The following is a list of the articles that appear in the January 2012 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. 6, No. 1, January 2012

• U of Ulster’s “evaluation license” allows a trial period to “test drive” technologies. OpenUlster, a new service recently launched by The University of Ulster, is an approach to the open innovation model that includes an “evaluation license.”
• Should inventors have more control over their discoveries? Would technology transfer get a bolt of adrenaline if university-based inventors had more commercialization pathways to consider for their discoveries? For most institutions with clearcut IP ownership policies — now often more carefully policed after the Stanford v. Roche Supreme Court ruling — the possibilities are limited. But does that necessarily mean your TTO is always in the best position to commercialize a faculty member’s discovery?
• TTOs often walk a fine line when negotiating rights to improvements. Dealing effectively with the rights to IP improvements in your license agreements can be a tricky task, since both your TTO and prospective licensees have good reason to want those rights. If your office is like most, you probably seek to negotiate ownership of all improvements that are dependent on the claims of your licensed seminal patents so that, in the event of early termination, you’ll have improvements available assist in relicensing.
• Consolidation model helps focus tech transfer efforts at U of Arizona. A new technology commercialization center aims to improve tech transfer at the University of Arizona (UA) in Tucson with an innovative approach that consolidates the school’s many offices and divisions related to research commercialization — but that’s not the only goal of the new Tech Launch Arizona.
• Guest Commentary: What is the real value in Real Options?
• Vanderbilt TTO undergoes overhaul, expansion in bid to ramp up results. In the last six months, just about everything has changed at Vanderbilt University’s technology transfer office.

Posted January 23rd, 2012 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the December 2011 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. 5, No. 12, December 2011

• Fixed fee deals with U.S. law firms, foreign affiliates bring huge savings for BYU. An imaginative program to control patent prosecution costs by going to fixed fee arrangements with all of its U.S. law firms has enabled the BYU Technology Transfer Office to increase its number of patent applications by several hundred percent while holding the line on total yearly patent prosecution expenses.
• New pact brings “express” concept to sponsored research agreements. With so much interest and attention focused on express licensing vehicles, it was perhaps just a matter of time before the approach was applied to IP arising from sponsored research agreements.
• Purdue’s OTC creates new service to help app developers get to market. Following the first disclosure of a mobile app by a faculty member, the Purdue Research Foundation’s Office of Technology Commercialization (OTC) recognized an untapped opportunity to both create a new revenue stream and better serve its researchers.
• Legal Opinion: The not-so-obvious and potentially hazardous consequences of the Stanford v. Roche ruling.
• Commercialization Clinic aims to show grad students path to market. Graduate students can be a prime source of innovative technology at a university, but getting their projects into the commercialization pipeline can be daunting given that most students know little or nothing about the process.
• Rapid Start-Up School seeks to foster entrepreneurial postdocs and grad students. A new program at Arizona State University aims to harness the creativity of the school’s postdoc and grad student communities and channel it into new companies to pump up the state’s economy.
• What TTOs need to know about freedom-to-operate analyses. Full-scale freedom-to-operate investigations are complex and expensive, typically handled by outside law firms, but it’s still important for TTO managers to know what they are.

Posted December 16th, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the November 2011 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. 5, No. 11, November 2011

