Technology Transfer Tactics

Joint research, separate license agreements lead to patent litigation

David Schwartz — Wed, 02 Jul 2008 18:47:28 +0000

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

Univ. of Minnesota creates incubator for inventions

David Schwartz — Wed, 02 Jul 2008 18:46:37 +0000

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

How your small TTO can produce big results

David Schwartz — Wed, 02 Jul 2008 18:45:51 +0000

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.

Massachusetts keeps top spot, California slips in technology index

David Schwartz — Wed, 02 Jul 2008 18:44:37 +0000

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

Innovation of the Week: Detecting trace metals using hair samples

David Schwartz — Wed, 02 Jul 2008 18:43:22 +0000

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

Entrepreneur to take the helm at U of Washington’s TTO

David Schwartz — Wed, 02 Jul 2008 18:42:32 +0000

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

UNC-Chapel Hill researcher wins $500K Lemelson-MIT Prize

David Schwartz — Wed, 02 Jul 2008 18:41:45 +0000

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

Ohio universities get grant for bioterrorism product

David Schwartz — Wed, 02 Jul 2008 18:41:00 +0000

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

UTEK completes another deal

David Schwartz — Wed, 02 Jul 2008 18:40:10 +0000

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

Incentives pose tricky challenges but may bring TTOs big rewards

David Schwartz — Wed, 02 Jul 2008 18:39:12 +0000

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. Click here to subscribe and get access to all current and back issues.

Big tech transfer moves at Malaysian university

David Schwartz — Wed, 02 Jul 2008 18:36:48 +0000

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

July 2008 Issue

Leslie Norins — Tue, 01 Jul 2008 15:25:57 +0000

The following is a list of the articles that appear in the July 2008 issue of Technology Transfer Tactics monthly newsletter. Subscribe now and get access to this issue as well as access to our online archive of back issues, industry research reports, sample MTAs, legal opinions, sample forms and contracts, government documents and more!Technology Transfer Tactics,
Vol. 2, No. 7 (pp 97-112) July 2008

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? ……… p. 97
Staff turnover won’t disappear, but savvy recruitment and retention strategies can help. “Turnover is inevitable in this business,” said Todd Sherer, PhD, associate vice president and director of the Office of Technology Transfer at Atlanta’s Emory University, during a session at the AUTM annual meeting. But a combination of savvy recruitment and retention strategies can help reduce this perennial TTO problem ……… p. 97
University spins out a for-profit TTO to jump-start commercialization activity. Noetic Technologies, Inc., of Hattiesburg, MS, provides the University of Southern Mississippi with all the services an institution would expect from its TTO — and more. But please don’t call it a tech transfer “office” ……… p. 98
UT Dallas opens new office, shifts focus from ‘gatekeeper’ to ‘facilitator.’ The U of Texas at Dallas is reinventing its approach to technology transfer by establishing an office to help researchers create companies and move their inventions from the lab to the marketplace. The Office of Technology Commercialization is designed to shift the university’s role from that of IP gatekeeper to commercialization facilitator ……… p. 99
Commercializing knowledge-based IP a unique challenge. As Noetic Technologies has branched out from commercializing technology to knowledge-based IP like courseware and software, its key people have learned that these can sometimes be ‘different animals’ ……… p. 106
International Spotlight: Singapore. The island nation is buzzing with tech transfer activity ……… p. 107
Tap into alumni networks for funding, licensing opportunities. Formal alumni support networks can facilitate innovator-investor ties and generate needed cash for early-stage research. But some TTOs have found they require more maintenance than they’re worth, while others prefer a looser, less-formal approach to keeping in touch with alums ……… p. 109
Focusing too much on profit may hold peril for TTOs. Whether TTOs should be viewed as profit or cost centers is a growing source of tension in the tech transfer community. Michael Dilling, PhD, senior licensing associate in the Baylor Licensing Group at Baylor College of Medicine in Houston, echoes many in the industry when he says TTOs “should be as effective as we possibly can in getting technology with commercial potential out into the market. If we’re successful in getting those licenses done and getting that technology commercialized — and if we do a good job negotiating deals on behalf of our institutions — then the money will follow” ……… p. 111

Could strange properties of iron-based superconductors solve world’s energy crisis?

