OpenUlster, a new service recently launched by The University of Ulster, is an approach to the open innovation model that includes an “evaluation license.” Operating under a unique trial period arrangement, for the minimal investment of one Pound the evaluation license allows companies to “test drive” technologies for a period of three months to a year before determining whether to proceed with a more formal license.

Timothy Brundle, executive director of Innovation Ulster Ltd., says the service represents the university’s latest effort to get more technology into the hands of entrepreneurs. “Our basic methods include contracts, research, knowledge transfer, spinouts, and IP licensing, but what we find is that many technologies sit in our portfolio and are not commercialized because of limitations the university structure places around them,” Brundle explains. “We wanted to take the technology in its rawest form and put it in the hands of an entrepreneur who could undertake the commercialization process outside the university.” The entrepreneurs, he continues, are “incentivized” to undertake the role of tech transfer and translation, but to do it outside the university. “This way, we extend the capacity of our tech transfer team with seasoned entrepreneurs,” Brundle explains. “They have access to our [seed] funds and tools.”

The OpenUlster website, launched in the fall of 2011, is populated with new technologies on an ongoing basis. Entrepreneurs, companies and other interested parties can see which technologies are currently under evaluation and which ones are available. To take out an evaluation license, they click on the link to download the necessary documents, fill out two forms and return them both to the university. When the license is countersigned by a member of the commercialization team, the firm has an exclusive period to evaluate the technology. They receive additional information about the technology that includes any published patents, experimental data, and prototypes or software.

“We give the entrepreneur a license for one Pound and charge them to take the technology, generally for six months. They go away, and we give them access to our funds, tools, and whatever resources they might need,” says Brundle. The university, he explains, has its own VC firm and internal innovation funds. “In the same way our tech transfer executives have the opportunity to pitch to those funds, we give [outside parties with an evaluation license] the opportunity to pitch to those funds as well,” Brundle reports. “In the six months they work up plans on how to commercialize the technology, which is what we look for from them.” In the first few months, he adds, 12 technologies have been put up on the site and five have been licensed on an evaluation basis. A detailed article on the OpenUlster initiative appears in the January issue of Technology Transfer Tactics. To subscribe and access the full article, along with an instant library of archived best practices and success strategies, CLICK HERE. 

Posted February 1st, 2012 under Tech Transfer. [ Comments: none ]

Jason Rantanen writes on Patently-O about the USPTO’s proposed rules for supplemental examinations and proposed revisions to ex parte reexamination fees. The proposals detail the supplemental examination process, including the information that requesters must submit, as well as the substantial fees that will be associated with post-grant review in the future.

As outlined by Rantanen, major points include:

• The request must be filed by the patent owner, and only the patent owner will be permitted to participate in the supplemental examination or any reexamination ordered as a result. (§ 1.601)
• Each supplemental examination request may identify up to 10 items of information to be considered, reconsidered, or corrected. Multiple supplemental examination requests may be filed at one time. (§ 1.605)
• The cost to file a supplemental examination request is $5,180 for the initial request plus $16,120 for the ex parte re-examination fee. (§ 1.20(k)) Both must be paid at the time of initial request, with the $16,120 refunded if no re-examination is ordered in the supplemental examination certificate. (§ 1.26(c)) Substantial fees also are associated with documents exceeding 20 pages and with petitions filed in connection with the proceeding. 
• The supplemental examination request must include ((§ 1.610(b)):
1. a cover sheet;
2. an identification of the patent for which supplemental examination is requested;
3. a list of each item of information and its publication date, if applicable;
4. a list identifying any other prior or concurrent post patent Office proceedings involving the patent to be examined;
5. an identification of each aspect of the patent to be examined;
6. an identification of each issue raised by each item of information;
7. a separate, detailed explanation for each identified issue;
8. an explanation of how each item of information is relevant to each aspect of the patent to be examined;
9. a copy of each item of information; and
10. a summary of the relevant portions of any submitted document, other than the request, that are more than 50 pages in length.

The PTO is accepting comments on the proposed rules until March 26, 2012. Read the relevant Federal Register section here.

Source:  Patently-O

Posted February 1st, 2012 under Tech Transfer. [ Comments: none ]

In a separate column in Patently-O, Jason Rantanen offers a case review of Falana v. Kent State University (Fed. Cir. 2012) Download 11-1198. The case raises an important issue for developers of chemical compounds: when is an inventor’s contribution to the method of making a claimed compound an inventive contribution?

The plaintiff in this Section 256 action, Olusegun Falana, was a postdoctoral researcher hired by Kent State and Kent Displays, Inc. to synthesize organic molecules in connection with a project to develop a temperature-independent, high helical twisting power chiral additive for use in portable liquid crystal displays, Rantanen explains. During his employment, Falana developed a synthesis protocol for making a novel class of chemical compounds. He used this process to synthesize a compound within this genus designated “Compound 7.” While Compound 7 possessed some of the desired characteristics, and represented “significant progress,” it did not completely satisfy the project goals. Falana subsequently resigned from KDI and Kent State to take another position.