• U of Michigan taps endowment for start-up funding. When the University of Michigan announced in October that it would use a portion of its $7.8 billion endowment to fund start-ups, it wasn’t a surprise to James Golubieski, president of the Foundation for Venture Capital Group, an entity affiliated with the University of Medicine and Dentistry of New Jersey (UMDNJ). That’s because Michigan called to ask UMDNJ about its unique funding for start-ups, forged out of its endowment fund — a massive pool of dollars that is typically invested in traditional vehicles like stocks and bonds.
• Under pressure, universities aim their innovation engines on jobs, economic development. Three years into a sputtering economy, everyone connected with technology transfer is feeling the heat. Communities want jobs and economic development, and university administrators want to be able to demonstrate that they are answering the call. It’s a tall order for TTOs, but it is also an ideal time to put bold vision on the table, and showcase the value that active commercialization programs can deliver.
• Universities tapping military resources to enhance commercialization efforts. It’s still a relatively untapped area, but two creative universities have found a way to join forces with the military in an effort to expand their commercialization opportunities.
•  “Start-up in a Box” program complements TTO efforts and gets companies quickly off the ground. Inventors at three University of California system campuses who don’t have much experience in starting companies — or much interest in doing the blocking and tackling needed to get a start-up off the ground — have a new place to turn for help.
• Follow these steps to write a start-up business plan. Melissa Krinzman, founder and managing director of Venture Architects LLC, acknowledges up front that start-ups should be wary of anyone who says they’re a business plan expert. “We consider ourselves students of business planning because there’s no one right way to write a plan,” Krinzman says.

Posted November 22nd, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the October 2011 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. 5, No. 10, October 2011

• The time is now to begin adapting TTO operations under America Invents Act. Despite howls of protest from many in the university technology transfer community, patent reform is a reality.
• Peer review process nets UMN outside validation and a roadmap for the future. When Timothy Mulcahy took the helm as vice president of research at the University of Minnesota in 2005, his marching orders were pretty clear. “The university needed to do a better job of commercializing its technology,” recalls Mulcahy. “So we embarked at that time on a major overhaul and a major reengineering of our entire technology transfer office.”
• OHSU’s TTO staffs up as it implements “tech transfer 3.0.” The headline in the Portland Business Journal, “OHSU to double tech transfer office,” was more sensational than the leadership in the technology transfer office would have liked. While the headline isn’t completely off base, the TTO’s director of technology ventures and marketing Kristin Rencher, MBA, says it was misleading, because some of the positions filled were approved three years previously — before the recession.
• TTO patent strategies run the gamut, from nurturing ‘bunts and singles’ to swinging for the fences. Members of most professions are guided by best practices when making key decisions, but when it comes to which innovations should be patented by TTOs — and how many — the jury still appears to be out concerning what works best. Perhaps that’s simply because different universities have different missions and philosophies, but nevertheless the range of strategies is considerable.
• CU revamps advisory board to gain more benefit from outside expertise. Most TTOs have some sort of business advisory panel, but not everyone makes effective use of the board’s input or capabilities. Count the University of Colorado as one that does, after it recently revamped its board based on best practices observed by its TTO director.

Posted October 20th, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the September 2011 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. 5, No. 9, September 2011

• Industry metrics underpin new framework for benchmarking tech transfer. As a consultant in the life sciences industry for nearly two decades, Rosemarie Truman has seen her share of benchmarking studies. So when her firm, RHT Consulting of Leesburg, VA, was asked to evaluate benchmarking processes in university tech transfer and identify opportunities for improvement, she was surprised — and intrigued — at the gaps she discovered.
• Start-up CEOs don’t always work out, so plan accordingly. Nurturing a start-up is hard enough even in the best of cases, but most TTOs have run into a tough problem that can kill even the brightest prospects for building a new business around a promising technology: a CEO who just isn’t working out.
• Despite need for protection, insurers struggle to underwrite IP risks for TTOs. Should your TTO’s intellectual property be insured, much like university buildings and other assets?
• U Penn start-up model attracts faculty inventors, skilled entrepreneurs. The idea of a non-profit university being involved with for-profit companies is a notoriously sticky issue. However UPstart, a new program in the Center for Technology Transfer at the University of Pennsylvania in Philadelphia, PA, has found success in clearing away many of the traditional obstacles.
• Guest Commentary: Sustaining technology transfer office legitimacy: The role of mission statements.
• New site provides two-way communication for start-ups, investors. Many before have tried — and many have failed — to create a site that matches entrepreneurs and angel investors. According to David S. Rose, serial entrepreneur, managing partner of Rose Tech Ventures LLC, and CEO of Angelsoft, “there have been literally 150 different shots taken at matching entrepreneurs and angels, and every single one either failed totally or changed its business model.” The problem, he says, is that the sites “ended up having thousands of entrepreneurs with no real investors anywhere in sight.”

