The following is a list of the articles that appear in the June 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. 6 (pp 81-96) June 2009

• TTOs take part in mad scramble for research dollars. Technology transfer offices are hardly immune to the severe economic difficulties faced by their parent organizations and the larger communities they serve, but moods are beginning to brighten just a tad in the wake of President Obama’s $787 billion stimulus package, which includes unprecedented sums for scientific research across a broad spectrum including energy, healthcare, education, and telecommunications. In fact, universities and other research institutions across the country are engaged in a mad scramble to fashion proposals that meet stimulus requirements for job creation, accountability, and other agency-specific mandates ……… p. 81
• Examine COI policies as big pharmas take bigger stake in early-stage research. A decade ago, researchers working on novel therapies who sought financial support from large pharmaceutical companies invariably went away empty handed. Flush with their own extensive pipelines, big pharmas were content to sit on the sidelines until research discoveries were well along their way in clinical trials. Then, they would swoop in with a standard licensing agreement, generally providing royalties linked to future commercial sales but rarely offering reimbursement for years of upfront research ……… p. 81
• Model for patent protection at Virginia Tech speeds up commercialization process, but challenges remain. What happens when a faculty inventor’s desire to rush his results into publication collides with the TTO’s efforts to protect the new discovery? Often times, unfortunately, the university loses out on the right to patent or reap any financial rewards from the innovation. By 2003, Fred Lee, PhD, the director of the Center for Power Electronics Systems (CPES), an industry consortium assembled by Blacksburg-based Virginia Tech, had seen this scenario play out so many times that he was determined to come up with a better way ……… p. 82
• TTO uses technology to target IP management/marketing gains. The Intellectual Property Management Office at the University of Oklahoma is taking a unique technical approach to secure, manage, and market its portfolio of intellectual property, with a goal of boosting the number of licensing deals. If the high-tech strategy works, the TTO will be better equipped to navigate through the current economic crisis and beyond, says Cameron J. McCoy, director of technology marketing ……… p. 83
• ‘Trolls’ have a thing or two to teach TTOs about patent protection. While some of the activities regularly undertaken by patent ‘trolls’ offend the sensibilities of most universities, TTOs might be able to draw some valuable lessons and perhaps even emulate one of their key strategies — patent aggregation, argues one prominent patent litigator. In fact, he notes, aggregation could be quite effective when it comes to protecting university IP ……… p. 93
• Florida start-ups to double with integrated statewide program. University TTOs are charged, among other missions, with using research results as magnets for economic development in their communities. Florida schools are finding that combining forces, rather than having each university striving for job creation alone, can build major momentum and have a far greater impact on a state’s economy ……… p. 95

Posted June 23rd, 2009 by Leslie Norins under Current Issue. [ Comments: none ]

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 by Leslie Norins under Current Issue. [ Comments: none ]

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 by Leslie Norins under Current Issue. [ Comments: none ]

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 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the February 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. 2 (pp 17-32) February 2009

• Take these steps to limit the impact of licensees’ economic woes. Most university TTOs license a sizable percentage of their early-stage technologies to small companies, so dealing with cash-strapped licensees isn’t a new phenomenon, says Daniel Burns, president of Daniel Burns & Associates, Inc., in San Francisco. However, the U.S. economy’s recent nosedive into a hard recession has definitely exacerbated the problem, he stresses ……… p. 17
• Draw lines carefully when licensing technology to sponsored research partners. What appear to be sweet licensing deals with sponsored research partners could turn very sour if they tread the same ground as a little-known but important 1996 case in which researchers successfully argued they were cut out of royalties, which were “mischaracterized as research funds” ……… p. 17
• Vanderbilt’s TTO takes advantage of e-commerce opportunities. VU e-Innovations automates the licensing process by offering up digital or downloadable IP assets to interested users who gain access to the innovations by simply clicking “yes” to the terms of a standard license agreement, and then paying for such rights with a credit card ……… p. 18
• TTOs debate the pros and perils of dealing with patent aggregators. If you’re itching for a lively debate, few topics set off as many sparks in tech transfer circles as the relative merits of patent aggregators — companies that acquire huge numbers of patents, sometimes with mysterious intentions. Many TTOs are concerned that aggregators — sometime referred to as “trolls” or non-practicing entities — will simply use the patents to litigate and that doing business with such an organization could compromise their underlying mission to promote development of their technologies. On the other hand, such deals can bring in revenue for innovations that would otherwise go begging ……… p. 19
• Guest Column: Save time and money by implementing software IP management best practices. A key question for TTOs — which in many cases does not get asked let alone answered — is this: How should software IP management be handled in order to streamline the transfer process, especially in today’s world of open-sourced, out-sourced, easily searched, and easily copied software? ……… p. 27
• UC-San Diego uses MTA process to “seed” technology and prove its market appeal. One of the keys to successful technology transfer is recognizing an opportunity to maximize your commercialization options when you see it. And that’s exactly what the University of California at San Diego did when it used the school’s materials transfer program to ship working samples of a wireless technology called “CalRadio” straight to potential buyers before a licensing deal was contemplated ……… p. 29
• Legal Q&A: Communication is best weapon to fight IP leakage in faculty consulting arrangements ……… p. 31

