Technology Transfer Tactics,
Vol. 4, No. 2 (pp 17-32) February 2010

• Kauffman proposal for ‘free agent’ faculty draws strong reaction from TTO execs. It was the shot heard round the tech transfer world; in fact, it was interpreted by many tech transfer professionals as a shot across the bow, if not a full-force slap in the face. In a brief one-page treatise in the January/February edition of the Harvard Business Review that the stalwart publication cited as one of the top 10 “breakthrough ideas” of 2009, Robert E. Litan, the Kauffman Foundation’s vice president for research and policy, and Lesa Mitchell, vice president for advancing innovation, set tongues wagging and blood pressures rising.
• Keep your eye on the option pool during initial valuation. Successful negotiation of start-up funding leaves most new entrepreneurs flush with excitement. But investors will almost always slip an option pool into the equation, which means the share value to the founding group can sink in a flash. It can be a throttling experience for the uninitiated.
• Engineering institute’s contract work builds corporate links to aid long-term tech transfer results. Giving engineering students hands-on training in product development techniques and real-world experience working with industry is the core mission of the Institute for Industrial Innovation created by the College of Engineering and Applied Science at the University of Wisconsin-Milwaukee. The Institute’s ability to do contract engineering research projects for industry isn’t expected to reap immediate technology transfer benefits in terms of expanding or monetizing UWM’s portfolio of intellectual property. However, building industry contacts via the Institute is a vital component in UWM’s long-term efforts to develop a sustained technology transfer strategy.
• Incubators adapt to changing conditions, but remain a solid option for start-ups. Start-up incubators have been hammered by the same economic forces that have buffeted the entire commercialization pipeline, and several have run into severe distress that poses an extra challenge for the fledgling technology start-ups they are designed to nurture. Still, the sector as a whole is in fine shape, and incubators remain a key option for technology transfer offices looking to support new ventures.
• A sign of the times? RPI shuts down campus incubator. In a move that reflects the changing landscape for high-tech incubators as well as the potential hazards for start-ups housed within them, Rensselaer Polytechnic Institute announced in early February that it is closing its on-campus business incubation center. Ironically, RPI’s incubator is one of the oldest and most successful, having spawned several major companies over its 30-year existence.
• Pre-incubation program offers fledgling companies an official address and valuable support. Incubators are great for nurturing early-stage companies that are at the point where they need staff and space to fuel growth. However, what about those very early-stage companies that have great ideas and IP, but they need funding and further development before they will be ready to hang out a shingle?

Technology Transfer Tactics,
Vol. 4, No. 1 (pp 1-16) January 2010

• Don’t panic, but take steps to prepare for Bilski decision. The U.S. Supreme Court’s much-anticipated ruling in the  Bilski case will likely alter the landscape for business method patents and send shockwaves through the tech transfer community. Though no one can predict for certain the outcome, many observers believe the days of business method patents are numbered
• UNC introduces standardized ‘express’ start-up license. Forming a start-up at the University of North Carolina at Chapel Hill may become easier following the introduction of a standard licensing arrangement that the university is promoting as its “best deal”
• In bold stroke, U of Kentucky brings clinicians into commercialization pipeline. In 2008, only one disclosure came out of the University of Kentucky’s Medical Center in Lexington, and it didn’t go anywhere. But in just the last quarter of 2009, there were 16 disclosures, including two that already have working prototypes
• TTOs face new reality when seeking venture funding. TTOs say they are facing a hard truth when it comes to early-stage financing: Projects that would have been considered “venture ready” a few short years ago are having a much tougher time attracting VC funding today
• Do poster presentations jeopardize your TTO’s commercialization efforts? Go to virtually any innovation showcase or industry meeting and you’re bound to see a collection of poster presentations. They look harmless enough; summaries of ongoing research often created by graduate students. But beneath their innocuous façade, some say, lies a potential threat to the commercialization of the technologies in question
• UMich creates ‘one-stop-shop’ center for start-ups. Having a wide range of services and resources available to faculty entrepreneurs and investors has always been seen as an important goal by the TTO at The University of Michigan, but recently its leadership decided that those services could be provided more effectively and efficiently by creating a central contact point for all interested parties

Technology Transfer Tactics,
Vol. 3, No. 12 (pp 177-192) December 2009

• Best practice tools and strategies for university start-ups. A start-up is by definition lacking in experience. And though a few lucky ones have veteran leaders who’ve been through the process before, that’s the exception rather than the rule when it comes to university spinouts. It stands to reason, then, that start-up managers are in dire need of best practices, and that’s exactly what Georgia Tech’s Advanced Technology Development Center (ATDC) is delivering. The center has posted a series of best practice documents on its website in an attempt to reach out to more of the region’s start-ups than it can work with directly.
• New push for global access licensing attracts broad support, adds complications. In the latest milestone in a movement that has been gaining steam for at least the last decade, the Association for University Technology Managers (AUTM) and six prominent universities have endorsed a “Statement of Principles and Strategies for the Equitable Dissemination of Medical Technologies.” The statement is a general outline of seven practices designed to ensure that university licensing facilitates, rather than impedes, the delivery of life-saving medicines to the developing world.
• U of Delaware creates IP gateway to boost commercialization. In less than three years, technology transfer at the University of Delaware (UD) in Newark has evolved from an acknowledged bare-bones licensing effort into broad-scale commercialization activity.
• Use patent analytics to ID licensees and get deals done. Finding licensees for your IP is a challenge in any environment, but in a recession it can seem more like waiting for lightning to strike — and about as likely. The key to sniffing out deals in a down economy, according to one IP consultant, is taking a proactive approach and increasing your odds by employing patent analytics.
• TAEUS introducing new ways to attract licensees. TAEUS International Corp., based in Colorado Springs, CO, is on the cusp of launching several software products in early 2010 that could help university TTOs implement standardized systems to describe patented technologies for the IP marketplace and then put those technologies in front of potential licensees, says Matt Troyer, vice president of innovation at the full-service IP firm.
• Patenting partnership makes TTO’s law firm part of the team. As a relatively small technology transfer office, the Office of Economic Innovation and Partnerships (OEIP) at the University of Delaware (UD) in Newark “doesn’t have the luxury of being able to personally guide every single invention or patent application that comes into our office,” says Bruce Morrissey, director of technology development at OEIP’s IP Center. “So we developed a team approach with our law firm to get some leverage on that process.”
• Manage expectations of state lawmakers to secure long-term support for tech transfer. Politics and tech transfer make strange bedfellows, but with jobs and revenues evaporating in many states, it’s increasingly difficult for TTOs to avoid turf wars in the halls of their own statehouses. And some of the battles are getting ugly.

