Author: Marie Powers

In less than three years, technology transfer at the University of Delaware (UD) in Newark has evolved from an acknowledged bare-bones licensing effort into broad-scale commercialization activity. UD President Patrick Harker, who took the reins in July 2007, provided the initial vision that the university should “play a critical role in the prosperity of the community of Newark, our state, and our region,” says David Weir, PhD, director of the Office of Economic Innovation and Partnerships (OEIP). “With that in mind, we came to the conclusion that we needed a portal or gateway to allow the outside world to gain access to the university’s knowledge-based assets and, at the same time, to allow the university and its assets out into the outside world.”

Translating the concept of a two-direction gateway into reality took a giant leap forward in July 2008 when the university launched OEIP as the dedicated core of its entrepreneurial, tech transfer, and business development strategy. Previously, the university’s tech transfer capabilities were embedded in the UD Research Office. The creation of OEIP put these activities “into a business culture,” says Weir. Two central components of OEIP are the IP Center and the IP Asset Development Group. The IP Center manages all UD-developed IP, driving invention disclosures, patent application filing, and patent procurement. The IP Asset Development Group’s primary role is to “extract value” from the university’s IP portfolio, says Weir, including commercialization of the portfolio through licensing, marketing, and start-up activities. A detailed article on the UD gateway approach appears in the December 2009 issue of Technology Transfer Tactics. To get access to this complete article and become a subscriber, including access to the entire archive of back issues, CLICK HERE.

The Biodesign Institute at Arizona State University is securing $5 million to $10 million to fund the first start-up companies expected to move later this winter into its new Biodesign Impact Accelerator. “We expect the first three to five start-ups will enter the Impact Accelerator by February of 2010,” says Joe Caspermeyer, a spokesperson for the Biodesign Institute. Those start-ups — to be selected from proposals now under review by the accelerator’s executive committee — will be designed to commercialize the institute’s research discoveries and technologies. The firms will have access to up to 8,000 square feet of research space at the Biodesign Institute, located on ASU’s Tempe, AZ, campus, and a 25,000-square-foot floor in nearby SkySong, the ASU Scottsdale Innovation Center.

Over the accelerator’s first few years of operation, additional space will be built to house 10 to 15 companies, according to Caspermeyer. The funds now being raised will be supplemented in the future, with a goal of $25 million for infrastructure improvements and technical support. The accelerator will fund and nurture companies deemed capable of capitalizing on the institute’s innovations in personalized medicine, diagnostic systems and devices, cancer research, vaccine platforms, alternative energy solutions, bioremediation technologies, and national security initiatives.

Source: GenomeWeb

On Wednesday, January 6, our distance learning division presents Successful Outsourcing for Tech Transfer Organizations. This detailed session will focus on how to implement an effective outsourcing strategy to reduce your backlog of invention files, get more deals done, and boost faculty relations. A case study of Texas Tech University’s outsourcing experience will provide valuable takeaways and lessons learned. CLICK HERE for full details.

Also coming soon:

• January 27, 2010: “Shrink Wrap” Your University’s Technologies for Industry: Packaging Your Innovations to Minimize Corporate Risk and Extract Optimum Licensing Value.
• February 9, 2010: Patent Prosecution: Best Practices for Reducing Costs While Improving Patent Quality
• March 9, 2010: Tech Transfer Marketing on a Shoestring: Guerilla Tactics in a Budget-Cut World

The U.S. Department of Energy plans to invest up to $366 million to establish and operate three Energy Innovation Hubs focused on accelerating R&D in three key energy areas. Each hub, to be funded at up to $122 million over five years, will bring together a multidisciplinary team of researchers to shorten the path from scientific discovery to technological development and commercial deployment of highly promising energy-related technologies. “Given the urgency of our challenges in both energy and climate, we need to do everything we can to mobilize our nation’s scientific and technological talent to accelerate the pace of innovation,” says DOE Secretary Steven Chu.

