The following is a list of the articles that appear in the January 2011 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 5, No. 1 (pp 1-16) January 2011

• ‘Health index’ could help TTOs measure their impact. A common theme among tech transfer stakeholders is that universities need to identify performance measures that are simple to tally and understand yet offer meaningful insight into the inner workings of university TTOs. The “tech transfer health index” is a simple but powerful technique to gain greater insight into both the impact and productivity of the “long tail” curve of technologies in a university’s IP portfolio.
  
• Purdue puts boots on the ground in Silicon Valley. Sometimes a university’s geography gets in the way of accessing the key technology centers where critical sources of capital and business expertise reside. Does that mean a university in a “flyover” state should limit its expectations for building tech transfer and entrepreneurship? A resounding “no” is the answer coming from Purdue University in West Lafayette, IN.
• TTO with excess capacity morphs into outsourcing partner. Innovations are the lifeblood of technology transfer operations, but sometimes the same kind of new thinking needed to introduce a novel product or process to the world is exactly what’s required when changes in the law or some other unforeseen issue forces you to do business in a different way.
  
• Fundraising campaign seeks to transform UNC’s innovation ecosystem. A capital campaign to boost university innovations and commercialization? Sounds ambitious (and it is), but that’s exactly what the University of North Carolina at Chapel Hill has undertaken — although they refrain from calling it a “capital campaign.”
• Guest Commentary: Assessing the relationship between patent claims and patent value.
• TTO’s partnership model set to ramp up commercialization of medical devices. It just makes sense that front-line professionals who work with medical technology every day — and who dream about what doesn’t yet exist — would be a great untapped source of innovation.

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

The following is a list of the articles that appear in the December 2010 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 4, No. 12 (pp 177-192) December 2010

• Research sponsor and faculty start-up collide over IP rights. Sponsored research agreements and home-grown start-ups are both coveted by research institutions, but when prominent faculty have one foot in each camp, as they frequently do, a legal mess can ensue.
• Redefine TTO metrics to improve progress toward institutional goals. Accountability has never been a bigger topic for TTOs than during the past two recession-ridden years. With that in mind, it’s more important than ever to measure not only TTO output but also the activities that underlie those results.
• U-Manitoba inks Master License Agreement with Intellectual Ventures. The University of Manitoba in Winnipeg has signed a deal with Bellevue, WA-based Intellectual Ventures that allows the university to offer its technologies to IV under a Master License Agreement. The Canadian school’s TTO hopes the arrangement will get more of its IP to the marketplace and more licensing dollars into its bank account.
• TTOs put economic development high on priority list. In the past, economic development may have been an afterthought — or at least a second-tier priority — for many university TTOs, but things have clearly changed.
• Student-led commercialization programs can bring real-world results. Maybe it’s the Google effect. Universities across the country have recently established programs to tap into students’ technology transfer efforts, setting up avenues to commercialization that embrace undergraduates’ and grad students’ novel ideas and their seemingly unlimited enthusiasm for turning those ideas into companies down the road.
• Tap local, industry resources to stretch TTO budget. When you’re a small university living in the shadow of your large research counterparts, you need to build your reputation and leverage local resources to compete for faculty, funding, and deals.

Posted December 22nd, 2010 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the November 2010 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 4, No. 11 (pp 161-176) November 2010

• Tenure polices slowly shifting to support commercialization activity. It’s tough enough to get promising innovations translated into commercial success without having bright, young professors discouraged from even considering the potential of technology transfer, but experts tell TTT that’s exactly what’s happening.
• In unique deal, USC auctions an exclusive license and retains patent. The USC Stevens Institute for Innovation at the University of Southern California took a chance on a new way to commercialize its technology, and the experiment — a one-shot auction rather than an ongoing, structured license — succeeded to the tune of $7.7 million.
• RPI encourages undergrad innovation with simplified license agreement. Imagine receiving an undergraduate degree with a provisional patent and a license to your technology already in your pocket. That’s the alluring proposition promoted by Rensselaer Polytechnic Institute (RPI) in Troy, NY, where the student body is heavily concentrated in engineering, information technology, and science.
• Boise State uses ‘Innovation Teams’ to assess IP market potential. At many universities, tight budgets and limited staff force technology transfer managers to use often incomplete information to make hard, quick decisions about the commercialization potential of intellectual property. The Office of Technology Transfer (OTT) at Boise State University created its Innovation Team program to address this problem by gauging market opportunities for IP using paid multidisciplinary faculty/student teams.
• Legal Q&A: Two years after disclosure, technology finally garners interest but inventor wants the rights returned.
• TTO adds satellite office for faculty ‘drop-ins.’ With offices often located far from the researchers and labs they must court for disclosures and early notice of innovations, many TTOs labor in relative obscurity, hidden away from the internal customers they must rub shoulders with to succeed.