Technology Transfer Tactics,
Vol. 3, No. 11 (pp 161-176) November 2009

• Recipients of ARRA funds grapple with onerous reporting requirements. Research institutions that went into overdrive to get a piece of the government’s unprecedented, $787 billion stimulus package, approved in February, are now grappling with onerous reporting requirements they must comply with or risk losing the funds
• Firms springing up to fund patent infringement litigation. Patent holders — including technology transfer offices — don’t have to make the difficult judgment call about whether to spend often-scarce resources on defending their assets in infringement cases. A new option has emerged in which a third-party essentially foots the bill for that litigation, in exchange for a cut of the proceeds
• Measuring economic impact of tech transfer more art than science. What’s the best way to assess the performance of a technology transfer operation? The answer really depends on who wants the information
• Get familiar with new terrain to capitalize on international opportunities. Markets may be down in the U.S., but TTOs can find ample licensing opportunities abroad
• Heard in the Hallways: Last month in San Francisco, more than 1,000 LES members convened for the organization’s annual meeting, and TTT was on-site. Here are some observations and ideas gleaned in both sessions and hallway conversations
• Boot camp plays central role in shaping entrepreneurial culture. When it comes to promoting an environment that’s conducive to research commercialization and innovation, some schools stand out as exemplary in taking an aggressive, active role in shaping an entire culture of entrepreneurialism. The University of Maryland is one of those schools, and its Technology Start-Up Boot Camp plays a critical role in shaping that culture
• Guest Commentary: Consider the strategic implications of trade secrets

Technology Transfer Tactics,
Vol. 3, No. 10 (pp 145-160) October 2009

• TTOs seek to bolster start-up activity with VC type funds. With the dramatic downturn in the economy exacerbating the already challenging problem of generating early stage funding for university start-ups, a number of TTOs have taken the bull by the horns and launched their own VC-type funds. Some say this may be more than just a reaction to a current crisis; it may signal a new tech transfer paradigm. For universities looking to help their startups
• Hospital TTO takes a different path to commercialization with private sale of IP. The Technology Transfer Office at Children’s Hospital Los Angeles (CHLA) is veering off the traditional path to commercialization with a pending sealed-bid private sale of a portfolio of 10 issued U.S. patents and foreign patent application for noninvasive substance detection, including a noninvasive blood glucose monitor. The TTO has hired the IP brokerage firm ICAP Ocean Tomo, LLC, in Chicago to conduct the private sale for the hospital, which is affiliated with the Keck School of Medicine of the University of Southern California and the California Institute of Technology (Caltech) in Pasadena. The two institutions have an inter-institutional agreement for CHLA to handle licensing for this IP. CHLA had tried the traditional commercialization route with this particular technology
• When times get tough, TTOs turn to students for extra manpower. Economists say the country is on the verge of a recovery, but businesses and universities are still in cost-cutting mode. They’re slashing budgets, curtailing programs, and implementing hiring freezes. At the same time TTOs are under increasing pressure to bring in fresh revenues. With few if any options for adding staff, many offices are turning to the student body for the help they need
• TTOs report successful faculty outreach with informal “entrepreneur office hours.” Faculty members with novel ideas for inventions or companies are busy people with packed schedules. So as technology transfer professional plan outreach efforts, taking a decidedly informal approach – rather than attempting to cajole researchers into scheduled meetings – may improve your results
• TTO launches entrepreneur-in-residence program without spending a cent. At the University of North Carolina Charlotte, revenues are down, but high unemployment and economic uncertainty are driving students and area business to the schools doors. That puts pressure on the TTO to get more done, but without additional resources to handle the workload
• Legal Q&A. U.S. rules regarding co-ownership of patents don’t apply in other countries
• Get your TTO ready for ‘tech transfer 2.0.’ A number of TTOs in the U.S. have gotten their feet wet in the world of social networking, but what Brian McCaul, ICT, director of commercialization & exploitation in the Enterprise and Innovation Office at the University of Leeds (UK), proposed recently is well beyond what any have attempted and perhaps beyond what many have imagined: a new world of tech transfer – or knowledge transfer in common European parlance – in which social networking forms the foundation for a revolution in the way innovation makes its way into the marketplace

Technology Transfer Tactics,
Vol. 3, No. 8 (pp 129-144) August 2009

• TTOs reach for new metrics to document their value. Most TTOs continue to dutifully count up and report on licenses, patents, and revenues — and to a large extent, these metrics continue to form the basis of how performance in the technology transfer arena is gauged. But there is a growing drumbeat of dissatisfaction with these traditional measures because they no longer adequately account for the kinds of activities that tech transfer personnel find themselves increasingly engaged in ……… p. 129
• U of Virginia revamps tech transfer model to enhance integration, relationships. The University of Virginia (UVA) and the UVA Patent Foundation in Charlottesville are on a joint mission to re-make the technology transfer process at the university, reports Thomas Skalak, PhD, vice president for research and graduate studies and ex officio representative on the UVA Patent Foundation board ……… p. 129
• Fledgling Boliven patent search site integrates array of tools for TTOs. After getting a tip from one tech transfer professional about a patent search tool that he cited as more useful than most, TTT decided to check it out ……… p. 130
• Legal Q&A: Take these steps to minimize the risks of ‘residual information’ ……… p. 131
• AUTM unveils a draft proposal for new metrics. Recognizing that the mission for many TTOs has broadened well beyond licensing and patenting, the Association of University Technology Managers has been exploring the creation of new measures that do a better job of capturing the many different activities technology transfer professionals typically engage in ……… p. 133
• Learn the signs of a pending reorganization — and how to deal with one. A reorganization may be in the cards for some university TTOs that need to reposition to adapt to the current economic climate ……… p. 136
• UTRF decentralizes to provide more individualized tech transfer. The University of Tennessee Research Foundation has decentralized its technology transfer operations in order to better support its mission of building the university’s research enterprise, managing and commercializing its IP, promoting an entrepreneurial spirit, and boosting the state’s economy ……… p. 137
• Experts offer strategies to strengthen COI process, policies. As relationships between researchers, TTOs, funders, start-ups, corporate sponsors, and licensees get ever more complex, your conflict of interest policies and procedures must keep pace ……… p. 139
• Associations advocate COI compliance by 2010 while NIH contemplates new rules. TTOs can turn to several reports on COI reform to guide their efforts ……… p. 140
• U of Alabama shores up patent policy as fledgling tech transfer program matures. The University of Alabama System recently updated its research commercialization policy in an effort to better secure its IP rights and to specifically claim ownership of all inventions that use school resources ……… p. 143

