The following is a list of the articles that appear in the November 2008 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. 2, No. 11 (pp 161-176) November 2008

• Royalty monetization: High-profile deals generate excitement among TTOs. If you had the opportunity to exchange the potential of a lucrative long-term royalty stream for a huge windfall right now, would you take it? An increasing number of TTOs and the organizations that support them are entertaining just such a proposition, and quite a few of them are opting for the sure money ……… p. 161
• Reap the benefits of student-run investment funds. Some technology transfer offices have an additional weapon in their arsenal to develop and commercialize new technologies: technology-focused investment funds managed by entrepreneurial MBA candidates. These funds typically provide limited pre-seed, seed, and early stage venture capital funding ……… p. 161
• Texas Tech outsources portfolio assessment and start-up development. The leadership at Texas Tech University Systems, which found itself with a backlog of 300 inventions and insufficient in-house expertise to adequately evaluate all of them, has teamed with Austin-based LGE Execs for evaluation, management and financing assistance ……… p. 162
• Idea of the Month: Royalty rate incentive helps keep start-ups in-state. University start-ups are great engines for regional economic development, but if your region doesn’t have the resources start-ups need to grow, chances are they’ll relocate and take their jobs and economic benefits with them ……… p. 163
• TTOs can tap post-docs as rich talent pool to enhance local economic growth. One of every TTO’s missions is to serve as a catalyst for local economic growth, and licensing and start-up activity are the obvious staples of a university’s impact on regional financial gains. But one resource many schools don’t fully tap into as an economic driver is the rich talent pool represented by post-doctoral students ……… p. 163
• The case for royalty monetization. Universities and other research institutions that opt to sell all or part of their most lucrative royalty streams do so for four primary reasons ……… p. 164
• Here’s how to jump-start a student-run fund. Raising donations is just the first step in creating a technology-directed student-run investment fund ……… p. 169
• Community colleges, technical schools applying tech transfer to generate jobs. Two-year community colleges and technical schools are applying the principles of technology transfer to assist small businesses and local economies — and even to commercialize ideas developed by their students. By staying close to the market and meeting the needs of local business communities, two-year schools are moving new technology directly onto Main Street ……… p. 172
• Technical college’s Fab Lab turns ideas into prototypes. Fox Valley Technical College has placed itself on the technology transfer map with an innovative “Fab Lab” program that connects engineering experts with inventors in the region ……… p. 173

Posted November 3rd, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the October 2008 issue of Technology Transfer Tactics monthly newsletter. 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. 2, No. 10 (pp 145-160) October 2008

• UGA case illustrates how poor faculty relations give rise to messy disputes. Imagine this: You have a promising invention that is virtually market-ready and a suitor who is eager to ink a deal, but your inventor seems hell-bent on trying to sabotage the agreement and is claiming it undervalues the technology. By most accounts, that is the situation that confronted the Athens, GA-based University of Georgia Research Foundation (UGAR) in 2003 ……… p. 147
• Stock market melts down and IPO drought drags on, but TTOs can still get venture backing. One telltale sign of the struggling U.S. economy — perhaps less visible than recent bailouts, failures, and stock swoons but no less remarkable — can be seen in the near-absolute dearth of companies going public. Initial public offerings (IPOs) are at an all-time low, according to the U.S. National Venture Capital Association (NVCA) ……… p. 147
• Internship program rescues TTO, yields ongoing rewards. Most TTOs view their interns as a helpful set of extra hands to help handle a busy workload. But for the University of Illinois at Urbana-Champaign, an internship program that is now arguably the most vibrant in the country, has been more like a saving grace ……… p. 146
• “Inventor” files for patent on tech commercialization process, but novelty is in doubt. Nobody really expects Jan Buck to receive the patent he’s applied for. But nobody’s taking the application too lightly either — just in case ……… p. 148
• Tactics from the Field: The importance of an effective MTA database: A licensing perspective. Here’s why TTOs need an effective MTA docketing system ……… p. 155
• ‘Realignment’ is key to U of Utah’s stellar start-up performance. Being cited by AUTM as the second-ranked institution in the nation at starting companies based on university technology is impressive enough. But the achievement is even sweeter for the University of Utah, since it comes only three years after beginning a massive tech transfer overhaul ……… p. 156
• Seek extra protections with start-up licenses. When licensing to university start-ups, there are certain steps you should take when crafting your agreement “that you might not have to consider when dealing with an existing company,” says Steve Susalka, assistant director of the Office of Technology Asset Management at Wake Forest University Health Sciences. Here are the key areas Susalka recommends you cover in any start-up license ……… p. 157
• NDA only? Don’t let absence of provisional patent stall license negotiations. When it comes to signing an NDA with a potential licensee, there’s an ideal and then there’s a common reality. And if you only allow your technology out for review under ideal circumstances, you could be missing many licensing opportunities ……… p. 159

