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Tuesday, July 18
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| 7:30 a.m. – 4:30 p.m. |
Registration |
| 7:30 a.m. – 8:30 a.m. |
Breakfast |
| 8:30 a.m. – 9:45 a.m. |
Concurrent Sessions:
Leveraging the University-Venture Capitalist Relationship
Interaction between university tech transfer offices and venture capital firms has grown considerably over recent years. Some venture capitalist firms exert significant influence on campus, through managing/financing incubators and hosting educational events. This panel will discuss the benefits of working closely with venture capitalist firms, the potential conflicts that may arise, and how to best manage the relationship to maximize positive outcomes for the university. The panelists will further discuss how university licensing officers can learn to think and evaluate IP like a venture capitalist. For example, there are many situations where the technology might be commercially valuable, but faculty are not interested in doing a startup. Insights from venture capitalists may shed light on how to evaluate such IP.
Intersection of Patent Protection and FDA Clearance for Medical Devices
Regulatory clearance and patent protection are key milestones for the success of any medical device. While the legal pathways to achieve each are distinct, there are important areas of interplay between the two. This session will address the various routes to attaining FDA clearance/approval for medical devices, potential impacts on patent protection and patent term, and how to navigate these processes in the university technology transfer setting.
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| 9:45 a.m. – 10:00 a.m. |
Transition Break |
| 10:00 a.m. – 11:00 a.m. |
Concurrent Sessions:
Data Licensing – Pros, Pitfalls and the Overall Value Proposition
Learn the pros and pitfalls of licensing animal, agriculture, and human health -related data, including: the overall value proposition that supports university-industry collaboration that helps answer the question, "why go there"?; properly identifying who owns the data; Federal rights; University IP policy impact; ethical considerations; data archiving, retention and de-identification (human); Federated models; differentiated licenses; exclusive v nonexclusive data license situations; use & field restrictions; third party considerations; derivatives coverage; and distribution of royalties, along with a quick example of a case study, etc.
From Provisional to Utility
Congratulations! We just filed a provisional…. Now what? What happens during the next 10 months? What is expected of the inventors, the TTO office, outside counsel? This session will be filled with best practices as we share different ideas and approaches to making that all important decision – to convert or not to convert!
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| 11:00 a.m. – 11:30 a.m. |
Networking Break |
| 11:30 a.m. – 12:30 p.m. |
Concurrent Sessions:
How to Talk with Your Administration on Prudent Management of University IP
Unlocking value and generating revenue from patented technology has taken a mainstream position in technology transfer and commercialization. The fact is that some corporations are using university issued patents in products on the market, sometimes intentionally. The commercialization obligation under Bayh-Dole requires that income from subject IP be shared with inventors and, very importantly, cycled back into more research in order to produce more technologies for the public good. University administrators are now considering this to be a mainstream activity. How does a university go about discovering the hidden or less obvious assets which could be licensed? How does the research institution or its spinoff companies balance strategic interests in deciding what actions to or not to take? How do any of the relevant stakeholders’ fund or finance these activities that can cost in the tens of millions of dollars?
Evolving IP Strategy for Startups
This panel will explore IP considerations in acquiring, spinning off, and starting-up new businesses running on new tech. To aid you, a playbook will be provided for each stage of the transaction—technology development, strategy, diligence, negotiation, agreement, integration, maintenance, and exit. With these resources, you will be on your way to identifying valuable IP and avoiding legal and technological hurdles in expanding business ventures. |
| 12:30 p.m. – 1:45 p.m. |
Lunch |
| 1:45 p.m. – 3:00 p.m. |
Concurrent Sessions
Licensing Materials, ‘Know-How,’ Software, and Other Non-Patent Items
The panel will share ideas and past success stories and pitfalls about licensing inventions outside of patent rights. The Bayh/Dole Act has been an awesome tool enabling technology transfer and bettering the lives of millions; but by nature of the era in which it was drafted, it is patent centric, and patent costs have increased, while patent eligibility has diminished under section 101. Industry and technology transfer practitioners are evolving to a more nuanced view of IP and the time is ripe for a discussion about how to license beyond the patent rights.
Many TTOs patent IP before offering it for license because a patent grants exclusive rights to sell that specific invention or idea, protecting and benefiting inventors and the institution. Despite this protection, TTOs often wait to market the invention until there is an inventor publication, or patent publication. This works well for the bulk of federally funded basic science research, the desired outcome of the Bayh/Dole act; however, there are other ways you can license ideas without the expensive and time-consuming patent process. Make a good non-enabling pitch and marketing materials you share with the businesses you are interested in working with, in hopes of signing a non-disclosure or confidentiality agreement (NDA, CDA), and share this information on your TTO website, and there are also specific online marketplaces for many innovations.
Getting TTO Licensing Professionals Ready for the New European Patent System and UP/UPC Checklist
Are your license and inter-institutional agreements properly drafted to take into account the new European patent system? If you don´t know the answer to this question, it´s very likely that it´s "no". Under the new system (which should be well underway when the Central Region Meeting takes place), the interests of licensors and licensees are not as aligned as they are under the current system. Thus, after providing an overview of the new European patent system, this session will focus on specific recommendations for modifying certain provisions in license and collaborative agreements mainly from the point of view of a university licensor. For example, agreements should account for the party that is responsible for deciding strategic patent prosecution issues. In addition, litigation provisions need to be modified so that the university licensor can retain control over litigation strategy and avoid pitfalls inherent in the new system. The session materials also will include a checklist of the main issues for easy reference. |
| 3:00 p.m. – 3:30 p.m. |
Networking Break |
| 3:30 p.m. – 5:00 p.m. |
AUTM Central Region Trivia Contest
If you think you have what it takes, or just want to meet some new people, join us for what promises to be a fun hour or two. Who knows, you may even learn something. Charles Valauskas and his merry band of graders return with a few more tricks to keep the crowd entertained at the perennial favorite returning for its 16th year. |
| 6:30 p.m. – 9:00 p.m. |
Offsite Reception |