Technology Transfer Tactics,
Vol. 3, No. 8 (pp 113-128) August 2009

• Patent litigation: Sometimes it’s a risk worth taking. If there was any doubt about a jury’s willingness to take patent infringement seriously, the record $1.67 billion verdict returned against Abbott Laboratories in early June should go a long way toward erasing such concerns. Centocor Ortho Biotech, Inc. and co-plaintiff New York University argued that their patents covering antibodies against tumor necrosis had been infringed by Abbott’s blockbuster drug, Humira. A federal jury in Texas agreed, finding Abbott to be a willful infringer ……… p. 113
• Use proactive measures to prevent contentious IP disputes with researchers. Most tech transfer professionals have experienced at least some degree of contentious wrangling between their university and inventors over IP ownership, but thankfully pitched legal battles over IP remain the exception. Even in those cases, experts say, the events that lead to the courtroom steps are rife with missed opportunities to solve a dispute amicably ……… p. 113
• Rutgers creates its own exit strategy for spinoffs. Just because the economy has been stalled doesn’t mean the flow of innovation stops at universities. But with little funding available, Rutgers University has come up with a new, more proactive system designed to keep the wheels turning ……… p. 114
• For start-up survival, shift gears and focus on revenue. The small start-ups that university TTOs help build around their researchers’ innovations are often designed as, in essence, outsourced innovators for larger companies. As the small firms incubate, their officers and financial backers look for bigger firms to provide the deeper resources they need to reach their full commercial potential. It’s a good plan, says Lina Ramos, founder of and president at Emerging Growth Enterprise LLC, La Jolla, CA, but too often the incubators have to make their pitches with one hand figuratively tied behind their backs. Too few start-ups in that situation, she points out, have what potential buyers are demanding: real revenues ……… p. 115
• Service-based spinoff answers the demand for a unique skill set. Experts generally agree that it’s a bad idea for universities to maintain too large of a stake in any spin-off company, but a unique model at the New Mexico Institute of Mining and Technology in Albuquerque suggests that when circumstances are right, this type of configuration can pay off for both the university and the company ……… p. 124
• Another funding option: Create a portfolio of prize spinoffs and go public. If the old funding mechanisms aren’t working these days to finance your TTO’s best inventions and spin-offs, you might consider a completely different route. Take your organization public using an IPO featuring a cluster of your best start-up companies and most promising technologies ……… p. 126

Technology Transfer Tactics,
Vol. 3, No. 7 (pp 97-112) July 2009

• Eye-popping compensation levels invite scrutiny, debate. Attracting and keeping talented staff is an ever-present challenge in the technology transfer arena. Hemmed in by what taxpayers and legislators consider to be adequate salaries for employees at non-profit institutions, university administrators often have great difficulty recruiting personnel with the kind of industry experience that is so crucial to landing lucrative licensing deals ……… p. 97
• University Funds offers new VC model to commercialize technology. In the wake of a dramatic pullback by venture capital funds in early-stage financing, the arrival of The University Funds, LLC (UFunds) is a welcomed new approach to commercializing intellectual property ……… p. 97
• Use these strategies to slash the cost of patent prosecution. Even before the recession gutted TTO budgets, Libby Hart-Wells, PhD, senior director in the University of Maryland-Baltimore’s Office of Commercial Ventures and Intellectual Property, knew things had to change — both in terms of management of patent prosecution and its cost ……… p. 98
• TTOs testing contract research waters, seeing  potential benefits. A stroll through the aisles of the recent BIO convention in Atlanta will give you a clear sense that the market for Contract Research Organizations, is alive and well. Dozens of these companies’ booths beckoned to the 20,000 attendees — and specifically to pharma and biotech companies the CROs see as their lifeblood. But many of the contract research companies are now also targeting the university market, where TTOs and research labs with too many projects to handle or too few resources represent an emerging secondary market ……… p. 99
• Look beyond your own technology, and beyond licensing, to ramp up tech transfer profits. There are a variety of pitfalls that are “alive and well” in the tech transfer industry, and those pitfalls will present even greater challenges during tough economic times ……… p. 107
• Make lab tours an effective part of your marketing strategy. Lab tours are not just for TTOs, it seems. DDL, a medical device package testing company based in Eden Prairie, MN, has been using lab tours as a key marketing strategy for the past two years. Judging from the success of DDL’s latest event, TTOs and research labs can learn something about promoting a lab tour by studying the company’s marketing tactics ……… p. 109
• Software tool aims to speed medical device innovation while cutting development costs. If there was ever a time to make your technology development and commercialization process smoother and cheaper, this is it. And Fernandina, FL-based e-Zassi.com has introduced a new set of tools to medical device innovators designed to do just that ……… p. 111

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

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

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

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
  

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

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

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

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

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

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

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

• 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

Technology Transfer Tactics,
Vol. 2, No. 6 (pp 81-96) June 2008

• Early-stage valuations: Numbers tell only part of the story. Early-stage technology is a funny thing when it comes to valuation. There are all kinds of sophisticated models you can use to arrive at a dollar figure, but when you consider that a great deal of guesswork drives most of these equations, it becomes clear that valuation is much more art than science. Nonetheless, some TTOs do a much better job of assessing the value of nascent innovations than others, and there is no question that the skills involved can be honed and improved ……… p. 81
• Stanford adds new clauses to license agreements in wake of MedImmune case. TTOs all over the U.S. took keen interest in the decision handed down January 29, 2007, by the U.S. Supreme Court in the case of MedImmune v. Genentech Inc., et al, but none more than Stanford University, which was intimately involved in the case. Stanford co-filed an amici brief jointly with Columbia University, The American Association of Medical Colleges, The Association of American Universities and others, and the school was part of a ‘companion’ case in which MedImmune challenged a licensed patent involving functional antibodies ……… p. 81
• Researchers get their hands dirty at Entrepreneurship Academy. It’s one thing to lecture innovators on the steps they’ll need to take to commercialize their inventions. It’s another to guide them through actually getting their hands dirty. The Green Technology Entrepreneurship Academy is a week-long “school” designed to teach researchers how to participate effectively in getting their inventions out of the lab and into the marketplace ……… p. 82
• TTOs mix and match systems to enhance their IT capabilities. TTOs often find themselves in an odd in-between world that requires configuring programs designed for a small enterprise within a large, enterprise-wide university IT infrastructure ……… p. 83
• “Star Chamber” taps into outside experts, sets stage for future deals. Here’s how one TTO in Scotland is reaching outside the campus to tap industry experts and realize the full commercial potential of researchers’ discoveries ……… p. 84
• Study: Emerging TTOs need benchmarks, best practices to move forward. A national survey of emerging technology transfer offices suggests they face many of the same challenges that plague their brethren at large research universities, including inadequate financial and human resources, lack of institutional support, and inappropriate emphasis on revenue generation ……… p. 91
• RIT cedes IP ownership in new tech transfer model. The Rochester (NY) Institute of Technology has unveiled an innovative tech transfer model designed to rev up its industry partnerships by allowing the companies it works with in R&D collaborations to own rather than license the IP involved ……… p. 93
• ‘Bucks for Brains:’ U of Louisville program more than lives up to its name. Kentucky’s Research Challenge Trust Fund, better known as “Bucks for Brains,” has been a major boon for the University of Louisville, where an influx of research talent has attracted more than $144 million in research funding, with an economic impact of more than $320 million — more than triple the state’s $100 million investment ……… p. 94

