The following is a list of the articles that appear in the August 2007 issue of Technology Transfer Tactics monthly newsletter.

Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 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

Posted August 1st, 2007 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the July 2007 issue of Technology Transfer Tactics monthly newsletter.

Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 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

Posted July 1st, 2007 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the June 2007 issue of Technology Transfer Tactics monthly newsletter.

Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 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

Posted June 1st, 2007 by Leslie Norins under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the May 2007 issue of Technology Transfer Tactics monthly newsletter.

Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 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

Posted May 1st, 2007 by Leslie Norins under Current Issue. [ Comments: none ]

 Next entries »