Schedule

Schedule-at-a-Glance*

November 7-8, 2022
Portland Marriott Downtown Waterfront .

Portland, OR
*Tentative schedule, program subject to change

 

 

Day 1 - Monday, November 7

7 a.m. – 5 p.m. Registration
7:30 – 8:30 a.m. Breakfast
8:30 – 8:45 a.m. AUTM Board Chair Address
Speaker:
Ian McClure, University of Kentucky; AUTM Board Chair 
8:45 – 10 a.m. Plenary I: Your Technology Transfer Wallet - Practical Tools/Strategies for Achieving Greater Diversity and Inclusion in Leadership/Inventorship for Greater Academic Institution and Industry Partnership Success


Moderator: Denise Mayfield, Dykema
Panelists: TBD 

10 – 10:30 a.m. Networking Break
10:30 a.m. – Noon Workshops
A1: Getting Ready to License Health Related Data 

University and research hospitals have been collecting and generating data for generations. With the advent of Machine Learning and other data hungry software, the demand for health care related data (both in computer and physical form) has been ever growing. Our panel will discuss: 

  • How health care data can be used 
  • ​Issues related to obtaining the correct consents and approvals  
  • Stradling undeveloped data policies  
  • ​Understanding what is capable of licensing  
  • Discussing potential licensing models for such data  
  • ​Best practices for communicating policies and goals. 
Moderator: Charles Macedo, Amster Rothstein & Ebenstein LLP 
Panelists:
  • Anne Carlson, Oregon Health & Science University 
  • Linda Hansen, Providence St. Joseph Health 

A2: Should I let that patent go?
Anyone will tell you doing technology transfer is challenging. To add more complexity to the business, patent budgets are continually under scrutiny by the administration. Outside of a few large universities, most institutions must struggle with a limited patent budget to perform optimal patenting and managing those patents. The two difficult questions a tech transfer office must continually ask are: (1) should I convert the provisional patent to a non-provisional? (2) and should I pay the maintenance fee for an issued patent?  

Both of those decision points need to be made after solid analytical research that can be answered with some creativity. In the first case, cutting edge deep machine learning tools provide insights into the prior art and the patent landscape needs to be carefully considered for the key decision of converting to a non-provisional or PCT application. The questions that a TTO must ask are “will I be able to find a licensee?” and “will I be able to get a patent?” On the second point of paying a maintenance fee, the questions to ask are “do licensees want my patent?” and “is my patent past its prime?” The panel will discuss both of those key decision making in detail and provide insights into what are the key factors to consider for optimal patent portfolios. To be an efficient technology transfer operation, the office needs to have high quality patents that are timely and sought after by industry. At the same time the TTO must be vigilant and monitor if there are any infringers of the patents before they let a valuable patent go abandoned. The constant question to ask is, “should I let that patent go?” 
Moderator: DJ Nag, InnovAito, LLC 
Panelists: 

  • Keith Marmer, University of Utah
  • Mark Wisniewski, UCLA
Noon – 1:30 p.m. Lunch
1:30 – 3:00 p.m.

Workshops
B1: Tips and Tricks for Protecting and Leveraging Software
Software-related IP presents several challenges. These challenges include (1) unique due diligence issues such as ownership challenges and open-source considerations in software invention disclosures, (2) protecting software inventions and leveraging them to generate value and revenue for your institution, as well as (3) the additional considerations for outbound software licenses and risk. This session will focus on these challenges, their touchpoints and how to best navigate them, from the reception of software disclosures through licensing.
Speaker/Moderator: Heather Buchta, Quarles & Brady, LLP 
Panelists: Jennifer McCullar, University of Washington 

B2: TTO Marketing Metrics, Channels and Materials – Diversifying and Maximizing Technology Marketing 
Generating high quality technology transfer office (TTO) marketing materials is time consuming but using multiple communication platforms can quickly and easily increase your audience and reach.  This panel will discuss how to optimize university TTO marketing content for different communication channels, including social media platforms, email marketing campaigns, newsletters, and tradeshows.  In addition, the panel will discuss channel-specific marketing metrics, which can offer a more nuanced way to track the impact of TTO marketing beyond traditional licensing and deal-flow. 
Moderator: Cadence True, Oregon Health & Science University 
Panelists: TBD 

3 – 3:30 p.m. Networking Break
3:30 - 5 p.m. Workshops

C1: How Not to Get Blocked Out from Blockchain? 
Over the last decade there has been enormous pressure on tech transfer offices (TTOs) to perform in the traditional metrics such as licenses and revenues generated without much increase in the budget. Blockchain as a tool is slowly being adopted by mainstream businesses but universities have not yet joined that bandwagon. Blockchain in IP transactions are probably the next generation technology wave which will likely take over the world of IP.  With the recent announcement of IBM to play a major role in tracking patents with NFTs, the major players are looking at adopting new ways for transacting IP. Should TTOs adopt blockchain for managing licensing and compliance of patents or know-how? Will this be the new way of licensing and monetization? Will your next licensee pay with bitcoins? All of these questions will be addressed by experts in the field of transactions, IP markets, compliance and licensing. 

