TECH TRANSFER CONSULTANCY
Universities’ Unique IP Issues: Challenges for Technology Transfer Offices

Universities’ Unique IP Issues: Challenges for Technology Transfer Offices

Summer is a great time of year to be in Minneapolis. (When I lived there, I was on that river every day with my rowing team!) And it’s particularly nice when I also get to participate in a session at the Central Region Meeting of the Association of University Technology Managers (AUTM®).

The session—Ownership in the University Setting: Do You Own What You Think You Own?—will discuss the often complex intellectual property (IP) issues that occur in the university setting.

The complexities of IP ownership at universities include:

  • Inventions owned by multiple individuals, including undergraduate students
  • Ownership of biological materials and research tools where typical IP protections (patents) are not filed
  • Faculty who began the technology’s development before coming to the university or who will continue their work after they have left

I will be focusing on the faculty transitions topic. Yes, this is the time of year when universities bid “farewell” and “welcome” not only to students but also to many faculty researchers. As Fuentek’s Becky Stoughton discussed here, faculty transitions from one institution to another have big implications for the technology transfer office (TTO).

I look forward to sharing the best practices and lessons that Fuentek has learned in helping our university clients improve TTO engagement with researchers and inventors.

Joining in on the discussion will be:

We will present the issues not only in theory but also with actual “war stories” and the insights gained. Our goal is to help attendees avoid legal disputes and smooth out the bumps in the road to technology transfer.

So, if you’re going to be in Minneapolis for AUTM’s Central Region Meeting, I hope you’ll join us at the session on Monday, July 9th at 1:30pm. And feel free to contact me if you would like to meet to discuss how Fuentek can support your TTO with our IP management services, our marketing and communications expertise, and our strategic solutions.

And for those who are not attending the regional meeting, keep an eye on the Fuentek blog for a forthcoming post with more details from my presentation.

Prioritizing Your IP Portfolio: A Tech Transfer Webinar Presented by AUTM

Prioritizing Your IP Portfolio: A Tech Transfer Webinar Presented by AUTM

Live on June 6, 2018 at noon EDT; recording available here: Technology transfer professionals can learn best practices in getting their intellectual property (IP) portfolios under control, thanks to a webinar—Prioritizing Your IP Portfolio—offered by the Association of University Technology Managers (AUTM)®. with (left to right) Dr. Nichole Mercier of Washington University in St. Louis, René Meadors of Georgia Tech Research Corp., and Fuentek’s Laura Schoppe. Register for the live webinar here.

(l to r) Dr. Nichole Mercier of Washington University in St. Louis, René Meadors of Georgia Tech Research Corp., and Fuentek's Laura Schoppe discuss IP portfolio prioritization.

(l to r) Dr. Nichole Mercier of Washington University in St. Louis, René Meadors of Georgia Tech Research Corp., and Fuentek’s Laura Schoppe discuss IP portfolio prioritization.

If you run the technology transfer office (TTO) or other department tasked with managing a university’s or other research organization’s IP portfolio, consider these questions:

  • Do your technology managers have overwhelming caseloads?
  • Are patent costs outpacing growth in licensing revenues?
  • Are departments underreporting new inventions, given the research dollars they’re bringing in?

If your answer to any of these questions is yes—or even “I don’t know”—then this is the webinar for you!

Offered by AUTM, the Prioritizing Your IP Portfolio webinar provides attendees with a where-to-start strategy for optimizing and prioritizing their IP portfolios. You can register for the live June 6, 2018, webinar here or you can order the recording here.

The panelists, who received rave reviews when they presented a session on this topic at the AUTM Eastern Region Meeting, are:

As Fuentek has blogged extensively, IP portfolio optimization and prioritization provides major benefits to a TTO. Not only does it minimize patent costs, strategic IP portfolio management enables increased staff productivity and positions the TTO to achieve greater success. Consider this case study.

Drawing on the real-world experiences, the three panelists will share their successful strategies. Examples will illustrate how these strategies:

  • Helped TTO staff focus on high-potential innovations
  • Achieved substantial cost savings by eliminating unproductive patents
  • Revealed the portfolio’s strengths, weaknesses, and overall strategic value

They will also provide advice on how to plan for strategically examining every technology in the IP portfolio.

