The following is a list of the articles that appear in the February 2010 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. 4, No. 2 (pp 17-32) February 2010

• Kauffman proposal for ‘free agent’ faculty draws strong reaction from TTO execs. It was the shot heard round the tech transfer world; in fact, it was interpreted by many tech transfer professionals as a shot across the bow, if not a full-force slap in the face. In a brief one-page treatise in the January/February edition of the Harvard Business Review that the stalwart publication cited as one of the top 10 “breakthrough ideas” of 2009, Robert E. Litan, the Kauffman Foundation’s vice president for research and policy, and Lesa Mitchell, vice president for advancing innovation, set tongues wagging and blood pressures rising.
• Keep your eye on the option pool during initial valuation. Successful negotiation of start-up funding leaves most new entrepreneurs flush with excitement. But investors will almost always slip an option pool into the equation, which means the share value to the founding group can sink in a flash. It can be a throttling experience for the uninitiated.
• Engineering institute’s contract work builds corporate links to aid long-term tech transfer results. Giving engineering students hands-on training in product development techniques and real-world experience working with industry is the core mission of the Institute for Industrial Innovation created by the College of Engineering and Applied Science at the University of Wisconsin-Milwaukee. The Institute’s ability to do contract engineering research projects for industry isn’t expected to reap immediate technology transfer benefits in terms of expanding or monetizing UWM’s portfolio of intellectual property. However, building industry contacts via the Institute is a vital component in UWM’s long-term efforts to develop a sustained technology transfer strategy.
• Incubators adapt to changing conditions, but remain a solid option for start-ups. Start-up incubators have been hammered by the same economic forces that have buffeted the entire commercialization pipeline, and several have run into severe distress that poses an extra challenge for the fledgling technology start-ups they are designed to nurture. Still, the sector as a whole is in fine shape, and incubators remain a key option for technology transfer offices looking to support new ventures.
• A sign of the times? RPI shuts down campus incubator. In a move that reflects the changing landscape for high-tech incubators as well as the potential hazards for start-ups housed within them, Rensselaer Polytechnic Institute announced in early February that it is closing its on-campus business incubation center. Ironically, RPI’s incubator is one of the oldest and most successful, having spawned several major companies over its 30-year existence.
• Pre-incubation program offers fledgling companies an official address and valuable support. Incubators are great for nurturing early-stage companies that are at the point where they need staff and space to fuel growth. However, what about those very early-stage companies that have great ideas and IP, but they need funding and further development before they will be ready to hang out a shingle?

Posted February 17th, 2010 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the January 2010 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. 4, No. 1 (pp 1-16) January 2010

• Don’t panic, but take steps to prepare for Bilski decision. The U.S. Supreme Court’s much-anticipated ruling in the  Bilski case will likely alter the landscape for business method patents and send shockwaves through the tech transfer community. Though no one can predict for certain the outcome, many observers believe the days of business method patents are numbered
• UNC introduces standardized ‘express’ start-up license. Forming a start-up at the University of North Carolina at Chapel Hill may become easier following the introduction of a standard licensing arrangement that the university is promoting as its “best deal”
• In bold stroke, U of Kentucky brings clinicians into commercialization pipeline. In 2008, only one disclosure came out of the University of Kentucky’s Medical Center in Lexington, and it didn’t go anywhere. But in just the last quarter of 2009, there were 16 disclosures, including two that already have working prototypes
• TTOs face new reality when seeking venture funding. TTOs say they are facing a hard truth when it comes to early-stage financing: Projects that would have been considered “venture ready” a few short years ago are having a much tougher time attracting VC funding today
• Do poster presentations jeopardize your TTO’s commercialization efforts? Go to virtually any innovation showcase or industry meeting and you’re bound to see a collection of poster presentations. They look harmless enough; summaries of ongoing research often created by graduate students. But beneath their innocuous façade, some say, lies a potential threat to the commercialization of the technologies in question
• UMich creates ‘one-stop-shop’ center for start-ups. Having a wide range of services and resources available to faculty entrepreneurs and investors has always been seen as an important goal by the TTO at The University of Michigan, but recently its leadership decided that those services could be provided more effectively and efficiently by creating a central contact point for all interested parties

