for EIRs, but successful programs share common threads. Entrepreneurs-in-residence (EIRs) can bring a level of insight and professional experience to university start-ups that might otherwise be difficult to obtain, so they are becoming increasingly common at tech transfer programs. As more schools adopt them, however, it is becoming clear that there is no one correct model for setting up an EIR program.
  • Case Western makes bold move with start-up IPO. A company founded to develop regenerative-medicine technology licensed from Case Western Reserve University in Cleveland, OH, is making a bold play for capital with an initial public offering (IPO) on a Canadian exchange. The initial effort is showing success, but the CEO and tech transfer director caution that the approach may not be right for many start-ups.
  • Student ‘Co.Create’ ambassadors support start-ups at U Kentucky. A group of three undergraduate students at the University of Kentucky have been hired as “Co.Create Ambassadors” — newly created paid internships designed to support the university’s New Ventures team.
  • Program looks to boost grant funding for university start-ups in flyover states. When it comes to SBIR and STTR grants, most of the awards go to universities located in urban areas, shortchanging those in more rural areas. There are many reasons for this discrepancy. Universities in more rural areas may not have a proactive Office of Technology and Commercialization, or there may not be a medical school on campus. Or, there may be confusion about eligibility and procedures for obtaining these grants.
  • New UT Dallas partnerships promise to pave more pathways to marketplace. Entrepreneurship leaders at the University of Texas at Dallas (UT Dallas) have been busy working on creating internal spaces and external partnerships that are opening up new avenues for student and faculty entrepreneurs.

Posted June 17th, 2019

Technology Transfer Tactics, May 2019 Issue


Technology Transfer Tactics, May 2019 IssueThe following is a list of the articles that appear in the May 2019 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. 13, No. 5, May 2019

  • Experts urge TTOs: Don’t leave know-how royalty dollars on the table. If your TTO is not routinely seeking know-how royalties when negotiating license agreements — particularly with faculty start-ups — then you are almost certainly leaving dollars on the table. In some cases, big dollars.
  • Consider alternatives to pass-through billing to handle licensee legal fees. Despite the burden it brings, TTOs often act as the middle man between law firms and faculty start-ups or licensees, paying bills for incurred legal fees related to filings, company formation, and other legal work and then invoicing the responsible party. The method originates mostly because the university is the one with the ties to the law firm, and the parties actually incurring the fees are fine with having someone else be the primary contact for payment.
  • Treat start-ups with ‘Texas hospitality’ to build strong relationships. “We started the new ventures operations doing four to six IP-based based start-ups a year,” Wade Fulghum, associate director of new ventures in NC State University’s Office of Research Commercialization, told the audience during at panel session at AUTM 2019 entitled ‘Learn from Texas Hospitality: Treat Your Startups Right.’ “Now, we’ve done 102 companies in the last seven years, building a program from scratch. There were no support mechanisms, no funding, no guidelines.”
  • U of Toronto’s True Blue Fund gives alums new way of giving back. The University of Toronto (U of T) is one of the most successful universities in the world when it comes to research commercialization and start-up formation. Over the past decade, its entrepreneurs have launched more than 500 research-based start-ups, generating more than $1 billion in investment. Despite these successes, however, challenges remain in the area of funding for these start-ups and their ability to take ideas to market.
  • The Quarry at Indiana U offers targeted assistance to university innovators. When Indiana University (IU) turns 200 years old in 2020, it will launch a Bicentennial Strategic Plan that includes a focus on entrepreneurship and innovation. The goal of the plan is to spur economic activity in Indiana and increase the global impact of the university’s innovative research. So, when IU restructured its technology transfer office recently, the Indiana University Research and Technology Corporation (IURTC) began looking ahead to see how IU could better nurture its start-up companies. As a result, they introduced a program called The Quarry, which replaces their previous Spin-Up program.