A few months later, the Kent State professor who had selected Falana used Falana’s synthesis protocol to synthesize another member of the novel class, “Compound 9,” which possessed the desired degree of temperature independence. KDI and Kent State filed an application that led to Patent No. 6,830,789, which did not list Falana as an inventor. Falana subsequently filed a Section 256 action to correct inventorship, and the district court ruled in Falana’s favor following a bench trial, further finding that the case was exceptional and awarding attorney’s fees.

On appeal, the Federal Circuit concluded that Falana had contributed to the conception of the claimed invention. Drawing upon established law, the court first noted that “[c]onception of a chemical compound ‘requires knowledge of both the specific chemical structure of the compound and an operative method of making it.” Slip Op. at 12 (quoting Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997). Falana contributed to the method of making the claimed compound in a way that required more than the exercise of ordinary skill. The court recognized an important limitation on its holding, however, writing, “[This] does not mean that such an inventor necessarily has a right to claim inventorship of all species within that genus which are discovered in the future. Once the method of making the novel genus of compounds becomes public knowledge, it is then assimilated into the store-house of knowledge that comprises ordinary skill in the art.” Id. at 15-16.

Source: Patently-O

Posted February 1st, 2012 under Tech Transfer. [ Comments: none ]

When it comes to university-based innovations, traditional investors have become nearly obsessively risk-averse, and getting the backing you need to commercialize your promising technologies and fund your start-ups has become a tougher challenge. Creating an in-house accelerator fund has become a key success strategy for a growing number of TTOs, freeing up resources that help ensure your high-potential university technologies get a fair shake — and the development dollars they need — to reach commercial viability. But, establishing a strategic financing structure within your university technology transfer system or research foundation can be a risky and daunting task, and requires careful planning as well as expert execution. That’s why our Distance Learning Division has scheduled this dynamic and practical webinar featuring two of the world’s leading TTO financing executives: Build and Manage a Successful Accelerator Fund for Your University, scheduled for Wednesday, March 7. Please join Richard S. Schifreen, PhD, who leads the Accelerator Program at the Wisconsin Alumni Research Foundation, Jonathan Gortat, coordinator of the Emerging Innovations Fund at Purdue Research Foundation, for an eye-opening session that will reveal best practices and offer “how-to” strategies for building and managing a successful accelerator fund. To register and for complete details, CLICK HERE.

ALSO COMING SOON:

• February 15: Licensee Red Flags: 12 Critical Signs that Should Trigger an Audit
• February 15: SBIR/STTR Grant Funding: Innovation Research and Technology Transfer
• February 28: How to Outsource and Offshore TTO Activities for Huge Savings and Efficiency Gains
• March 21: Patent Prosecution Cost-Saving Strategies: Increase Your TTO’s Filings Without Increasing Your Budget

Posted February 1st, 2012 under Audioconferences, Tech Transfer. [ Comments: none ]

Irish business funding for research and university TTOs fails to give Irish start-up companies the support they need when they need it. Instead, TTOs tend to take large chunks of company equity in exchange for funding — exactly when the companies are most vulnerable — or drown them in bureaucracy, according to University College Dublin (UCD) School of Business lecturer and researcher Rory O’Shea. New models of operation could free up stale university IP and rejuvenate how research is conducted and transferred into companies both inside and outside the university, he says.

O’Shea is co-editing a book of essays on these topics, entitled Building Technology Transfer within Research Universities, scheduled for release this year by Cambridge University Press. “We’re still not obtaining any Irish high-performance companies despite the efforts of funding research and technology transfer through organizations such as Science Foundation Ireland,” he says. “Most are lifestyle companies, add-on consulting companies, rather than high impact companies.”

A critical problem is that Irish university TTOs are “largely pursuing a ‘revenue maximus’ approach — what’s the best return for the university for every deal we can do — rather than turning it around and asking, what can we do to disseminate knowledge into the local community?” Most of the IP developed inside of universities will never be utilized for university-centered spinouts but could be used productively by entrepreneurs and companies outside the university structure, he argues. He sees this is a more natural role for universities already funded by taxpayers, as it would put community-funded research back into the community to create jobs.

Another problem is that prospective researcher-entrepreneurs are disillusioned by the structure in place in TTOs, he asserts. “The transaction costs of engaging with TTOs [are] seen as a disincentive and often are onerous for entrepreneurs and new firms,” according to O’Shea. In addition, he says Irish TTOs take 15% equity in companies, which is a “massive amount” for any company, especially by international standards.