Posted January 19th, 2010 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the December 2009 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. 3, No. 12 (pp 177-192) December 2009

• Best practice tools and strategies for university start-ups. A start-up is by definition lacking in experience. And though a few lucky ones have veteran leaders who’ve been through the process before, that’s the exception rather than the rule when it comes to university spinouts. It stands to reason, then, that start-up managers are in dire need of best practices, and that’s exactly what Georgia Tech’s Advanced Technology Development Center (ATDC) is delivering. The center has posted a series of best practice documents on its website in an attempt to reach out to more of the region’s start-ups than it can work with directly.
• New push for global access licensing attracts broad support, adds complications. In the latest milestone in a movement that has been gaining steam for at least the last decade, the Association for University Technology Managers (AUTM) and six prominent universities have endorsed a “Statement of Principles and Strategies for the Equitable Dissemination of Medical Technologies.” The statement is a general outline of seven practices designed to ensure that university licensing facilitates, rather than impedes, the delivery of life-saving medicines to the developing world.
• U of Delaware creates IP gateway to boost commercialization. In less than three years, technology transfer at the University of Delaware (UD) in Newark has evolved from an acknowledged bare-bones licensing effort into broad-scale commercialization activity.
• Use patent analytics to ID licensees and get deals done. Finding licensees for your IP is a challenge in any environment, but in a recession it can seem more like waiting for lightning to strike — and about as likely. The key to sniffing out deals in a down economy, according to one IP consultant, is taking a proactive approach and increasing your odds by employing patent analytics.
• TAEUS introducing new ways to attract licensees. TAEUS International Corp., based in Colorado Springs, CO, is on the cusp of launching several software products in early 2010 that could help university TTOs implement standardized systems to describe patented technologies for the IP marketplace and then put those technologies in front of potential licensees, says Matt Troyer, vice president of innovation at the full-service IP firm.
• Patenting partnership makes TTO’s law firm part of the team. As a relatively small technology transfer office, the Office of Economic Innovation and Partnerships (OEIP) at the University of Delaware (UD) in Newark “doesn’t have the luxury of being able to personally guide every single invention or patent application that comes into our office,” says Bruce Morrissey, director of technology development at OEIP’s IP Center. “So we developed a team approach with our law firm to get some leverage on that process.”
• Manage expectations of state lawmakers to secure long-term support for tech transfer. Politics and tech transfer make strange bedfellows, but with jobs and revenues evaporating in many states, it’s increasingly difficult for TTOs to avoid turf wars in the halls of their own statehouses. And some of the battles are getting ugly.

Posted December 17th, 2009 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the November 2009 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. 3, No. 11 (pp 161-176) November 2009

• Recipients of ARRA funds grapple with onerous reporting requirements. Research institutions that went into overdrive to get a piece of the government’s unprecedented, $787 billion stimulus package, approved in February, are now grappling with onerous reporting requirements they must comply with or risk losing the funds
• Firms springing up to fund patent infringement litigation. Patent holders — including technology transfer offices — don’t have to make the difficult judgment call about whether to spend often-scarce resources on defending their assets in infringement cases. A new option has emerged in which a third-party essentially foots the bill for that litigation, in exchange for a cut of the proceeds
• Measuring economic impact of tech transfer more art than science. What’s the best way to assess the performance of a technology transfer operation? The answer really depends on who wants the information
• Get familiar with new terrain to capitalize on international opportunities. Markets may be down in the U.S., but TTOs can find ample licensing opportunities abroad
• Heard in the Hallways: Last month in San Francisco, more than 1,000 LES members convened for the organization’s annual meeting, and TTT was on-site. Here are some observations and ideas gleaned in both sessions and hallway conversations
• Boot camp plays central role in shaping entrepreneurial culture. When it comes to promoting an environment that’s conducive to research commercialization and innovation, some schools stand out as exemplary in taking an aggressive, active role in shaping an entire culture of entrepreneurialism. The University of Maryland is one of those schools, and its Technology Start-Up Boot Camp plays a critical role in shaping that culture
• Guest Commentary: Consider the strategic implications of trade secrets