David Schwartz — Wed, 25 Jun 2008 19:28:59 +0000

Johns Hopkins University researchers and colleagues in China have unlocked some of the secrets of newly discovered iron-based high-temperature superconductors, research that could result in the design of better superconductors for use in industry, medicine, transportation and energy generation. In an article published this week in the journal Nature, the team, led by Chia-Ling Chien, director of the Hopkins Material Research Science and Engineering Center, offers insights into the stunning implications of this new family of superconductors. “It appears to us that the new iron-based superconductors disclose a new physics, contain new mysteries and may start us along an uncharted pathway to room temperature superconductivity,” said Chien, whose lab teamed up researchers from the Hefei National Laboratory for Physical Science at Microscale, based at the University of Science and Technology of China in Anhui.

Today, superconductors are used in hospital MRI machines, as filters in cell phone base stations, and in high-speed magnetic levitating trains. Unfortunately, most superconducting materials can only function and operate at extremely low temperatures, which means they must be paired with expensive supercooling equipment. This presents researchers with a grand challenge: to find superconducting material that can operate at a more “normal” temperature. “If superconductors could exist at room temperatures, the world energy crisis would be solved,” Chen said. Though all metals contain mobile electrons which conduct electricity, a metal becomes a superconductor only when two electrons with opposite “spins” are paired. The superconductor energy “gap,” which is the amount of energy that would be needed to break the bond between two electrons forming such a pair, determines the robustness or strength of the superconducting state. This energy gap is highest at low temperatures, but vanishes at higher temperatures. The team measured this gap and its temperature variation, revealing that the pairing mechanism in iron-based superconductors is different from the one in more traditional, copper-based, high-temperature superconductors. To the researchers’ surprise, their results were incompatible with some of the newly proposed theories in this mushrooming field. Go to: Headlines@Hopkins

On the exhibit floor, put your scientists front and center

David Schwartz — Wed, 25 Jun 2008 19:28:12 +0000

In a sea of booths at a trade show, what’s the best way to make sure your display gets the results you want in terms of leads that ultimately bring in new deals? Organizers of the Oklahoma exhibit at the giant BIO 2008 International Convention in San Diego believe a big part of the answer lies in having your scientists on hand to press the flesh and respond to technical inquiries. State economic development officials made sure that at least two scientists were working the Oklahoma pavilion whenever the BIO 2008 exhibit floor was open, basing their strategy on their experience at the prior year’s BIO show in Boston. That’s when Oklahoma Medical Research Foundation scientist Tim Mather was working the state’s exhibit booth, and an attendee wandering through posed some questions about the state of research in Oklahoma. As the lone scientist staffing the booth at the time, Mather was asked to provide some details for the curious visitor. It turned out that the attendee was actually an official with the National Institutes of Health who was seeking candidates for a special NIH drug development initiative. “I understood immediately that what he was doing was exactly what several of our [researchers] need in terms of taking advantage of the open access he was offering to NIH’s toxicity, pharmacology, even synthetic chemistry capabilities,” Mather said. As a result of that random meeting, Oklahoma researchers were invited to hear about the program first hand a couple of months later when the NIH official came to the state. Having learned that valuable lesson, when the 2008 show opened, the state delegation was waiting with six scientists staffing their exhibit. Go to: NewsOK

Technology Transfer Tactics accepted into Singapore’s Technology Transfer Network