The hubs are part of a broad-based clean energy research strategy that includes three complementary initiatives:

• The Energy Frontier Research Centers launched by the DOE’s Office of Science will support multi-year, multi-investigator scientific collaborations focused on overcoming hurdles in basic science that block transformational discoveries.
• The department’s recently formed Advanced Research Projects Agency-Energy (”ARPA-E”) will use an entrepreneurial funding model to explore potentially transformative technologies.
• The Energy Innovation Hubs will establish larger, highly integrated teams to conduct high-risk, high-reward research and seek to solve priority technology challenges from basic research to engineering development to commercialization readiness.

The three DOE Energy Innovation Hubs will focus on:

• production of fuels directly from sunlight;
• improvement of energy-efficient building systems design; and
• computer modeling and simulation for the development of advanced nuclear reactors.

The DOE will provide $22 million in the first year to establish each hub and up to $25 million per year for the following four years to support operations. Information on the DOE’s hub implementation plan can be found at http://hubs.energy.gov.

Source: Ethanol Producer Magazine

A concept to create an open, competitive licensing system for university innovators — the brainchild of researchers at the Ewing Marion Kauffman Foundation in Kansas City, MO — is one of Harvard Business Review’s “Ten Breakthrough Ideas for 2010.” Current restrictions imposed on the commercialization of federally funded discoveries in the U.S. slow the diffusion of new technologies, according to an HBR article by Robert E. Litan, vice president for research and policy at the Kauffman Foundation, and Lesa Mitchell, vice president for innovation. Such limitations are detrimental to the U.S. economy and to the universities, they argue. “We know that there are many vital innovations and discoveries languishing in university labs because of a suboptimal licensing system at many universities,” Litan says. “One simple amendment to the Bayh-Dole Act would allow faculty members to choose their own licensing agents/experts and bring these discoveries to market quickly.” Mitchell and Litan argue that if faculty members could choose their own licensing agents, increased competition would speed up the commercialization of new technologies while allowing universities to collect the same royalties as under the current system.

Source: TD Ameritrade

Harried holiday shoppers should welcome a security technology developed at the U.K.’s Oxford University. Bill Roscoe, PhD, professor of computing science and senior research fellow, is developing technology that will allow shoppers to make payments using their mobile phones. The technology is designed to work in almost all situations: person-to-person, in a shop or restaurant, at a vending machine, online, or as part of a telephone conversation. “We have technology which enables anyone to easily create a secure connection between two devices,” Roscoe explains. “It can work via Bluetooth, WiFi, the internet, or across ordinary telephone or SMS connections.”

The core of the technology is a security protocol that enables strong cryptographic keys to be created with the least possible work. “The protocol prevents anyone from doing any searching to break into the transaction,” Roscoe explains. When using the system, a payer would check whether a short numeric code (4-8 digits for most applications) generated within his or her phone is the same as the one generated by the payee. Since the number is random, it does not have to be secured. The process ensures that the customer’s mobile is correctly connected to the store or individual mobile receiving the payment, which can be made through electronic cash or credit stored on a mobile phone, authorization of a credit card payment, or instruction to a bank to pay a merchant or individual a specified amount. Payment occurs without the exchange of sensitive information such as credit card numbers or PINs, and the phones do not need hardware modifications. “The technology puts the payer in charge of the connection and lets him or her have direct control over how much is paid and to whom — very much like a check,” Roscoe says. Isis Innovation, U-Oxford’s tech transfer company, is working with Roscoe and seeking partners to commercialize the technology.

Source: PhysOrg.com

Here’s another innovation with a holiday spin. A palm-sized modular toy that was created by a fourth-year industrial design student in the College of Architecture and Urban Studies at Virginia Tech has been awarded a design patent and is available for licensing through Virginia Tech Intellectual Properties Inc. (VTIP). Created by Kelly Harrigan of Manassas, VA, the toy took the top prize last year in a competition for wooden game or design objects for ages 3 to 99 hosted by Swiss toymaker Naef Spielzeug. Harrigan layered the wooden shapes of her toy with a type of ceramic magnet called ferrite – thus, the toy’s name “Ferra.” The modular design “allows for smooth movement between pieces and the opportunity to create several configurations,” Harrigan adds. When laser cut, the toy can be produced with little material waste.