Technology Transfer Tactics,
Vol. 2, No. 5 (pp 65-80) May 2008

• U.S. TTOs look to make connections with overseas counterparts. Along with an ongoing trend to seek more investment and licensing dollars from overseas companies, American tech transfer offices are increasing seeking — and establishing — ties with TTOs around the globe in an effort to stimulate more global opportunities for their research commercialization efforts ……… p. 65
• Attention to detail is key to crafting a ‘bulletproof’ NDA/CDA. Crafting of a Non-Disclosure Agreement (NDA) or Confidential Disclosure Agreement (CDA) that effectively protects your IP and other proprietary information during license negotiations is a delicate balancing act between making the document too broad or too narrow — both of which can be dangerous, experts tell Technology Transfer Tactics ……… p. 65
• Desire to expand global reach not unique to U.S. TTOs. U.S.-based TTOs are not alone in seeking ties outside their borders, as London-based Imperial College showed with its recent foray into India ……… p. 70
• Moving TTO into foundation structure opens new opportunities. Since Clemson University transitioned its technology transfer operations into a 501(c)3 foundation, it has “gone from single-digit licensing to double-digit licensing numbers, in large part due simply to having greater tools of negotiation at our disposal,” reports Vincie C. Albritton ……… p. 66
• New tech transfer model uses market pull approach to speed commercialization. Stevens Institute of Technology is experimenting with what it says is a unique model for technology transfer that will connect researchers with market intelligence from key players off campus at the very start of the invention process ……… p. 67
• University offers SBIR/STTR program to local businesses. For a university TTO to develop an in-house SBIR/STTR program may not be all that unusual, but when that service is offered not only to faculty and university spinoffs but also to local businesses, it sets the program apart ……… p. 68
• Tips from the Field: Create more value for your technologies by focusing on portfolios, not individual inventions ……… p. 74
• Tech transfer marketing guru offers best practices and benchmarks. Find out how the University of Florida measures its marketing efforts, and the strategies it uses to get 25% of marketed technologies licensed ……… p. 76
• U-Mich broadens industry outreach with Business Engagement Center. The University of Michigan in Ann Arbor has established an innovative center intended to foster relationships with industry on a broader level than the licensing focus of its TTO, and feed those relationships back into commercialization efforts ……… p. 77
• Online newsletter helps TTO spread the word. An online newsletter published by the Univerisity of Colorado TTO is helping the office spread the word about the both the office’s accomplishments and its available technologies ……… p. 78

Technology Transfer Tactics,
Vol. 2, No. 4 (pp 49-64) April 2008

• Struggling for budget dollars? Here’s how to make your case for more. How many universities lose millions of dollars each year because technology transfer offices are understaffed but the institutions’ administrators decline to invest additional dollars to ramp up commercialization efforts? Increasingly, TTOs are wrestling with this question even while they prioritize efforts to move intellectual property through the commercialization pipeline. Like the chicken-and-egg conundrum, university administrators often demand that TTOs generate more revenues before they will allocate additional resources. But it’s that very lack of funding that sometimes prevents discoveries in researchers’ labs from getting to market ……… p. 49
• Incentive pay for TTO staff: plusses and minuses. If TTO staff can bring in millions of dollars with extra effort and shrewd deals, why not incentivize those staff with extra cash for good performance? Apparently, it’s easier said than harmoniously achieved ……… p. 49
• Clinic of Innovation uses health care metaphors to win staff over to tech transfer. While many universities outside North America are rapidly moving to increase commercialization activity, there remains a wide gap in many countries between the desire to get innovations to market and the involvement of researchers in the process. To cross that chasm, an entrepreneurial physician in Norway has launched a “clinic” to educate researchers and staff and put market-focused innovation on a faster track ……… p. 50
• Formal ‘expert network’ offers TTO crucial guidance. The TTO leaders at Carnegie Mellon University realized that with the broad range of domains covered by their researchers, it was virtually impossible for their staff to become sufficiently conversant in all of them. This recognition led to the formation of the “Expert Network” ……… p. 51
• Heard in the Hallways. Technology Transfer Tactics sent a team of reporters to the recent AUTM meeting in San Diego. Here is a collection of tips, strategies, and comments heard in conversations with attendees and in both formal and informal gatherings throughout the event ……… p. 52
• SPECIAL REPORT: The promise and pitfalls of using an IP exchange. There is no denying the appeal of an Internet-based matchmaking apparatus for IP. However, most of these efforts have generated mixed results thus far. Nonetheless, many exchanges are working diligently to make the process easier for TTOs — and more effective. Get a detailed look at how IP exchanges may best fit into your marketing strategy, plus see our two-page spread designed to help you comparison shop among the various services ……… p. 58
• ‘CEOs in waiting’ offer entrepreneurial advice for TTO’s startups. University Technologies International (UTI) is employing an unusual strategy to boost its start-up efforts: It has created an “Executive in Residence” program through which experienced entrepreneurs sign on to provide UTI start-ups with the benefit of their experience ……… p. 62

