|7:00 a.m. – 4 p.m.
|7:30 – 8:30 a.m.
|8:30 – 10 a.m.
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
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
Abhijit Banerjee, University of Connecticut
Robin Davis, Woodsford
DJ Nag, Innovaito LLC
Stam Stamoulis, Stamoulis & Weinblatt LLC
|10 – 10:30 a.m.
|10:30 – 11:30 a.m.
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
Peter Sollins, Harvard University
Jason Wen, Boston College
Rajnish Kaushik, Brandeis University
|11:30 – 11:45 a.m.
|11:45 a.m. – 12:45 p.m.
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
Iva Toudjarska, Autobahn Labs
Karthika Perumal, Womble Bond Dickinson
Ceasar Anquillar, WinStar
|12:45 – 1:45 p.m.
|1:45 – 3 p.m.
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.
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
Curtis Broadbent, University of Rochester Ventures
Jonathan Hromi, MIT Technology Licensing Office
|3 – 3:30 p.m.
|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
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.