The Supreme Court unanimously held that claims directed to the relationship between the concentrations of blood metabolites and response to a therapeutic drug in two patents owned by Prometheus Laboratories, Inc. were unpatentable, stating that they “effectively claim the underlying laws of nature themselves.” This landmark ruling not only reversed the Federal Circuit’s decision, it also vacated the Fed Circuit’s decision in the Myriad gene patents case, sending it back for reconsideration based on the guidance offered in the Mayo ruling.

This decision directly affects how universities approach patent decision making for diagnostic method patents, and will almost certainly impact the Myriad case, as well as a whole range of method claims surrounding other technologies. To help you make sense of the complex patentability issues raised by the decision, and to guide you in drafting future claims, we’ve scheduled a critical webinar TOMORROW, Thursday, May 3: In-Depth Analysis of Mayo v. Prometheus: What it Means for the Future of Medical Diagnostic Patents, featuring Kevin E. Noonan, PhD, author of the PatentDocs blog and a partner with McDonnell Boehnen Hulbert & Berghoff LLP. For complete details and to register, CLICK HERE.

ALSO COMING SOON:

• Tuesday, May 15: Disclosure Assessment and Triage: “An Innovative Model for Patent Decision Making”
• Thursday, May 24: Create a New Revenue Stream by Supporting On-Campus App Developers

Posted May 2nd, 2012 under Audioconferences, Tech Transfer. [ Comments: none ]

Bob Miller, the top tech transfer official at Case Western Reserve University, was recently made the school’s vice president of research and technology management. Compared to the previous VP Mark Coticchia, who compiled an exemplary record focusing on the business end of things, Miller plans to take a more prominent role in accelerating research collaborations across Case’s separate schools, such as engineering and medicine.

“I stretch Mark’s job back into the research component,” says Miller, “where Mark largely let that run itself.” Miller also plans to make collaborations with private companies a priority, both to commercialize university technology and to seek funding for university research. “We have been perceived,” Miller says of Case, “as a little rigid in our policies, and a little bit rigid in our expectations in terms of engagement with corporate partners and the value of our [intellectual property].

“One of my strategic goals in the coming years,” says Miller, “is to make Case a very attractive place for our partners to work with.”

For context, Case’s 2010 licensing income of $14.3 million placed it a little outside of the top 20 research universities in the nation; in 2011, its income dropped 49% due to patent expirations.

“We want more disclosures, and that requires us to communicate more effectively with faculty,” says Miller. “Not all of them recognize the value of commercializing their innovations. We need to do a better job of convincing and showing faculty the benefit of that.

He adds:  “One thing I’m trying to do is get the message out that we’re taking a much more flexible approach to business partnerships. I hear people say we’re too difficult to work with, we’re not willing to negotiate. I’ll negotiate,” Miller concludes, “and I’ll get it done fast.”

Source: MedCity News

Posted May 2nd, 2012 under Tech Transfer. [ Comments: none ]

Most, but definitely not all, university technology transfer offices have apparently learned — and implemented — the key lesson from Stanford University v. Roche Molecular Systems: Require faculty and staff assign the rights to their inventions when you hire them, and make sure the language does not promise to assign a future invention, but is phrased to make clear that all inventions are assigned in the present tense. And once that ownership promise is in place, make sure potential inventors are aware of the stakes when they sign outside agreements with private companies, and double check on the existence of such agreements when you attempt to secure a license down the road.

Along with the assignment issue, the landmark case put the spotlight on the potential for trouble when faculty enter into agreements with industry regarding research, but don’t take their obligations to the university into account, or don’t understand those obligations. In response, many TTOs have heeded the recommendation voiced by Michael A. Gollin Esq., a partner at Washington, DC’s Venable LLP: “Advise faculty, students and staff that before they sign industry agreements, they should review university policies on intellectual property assignments and conflict of interest, and they should contact the TTO if they have any questions.”