Technology Transfer Tactics,
Vol. 2, No. 3 (pp 33-48) March 2008

• Use these strategies to contain patent prosecution costs. There is no inexpensive way to go about prosecuting a patent, but at the same time, TTOs spend tens of thousands of dollars every year on late fees and other expenses they might have avoided with a better game plan on the front end of the process. That’s the word from several tech transfer officials, whose organizations have developed a collection of strategies to keep their patent prosecution costs from spiraling out of control ……… p. 33
• Revamped inventions policy adds incentives, removes disincentives for researchers. The University of Toronto’s (UT) TTO has revamped its inventions policy in hopes of jump-starting its tech transfer activities. The strategy involves dramatically increasing financial rewards for researchers and removing disincentives to using the TTO as a commercialization partner ……… p. 33
• Ohio initiative broadens definition, scope of IP bundling. The University of Akron (OH) is taking IP bundling to a whole new level, combining not just intellectual property from its own portfolio with other universities’, but bringing many tech transfer activities from other schools in the region under its wing ……… p. 34
• Cross-border technology transfer opens up big opportunities. A rapidly escalating trend toward both academic and commercial internationalization has swung the door wide open for technology transfer offices willing to invest the time and effort to penetrate overseas markets. But how do you get started, and what hurdles can you expect to encounter? ……… p. 35
• Guest Commentary: Tips for when and how to conduct an effective royalty audit. Most audits result in recoveries well in excess of audit costs and produce higher royalties going forward. Underpayments in the millions of dollars are distressingly common ……… p. 36
• Press releases a vital ingredient in your IP marketing recipe. The press release is often the vital initial ‘handshake’ from the TTO to its target audience when introducing a new technology ……… p. 44
• Prepare researchers for ‘culture shock’ of business world. When it comes to preparing scientists for the world of hard-nosed business as their innovations enter the commercialization process, short of an MBA course even the best tutelage will not adequately brace high-minded researchers for the culture shock they will experience, tech transfer experts say. But that doesn’t mean tech TTOs shouldn’t try to bridge the chasm with mentoring programs, seminars, and ongoing communication. Just don’t expect too much from your efforts, and understand that connecting scientists and investors is a bit like trying to mix oil and water ……… p. 45

Technology Transfer Tactics,
Vol. 2, No. 2 (pp 17-32) February 2008

• Patenting not always best for software, experts say. Universities are a primary breeding ground for software tools with significant commercial potential. However, there is growing recognition that factors unique to software development should, in some cases, alter the commercialization strategies used by TTOs — especially if the primary goal is to quickly disseminate the software into the hands of users ……… p. 17
• Poor record keeping opens door to forfeiture of IP rights, grant dollars. It may be as old as science itself, but the careful maintenance of a laboratory notebook is in danger of becoming a lost art, according to observers. Some, in fact, say there is an ‘epidemic’ of poor record-keeping that could lead to lost patent rights and grant dollars ……… p. 17
• Attorney develops new valuation method for early-stage IP. A patent attorney frustrated by difficulty providing specific valuation guidance to a university client decided to take the matter into his own hands. He developed a new valuation method so promising that his own university decided to patent it and make him a licensee ……… p. 18
• Streamlined processes, swift negotiations turn Rutgers TTO into a profit center. Using a strategic focus on shrewd but swift negotiations, along with simplification of the licensing process, Rutgers University’s Office of Corporate Liaison and Technology Transfer has become one of a select few TTOs showing black ink on its bottom line, turning a profit for the first time in its history ……… p. 19
• ‘First look forums’ plant seeds for investment in early-stage research. To increase your chances of finding outside funds for your early-stage technologies, it pays to plant some seeds early on and develop relationships between key researchers and investors. That’s exactly what the University of Wisconsin-Madison has done with a series of “FirstLook Forums,” which give angels and VCs a sneak peak at promising university research ……… p. 25
• Publish or protect: Anxious researchers present challenge in TTO efforts to secure IP rights. It’s a well-known challenge: Researchers so anxious to publish their work that they don’t want to wait until the university has secured a patent or proper IP protection ……… p. 26
• Think twice before launching IP-related litigation. Discovering that your organization’s valuable intellectual property is being ripped off or your license agreements are being violated is likely to bring a visceral reaction something akin to “we’ll sue their pants off.” But legal and tech transfer experts say that is rarely the best course of action, reserved only for the most egregious cases and instances where the cost of going to court — which can run $1 million a month and up to $30 million total when up against a large corporation — can be justified by the value of the IP or the flagrant nature of the infraction ……… p. 29

Technology Transfer Tactics,
Vol. 2, No. 1 (pp 1-16) January 2008

• Focus on sublicensing to protect IP, maximize revenues. Sublicensing is a tricky issue for tech transfer offices, with the potential to dilute the overall value of licensed IP but also offering the possibility of more revenue from downstream deals that can boost the TTO’s overall return. Getting favorable terms, several veteran negotiators say, is critical to both protecting your organization’s rights and assuring a strong future royalty stream. ……… p. 1
• “Option fund” cuts investment risk, brings early angel involvement. Establishing an “option fund” — a lower risk investment vehicle that allows angels to increase their stake in a technology only after certain developmental milestones are met — appears to hold promise as a way of increasing early-stage funding for university innovations and getting more research into the marketplace ……… p. 1
• BYU’s ‘creative works’ office makes the most out of low-tech IP. Brigham Young University is tapping into the revenue potential of its low-tech IP by handling it in a separate office, allowing dedicated staff to focus on many products the TTO simply wouldn’t have time to commercialize ……… p. 2
• Kodak’s sponsored research strategies offer model for academic-industry partnerships. Large-scale sponsored research partnerships between major corporations and universities are raising concerns about academic freedom and corporate influence on campus but also offering mammoth infusions of funding for vital technology innovations ……… p. 3
• Manage vanity start-ups with facts, determination. You’re less likely to have to deal with a vanity start-up than you were five years ago, but these ego-driven projects will always exist. The best you can do is arm yourself with facts, secure administration backing, and stick to your guns when Professor Famous decides he wants a corporate legacy to testify to his research prowess ……… p. 4
• Revisit sublicenses in light of MedImmune decision. Sublicensing arrangements must now be viewed in the context of last year’s U.S. Supreme Court decision in MedImmune v. Genentech, which held that a patent licensee need not breach a license agreement in order to seek a declaratory judgment of patent invalidity, unenforceability, or noninfringement ……… p. 7
• Require detailed royalty reports, audit power in sublicensing deals. Validating an accurate flow of revenue from sublicensees back to the original licensor is one of the thorniest issues of sublicensing ……… p. 9
• Tip of the Month: When negotiating abroad, beware of hidden cultural differences ……… p. 14
• Focus on students to build an “entrepreneurial ecosystem.” One of the keys to fostering a long-lasting “entrepreneurial ecosystem” on campus is engaging students in the research commercialization process. Two tech transfer experts recently outlined their “best practices” for tapping into the innovation power of their students at the University Start-ups Conference held at the National Institutes of Health in Maryland ……… p. 15