Posted November 16th, 2010 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the October 2010 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 4, No. 10 (pp 145-160) October 2010

• IBM data analytics help NC State quickly unearth potential licensees. Assessing invention disclosures to identify potential commercialization opportunities and sifting through business databases and industry websites to find likely suitors for the IP are critical activities for technology transfer offices. Although TTOs have applied a variety of techniques to optimize this process, the Office of Technology Transfer (OTT) at North Carolina State University in Raleigh believes it has built a better mousetrap.
• The value proposition offered by specialized centers. When an academic institution has an area of strength, it can make sense to capitalize on this specialty by developing an institute or center that assembles all the in-house expertise in this field under an umbrella organization.
• Entrepreneur Match sets the stage for university start-up success. Faculty-run university start-ups don’t have the best track record of success, chiefly because faculty inventors rarely have the experience needed to serve effectively as company executives.
• Guest Column: Use a Negotiating Scorecard to guide your assessment of deal terms.
• Venture debt a funding alternative for later-stage start-ups. With venture funding for early-stage technologies all but vanished, TTOs might be tempted to consider venture debt as an alternative. Experts caution, however, that it is no substitute for true investment.
• New tool aims to quickly link TTOs with prospective licensing partners. Indiana University’s Pervasive Technology Institute (PTI) has launched a web tool aimed at speeding medical device innovations to the marketplace. The project, which was co-developed with the Indiana Clinical and Translational Science Institute and Cook Medical, is an online service, dubbed i2iconnect.org, that links technology transfer organizations and inventors with the companies most likely to be interested in their discoveries.

Posted October 19th, 2010 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the September 2010 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 4, No. 9 (pp 129-144) September 2010

• University proof-of-concept centers changing U.S. commercialization landscape. In the wake of a ruinous recession, U.S. universities are feeling a sense of urgency to translate their research into commercial products. Centers calling themselves “accelerators,” “incubators,” “venture centers,” and “commercialization labs” are springing up nearly every month.
• Penn’s UPstart program offers faculty turnkey start-up creation services. A potential licensing partner looks at a technology available through a university technology transfer office. But the TTO can’t strike a licensing deal because the company says it doesn’t see a viable commercial product. As all TTO professionals know, this scenario is common in tech transfer.
• Syracuse U’s Technology Commercialization Clinic aims for market introduction. It’s hard to watch a promising innovation come to nothing because the inventors or entrepreneurs championing the technology lack the kind of detailed marketing, business, and legal analyses needed to give the IP a suitable liftoff. Yet, technology transfer professionals see this all time. Why? Because obtaining this information takes time and resources. The cost can run into six figures.
  
• Fledgling organization begins offering international tech transfer credential. It’s been more than two years since five of the world’s most prominent academic tech transfer organizations began working quietly to form a credentialing organization, and earlier this year, the group unveiled the not-for-profit Alliance for Technology Transfer Professionals (ATTP).
• ‘Re-engineering’ contracting process speeds deals for Drexel TTO. When he joined the Drexel University tech transfer operations in December 2005, Robert B. McGrath, PhD, associate vice provost and executive director or entrepreneurship & technology commercialization, says that deals were taking between six and nine months to complete. Now, he says, “if it takes more than three and a half months I’m shocked.”

Posted September 23rd, 2010 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the August 2010 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 4, No. 8 (pp 113-128) August 2010