Posted October 8th, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the September 2008 issue of Technology Transfer Tactics monthly newsletter. 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. 2, No. 9 (pp 129-144) September 2008

• Purdue philanthropy campaign funds university start-ups. A philanthropic fund earmarked for university start-ups is giving Purdue University’s tech transfer foundation and its nascent companies a major shot in the arm. The school’s early success with its donor campaign offers TTOs a model to emulate ……… p. 130
• Develop proactive outreach to smooth path to licensees, avoid PR nightmares. Four years ago, Andrew Cohn, director of government and association relations at the Wisconsin Alumni Research Foundation (WARF) in Madison, and colleague James M. Haney, PhD, now associate dean in the College of Fine Arts & Communication at the University of Wisconsin-Stevens Point, surveyed tech transfer managers to assess the strengths and weaknesses of their public relations efforts. The authors concluded that TTOs needed more proactive PR activities, increased promotion of their business partnerships, and effective evaluation of their current activities ……… p. 131
• How two small TTOs took different paths to building toward big results. Small technology transfer offices can produce big results, but with fewer staff and resources it takes a different set of strategies than large, well-funded offices use. Whether that means low-cost assistants to handle much of the paper-pushing or a strength-in-numbers consortium to leverage each institution’s assets, being small does not have to mean paltry licensing revenues ……… p. 138
• TTOs’ “exchange” programs open doors to international deals. Case Western Reserve University and Boston University are both hoping to expand the international reach of tech transfer activity — and potentially facilitate multinational business deals — through exchange-type programs with overseas schools. The initiatives bring in technology transfer staff from other countries and put them to work in the universities’ TTOs ……… p. 140
• Craft a contract that yields maximum value for your technology. It may seem like an over-simplification, but thorough preparation remains the most important step you can take to assure that your TTO extracts maximum value from its license agreements ……… p. 142

Posted September 4th, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the August 2008 issue of Technology Transfer Tactics monthly newsletter. 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. 2, No. 8 (pp 113-128) August 2008

• Supreme Court decision on patent exhaustion worries TTOs. On June 9 the U.S. Supreme Court handed down yet another in a string of key patent rulings, sending ripples of concern through university technology transfer offices that are worried about the potential impact of the decision on their approach to licensing IP……… p. 113
• Economic impact study offers proof of tech transfer’s true value. As any tech transfer manager will attest, the economic value of a TTO’s research commercialization efforts extend far beyond the licensing income they generate. Proving it, however, is another thing altogether. Yet TTOs that can compile hard data on how their activities impact the regional economy stand to score important points with university administrators, grant organizations, private donors, and legislators……… p. 113
• Seven NYC institutions produce “combo” marketing brochure to promote their IP. Seven prominent New York City-based research institutions have completed a joint marketing project to tout their accomplishments and spread the word among potential licensees that, together, they represent “The source for biotechnology” in the metropolitan area……… p. 114
• Firm eschews “volume” approach to tech transfer, focuses on IP with highest potential. Taking the time up front to pinpoint which innovations in your IP portfolio are most likely to “hit” really big — and then devoting the lion’s share of commercialization resources to those select high-potential projects can dramatically increase your TTO’s annual licensing revenues……… p. 116
• Tip of the Month: In today’s investment market, proof-of-concept funding will likely have to come from within. Investors are far less willing to fund very early-stage research these days, and without proof-of-concept you might as well not ask. That’s why more TTOs are creating their own funding mechanisms……… p. 121
• CREATE Act compliance: Achieving safe harbor protection may be a moving target. Are your cooperative research agreements in compliance with the CREATE Act? The 2004 U.S. law spells out the legal means to protect your IP from losing its patentability through disclosure to research partners at outside institutions. But ensuring your research agreements fall within the Act’s safe harbor is not as simple as labeling all collaborations “joint research agreements”……… p. 122
• Key negotiating strategies can lead to win-win deals. Negotiating skills aren’t necessarily something you’re born with. But if not, in the tech transfer profession you’re going to need to develop and hone them……… p. 123
• UCF spins tech transfer success with revolutionary ceiling fan design. The technology transfer professionals at the U of Central Florida never could have predicted that a conversation one of its researchers had with his father-in-law about ceiling fans over a decade ago would result in a licensing agreement that’s bringing in over $100,000 in royalties each year……… p. 126