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Technology Transfer Tactics,
Vol. 1, No. 8 (pp 113-128) December 2007

• Tech transfer managers develop tactics to improve MTA process. Most tech transfer professionals who oversee the day-to-day negotiation, processing, cataloging, storage, and retrieval of material transfer agreements (MTAs) would like nothing better than to see universal implementation of the global, web-based eMTA Commons system that’s currently under development by an AUTM working group ………. p. 113
• Research institutes pool their inventions to create more value. As standalone offerings, many inventions just aren’t worth as much as you might hope. But the concept of IP bundling is catching on as a way to enhance that value by creating a package of related inventions. And if you can’t create attractive enough bundles within your own institution, partnering with other organizations may provide the answer ………. p. 113
• “IP landscape analysis” helps researchers focus on market opportunities. The tech transfer office at the University of Illinois at Urbana-Champaign is taking an innovative approach to educating its researchers about commercialization opportunities for their work. Instead of waiting for researchers to complete their studies and submit invention disclosures to explore the potential for commercialization, the TTO is stepping in much earlier in the process ………. p. 114
• Licensing your ‘know-how’ holds revenue potential, but seller beware. Licensing “know-how” held by researchers — either in combination with a patent or instead of one — can represent an often overlooked revenue stream for universities, technology transfer officials say. But accomplishing this is tricky, involving careful attention to confidentiality, pricing, and even faculty relations ………. p. 115
• Heard in the Halls: Like it or not, conference reveals realities of VC funding ………. p. 117
• How long is too long? University calculates MTA turnaround time benchmarks. The University of Washington has accumulated a vast array of statistics on its MTA process ………. p. 119
• Protect your patent rights by ensuring timely compliance with federal disclosure requirements. Tech transfer professionals who gain a good understanding of the facts involved in Campbell Plastics Engineering v. Brownlee can enact procedures to help their university avoid the loss of patent rights due to lack of timely disclosure ………. p. 122
• Use this checklist for federally sponsored research compliance. Here’s a quick rundown of compliance tasks you must adhere to when inventions arise out of federally sponsored research ………. p. 124
• New web site boosts exposure for U of Delaware’s technology. University TTOs looking to improve their web sites and use the web to generate more interest in technology licensing opportunities may want to visit the revamped TTO web site at the University of Delaware ………. p. 126

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Technology Transfer Tactics,
Vol. 1, No. 7 (pp 97-112) November 2007

• Use process mapping to improve your TTO’s performance. Decide what you want your technology transfer office to accomplish, and then redesign processes to get you there. That sounds simple, but it’s a task that inertia often renders almost impossible. Process mapping, a performance improvement technique borrowed from the Japanese system of kaizen, can help you gain a detailed understanding of what’s actually going on in your office so you can act with surgical precision to solve its operational problems ………. p. 97

• ‘Supercluster’ approach may speed time to market. Colorado State University (CSU), Fort Collins, CO, is seeking to meld its desire to streamline the commercialization process with its philosophic commitment to discoveries of global reach with the creation of a new structure it calls the ‘supercluster’ ………. p. 97

• Convene your own investor conference to match innovations with funding sources. One increasingly popular strategy for getting the word out about your university’s available technologies is to hold your own investor conference. And though it takes a lot of time and a fair amount of cash, if you target your message to the right people and then make sure there’s ample time at the meeting for wheeling and dealing, a conference can accomplish exactly what it’s designed for: connecting innovators and funders ………. p. 98

• Protect your assets with researcher entrance, exit interview system. Researchers and faculty may come and go from your institution without acrimony, but if you don’t have a system in place for entrance and exit interviews, you may be losing track of valuable assets on arrival and on departure ………. p. 100

• University of Toronto devises innovative hybrid TTO staffing model. Nearly every TTO uses one of two basic staffing schemes: the “cradle-to-grave model” or the “specialist model.” But a hybrid staffing model now being used by the University of Toronto is another option with some distinct advantages ………. p. 106

• Tip of the Month: Key sentences for first-time inventor meetings ………. p. 108

• Workbook for inventors helps standardize tech transfer decision-making. Could a standardized workbook for inventors help you get your faculty innovators to sharpen and organize their thinking about their newest discovery before they sit down for formal talks in the TTO? ………. p. 108

• University launches fundraising effort to help finance research commercialization. TTOs scrounging for early-stage dollars to move innovations along may want to consider an often-overlooked funding source: donations from philanthropists and alumni ………. p. 110

• Book Review: Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices ………. p. 111

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Technology Transfer Tactics,
Vol. 1, No. 6 (pp 81-96) October 2007

• Patent costs, paperwork to spiral under new USTPO rules. University tech transfer programs are buzzing about new rules guiding patent examinations that were published by the United States Patent and Trademark Office (USPTO) in the Federal Register on August 21, 2007 ………. p. 81
• Selling royalty rights can be sweet for all. A vaccine to prevent the flu is undoubtedly a blockbuster product with the potential for many years of big payoffs for its developers. But when the University of Michigan realized it had such a winner — FluMist — in its line-up of technologies, it opted to forego that likely annuity and sell the royalty rights to Drug Royalty Corp., an investment management company, for up to $35 million ………. p. 81
• Texas A&M adds commercialization to tenure criteria, boosts flow of inventions. Professors and researchers at Texas A&M are finding they can get more than royalties by commercializing their innovations ………. p. 82
• Tip of the Month: ‘Timing is everything’ may apply to tech transfer marketing efforts ………. p. 83
• IP auctions offer new avenue for monetizing your innovations. If you’re looking for a new avenue for getting some dollars for your homeless IP, you can now put it up for auction to the highest bidder ………. p. 84
• Deanslist.com matches IP with prospective buyers. In addition to holding IP auctions as a means of bring buyers to IP owners, Ocean Tomo recently launched a new website for universities, inventors, and companies looking to match IP with buyers …. p. 84
• U.S. Court of Appeals imposes new standard for ‘willful infringement.’ A court ruling in August has made it much more difficult to prove willful infringement, further weakening patent protection ………. p. 86
• Community outreach, advisory board spur UWash tech transfer office rebound. Revenues from the tech transfer program at UWash have been going straight up for the past few years as a result of efforts to make the department more efficient and more welcoming for would-be entrepreneurs, investors and university researchers ………. p. 90
• Advisory boards are not for everyone. Should your TT department have an advisory board? ………. p. 91
• Streamlined license agreement key to tech transfer turnaround. A number of different strategies contributed to the dramatic turnaround of the tech transfer program at the University of Washington, but perhaps none as clearly visible as the TTO’s effort to streamline its license agreement ………. p. 92
• Web-based customer service survey garners feedback for TTO. University of Louisville tech transfer office has been conducting an online customer service survey that other TTOs could easily adapt and implement ………. p. 93
• Legal Q&A: Take steps to protect your IP when a licensee faces possible bankruptcy ………. p. 94