• U of New Mexico TTO gets serious about enforcing patent rights. With limited resources and no appetite for courtroom maneuvers, university-based technology transfer offices have traditionally been weak enforcers of patent rights. But that stance may be changing.
• Use this checklist to standardize the royalty audit process. Amid the daily hustle and bustle of a busy TTO, tracking and checking the accuracy of royalty payments is one activity that frequently is shunted aside or, at best, performed on an ad hoc basis.
• MO school taps royalty income to boost prospects for fresh IP. Even if potential licensees or investors show an interest in the IP, they inevitably ask for additional data or a prototype. And that’s where the roadblock commonly referred to as the Valley of Death begins.
• Pocket-sized ‘coaching card’ helps inventors when pitching industry. A collaborative group involving the University of Pittsburgh’s Office of Technology Management and its Office of Enterprise Development has developed a tri-fold reminder the size of a business card designed to be carried by inventors when they go to outside meeting.
• Guest Commentary: Tips for drafting and prosecuting patent applications after Bilski v. Kappos.
• Start-up’s goal is recovering ‘rogue IP’ for patent holders. Some estimates suggest that as much as 30% of university inventions are commercialized through the “back door” by their faculty inventors. It was this IP leakage that led three individuals to co-found the aptly named “Rogue IP” to address the problems.
• Ohio’s statewide master agreement with P&G smooths path to licenses. A master sponsored research agreement hammered out between the University System of Ohio and Proctor & Gamble promises a steadier flow of research dollars and a more efficient means of securing lab funding — while also smoothing a path to licensing deals between the state’s TTOs and the corporate giant.

Posted August 6th, 2010 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the July 2010 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 4, No. 7 (pp 97-112) July 2010

• Bilski decision leaves many questions unanswered for TTOs. Technology transfer offices should continue to maintain a “proceed with caution” approach to pursuing and prosecuting business method patents in light of the Supreme Court’s Bilski decision.
• Hard lesson: Keep close tabs on researchers, funding. It’s easy to get so consumed with licensing and start-up formation that details such as record keeping and monitoring take a back seat. However, seemingly small mistakes in oversight can upend commercialization efforts in a big way.
• In-house counsel: From black hole to deal-making asset. Technology transfer professionals often take a “grin and bear it” approach to their own university counsel’s participation in the tech transfer process, regarding in-house counsel as a drag on potential deal-making rather than a valuable asset.
• Licensee trying to ‘squirm’ off the hook? Educate to close the deal. Every TTO professional probably has a long list of terms that make licensees squirm and balk at deals. The problem is that in-house counsel — often with reason — insist on terms that licensees don’t typically come across in private industry.
• Key excerpts from Supreme Court decision in re Bilski. For a ruling that critics say left more unsaid than said, the Bilski verbiage contains some surprisingly strong statements.
  
• Ohio State revamps TTO and seeks dramatic increase in revenues. A major revamp of the TTO is one of several key moves Ohio State University is counting on to significantly brighten its licensing revenue picture.
  
• Negotiation expert shares tips on how to strike a better deal. Perhaps the greatest challenge in negotiating a deal is getting to the number you really want.

Posted July 15th, 2010 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the June 2010 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 4, No. 6 (pp 81-96) June 2010

• Express-style licenses gain traction, new wrinkles emerge. The University of North Carolina has attracted considerable attention in the press for its introduction of the Carolina express license. Given the benefits of faster deals and higher throughput, it is perhaps not surprising that other TTOs have looked at similar “express” approaches, and alternative models designed to speed up deal-making process have emerged.
• New Hopkins app broadens TTO’s reach through PDAs, iPhones. A new application developed at Johns Hopkins enables users of iPhones, iPads, and Motorola Droids to instantly access the university’s technology transfer office and search for information about Hopkins inventions and faculty.
• TTO’s off-campus move sends strong message to business community. Earlier this spring, MSU Technologies — the tech transfer office for Michigan State University — took a small step across the street that represented a symbolic leap to the East Lansing business community.
• PA model gives small colleges a shot at commercialization. Most small colleges lack the resources to maintain a dedicated technology transfer office, but that doesn’t mean there aren’t ways to pursue commercialization.
• RIT’s small tech transfer office gets added mileage from students, faculty. Large tech transfer offices often struggle with how to organize their personnel for optimal efficiency and performance, but if those larger TTOs want to complain to colleagues at small-office institutions, they shouldn’t expect much sympathy.
• Guest Commentary: Licensing Probability Model helps derive solid valuation.
• Keep the lid on patent prosecution costs. Though patent prosecution costs can be frustratingly high and represent a large line item in most TTO budgets, the good news is that means it’s also an area rife with opportunities to economize.