Posted February 2nd, 2009 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the January 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. 1 (pp 1-16) January 2009

• IRS questionnaire a ‘shot across the bow’ for university TTOs. In what one attorney is calling a shot across the bow, the U.S. Internal Revenue Service is putting universities on notice that it is going to put their finances under a magnifying glass to root out any practices or revenue-generating activities that run afoul of the institutions’ tax-exempt status ……… p. 1
• Strategic planning, long-term view help TTOs manage through sour economic times. Technology transfer professionals tend to be a positive bunch. Interacting with inventors, entrepreneurs, and venture capitalists will do that to you. However, with the economy in the tank and new rounds of layoffs topping the headlines on a daily basis, it’s tough to stay upbeat. However, tech transfer experts who have been through down economic cycles before suggest a far better approach is to use this time to weed out wasteful spending, make sure everyone in the office is productive, and put in place strategic plans for the long term ……… p. 1
• Financing woes? Create a VC fund exclusively for your university. In a dicey market, creative financing strategies are more important than ever to keep the stream of innovation flowing from your university. One Scottish institution has taken that to heart. Instead of relying solely on the whims of angel and venture capital investors, the University of Strathclyde has created a dedicated fund to finance commercial opportunities exclusively coming out of its own research labs ……… p. 2
• University TTOs can adopt lessons learned from DoD tech transfer process. Although the mission of a university TTO is significantly different from that of a government laboratory, best practices adopted in U.S. Department of Defense (DoD) TT operations can be adapted in other settings ……… p. 3
• Guest Commentary: The perils of entering into negotiations. “There is no harm in entering into a dialog” is a common refrain in the board room. So, too, is “we have nothing to lose by negotiating. If we don’t like the deal, we can always walk away later.” Far too often, however, when it comes to negotiations between TTOs and potential licensees, nothing could be further from the truth ……… p. 10
• Idle corporate IP can bolster your TTO’s portfolio. Despite recent legislation that removed most of the tax benefit for corporations that donate idle patents, TTOs can benefit by seeking out unused corporate IP, says Ken Anderson, director of entrepreneurial and small business support at the Delaware Economic Development Office in Wilmington ……… p. 11
• TurboNegotiator software aims to smooth the path to sponsored research agreements. It’s getting tougher to craft research collaborations between academia and industry, primarily because the laborious — and often, ultimately, fruitless — negotiation of intellectual property rights in sponsored research agreements has become such a barrier ……… p. 14

Posted January 1st, 2009 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the December 2008 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. 2, No. 12 (pp 177-192) December 2008