Posted September 16th, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the August 2011 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. 5, No. 8, August 2011

• Take quick action when licensees don’t meet obligations. Effectively dealing with licensees who don’t live up to their bargain is a lot like handling a wayward teenager who refuses to do chores or come home by curfew. Hoping the problem will go away just doesn’t work, and coming down too hard can also backfire. But taking immediate action to correct the behavior is a must.
• Wayne State leveraging federal work-study program to aid start-ups. To effectively support start-ups in a troubled economic environment, sometimes you’ve got to get creative – and Wayne State University has adopted a strategy that other schools could adopt to bring more manpower to the table without spending a dime.
• Keep innovative ideas coming with a well-crafted inventor recognition program. As difficult as it is to bring new products to market, you can’t even get to the starting gate without a steady flow of innovative ideas. And to keep those ideas coming, you have to not only nurture relationships with faculty inventors, but also come up with effective methods of showing your appreciation for their innovative output.
• Guest Column: INL develops streamlined due diligence process for screening potential licensees.
• In quest for tech transfer improvement, UC Davis reaches out for ideas — and gets plenty. Business seems to be humming along at UC-Davis. So why did the university reach out to researchers and the business community earlier this year, seeking their ideas for ratcheting up tech transfer production?
• Study: Management more important than money for research commercialization. Research universities with an “organizational climate” that actively supports commercialization and encourages interdisciplinary collaboration are more likely to produce robust rates of invention disclosures and patent applications than those that lack such qualities.

Posted August 19th, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the July 2011 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. 5, No. 7, July 2011

• Coulter ‘process’ uses industry discipline as fuel for accelerating research commercialization. Since 2005, the Coulter Translational Research Partnerships have taught researchers and TTOs a disciplined approach to translating university innovation.
• Setting minimum royalties more art than science. A changing economy and technological advances are making complicated calculations of minimum royalty payments much more feasible for those TTOs that choose to use them. But minimums, despite the changing climate around them, still serve two basic purposes — to prod a licensee into a sharper focus on getting a product to market and securing market share and to fund the TTO’s operations before the product really starts throwing off cash.
  
• Hopkins speed dating event helps inventors, entrepreneurs make perfect matches. An annual “speed dating” event at Johns Hopkins University is now “probably our most effective” program in an ongoing effort to generate licenses and start-ups, notes Elizabeth Good, director of ventures at JHU.
• Computer science-driven incubator uses PROBEs to churn out new enterprises. You would think a college professor would be jubilant to see her students regularly scooped up by companies like Google and Microsoft even before they graduate, but Lenore Blum, professor of computer science at Carnegie Mellon University found something troubling in this dynamic.
• Five-pronged “Greenlighting Startups” initiative aims to boost commercialization, showcase success. The way Rick McCullough sees it, Carnegie Mellon University has become one of the most entrepreneurial universities in the country yet doesn’t get the same recognition as some other leading universities — and he’s trying to change that.
• How Temple University made it to the million dollar club. How do you get to the next level? Temple University has some ideas.