Posted May 16th, 2019

Technology Transfer Tactics, April 2019 Issue


Technology Transfer Tactics, April 2019 IssueThe following is a list of the articles that appear in the April 2019 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. 13, No. 4, April 2019

  • Lawsuit charging prof stole student’s IP highlights need for layers of due diligence. Technology transfer personnel often talk about how hard it is to get to the finish line with a promising IP asset. This means getting the IP properly developed, licensed and commercialized so that the university and contributing inventors are then on the receiving end of a windfall that can potentially fund research and improvements at the institution for years to come. It’s a rare and wonderful occurrence, to be sure. Cause for celebration.
  • As mission expands, Emory TTO streamlines processes and enhances productivity. When a major university strives for more commercialization even outside usual areas like technology and medicine, the tech transfer office has to be prepared for an increased workload. Adding staff is never an easy route, so improving the work process in a way that takes some of the burden off the existing team might be the only option.
  • AUTM panel reveals how to tap “gold mine” of data for licensing. The collection of data by research institutions is a critical part of innumerable projects, and the size and scope of those data sets is often massive. But what some TTO leaders may not realize, said Bin Yan, director of the Office of Technology Transfer at the University of Miami, is that “you may be sitting on a gold mine.” Yan made her remarks as the head of a panel entitled “Strategies for Monetizing Data at Universities” at the recent AUTM 2019 conference in Austin, TX.
  • New regulations turn up the heat on compliance reporting. It was never easy to report inventions through Interagency Edison (iEdison). Now, with new regulations under the Bayh-Dole Act that have been in effect since October 1, 2018, the stakes are even higher. An action step of the National Institute of Standards and Technology’s (NIST) plan for incorporating the new regulations is to “Establish a modern platform for reporting data on intellectual property resulting from Federal R&D.” The current iEdison platform is about to be updated.
  • Brandeis rebrands and makes a splash with AUTM exhibit. The newly re-branded tech transfer office for Brandeis University, Brandeis Innovation, is making heads turn — most recently with its exhibit booth at this year’s annual AUTM meeting in Austin, TX. It’s not that common for a TTO to exhibit at AUTM, so what were they doing there and why?

Posted April 16th, 2019

Technology Transfer Tactics, March 2019 Issue


Technology Transfer Tactics, March 2019 IssueThe following is a list of the articles that appear in the March 2019 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. 13, No. 3, March 2019

  • When worlds collide: Help ensure a tight fit between start-up CEOs and faculty founders. Given the dearth of entrepreneurial talent in many locations outside of major tech ecosystems, finding an experienced veteran who is capable and willing to take a technology-based start-up forward is a difficult task. Indeed, the folks in charge of new ventures at universities are typically thrilled to land a candidate with the requisite business skills, technical expertise, and network to attract investors and ultimately make a splash in the marketplace.
  • Board seats can pose dilemmas for university start-ups, TTO leaders. A start-up’s board of directors can be enormously influential in driving the company forward and improving the likelihood of success, so questions related to the makeup of that board are no small matter. University leaders understandably feel like they have a stake in the success or failure of the start-up, so the inclination often is to have someone on the board representing the school.
  • Heard in the Halls: AUTM 2019. The 2019 edition in Austin, TX, was another outstanding year for AUTM’s annual meeting, with nearly 2,000 attendees and the usual complement of practical workshops and sessions. We’ll be featuring in-depth coverage of several of those sessions in coming issues, but in the meantime we’ve gathered our annual collection of short takes and ideas gleaned from attendees and speakers during the event.
  • Incubator makes shift from grant-sponsored program to post-money SAFEs. Velocity, The University of Waterloo’s (Ontario) start-up incubator, is introducing a major change in the way it will be funding its pitch competitions.
  • Alumshares makes investing in start-ups more accessible. A Raleigh, NC, native with a background in real estate is shaking up the way university TTOs are finding funding for university start-ups and other commercialization efforts.
  • University start-ups gain global reach without leaving home. Start-up companies that want to do business internationally often find themselves in a Catch-22. They know they must build contacts in overseas markets, but they don’t have time or money to travel the world. Yet strong international contacts could be the fuel that pushes some start-ups over the edge to long-term success.