To prepare for due diligence by existing and new licensees regarding chain of title for both older and newer inventions, he adds, universities should, “for licensed technologies, check if there’s any indication in the record that a faculty inventor has an industry research contract and, if so, ask for details about obligations that may conflict with the university’s claim of title.”

But the big one, confirms Janna C. Tom, associate director for research policy analysis and coordination in the Office of Research and Graduate Studies at the University of California, is making sure to “include a present assignment of invention and patent rights in employment agreements, if you have not yet done so.” Before the groundbreaking case, in fact, only about one in five schools used that type of “I hereby assign” language, according to survey data from the Association of University Technology Managers presented by Gollin, Tom and colleagues at the organization’s recent annual meeting in Anaheim. At the time, a majority of schools used so-called “future assignment” language — stated more like “I agree to assign.” In fact, about a quarter of universities prior to Stanford v. Roche didn’t have specific assignment language that inventors were required to agree to; rather, many relied on overall university policy to make sure ownership stayed on campus.

Indeed, Gollin says one of the big surprises from the survey is how many institutions apparently still don’t get it. “A lot still use a passive form of assignment like, ‘the university shall own,’ instead of an assignment obligation,” he reports. “And a surprisingly significant number of respondents still don’t plan to change.” A detailed article on assuring IP rights in the wake of Stanford v. Roche appears in the April issue of Technology Transfer Tactics. To subscribe and access the full article, along with a five-year archive of best practices and case studies for TTOs, CLICK HERE. 

Posted May 2nd, 2012 under Tech Transfer. [ Comments: none ]

The University of Minnesota and South Dakota start-up Heat Mining Co. recently struck a licensing deal over a UM innovation that could potentially, and for the first time, turn fossil fuels green.

The new technology, which UM has trademarked as CO2 Plume Geothermal, creates electric power by capturing carbon dioxide, a major greenhouse gas, and injecting it deep underground to tap geothermal energy. If successfully integrated, the invention could seriously offset the high cost of capturing CO2 in a coal-fired plant.

“That was always the problem,” says Martin Saar, an earth sciences professor at UM. “The extra cost of adding carbon capture and sequestration to a plant was so high that it was prohibitive. [CO2  Plume Geothermal] potentially turns a fossil fuel plant into a clean power plant,” Saar adds, calling the technology a possible “game-changer.”

Though the idea of capturing carbon dioxide before it reaches the atmosphere isn’t new, most plans call for the fossil fuel to be nearly extinguished upon injecting it underground.

UM’s technology, however, pumps the carbon dioxide into ultra-deep saline aquifers, where high heat and pressure put the fuel in a super-critical stage so that it becomes dense like a liquid, but remains porous as a gas. That gas is eventually siphoned from the rocks above the saline aquifer, then sent through turbines to become electricity.

Heat Mining calculates that the carbon dioxide emissions from a typical 500-megawatt coal power plant could be utilized by the technology to turn a small turbine and generate 25 megawatts of power.  While company officials admit that’s not much power, they say that with more CO2 wells and compact units added to the system, there could be thousands of megawatts of extra power produced after a couple decades.

“This is an absolutely novel approach,” says company founder Ken Carpenter, “which is why the patents were filed for this technology.” Carpenter also notes that by using enough of this technology, coal and natural gas-fired power plants could become carbon neutral or even carbon negative over time.

Heat Mining and UM also plan to market the technology as a cheaper alternative to the similar technologies oil companies in West Texas use to recover trapped oil. Another idea is to use the technology as a kind of underground battery to combat the problem of intermittent power loss from sustainable sources like wind or solar farms.

Source: TwinCities.com

Posted May 2nd, 2012 under Tech Transfer. [ Comments: none ]

On April 18th in Atlanta, the Global Center for Medical Innovation (GCMI) officially opened, with the goal of accelerating the commercialization of medical device technology. In the words of GCMI Executive Director H. Wayne Hodges, “the Center has the equipment, clean room facilities, engineering expertise and partner network needed to help bring ideas from concept to market.”

The new facility unites core members of the medical device community — universities, clinics, research centers, investors, established device and pharmaceutical companies, as well as startups — with the goal of sparking tech transfer in the field of innovative clinical technology.