Posted August 4th, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the July 2008 issue of Technology Transfer Tactics monthly newsletter. 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. 2, No. 7 (pp 97-112) July 2008

• Incentives pose tricky challenges but may bring TTOs big rewards. Would the number and value of deals completed by tech transfer offices increase if their staffs received economic incentives or success fees tied to every license agreement completed? ……… p. 97
• Staff turnover won’t disappear, but savvy recruitment and retention strategies can help. “Turnover is inevitable in this business,” said Todd Sherer, PhD, associate vice president and director of the Office of Technology Transfer at Atlanta’s Emory University, during a session at the AUTM annual meeting. But a combination of savvy recruitment and retention strategies can help reduce this perennial TTO problem ……… p. 97
• University spins out a for-profit TTO to jump-start commercialization activity. Noetic Technologies, Inc., of Hattiesburg, MS, provides the University of Southern Mississippi with all the services an institution would expect from its TTO — and more. But please don’t call it a tech transfer “office” ……… p. 98
• UT Dallas opens new office, shifts focus from ‘gatekeeper’ to ‘facilitator.’ The U of Texas at Dallas is reinventing its approach to technology transfer by establishing an office to help researchers create companies and move their inventions from the lab to the marketplace. The Office of Technology Commercialization is designed to shift the university’s role from that of IP gatekeeper to commercialization facilitator ……… p. 99
• Commercializing knowledge-based IP a unique challenge. As Noetic Technologies has branched out from commercializing technology to knowledge-based IP like courseware and software, its key people have learned that these can sometimes be ‘different animals’ ……… p. 106
• International Spotlight: Singapore. The island nation is buzzing with tech transfer activity ……… p. 107
• Tap into alumni networks for funding, licensing opportunities. Formal alumni support networks can facilitate innovator-investor ties and generate needed cash for early-stage research. But some TTOs have found they require more maintenance than they’re worth, while others prefer a looser, less-formal approach to keeping in touch with alums ……… p. 109
• Focusing too much on profit may hold peril for TTOs. Whether TTOs should be viewed as profit or cost centers is a growing source of tension in the tech transfer community. Michael Dilling, PhD, senior licensing associate in the Baylor Licensing Group at Baylor College of Medicine in Houston, echoes many in the industry when he says TTOs “should be as effective as we possibly can in getting technology with commercial potential out into the market. If we’re successful in getting those licenses done and getting that technology commercialized — and if we do a good job negotiating deals on behalf of our institutions — then the money will follow” ……… p. 111

Posted July 1st, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the June 2008 issue of Technology Transfer Tactics monthly newsletter. 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. 2, No. 6 (pp 81-96) June 2008