This webinar is ideal for TTOs with a backlogged/legacy portfolio of unprocessed disclosures as well as for those where ongoing operations need a boost in efficiency and/or effectiveness. Read more on when to optimize the IP portfolio here.

You don’t have to be a member of AUTM to attend the webinar, but you do get a discounted fee. So, if you’re not already a member of this major tech transfer organization, consider joining AUTM today.

Learn more here about Fuentek’s IP management services, including IP portfolio prioritization, and then contact us to discuss how we can help your TTO manage your IP effectively, efficiently, and strategically.

Using Sponsored Research to Bridge the Licensing Gap: Insights from AUTM Panel

Using Sponsored Research to Bridge the Licensing Gap: Insights from AUTM Panel

Editor’s note: Fuentek vice president Danielle McCulloch (left) served as moderator with panelists (left to right) Todd Sherer of Emory University, Pauline Callinan of MedImmune, and Brian Kraft of Washington State University (WSU).

Danielle McCulloch of Fuentek, Todd Sherer of Emory University, Pauline Callinan of MedImmune, and Brian Kraft of Washington State University at AUTM 2018

Every technology licensing officer dreads that moment when a company has expressed interest in a piece of intellectual property (IP)… but doesn’t want to sign a license. Over the many years Fuentek has helped clients commercialize early-stage technologies, we frequently found that industry-sponsored research can be a useful tool to get things “unstuck” in these situations. Since it seemed that many technology transfer offices (TTOs) were underutilizing this technique, we thought it would be a useful session topic for the annual meeting of the Association of University Technology Managers (AUTM™). Happily, the folks at AUTM agreed and accepted our session proposal for the recent conference. This proved to be a very engaging session. In fact, there were so many great interactions—among the panelists and with the audience—that I’m going to discuss it in two parts. This post shares the panelists’ perspectives on and experiences with connecting technology licensing with sponsored research. My next post will provide Fuentek’s advice for university TTOs who want to proactively pursue sponsored research.

 

Panelist Perspectives

Universities

The two university panelists have programs that are at different stages of maturity and handle the connection between licensing and sponsored research differently:

  • Reorganization: At Emory, industry-sponsored research agreements were handled by the Office of Sponsored Research. To build cohesion between licensing and industry contracting, Todd Sherer implemented a reorg that brought these two groups together in the Office of Technology Transfer. (More information on the Emory reorg is in this Technology Transfer Tactics article.)
  • Coordination: WSU has recently begun to focus on diversifying its research funding while increasing licensing. Brian Kraft is spearheading this effort, which involves coordination between the Office of Commercialization and the Innovation & Research Engagement Office.

Despite these distinctive structures, both institutions have pursued some similar arrangements:

  • Industry vs. Federal: Both Emory and WSU have separated industry-sponsored research from federal government research due to the very different relationships, management requirements, and data tracking needed.
  • Foreign Corporations: Both Emory and WSU merged tracking of their foreign corporation engagements with the rest of their industry-sponsored research, which was especially helpful with big pharmaceutical companies that have a significant U.S. presence but a foreign headquarters.

Industry

As discussed by Pauline Callinan, MedImmune looks beyond merely funding research to pursue bigger relationships with universities, since these offer some key benefits:

  • Efficiency: Strategic relationships are easier to put in place and have a longer horizon than individual projects. They also make it easy to have university researchers present to the company (and vice versa) to find areas of overlap and synergy.
  • Attracting Top Talent: MedImmune has arranged with several nearby universities to offer a “researcher rotation” program for post-docs. This gives the company a chance to test out and cultivate potential employees, while providing students with valuable industry experience—a good thing since 70% of Ph.D.s go into the private sector.

Sherer and Kraft agreed that such engagements are ideal from the university perspective as well.

 

Insights about Industry-University Agreements

Communication Challenges

Callinan shared a useful insight regarding the challenges that can occur in industry-university engagements:

  • Problem: Like most private companies, MedImmune cannot always express its technical needs explicitly.
  • Solution: Start with scientist-to-scientist discussions to try to achieve a match on the fundamentals, rather than focusing on what purpose the company has for the final drug.

This example particularly resonated with Kraft. In fact, his office is training WSU researchers on how to effectively communicate with industry to help industry see them as a match.