Matt S. Eskrine, the acting U.S. Assistant Secretary for Economic Development, flew in from D.C. and spoke to the large crowd gathered for the Center’s opening. Eskrine pointed to the GCMI as an example of the type of successful partnerships between public and private groups that generate jobs and a strong return on investment. “We have had to rethink economic development,” he says. “There is a new economic reality, and communities can’t thrive by returning to the status quo. We have to find new ways to create jobs, and that growth is coming from entrepreneurs.”

According to Eskrine, the federal economic development officials are convinced “that supporting regional resources like GCMI offers the best return on investment by driving innovation and increasing exports.”

General Manager of GCMI Doug Schumer, PhD, adds that “the greatest thing GCMI will do is to help bring to life devices that otherwise might never see the light of day. There are many doctors out there with good ideas but who don’t know how to bring that idea to commercial fruition. GCMI will be able to help.”

Source: MarketWatch

Posted May 2nd, 2012 under Tech Transfer. [ Comments: none ]

Martin Zwilling, CEO and founder of the consulting firm Startup Professionals, recently posted an article on the company’s blog about the difficulty of deciding how to split the equity among co-founders during the early start-up stages. “The easy answer of splitting it equally,” says Zwilling, “is usually the worst possible answer, and often results in a larger start-up failure due to an obvious inequity.”

Zwilling also points to a “common ‘failure to start’ situation” where the co-founder who conceived the initial idea or technology insists that the idea is 90% of the company’s value. In reality, says Zwilling, the “idea” is a miniscule part of the big picture, while execution of the idea is the most critical success factor.

Keeping that in mind, Zwilling offers five “dominant variables,” or individual contributions that he believes should determine who gets what share.

1. Experience running a start-up business. No company will achieve lift off without a solid business plan, a good rapport with investors, and the ability to make a lot out of a little. These, suggests Zwilling, are indispensable traits.
2. Domain expertise and connections. “If you are recognized as an expert in the business area of your start-up, with a good reputation, and you know all the key vendors and customers,” writes Zwilling, “your value is huge.” Founders must remember that simply designing a product doesn’t get it to the market, Zwilling emphasizes.
3. Pre-existing intellectual property. This “great value,” Zwilling writes, belongs to those partners who started early, bringing existing patents, trademarks, copyrights, trade secrets — any “important completed piece of work” — to the table.
4. Sacrifice and time commitment. Here Zwilling points out an obvious but crucial criterion when considering a co-founder’s value: are they fully committed, or just part-time? This is an especially important question when there’s a risk involved — then, he suggests, you’ll know who is truly valuable.
5. Funding. Serving as the main funding source in a start-up, Zwilling writes, “usually trumps all the items above in demanding some equity.” Considering the decision making and sheer commitment involved in providing major funding, Zwilling recommends entrusting at least 50% of the equity to these partners.

He also cites the distribution of equity as a good point in which to introduce outside help, such as legal counsel, start-up advisors and potential investors. On top of providing experience, such sources offer “an unbiased view that the entire team can trust,” Zwilling writes. In addition, Zwilling advises co-founders never to dodge the discussion of equity up front, nor should they come to a rushed decision. If you can’t come to an agreement in a timely fashion, he says, it probably wasn’t meant to be anyway. “Start-up decisions only get harder later,” Zwilling writes, “not easier.”

“Even still,” he says, “regardless of the initial equity split, you should seriously consider vesting your founders shares over at least two years. This means they will be metered out month-by-month, and a partner who changes his mind or defects early will not walk away with half the company.”

Zwilling concludes: “All partners should never forget that their allocated shares are only the beginning and will be diluted proportionately when outside funding is later required from angels or venture capitalists. Investors will be quick to remind you that a small percentage of something is worth more than 100% of nothing. The same logic applies to splitting equity with co-founders.”

