Schedule

Schedule-at-a-Glance*

September 12-13, 2022
Omni Parker House Hotel
Boston, MA
*Tentative schedule, program subject to change

 

 

Day 1 - Monday, September 12

7:00 a.m. – 4 p.m. Registration
7:30 – 8:30 a.m. Breakfast
8:30 – 10 a.m. Workshops
A1: Evaluating Startups
Startups play an important role in a University’s innovative ecosystem. Evaluating a startup is both subjective and objective. A subjective determination can be made by knowing the startup faculty to be a successful scientist, the management team to be effective as evidenced by previous success stories, kind of technology, location of the company etc. Some objective methods include looking at the numerical value of the company, assets, income, and market.

Startups and academic institutions highly value their technology whereas investors and potential licensees usually lower the value. Herein lies the challenge: How do we correctly evaluate startups? 
Moderator: Hemi Chopra, University of Maryland
Panelists:
Dimitri Chernyak, Intelon Optics
Sacha Mann, Takeda
Tod Woolf, Beth Israel Deaconess Medical Center
Nigel Long, Trade Street Advisors, LLC
Dominique Verhelle, NextRNA Therapeutics

A2: IP Monetization and How to Derive Value from University Intellectual Property Portfolios
Universities often have large portfolios of unenforced and underutilized patents. Monetization of patents by universities is typically achieved through licensing by Technology Transfer Offices. However, for many universities, the revenue from licensing falls short of recouping the costs of developing and obtaining patents, often barely breaking even after considering administrative fees. Consequently, the development of large patent portfolios by universities and other research institutions can result in high costs with insufficient monetary benefits in return.

When licensing falls short of the desired results, patent owners should consider patent infringement litigation as a route to monetization. With many litigation funding arrangements, the funder pays all or nearly all litigation costs in exchange for a portion of the recovery. This funding method is a cost-effective way for universities to see additional income from their patent portfolios which can help fund improvements at the university and more research.
Moderator: Michael Siem, Goldberg Segalla
Panelists:
Abhijit Banerjee, University of Connecticut
Robin Davis, Woodsford
DJ Nag, Innovaito LLC
Stam Stamoulis, Stamoulis & Weinblatt LLC
10 – 10:30 a.m. Networking Break
10:30 – 11:30 a.m. General Session
Lessons from the Trenches: How Language in Agreements May Have Unintended Consequences on the Ability to Recover Value
Against the odds, 2020 was a good year for university technology transfer offices. Patent issuance was up. More new products were launched than in any of the previous five years. Over 10,000 license or options agreements were executed. And well over $2.5 billion in licensing revenue came in the doors. In an ideal world, licensing relationships always remain harmonious, and any company that uses a university’s IP pays fair value.

There is, of course, always the potential for things to go sideways. When and if that happens, one thing is for certain. Agreements surrounding the IP at issue will be dusted off and put under the microscope. This session will rely examine how language in employee agreements, agreements with collaborators, and licensing agreements can impact a university’s ability to recover royalties. A company accused of patent infringement may seek to challenge a patent owner —or its exclusive licensee’s— ability to maintain an enforcement action. Who qualifies as an inventor, who owns the invention, and who has rights to enforce a patent may all be in play.
Moderator: Sharon Roberg-Perez, Robins Kaplan LLP
Panelists:
Peter Sollins, Harvard University
Jason Wen, Boston College
Rajnish Kaushik, Brandeis University
11:30 – 11:45 a.m. Break
11:45 a.m. – 12:45 p.m. General Session
IP Should Not be Your Priority: How to Talk Tech Transfer to VCs
This session is a great opportunity for open discussion on how to talk technology transfer to venture capital investors, to figure out what academia's priorities should be when doing a deal with the VC world. If IP is not a priority to start with, when does it become important? When is it too early to talk to VCs? Come with an open mind and go out with clear priorities.
Moderator: RK Narayanan, Cold Spring Harbor Laboratory
Panelists:
Iva Toudjarska, Autobahn Labs
Karthika Perumal, Womble Bond Dickinson
Ceasar Anquillar, WinStar
12:45 – 1:45 p.m. Lunch
1:45 – 3 p.m. Workshops
B1: Patent Protection for Artificial Intelligence Inventions from a U.S. and European Perspective
The presentation will cover the basics of artificial intelligence and how inventions that claim AI, including machine learning and deep learning, are treated by the USPTO and the EPO. The presentation will describe the USPTO perspective and will cover recent cases, including PTAB opinions, where inventions are found to be patent eligible and patent ineligible. For the EPO perspective, Peter Arrowsmith of Gill Jennings and Every will present a survey of EPO case law on subject matter eligibility.
Speakers:
Peter Arrowsmith, Gill Jennings & Every LLP
Greg Hunt, Jenkins Wilson Taylor & Hunt

