The following is a list of the articles that appear in the May 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. 5 (pp 65-80) May 2009

• WARF boosts productivity and morale with an organizational revamp. Craig Christianson believes the best licensing deals stem not from responding to inquiries about university innovations, but rather by going out and finding the most ideal commercial partners. However, such an approach is difficult to implement if licensing staff spend the better part of each day fielding inbound calls and handling administrative tasks. Consequently, when he took over as licensing director at the Wisconsin Alumni Research Foundation (WARF) in Madison four years ago, he was determined to find a way to free up senior licensing staff to focus on finding deals while at the same time making sure that in-bound inquiries get the attention they deserve ……… p. 65
• Website aimed at inventors gets chilly response from TTOs. Disputes between faculty inventors and universities seldom wind up in court, but that doesn’t mean there aren’t plenty of conflicts. Most TTOs acknowledge that, especially when large sums of money are involved, tensions tend to escalate, and disagreements over terms and conditions can easily arise. But are these disputes typically resolved in an equitable manner? ……… p. 65
• Escrow services may offer extra measure of protection for your IP. Escrow services, a relative newcomer in targeting TTOs as potential customers, may offer an extra measure of security for your IP. Using these third-party companies to protect your valuable innovations may reassure potential licensees that their investment in your technology will not go up in smoke — literally ……… p. 66
• Reduce cost, not quantity, of foreign patent filings. In a down economy, smart TTOs are squeezing costs from every function they can, and foreign patent filings should be no exception. But merely cutting back on the number of filings, rather than focusing on the cost of the work itself, will only cost you more later when the potential revenues from international licensing go unrealized ……… p. 67
• Success in tech transfer will depend on becoming more value-centric, less patent-centric. Technology transfer in coming years will focus less on patents, and much more on other ways of creating value. Universities will consolidate resources into developing fewer, healthier start-ups and will, as a result, devote fewer resources to chasing and prosecuting patents, says tech transfer veteran (and perhaps futurist) Alan Bentley, director of commercialization at the Cleveland Clinic. And that change will affect not only deal-making, but start-ups as well ……… p. 75
• Take a tiered approach to post-license compliance. “Your license agreement is just the beginning,” said Judy A. Byrd, director of the IP consulting firm Invotex Group, addressing attendees at the 2009 AUTM Annual Meeting in Orlando. “Your efforts in managing those licenses are really a crucial part of your overall handling of the invention; it’s important to the inventors, and to how licensees see the relationship. After all, this is a contract.” These tips will help you keep licensees honest after the deal is done ……… p. 78

Posted June 2nd, 2009 under Current Issue