Source: Startup Professionals Musings

Posted May 2nd, 2012 under Tech Transfer. [ Comments: none ]

Start-Up Boot Camp for University TTO Professionals and Inventors, featuring six sessions filled with nine hours of best practices from 11 world-class start-up experts, is available as a complete DVD library. Among the featured faculty are the top execs from the University of Utah TTO, which ranks #1 in academic start-up formation. From early decision-making to exit strategies and each milestone along the way, the series is carefully crafted to provide the detailed guidance and advice needed to take academic start-ups beyond survival and ultimately to a liquidity event. The DVD library makes it easy and convenient to share with your entire staff and faculty, and E-News readers receive a 50% discount off the regular price. CLICK HERE for complete agenda and faculty details, and to order.

Posted May 2nd, 2012 under Audioconferences, Tech Transfer. [ Comments: none ]

The start-up Ground Fluor Pharmaceuticals Inc., has signed a license agreement with the University of Nebraska-Lincoln (UNL) that aims to improve medical imaging. The start-up is working with the university’s non-profit tech transfer arm NUTech Ventures.

“UNL and NUTech have gone out of their way to encourage entrepreneurship to make this technology available to clinical imaging centers around the country,” says inventor and UNL professor Stephen DiMagno.

The new process is basically an enhancement of positron emission tomography (PET) technology, or imaging devices capable of reflecting specific organs’ metabolic activity through the injection of radiotracers. PET scans are typically applied to patients with cancer, heart disease and neurodegenerative disorders like Parkinson’s and Alzheimer’s.

Though highly effective, PET imaging agents with short-lived radioactive isotopes lose that effectiveness after just a few hours, and therefore need to be produced rapidly and close to a hospital or imaging center where they are used.

“Our methodology allows us to create more potent imaging agents more rapidly, reliably, and in high yield. These agents were previously unknown or were very difficult to synthesize,” says DiMagno. “Ground Fluor Pharmaceuticals’ technology should boost the availability of existing experimental PET agents and support the more efficient development of new PET imaging agents.”

The new method may also expand the kinds of diseases PET scans can diagnose, which would lead to more effective treatments and better management for these illnesses while using lower doses of PET agents, thus reducing the risk of side effects as well as the costs to patients and insurance companies.

Source: UNL News Release

Posted May 2nd, 2012 under Tech Transfer. [ Comments: none ]

In 1996 at the University of Texas, professors James McGinity and Bill Williams laid down $1 million to start a company, PharmaForm LLC, and by the time they sold it in 2007 the company had 85 employees and annual revenues of more than $10 million.

Needless to say, these two academic entrepreneurs defied the odds in a big way.

McGinity later went on to score the university almost half its licensing revenue last year, or $11 million out of its $26 million total, through his patent of a technology that makes it more difficult to abuse the painkiller OxyContin by crushing and snorting it.

That patent, however, expires in 2016 — a daunting date that represents a potential cliff for UT’s tech transfer revenue. Speaking recently before the House Committee on Economic and Small Business Development, McGinity estimated that the university could have earned nine times the $11 million in annual revenue if it had created a start-up from his OxyContin patent rather than licensing the technology to Abbot Laboratories.

The House committee is currently looking for ways to encourage Texas universities to convert their research into products, companies and jobs. McGinty, along with several witnesses from the field, suggested ideas such as creating research parks with more labs, and granting tenure to faculty members based on entrepreneurship or innovation.

“Part of my concern is the failure rate,” says McGinty, who himself went into debt in creating PharmaForm. “We don’t know what the outside risk is.”

He suggested to the committee a “pre-venture capital” policy where state money from the Emerging Technology Fund is granted to support early stage, faculty-generated start-ups.

“I think there are other entrepreneurs at UT who may not go out and borrow $1 million but, with help from the Legislature, could have successful companies,” McGinty says.

Another issue brought up at the meeting is the shortage in staff at UT’s tech transfer office. As McGinty puts it, “how can five people deal with the patent applications across 100 disciplines?”

Edward Powell, CEO of the Autsin-based company IPX, suggested the Legislature instill financial incentives for the tech transfer officials who decide which patents are worth pursuing.