David Schwartz — Wed, 25 Jun 2008 19:27:27 +0000

Technology Transfer Tactics (TTT), the subscription-based monthly newsletter on best practices in technology transfer, research commercialization and knowledge transfer, has become the first periodical accepted into the Singapore-founded Technology Transfer Network (TTN). TTT is the sister publication of Tech Transfer E-News. The TTN is a collaborative alliance of technology transfer offices whose core activities include IP cluster mapping, training and certification of tech transfer professionals, joint marketing and events, technology advisory services, industry collaboration, and sharing of best practices. Exploit Technologies and seven Singapore institutions of higher education were the founding members of TTN, in February 2008. Within its first two months, TTN added as Affiliate Members the Office of Technology Alliances at the University of California (Irvine), and organizations CONNECT and Global CONNECT. Boon Swan Foo, Chairman of the TTN and Executive Chairman of Singapore’s Exploit Technologies, said, “I warmly welcome TTT as an Associate Member. With its experience in advising technology transfer professionals, TTT brings with it best practices, ‘how to’ strategies, and practicalities of technology transfer to share with our TTN members. In turn, TTN offers TTT a good doorway into its extensive regional network of technology transfer professionals and big industry players.” Commented TTT’s founder and publisher Dr. Leslie Norins, “We are honored to join TTN. We look forward to open discussions with its members. With this sharing platform, we will gain more insights and perspectives which will enhance our future issues.” Go to: Forbes

(Note: For a first-hand report on tech transfer activity and opportunities in Singapore, one of the world’s most active research commercialization hotspots on a per capita basis, don’t miss the July issue of Technology Transfer Tactics. Subscription information is available HERE.)

University researchers bring their invention to reality TV

David Schwartz — Wed, 25 Jun 2008 19:26:12 +0000

Two entrepreneurial researchers from The University of Queensland and the University of Southern Queensland (Australia) have taken a unique path to helping commercialize their technology: they’re showcasing it on reality television. The researchers, Neal Finch and Mark Dunn, appeared on ABC’s The New Inventors program to pitch their patented animal recognition technology to the show’s panel of judges. The technology uses solar panels, a mini computer, and a webcam to separate cattle and sheep from feral animals and wildlife. It enables farmers and producers to ensure their livestock get needed water and feed while reducing the grazing pressure on already drought-ravaged livestock properties. The innovation uses Machine Vision Technology (MVT) to identify animals and control their movements through automated gates to access watering or feed points. It can distinguish between sheep, goats, cattle, horses, pigs, kangaroos and emus and has application for other species and uses. In their TV appearance, the researchers highlighted what they view as their system’s unique benefits. “The small, energy efficient hardware running the animal recognition software can also read Radio Frequency Identification (RFID), which means individual tagged animals can be recognized,” said Finch. “Combining this technology with the ability to enclose a watering point and operate an automated gate provides an opportunity to manage large areas of the Australian rangelands in a revolutionary new way. If large enough areas have water access managed, then issues such as Total Grazing Pressure and feral animal control can be addressed without traditional culling methods like shooting or poisoning.” UniQuest, the University of Queensland’s technology transfer company, is commercializing the system. Managing Director David Henderson said the researchers’ appearance on the program could generate significant interest. “Innovations like this technology are addressing very real problems. Some studies have estimated the costs to the pastoral industry caused by feral pigs and goats to be more than $300 million. Lamb losses can be as high as 30% each year,” Henderson said. The program was seen across Australia on the ABC program June 18th. Viewers vote to select the winning featured technology, and at last check the animal recognition system was in second place, close behind a “water cell” technology designed to capture and store rainwater. Go to: The New Inventors

Audioconference focuses on strategies for small TTOs

David Schwartz — Wed, 25 Jun 2008 19:25:31 +0000

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.

(Note: If you were unable to attend today’s live audioconference, “Tech transfer metrics: Establish meaningful performance measures and demonstrate your TTO’s true value,” you can still hear every word and receive all handouts with the CD or online audiostream version. CLICK HERE for details.)