• Early-stage valuations: Numbers tell only part of the story. Early-stage technology is a funny thing when it comes to valuation. There are all kinds of sophisticated models you can use to arrive at a dollar figure, but when you consider that a great deal of guesswork drives most of these equations, it becomes clear that valuation is much more art than science. Nonetheless, some TTOs do a much better job of assessing the value of nascent innovations than others, and there is no question that the skills involved can be honed and improved ……… p. 81
• Stanford adds new clauses to license agreements in wake of MedImmune case. TTOs all over the U.S. took keen interest in the decision handed down January 29, 2007, by the U.S. Supreme Court in the case of MedImmune v. Genentech Inc., et al, but none more than Stanford University, which was intimately involved in the case. Stanford co-filed an amici brief jointly with Columbia University, The American Association of Medical Colleges, The Association of American Universities and others, and the school was part of a ‘companion’ case in which MedImmune challenged a licensed patent involving functional antibodies ……… p. 81
• Researchers get their hands dirty at Entrepreneurship Academy. It’s one thing to lecture innovators on the steps they’ll need to take to commercialize their inventions. It’s another to guide them through actually getting their hands dirty. The Green Technology Entrepreneurship Academy is a week-long “school” designed to teach researchers how to participate effectively in getting their inventions out of the lab and into the marketplace ……… p. 82
• TTOs mix and match systems to enhance their IT capabilities. TTOs often find themselves in an odd in-between world that requires configuring programs designed for a small enterprise within a large, enterprise-wide university IT infrastructure ……… p. 83
• “Star Chamber” taps into outside experts, sets stage for future deals. Here’s how one TTO in Scotland is reaching outside the campus to tap industry experts and realize the full commercial potential of researchers’ discoveries ……… p. 84
• Study: Emerging TTOs need benchmarks, best practices to move forward. A national survey of emerging technology transfer offices suggests they face many of the same challenges that plague their brethren at large research universities, including inadequate financial and human resources, lack of institutional support, and inappropriate emphasis on revenue generation ……… p. 91
• RIT cedes IP ownership in new tech transfer model. The Rochester (NY) Institute of Technology has unveiled an innovative tech transfer model designed to rev up its industry partnerships by allowing the companies it works with in R&D collaborations to own rather than license the IP involved ……… p. 93
• ‘Bucks for Brains:’ U of Louisville program more than lives up to its name. Kentucky’s Research Challenge Trust Fund, better known as “Bucks for Brains,” has been a major boon for the University of Louisville, where an influx of research talent has attracted more than $144 million in research funding, with an economic impact of more than $320 million — more than triple the state’s $100 million investment ……… p. 94

Posted June 4th, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the May 2008 issue of Technology Transfer Tactics monthly newsletter. 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. 2, No. 5 (pp 65-80) May 2008

• U.S. TTOs look to make connections with overseas counterparts. Along with an ongoing trend to seek more investment and licensing dollars from overseas companies, American tech transfer offices are increasing seeking — and establishing — ties with TTOs around the globe in an effort to stimulate more global opportunities for their research commercialization efforts ……… p. 65
• Attention to detail is key to crafting a ‘bulletproof’ NDA/CDA. Crafting of a Non-Disclosure Agreement (NDA) or Confidential Disclosure Agreement (CDA) that effectively protects your IP and other proprietary information during license negotiations is a delicate balancing act between making the document too broad or too narrow — both of which can be dangerous, experts tell Technology Transfer Tactics ……… p. 65
• Desire to expand global reach not unique to U.S. TTOs. U.S.-based TTOs are not alone in seeking ties outside their borders, as London-based Imperial College showed with its recent foray into India ……… p. 70
• Moving TTO into foundation structure opens new opportunities. Since Clemson University transitioned its technology transfer operations into a 501(c)3 foundation, it has “gone from single-digit licensing to double-digit licensing numbers, in large part due simply to having greater tools of negotiation at our disposal,” reports Vincie C. Albritton ……… p. 66
• New tech transfer model uses market pull approach to speed commercialization. Stevens Institute of Technology is experimenting with what it says is a unique model for technology transfer that will connect researchers with market intelligence from key players off campus at the very start of the invention process ……… p. 67
• University offers SBIR/STTR program to local businesses. For a university TTO to develop an in-house SBIR/STTR program may not be all that unusual, but when that service is offered not only to faculty and university spinoffs but also to local businesses, it sets the program apart ……… p. 68
• Tips from the Field: Create more value for your technologies by focusing on portfolios, not individual inventions ……… p. 74
• Tech transfer marketing guru offers best practices and benchmarks. Find out how the University of Florida measures its marketing efforts, and the strategies it uses to get 25% of marketed technologies licensed ……… p. 76
• U-Mich broadens industry outreach with Business Engagement Center. The University of Michigan in Ann Arbor has established an innovative center intended to foster relationships with industry on a broader level than the licensing focus of its TTO, and feed those relationships back into commercialization efforts ……… p. 77
• Online newsletter helps TTO spread the word. An online newsletter published by the Univerisity of Colorado TTO is helping the office spread the word about the both the office’s accomplishments and its available technologies ……… p. 78

