The following is a list of the articles that appear in the April 2012 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. 6, No. 4, April 2012

• TTOs line up against free agency provisions in Startup Act. The concept of free agency — the idea that university inventors should be able to commercialize their innovations however and wherever they prefer — has been sparking heated debate ever since the Ewing Marion Kauffman Foundation unveiled their thoughts on the matter in 2009. But now there is new urgency in these discussions.
• Mayo v. Prometheus: A looming ‘disaster’ for tech transfer? Researchers and tech transfer leaders were shaken by the recent Mayo v. Prometheus decision handed down by the U.S. Supreme Court, which suggests that any research development based on a law of nature is not patentable. If the decision is interpreted broadly, an untold number of promising research projects could have no prospects for commercialization.
• Make sure your IP is fully protected in aftermath of Stanford v. Roche. Most, but definitely not all, university technology transfer offices have apparently learned — and implemented — the key lesson from Stanford v. Roche: Require faculty and staff assign the rights to their inventions when you hire them.
• Irish TTO’s survey touts future job potential of start-ups. Most technology transfer offices talk a lot about the number of jobs their start-ups and other initiatives have created in the recent past, but the University College Dublin’s NovaUCD has taken a different tack. The UCD commercialization arm recently surveyed its entrepreneurial faculty on the prospects for the future, rather than the results of the past, asking start-ups to estimate their projected impact on jobs.
• Legal Consult: Take these steps to ensure your TTO is ready for AIA.
• Consulting firm calls for new, more proactive model of tech transfer. The traditional model of tech transfer is evolving into a more proactive process — one in which a growing number of universities recognize they can no longer “sit and wait” for the development of ecosystems that will not only benefit them in the short term but lead to greater long-term economic viability.

Posted April 16th, 2012 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the March 2012 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. 6, No. 3, March 2012

• New research strongly suggests gender bias a force at university TTOs. It’s just one study, but it has attracted the national press, and it’s got tongues wagging in the technology transfer community. Why? Because the research deals with the hot-button issue of gender bias, and it seems to suggest rather strongly that technology transfer professionals in the U.S. are more favorably inclined to encourage start-ups if the inventors are male rather than female.
• Conflict of interest program aims to allay faculty fears, encourage start-ups. The revamping of a conflict of interest program at a university technology transfer office often signals some sort of trouble, perhaps a scandal that identified weaknesses. But at the University of Minnesota in Saint Paul, the goal was just the opposite.
• UVA restructuring based on longer-term view of IP commercialization. The University of Virginia calls it a restructuring and it is — but it’s really a good deal more than that. The school’s recent shift away from its longstanding foundation model — which operated at arm’s length from the TTO and the university — to a licensing and ventures group that works directly within the university structure represents a virtually complete shift in UVA’s approach to tech transfer.
• Heard in the Halls: AUTM 2012
• Guest Commentary: Could a hub and spoke, home-grown CEO strategy boost the success of university start-ups?
• ‘Ecosystem’ is the magic word in economic development strategy. As an increasing number of TTOs add economic development to their mission statements, new models are being developed for most effectively injecting the university commercialization arm into this process. As a number of experts have recently indicated, one of the keys to success is the coalescing of the diverse audiences that comprise what has become commonly known as the “innovation ecosystem.”

Posted March 22nd, 2012 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the February 2012 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. 6, No. 2, February 2012

• IP policy shifts at major universities get rave reviews from corporate partners. In a bid to both fire up innovative output and attract more private funding for research, at least two major American universities have announced big shifts in their IP policies with respect to industry sponsored research.
• Billion dollar lawsuit highlights need for clarity in university IP policies. Another high-profile lawsuit is riveting the attention of research institutions, lawyers, and inventors.
• New exchange touted as no-risk option for non-exclusive IP licensing. Schools looking for a way to monetize IP that could benefit from non-exclusive licensing now have an intriguing new option: the Intellectual Property Exchange International (IPXI). The organization will offer Unit License Rights (ULR) contracts that can be traded and for which universities will incur no upfront costs.
• UT-Austin resignation focuses attention on conflicts of interest. The recent resignation of the University of Texas at Austin’s first chief commercialization officer is bringing new focus to the conflicts of interest that can arise in tech transfer and leaving some administrators wondering how they can hire someone with the right background but then expect them to forgo any entrepreneurial interests.
• Structured intern program helps eliminate backlog of invention disclosures. No TTO director likes having a huge backlog of invention disclosures, but with limited staff and limited financial resources it’s an all-too-common dilemma.
• Spin-ins: Another way to boost revenues and support local economic development. Spinning technology into a university commercialization operation — as opposed to the more traditional spin-out model — are proving to be a great way for some tech transfer offices to help create more companies and boost economic development without using the resources typically invested in organic start-ups.

