The Technological Innovation: Generating Economic Results, or TI:GER program, is a unique collaboration between Emory University and the Georgia Institute of Technology (GA Tech) that brings together business, law, and science. TI:GER organizes students into teams comprised of two GA Tech MBA students, two Emory Law students, and a PhD candidate in the field of science or engineering. During the TI:GER program, students are directly involved in the innovation process and work together to bring discoveries to the marketplace. Teams are challenged with the task of preparing a commercialization strategy and business plan based around the PhD candidate’s research. One of the hallmarks of the program is that the economic, regulatory, and legal issues are considered prior to the research being completed. These considerations can then be incorporated into the research plan and commercial development strategy. The two year program includes multiple components, ranging from classroom instruction and guest lectures, to internships and networking. Students also have the opportunity to directly engage with start-up companies in GA Tech’s incubator, the Advanced Technology Development Center (ATDC). Tyler Dutton, an Emory Law student in the program, explained that TI:GER helps students learn about and apply patent law, contract law, venture capital, angel investors,
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From the Director: Emory Breakfast Club
We sat down with Executive Director Todd Sherer to talk about one of OTT’s signature events – the Emory Breakfast Club. Started in 2010, OTT’s Breakfast Club is an early morning networking breakfast during which OTT’s licensing associates briefly pitch new innovations. Also, take a look at our video about the Breakfast Club events. What was the inspiration for creating the event? We realized we needed a better way to engage the business community with regards to licensing opportunities we had in the office. We created this event so that we could find a way to more regularly bring the business community together and pitch technologies to them. What do you feel the audience gets out of the event? I think the audience gets a chance to come and sit down and hear more about Emory and not just what is going on in the Tech Transfer Office. We will occasionally have speakers and provide background information about other things across campus. They get a chance to hear about business opportunities and to network. Since this event is invitation only, how was the invitee list created? We thought a lot about who to invite. We wanted it to be a fairly
Continue readingInterns: How the Emerging Leaders Network Creates Opportunities
The Emerging Leaders Network (ELN), a division of Georgia Bio consisting of students, postdoctoral fellows, and young professionals, has been instrumental in my personal and professional development during my graduate career, including introducing me to the intern program at OTT. ELN was established to provide resources and networking opportunities for students and early career professionals in an effort to retain locally educated talent. Specifically, ELN aids in initiating connections with seasoned professionals, making introductions to local companies in the biosciences, and providing educational opportunities for professional development. Since I became involved with ELN, I have learned a tremendous amount about my career interests and personal strengths through participation in ELN’s programming. There are several regular programs offered by ELN: Social networking events – mainly in the form of happy hours. ELN’s social events provide a great way to meet other young professionals in a casual environment. Small dinner series – a seasoned professional and leader in their field is invited to have dinner at a local restaurant with 8-10 attendees. The small dinners allow attendees to learn about a particular career field in depth and form authentic connections with the speaker and other attendees. Educational events – these events can have
Continue readingFrom the Director: Technology Transfer and Patent Reform
Intellectual property protection, in particular patent protection, is an important aspect of university technology transfer. Such rights give the licensee a proprietary position that allows for investment in continued development and helps ensure that the public ultimately benefits from basic research that results in commercial product. In terms of patent rights, it will be important to watch in the coming years how new factors such as the Leahy-Smith America Invents Act (AIA) affect academic innovation. The law represents the most significant change to the U. S. patent system since 1952 and switches patent rights from a first-to-invent system to a first-inventor-to-file system. This change presents particularly challenges for us in academic technology transfer as our faculty function in a “publish or perish” environment. Under the new law, researchers are no longer protected through early conception of an invention, and disclosures to third parties can impair patentability. Most researchers are familiar with the role and necessity of lab notebooks, particularly in determining when an “invention” occurred. This note taking requirement was not eliminated with AIA, but in fact its importance is expanded. Although there are changes, AIA does retain certain protections for researchers, such as the grace period for an inventor’s
Continue readingA Successful Office Initiative: The Emory Patent Group (EPG)
One of the key responsibilities of the Office of Technology Transfer (OTT) is determining which form of intellectual property protection is most appropriate (and feasible) for inventions arising out of research, and other activities, at Emory. The Emory Patent Group (EPG), one of the pillars of our ReTechTran program, was created in 2009 as an innovative way to address budgetary constraints and improve our ability to pursue promising new technology. These constraints had started to impact our ability to protect new technologies effectively. Emory’s goal is to draft, manage, and prosecute all patents for unlicensed technologies in-house rather than working with an outside law firm. Bringing patent work in-house is very uncommon for university tech transfer offices. Two distinct challenges that often keep universities from creating an in-house patent counsel include 1) uncertainty whether there will be real cash savings, and 2) concern that a few in-house patent attorneys will not be able to cover the high variability in technology. OTT has carefully evaluated the implications of bringing our patent work in-house including the potential cost savings. Further, unlike many universities Emory’s focus in biomedical research makes it more practical to cover all relevant technical areas compared to many of
Continue readingFrom the Director: Research Drives Innovation
To maintain growth, strong and sustained funding for basic research is necessary to assemble a pipeline of great ideas. Basic research provides the building blocks and foundation for much of what we do in technology transfer. The origins of a great many inventions society depends on today can be traced back to a discovery made at the bench as a basic research project. Some outside observers however, assume that the amount of money we put into research should directly translate to money as licensing revenue. Over the last two decades, federal research funding has been on the rise each year with around $63.7B reported by 194 respondents in the FY12, AUTM Licensing Survey – up from $12B in 1991. If you were to plot research funding and number of new invention disclosures over time on the same graph, you would find that the two lines mirror each other amazingly well. In other words, research drives innovation. Some look at the $63.7B a year of federal money in research, compare that to the $2.6B of licensing revenue in FY12, and conclude that this outcome is a bad return on the investment in federal research. Although a tempting comparison to make, it