Master Agreements to Share IP

Both industry and academia can benefit from longer term collaborative relationships with master agreements that specify terms for sharing IP ownership.

  • Callinan pointed out that MedImmune has had engagements where the IP was split 50-50 and has been very happy with the relationship and results.
  • Emory has a new type of agreement vehicle that shares the research costs and the IP. Sherer observed that what such arrangements lack in terms of industry sponsorship is made up by the terms for IP ownership (and the upside that follows).

The takeaway message: When the university shares some of the risks associated with the research, it is easier for industry to agree to share the IP ownership.

 

Challenges in Licensing–Industry Contracting Interactions

Panelists also discussed the culture differences between sponsored research and licensing teams. For example:

  • Licensing officers tend to have a “Let’s get this deal done!” enthusiasm that can be viewed as pushy by sponsored research staff.
  • Staff members’ skill sets and salaries across the two groups may be quite different, which will need to be reconciled if a reorg is pursued.
  • In a consolidated office, recruitment can be more challenging since some applicants might view contracts as “not fun” and would rather do licensing marketing and deals.

Change management is always tricky, whether it’s part of a reorg or encouraging more interactions between the licensing and industry contracting personnel. Formally shifting the goals usually results in a comparable behavior shift. Ensuring the metrics match the job descriptions also helps move things along.

 

The Bottom Line

The panelists agreed: Using industry sponsored research as a pathway to licensing early-stage technologies is a viable approach that resonates with companies. If your tech transfer organization is like most—that is, with licensing separate from the industry contracting function—now is the time to engage with your counterparts. As noted in an earlier post on sponsored research agreements, the licensing and the industry contracting should have a “we’re all on the same team” mentality. My next post will offer Fuentek’s suggestions for operationalizing this idea. Stay tuned!

Bringing Tech Transfer into the Classroom Curriculum: Insights from AUTM Panel

Bringing Tech Transfer into the Classroom Curriculum: Insights from AUTM Panel

Editor’s note: Fuentek vice president Becky Stoughton (front) served as moderator with panelists (left to right) Justin Anderson of the Wisconsin Alumni Research Foundation (WARF), which is the technology transfer arm of the University of Wisconsin–Madison; Steven Ferguson of the Office of Technology Transfer of the National Institutes of Health (NIH); and Lesley Millar-Nicholson of the Technology Licensing Office (TLO) at the Massachusetts Institute of Technology (MIT).
Fuentek's Becky Stoughton (front) with panelists (left to right) WARF's Justin Anderson, NIH's Steven Ferguson, and MIT's Lesley Millar-Nicholson

A recurring theme at this year’s AUTM national meeting was the expanding role of technology transfer offices (TTOs), as they are expected to do more and more that falls outside the traditional areas of protecting and licensing intellectual property (IP).

For example, at a growing number of universities, TTOs are being asked to educate students about protecting IP, evaluating a technology’s market potential, licensing, and so forth.

This is a good thing, really. That’s because making classroom connections has several benefits for a TTO:

  • Raises the TTO’s visibility in a way that is viewed quite positively by students, faculty, and administrators
  • Develops deep relationships within the institution that can result in increased numbers of invention disclosures
  • Adds to resources available for assisting with technology commercialization

These types of efforts tend to come about to further several general types of goals:

  • Enhancing current TTO operations, such as by bringing in student interns to perform technology screenings or other appropriate tasks
  • Fostering the region’s entrepreneurial ecosystem, such as by ensuring campus innovators understand the key elements to launching successful high-tech startups
  • Educating future tech transfer professionals, increasing the capabilities of new hires

This is familiar territory for Fuentek, having blogged extensively about our experiences setting up effective tech transfer internship programs and on the connection between tech transfer and successful startups. And given the significant career accomplishments that had their origins in a TTO internship, we knew that such efforts can have a long-term impact.

What was surprising was the growing levels of training available to current and future tech transfer professionals.

A quick poll of the audience at the AUTM session showed that no one had a degree in tech transfer, though a few schools now offer them. A scattered few in the audience had a certificate. The vast majority had learned their trade on the job, augmenting with courses offered by AUTM or Tech Transfer Central webinars.