Posted March 19th, 2019

Technology Transfer Tactics, February 2019 Issue


Technology Transfer Tactics, February 2019 IssueThe following is a list of the articles that appear in the February 2019 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. 13, No. 2, February 2019

  • Litigation financing can be a ‘no brainer’ for some university patents. With a typical patent lawsuit costing several million dollars to litigate, with no guarantee of recovering that or any more compensation, the idea of having someone else pony up the money can be appealing to any university. For smaller schools that have limited resources but could benefit from the protection of their patents, the appeal is even greater.
  • UC-Santa Cruz digitizes disclosures, NDAs and MTAs to boost faculty service. About one year ago Jeffrey M. Jackson, MS, JD, director of intellectual property management for the University of California at Santa Cruz, implemented a digitized online form for invention disclosures. Since then, 66 invention disclosures have been submitted; prior to last year, he says, the average number of disclosures per year was 44 — a full 50% increase.
  • Total compliance with Bayh-Dole assignments must be goal. The recent update in federal regulations regarding Bayh-Dole compliance has some university TTO leaders wondering just how much is enough when it comes to getting faculty inventors to sign over their intellectual property.
  • U Saskatchewan takes fast and simple approach to licensing. The University of Saskatchewan’s “Fast License,” is the latest entry in the bandwagon among TTOs offering simplified licenses with very favorable contract terms, making a wager that it will be more beneficial in the long run to have many licenses at a lower royalty than just a few at a higher rate.
  • TTO directors share their offices’ goals for 2019. Each time a new year rolls around, it’s a chance to make assessments of past progress and to set goals and resolutions for the upcoming months. We wanted to learn what tech transfer directors had established as their office goals for the upcoming year, and how they planned to meet those objectives.
  • Kentucky’s C3 initiative brings shared tech transfer services statewide. The state of Kentucky — led by its two biggest universities — is launching an unprecedented effort to combine and share tech transfer resources among all the state’s schools in a bid to magnify the impact of research commercialization and “raise all boats.”

Posted February 19th, 2019

Technology Transfer Tactics, January 2019 Issue


Technology Transfer Tactics, January 2019 IssueThe following is a list of the articles that appear in the January 2019 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. 13, No. 1, January 2019

  • TTOs employ divergent approaches to incentive pay for licensing staff. Businesses of all kinds have been using incentive pay to drive behavior for years, but does it work in the murky realm of academia/tech transfer? It’s tricky, to say the least, but surveys suggest that roughly a third of TTOs have some sort of incentive compensation in place. The thing is, the characteristics of these plans vary widely from team-based approaches which include a broad array of performance goals to individually focused plans that key in on a narrow set of indicators.
  • $31.6M award illustrates risks in co-development deals, even decades later. The $31.6 million awarded to Washington University of St. Louis (WUSTL) in a lawsuit levied against its patent license partner the University of Wisconsin is a reminder that co-development deals can come crashing to the ground years after they were initiated. And when they do, more often than not the cause is traced to poorly defined terms.
  • Global EIR programs spreading across U.S. to fill start-up visa gap. According to Science and Engineering Indicators 2018, a National Science Board report, there were about 240,000 international students on temporary visas enrolled in science and engineering graduate programs in 2015. This represented 36% of total U.S. graduate enrollment. Any of these students who opted to stay in the U.S. to create a business encountered immigration laws that, absent a start-up visa, make it difficult for them to stay here.
  • Program seeks to convince UNM grads to ‘boomerang’ to hometown jobs. Sometimes, it seems, you can almost do “too good a job” at helping tech-oriented university graduates pursue successful careers. The problem, you see, is that many of the high prestige universities where graduate school can lead to desirable jobs may be in another state, creating a “brain drain” back home, and losing the potential benefit of a large number of innovators and start-up founders.
  • Marquette’s Explorer Challenge program fuels innovation. It may sound like a NASA project, but it’s really quite grounded. It’s the brainchild of Michael R. Lovell, president of Marquette University in Milwaukee, WI, and it’s called the Explorer Challenge Program. The program was judged so effective that it was recently selected as the winner in the Innovation Category of the University Economic Development Association’s annual Awards of Excellence.

Posted January 16th, 2019

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