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