U of Wisconsin-Milwaukee signs licensing pact for compound targeting alcohol addiction

David Schwartz — Wed, 25 Jun 2008 19:23:56 +0000

The University of Wisconsin-Milwaukee Research Foundation has signed a licensing agreement for a series of compounds developed by a UWM researcher that could aid in the treatment of alcohol addiction. MPP Group LLC, of Wauwatosa, WI, will license the compounds, which appear to interact with certain neurotransmitters in the brain to block the euphoric effects of alcohol without inducing anxiety or sedation. Developed by James Cook, Distinguished Professor of Chemistry, the compounds also may be useful in treating other addictive behaviors or disorders. Cook’s previous research has led to the discovery of potential therapeutic compounds aimed at disorders of the central nervous system, several of which have been licensed by pharmaceutical companies. Financial terms of the agreement were not disclosed. MPP Group, a biopharmaceutical company, will work to develop the compounds into an FDA-approved therapeutic agent for the treatment of alcohol addiction, which affects about 17 million Americans. Go to: University of Wisconsin-Milwaukee and The Business Journal

U of Ulster spinout commercializing wire-free health monitoring technology

David Schwartz — Wed, 25 Jun 2008 19:23:19 +0000

Technology developed by a University of Ulster (Ireland) spinout company is set to transform the way doctors monitor their patients’ hearts and other vital signs, its developers say. A tiny device developed by the company, ST+D, will enable clinicians to assess a patient’s condition regardless of the patient’s location. The “no wires” technology will also help to reduce patients’ time in hospitals and free up beds more quickly. “It won’t matter whether the patient is in hospital, at home recuperating — or holidaying in, say, Spain or South Africa,” according to ST+D chief executive Michael Caulfield. “Doctors will be able to click onto a website and review the state of their patients’ health.” The innovation is based on a disposable adhesive electrode patch worn on the patient’s chest. A small electronic unit with wireless technology is attached which sends processed signals back to the doctor via a small handset suitable for the patient’s bedside table, pocket, or handbag. The unit picks up signals from the patch using GPRS, (the global system for mobile communications) and transmits the signals to the doctor’s computer over the internet. Clinical trials with the device are now underway, supported by £410,000 in funding from the Wellcome Trust, the UK’s largest medical research charity. The device was created by three researchers at the University of Ulster’s Nanotechnology and Integrated Bioengineering Centre (NIBEC), who also founded the spinout. Noted Ted Bianco, director of technology transfer at the Wellcome Trust, “this device certainly has the potential to change the way doctors monitor their patients’ hearts. Testing it in a hospital environment is the first step to validating the technology and gaining useful insights into how it might best be deployed, both in the clinical setting and beyond.” Added Caulfield, “It will free up hospital beds because of earlier release of heart patients and cut down on [medical] appointments, while at the same time giving early warning of any problems.” The sensor includes on-board intelligence allowing it to monitor and record irregular heart events and to capture heart data for periods of time before and after those events. Future versions will also measure the wearer’s respiratory rate, temperature and oxygen in the blood. Go to: University of Ulster News

Early-stage valuations: Numbers tell only part of the story

David Schwartz — Wed, 25 Jun 2008 19:22:41 +0000

Early-stage valuation is as much art as science, typically using complex formulas that involve plenty of guesswork. Most experts agree that the process should not necessarily be driven strictly by dollars and cents, but also by who is best positioned to take the technology forward. Dan Ross, a senior consultant for Cambridge, MA-based Simon-Kucher & Partners, has made a career out of assessing the value of early stage technology. And he believes that the problem with typical valuation analyses is that they tend to miss how volatile the underlying assumptions may be. “Instead of just taking an assumption and plugging it [into the model], we look at a plausible range for that assumption,” explains Ross. For example, instead of locking into an assumption that a particular product will launch in five years, Ross works into his calculations a range of launch dates based on consultations with industry experts. “Because we are taking ranges into account, the model cannot spit out a single value. Instead it has to give us a range of values.” To pin down a particular value from this range of options, Ross then considers the risk-tolerance of his client, whether that is the potential buyer or the seller. “Our theory is that the same asset may have different values to different parties, depending on their risk tolerance,” he says. “If you have a high risk-tolerance, then you may be willing to pay more for these early-stage assets. If you have a low risk tolerance, then you are not really interested in the gamble. You prefer to walk away with some sort of payment today.” Using a validated tool to quantify risk-tolerance into a percentage, Ross then marries this figure with his range of potential values for the IP asset. “We map the two together,” he says. “We have a map of value [ranges] and a map of the risk-tolerance, and where they intersect is the value for that [transaction].” A detailed article describing Ross’s approach, as well as those of university TTOs at Georgia Tech and Virginia Tech, appears in the June issue of Technology Transfer Tactics. For subscription information, CLICK HERE.