• Focus on physicians to unearth an untapped source of lucrative IP. couple of decades ago, a young dermatologist working for a Sutter Health hospital in northern California formulated the idea that one could use botulinum toxin for aesthetic purposes, to plump thin lips and smooth out wrinkles. He wasn’t the only physician toying with the notion at the time, but Sutter failed to pursue the idea or file a patent, and the doctor moved on to private practice. In 2007, Botox earned Irvine, CA-based Allergan $1.2 billion in sales ……… p. 177
• TTO uses grading system to sort IP portfolio and prioritize marketing efforts. If your office is strapped for time and resources like most TTOs, with staff in continuous scramble mode, it is close to inevitable that some valuable technologies will not get the attention they deserve. However, there are ways to not only bring a sense of order to the process and prioritize the most valuable IP assets, but also to boost TTO productivity so more inventions make it from the lab to the marketplace, according to Rick Silva, PhD, director of technology transfer for the University of Colorado in Denver (UCD) ……… p. 177
• Streamlined COI policy guides faculty involved in spin-offs. Spin-off companies create unique challenges for university TTOs because faculty inventors are often torn between the responsibilities involved with launching a new business and their university work. Further, trying to stay on the safe side of an institution’s conflict-of-interest policy is challenging, in large part due to the typical length and complexity of the rules governing COI ……… p. 178
• TTO enlists alumni attorneys to provide discounted services. The accelerating commercialization activity at Lehigh University requires the services of patent attorneys, and with a modest budget the TTO has found a creative way to afford those services: They use alumni patent attorneys who are willing to work at discounted rates for their alma mater ……… p. 179
• Idea of the Month: Rutgers incentivizes faculty to use template cooperative research agreements ……… p. 184
• Establish clear policies for ownership of inventions. Chances are that among the thousands of students lugging backpacks and skateboarding across campus, at least one is a budding genius who will make a valuable discovery while working in your university’s labs. The question then becomes, who owns the IP? ……… p. 185
• Adopt TTO mission statement to align strategies with goals. Whether by choice or by force, TTOs often seek to be all things to all people, from university administrators and researchers to state and local government officials, local businesses, licensees, outside investors, and alumni. But taking a scattershot approach to tech transfer is less effective than focusing on a single strategic goal and aligning all activities to that directive ……… p. 187
• Spend time on front end of strategic planning to avoid problems on back end. The TTO at Yale University is considered a model of strategic planning ……… p. 188
• Executive-in-residence programs gain steam as schools try to boost start-ups, keep businesses in-state. A growing number of TTOs are experimenting with various models of entrepreneur-in-residence programs ……… p. 199

Posted December 3rd, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the November 2008 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. 2, No. 11 (pp 161-176) November 2008

• Royalty monetization: High-profile deals generate excitement among TTOs. If you had the opportunity to exchange the potential of a lucrative long-term royalty stream for a huge windfall right now, would you take it? An increasing number of TTOs and the organizations that support them are entertaining just such a proposition, and quite a few of them are opting for the sure money ……… p. 161
• Reap the benefits of student-run investment funds. Some technology transfer offices have an additional weapon in their arsenal to develop and commercialize new technologies: technology-focused investment funds managed by entrepreneurial MBA candidates. These funds typically provide limited pre-seed, seed, and early stage venture capital funding ……… p. 161
• Texas Tech outsources portfolio assessment and start-up development. The leadership at Texas Tech University Systems, which found itself with a backlog of 300 inventions and insufficient in-house expertise to adequately evaluate all of them, has teamed with Austin-based LGE Execs for evaluation, management and financing assistance ……… p. 162
• Idea of the Month: Royalty rate incentive helps keep start-ups in-state. University start-ups are great engines for regional economic development, but if your region doesn’t have the resources start-ups need to grow, chances are they’ll relocate and take their jobs and economic benefits with them ……… p. 163
• TTOs can tap post-docs as rich talent pool to enhance local economic growth. One of every TTO’s missions is to serve as a catalyst for local economic growth, and licensing and start-up activity are the obvious staples of a university’s impact on regional financial gains. But one resource many schools don’t fully tap into as an economic driver is the rich talent pool represented by post-doctoral students ……… p. 163
• The case for royalty monetization. Universities and other research institutions that opt to sell all or part of their most lucrative royalty streams do so for four primary reasons ……… p. 164
• Here’s how to jump-start a student-run fund. Raising donations is just the first step in creating a technology-directed student-run investment fund ……… p. 169
• Community colleges, technical schools applying tech transfer to generate jobs. Two-year community colleges and technical schools are applying the principles of technology transfer to assist small businesses and local economies — and even to commercialize ideas developed by their students. By staying close to the market and meeting the needs of local business communities, two-year schools are moving new technology directly onto Main Street ……… p. 172
• Technical college’s Fab Lab turns ideas into prototypes. Fox Valley Technical College has placed itself on the technology transfer map with an innovative “Fab Lab” program that connects engineering experts with inventors in the region ……… p. 173

Posted November 3rd, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the October 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. 10 (pp 145-160) October 2008

