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