Posted July 21st, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the June 2011 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. 5, No. 6, June 2011

• Supreme Court’s Stanford v. Roche decision requires extra care in managing IP. In a decision that many observers view as a correct, if disappointing, reading of the issues in the case, the U.S. Supreme Court’s ruling on Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. puts universities on notice that the Bayh-Dole Act does not automatically vest them in the ownership of federally funded inventions.
• SPECIAL FOCUS: Technology Scouting
  Scouting programs corral more quality disclosures. University technology transfer offices nationwide have begun to recognize that a proactive posture is the key to success in the new economic and business climate. At some universities, that sea change has resulted in a radical rethinking of the cradle-to-grave model, starting with how TTOs source technologies lurking in their research labs.
  • Scouting program puts charge in stagnant invention disclosure rate.
  • Consider these two models for technology scouting.
  • Keys to effective technology scouting.
• New Clarkson U program swaps tuition assistance for equity in student start-ups. Many universities now have programs in place that seek to encourage entrepreneurship among students — with services ranging from targeted curricula and on-campus mentors to office space. But Clarkson University in upstate New York has embarked on something entirely new: It is offering tuition aid in exchange for equity in student start-ups.
• Should you make the leap to electronic laboratory notebooks? If leading industries are replacing paper-based laboratory notes with electronic laboratory notebooks (ELNs), does that mean that research universities should make the switch as well? Ronald Kudla, the executive director of intellectual property, technology transfer, and new ventures at Rensselaer Polytechnic Institute (RPI) in Troy, NY, thinks such a transition is worth strong consideration.

Posted June 17th, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the May 2011 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. 5, No. 5, May 2011

• Innovation scorecard helps TTOs to identify strengths, weaknesses. How should you measure innovation in your tech transfer office when your organization is already considered best in class?
• Nurture more start-ups, win community support with new “distributed incubation” model. Having launched one of the first business incubators in the country three decades ago, Rensselaer Polytechnic Institute in Troy, NY, has certainly nurtured its share of young start-ups. However, in recent months, commercialization experts at the university began to question whether the traditional incubator model was really the best way to promote commercialization and economic growth in the region.
• New venture employs web-based marketing to secure early-stage funding. Most TTOs and university start-ups have learned the importance of using the web to market their technologies — but what about using web marketing to land funding for those technologies or start-ups?
• Small- to medium-sized TTOs collaborate for added commercialization heft. Some TTOs are finding a way around staff and budget limitations by pooling their resources with other like-minded offices, and finding new ways to leverage established relationships for mutual gain.
• WIPO’s dispute resolution center gains favor as tech transfer crosses the globe. As technology commercialization becomes increasingly an international affair, IP-related disputes between organizations from separate countries are rising accordingly. The heightened potential for lengthy and expensive cross-border lawsuits has in turn created a growing market for less expensive arbitration and mediation alternatives — and the Geneva, Switzerland-based World Intellectual Property Organization’s Arbitration and Mediation Center is stepping up to fill that need.
• Is your IP safe? Computer breaches demonstrate risks. If you haven’t worried much about the security of your TTO’s data — particularly sensitive files containing details of your IP — a recent incident at Ohio State serves as a loud wake-up call.

Posted May 18th, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the April 2011 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. 5, No. 4, April 2011

• Latest deal puts spotlight on pros, cons of royalty stream buy-outs. Ohio University has become the latest research institution to trade one of its more lucrative royalty streams for up-front cash — to the tune of at least $39 million, with the potential to reach $52 million. In this case, a private equity firm managed by DRI Capital, Inc. has purchased partial royalty income rights to OU’s license for Somavert, a growth hormone antagonist that is used to treat acromegaly, a form of gigantism that affects an estimated 40,000 people.
• The lean start-up: Will it work for your TTO? Conventional academic start-up models often remove the scientist — and, thus, the science — from the equation as early as possible, focusing instead on company-building rather than technology refinement. But advocates of the emerging “lean start-up model” say that’s a primary factor in why so many start-ups stall.
• Osage fund’s ‘coinvestment’ concept wins support from top universities. The proof of the pudding, when it comes to venture capital funds, is in the selling, and Osage University Partners has clearly met the test.
• ICAP Ocean Tomo plans to pool university technologies for auction. At this year’s annual AUTM conference in Las Vegas, ICAP Ocean Tomo unveiled plans for a new University Tech Pool program, which will incorporate patents held by many universities to create large portfolios to put on the auction block.
• Universities seek broader approaches to student IP rights. A recent change in IP policy at the University of Missouri System has shined a spotlight on a growing trend among universities: Allowing students to retain the rights to their IP.
• TTOs have a role to play in handling of litigation hold memoranda. Are you familiar with litigation hold memoranda? If not, or if you rely solely on your attorneys to handle their drafting and distribution without TTO input, attorney experts say it’s time to add this to your list of responsibilities.