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Technology Transfer Tactics,
Vol. 1, No. 5 (pp 65-80) September 2007

• Conflict of interest policies a growing challenge for TTOs. Managing conflicts of interest (COIs) between the academic research laboratory and the industrial marketplace has become a bugaboo for many tech transfer offices. Funding from nonprofit sources, especially federal and state governments, still represents the lion’s share of dollars for academic research, but industry sponsorship is growing. That growth brings increased influence from commercial entities, whether explicit or in subtler forms ………. p. 65
• U of Akron beats out larger schools in rate of return. Smaller institutions take note: You can outperform larger universities with the right strategies and proper implementation ………. p. 65
• Venture debt fills funding gaps for early stage university spin-offs. In the world of commercial financing, $200,000 or $300,000 may not seem like a very large sum of money, but for a university spin-off seeking to fill a gap of that size when angel funding has fallen short, it can be all the money in the world ………. p. 66
• Columbia Fellows program supports tech transfer efforts. A new student Fellows program created by Columbia University Science & Technology Ventures (STV) has yielded an array of benefits for the university’s TTO ………. p. 67
• Tip of the Month: Inexpensive ‘patent plaques’ make big impression on faculty ………. p. 69
• ‘Cyberpitch’ system offers new vehicle for tech transfer marketing. Picture this scenario: A potential investor or licensee receives an alert from ‘Scifin.net’ (not unlike a ‘Google Alert’) followed by a keyword — say, ‘Nanotechnology.’ A link, sent by a university TTO, directs the user to a WAP (wireless application protocol) site they can access from their PC, a web-enabled cell phone, or PDA. Once there, they can download a one minute video trailer or read or download additional information about new technologies ………. p. 69
• Conflict of Interest Toolkit offers help in policy development. One of the newest and most practical approaches to addressing conflicts of interest in technology transfer is contained in a comprehensive COI Toolkit unveiled in July by the Federation of American Societies for Experimental Biology ………. p. 70
• Quantifying the rate of return on research dollars. The University of Akron has the highest rate of return per research dollar leading to technologies commercialized by Ohio industry, according to the Ohio Board of Regents, which set up a three-component algorithm for making the awards under a statewide incentive program ………. p. 75
• Legal Q&A: Ensure strict compliance with export control regs ………. p. 79

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Technology Transfer Tactics,
Vol. 1, No. 4 (pp 49-64) August 2007

• Active management of licenses keeps big dollars from slipping away. Institutions need to actively manage their technology licenses or they risk losing significant revenue from incorrectly reported royalties and sales, say auditors from the Invotex Group who have studied the mistakes universities make in managing licensing agreements ………. p. 49
• Want to “brand” your tech transfer office? Here’s how. To boost visibility, credibility, marketing effectiveness, and ultimately licensing revenue, a growing number of tech transfer offices are buying into “branding,” recasting the TTO with its own catchy name, logo and tagline. Proponents say branding efforts can increase disclosures, improve faculty and administration relations, and position an organization as a recognized leader in tech transfer. But don’t expect results immediately, because branding can take years to gain traction ………. p. 49
• IP bundling: The whole is greater than the sum of its parts. Tech transfer professionals with technologies they have not been able to license can strengthen their hand by bundling several related research products, suggested a panel at the recent Licensing Executives Society’s meeting in Atlanta ………. p. 50
• U.S. government move toward “infusion” model opens opportunities for licensing university IP. Your tech transfer office could parlay a culture shift occurring in U.S. government labs into a lucrative stream of licensing opportunities ………. p. 52
• Tip of the Month: Boost your revenue on milestones and minimums with inflation adjustment ………. p. 53
• Post-deal diligence: What are your options when terms are violated? When post-deal diligence reveals a licensee is underpaying or otherwise skirting the agreement’s payment terms, how should you resolve it? ………. p. 55
• Expert details impact of recent patent law developments. Tech transfer professionals who’ve been fretting over the spate of recent patent law rulings, pending legislation, and PTO rule changes received some much-needed guidance and perspective during a 90-minute audioconference sponsored by Technology Transfer Tactics ………. p. 58
• Conference sponsorship pays off as IP marketing strategy. The University of Hawaii (UH) Office of Technology Transfer and Economic Development has just completed its first venture into the world of conference sponsorship, and there’s a good chance it yielded a deal the OTT would not otherwise have had ………. p. 60
• Tech transfer officials react strongly to disparaging article in The Scientist. Technology transfer officials reacted strongly but with a certain amount of puzzlement to an article in the June issue of The Scientist that contends many tech transfer offices are scuttling potential deals because of their “greed” and “incompetence.” ………. p. 62
• Legal Q&A: When researchers switch teams, does IP go with them? ………. p. 63

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Technology Transfer Tactics,
Vol. 1, No. 3 (pp 33-48) July 2007