Posted May 1st, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the April 2008 issue of Technology Transfer Tactics monthly newsletter. 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. 2, No. 4 (pp 49-64) April 2008

• Struggling for budget dollars? Here’s how to make your case for more. How many universities lose millions of dollars each year because technology transfer offices are understaffed but the institutions’ administrators decline to invest additional dollars to ramp up commercialization efforts? Increasingly, TTOs are wrestling with this question even while they prioritize efforts to move intellectual property through the commercialization pipeline. Like the chicken-and-egg conundrum, university administrators often demand that TTOs generate more revenues before they will allocate additional resources. But it’s that very lack of funding that sometimes prevents discoveries in researchers’ labs from getting to market ……… p. 49
• Incentive pay for TTO staff: plusses and minuses. If TTO staff can bring in millions of dollars with extra effort and shrewd deals, why not incentivize those staff with extra cash for good performance? Apparently, it’s easier said than harmoniously achieved ……… p. 49
• Clinic of Innovation uses health care metaphors to win staff over to tech transfer. While many universities outside North America are rapidly moving to increase commercialization activity, there remains a wide gap in many countries between the desire to get innovations to market and the involvement of researchers in the process. To cross that chasm, an entrepreneurial physician in Norway has launched a “clinic” to educate researchers and staff and put market-focused innovation on a faster track ……… p. 50
• Formal ‘expert network’ offers TTO crucial guidance. The TTO leaders at Carnegie Mellon University realized that with the broad range of domains covered by their researchers, it was virtually impossible for their staff to become sufficiently conversant in all of them. This recognition led to the formation of the “Expert Network” ……… p. 51
• Heard in the Hallways. Technology Transfer Tactics sent a team of reporters to the recent AUTM meeting in San Diego. Here is a collection of tips, strategies, and comments heard in conversations with attendees and in both formal and informal gatherings throughout the event ……… p. 52
• SPECIAL REPORT: The promise and pitfalls of using an IP exchange. There is no denying the appeal of an Internet-based matchmaking apparatus for IP. However, most of these efforts have generated mixed results thus far. Nonetheless, many exchanges are working diligently to make the process easier for TTOs — and more effective. Get a detailed look at how IP exchanges may best fit into your marketing strategy, plus see our two-page spread designed to help you comparison shop among the various services ……… p. 58
• ‘CEOs in waiting’ offer entrepreneurial advice for TTO’s startups. University Technologies International (UTI) is employing an unusual strategy to boost its start-up efforts: It has created an “Executive in Residence” program through which experienced entrepreneurs sign on to provide UTI start-ups with the benefit of their experience ……… p. 62

Posted March 31st, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the March 2008 issue of Technology Transfer Tactics monthly newsletter. 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. 2, No. 3 (pp 33-48) March 2008

• Use these strategies to contain patent prosecution costs. There is no inexpensive way to go about prosecuting a patent, but at the same time, TTOs spend tens of thousands of dollars every year on late fees and other expenses they might have avoided with a better game plan on the front end of the process. That’s the word from several tech transfer officials, whose organizations have developed a collection of strategies to keep their patent prosecution costs from spiraling out of control ……… p. 33
• Revamped inventions policy adds incentives, removes disincentives for researchers. The University of Toronto’s (UT) TTO has revamped its inventions policy in hopes of jump-starting its tech transfer activities. The strategy involves dramatically increasing financial rewards for researchers and removing disincentives to using the TTO as a commercialization partner ……… p. 33
• Ohio initiative broadens definition, scope of IP bundling. The University of Akron (OH) is taking IP bundling to a whole new level, combining not just intellectual property from its own portfolio with other universities’, but bringing many tech transfer activities from other schools in the region under its wing ……… p. 34
• Cross-border technology transfer opens up big opportunities. A rapidly escalating trend toward both academic and commercial internationalization has swung the door wide open for technology transfer offices willing to invest the time and effort to penetrate overseas markets. But how do you get started, and what hurdles can you expect to encounter? ……… p. 35
• Guest Commentary: Tips for when and how to conduct an effective royalty audit. Most audits result in recoveries well in excess of audit costs and produce higher royalties going forward. Underpayments in the millions of dollars are distressingly common ……… p. 36
• Press releases a vital ingredient in your IP marketing recipe. The press release is often the vital initial ‘handshake’ from the TTO to its target audience when introducing a new technology ……… p. 44
• Prepare researchers for ‘culture shock’ of business world. When it comes to preparing scientists for the world of hard-nosed business as their innovations enter the commercialization process, short of an MBA course even the best tutelage will not adequately brace high-minded researchers for the culture shock they will experience, tech transfer experts say. But that doesn’t mean tech TTOs shouldn’t try to bridge the chasm with mentoring programs, seminars, and ongoing communication. Just don’t expect too much from your efforts, and understand that connecting scientists and investors is a bit like trying to mix oil and water ……… p. 45

