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Tech Transfer
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In this issue:
Joint
research, separate license agreements lead to patent litigation
A patent
case involving the University of Pittsburgh and the University of California-Los
Angeles (UCLA) holds some frightening lessons for TTOs on the importance
of drafting clearly defined agreements covering what happens when joint
research with other universities turns into commercially viable IP. Last
month, the U.S. District Court for the Central District of California ruled
after a three-year legal battle that only a pair of researchers from Pitt
were inventors on a patent that had originally included four co-inventors
from the University of California-Los Angeles (UCLA). The patent relates
to stem cells isolated from adipose tissue, which in vivo tests have shown
can differentiate into many different tissue types. These properties make
the cells potentially useful for a wide variety of medical applications,
particularly for cosmetic applications, soft-tissue and organ regeneration,
and drug screening. Pitt and UCLA had each signed separate exclusive licensing
deals for the patented technology -- with Sunnyvale, CA-based Artecel and
San Diego-based Cytori Therapeutics, respectively. When the court ruled
June 9 that Pitt researchers were the sole and rightful inventors, UCLA
and Cytori lost all patent rights.
With the inventorship issue settled, the dispute may now shift to how broadly
the patent protection extends. Cytori says the court's decision on the so-called
"231" patent does not impact its primary ongoing business because
its products do not rely on the 231 patent. The company claims that its
flagship product, the Celution System, processes adipose tissue to obtain
“a diverse and mixed population of cells,” whereas the 231 patent
“covers a narrowly defined population of adipose-derived adult stem
cells in an environment substantially free of other cellular materials found
in adipose tissue.” But according to Linda Powers, chair of Artecel’s
board of directors, that distinction may become another matter for the courts
to decide. She says Cytori's definition is much narrower than her company's
interpretation and does not reflect the patent's scope. “Any stem
cell that you work with has been taken out of the tissue that it came from,”
Powers noted. She hinted that an infringement suit may be in the offing,
stating, "anybody … that makes use of the stem cells that are
taken out of adipose tissue is affected by this decision." Go to: GenomeWeb
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Univ.
of Minnesota creates incubator for inventions
Health care organizations
looking to bolster their tech transfer efforts may want to study the University
of Minnesota's strategy, which culminated this last week with the opening
of a new $400,000 Medical Devices Center. The center will be a hub for faculty,
students, and companies looking to translate high-concept research into
revenues, jobs, and businesses. It addresses what some see as one of the
most glaring problems at the university. Despite a world-class medical school
that pioneered open heart surgery and developed the battery-powered pacemaker,
little of its medical technology in recent years has successfully made its
way into the market. "A lot of inventions take place at the [university]
but don't go anywhere," said Gerry Timm, an associate director for
external relations at the school's Institute for Engineering and Medicine.
Part of the problem is that the school's enormous size makes collaboration
difficult, said Art Erdman, a mechanical engineering professor and director
of the Medical Devices Center. "I see so much talent, but how do you
bring all of these people together?" Erdman said. The new center will
put students and faculty from various programs such as the medical school
and electrical engineering under one roof, he noted. For instance, engineering
students at the center can watch live surgeries performed at the medical
school on a high-definition monitor. By observing the operation in 3D, the
students can design better instruments by knowing how such tools interact
with the human body. The center is also launching a one-year fellowship
program that will pair postgraduate engineering students with industry veterans
and doctors to develop and test medical devices. Erdman says the center
will partner closely with the school's Office of Technology Commercialization
to see whether the inventions can be licensed or spun off. "I think
[that office] will play a critical role," Erdman said. "They need
to be fed [a continuing supply of innovations]." Go to: Star
Tribune
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How
your small TTO can produce big results
Small tech transfer offices
can produce big-time results. But with often-meager budgets and
few staff -- yet high expectations from administrators -- it takes a special
breed of professional and a different set of strategies and skills to pull
it off. That's why we've designed an audioconference event just for small
TTOs. And we've lined up two of the most accomplished small TTO executives
-- who've produced results that many larger schools envy. Now you can learn
from their successes and take your tech transfer office to new heights,
despite the many challenges you face. Join us on Wednesday, July 23rd, for
an event focused on the unique difficulties (and their solutions) -- as
well as the tremendous opportunities -- of running a small TTO: "Strategies
for small tech transfer offices: Doing more with less." For
full faculty and program details, CLICK
HERE. P.S.
Yes your larger TTO is also welcome to attend, if you wish to pick up
some small-office tactics.
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Massachusetts
keeps top spot, California slips in technology index
Massachusetts maintained
its stature as the top spot as the leading U.S. state for mining economic
growth from technology and science while California lost ground, according
to a study released Thursday. The report by the Milken Institute has ranked
Massachusetts as the top U.S. technology incubator all three times it
has been compiled since 2002. But California, despite its Silicon Valley
and a worldwide reputation as a hotbed of innovation, slipped from second
place to fourth. The rankings are based on factors such as entrepreneurial
environment, population of tech-savvy workers, and government support
of education and other programs aimed at stimulating high-tech growth.