It will be interesting to see how these numbers change in the next decade, thanks to the efforts of the panelists and others—and (I hope) those inspired by the session—to professionalize the profession.

 

NIH’s Advanced Studies in Technology Transfer

Offered through NIH’s Foundation for Advanced Education in the Sciences (FAES), the Advanced Studies in Technology Transfer program is designed to educate not only scientists and engineers but also current tech transfer professionals. And thanks to NIH’s partnerships with universities, credits earned through this program can be applied toward an MS or MBA.

Other NIH classroom/campus connections include:

 

MIT’s Massive Open Online Course

It was big news in 2011 when MIT began offering free online courses through a new interactive platform called MITx. Since then, the course offerings have grown and soon will include:

Patents, Copyrights, and Technology Licensing for University Scientists, Researchers, and Entrepreneurs (0.112x)

Proposed jointly by the TLO and a chemical engineering professor, this course is being developed under a grant from MITx.

Other MIT classroom/campus connections include the following:

 

WARF’s Extensive Use of Students

WARF has a long history of involving students in its work. For example, in addition to a more traditional internship program, WARF features the Ambassadors program, which uses graduate students and postdocs to boost engagement with campus researchers.

WARF also supports student outreach beyond the walls of the university. The Business and Entrepreneurship Clinic and the Law and Entrepreneurship Clinic provide services to Wisconsin-based entrepreneurs and nascent businesses via MBA and law students.

Other WARF classroom/campus connections include the following:

 

Tips from the Panelists

Each of the three panelists offered a slide of tips (used here with their permission).

1. Don’t have any university tech transfer courses or a department? Just create your own! 2. Tech transfer education doesn’t stop at institutional boundaries! Partner with local economic development organizations for more opportunities. 3. No MBA students for tech transfer projects? Beg/Borrow/Steal them from other universities!
1. The operation of a tech transfer function involves significant knowledge and experience that can be shared through various means. Don’t be scared away by thinking you don’t have content for educating others. 2. The optimal (tech transfer education model) may be limited by forces outside your control (org. structure, politics, funding). Work out what those are and aim to stretch them to do the best you can. 3. Got nothing or minimal offerings right now? Be strategic, work out the low-hanging fruit, identify partners, piggyback on other programs, co-host activities/programs. Build your capabilities systematically.
1. Strengthen and enhance critical services while being responsive to the demands of evolving needs and opportunities. 2. Engage students from across campus – sciences, humanities, business school, and law school; graduate and undergraduate. 3. Grow and leverage the ecosystem on campus and beyond. Distributed network of resources with established nodes… act as “connectors.”
 

My Main Takeaways

Time to Partner

In addition to partnering with the appropriate departments within your university, you can and should look beyond. If your institution doesn’t have a law school, partner with another one that does. Feel free to remind them that partnering with you is good for their law school, as it boosts their patent law program.

Involve Students in Startups Based on University IP

Creating a startup is sometimes necessary for technologies that have market potential but are too early stage to interest an established company. Students can play a role in getting these startups off the ground. BTW, you don’t have to be a university TTO for this approach to be useful. This partnership between NASA’s Armstrong Flight Research Center and Cal Poly Pomona is a great example.

Join the AUTM Discussion

When I asked the audience if they would be interested in an AUTM Special Interest Group (SIG) on this topic, almost every hand went up. I passed along this interest to AUTM. As a result, a Classroom Connections SIG will soon launch for AUTM members. If you’re interested in engaging in the ongoing discussion, which I will be moderating, join the SIG. Once it’s available, you can sign up by logging in to AUTM, go to the My Member Profile page, and click the SIGs tab.

Experience That Pays Off: Hosting and Attending Tech Events Large and Small

Experience That Pays Off: Hosting and Attending Tech Events Large and Small

AND RENE’ MEADORS
Marketing Associate, Georgia Tech Research Corporation

Editor’s Note: As a longtime consultant for the technology transfer program at Georgia Tech, Fuentek has supported our university client’s involvement with several events of varying scope:

  • Hosting an Association of University Technology Managers® (AUTM®) Partnering Forum focused on communications technologies across several industries
  • Attending the AUTM Partnering Forum on Smart Power & Energy Storage—a small-scale event with a specific industry focus
  • Attending TechConnect, a very large expo crossing all major lines of emerging IP, venture funding, technology transfer, and more

Following up on the success of these events for Georgia Tech, the authors compiled their thoughts to share some advice with our readers.