• Tech transfer directors develop custom metrics tied to institutional goals. Measuring technology transfer office performance can be a thorny issue because there are no “standard” measurements to use for every institution. And while many directors turn to the highly regarded AUTM annual licensing survey as a way to compare performance with their peers, directors who make best use of performance indicators do so by developing custom metrics that are aligned with their institutions’ goals, according to several experienced managers ………. p. 33
• VC executives reveal what works, what doesn’t when TTOs come looking for investment dollars. Don’t send venture capitalists any more big fat portfolios stuffed with details of every innovation your institution is working on. They’re too much work. But don’t presume to know everything a VC firm will be interested in funding, either. Strive instead to provide just enough details for VCs to make an intelligent analysis on key projects in the firm’s areas of interest ………. p. 33
• KSR v. Teleflex: Caution advised, but stay the course on patent prosecution. Though the most recent broadside from the U.S. Supreme Court in its KSR v. Teleflex ruling does potentially raise the bar on what constitutes “prior art” — and may restrain patent activity while opening the door to more patent challenges — don’t panic about its ramifications, two IP law experts say ………. p. 34
• Innovation Capitalists: A new source of funding for ‘stranded technologies?’ If you’ve got some ‘stranded technology’ looking for a licensing home, a new fundraising model unveiled at the Licensing Executives Society’s annual meeting may be just what you’re searching for ………. p. 36
• Universities slowly turning to incentive compensation for tech transfer staff. Technology transfer offices slowly are turning to incentive compensation systems as a way to reward good performance, encourage teamwork, and attract and retain key staff. However, several barriers stand in the way of widespread adoption of such plans, including university politics and difficulties finding the money for the bonuses, tech transfer officials say ………. p. 36
• UIC conducts stakeholder survey as part of performance measurement. A particularly important and unique performance indicator at the University of Illinois-Chicago is an annual survey conducted by the Office of Technology Management used to determine how stakeholders view its performance ………. p. 40
• ‘Cold e-mailing’ may beat cold calling in marketing effectiveness. Some university technology transfer offices — especially newer ones — find that cold-contacting potential licensees can be an effective way to market technology licenses. However, many schools that do cold-contacting tend to use e-mail rather than the phone, and the key is to keep the pitch as simple as possible, tech transfer professionals say ………. p. 44
• Question of the Month: Veterans give rookie tech transfer managers their words of wisdom ………. p. 47

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Technology Transfer Tactics,
Vol. 1, No. 2 (pp 17-32) June 2007

• Tech transfer offices alter licensing strategies after MedImmune decision. Can a company agree to license a patented technology from you, then challenge the very validity of that patent and still retain its license? Believe it or not, the U.S. Supreme Court says “yes,” and tech transfer managers are now scrambling to adjust their agreements to keep patent predators at bay ………. p. 17
• Consider convertible notes in early-stage seed funding. Universities looking to avoid valuing a spin-out too soon can sidestep the issue in some cases by encouraging the company to raise capital with convertible notes instead of equity. The tactic — more controversial than it is unknown — is popular with investors who want to minimize the likelihood of a subsequent down round of financing due to an inflated valuation at an earlier round. But it can be seen as an obstacle by some parties because it involves more than a simple hand-over of cash ………. p. 17
• Co-inventorship, assignment combine to form explosive mixture. Don’t get into an assignment situation for a co-invented technology unless you’re looking for heartache. But, if you must go that route, keeping the lines of communication wide open throughout the licensing and product development process is key ………. p. 18
• Avoid these top 10 license agreement mistakes. When it comes to negotiating license agreements, knowing what not to do can be the key to a long-term deal that both protects your IP and brings your organization a maximum revenue stream. With that in mind, Alan Bentley, director of medical device commercialization with Cleveland Clinic Foundation, gave his list of “top 10 license agreement mistakes” ………. p. 19
• Intel pushing “subscription license” model as alternative to royalties. Technology giant Intel Corp. is pressing universities for wide-scale adoption of a “subscription license” model instead of more traditional royalty-based licensing in the semiconductor and IT industries. The non-exclusive licensing model addresses problems inherent to these high-tech field and offers real advantages for schools, including a guaranteed steady minimum income stream and a streamlined licensing process, says Intel attorney Jaina Selawski ………. p. 21
• Department-level web pages enhance TT office’s internal marketing efforts. Tech transfer professionals at the University of Arizona, recognizing the value of enhanced internal marketing, have created a series of department-specific web pages targeting deans and department chairs. These pages not only keep the TT office in front of these key internal audiences on a regular basis, but they also provide information the deans and department heads may need on short notice to prepare for a presentation ………. p. 26
• ‘Innovator Initiative’ uses outreach, recognition to bring researchers into tech transfer ‘community.’ Tech transfer managers looking for effective strategies to promote their offices internally to researchers and boost the flow of invention disclosures can take a page from an outreach and recognition program developed at the University of Pittsburgh ………. p. 29
• Legal Q&A: Did prof’s loose tongue erode our IP’s patentability? ………. p. 31

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Technology Transfer Tactics,
Vol. 1, No. 1 (pp 1-16) May 2007

• Instructional aids hold revenue potential outside biotech ‘box.’ “Millions and millions of dollars” were earned at Vanderbilt University from courseware developed in its education school, Peabody College, says Peter Rousos, senior business development executive in Vanderbilt’s Office of Technology Transfer and Business Development ………. p. 1
• Royalty stacking clauses: Hidden perils. If you get to the point of actually negotiating royalty rates for your organization’s intellectual property, you may be so happy to have an agreement that you readily agree to any royalty stacking (RS) provision that the other party puts in the contract. Big mistake, say experienced tech transfer experts and attorneys ………. p. 1
• “Rule of thumb” valuation can save dollars, speed license negotiations. Coming up with a valuation acceptable to both parties is one of the stickiest aspects of getting a licensing deal done. Try this quick and dirty approach ………. p. 2
• Tech transfer triage yields boost in disclosures, licensing income, and cost savings. Many technology transfer departments face the same challenge: how to pick the potential winners from a mountain of diverse inventions ………. p. 3
• Baseline metrics for tech transfer professionals. Use these benchmarks to gauge the performance of your tech transfer program ………. p. 3
• “Speed dating” accelerates researcher-industry matches. Introducing your academic researchers to industry scientists and venture capitalists can yield a number of benefits, such as licensees for your technologies, sponsors for research, and financial donors. Yet the traditional ways for such meetings to occur are haphazard and drawn out ………. p. 4
• Dealing with ‘tricks’ during license negotiations. A great deal of “art” factors into whether the terms of the license you sign are as favorable to your organization as possible ………. p. 4
• Heard in the Halls: AUTM 2007 Annual Meeting ………. p. 5
• Save money with MBA students as analysts, start-up managers. Why pay a consultant $10,000 for a single report to analyze an invention when you can hire bright new minds eager to produce the same research at a more reasonable price? ………. p. 10
• Coming soon: eMTAs designed to reduce paperwork, standardize transfer process. As technology transfer professionals struggle with the increasing volume of material transfer agreements (MTAs) and with the complexities involved in transferring materials to and from for-profits, a working group sponsored by the Association of University Technology Managers (AUTM) is developing a global, web-based secure MTA system ………. p. 12
• Legal Q&A: Do student “helpers” have the right to be named as co-inventors? ………. p. 15