Posted March 3rd, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the February 2008 issue of Technology Transfer Tactics monthly newsletter. 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. 2, No. 2 (pp 17-32) February 2008

• Patenting not always best for software, experts say. Universities are a primary breeding ground for software tools with significant commercial potential. However, there is growing recognition that factors unique to software development should, in some cases, alter the commercialization strategies used by TTOs — especially if the primary goal is to quickly disseminate the software into the hands of users ……… p. 17
• Poor record keeping opens door to forfeiture of IP rights, grant dollars. It may be as old as science itself, but the careful maintenance of a laboratory notebook is in danger of becoming a lost art, according to observers. Some, in fact, say there is an ‘epidemic’ of poor record-keeping that could lead to lost patent rights and grant dollars ……… p. 17
• Attorney develops new valuation method for early-stage IP. A patent attorney frustrated by difficulty providing specific valuation guidance to a university client decided to take the matter into his own hands. He developed a new valuation method so promising that his own university decided to patent it and make him a licensee ……… p. 18
• Streamlined processes, swift negotiations turn Rutgers TTO into a profit center. Using a strategic focus on shrewd but swift negotiations, along with simplification of the licensing process, Rutgers University’s Office of Corporate Liaison and Technology Transfer has become one of a select few TTOs showing black ink on its bottom line, turning a profit for the first time in its history ……… p. 19
• ‘First look forums’ plant seeds for investment in early-stage research. To increase your chances of finding outside funds for your early-stage technologies, it pays to plant some seeds early on and develop relationships between key researchers and investors. That’s exactly what the University of Wisconsin-Madison has done with a series of “FirstLook Forums,” which give angels and VCs a sneak peak at promising university research ……… p. 25
• Publish or protect: Anxious researchers present challenge in TTO efforts to secure IP rights. It’s a well-known challenge: Researchers so anxious to publish their work that they don’t want to wait until the university has secured a patent or proper IP protection ……… p. 26
• Think twice before launching IP-related litigation. Discovering that your organization’s valuable intellectual property is being ripped off or your license agreements are being violated is likely to bring a visceral reaction something akin to “we’ll sue their pants off.” But legal and tech transfer experts say that is rarely the best course of action, reserved only for the most egregious cases and instances where the cost of going to court — which can run $1 million a month and up to $30 million total when up against a large corporation — can be justified by the value of the IP or the flagrant nature of the infraction ……… p. 29

Posted February 1st, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the January 2008 issue of Technology Transfer Tactics monthly newsletter. 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. 2, No. 1 (pp 1-16) January 2008