Posted November 19th, 2009 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the October 2009 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. 3, No. 10 (pp 145-160) October 2009

• TTOs seek to bolster start-up activity with VC type funds. With the dramatic downturn in the economy exacerbating the already challenging problem of generating early stage funding for university start-ups, a number of TTOs have taken the bull by the horns and launched their own VC-type funds. Some say this may be more than just a reaction to a current crisis; it may signal a new tech transfer paradigm. For universities looking to help their startups
• Hospital TTO takes a different path to commercialization with private sale of IP. The Technology Transfer Office at Children’s Hospital Los Angeles (CHLA) is veering off the traditional path to commercialization with a pending sealed-bid private sale of a portfolio of 10 issued U.S. patents and foreign patent application for noninvasive substance detection, including a noninvasive blood glucose monitor. The TTO has hired the IP brokerage firm ICAP Ocean Tomo, LLC, in Chicago to conduct the private sale for the hospital, which is affiliated with the Keck School of Medicine of the University of Southern California and the California Institute of Technology (Caltech) in Pasadena. The two institutions have an inter-institutional agreement for CHLA to handle licensing for this IP. CHLA had tried the traditional commercialization route with this particular technology
• When times get tough, TTOs turn to students for extra manpower. Economists say the country is on the verge of a recovery, but businesses and universities are still in cost-cutting mode. They’re slashing budgets, curtailing programs, and implementing hiring freezes. At the same time TTOs are under increasing pressure to bring in fresh revenues. With few if any options for adding staff, many offices are turning to the student body for the help they need
• TTOs report successful faculty outreach with informal “entrepreneur office hours.” Faculty members with novel ideas for inventions or companies are busy people with packed schedules. So as technology transfer professional plan outreach efforts, taking a decidedly informal approach – rather than attempting to cajole researchers into scheduled meetings – may improve your results
• TTO launches entrepreneur-in-residence program without spending a cent. At the University of North Carolina Charlotte, revenues are down, but high unemployment and economic uncertainty are driving students and area business to the schools doors. That puts pressure on the TTO to get more done, but without additional resources to handle the workload
• Legal Q&A. U.S. rules regarding co-ownership of patents don’t apply in other countries
• Get your TTO ready for ‘tech transfer 2.0.’ A number of TTOs in the U.S. have gotten their feet wet in the world of social networking, but what Brian McCaul, ICT, director of commercialization & exploitation in the Enterprise and Innovation Office at the University of Leeds (UK), proposed recently is well beyond what any have attempted and perhaps beyond what many have imagined: a new world of tech transfer – or knowledge transfer in common European parlance – in which social networking forms the foundation for a revolution in the way innovation makes its way into the marketplace

Posted October 22nd, 2009 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the September 2009 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. 3, No. 8 (pp 129-144) August 2009

• TTOs reach for new metrics to document their value. Most TTOs continue to dutifully count up and report on licenses, patents, and revenues — and to a large extent, these metrics continue to form the basis of how performance in the technology transfer arena is gauged. But there is a growing drumbeat of dissatisfaction with these traditional measures because they no longer adequately account for the kinds of activities that tech transfer personnel find themselves increasingly engaged in ……… p. 129
• U of Virginia revamps tech transfer model to enhance integration, relationships. The University of Virginia (UVA) and the UVA Patent Foundation in Charlottesville are on a joint mission to re-make the technology transfer process at the university, reports Thomas Skalak, PhD, vice president for research and graduate studies and ex officio representative on the UVA Patent Foundation board ……… p. 129
• Fledgling Boliven patent search site integrates array of tools for TTOs. After getting a tip from one tech transfer professional about a patent search tool that he cited as more useful than most, TTT decided to check it out ……… p. 130
• Legal Q&A: Take these steps to minimize the risks of ‘residual information’ ……… p. 131
• AUTM unveils a draft proposal for new metrics. Recognizing that the mission for many TTOs has broadened well beyond licensing and patenting, the Association of University Technology Managers has been exploring the creation of new measures that do a better job of capturing the many different activities technology transfer professionals typically engage in ……… p. 133
• Learn the signs of a pending reorganization — and how to deal with one. A reorganization may be in the cards for some university TTOs that need to reposition to adapt to the current economic climate ……… p. 136
• UTRF decentralizes to provide more individualized tech transfer. The University of Tennessee Research Foundation has decentralized its technology transfer operations in order to better support its mission of building the university’s research enterprise, managing and commercializing its IP, promoting an entrepreneurial spirit, and boosting the state’s economy ……… p. 137
• Experts offer strategies to strengthen COI process, policies. As relationships between researchers, TTOs, funders, start-ups, corporate sponsors, and licensees get ever more complex, your conflict of interest policies and procedures must keep pace ……… p. 139
• Associations advocate COI compliance by 2010 while NIH contemplates new rules. TTOs can turn to several reports on COI reform to guide their efforts ……… p. 140
• U of Alabama shores up patent policy as fledgling tech transfer program matures. The University of Alabama System recently updated its research commercialization policy in an effort to better secure its IP rights and to specifically claim ownership of all inventions that use school resources ……… p. 143