Posted June 11th, 2010 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the May 2010 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 4, No. 5 (pp 65-80) May 2010

• Myriad gene patent decision adds to steady erosion of IP protection. The recent district court ruling in the Myriad Genetics case is just the latest major test of what is and is not patentable.
• New model seeks to rescue ‘stranded’ biomedical innovations. How to get biotech innovations through the expensive and lengthy proof-of-concept stage is a huge dilemma facing research institutions.
• New financial exchange offers new alternative for IP monetization. Chicago-based Intellectual Property Exchange International is laying the groundwork for a formal launch later this year, allowing owners of IP to monetize their assets, while giving investors access to trading, investment, and arbitrage opportunities.
• U of Kentucky uses federal grant to fund two FTEs who harvest marketable IP. Federal and state legislators are asking tough questions about the fruits of their research funding dollars, and looking for more job growth resulting from university research commercialization efforts.
• Marketing Matters: Is your TTO’s website effectively targeting the right audience?
• Entrepreneur-focused Master’s program to target university’s unlicensed IP. This September, the Univeristy of Rochester will officially launch a Master of Science degree called the Technical Entrepreneurship and Management (TEAM) program. Every TEAM student will create a business plan around a real technology, and will also have an opportunity to commercialize that technology via a start-up company or licensing effort.
• What it takes to be a TEAM player. The Technical Entrepreneurship and Management (TEAM) program at the University of Rochester is currently in a prototype or beta-testing phase involving 4.5 students, but this new Master of Science degree has already generated a lot of interest.
• Lacking strategic vision? Vice provost for technology transfer policy may be the answer.

Posted May 13th, 2010 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the April 2010 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 4, No. 4 (pp 49-64) April 2010

• Kauffman controversy continues, future remains uncertain. The title of a jam-packed Debate Forum at the recent AUTM meeting in New Orleans was “Role of Inventors in Negotiating License Transactions,” but all the attendees knew what it was really about.
• Reap the benefits but avoid the pitfalls of provisional patent applications. Legal experts emphasize that shoddily prepared PPAs can come back to haunt TTOs later on in the game.
• Ten steps to fold social media into your TTO’s marketing mix. For the generation old enough to remember, developing a web home page was once the center of debate when technological advances changed how the world communicates. Is it worth the effort? Now the focus is on social networking and web 2.0-facitliated communications opportunities.
• ‘10 keys to enlightenment’ for becoming a skillful contract negotiator. “Negotiating is not a skill,” said Robert S. MacWright, PhD, JD, as he opened up a session at the recent AUTM meeting in New Orleans entitled ‘The Art Form We Call Negotiation.’ “You could read 50 books on negotiating and still not know how to do it, because there is no standard way to negotiate.”
• Economist makes research-based case against Kauffman proposal for “free agent” faculty. Scott Shane, professor of entrepreneurial studies in the Department of Economics at Case Western Reserve University’s Weatherhead School of Management, produced a white paper focused on using published research — rather than opinion and anecdote — to inform the U.S. Commerce Department’s current examination of university commercialization activity, and its search for improvements.
• Heard in the Halls: AUTM 2010
• Purdue program matches angel investors with university start-ups. The Purdue University technology commercialization community hopes to match angel investors with at least half of the dozen or so start-ups it launches each year through a new program called the P3 Alliance.
  

Posted April 16th, 2010 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the March 2010 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 4, No. 3 (pp 33-48) March 2010

• Stage-gate process provides rational structure for nurturing innovations. It is a common problem in technology transfer offices, where there’s always more technology to manage than managers to shepherd those technologies along. Some innovations get more scrutiny than others, and even those with obvious promise tend to amble down the field in an unpredictable fashion. Deals can get done in this kind of environment, but it’s hardly a blueprint for optimal productivity.
• Distributed partnering model eschews conventional start-up road to commercialization. The ongoing effort to build a better mousetrap for commercializing university IP has taken spawned a new concept its developers have dubbed “The Distributed Partnering Model.”
• Outsourcing gains favor as option for improving productivity, deal flow. Managing the growing volume of disclosures, patent filings, technology licenses, and spinoff activity is prompting some tech transfer managers to consider new tactics to handle more work without adding staff. Outsourcing is gaining interest as an option to shift service line responsibilities or IP portfolios to other entities, which may be located across the university or across the world.
• Contracting Clinic: Don’t assume concessions must be made for withheld indemnifications.
• Use interns, community resources, and teams to rev up your TTO. A familiar refrain among technology transfer personnel is that there are simply not enough hours in the day to work up technologies, reach out to potential licensees, and jump through all the hoops necessary to get deals done.

Posted March 17th, 2010 under Current Issue. [ Comments: none ]

The following is a list of the articles that appear in the February 2010 issue of Technology Transfer Tactics monthly newsletter. If you are already a current subscriber click here to log in and access your issue. Not a subscriber already? Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!

Technology Transfer Tactics,
Vol. 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?

Posted February 17th, 2010 under Current Issue. [ Comments: none ]

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