Source: Newswise

They may not work with X-Box, Wii, or PlayStation and the entertainment value is definitely not a selling point, but three great software tools specifically designed to assist tech transfer and licensing professionals may be just the ticket for last minute TTO stocking stuffers. All three are offered at discounted and affordable rates through partnership with 2Market Information, parent company of Tech Transfer E-News.

• Competitive Analysis Valuation (CAV) software provides a straightforward method for determining IP value. Created by nationally recognized IP law expert Ted Hagelin, the CAV Software yields clear and logical valuation results through a single program platform for negotiation, planning and reporting purposes. CLICK HERE for details.
• ktMINE provides hands-on access to an incredibly rich source of royalty rate data in more than 6,000 searchable full-text license agreements and detailed agreement summaries. This online, interactive IP database allows you to quickly find true market comparables and benchmarks. CLICK HERE for details.
• The US FDA Regulatory Calculator provides users with a potential FDA predicate, regulation product code, and the classification and regulatory pathway associated with a medical technology. With this tool, you’ll save hours in initial research and eliminate the need for outside experts early in the process – as well as minimize the potential for miscalculations with due diligence, technology assessment, planning, and commercialization. CLICK HERE for details.

The New York City-based Juvenile Diabetes Research Foundation will work with the Johnson & Johnson Corporate Office of Science and Technology and its affiliates to speed the development of drug targets and pathways that promote the survival and function of insulin-producing cells in individuals with diabetes. The joint program plans to fund research at academic centers around the world that could eventually lead to novel drug targets and industry collaborations for the treatment of type 1 diabetes. The program will solicit grant proposals from academic and medical research foundations for one- or two-year research projects focusing on agents and compounds that safely promote the survival and function of beta cells — cells within the pancreas that produce insulin and are lost in the immune attack that causes type 1 diabetes. Preserving or maintaining beta cell mass and activity in people with type 1 diabetes can reduce insulin requirements, enable easier and more effective control of the disease, and lower the risk of short- and long-term complications. “This program will clearly help accelerate the translation of basic research into therapies useful in the treatment of diabetes,” says Alan J. Lewis, PhD, president and CEO of JDRF.

Source: PR Newswire

A start-up is by definition lacking in experience. And though a few lucky ones have veteran leaders who’ve been through the process before, that’s the exception rather than the rule when it comes to university spinouts. It stands to reason, then, that start-up managers are in dire need of best practices, and that’s exactly what Georgia Tech’s Advanced Technology Development Center (ATDC) is delivering. The center has posted a series of best practice documents on its website in an attempt to reach out to more of the region’s start-ups than it can work with directly. “We’ve been trying to reach beyond the bricks and mortar of Georgia Tech, to figure out how to help accelerate companies that for some reason aren’t good candidates for our incubator,” says Stephen Fleming, vice provost of Tech’s Enterprise Innovation Institute and acting director of ATDC, a start-up accelerator. “How do we scale and reach people who we don’t share a water fountain with? One avenue is a better set of resources. These best practices are things we’ve been sharing with our existing clients for a long time,” Fleming comments. Several of those best practices – focusing on elevator pitches, business plan summaries, and investor communications – are detailed in an article in the December issue of Technology Transfer Tactics. For subscription information, CLICK HERE.

Colorado State University’s clean energy commercialization arm, Cenergy, has co-founded Prieto Battery to manufacture charge insertion (Li-ion) batteries using a 3D structure to enable a larger functional surface area. The resulting batteries are cheaper, up to 1,000 times more powerful, and 10 times longer lasting than traditional batteries, according to CSU. Using an electrodeposition process, Amy Prieto, PhD, assistant professor of chemistry, grows nanowires that comprise the anode — the first key piece of the battery. She uses electrodeposition again to coat the tiny structures with a polymer electrolyte. Cathode material then is added around the coated nanowires, resulting in a three-dimensional battery. The nanowires that make up the anode cover a surface area that is 10,000 times greater than a traditional battery, Prieto says. The high number of three-dimensional wires creates a much larger functional surface area than other current batteries. According to Prieto, the electrodeposition manufacturing method is fast and inexpensive, allowing the technology to be scaled up to create batteries that can be used for everything from pacemakers to automobiles.

