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TTO turns to outside firm to auction off older patents

It’s not always a straight line from invention to commercialization — and sometimes you have to get very creative in finding a pathway that leads to the marketplace. When the University of Arkansas for Medical Sciences faced that reality regarding a portfolio of patents related to “Methods for the Early Detection of Ovarian Cancer,” it turned to a relative newcomer to the university technology transfer space, Reno-based IpAuctions Inc.

As its name suggests, the firm auctions patents that have been figuratively gathering dust or that, for any number of reasons, need to be moved sooner rather than later. In the case of UA’s ovarian cancer-related technology, the school had previously licensed the IP to a start-up, which subsequently decided to release it back to the university, reports Michael Douglas, PhD, director of UAMS Bioventures, the school’s tech transfer arm.

“Maintaining a fairly broad patent estate for a young company is an expensive proposition,” he comments. “Apparently [the start-up’s] business priorities had changed to a certain extent to the point where it didn’t feel it needed to carry some patents. But we felt there was significant patent life that might bring value to another licensee — even though [the patent] was a little bit older than most companies are interested in. So we opted to work with IpAuctions.”

He adds: “If you go through traditional tech transfer operations with an older technology, for some start-ups the university carries the patent costs and you’re making maintenance and annuity payments — and you’ve already invested $20,000 to $40,000 or more. We’re hoping at this point, because of the age of the technology, to recover costs and maybe a little extra on top of that. IpAuctions represents, for us, an opportunity to see if we can find a buyer for technology we were unable to find a commercial partner for through our normal operations.” A detailed article on the auction strategy appears in the January issue of Technology Transfer Tactics. To subscribe and access the full article, along with six years of archived best practices and TTO success strategies, CLICK HERE.

Posted February 13th, 2013 under Tech Transfer


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