Maryland moved into the second spot, while Colorado held on to third,
where it stood the last time the study was conducted in 2004. Washington,
the home state of Microsoft Corp., rounded out the top five. California's
high-tech stature is declining, according to the report, largely because
its ability to educate and retain future computer engineers and scientists
is slipping. The state ranked 13th in the Milken Institute's "human
capital investment" category, which was led by Maryland. "This
should be seen as a red flag" for California, said Ross DeVol, the
Milken Institute's director of regional economics. Go to: Los
Angeles Times. For the full report, go to: The
Miliken Institute
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Innovation
of the Week: Detecting trace metals using hair samples
A researcher at the
Norwegian University of Science and Technology (NTNU) has developed a
diagnostic tool that uses hair to test for trace metals and other elements
in the body, and says the technique could be used in place of blood tests.
Kristin Gellein, a PhD student at NTNU, developed the new analytical method,
which requires just one centimeter of a single hair to sift out and quantify
up levels of up to 30 different trace metals. The substances found in
hair mirror the substances found in the blood. And because hair grows
at a rate of about a centimeter per month, the system enables a retrospective
blood analysis by testing hair centimeter by centimeter. A single strand
of hair becomes a kind of time machine that can be used to track trace
an individual's history of trace metal exposure. The measurement technique
has potential application in occupational health and safety monitoring
and forensic medicine, and also may help researchers link environmental
factors and illness, according to Tore Syversen, a professor in the Department
of Neuroscience at NTNU’s Faculty of Medicine. Neurologists have
long suspected that there might be a connection between trace metals and
neurological diseases such as multiple sclerosis, amyotrophic lateral
sclerosis and Parkinson’s and Alzheimer’s diseases. Go to:
Science
Business
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Entrepreneur
to take the helm at U of Washington's TTO
The University of
Washington has become the latest school to bring in an entrepreneur to
head its tech transfer activity. The appointment of Linden Rhoads as vice
provost of the UW TechTransfer, the university's tech transfer unit, may
signal a shift in how the state's largest public university goes about
commercializing its cutting-edge research. Unlike her predecessors, Rhoads
does not come from the academic ranks. And she is the first true entrepreneur
to lead the office, which over the past 26 years has helped create more
than 235 companies but has also garnered in some quarters a reputation
for being bureaucratic and combative in dealing with potential licensees.
In an interview posted on the Seattle Post-Intelligencer's web site, Rhoads
offered some interesting comments on her perception of UW's tech transfer
shortcomings and her plans for addressing them. Here are a few excerpts:
Question:
There has always been some criticism about how tech transfer is handled
at the UW. Are you aware of that perception and how are you going to
change it?
Answer: "I experienced it first hand on the other side
when I was trying to complete a license deal. Tech transfer [offices]
sometimes have a reputation as being obstructionist. What we want to
do is make the University of Washington one of the best universities
to do business with in the nation. And we are not going to rest until
we do that."
Question: What have been the limitations in the past? Why hasn't
more research been spun out of the UW?
Answer: "I think it would be maybe in terms of the experience
of interacting with the office of technology transfer…. Particularly
with a startup ... you are running to market and time is of the essence
and you have a limited window. You really need this unit to be responsive.
And ‘responsive’ means a very different thing to entrepreneurs
and early stage venture capitalists than it historically does to university
personnel. So that is one of my challenges, to help them understand
exactly what it means for us to be responsive and understand that we
have to help these companies to operate on startup time."
Question: What does your appointment mean for the direction
of the TechTransfer unit?
Answer: "Obviously the university decided it was time
to go with someone who had experience with entrepreneurship as well
as a focus on intellectual property law. But I think that is a brave
departure, and it shows that they are really thinking a little bit outside
the box and are really dedicated to creating a new climate."
Go to: Seattle
Post-Intelligencer
Top
UNC-Chapel
Hill researcher wins $500K Lemelson-MIT Prize
Dr. Joseph M. DeSimone,
a University of North Carolina at Chapel chemist and polymer expert with
a prolific record of bringing his innovations from the lab to the marketplace,
has won the prestigious Lemelson-MIT Prize. Dr. Robert S. Langer, the
MIT professor who nominated DeSimone for the $500,000 prize, called him
“one of the most inventive researchers in all of science.”
Among his most recent innovations, DeSimone blended polymerization methods
with supercritical fluid extraction, yielding a breakthrough in “green”
or environmentally sustainable manufacturing. He invented a process in
which supercritical carbon dioxide -- CO2 that has gas and liquid properties
-- can replace the environmentally persistent material perfluorooctanoic
acid in the production of high-performance plastics known as fluoropolymers.
The "greener" process is used to produce a material used in
wire and cable insulation and jackets, flexible tubing, and industrial
films. Dupont has licensed the process. Nandan S. Rao, Dupont's Global
Technology Director, said DeSimone's technologies “are truly revolutionary
and represent dramatic departures from what others have pursued.”
Another big commercial winner in his portfolio is a bioabsorbable, polymer-based
stent. Guidant, now part of Abbott, purchased the technology -- the first
of its kind to enter clinical trials, which are now under way. DeSimone
and his team have now turned their attention to using fabrication processes
from the microelectronics industry to create nanocarriers in medicine.