Prieto Battery is the first start-up produced by Cenergy. Prieto, who also serves as chief scientific officer for the new company, expects to demonstrate the first prototype of the battery by early next year. In February 2009, CSU’s TTO applied for a patent that encompasses all Prieto Battery technology. The patent has been exclusively licensed to the start-up. Bohemian Asset Management in Fort Collins, a privately held division of the Bohemian Cos., supplied the first round of funding for the company.

Source: Green Car Congress

Getting more out of your patent budget is more critical than ever in the current economic climate. And though these costs may seem largely outside your control, there are dozens of specific strategies you can adopt to significantly reduce your legal bills while improving overall patent quality. Technology Transfer Tactics’ Distance Learning Division has secured two top patent attorneys with numerous TTO clients to guide your efforts and stretch the dollars you spend on patent research, applications, filings and prosecution. On February 9, 2010, join Jean Baker, PhD, JD, head of the Intellectual Property Group at Quarles & Brady, and Jack Cook, JD, leader of the firm’s Research Institutions-Industry Team, for Patent Prosecution: Best Practices for Reducing Costs While Improving Patent Quality. They’ll provide cost-saving insights gained from years of working closely with and advising TTOs worldwide, with a singular focus on getting more out of your legal team, spending less, and enhancing patent quality even as billings decline. CLICK HERE for details and to register.

And don’t miss these outstanding audioprograms coming in January:

• Successful Outsourcing for Tech Transfer Organizations, January 6, 2010
• “Shrink Wrap” Your University’s Technologies for Industry: Packaging Your Innovations to Minimize Corporate Risk and Extract Optimum Licensing Value, January 27, 2010

Cascade ProDrug, Inc., and the University of Oregon, both in Eugene, have completed an agreement that gives the company exclusive ownership of technology to create medicines that “turn on” in oxygen-starved tissues. The innovation could lead to improved treatments for cancer and other diseases marked by excessive cell growth. Under the terms of the deal, Cascade ProDrug becomes sole owner of a bundle of experimental compounds, technical data, and patent rights that previously belonged to Novacea, Inc. — a publicly traded corporation that merged with Transcept Pharmaceuticals, Inc., in February 2009. Novacea had generated the technology package focusing on a biochemical mechanism known as “hypoxia activation” during an R&D collaboration with the laboratory of John Keana, PhD, professor of synthetic organic chemistry, medicinal chemistry, and polymer surface functionalization at UO and the holder of more than 70 U.S. patents. When Novacea changed its R&D focus in 2008, UO acquired the technology to create the nucleus of a new spinout. The Cascade ProDrug deal provides UO with an equity stake in the company and royalties from any patented products that reach the marketplace. Cascade ProDrug also provided Transcept Pharmaceuticals a consideration package as part of the agreement.

Cascade ProDrug is developing targeted therapeutics against hyperproliferative diseases. The company’s initial focus is on anti-cancer medicines activated by tumor hypoxia. The platform technology acquired from UO enables the company to reformulate existing chemotherapy agents with the potential to make them safer and more effective in treating solid tumors. The body of work completed by Novacea and UO provides Cascade ProDrug a head start on a series of lead compounds, and Cascade ProDrug intends to contract research for final stages of preclinical trials and push toward the filing of an investigational new drug with the U.S. Food and Drug Administration.