• UGA case illustrates how poor faculty relations give rise to messy disputes. Imagine this: You have a promising invention that is virtually market-ready and a suitor who is eager to ink a deal, but your inventor seems hell-bent on trying to sabotage the agreement and is claiming it undervalues the technology. By most accounts, that is the situation that confronted the Athens, GA-based University of Georgia Research Foundation (UGAR) in 2003 ……… p. 147
• Stock market melts down and IPO drought drags on, but TTOs can still get venture backing. One telltale sign of the struggling U.S. economy — perhaps less visible than recent bailouts, failures, and stock swoons but no less remarkable — can be seen in the near-absolute dearth of companies going public. Initial public offerings (IPOs) are at an all-time low, according to the U.S. National Venture Capital Association (NVCA) ……… p. 147
• Internship program rescues TTO, yields ongoing rewards. Most TTOs view their interns as a helpful set of extra hands to help handle a busy workload. But for the University of Illinois at Urbana-Champaign, an internship program that is now arguably the most vibrant in the country, has been more like a saving grace ……… p. 146
• “Inventor” files for patent on tech commercialization process, but novelty is in doubt. Nobody really expects Jan Buck to receive the patent he’s applied for. But nobody’s taking the application too lightly either — just in case ……… p. 148
• Tactics from the Field: The importance of an effective MTA database: A licensing perspective. Here’s why TTOs need an effective MTA docketing system ……… p. 155
• ‘Realignment’ is key to U of Utah’s stellar start-up performance. Being cited by AUTM as the second-ranked institution in the nation at starting companies based on university technology is impressive enough. But the achievement is even sweeter for the University of Utah, since it comes only three years after beginning a massive tech transfer overhaul ……… p. 156
• Seek extra protections with start-up licenses. When licensing to university start-ups, there are certain steps you should take when crafting your agreement “that you might not have to consider when dealing with an existing company,” says Steve Susalka, assistant director of the Office of Technology Asset Management at Wake Forest University Health Sciences. Here are the key areas Susalka recommends you cover in any start-up license ……… p. 157
• NDA only? Don’t let absence of provisional patent stall license negotiations. When it comes to signing an NDA with a potential licensee, there’s an ideal and then there’s a common reality. And if you only allow your technology out for review under ideal circumstances, you could be missing many licensing opportunities ……… p. 159

Posted October 8th, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the September 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. 9 (pp 129-144) September 2008

• Purdue philanthropy campaign funds university start-ups. A philanthropic fund earmarked for university start-ups is giving Purdue University’s tech transfer foundation and its nascent companies a major shot in the arm. The school’s early success with its donor campaign offers TTOs a model to emulate ……… p. 130
• Develop proactive outreach to smooth path to licensees, avoid PR nightmares. Four years ago, Andrew Cohn, director of government and association relations at the Wisconsin Alumni Research Foundation (WARF) in Madison, and colleague James M. Haney, PhD, now associate dean in the College of Fine Arts & Communication at the University of Wisconsin-Stevens Point, surveyed tech transfer managers to assess the strengths and weaknesses of their public relations efforts. The authors concluded that TTOs needed more proactive PR activities, increased promotion of their business partnerships, and effective evaluation of their current activities ……… p. 131
• How two small TTOs took different paths to building toward big results. Small technology transfer offices can produce big results, but with fewer staff and resources it takes a different set of strategies than large, well-funded offices use. Whether that means low-cost assistants to handle much of the paper-pushing or a strength-in-numbers consortium to leverage each institution’s assets, being small does not have to mean paltry licensing revenues ……… p. 138
• TTOs’ “exchange” programs open doors to international deals. Case Western Reserve University and Boston University are both hoping to expand the international reach of tech transfer activity — and potentially facilitate multinational business deals — through exchange-type programs with overseas schools. The initiatives bring in technology transfer staff from other countries and put them to work in the universities’ TTOs ……… p. 140
• Craft a contract that yields maximum value for your technology. It may seem like an over-simplification, but thorough preparation remains the most important step you can take to assure that your TTO extracts maximum value from its license agreements ……… p. 142

Posted September 4th, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the August 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. 8 (pp 113-128) August 2008