Posted February 20th, 2012 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the January 2012 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. 6, No. 1, January 2012

• U of Ulster’s “evaluation license” allows a trial period to “test drive” technologies. OpenUlster, a new service recently launched by The University of Ulster, is an approach to the open innovation model that includes an “evaluation license.”
• Should inventors have more control over their discoveries? Would technology transfer get a bolt of adrenaline if university-based inventors had more commercialization pathways to consider for their discoveries? For most institutions with clearcut IP ownership policies — now often more carefully policed after the Stanford v. Roche Supreme Court ruling — the possibilities are limited. But does that necessarily mean your TTO is always in the best position to commercialize a faculty member’s discovery?
• TTOs often walk a fine line when negotiating rights to improvements. Dealing effectively with the rights to IP improvements in your license agreements can be a tricky task, since both your TTO and prospective licensees have good reason to want those rights. If your office is like most, you probably seek to negotiate ownership of all improvements that are dependent on the claims of your licensed seminal patents so that, in the event of early termination, you’ll have improvements available assist in relicensing.
• Consolidation model helps focus tech transfer efforts at U of Arizona. A new technology commercialization center aims to improve tech transfer at the University of Arizona (UA) in Tucson with an innovative approach that consolidates the school’s many offices and divisions related to research commercialization — but that’s not the only goal of the new Tech Launch Arizona.
• Guest Commentary: What is the real value in Real Options?
• Vanderbilt TTO undergoes overhaul, expansion in bid to ramp up results. In the last six months, just about everything has changed at Vanderbilt University’s technology transfer office.

Posted January 23rd, 2012 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the December 2011 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. 5, No. 12, December 2011

• Fixed fee deals with U.S. law firms, foreign affiliates bring huge savings for BYU. An imaginative program to control patent prosecution costs by going to fixed fee arrangements with all of its U.S. law firms has enabled the BYU Technology Transfer Office to increase its number of patent applications by several hundred percent while holding the line on total yearly patent prosecution expenses.
• New pact brings “express” concept to sponsored research agreements. With so much interest and attention focused on express licensing vehicles, it was perhaps just a matter of time before the approach was applied to IP arising from sponsored research agreements.
• Purdue’s OTC creates new service to help app developers get to market. Following the first disclosure of a mobile app by a faculty member, the Purdue Research Foundation’s Office of Technology Commercialization (OTC) recognized an untapped opportunity to both create a new revenue stream and better serve its researchers.
• Legal Opinion: The not-so-obvious and potentially hazardous consequences of the Stanford v. Roche ruling.
• Commercialization Clinic aims to show grad students path to market. Graduate students can be a prime source of innovative technology at a university, but getting their projects into the commercialization pipeline can be daunting given that most students know little or nothing about the process.
• Rapid Start-Up School seeks to foster entrepreneurial postdocs and grad students. A new program at Arizona State University aims to harness the creativity of the school’s postdoc and grad student communities and channel it into new companies to pump up the state’s economy.
• What TTOs need to know about freedom-to-operate analyses. Full-scale freedom-to-operate investigations are complex and expensive, typically handled by outside law firms, but it’s still important for TTO managers to know what they are.

Posted December 16th, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the November 2011 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. 5, No. 11, November 2011

• U of Michigan taps endowment for start-up funding. When the University of Michigan announced in October that it would use a portion of its $7.8 billion endowment to fund start-ups, it wasn’t a surprise to James Golubieski, president of the Foundation for Venture Capital Group, an entity affiliated with the University of Medicine and Dentistry of New Jersey (UMDNJ). That’s because Michigan called to ask UMDNJ about its unique funding for start-ups, forged out of its endowment fund — a massive pool of dollars that is typically invested in traditional vehicles like stocks and bonds.
• Under pressure, universities aim their innovation engines on jobs, economic development. Three years into a sputtering economy, everyone connected with technology transfer is feeling the heat. Communities want jobs and economic development, and university administrators want to be able to demonstrate that they are answering the call. It’s a tall order for TTOs, but it is also an ideal time to put bold vision on the table, and showcase the value that active commercialization programs can deliver.
• Universities tapping military resources to enhance commercialization efforts. It’s still a relatively untapped area, but two creative universities have found a way to join forces with the military in an effort to expand their commercialization opportunities.
•  “Start-up in a Box” program complements TTO efforts and gets companies quickly off the ground. Inventors at three University of California system campuses who don’t have much experience in starting companies — or much interest in doing the blocking and tackling needed to get a start-up off the ground — have a new place to turn for help.
• Follow these steps to write a start-up business plan. Melissa Krinzman, founder and managing director of Venture Architects LLC, acknowledges up front that start-ups should be wary of anyone who says they’re a business plan expert. “We consider ourselves students of business planning because there’s no one right way to write a plan,” Krinzman says.