Moderator: DJ Nag, InnovAito, LLC 
Panelists: Ian McClure, University of Kentuck

C2: The Oregon Health & Science University Model 
Technology Transfer Offices must juggle multiple high-stake elements, with internal and external personal, financial, and legal ramifications. Principal Investigator satisfaction, support of Institutional missions and Departmental financial goals, abiding by laws, valuation, and protection of inventions, and finding fair and common ground with external entities all contribute to our daily challenges as we negotiate these multi-faceted agreements.  

In this panel, we share OHSU’s successes and current challenges in what we’ve found to be a sweet spot in Technology Transfer Office structure. Three separate yet integrated teams manage institutional intellectual property from the primordial soup of sponsored research right up through fully evolved and refined patents and licenses, some branching out into successful startup companies. The three teams include a traditional Licensing team, an Academic and Industry Collaborations team, and a Patent team.  The Academic and Industry Collaborations team is often the first contact for OHSU researchers, covering MTAs and general NDAs in addition to Sponsored Research Agreements.  Because they are imbedded in the Technology Transfer department, they can help solicit invention disclosures, direct specific invention-related questions to experts, and recognize when a fee bearing license is more appropriate than a free MTA. In addition to managing outside counsel, the patent team drafts, files, and prosecutes patent applications, as well as advises OHSU Members on general IP topics.  The Licensing team evaluates and commercializes these invention disclosures, creating bridges between the Inventors, the Patent team, and commercial entities.  

This departmental structure also allows for clear and logical career paths that can encourage growth while retaining talent and institutional knowledge.  Cross-pollination of team knowledge is common, which provides a high-level of service, as well as a broad internal understanding of how the many moving parts of technology transfer affect each other, creating a highly collaborative and pleasant environment.  

Moderator: Trina Voss, Department of Veteran Affairs
Panelists: 

  • James Lagowski, Oregon Health & Science University
  • Joseph Hill, Oregon Health & Science University
5 – 6:30 p.m. Opening Reception
Socializing face-to-face with colleagues and industry pros has never been easier. Bring business cards! 

 

 

Day 2 - Tuesday, November 8

7 a.m. – 5 p.m. Registration
7:30 – 8:30 a.m. Breakfast
8:30 – 10 a.m. Plenary II: Tech Transfer Insights and Trends from the Experts 
Join us for this special session with key thought leaders and AUTM supporters who will share insights and strategies they have helped Tech Transfer Offices implement and how those same strategies might help your office too. 
Moderator: Arundeep Pradhan, APIO Innovation Transfer
Panelists: TBD  
10– 10:30 a.m. Networking Break
10:30 a.m. - Noon Workshops
D1: Creating a Culture of Commercialization at an Academic Institution

The gap between discovery and clinical practice is, on average, approximately 17 years! A variety of factors contribute to this gap, but a general lack of support beyond funding surfaces as significant and persistent. Institutions have looked to novel methods to provide this support including commercialization-focused programs for investigators. A commercialization-focused strategy has proven to be a successful alternative when other more traditional research funding wanes. As a result, university faculty developing technologies are, increasingly, exploring more entrepreneurial paths. For these types of initiatives to take root and flourish, building a culture that embraces and understands the unique challenges of commercializing academic technologies, allows for failure, and creates clear expectations for students, faculty, and external partners are critical components to success. Often assumed to the be the purview of academic technology transfer offices, alone, partnerships have been forged across the institution and with regional stakeholders to achieve several goals: 

  1. Help accelerate innovations from idea to impact 

  2. Make innovation and commercialization a natural and expected academic behavior 

  3. Increase the number of invention disclosures and maximize the value of intellectual property 

  4. Create offramps to external support and development beyond the capabilities of the University. 

The panel is a diverse group that includes innovation program administrators, technology transfer leaders, and scientists from around the Pacific Northwest. Together, they have decades of experience working closely with academic innovators across the technology development and commercialization spectrums. Each panelist will discuss initiatives they have led to build a robust culture around commercialization within their institutions and communities. 