Posted September 21st, 2009 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the August 2009 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. 3, No. 8 (pp 113-128) August 2009

• Patent litigation: Sometimes it’s a risk worth taking. If there was any doubt about a jury’s willingness to take patent infringement seriously, the record $1.67 billion verdict returned against Abbott Laboratories in early June should go a long way toward erasing such concerns. Centocor Ortho Biotech, Inc. and co-plaintiff New York University argued that their patents covering antibodies against tumor necrosis had been infringed by Abbott’s blockbuster drug, Humira. A federal jury in Texas agreed, finding Abbott to be a willful infringer ……… p. 113
• Use proactive measures to prevent contentious IP disputes with researchers. Most tech transfer professionals have experienced at least some degree of contentious wrangling between their university and inventors over IP ownership, but thankfully pitched legal battles over IP remain the exception. Even in those cases, experts say, the events that lead to the courtroom steps are rife with missed opportunities to solve a dispute amicably ……… p. 113
• Rutgers creates its own exit strategy for spinoffs. Just because the economy has been stalled doesn’t mean the flow of innovation stops at universities. But with little funding available, Rutgers University has come up with a new, more proactive system designed to keep the wheels turning ……… p. 114
• For start-up survival, shift gears and focus on revenue. The small start-ups that university TTOs help build around their researchers’ innovations are often designed as, in essence, outsourced innovators for larger companies. As the small firms incubate, their officers and financial backers look for bigger firms to provide the deeper resources they need to reach their full commercial potential. It’s a good plan, says Lina Ramos, founder of and president at Emerging Growth Enterprise LLC, La Jolla, CA, but too often the incubators have to make their pitches with one hand figuratively tied behind their backs. Too few start-ups in that situation, she points out, have what potential buyers are demanding: real revenues ……… p. 115
• Service-based spinoff answers the demand for a unique skill set. Experts generally agree that it’s a bad idea for universities to maintain too large of a stake in any spin-off company, but a unique model at the New Mexico Institute of Mining and Technology in Albuquerque suggests that when circumstances are right, this type of configuration can pay off for both the university and the company ……… p. 124
• Another funding option: Create a portfolio of prize spinoffs and go public. If the old funding mechanisms aren’t working these days to finance your TTO’s best inventions and spin-offs, you might consider a completely different route. Take your organization public using an IPO featuring a cluster of your best start-up companies and most promising technologies ……… p. 126

Posted August 19th, 2009 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the July 2009 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. 3, No. 7 (pp 97-112) July 2009