Source: statesman.com

Posted May 2nd, 2012 under Tech Transfer. [ Comments: none ]

Tech entrepreneur Kevin Systrom, whose photo-sharing iPhone app Instagram sold to Facebook for $1 billion, is a perfect model for entrepreneurship today, where founders need only take a few months to cycle through ideas for products before hitting their stride.

In her article for The Wall Street Journal, Lizette Chapman points out that in the past, entrepreneurs often took two years to create a product, hire a staff and analyze the market for business strategy. But according to Chapman, a new breed of entrepreneurs like Systrom, mostly in their 20s and 30s, strategically “pivot,” or try out new ideas, shed them quickly if they don’t catch on, and move on to the next concept.

That most of these entrepreneurs work in the mobile and web sectors also means they can tinker with their technologies quickly and cheaply, Chapman points out. What’s ironic, she says, is that the term “pivot” has been used around Silicon Valley for years — mostly to describe failing gracefully. But some investors say these new founders making quick turns based on market feedback and other information are generally more experienced, less fearful of risk, and often more profitable than past generations of tech entrepreneurs. By making mistakes, investors say, the young entrepreneurs gain knowledge and wisdom that increase their chances of succeeding the next time around.

“You pivot as many times as you can, as fast as you can, until you run out of money,” says Evan Kuo, a 27-year-old entrepreneur from UC Berkeley.

To Tony Conrad, a partner in the early-stage venture capital firm True Ventures, pivot “is not a four-letter word.” Rather, he says, “It represents some of the best methodology that the Valley has invented. Starting something, determining it’s not working, and then leveraging aspects of [that] technology is extremely powerful.”

Another case in point is Mike Ouye, who worked at three start-ups before launching his first product, a mobile social-gaming app, through his company Red Robot Labs. Though the app wasn’t even halfway completed and he was dissatisfied with it, Ouye says he went ahead because he needed feedback before seeking funding. By collecting player data and using the suggestions to touch up the product, Ouye eventually scored a $2 million seed round for Red Robot.

“I’ve learned how to apply metrics to products, iterate quickly and make decisions without overthinking it,” says Ouye, who has now raised over $10 million.

Source: WSJ.com

Posted May 2nd, 2012 under Tech Transfer. [ Comments: none ]

Many research universities around the globe have invested in and licensed technologies to Intellectual Ventures (IV) and other non-practicing entities — or patent trolls, if you prefer. Critics accuse the $5 billion firm of suppressing technological innovation and product development, using its massive patent holdings as a blockade to other innovators.

As  Jeff Hargarten of the Minnesota Daily points out, the firm charges other companies fees for utilizing the technologies owned by member organizations, and also gathers revenue from the lawsuits it wages against companies it accuses of infringing on patents from the firm’s behemoth portfolio. And despite IV’s posturing as an innovation-driven company, it has done little if any true innovating, except perhaps in its business model, the critics charge.

Melba Kurman, founder of the university consultant company Triple Helix, questions the ethics of university investment in IV’s strong-arm approach, given the mission of universities to promote the translation of research into commercial products that improve society.

According to Mike Masnick, president and CEO of technology analysis publisher Floor 64, institutions that commercialize technology are being pressured to invest in Intellectual Ventures. If they resist, he claims, they are threatened and sued for innovating. “That money,” Masnick says, “should be going towards building better products and serving the market.”

Hargarten cites a key argument against “patent trolls” that was explored in a recent Northwestern University study: not that these companies’ lawsuits are invalid, but that their position to negotiate licensing fees is greatly out of proportion to their actual contribution to products or services embodied in the patents they own. “Among the mass aggregators,” says University of California law professor Robin Feldman and co-author of a 2011 Stanford Technology Law Review paper about Intellectual Ventures, “there are almost no cases of patents turning into products, as far as we’ve been able to see. It appears to be a dead end.”

Officials at Intellectual Ventures defended their operation in a Forbes article in February.