Innovation of the Week: Crystal clear savings for drug companies

David Schwartz — Wed, 25 Jun 2008 19:22:03 +0000

Drug companies could save millions thanks to a new technology to monitor crystals as they form. The technique, developed by University of Leeds (UK) engineers, is a potentially invaluable tool in drug manufacture, where controlling crystal forms is crucial both to cost and product safety. Most drug compounds are crystalline, and their structure can affect both their physical attributes and their performance. Changes to these structures are often caused by undetected fluctuations in processing. “If you were to use a pencil to write on glass you wouldn’t get very far, but use a diamond and you could write your name. Yet both are pure forms of carbon. It’s the same with different solid forms of the same drug; they can have completely different properties,” says Dr. Robert Hammond, who leads the research team. “Drug molecules are becoming increasingly complex and the challenges involved in processing them means that it is not always possible to successfully produce the desired form reliably. That’s why there’s such enormous potential for our system. We’re now able to look at crystals as they are forming in a reactor, something that has never been done before.” The new technology identifies and monitors changes in crystal structures on-line, providing a method of ensuring production of the desired drug compounds. Called polymorphism, changes in crystal structure during processing can lead to huge delays in bringing drugs to market, costing drug companies dearly. It can also lead to challenges to intellectual property protection. In fact, a number of high-profile patent challenges have been brought against companies making an established formulation using a different polymorph. “It’s an enormous problem for drug companies,” Hammond observes. The technology developed at Leeds is based on the “gold standard” method for monitoring crystal structures — powder X-ray diffraction, the primary tool for studying polymorphs. “There’s enormous commercial potential for this technology. For example it could be developed to work at manufacturing plant scales and can be applied to specialty chemical industries as well,” Hammond says. “We’re interested in talking to pharmaceutical and specialty chemical companies that can help us drive this forward.” Go to: EurekAlert

Sonar technology for tunnel excavation wins tech transfer award

David Schwartz — Wed, 25 Jun 2008 19:21:20 +0000

Dr. Rüdiger Giese, from the German geosciences research center GeoForschungsZentrum Potsdam (GFZ), and his team received the “Technology Transfer Award 2008″ from the Technology Foundation Brandenburg for developing a new system for use in tunnel pre-exploration. The Integrated Seismic Imaging System (ISIS) enables preliminary exploration of the rock mass in a tunnel without the need for explosions, allowing for testing while actual tunnel construction work is occurring. The innovation makes tunnel excavation safer, faster, and more efficient. The system is a significant advance over conventional methods of rock mass investigation, which typically involve a small explosive charge followed by evaluation of the resulting sonic waves. Construction work must be interrupted at considerable cost. The ISIS can forecast geological characteristics of the rock mass without disturbing drilling procedures to any great extent using a process similar to ultrasound in medicine. GFZ is partnering with leading tunnel excavation firm Herrenknecht AG to market the ISIS system. Go to: EurekAlert

Finnish institute licenses spray-forming technology to China for reconditioning train wheels