• Eye-popping compensation levels invite scrutiny, debate. Attracting and keeping talented staff is an ever-present challenge in the technology transfer arena. Hemmed in by what taxpayers and legislators consider to be adequate salaries for employees at non-profit institutions, university administrators often have great difficulty recruiting personnel with the kind of industry experience that is so crucial to landing lucrative licensing deals ……… p. 97
• University Funds offers new VC model to commercialize technology. In the wake of a dramatic pullback by venture capital funds in early-stage financing, the arrival of The University Funds, LLC (UFunds) is a welcomed new approach to commercializing intellectual property ……… p. 97
• Use these strategies to slash the cost of patent prosecution. Even before the recession gutted TTO budgets, Libby Hart-Wells, PhD, senior director in the University of Maryland-Baltimore’s Office of Commercial Ventures and Intellectual Property, knew things had to change — both in terms of management of patent prosecution and its cost ……… p. 98
• TTOs testing contract research waters, seeing  potential benefits. A stroll through the aisles of the recent BIO convention in Atlanta will give you a clear sense that the market for Contract Research Organizations, is alive and well. Dozens of these companies’ booths beckoned to the 20,000 attendees — and specifically to pharma and biotech companies the CROs see as their lifeblood. But many of the contract research companies are now also targeting the university market, where TTOs and research labs with too many projects to handle or too few resources represent an emerging secondary market ……… p. 99
• Look beyond your own technology, and beyond licensing, to ramp up tech transfer profits. There are a variety of pitfalls that are “alive and well” in the tech transfer industry, and those pitfalls will present even greater challenges during tough economic times ……… p. 107
• Make lab tours an effective part of your marketing strategy. Lab tours are not just for TTOs, it seems. DDL, a medical device package testing company based in Eden Prairie, MN, has been using lab tours as a key marketing strategy for the past two years. Judging from the success of DDL’s latest event, TTOs and research labs can learn something about promoting a lab tour by studying the company’s marketing tactics ……… p. 109
• Software tool aims to speed medical device innovation while cutting development costs. If there was ever a time to make your technology development and commercialization process smoother and cheaper, this is it. And Fernandina, FL-based e-Zassi.com has introduced a new set of tools to medical device innovators designed to do just that ……… p. 111

Posted July 16th, 2009 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the June 2009 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. 3, No. 6 (pp 81-96) June 2009

• TTOs take part in mad scramble for research dollars. Technology transfer offices are hardly immune to the severe economic difficulties faced by their parent organizations and the larger communities they serve, but moods are beginning to brighten just a tad in the wake of President Obama’s $787 billion stimulus package, which includes unprecedented sums for scientific research across a broad spectrum including energy, healthcare, education, and telecommunications. In fact, universities and other research institutions across the country are engaged in a mad scramble to fashion proposals that meet stimulus requirements for job creation, accountability, and other agency-specific mandates ……… p. 81
• Examine COI policies as big pharmas take bigger stake in early-stage research. A decade ago, researchers working on novel therapies who sought financial support from large pharmaceutical companies invariably went away empty handed. Flush with their own extensive pipelines, big pharmas were content to sit on the sidelines until research discoveries were well along their way in clinical trials. Then, they would swoop in with a standard licensing agreement, generally providing royalties linked to future commercial sales but rarely offering reimbursement for years of upfront research ……… p. 81
• Model for patent protection at Virginia Tech speeds up commercialization process, but challenges remain. What happens when a faculty inventor’s desire to rush his results into publication collides with the TTO’s efforts to protect the new discovery? Often times, unfortunately, the university loses out on the right to patent or reap any financial rewards from the innovation. By 2003, Fred Lee, PhD, the director of the Center for Power Electronics Systems (CPES), an industry consortium assembled by Blacksburg-based Virginia Tech, had seen this scenario play out so many times that he was determined to come up with a better way ……… p. 82
• TTO uses technology to target IP management/marketing gains. The Intellectual Property Management Office at the University of Oklahoma is taking a unique technical approach to secure, manage, and market its portfolio of intellectual property, with a goal of boosting the number of licensing deals. If the high-tech strategy works, the TTO will be better equipped to navigate through the current economic crisis and beyond, says Cameron J. McCoy, director of technology marketing ……… p. 83
• ‘Trolls’ have a thing or two to teach TTOs about patent protection. While some of the activities regularly undertaken by patent ‘trolls’ offend the sensibilities of most universities, TTOs might be able to draw some valuable lessons and perhaps even emulate one of their key strategies — patent aggregation, argues one prominent patent litigator. In fact, he notes, aggregation could be quite effective when it comes to protecting university IP ……… p. 93
• Florida start-ups to double with integrated statewide program. University TTOs are charged, among other missions, with using research results as magnets for economic development in their communities. Florida schools are finding that combining forces, rather than having each university striving for job creation alone, can build major momentum and have a far greater impact on a state’s economy ……… p. 95