Hosting Industry Events

One thing that has become clear in our experience over the last few years is that, while much can be learned from attending industry events, getting others to attend an event you’re hosting comes with its own set of considerations and planning.

Plan Your Schedule—and Scope—Carefully

Marketing an event—even one that may seem very straightforward—almost always takes more preparation than you’d like. Depending on the size of the event, try for at least 6 months of planning time. For larger events, shoot for a year or more, if you can swing it. For events with a hard date, you may need to adjust your scope for the event if you don’t have as much time as you’d like. For example, you might need to have fewer speakers and a smaller number of targeted break-out sessions. If you have some flexibility with dates, factor in the time you need for the type of event you’re aiming for. This might include bringing a consultant on board to help with logistics. Bottom line: Make sure your scope fits your schedule rather than trying to bite off more than you can chew in a limited amount of time.

Get Your Messaging Act Together

You want prospective registrants to have a very clear idea of the focus of the event and how attending will benefit them. For the AUTM Partnering Forum hosted in Atlanta, Fuentek helped Georgia Tech develop consistent messaging for promoting the event across multiple communication channels.

Strategically Target Key Attendees

Consider your goals and target attendee size early on. An event for 3,000 is going to have much different goals than a targeted event for 50. For example, the attendees for smaller events will likely be much more closely tied to a specific niche industry or market need. The AUTM Partnering Forum hosted at Georgia Tech illustrated this. For this event, Fuentek helped identify key companies and universities with significant activity in the industry focus areas along with a strategy for contacting them early and often through a multi-channel approach. This included email, phone calls, industry advertisements, LinkedIn posts, and other social media.

Establish Legitimacy to Spur Registrations

Especially if the event is the first you’ve hosted, getting people to register will depend on… well, getting other people to register first. Target a few key partners or industry leaders whose names and reputations will lend legitimacy to the event. Appeal to them to sign up early and request permission to highlight them as attendees—or even offer to host them as a featured speaker.

Assemble a Diverse Panel of Experts

Also, invite experts from both startups and larger established companies to present on panels. These names not only add clout to your event, but also give attendees a variety of business professionals to speak with and who can lend nuanced perspectives.

 

Attending Industry Events

Attending a technology marketing event offers ample opportunities to showcase your IP to potential investors and licensees. Here are some of our favorite tips gathered from attending both large and small events.

Only Present Your Best Techs…

… or at least the best ones for the focus of the event you’re attending. Targeted IP is more likely to stand out. Our advice: Start narrowing down your portfolio 3 to 4 months out, and then prioritize the technologies. For AUTM’s Energy Partnering Forum, Fuentek helped Georgia Tech identify its most relevant and promising technologies and developed the appropriate marketing materials, including a one-page flyer showcasing this research portfolio.

Tell the Story Beyond the IP

Know in advance who else is going to the event and what technologies are likely to interest them. And be prepared to tell the full story of your organization—not just the available IP, but also the cutting-edge research, the scientists doing the work, unique facilities, startup activity, etc. This complete picture is much more compelling than a single patent and makes it more likely for potential licensees or research sponsors to envision a long-term partnership. This preparation paid off in a big way at TechConnect: Georgia Tech is now in meaningful, ongoing deal discussions with an IP investment bank and with an international technology firm. Both of them were interested in the whole package provided by the university, not just a single technology.

Know When You Can Go It Alone… and When You Need Backup

Don’t try to navigate a huge event on your own. Smaller events where the exhibit hall is closed while panels are in progress can sometimes be handled by one person. But a larger expo, where the exhibit hall is always open, calls for at least a duo or small group. Why? You never want to risk a potential partner stopping by an unattended booth. Plus, if you’re on your own, it’s easy to get too overwhelmed to have productive conversations with visitors to the booth. Sometimes it takes a small team to put your best foot forward.

Looking for more event guidance? Check out the blog posts by Fuentek vice president Becky Stoughton with some on-point advice about marketing technologies at events. (This post is a great place to start.) Or get in touch with Danielle to discuss how Fuentek can help you achieve better outcomes with your next industry event.