David Schwartz — Wed, 25 Jun 2008 19:20:35 +0000

Finland’s VTT Technical Research Centre has signed a license agreement with Shanxi Fenxi Heavy Industry, based in Tayian, China, giving the Chinese company exclusive rights to VTT’s proprietary Precision Spray Forming technology for the renewal of deteriorated train wheels. The technology, developed by VTT senior research scientist Yunfeng Yang, involves spraying deteriorated train wheels with a molten alloy, which rapidly solidifies and forms a fine microstructure with high workability and wear performance. The technique, initially developed to manufacture cast molds, reduces production time from months to days and cuts costs by 30% to 50%, says VTT. The agreement will help promote sustainable development in China, whose vast railway network stretches over 88,000 kilometers, carrying 650,000 freight cars and 42,600 passenger cars. The technology will allow 100,000 wheels to be fixed each year. Go to: VTT

Check out our online tech transfer job listings

David Schwartz — Wed, 25 Jun 2008 19:18:47 +0000

For job seekers and those looking to hire in the tech transfer and research commercialization market, the Technology Transfer Tactics online job listings service is a targeted, powerful new way to put tool to find a great fit. Just CLICK HERE to view the current listings, including positions at National Jewish Medical and Research Center, UTEK, Simon Fraser University, the NIH Office of Technology Transfer, and more. You can list your openings too, and paid subscribers to Technology Transfer Tactics get a two-week posting for free. Non-subscribers pay a small fee for a month-long listing — it’s a great way to get your jobs available in front of experienced tech transfer pros. To place your “help wanted” ad or for more information, CLICK HERE or call Sara Henderson at 404-200-3310. E-mail shenderson@technologytransfertactics.com.

Technology Transfer Tactics First Periodical to Become Member of Singapore’s Technology Transfer Network

Leslie Norins — Tue, 24 Jun 2008 09:00:29 +0000

NAPLES, Fla.–(BUSINESS WIRE)–Technology Transfer Tactics (TTT) the monthly newsletter advising on best practices in technology transfer, research commercialization and knowledge transfer, has become the first periodical accepted into the Singapore-founded Technology Transfer Network (TTN).

Boon Swan Foo, Chairman of the TTN and Executive Chairman of Singapore’s Exploit Technologies, said, “I warmly welcome TTT as an Associate Member. With its experience in advising technology transfer professionals, TTT brings with it best practices, ‘how to’ strategies, and practicalities of technology transfer to share with our TTN members. In turn, TTN offers TTT a good doorway into its extensive regional network of technology transfer professionals and big industry players. I am confident that this new partnership will enhance the quality of technology transfer and commercialization practice amongst all TTN members.”

The founder and publisher of TTT, Dr. Leslie Norins, of Naples, Florida, said, “We are honored to join TTN. We look forward to open discussions with its members. With this sharing platform, we will gain more insights and perspectives which will enhance our future issues.”

The TTN is a collaborative alliance of technology transfer offices formed to enhance the effectiveness of technology transfer to industry. Its core activities include IP cluster mapping, training and certification of TT professionals, joint marketing and events, technology advisory services, industry collaboration, and sharing of best practices.

Exploit Technologies and seven Singapore institutions of higher education were the founding members of TTN, in February 2008. Within its first two months, TTN added as Affiliate Members the Office of Technology Alliances of the University of California (Irvine), and the organizations CONNECT and Global CONNECT.

TTT is a subscription-supported monthly newsletter based in Naples, Florida. Fifteen months old, it has a worldwide circulation. A free sample issue is available upon request at its website, www.technologytransfertactics.com. The company also publishes the free ezine, Tech Transfer e-News, which is distributed weekly to 140,000 professionals globally.

For information on the TTN, contact Walter Lee, Head of TTN Secretariat, walter@exploit-tech.com.