In addition, the environment that has been established to help Irish start-ups actually places additional financial stresses on them. For example, some TTOs require prospective entrepreneurs to attend a business academy at personal cost, while incubator facilities set up by the government charge pre-revenue companies to use them. As a result, many Irish companies fail to successfully cross over the so-called Valley of Death, O’Shea says. “We are arguing in the book that universities should take an entrepreneurial approach to commercializing IP, rather than a bureaucratic approach,” he says.

Source: The Irish Times

Posted February 1st, 2012 under Tech Transfer. [ Comments: none ]

As just about everyone should know by now, the seeds of what grew into Facebook were planted at Harvard. Might a bunch of mini-Zucks be lurking in the dorms of Cambridge? If so, a new venture capital firm — the first housed on the Harvard campus — wants to find them.

Dubbed The Experiment Fund, the firm describes itself as “a bridge between America’s oldest universities and storied venture capital firms.” Backed by New Enterprise Associates (NEA), the firm is comprised of Hugo Van Vurren, NEA co-head Patrick Chung, and NEA General Partner Harry Weller — all of whom have a degree of some form from Harvard.

Although the fund shares its headquarters with Harvard’s School Of Engineering and Applied Sciences, it operates with complete independence from the university. Moreover, fund leaders say they’re open to anyone, “regardless of university affiliation, nationality, age, or prior experience.” Being a Harvard student (or at least a Cambridge local) probably won’t hurt, though. The founders say they’re not setting a cap on the size of the fund. They expect to seed several companies with up to $250,000 each over the next two years.

Source: TechCrunch

Posted February 1st, 2012 under Tech Transfer. [ Comments: none ]

In this just released 2012 edition of BioWorld Biotechnology and Medical Device VC Directory, you’ll have crucial data and intelligence on the world of venture capital focused on the life sciences. The essential information found in the international BioWorld Biotechnology and Medical Device VC Directory 2012 is broken out in profiles and indexes that arrange the 543 pages of data by:

• Company location
• Investment portfolios
• Companies invested in
• Areas of focus
• Primary contact personnel
• Funding areas/indications
• Stages funded
• Total dollars under management

Having easy access to this critical data can mean the difference between getting the funding you need to advance your start-up or develop your technology and seeing it die on the vine from lack of resources. With the new BioWorld Biotechnology and Medical Device VC Directory 2012, you’ll have access to the information you need — covering VCs in the U.S., Canada, Europe, and Asia — so you can find the right financial partner and keep your company on solid ground. For more details and to order, CLICK HERE.

Posted February 1st, 2012 under Tech Transfer. [ Comments: none ]

Michigan State University has licensed a suite of technologies to detect a broad range of pathogens and toxins to Michigan-based start-up nanoRETE. The company was launched by Michigan Accelerator Fund I (MAF-1), an investment partnership focused on Michigan-based early stage life science and technology companies.

NanoRETE will develop and commercialize a simple, inexpensive, portable field test to detect pathogens and toxins such as E. coli, Salmonella, anthrax, tuberculosis, shiga, and STX, providing real-time detection using proprietary nanoparticle biosensors.

Outbreaks of Listeria-infected cantaloupe in Colorado and E. coli-contaminated bean sprouts in Germany are just two recent incidents that have made big headlines. These biohazards cannot currently be field-tested because pathogens typically must be cultured and developed in a lab, away from the hazard source. This weakness means that pathogens can be confirmed only after the fact — often days after the infected food has been consumed. In contrast, nanoRETE’s X-Mark solution utilizes a handheld biosensor to test for multiple pathogens or toxins on site, in real time, representing a significant leap forward in detection and diagnostic technology.

The technology uses novel nanoparticles with magnetic, polymeric, and electrical properties that were invented by Evangelyn Alocilja, MSU professor of biosystems and agricultural engineering and chief scientific officer of nanoRETE. “Our unique preparation, extraction, and detection protocol enables the entire process to be conducted in the field, without significant training,” Alocilja says. “Results are generated in about an hour from receipt of sample to final readout, quickly identifying contaminants so that proper and prompt actions can be taken.” The new technology also provides results at only a fraction of the cost of the closest currently available competing technology.

Source: CBS Detroit

Posted February 1st, 2012 under Tech Transfer. [ Comments: none ]

University of Illinois at Urbana-Champaign (UIUC) spinout Vanquish Oncology, Inc. is focused on targeting molecular defects in specific cancer cells to create personalized oncology therapeutics for unmet or underserved cancer markets. The company is focusing on small molecule compounds developed by Paul Hergenrother, professor in UIUC’s department of chemistry, that target cell apoptosis across multiple tumor types. Preclinical data suggest the clinical candidates are well tolerated and efficacious in rodents and canines. Additionally, the compounds exhibit synergistic effects when used in combination with common front-line anti-cancer agents.

