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

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Technology Transfer Tactics,
Vol. 1, No. 2 (pp 17-32) June 2007

• Tech transfer offices alter licensing strategies after MedImmune decision. Can a company agree to license a patented technology from you, then challenge the very validity of that patent and still retain its license? Believe it or not, the U.S. Supreme Court says “yes,” and tech transfer managers are now scrambling to adjust their agreements to keep patent predators at bay ………. p. 17
• Consider convertible notes in early-stage seed funding. Universities looking to avoid valuing a spin-out too soon can sidestep the issue in some cases by encouraging the company to raise capital with convertible notes instead of equity. The tactic — more controversial than it is unknown — is popular with investors who want to minimize the likelihood of a subsequent down round of financing due to an inflated valuation at an earlier round. But it can be seen as an obstacle by some parties because it involves more than a simple hand-over of cash ………. p. 17
• Co-inventorship, assignment combine to form explosive mixture. Don’t get into an assignment situation for a co-invented technology unless you’re looking for heartache. But, if you must go that route, keeping the lines of communication wide open throughout the licensing and product development process is key ………. p. 18
• Avoid these top 10 license agreement mistakes. When it comes to negotiating license agreements, knowing what not to do can be the key to a long-term deal that both protects your IP and brings your organization a maximum revenue stream. With that in mind, Alan Bentley, director of medical device commercialization with Cleveland Clinic Foundation, gave his list of “top 10 license agreement mistakes” ………. p. 19
• Intel pushing “subscription license” model as alternative to royalties. Technology giant Intel Corp. is pressing universities for wide-scale adoption of a “subscription license” model instead of more traditional royalty-based licensing in the semiconductor and IT industries. The non-exclusive licensing model addresses problems inherent to these high-tech field and offers real advantages for schools, including a guaranteed steady minimum income stream and a streamlined licensing process, says Intel attorney Jaina Selawski ………. p. 21
• Department-level web pages enhance TT office’s internal marketing efforts. Tech transfer professionals at the University of Arizona, recognizing the value of enhanced internal marketing, have created a series of department-specific web pages targeting deans and department chairs. These pages not only keep the TT office in front of these key internal audiences on a regular basis, but they also provide information the deans and department heads may need on short notice to prepare for a presentation ………. p. 26
• ‘Innovator Initiative’ uses outreach, recognition to bring researchers into tech transfer ‘community.’ Tech transfer managers looking for effective strategies to promote their offices internally to researchers and boost the flow of invention disclosures can take a page from an outreach and recognition program developed at the University of Pittsburgh ………. p. 29
• Legal Q&A: Did prof’s loose tongue erode our IP’s patentability? ………. p. 31