Technology Transfer Tactics, Naples
Dr. Leslie Norins, Publisher, 239-263-0605
lnorins@technologytransfertactics.com
www.technologytransfertactics.com

Early-stage investor says funding gap does not exist, only “expectation gap”

David Schwartz — Wed, 18 Jun 2008 19:14:04 +0000

Early-stage biotech investor Carl Weissman, president and CEO of Seattle-based venture firm Accelerator, takes both VCs and university TTOs to task for blaming a lack of access to early-stage funding on what he says is a non-existent funding gap. He cites instead an “expectation gap” as the main barrier to securing dollars for research commercialization. Weissman also rips VCs for their recent insistence that technologies be “de-risked” to qualify for their backing, a stance that he views as counter to the very nature and purpose of venture investing. “VCs are happy to blame the funding gap on everything and everyone (but themselves), from recalcitrant academic ivory tower scientists to bureaucratic technology transfer offices to the NIH to the public markets…. Too easy,” Weissman argues. “VCs that spew this propaganda either need to admit that they are no longer in the “venture” business, where there is — by the very nature of the activity — risk; or, they need to find mechanisms and models that will enable them to invest earlier and pull some interesting emerging technologies forward.”

He doesn’t spare university researchers or TTOs from criticism either, citing an era of easy money in the late 1990s as fomenting unrealistic expectations for what constitutes technology worthy of funding. For research that does meet realistic criteria and is not burdened by pie-in-the-sky financial expectations, a funding gap will not be a barrier, he asserts. “Academic investigators need to face facts. If you have a great technology, with reasonable and lucid proof-of-concept, addressing a significant unmet need, and that can be protected as proprietary; and, if — and this is the big IF — you have reasonable expectations in terms of valuation and risk-sharing, then you will be able to attract venture funding. Plenty of it,” Weissberg says. To prove his point, he points to his own company’s string of successful investments, as well other early-stage VCs with a similar track record, and maintains that great ideas need not go begging for funds if the backers and the innovators both can approach the commercialization process with a bit more give and take. “If you are an academic and you cannot get someone to back your idea, do three things: take a hard look at your technology (or even ask someone else to do so); take a hard look at your expectations; and, take a hard look in the mirror. Honest assessment in these three efforts will tell you why,” he opines. “If you are a VC crying crocodile tears over all of the impediments between your partnership and early-stage biotechnology investment, quit it. You make us all look like complete asses. Pull up your britches, wipe your nose, and admit it — ‘I am no longer a VC. I am now a private equity investor with an exceedingly small fund.’ Go to: Xconomy

U-Michigan banking on philanthropy to bridge “Valley of Death”

David Schwartz — Wed, 18 Jun 2008 19:13:04 +0000

The University of Michigan’s Life Sciences Institute (LSI) is launching a novel fundraising effort aimed at helping its promising biomedical discoveries cross the “Valley of Death” from the lab to the marketplace. With its newly launched “Innovation Partnership,” the school will be counting on philanthropic gifts to bridge the oft-cited funding gap. More than $1.6 million has been raised to date, with a five-year goal of $10 million to support LSI discoveries related to neurodegenerative diseases, diabetes and cancer. “There is a huge need to fund research activities after NIH funding typically stops and before venture capitalists typically begin,” said Paul Meister, CEO of investment firm Liberty Lane Partners and co-chair of LSI’s external advisory board. “Philanthropy is the only way to fill this gap. Without this kind of solution, a lot of good ideas would never make it to commercial fruition.” Under the funding plan, a committee made up of VC and business execs will evaluate innovations based on both the urgency of medical needs addressed and commercialization potential, then allocate the donated funds. The first awards, in the range of $200,000 to $500,000 each, are expected to be made by year’s end, and LSI will provide lab space, equipment and scientific support equivalent to a 50% match on the donations. The initial list of donors includes all members of LSI’s Leadership Council, a high-powered group of scientific and business leaders. Funded projects will be expected to result in either a licensing deal with an existing entity, start-up formation, or further development support from university, government, or private-sector resources. “This program is a great example of how philanthropy can fill the critical gaps in our research pipeline,” said Dr. Tadataka Yamada, president of the global health program at the Bill & Melinda Gates Foundation and a member of LSI’s external advisory board. Go to: University of Michigan News Service