• Supreme Court decision on patent exhaustion worries TTOs. On June 9 the U.S. Supreme Court handed down yet another in a string of key patent rulings, sending ripples of concern through university technology transfer offices that are worried about the potential impact of the decision on their approach to licensing IP……… p. 113
• Economic impact study offers proof of tech transfer’s true value. As any tech transfer manager will attest, the economic value of a TTO’s research commercialization efforts extend far beyond the licensing income they generate. Proving it, however, is another thing altogether. Yet TTOs that can compile hard data on how their activities impact the regional economy stand to score important points with university administrators, grant organizations, private donors, and legislators……… p. 113
• Seven NYC institutions produce “combo” marketing brochure to promote their IP. Seven prominent New York City-based research institutions have completed a joint marketing project to tout their accomplishments and spread the word among potential licensees that, together, they represent “The source for biotechnology” in the metropolitan area……… p. 114
• Firm eschews “volume” approach to tech transfer, focuses on IP with highest potential. Taking the time up front to pinpoint which innovations in your IP portfolio are most likely to “hit” really big — and then devoting the lion’s share of commercialization resources to those select high-potential projects can dramatically increase your TTO’s annual licensing revenues……… p. 116
• Tip of the Month: In today’s investment market, proof-of-concept funding will likely have to come from within. Investors are far less willing to fund very early-stage research these days, and without proof-of-concept you might as well not ask. That’s why more TTOs are creating their own funding mechanisms……… p. 121
• CREATE Act compliance: Achieving safe harbor protection may be a moving target. Are your cooperative research agreements in compliance with the CREATE Act? The 2004 U.S. law spells out the legal means to protect your IP from losing its patentability through disclosure to research partners at outside institutions. But ensuring your research agreements fall within the Act’s safe harbor is not as simple as labeling all collaborations “joint research agreements”……… p. 122
• Key negotiating strategies can lead to win-win deals. Negotiating skills aren’t necessarily something you’re born with. But if not, in the tech transfer profession you’re going to need to develop and hone them……… p. 123
• UCF spins tech transfer success with revolutionary ceiling fan design. The technology transfer professionals at the U of Central Florida never could have predicted that a conversation one of its researchers had with his father-in-law about ceiling fans over a decade ago would result in a licensing agreement that’s bringing in over $100,000 in royalties each year……… p. 126

Posted August 4th, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the July 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. 7 (pp 97-112) July 2008

• Incentives pose tricky challenges but may bring TTOs big rewards. Would the number and value of deals completed by tech transfer offices increase if their staffs received economic incentives or success fees tied to every license agreement completed? ……… p. 97
• Staff turnover won’t disappear, but savvy recruitment and retention strategies can help. “Turnover is inevitable in this business,” said Todd Sherer, PhD, associate vice president and director of the Office of Technology Transfer at Atlanta’s Emory University, during a session at the AUTM annual meeting. But a combination of savvy recruitment and retention strategies can help reduce this perennial TTO problem ……… p. 97
• University spins out a for-profit TTO to jump-start commercialization activity. Noetic Technologies, Inc., of Hattiesburg, MS, provides the University of Southern Mississippi with all the services an institution would expect from its TTO — and more. But please don’t call it a tech transfer “office” ……… p. 98
• UT Dallas opens new office, shifts focus from ‘gatekeeper’ to ‘facilitator.’ The U of Texas at Dallas is reinventing its approach to technology transfer by establishing an office to help researchers create companies and move their inventions from the lab to the marketplace. The Office of Technology Commercialization is designed to shift the university’s role from that of IP gatekeeper to commercialization facilitator ……… p. 99
• Commercializing knowledge-based IP a unique challenge. As Noetic Technologies has branched out from commercializing technology to knowledge-based IP like courseware and software, its key people have learned that these can sometimes be ‘different animals’ ……… p. 106
• International Spotlight: Singapore. The island nation is buzzing with tech transfer activity ……… p. 107
• Tap into alumni networks for funding, licensing opportunities. Formal alumni support networks can facilitate innovator-investor ties and generate needed cash for early-stage research. But some TTOs have found they require more maintenance than they’re worth, while others prefer a looser, less-formal approach to keeping in touch with alums ……… p. 109
• Focusing too much on profit may hold peril for TTOs. Whether TTOs should be viewed as profit or cost centers is a growing source of tension in the tech transfer community. Michael Dilling, PhD, senior licensing associate in the Baylor Licensing Group at Baylor College of Medicine in Houston, echoes many in the industry when he says TTOs “should be as effective as we possibly can in getting technology with commercial potential out into the market. If we’re successful in getting those licenses done and getting that technology commercialized — and if we do a good job negotiating deals on behalf of our institutions — then the money will follow” ……… p. 111

Posted July 1st, 2008 by Leslie Norins under Current Issue. [ Comments: none ]

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