Posted June 23rd, 2009 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the May 2009 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. 3, No. 5 (pp 65-80) May 2009

• WARF boosts productivity and morale with an organizational revamp. Craig Christianson believes the best licensing deals stem not from responding to inquiries about university innovations, but rather by going out and finding the most ideal commercial partners. However, such an approach is difficult to implement if licensing staff spend the better part of each day fielding inbound calls and handling administrative tasks. Consequently, when he took over as licensing director at the Wisconsin Alumni Research Foundation (WARF) in Madison four years ago, he was determined to find a way to free up senior licensing staff to focus on finding deals while at the same time making sure that in-bound inquiries get the attention they deserve ……… p. 65
• Website aimed at inventors gets chilly response from TTOs. Disputes between faculty inventors and universities seldom wind up in court, but that doesn’t mean there aren’t plenty of conflicts. Most TTOs acknowledge that, especially when large sums of money are involved, tensions tend to escalate, and disagreements over terms and conditions can easily arise. But are these disputes typically resolved in an equitable manner? ……… p. 65
• Escrow services may offer extra measure of protection for your IP. Escrow services, a relative newcomer in targeting TTOs as potential customers, may offer an extra measure of security for your IP. Using these third-party companies to protect your valuable innovations may reassure potential licensees that their investment in your technology will not go up in smoke — literally ……… p. 66
• Reduce cost, not quantity, of foreign patent filings. In a down economy, smart TTOs are squeezing costs from every function they can, and foreign patent filings should be no exception. But merely cutting back on the number of filings, rather than focusing on the cost of the work itself, will only cost you more later when the potential revenues from international licensing go unrealized ……… p. 67
• Success in tech transfer will depend on becoming more value-centric, less patent-centric. Technology transfer in coming years will focus less on patents, and much more on other ways of creating value. Universities will consolidate resources into developing fewer, healthier start-ups and will, as a result, devote fewer resources to chasing and prosecuting patents, says tech transfer veteran (and perhaps futurist) Alan Bentley, director of commercialization at the Cleveland Clinic. And that change will affect not only deal-making, but start-ups as well ……… p. 75
• Take a tiered approach to post-license compliance. “Your license agreement is just the beginning,” said Judy A. Byrd, director of the IP consulting firm Invotex Group, addressing attendees at the 2009 AUTM Annual Meeting in Orlando. “Your efforts in managing those licenses are really a crucial part of your overall handling of the invention; it’s important to the inventors, and to how licensees see the relationship. After all, this is a contract.” These tips will help you keep licensees honest after the deal is done ……… p. 78

Posted June 2nd, 2009 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the April 2009 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. 3, No. 4 (pp 49-64) April 2009