• Focus on sublicensing to protect IP, maximize revenues. Sublicensing is a tricky issue for tech transfer offices, with the potential to dilute the overall value of licensed IP but also offering the possibility of more revenue from downstream deals that can boost the TTO’s overall return. Getting favorable terms, several veteran negotiators say, is critical to both protecting your organization’s rights and assuring a strong future royalty stream. ……… p. 1
• “Option fund” cuts investment risk, brings early angel involvement. Establishing an “option fund” — a lower risk investment vehicle that allows angels to increase their stake in a technology only after certain developmental milestones are met — appears to hold promise as a way of increasing early-stage funding for university innovations and getting more research into the marketplace ……… p. 1
• BYU’s ‘creative works’ office makes the most out of low-tech IP. Brigham Young University is tapping into the revenue potential of its low-tech IP by handling it in a separate office, allowing dedicated staff to focus on many products the TTO simply wouldn’t have time to commercialize ……… p. 2
• Kodak’s sponsored research strategies offer model for academic-industry partnerships. Large-scale sponsored research partnerships between major corporations and universities are raising concerns about academic freedom and corporate influence on campus but also offering mammoth infusions of funding for vital technology innovations ……… p. 3
• Manage vanity start-ups with facts, determination. You’re less likely to have to deal with a vanity start-up than you were five years ago, but these ego-driven projects will always exist. The best you can do is arm yourself with facts, secure administration backing, and stick to your guns when Professor Famous decides he wants a corporate legacy to testify to his research prowess ……… p. 4
• Revisit sublicenses in light of MedImmune decision. Sublicensing arrangements must now be viewed in the context of last year’s U.S. Supreme Court decision in MedImmune v. Genentech, which held that a patent licensee need not breach a license agreement in order to seek a declaratory judgment of patent invalidity, unenforceability, or noninfringement ……… p. 7
• Require detailed royalty reports, audit power in sublicensing deals. Validating an accurate flow of revenue from sublicensees back to the original licensor is one of the thorniest issues of sublicensing ……… p. 9
• Tip of the Month: When negotiating abroad, beware of hidden cultural differences ……… p. 14
• Focus on students to build an “entrepreneurial ecosystem.” One of the keys to fostering a long-lasting “entrepreneurial ecosystem” on campus is engaging students in the research commercialization process. Two tech transfer experts recently outlined their “best practices” for tapping into the innovation power of their students at the University Start-ups Conference held at the National Institutes of Health in Maryland ……… p. 15

Posted December 28th, 2007 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the December 2007 issue of Technology Transfer Tactics monthly newsletter.

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. 1, No. 8 (pp 113-128) December 2007

• Tech transfer managers develop tactics to improve MTA process. Most tech transfer professionals who oversee the day-to-day negotiation, processing, cataloging, storage, and retrieval of material transfer agreements (MTAs) would like nothing better than to see universal implementation of the global, web-based eMTA Commons system that’s currently under development by an AUTM working group ………. p. 113
• Research institutes pool their inventions to create more value. As standalone offerings, many inventions just aren’t worth as much as you might hope. But the concept of IP bundling is catching on as a way to enhance that value by creating a package of related inventions. And if you can’t create attractive enough bundles within your own institution, partnering with other organizations may provide the answer ………. p. 113
• “IP landscape analysis” helps researchers focus on market opportunities. The tech transfer office at the University of Illinois at Urbana-Champaign is taking an innovative approach to educating its researchers about commercialization opportunities for their work. Instead of waiting for researchers to complete their studies and submit invention disclosures to explore the potential for commercialization, the TTO is stepping in much earlier in the process ………. p. 114
• Licensing your ‘know-how’ holds revenue potential, but seller beware. Licensing “know-how” held by researchers — either in combination with a patent or instead of one — can represent an often overlooked revenue stream for universities, technology transfer officials say. But accomplishing this is tricky, involving careful attention to confidentiality, pricing, and even faculty relations ………. p. 115
• Heard in the Halls: Like it or not, conference reveals realities of VC funding ………. p. 117
• How long is too long? University calculates MTA turnaround time benchmarks. The University of Washington has accumulated a vast array of statistics on its MTA process ………. p. 119
• Protect your patent rights by ensuring timely compliance with federal disclosure requirements. Tech transfer professionals who gain a good understanding of the facts involved in Campbell Plastics Engineering v. Brownlee can enact procedures to help their university avoid the loss of patent rights due to lack of timely disclosure ………. p. 122
• Use this checklist for federally sponsored research compliance. Here’s a quick rundown of compliance tasks you must adhere to when inventions arise out of federally sponsored research ………. p. 124
• New web site boosts exposure for U of Delaware’s technology. University TTOs looking to improve their web sites and use the web to generate more interest in technology licensing opportunities may want to visit the revamped TTO web site at the University of Delaware ………. p. 126

Posted December 1st, 2007 by Leslie Norins under Current Issue. [ Comments: none ]

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