B2: Managing an IP Portfolio in the New University-Startup Environment
Working with startups presents new challenges and opportunities for effective management of university IP portfolios. This panel will begin by discussing how decision making on IP protection (e.g., initial filings, continued prosecution, and portfolio pruning) has evolved as startups become more engaged in the process. Topics include how to effectively educate and foster relationships with startups so as to generate more valuable data for informed decision making. The panel will further discuss how to best utilize outside patent counsel as a partner in managing and educating these new relationships while avoiding conflicts of interest. Best practices and issues relating to startup IP portfolio management will be illustrated with case studies, compared to processes in large corporations, and viewed through the lens of the intricacies of the patent system, current patent laws and PTAB/IPR decisions in 2022.
Moderator: Brendan Serapiglia, Gates & Cooper LLP
Panelist:
Curtis Broadbent, University of Rochester Ventures
Jonathan Hromi, MIT Technology Licensing Office
3 – 3:30 p.m. Networking Break
3:30 - 3:45 p.m. AUTM Chair Address
Speaker:
Laura Savatski, University of Louisville
AUTM Board of Directors, Immediate Past Chair
3:45 - 5:00 p.m. Plenary I: Strategies to Promote the Diversity of Innovators and the Success of Their Contributions to the Collective Competitiveness of American Innovation to Impact Health
The Proof-of-Concept Network Action Committee on Equity, Diversity, and Inclusion (PACE) works collaboratively with the NIH to proactively identify resources, share best practices, create synergies and efficiencies, and take action to promote the diversity of innovators and the success of their contributions to the collective competitiveness of American innovation. PACE works by leveraging our collective power with a shared commitment to advancing equity and inclusion, and an appreciation for the rich history, backgrounds, and cultures of people that make up our regional innovation ecosystems. This session will provide a discussion of challenges faced in this area and strategies PACE is taking to ensure DEI in early stage technology development and commercialization to impact health.
Moderator: Kathleen Rousche, NIH/NHLBI
Panelists:
Suguna Rachakonda, Dewpoint Therapeutics
Lena Leonchuk, RTI International 
Kayla Meisner, Kentucky Commercialization Ventures
Pragati Sharma, Rutgers, Office for Research - Innovation Ventures
Renata Pasqualini, MBrace Therapeutics
5 - 6 p.m. Networking Reception

 

 

Day 2 - Tuesday, September 13

7:30 a.m. – 4 p.m. Registration
8 – 9 a.m. Breakfast
9 – 10:15 a.m. Workshops
C1: Are Universities Winning the Global War on Innovation?
Intellectual property is key measure for success of any economy. In 2021 more than half of the US patents were awarded to non-US entities. If we look at the top patent holders of 2021, there were four multinational companies with roots outsides of the US in the top five. Only two universities showed up in the top 10 for impact of publications, Harvard University and University of Michigan for publications from 2016-2019. If we compare these number with results from 2007-2010, there were six universities in the top 10. Does that mean we are losing our edge in research and innovation?

These are probably early signs that we need to invest more in both our fundamental research as well as corporate R&D. Ultimately innovation drives our economy and patents are a great measure of assessing the health of our economy. If we do not pay attention to the warning signs, we might have to pay a bigger price down the road. The feeling is sinking in among patent experts that we no longer have the monopoly on innovation. If you take patents as a proxy to innovation, there is a lot going on outside of the US in the areas which will define our future, such as artificial intelligence, machine learning, blockchain, biologics and medical devices. This panel will discuss the successes and failures we have had with various patent strategies as well the predictions for the future.
Moderator: DJ Nag, Innovaito LLC
Panelists:
Andrei Iancu, Irell and Manella
Ian McClure, University of Kentucky