• How to avoid potential conflict when inventors want their innovations back. The scenario is not at all uncommon for TTOs: Resources are never adequate to actively work every invention file, and faculty IP that doesn’t get the attention a researcher wants creates a dilemma for the university. Though the innovations involved may be valuable, if they are dormant too long a decision must be made — either move them to the front burner or give them back to the inventor and give up any claim to future revenues. But what happens if the TTO decides it wants to keep ownership while the inventor, frustrated by a lack of progress, wants the IP signed over? ……… p. 49
• Fixed-fee legal work gaining traction with TTOs. Even lawyers are struggling in the down economy, and an increasing number of firms are making it possible for TTOs and the companies they help create to save big dollars by offering fixed-fee pre-packaged services for both patent prosecution and university start-up creation ……… p. 49
• U of AZ creates new position to extract maximum benefits from industry relationships. Large companies often have multi-faceted relationships with universities. In addition to a licensing deal with the technology transfer office, a biotechnology company may choose to sponsor a sporting event, engage an engineering faculty member as a consultant, sponsor scholarships in a special program and recruit interns. Connecting the dots and overseeing these multi-pronged relationships is critical to extract the maximum value from industry partners. That’s why some universities, such as the University of Arizona, are creating new positions or tapping existing talent to focus on these relationships ……… p. 50
• Fixed-fee arrangements spreading to expert testimony in patent litigation. The trend toward fixed-fee legal services in tech transfer has spread to expert witness services in patent infringement litigation. Oean Tomo LLC, a Chicago-based IP Merchant Bank and auction firm, recently announced what it says is the industry’s first fixed-fee pricing for expert services in calculating patent infringement damages ……… p. 55
• Even when outsourcing, TTOs play an important role in royalty audit process. TTO executives know that outsourcing does not mean they don’t bear responsibility for the quality and results of contracted work. And that’s most definitely the case in the royalty audit process ……… p. 56
• TTOs develop creative strategies to connect, build trust with researchers. Increasingly, TTOs are connecting with university researchers over coffee or hors d’oeuvres rather than in offices or meeting rooms. The more informal approach is intended to root out innovations before the disclosure stage and proactively link researchers with entrepreneurs, VCs, and other resources that can help to accelerate the pace of development ……… p. 58
• In North Texas, business coach acts as linchpin in integrated tech transfer effort. In some cases, it takes a village to commercialize an innovation ……… p. 62

Posted April 13th, 2009 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the March 2009 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. 3, No. 3 (pp 33-48) March 2009

• ASU-Penn partnership aims to cut costs, enhance tech transfer results. The tech transfer community is like one big, extended family: some members are fast friends, others squabble, but everyone knows each other. That familiarity — and mutual interest in propelling new technologies into the market — prompts many TTO managers to lend a hand when colleagues ask for help ……… p. 33
• Economic woes impact valuations, but not all sectors are suffering. Valuation is tricky enough when the economy is humming along, but calculating risk in times of unprecedented economic crisis is particularly challenging. With the stock market down roughly 40%, many experts predict correlating dips in IP valuations. However, that is definitely not true in every case. And while it is tempting to back off on deal-making at least until the economy settles down, some TTOs see a heightened opportunity to license out IP that may offer companies financial relief in the form of enhanced efficiency or competitive advantage ……… p. 33
• Royalty triggers are fraught with litigation risk, so use them carefully. Royalty triggers in license agreements can be a sloppy, complicated mess, and they’ve ended up in litigation more often than most technology transfer executives care to think about. As one attorney notes, basing an increased royalty rate on, say, “sales” of the technology at issue may simply beg the question of the exact legal definition of “sales” ……… p. 34
• Patentability is easy, but marketability should drive patent decision-making. While the topic of the session at the AUTM 2009 Annual Meeting was “Assessing Patentable Versus Unpatentable Inventions,” two panelists quickly pointed out that the question for TTOs is not whether you can patent an invention, but whether you should ……… p. 35
• Heard in the Hallways: Business booming for foreign patent filing firm; A number VCs will listen to in a down economy; A TTO’s definition of start-up success; More metrics ……… p. 42
• Research Circles: New collaboration model speeds IP commercialization. Jonathan A. Murray, general manager of Cross Business Programs at GE Healthcare, is convinced ‘it takes a town’ to optimize the innovation process. He is successfully proving that hypothesis using a new innovation model he calls ‘research circles.’ A research circle is “a group of people who have agreed to collaborate together and agreed to follow a set of rules of how to work together as a society.” The ‘citizens’ of the ‘town’ regularly communicate with each other and share information as outlined by the rules, which they must sign onto in order to become part of the circle. The concept is being adopted in a growing number of university-industry research collaborations, and the early reviews are two thumbs up ……… p. 44
• Mentor programs help university start-ups make the grade. University TTOs are increasingly turning to mentoring programs to help new start-ups develop ideas and get the fledgling companies investor-ready. Two programs offer a track record of success other TTOs can learn from — Massachusetts Institute of Technology has had a successful program for nearly a decade, and the University of Virginia launched its highly praised effort five years ago ……… p. 46
  

Posted March 11th, 2009 under Current Issue. [ Comments: none ]

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