His PRINT® (Particle Replication in Non-wetting Templates) technology
can, for the first time, manufacture highly customizable and controllable
nanobiomaterials for the diagnosis and treatment of disease, with promising
applications in biotechnology and pharmaceuticals. His start-up, Liquida
Technologies, is working on commercializing the technology. In DeSimone's
own words, his career and success in translating research into commercial
products hold an important lesson for other scientists: “You can
do all the innovating you want in the laboratory, but if you can’t
get it out of the university walls you do no one any good.” Go to:
PR
inside and WRAL
LocalTechWire
Top
Ohio universities
get grant for bioterrorism product
Northeastern Ohio Universities
Colleges of Medicine and Pharmacy (NEOUCOM) and Kent State University
have been awarded $6.7 million for the continued development and commercialization
of a real-time pathogen detection instrument designed to combat bioterrorism.
The collaborating schools have already licensed the patented technology
to Boulder, CO-based Pathogen Systems Inc., which is locating its manufacturing,
sales, and marketing operations in northeast Ohio. The grant -- $3 million
of which comes from the Ohio Department of Development with the remainder
from other sources -- will be used to further develop the technology for
commercial use by establishing an applied research laboratory at NEOUCOM
and creating a manufacturing facility in Kent State’s Centennial
Research Park. Go to: Vindy
Top
UTEK completes
another deal
UTEK Corporation, an
innovation services company whose business model involves acquiring technologies
and forming companies around them to later sell, has completed another
deal. The Tampa-based firm announced that CSMG Technologies, Inc. acquired
Carbon Capture Technologies, Inc. (CCT), a wholly owned subsidiary of
UTEK, in a stock transaction. UTEK had previously formed the company based
on technology developed by University of Ottawa researchers. CCT holds
a worldwide exclusive license to its key innovation, recyclable CO2 adsorbents
based on surface-modified nanoporous silicas. The materials show high
adsorption capacity that is both fast and reversible, allowing it to be
reused repeatedly in a high throughput periodic cyclic adsorption process.
The adsorbents can be used in both wet and dry environments, potentially
eliminating significant engineering challenges. Potential uses include
capturing the bulk of CO2 emissions from coal-fired power plants to reduce
greenhouse gases, as well as surgical and mine rescue applications. The
UTEK model typically involves creating companies that serve as commercialization
vehicles for universities or other patent holders, and in which UTEK takes
a minority share. Go to: Yahoo
Business
Top
Incentives
pose tricky challenges but may bring TTOs big rewards
Would the number and
value of deals completed by tech transfer offices increase if their staffs
received economic incentives or success fees tied to every license agreement
completed? Possibly. But even TTO directors who agree that incentives
are a good idea stress that implementing a successful commission system
or incentive-based program is complicated. “Managing it is a laborious
job because you’ve got to be constantly managing peoples’
behavior, so it is not for the faint of heart,” stresses Jonathan
Soderstrom, PhD, managing director in Yale University’s Office of
Cooperative Research and president of AUTM. Soderstrom speaks from experience
-- he implemented an incentive-based compensation plan at Yale beginning
in 2000, but it was designed to reward a number of desired activities,
not just sales and revenues. In fact, the program set up at Yale is continuously
adjusted, depending on the goals set by the TTO and the university for
the coming year. “You look at a lot of indirect impacts that have
nothing to do with the amount of royalties you generate,” adds Soderstrom,
although he stresses that the program is also designed to nurture the
kind of high-quality deals that will ultimately benefit Yale the most.
But the incentive system also has been carefully structured to avoid turning
TTO staff into what amounts to glorified sales reps looking to score quick
bucks. Though short-term revenues may increase in a purely dollars-based
plan, the university’s long-term rewards could be seriously compromised,
he maintains. “If what you are incentivizing is royalties, then
people are going to go for as much money as possible up front and forgo
later-stage [income]. But the big money is to be made in the royalties
downstream if you are successful in actually getting a product on the
market. So I don’t want to incentivize people to try to maximize
near-term revenues --that’s crazy,” he says. “I want
to incentivize people to take the time necessary to get an important deal
done or a big, complex deal that requires a high degree of intellectual
content.” The details of the Yale incentive scheme, along with advice
on bonus plans from several other experts, are featured in the July issue
of Technology Transfer Tactics. For subscription information,
CLICK
HERE.
Top
Big tech transfer
moves at Malaysian university
Based on a series of
corporate agreements announced last week, Universiti Sains Malaysia may
be a school to watch in the Pacific Rim. USM signed eight agreements in
conjunction with the launch of the school's Science and Arts Innovation
Space in a bid to stem the country's brain drain, boost local innovation,
and attract international collaboration. The agreements are in a variety
of technology areas including nanotech, biotech, "green" technologies,
and construction materials. The university signed MOUs with the Malaysian
Technology Development Corporation (MTDC) to fund and incubate selected
technologies, and separate MOUs with national and international firms
for each individual project. Go to: Research
SEA
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