C2: Brainstorming Startup Formation with Your Faculty
Many faculty members these days embark on company creation which is great because for early stage science driven startups, they can be the best stewards of the technology. However this journey is fraught with many issues that they have perhaps not paid enough attention to. The role of the technology transfer officer in educating faculty members in navigating this path is very critical. This session will highlight top areas of discussion that technology transfer officers must have with such entrepreneurial faculty members at varying stages of this process. Speakers representing academia and early seed venture community will provide insights from their experience helping faculty launch companies.
Moderator: Sadhana Chitale, NYU Langone Health
Panelists:
Nadim Shohdy, RA Venture
Colm Lawler, Boston Children's Hospital
10:15 – 11 a.m. Networking Break
11 a.m. – 12:30 p.m. Plenary II: Reverse Pitch
The Reverse Pitch session provides a unique venue for members of industry and academia to socialize, connect and discuss areas of interest. Industry partners are each given 5-7 minutes to present developing technologies to their academic and governmental counterparts, share tips on collaborating with their companies, and discuss their partnering interests.
Moderator: John Zurawski, Ballard Spahr
Industry Partners Include: Henkle, Novo Nordisk, Takeda, CSL Behring, Merck, and more!
12:30 – 1:45 p.m. Lunch
1:45 – 3 p.m. Workshops
D1: Faculty Inventions Lead to a Robust Academic Pipeline
The process of technology transfer starts with the receipt of an invention disclosure submitted to the technology transfer office by the inventor. However, the fun begins when the invention disclosure is evaluated by the technology transfer professional and her or his interactions with the inventor. Two possibilities exist, one where the inventor is very interested in the technology transfer process and the other being the inventor who is engrossed in his/her science and knows little about the technology transfer process and is not really interested in it. What is common about the two possibilities is that both inventors love science and especially, their science. It is the language of science that allows the technology transfer professionals to interact with the inventors.

The goal is to establish a clear line of communication between the licensing professional and the inventor such that the inventor is interested in the technology transfer process and becomes an active participant in the same. Successful interactions lead to more invention disclosures that in turn lead to a robust pipeline of inventions, eventually resulting in products. Keep the inventors happy, for in that lies the ability of the organization to keep its product pipeline in good standing.
Moderator: Hemi Chopra, University of Maryland
Panelists:
Ara Nazarian, Beth Israel Deaconess Medical Center
Tod Woolf, Beth Israel Deaconess Medical Center
George Xixis, University of Massachusetts Medical School
Peter Fasse, Fish & Richardson

D2: Providing Trainees with the Skills We Want to Hire
This moderated panel discussion will explore the state of technology transfer and business development skills education. Panelists will discuss and evaluate the current state of graduate/post-graduate education regarding the prerequisite skills and knowledge of technology transfer. This will highlight recent examples of educational programs for those interested in technology transfer, including fellowship programs, internships within university TTOs, and the growing role of startups and entrepreneurialism.

Attendees would leave this session with new perspective on the importance of affording opportunities for educational experiences to graduate students and postdoctoral scholars who may be interested in a career in technology transfer. Further, attendees will have the opportunity to critically evaluate the evolving set of skills that are necessary to succeed in a technology transfer role, and then compare these skills to current educational offerings to identify gaps that should be filled. Finally, the panel will spotlight characteristics of valuable opportunities that benefit the development of up-and-coming technology transfer professionals.
Moderator: Alex Turo, Rutgers University
Panelists:
Laura Schoppe, Fuentek, AUTM Foundation Board
Mitchell Fullerton, Columbia Technology Ventures
Jen Rice, Takeda
Meghan McGill, Harvard University
3 – 3:30 p.m. Closing Networking Break
3:30 pm Meeting Adjourns

 

Gold Sponsors

Longford Capital
Massachusetts Biotechnology Council
Nixon Peabody LLP
TreMonti

Bronze Sponsors

Wellspring
Berggren
Fish & Richardson
Thomas | Horstemeyer LLP
Jenkins, Wilson, Taylor & Hunt, P.A.
Merck
Winchester Capital

Contributing Sponsors

Marshall, Gerstein & Borun LLP
Michael Best
Innovaito
TekCapital
Northeastern Center for Research Innovation
McKee Voorhees Sease PLC
Autobahn Labs
Trade Street Advisors, LLC
Fox Rothschild LLP
CSL Behring
Carter, DeLuca & Farrell LLP
kppb
Hodgson Russ