Posted November 22nd, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the October 2011 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. 5, No. 10, October 2011

• The time is now to begin adapting TTO operations under America Invents Act. Despite howls of protest from many in the university technology transfer community, patent reform is a reality.
• Peer review process nets UMN outside validation and a roadmap for the future. When Timothy Mulcahy took the helm as vice president of research at the University of Minnesota in 2005, his marching orders were pretty clear. “The university needed to do a better job of commercializing its technology,” recalls Mulcahy. “So we embarked at that time on a major overhaul and a major reengineering of our entire technology transfer office.”
• OHSU’s TTO staffs up as it implements “tech transfer 3.0.” The headline in the Portland Business Journal, “OHSU to double tech transfer office,” was more sensational than the leadership in the technology transfer office would have liked. While the headline isn’t completely off base, the TTO’s director of technology ventures and marketing Kristin Rencher, MBA, says it was misleading, because some of the positions filled were approved three years previously — before the recession.
• TTO patent strategies run the gamut, from nurturing ‘bunts and singles’ to swinging for the fences. Members of most professions are guided by best practices when making key decisions, but when it comes to which innovations should be patented by TTOs — and how many — the jury still appears to be out concerning what works best. Perhaps that’s simply because different universities have different missions and philosophies, but nevertheless the range of strategies is considerable.
• CU revamps advisory board to gain more benefit from outside expertise. Most TTOs have some sort of business advisory panel, but not everyone makes effective use of the board’s input or capabilities. Count the University of Colorado as one that does, after it recently revamped its board based on best practices observed by its TTO director.

Posted October 20th, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the September 2011 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. 5, No. 9, September 2011

• Industry metrics underpin new framework for benchmarking tech transfer. As a consultant in the life sciences industry for nearly two decades, Rosemarie Truman has seen her share of benchmarking studies. So when her firm, RHT Consulting of Leesburg, VA, was asked to evaluate benchmarking processes in university tech transfer and identify opportunities for improvement, she was surprised — and intrigued — at the gaps she discovered.
• Start-up CEOs don’t always work out, so plan accordingly. Nurturing a start-up is hard enough even in the best of cases, but most TTOs have run into a tough problem that can kill even the brightest prospects for building a new business around a promising technology: a CEO who just isn’t working out.
• Despite need for protection, insurers struggle to underwrite IP risks for TTOs. Should your TTO’s intellectual property be insured, much like university buildings and other assets?
• U Penn start-up model attracts faculty inventors, skilled entrepreneurs. The idea of a non-profit university being involved with for-profit companies is a notoriously sticky issue. However UPstart, a new program in the Center for Technology Transfer at the University of Pennsylvania in Philadelphia, PA, has found success in clearing away many of the traditional obstacles.
• Guest Commentary: Sustaining technology transfer office legitimacy: The role of mission statements.
• New site provides two-way communication for start-ups, investors. Many before have tried — and many have failed — to create a site that matches entrepreneurs and angel investors. According to David S. Rose, serial entrepreneur, managing partner of Rose Tech Ventures LLC, and CEO of Angelsoft, “there have been literally 150 different shots taken at matching entrepreneurs and angels, and every single one either failed totally or changed its business model.” The problem, he says, is that the sites “ended up having thousands of entrepreneurs with no real investors anywhere in sight.”

Posted September 16th, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the August 2011 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. 5, No. 8, August 2011

• Take quick action when licensees don’t meet obligations. Effectively dealing with licensees who don’t live up to their bargain is a lot like handling a wayward teenager who refuses to do chores or come home by curfew. Hoping the problem will go away just doesn’t work, and coming down too hard can also backfire. But taking immediate action to correct the behavior is a must.
• Wayne State leveraging federal work-study program to aid start-ups. To effectively support start-ups in a troubled economic environment, sometimes you’ve got to get creative – and Wayne State University has adopted a strategy that other schools could adopt to bring more manpower to the table without spending a dime.
• Keep innovative ideas coming with a well-crafted inventor recognition program. As difficult as it is to bring new products to market, you can’t even get to the starting gate without a steady flow of innovative ideas. And to keep those ideas coming, you have to not only nurture relationships with faculty inventors, but also come up with effective methods of showing your appreciation for their innovative output.
• Guest Column: INL develops streamlined due diligence process for screening potential licensees.
• In quest for tech transfer improvement, UC Davis reaches out for ideas — and gets plenty. Business seems to be humming along at UC-Davis. So why did the university reach out to researchers and the business community earlier this year, seeking their ideas for ratcheting up tech transfer production?
• Study: Management more important than money for research commercialization. Research universities with an “organizational climate” that actively supports commercialization and encourages interdisciplinary collaboration are more likely to produce robust rates of invention disclosures and patent applications than those that lack such qualities.