Source: Newswise

Two months after the Nanyang Technological University (NTU) signed a Memorandum of Understanding in Paris with the National Center for Scientific Research (CNRS) and the Thales Group of Companies to set up a joint research laboratory, the three parties are inaugurating the CNRS-International-NTU-Thales Research Alliance (CINTRA) Laboratory at NTU. The CINTRA Laboratory aims to develop nanotech innovations for computing, sensing, and communications applications. Over the next two years, about 50 Singapore and French researchers will work on critical challenges faced by existing technologies in the microelectronic and photonic industries to develop innovations that will meet future commercial, defense, and security needs. The application-driven challenges include the development of enabling technologies such as an imaging chip to process and display real-time multi-dimensional information and a low-power signal processing chip capable of super high-speed performance of a trillion bits (terabits) per second or more. The alliance brings together a research center, a university, and a private company to capitalize on fundamental research, applied research, and technology transfer, according to Olivier Caron, French Ambassador to Singapore. “This model should not only drive breakthroughs in innovation but should also result in bringing these innovations to the market,” Caron says.

Source: Nanowerk

The Chicago-based Intellectual Property Exchange International — the first financial exchange to sell patent licensing rights — is poised to launch early next year. In return for a share of the revenues, the exchange will promote the patent and sell the license rights in individual units issued like stocks. The exchange also will enforce its protections with litigation, when necessary, and publish sales and price data online. “It’s like an initial public offering for a patent,” explains Jim Malackowski, chief executive of Ocean Tomo, the Chicago-based merchant bank backing the exchange. The exchange has soft commitments from four or five companies and expects to have 10 to 15 “industry leaders” pledged by February, according to Gerard Pannekoek, CEO of the patent exchange and former president of the Chicago Climate Exchange.

Some in the patent industry worry that transactions on the exchange will generate ripples of litigation as it pursues profits from its accumulated portfolio. “Whenever anybody aggregates patents, there’s always that suspicion,” says Patrick Thomas, principal at 1790 Capital, a hedge fund that invests in companies based on their IP. However, Ocean Tomo’s current business based on valuing companies’ patent assets lends credence to the new venture, Thomas adds. And the exchange could provide insight into the often murky world of patent valuation. “Any time that you are in a bilateral agreement with another party you never know whether you got a great deal,” Pannekoek says. “An exchange will offer that price transparency to the market and ultimately establish the real value of a patent.” The exchange may be most useful for small companies or universities without the means to promote or enforce patents on their own. “It’s really a very interesting and creative model,” says Ron Laurie, managing director of Inflexion Point, an IP-oriented investment bank in Palo Alto, CA.

Source: CNN Money

Through a new partnership with ktMINE, 2Market Information, parent company of Tech Transfer E-News, is offering hands-on access to an incredibly rich source of royalty rate data, full-text license agreements, and detailed agreement summaries. ktMINE is an online, interactive IP database that allows you to quickly find true market comparables from a goldmine of license agreements and documents. Pain-stakingly mined from publicly available sources, this powerful database tool will help you:

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Case Western Reserve University has granted an 18-month, exclusive option to Cleveland, OH, start-up Thermalin Diabetes, Inc., for a portfolio of insulin analogs. The company must reach certain milestones to exercise its option to obtain an exclusive license on therapies designed to help patients with diabetes. The potential to improve the treatment of Type 1 and Type 2 diabetes results from the work of Michael Weiss, PhD, who chairs the biochemistry department at Case Western Reserve’s School of Medicine. His insulin analogs are faster-acting with fewer side effects, stable without refrigeration, and long-acting with lower potential cancer risks than conventional treatment, according to a university release. The insulin analogs will offer attractive alternatives for patients and may revolutionize the use of insulin pumps, according to Joseph Jankowski, Case Western Reserve’s associate vice president for technology management in the university’s TTO. “This is one of the coolest technologies that we’ve seen because of the potential to serve mankind,” Jankowski says. Thermalin Diabetes has closed more than $275,000 in seed financing from individual investors and received a $254,000 Phase I Small Business Technology Transfer Grant from the National Institute of Diabetes and Digestive and Kidney Diseases to support the development of one of the insulin analogs through large animal testing.

