Category Archives: Licensing and Deal Making

Survey Says… Free Agency Procedures Are Already in Place

This summer, the technology transfer office (TTO) at Vanderbilt University conducted an informal survey of members of the AUTM® directors online discussion group on TTO policies and practices regarding returning rights to inventors. I found the results from the 84 respondents intriguing, as should advocates for free agency in tech transfer (including sponsors of the current Startup Act legislation). That’s because this survey showed that the essence of free agency — that is, giving innovators the right to pursue commercialization of their technology — is already in place… and the innovators are not pursuing it. Let’s look at the data. Continue reading

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Prototyping Licenses: Another Angle on Evaluation Licenses for Technology Transfer

Prototyping-LautDesignA few months ago, the IP Marketing Blog discussed the OpenUlster program at the University of Ulster in Ireland and its evaluation license. It caught my attention for its efforts to streamline licensing and help mitigate the risks that potential licensees may feel when contemplating a new technology. Here’s how the blogger described it: ‘To take out an evaluation license, which costs just one Pound, the visitor just clicks on the link to download the documents, fill out two forms and return them both to Ulster. “When the license is countersigned by one of our commercialization team, the firm has exclusivity to evaluate that technology,” says [technology commercialization manager Dr. John] MacRae… At the end of the evaluation period… the evaluation license can be converted into a full commercial license.”’ Continue reading

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Free IP Circumvents the Nickel-and-Dime’ing in SRAs

Nickel-and-dime'ingThere have been a lot of articles recently about universities giving away IP rights for free. The specifics of each vary, and most seem to have advantages that will help accelerate the transfer of technology. But some go further than others. Continue reading

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Great Tech Transfer Is a Marathon, Not a Sprint: Stories from the Field

While everyone likes a sprint, the reality is that tech transfer with the greatest impact usually is a marathon. Negotiating effective tech transfer agreements can seem as arduous, and there are so many steps along the path where you can … Continue reading

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Conversations with DoD & the White House on Federal Tech Transfer Initiatives

Last week I gave a presentation at a tech transfer workshop for the U.S. Department of Defense (DoD). This workshop was well timed, given President Obama’s recent memorandum announcing a new directive requiring all federal research labs to bolster and streamline technology transfer efforts to increase the likelihood and efficiency of getting research results to market. Attendees at the DoD meeting discussed the memo as well as possible solutions, as each agency has been tasked with presenting a plan back to the President on how they will achieve his goals. Possible solutions have been at the top of my mind recently as well…. Continue reading

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A NASA Dryden Fiber Optic Technology Makes Its Way into the Marketplace

 As you might have noticed from Fuentek’s news feed or on R&D Magazine‘s Web site, NASA’s Dryden Flight Research Center has signed a licensing deal with 4DSP. I for one am pretty excited about this tech transfer success because Fuentek has supported Dryden in this effort. Long-time readers of our blog might remember our post about Dryden’s fiber optic shape sensors technology. But our support of Dryden didn’t begin there. We actually started off with a market-based assessment of the technology’s suite of innovations. Continue reading

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Use Success Stories to Avoid Collateral Damage in the Patent Wars

shattering lightbulbPatents have been getting some pretty bad press lately. Between stories about patent trolls in The Economist and on NPR’s This American Life and the patent wars raging between Apple, Google, Microsoft, HTC, Samsung, etc., tech transfer professionals are probably finding their cocktail party conversations getting a bit more interesting… and not in a good way. As the public hears more, some question why we have patents at all. They think that if patents are causing this much trouble, they must be bad. This misconception is a problem that technology transfer offices (TTOs) can and should proactively work to overcome. Continue reading

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Bringing Universities and Corporations to SRA Negotiations with a Letter of Intent

Recent experience with a Sponsored Research Agreement (SRA) has underscored the potential miscommunication that often keeps universities and corporations from peacefully coming to successful negotiations. So, I’d like to take some time to weed through what each party can (and cannot do) and why, in an effort to clear up some misconceptions and potential frustrations. Continue reading

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License Programs Targeted at Startups: We Can (and Must) Do Better

You may have noticed that several universities and government labs are forming ready-to-sign patent licensing programs or other initiatives with new licensing terms. Many of these programs target startup companies, like the University of North Carolina’s Express License program or the DOE’s America’s Next Top Energy Innovator Challenge program, which offers startups options to license patents for $1K. Continue reading

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DOE’s New Option to License Program – Not an Express License, but Still Valuable

Interesting news in the world of technology licensing: the Department of Energy recently announced ‘America’s Next Top Energy Innovator Challenge’—a licensing program offering special terms to startup companies on a set of patent licenses from national labs with the goal … Continue reading

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