Last week to register for tech transfer metrics audioconference

David Schwartz — Wed, 18 Jun 2008 19:11:09 +0000

Just one week remains to sign up for “Tech transfer metrics: Establish meaningful performance measures and demonstrate your TTO’s true value,” scheduled for Wednesday, June 25, 2008, 1:00 PM - 2:30 PM eastern daylight time. Attendees will learn how to dramatically boost the ability to gauge — and prove — your TTO’s performance by implementing advanced metrics and benchmarking systems. The session’s faculty are John Fraser, AUTM’s immediate past president and TTO director at Florida State University, and Dana Bostrom, former AUTM VP for metrics and surveys and director of Innovation & Industry Alliances at Portland State University. For full program details or to register, CLICK HERE.

iRobot licenses autonomous underwater vehicle technology from U of Washington

David Schwartz — Wed, 18 Jun 2008 19:10:17 +0000

UW TechTransfer, the University of Washington’s TTO, has signed a license with iRobot Corp. to commercialize its Autonomous Underwater Vehicle Seaglider technology, developed in partnership with U.S. Office of Naval Research and the National Science Foundation. The company is best known for its robots used in combat by soldiers fighting in Iraq and Afghanistan. “Licensing the Seaglider from the University of Washington will help our robots conquer new underwater frontiers,” said iRobot co-founder Helen Greiner. Seagliders help civilian, academic and military personnel make oceanographic measurements at a fraction of the cost of traditional research vessels or moored instruments. These long-range, high-endurance vehicles reduce energy consumption using a buoyancy-based propulsion system to support mission ranges of thousands of kilometers and deployments lasting up to several months. Instruments can be attached to the Seaglider to continuously collect oceanic physical properties across a range of depths and areas, providing valuable insights to oceanographers and military planners. Go to: Business Wire

UCSF, Pfizer sign novel collaborative research deal

David Schwartz — Wed, 18 Jun 2008 19:09:09 +0000

The University of California-San Francisco and drug giant Pfizer Inc. have signed a novel, broad-ranging collaboration agreement that will provide up to $9.5 million in funding for university research that could lead to new drugs or biomedical tools. The three-year agreement is part of Pfizer’s attempt to break the traditional mold of pharmaceutical development and embrace the more nimble style of biotech companies that build on cutting-edge research. Pfizer has already moved in that direction by acquiring biotech companies and forming partnerships with others. But under the deal with UCSF, Pfizer will contribute financial support for early-stage research — a role dominated by government grant-making agencies and VCs willing to take big risks. “We’re looking for science at the grassroots level,” said Corey Goodman, the Pfizer executive overseeing the collaboration. Goodman, a noted neurobiologist who has co-founded two Bay-area biotech companies, was tapped by Pfizer late last year to head its new Biotherapeutics and Bioinnovation Center, a freestanding unit that has since recruited innovative biotech companies into a research “federation.”Like other big pharma companies, Pfizer is scrambling to find new products to replace its older blockbuster medicines that are going off patent. Goodman is extending the Center’s reach to academic scientists with high-potential ideas that are in danger of stagnating because government grant budgets have tightened and VC firms have become more risk-averse. Pfizer started negotiations about six months ago with UCSF and its unit at QB3, the California Institute for Quantitative Biosciences. QB3 Director Regis Kelly said the collaboration is an unusual model in that it opens the door to ideas proposed by academic researchers, unlike the typical contracts for narrowly defined research projects. At least three research groups are already eager to get started, Goodman said. UCSF and Pfizer scientists met in brainstorming sessions to explore mutual areas of interest while terms of the deal were still being negotiated. The Pfizer collaboration will also offer opportunities to researchers at UC Berkeley and UC Santa Cruz, which are member campuses of QB3. Scientists and their universities will retain patent rights to any inventions discovered under the Pfizer grants, but Pfizer will have the right to negotiate licenses. Go to: The San Francisco Chronicle