Posted August 19th, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the July 2011 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. 5, No. 7, July 2011

• Coulter ‘process’ uses industry discipline as fuel for accelerating research commercialization. Since 2005, the Coulter Translational Research Partnerships have taught researchers and TTOs a disciplined approach to translating university innovation.
• Setting minimum royalties more art than science. A changing economy and technological advances are making complicated calculations of minimum royalty payments much more feasible for those TTOs that choose to use them. But minimums, despite the changing climate around them, still serve two basic purposes — to prod a licensee into a sharper focus on getting a product to market and securing market share and to fund the TTO’s operations before the product really starts throwing off cash.
  
• Hopkins speed dating event helps inventors, entrepreneurs make perfect matches. An annual “speed dating” event at Johns Hopkins University is now “probably our most effective” program in an ongoing effort to generate licenses and start-ups, notes Elizabeth Good, director of ventures at JHU.
• Computer science-driven incubator uses PROBEs to churn out new enterprises. You would think a college professor would be jubilant to see her students regularly scooped up by companies like Google and Microsoft even before they graduate, but Lenore Blum, professor of computer science at Carnegie Mellon University found something troubling in this dynamic.
• Five-pronged “Greenlighting Startups” initiative aims to boost commercialization, showcase success. The way Rick McCullough sees it, Carnegie Mellon University has become one of the most entrepreneurial universities in the country yet doesn’t get the same recognition as some other leading universities — and he’s trying to change that.
• How Temple University made it to the million dollar club. How do you get to the next level? Temple University has some ideas.

Posted July 21st, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the June 2011 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. 5, No. 6, June 2011

• Supreme Court’s Stanford v. Roche decision requires extra care in managing IP. In a decision that many observers view as a correct, if disappointing, reading of the issues in the case, the U.S. Supreme Court’s ruling on Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. puts universities on notice that the Bayh-Dole Act does not automatically vest them in the ownership of federally funded inventions.
• SPECIAL FOCUS: Technology Scouting
  Scouting programs corral more quality disclosures. University technology transfer offices nationwide have begun to recognize that a proactive posture is the key to success in the new economic and business climate. At some universities, that sea change has resulted in a radical rethinking of the cradle-to-grave model, starting with how TTOs source technologies lurking in their research labs.
  • Scouting program puts charge in stagnant invention disclosure rate.
  • Consider these two models for technology scouting.
  • Keys to effective technology scouting.
• New Clarkson U program swaps tuition assistance for equity in student start-ups. Many universities now have programs in place that seek to encourage entrepreneurship among students — with services ranging from targeted curricula and on-campus mentors to office space. But Clarkson University in upstate New York has embarked on something entirely new: It is offering tuition aid in exchange for equity in student start-ups.
• Should you make the leap to electronic laboratory notebooks? If leading industries are replacing paper-based laboratory notes with electronic laboratory notebooks (ELNs), does that mean that research universities should make the switch as well? Ronald Kudla, the executive director of intellectual property, technology transfer, and new ventures at Rensselaer Polytechnic Institute (RPI) in Troy, NY, thinks such a transition is worth strong consideration.

Posted June 17th, 2011 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the May 2011 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. 5, No. 5, May 2011

• Innovation scorecard helps TTOs to identify strengths, weaknesses. How should you measure innovation in your tech transfer office when your organization is already considered best in class?
• Nurture more start-ups, win community support with new “distributed incubation” model. Having launched one of the first business incubators in the country three decades ago, Rensselaer Polytechnic Institute in Troy, NY, has certainly nurtured its share of young start-ups. However, in recent months, commercialization experts at the university began to question whether the traditional incubator model was really the best way to promote commercialization and economic growth in the region.
• New venture employs web-based marketing to secure early-stage funding. Most TTOs and university start-ups have learned the importance of using the web to market their technologies — but what about using web marketing to land funding for those technologies or start-ups?
• Small- to medium-sized TTOs collaborate for added commercialization heft. Some TTOs are finding a way around staff and budget limitations by pooling their resources with other like-minded offices, and finding new ways to leverage established relationships for mutual gain.
• WIPO’s dispute resolution center gains favor as tech transfer crosses the globe. As technology commercialization becomes increasingly an international affair, IP-related disputes between organizations from separate countries are rising accordingly. The heightened potential for lengthy and expensive cross-border lawsuits has in turn created a growing market for less expensive arbitration and mediation alternatives — and the Geneva, Switzerland-based World Intellectual Property Organization’s Arbitration and Mediation Center is stepping up to fill that need.
• Is your IP safe? Computer breaches demonstrate risks. If you haven’t worried much about the security of your TTO’s data — particularly sensitive files containing details of your IP — a recent incident at Ohio State serves as a loud wake-up call.

Posted May 18th, 2011 under Current Issue. [ Comments: none ]

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