Source: PhysOrg.com

A research team at the University of Nebraska Medical Center in Omaha has developed a mouthwash formulation that may provide long-term protection against tooth decay. Led by Dong Wang, PhD, associate professor of pharmaceutical science in the UNMC College of Pharmacy, the team developed a drug delivery system to carry antimicrobial agents directly to teeth. A major contributing factor to dental cavities is overpopulation of acid-producing bacteria in biofilm present on the tooth surface, eventually causing dental decay. Wang’s formulation would bind to the tooth surface and gradually release antimicrobials against cavity-forming bacteria such as Streptococcus mutans. “The beauty of this design is the simplicity,” he says. “All one may have to do is their routine oral hygiene procedure and then rinse with the formulation that we have developed. It could protect the teeth over a long period of time.” A study demonstrating the formulation was published in Antimicrobial Agents and Chemotherapy.

Such a product also could have far-reaching implications for older adults in nursing homes who don’t have good access to dental care and for those at increased risk of heart disease. A Patent Cooperation Treaty (PCT) patent application has been filed on the technology through UNeMed, the technology transfer arm of UNMC. Wang and colleagues are seeking funds to support a clinical trial and a cGMP (current Good Manufacturing Practice) facility to manufacture the formulation.

Source: Health News Digest

Dave Poulsen, PhD, research associate professor, and his employer, the University of Montana in Missoula, hope to make a lot of money on meth. You read that right. Poulsen’s methamphetamine application, co-developed with Nick Chandler, MD, a former Missoula neurosurgeon, could generate millions in royalty payments for the university while extending and improving the quality of life for stroke victims and those who suffer traumatic brain injuries. Pharmaceutical-grade meth — not the kind cooked up from household cleaning products by addicts or street dealers — is a U.S. Food and Drug Administration-approved drug that has been used for decades to treat ailments such as narcolepsy, attention deficit disorder, and obesity. Poulsen, who is licensed to use the compound for research, discovered the meth is something of a miracle drug for rats that have suffered strokes, effectively protecting brain cells from dying off and returning the animals to near-normal function. Poulsen believes the same could be true for humans, and FDA-approved human clinical trials based on his findings begin early next year. Poulsen is so confident about his research that “if I ever had a stroke or traumatic brain injury, I’d want to be treated with this stuff,” he says.

Source: MATR News

Markets may be down in the U.S., but TTOs can find ample licensing opportunities abroad. A case in point: Roswell Park Cancer Institute (RPCI), in Buffalo, NY, recently licensed its photodynamic therapy (PDT) technology to pharmaceutical companies in India and China. “We’ve found that, overall, the capacity for risk tolerance is higher in Asia than in the U.S. or Europe,” says Richard Matner, PhD, MBA, director of technology transfer & commercial development at RPCI. “Assets or free capital move projects forward, and there’ a higher level in China and India. Right now China’s got $2 trillion in the bank and a straightforward mission from the Premier to bring various therapeutics into China. We’ve been a little ahead of the curve in that we’ve been negotiating in Asia for some time.”

Tapping into this new terrain for licensing deals requires an entirely different approach than what’s used in the U.S. or Europe. Even in India, Matner explains, the licensing environment is not much different than the norm, but not so in China and other Asian countries. India, he says, “is more like the U.S. in terms of commercial thinking. We’ve found that companies in India are full of ex-patriots. They have a really good handle on the FDA process there. But because of that, you don’t get as good a deal as you might in China.”

Making the right connections is the key to securing international licensing deals, he adds, and in China personal contact and relationship-building is perhaps even more critical than anywhere else on the planet. One connected individual on the ground can be more effective than hundreds of calls, e-mails, and other marketing efforts. “Our contact essentially makes all the [subsequent] contacts for us in China, which gives us a quick [path to licensees]. Essentially, then we could go directly into China and meet with the right people immediately. It’s not like Europe; in China, it’s all about a personal relationship. That’s the way they do business. A contract on paper is one thing, but it’s more important to have a personal relationship and face-to-face meetings.” A detailed article on tapping into Asian licensing markets appears in the November issue of Technology Transfer Tactics. For subscription information, CLICK HERE.