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