“To hear some critics tell it,” says Kenneth Lustig, IV’s vice president and head of strategic acquisitions, “the explosion of patent suits in the smartphone industry is evidence of a patent system that is fundamentally broken, at great cost to U.S. innovation. Such histrionics, however, ignore a crucial but little known fact: throughout American history, the buying, selling and litigating of patents has always been essential to U.S. economic success.”

While there are a few schools that invest directly in Intellectual Ventures, according to Hargarten, it’s much more common for them to license or sell patents to the firm, which recently reported its involvement with over 3,000 inventors and 400 universities and companies worldwide.

Cornell University is a limited partner in one of the firm’s investment funds, said Alan Paau, executive director and vice provost for technology transfer and economic development at the school. He said the university’s relationship with Intellectual Ventures is at “mostly arm’s length.” The University of Texas invested a total of about $28 million in two Intellectual Ventures funds, according to a 2010 performance analysis from the school. It showed negative returns from each investment of 73 percent and 10 percent.

In their deal with the University of New South Wales in Australia — a “typical” deal, according to firm spokesperson Naomi Zeitlin — Intellectual Ventures sends researchers “requests for invention” (RFIs), basically asking them to invent something the firm can patent. IV has paid millions to universities for their inventions and in many cases has profit-sharing arrangements in place to provide schools with an ongoing revenue source, she said.

Masnick says that while there are tax benefits for schools licensing innovations through Intellectual Ventures, for the most part these deals are being struck because “a very large percentage of university tech transfer offices have been pretty big flops.”

The New York Times recently quoted IV president Adriane Brown saying, “Our company is challenging the status quo. Our business model is disruptive, and like any other product or service that disrupts established markets, we’ve invited our share of controversy. But we are no different from any other company working to deliver on its mission.”

According to Feldman, “what created the incentive for mass aggregators is the current patent system” and how difficult it is to discern what technological developments a patent actually covers, all of which leads to “a bargaining of epic proportions.” He claims that the rise of companies like Intellectual Ventures was an attempt to tackle these issues and create liquidity for patent holders, but that it has since moved in “a destructive direction for innovation.”

Source: Minnesota Daily

Posted April 25th, 2012 under Tech Transfer. [ Comments: none ]

Researchers and tech transfer leaders were shaken by the recent Mayo v. Prometheus decision handed down by the U.S. Supreme Court, which suggests that any research development based on a law of nature is not patentable. If the decision is interpreted broadly, an untold number of promising research projects could have no prospects for commercialization.

But is the situation that dire? Some experts, like Mark J. Nuell, PhD, a partner with the law firm of Birch Stewart Kolash Birch in San Diego, CA, say the decision could have a devastating impact on what is increasingly seen as a promising avenue of research.

“It’s a disaster as far as I can tell for the biotechnology industry as a whole,” he says. “It’s going to push development of diagnostics back to the universities and privately funded research institutes that don’t care if they sell a new product or not. They’re just interested in finding new knowledge. People operating for a profit won’t be able protect what they’re doing without falling prey to copycats.”

The decision effectively raises the bar for any patent claim derived from a natural law, Nuell says. The Court has made clear that simply adding a known technology to the natural law is not enough to make the process patentable. “If you’re going to write a diagnostic claim now, you’re into a realm where you need some sort of a new reagent for affecting that test,” he says. “Saying that you achieve the end result through polymerase chain reaction won’t pass muster. You’re going to have to show that you’re using some kind of new, super reagent in the polymerase reaction or something like that. Diagnostic claims will have to rely on a new reagent or a wholly new methodology in order to become patent-eligible subject matter.”

Commercialization efforts at research institutions will shift more to the incremental improvements in diagnostics, reagents, and analytic methods, Nuell predicts. Those could be patentable in their own right, he notes.  A detailed article on the decision’s impact appears in the April issue of Technology Transfer Tactics. To subscribe and access the full article, along with a five-year archive of best practices and success strategies for TTOs, CLICK HERE.

Posted April 25th, 2012 under Tech Transfer. [ Comments: none ]

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