Vanquish’s product candidate compounds target a cellular enzyme, procaspase-3, that when activated spurs a cascade of reactions that kill the cancer cell. Procaspase-3 offers an attractive target for cancer therapy because cancers often interfere with normal cell death. Many tumors — including those found in breast cancer, colon cancer, lung cancer, lymphoma, melanoma, and liver cancer — contain high levels of procaspase-3. Vanquish will develop standalone cancer therapies in addition to drugs to be used in combination with other chemotherapy drugs. The start-up was founded by IllinoisVENTURES, Level 5 Partners, and UIUC inventors.

Source:  MarketWatch

Posted February 1st, 2012 under Tech Transfer. [ Comments: none ]

An Oxford University spinout, Oxford Cancer Biomarkers Ltd. (OCB), is set to develop technology to ensure that only those patients who are likely to benefit from anti-cancer drugs will receive them and to identify the best treatment for each person. Isis Innovation, the university’s tech transfer company, licensed the CancerNav biomarker technology to OCB and took an equity stake in the new firm.

OCB’s founding scientists are Nick La Thangue, professor of cancer biology in Oxford’s department of oncology, and David Kerr, professor of cancer medicine. The company has attracted a £3m investment from global biopharmaceutical services company Quintiles as part of a strategic alliance that will enable OCB to establish research facilities in Oxford to develop a range of predictive biomarkers, the first of which were developed at Oxford by the company founders.

“For the average cancer drug, usually a small proportion of patients respond, and the vast majority do not,” La Thangue explains. “A small number also become very sick because of the side effects of the drug. Our technology will not only benefit those patients who respond, but we can also avoid treating people with drugs that we know will make them sick.”

Source:  Medical Xpress

Posted February 1st, 2012 under Tech Transfer. [ Comments: none ]

Cancer Research Technology (CRT), the commercial arm of Cancer Research UK, launched the spinout Acublate Ltd., to develop a next-generation high-intensity focused ultrasound (HIFU) surgical device to treat a range of solid tumors. HIFU is a highly precise, noninvasive type of surgery that uses ultrasound energy to heat and destroy tumors while leaving surrounding healthy tissue intact. The treatment works with immediate benefit and has the potential to reduce side effects compared with current alternative treatments. 

The Acublate device uses an advanced phased-array system, targeting multiple points in the tumor simultaneously. The system can be steered rapidly in 3D to target and destroy tumors. Initially, the Acublate device will treat patients with bowel cancer that has spread to the liver, but the technology has the potential to treat a range of cancers. The device is expected to significantly reduce HIFU treatment times and become a more effective and cheaper alternative to currently available HIFU therapies.

CRT and other investors raised £145,000 to develop the clinical prototype, which is expected to be ready within a year. CRT, which owns the IP to the technology, is Acublate’s major equity holder and will benefit from any future license income.

Source: Cancer Research UK

Posted February 1st, 2012 under Tech Transfer. [ Comments: none ]

Fuentek LLC founder and president Laura Schoppe writes on the company’s blog about the inclusion of the “free agency” concept in Section 7 of the Moran-Warner Startup Act. This idea, originally proposed by the Kauffman Foundation, allows professors to choose their own agents to help transfer their technology rather than being tied to their home university’s TTO. (See previous eNews items here and here.) Before such a plan can be implemented, key questions must be addressed, she says.

First, “free” in the legislation’s context refers to the freedom for faculty inventors to choose the tech transfer professionals who help commercialize their technology — not to the absence of cost, Schoppe points out. In considering those costs, she notes that a U.S. patent, alone, costs about $20,000 to $25,000, mostly in attorney’s fees. “Who will pay those fees?” Schoppe asks. “The innovators? Their home university? The ‘free agency’?”

Perhaps the “free agency” would work on carried interest, covering the up-front costs of patenting and marketing in exchange for future royalties, Schoppe suggests. But this prospect raises additional questions. How will the “free agency” select technologies and determine how many resources to commit? Won’t that decision be based on speed to the fastest profit? What if this decision doesn’t match up with long-term economic development goals or the university’s strategic goals for seeking future research funding? Whose portion of the royalties will pay the “free agency” fee: the innovator’s, the home university’s, or both? All three parties would need to enter a contract to make the agreement binding, because innovators usually do not have direct authority over their IP, which is owned by their home university as part of their employment contract, Schoppe points out.

If the “free agency” is another university, will that institution commit resources to an outside innovation over its home technologies? she asks. Won’t universities favor their home technologies, where they retain more of the royalty revenue and need to build relationships with their own faculty? If the “free agency” is a consultant paid on the basis of time and materials, how would those services be retained and paid?

“TTOs are concerned that the implementation questions have been ignored and, thus, policymakers have not fully appreciated the ramifications of such a program, which may end up creating new problems and not solving the original issue of speed to market,” Schoppe concludes.

Source: Fuentek Blog

Posted February 1st, 2012 under Tech Transfer. [ Comments: none ]

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