Posted April 18th, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the March 2011 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. 5, No. 3 (pp 33-48) March 2011

• Consider offshoring to improve staff efficiency, expand your business reach. The prospect of offshoring certain tech transfer functions to create jobs in the United States seems counterintuitive. Under the proper circumstances, however, offshoring can improve productivity, reduce costs, and save jobs in U.S. TTOs.
• Express licenses: Craft realistic standards that fit your mission, needs. Many technology transfer professionals enjoy hammering out licensing deals and, in fact, pride themselves on their negotiating prowess. However, there is no denying the considerable time and energy required to execute such one-off agreements.
• Tired of being a reactive TTO? Learn how Oregon State is switching gears. Sometimes a new name represents a simple rebranding. But at Oregon State University in Corvallis, transitioning the Office of Technology Transfer into the Office for Commercialization and Corporate Development marks a shift from a reactive posture to a proactive, holistic approach.
• External review: The ‘meat’ of invention disclosure evaluations. The Office for Commercialization and Corporate Development at Oregon State University  expects that its new intellectual property evaluation group will drive faster turnaround on invention disclosures, more informed decision-making by licensing associates, and stronger relationships with inventors and the business community.
• Heard in the Halls: AUTM 2011 Annual Meeting
• U Hawaii OTT realizes significant savings in legal expenses. The University of Hawaii Office of Technology Transfer and Economic Development has saved thousands of dollars and in some cases as much as 33% in legal expenses with creative cost-cutting strategies, says Lee M. Taylor, JD, LLM, technology licensing associate at UH-OTTED. While the office has employed a number of different strategies involving reducing its legal expenses, he adds, the OTT has also realized savings by using the business school as a “shadow CEO.”

Posted March 18th, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the February 2011 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. 5, No. 2 (pp 17-32) February 2011

• ‘Ready-to-sign licensing boosts efficiency and deal flow. Ever think that the time it takes to negotiate a license and hammer out all the details for a minor IP asset — a mouse model, a basic algorithm, or a piece of software, for example — is hardly worth the piddling amount of revenue you can expect to gain as a result? If so, you are hardly alone in grappling with a problem that is increasingly common in technology transfer settings.
• Stats offer big-picture value, but TTOs may need to dig deeper. In tech transfer circles, nothing sparks a heated debate faster than the topic of metrics.
• Chicago-area TTOs join together to launch mentor program. One of the biggest challenges to early-stage innovation is the need to attract experienced advice in the face of limited resources. That’s been a perennial problem in Chicago, where embryonic technologies often wilt on the vine for lack of outside assistance to nurture them, says Alan Thomas, MBA, director of UChicagoTech, the Office of Technology and Intellectual Property at the University of Chicago.
• Licensing trends reflect impact of recession and hints of recovery. It’s difficult to pinpoint overarching trends in licensing university intellectual property, experts point out, because such activity tends more toward institution-specific micro-trends. But it’s increasingly easy to label the general state of university IP licensing: the worst is over. As the crippling recession of the last few years starts to recede, activity in most areas of IP licensing has stopped its slide and, in many cases, is starting to return to normal. But no one is yet singing “Happy Days are Here Again.”
• WARF grad students become tech transfer ambassadors. The WARF Ambassador Program uses graduate research students trained in the basics of WARF’s tech transfer process to initiate educational efforts and targeted contacts with UW-Madison researchers.

Posted February 17th, 2011 under Current Issue. [ Comments: none ]

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