Moderator: Jonathan Jubera, Oregon Clinical & Translational Research Institute 
Panelists: 

  • Magali Eaton, CoMotion, University of Washington
  • Travis Woodland, Portland State University
  • Luiz Bertassoni, Oregon Health & Science University
  • Mark Billingsley, University of Alaska Fairbanks
D2: Circuits and Cells: Diagnostics, High-throughput Screening and Drug Development - Patenting the Intersection of Biotech and Informatics 

Some of the greatest innovations come from the intersection of disparate fields. Cells, proteins, nucleic acids, circuits, computers, AI and machine learning, the next generation of high-throughput diagnostics and drug development harnesses machine learning, and complex algorithms to increase accuracy and speed in the development of novel diagnostic tools, pharmaceuticals, and biologics. How to harness these technologies, patent, license and bring these technologies to market will be discussed.  

This panel will discuss the tricky intertwining of biotechnology and computer science in patenting. Practical considerations about drafting, licensing and development will be discussed. 
Moderator: Stephen Gardner, Quarles & Brady, LLP
Panelists: TBD 

Noon – 1:30 p.m. Lunch
1:30 – 3 p.m. Workshops
E1: Advancing Startups in Regions Outside of a Startup and Investment Hub 
Startups clustered around major startup and investment hubs, such as Boston, San Francisco, Seattle, and New York, have access to a wealth of capital, mentorship, infrastructure, and talent. But what are the best practices to boost startups not located in these cities? Outside of these major hub regions, universities, states, cities, and entrepreneur support organizations have developed a number of programs to help provide strategic resources and funding to help bridge the gap and enhance a startup’s chance of success. This session discusses individual entrepreneurial programs that have been developed in the Pacific NW, provides case studies, and shares successes and challenges of these programs. By attending this session, you will gain an understanding of the best practices to support startups and facilitate regional collaboration when you exist outside of a major hub region. 

Moderator: Jordana Barkley, Business Oregon
Panelists: 

  • Michaele Armstrong, sp3nw
  • Arsh Haque, Portland State Business Acc
  • Lisa Lukaesko, Oregon Health & Science University
  • Sandra Shotwell, Alta Biomedical Group
E2: Managing IP Collaborations – Avoiding Pitfalls and Navigating the Course to Successful Strategic Relationships 

Research collaborations provide a powerful tool for leveraging resources, expertise, and opportunities to support innovative solutions to societal issues and global commerce. 

This session will provide a practical overview of substantive legal issues, practical strategies, and common pitfalls around managing and leveraging value from intellectual property rights in research collaborations, including corporate sponsored research and interinstitutional partnerships. 

A panel of experts with complementary backgrounds will draw on diverse areas of expertise to lead this discussion casting a wide net around topics ranging from matching Industry-University participants, scoping statement of works, managing information exchange, intellectual property and licensing, financial terms, and compliance.   

Audience participation is encouraged, so come with your questions and war stories as this will be an interactive session! 

Takeaways that will be highlighted include –  

  1. Harmonizing common sticking point deal terms with Industry - University participants, policies and interests. 

  2. Practical options to advance negotiations for situations that appear at an impasse. 

  3. Addressing issues of multiple sponsors and interfaces with commercialization and licensing. 

  4. Best practices to meet Industry - University expectations and avoid of breach.  
  5. ​Approaches for resolving disputes and potential for fallout. 
Moderator: Stephen Barone, Leydig,Voit & Mayer, Ltd.
Panelists:
  • Travis Cook, Oregon Health & Science University
  • Eric Payne, NREL
  • Travis Woodland, Portland State University
3 – 3:30 p.m. Networking Break
3:30 – 5 p.m. Workshops

Plenary III: 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 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:

  • Sita Pappu, Washington State University
  • Julie Reed, Miller Nash
  • Lindsie Goss, Fred Hutchinson Cancer Center
  • Jon Jensen, The Salk Institute
  • Margaret Hing, La Jolla Institute for Immunology
5 – 5:15 p.m. Wrap Up & Closing Remarks
5:30 – 7 p.m. Enjoy the Portland Food Truck Scene with Fellow Attendees

Platinum Sponsors

Nixon Peabody
Klarquist

Gold Sponsors

Longford Capital
Amster, Rothstein & Ebenstein LLP
kppb

Bronze Sponsors

Wellspring
Berggren
Thomas Horstemeyer
Quarles & Brady

Contributing Sponsors

Marshall, Gerstein & Borun LLP
Michael Best
NIIMBL
Innovaito
TekCapital