Continue readingMastering Reagent Agreements – Improving Ease & Speed
In today’s challenging climate, technology transfer offices try new ways to increase the number of licenses executed and reduce the time from disclosure to license. Research tools (reagent) licenses are an area where many offices, including ours, can increase their efficiency and effectiveness in licensing. Unlike agreements for the software, medical devices, and therapeutics that make up much of our technology portfolio, research tools require little additional development, can be quickly commercialized, and generate revenue (albeit small when taken individually) in a short amount of time. One particular strategy Emory’s OTT has employed is the use of a “Master” reagent agreement with companies that license, sell, and distribute reagents such as antibodies, plasmids, and cell lines. This “Master” agreement covers all the general provisions that would be included in any license such as liability, reporting, diligence, and confidentiality, but none of the financial terms. These terms then apply to all subsequent reagents or tools transferred to the company. This practice allows the university and reagent company to negotiate these terms upfront and only once, thus removing the time and burden of revisiting these terms with each individual tool is licensed to the company. In our model, each research tool or
Continue readingMaterial Sharing Made Simpler: New Outgoing MTA
The ability of investigators to share research materials is an integral part of successful collaborations. Contractually, institutions facilitate such sharing via the completion of material transfer agreements (MTAs), which memorialize the rights and restrictions of each party and allow the signing institutions to ensure that transfers are in compliance with standing legal obligations. Unfortunately, the completion of a MTA can be hindered in instances when instructions for completing such agreements are confusing, necessary information relating to the transfer is not provided, or the terms of the agreement itself are unfamiliar, inapplicable, or aggressive, requiring review and negotiation by the parties. In an effort to alleviate some of these issues and facilitate easier sharing of research materials, Emory OTT has developed a new outgoing MTA template for use when Emory investigators wish to provide their materials to collaborators at other academic institutions. This new MTA was designed with simplicity and efficiency in mind. The substantive language of the agreement is pulled in whole from the Uniform Biological Material Transfer Agreement (UBMTA) promulgated by the National Institutes of Health, which is widely accepted by academic institutions. The agreement also contains clear, organized sections for the investigators and institutions to insert needed information
Continue readingUntangling the Codes
In technology transfer, as in other fields, there are quite a few acronyms that are thrown around and may seem confusing at first. In this glossary, we break down the different types of agreements that’ll help you untangle those codes. MTA MTA stands for Material Transfer Agreement. Because research and technology development are often collaborative efforts, colleagues may share research tools. MTAs are formal contracts that define the proper use and limits of these shared tools, which could include reagents, cells, antibodies, computer software, etc. It’s important to execute an MTA before any research material is sent or received. The execution of an MTA ensures clear intellectual property ownership and supports necessary patent documentation. IIA IIA stands for Inter-institutional Agreement. IIAs come into play when multiple individuals at different institutions jointly invent a new technology. In the case of joint ownership, OTT will negotiate an IIA to define the rights and responsibilities of the institutions. These agreements encompass intellectual property protection, commercialization, cost and revenue sharing, as well other issues related to protecting and licensing the jointly-owned technology. RA RA stands for Research Agreement. Research agreements detail the obligations, commitments, and expectations of the parties involved over the course of
Continue readingNew DRIVE for Drug Development & Innovation
An innovative new commercialization partner has arrived at Emory University; DRIVE (Drug Innovation Ventures at Emory, LLC). DRIVE is a new public-private drug development enterprise and not-for-profit entity separate from, but wholly owned by Emory, that will expand the capabilities of traditional academic drug research, combining the expertise of Emory scientists with a proven business and management team. DRIVE will provide the financial, business, project management, and regulatory expertise to move drugs through lead optimization and pre-clinical testing and into proof-of-concept clinical trials. Its ultimate goal is to transition scientific discoveries more rapidly, effectively, and efficiently. Emory OTT is excited to have this new avenue available to move discoveries forward from the lab to the market. Universities have typically had difficulty moving promising projects through this stage of development often referred to as the “Valley of Death.” Technologies with proof-of-concept clinical data will have significantly more value and less risk and can then be out-licensed to pharmaceutical and biotechnology companies, partnered with foundations or government entities, or spun-out into newly formed companies financed by venture capital firms. DRIVE will finance its initial efforts with $10 million in funding received from the monetization of royalties associated with the HIV drug emtricitabine
Continue readingAIA – First Inventor to File
On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act, known as the AIA, into law. The purpose of this act was to modernize the United States patent system, and as a result several provisions have been implemented that change the way patents are regulated. On March 16, 2013, the eighteen-month anniversary of the signing of the act, the third and most prominent phase of implementations went into effect. Consequently, The United States now operates under a First Inventor to File (FITF) system, a major change from the previous First to Invent system. Up until March 16, 2013, U.S. law focused on who first conceived of an invention, rather than who filed the patent application itself. Under the AIA, the new focus shifts to whether a “first filer” obtained, or could have obtained, the invention from a “later filer.” Most researchers are familiar with a need to document their conception dates and keep appropriately witnessed notebooks. This requirement was not eliminated in the AIA, but expanded. At the same time, this change does include some provisions which allow another applicant that files a patent for the same invention to show that the first filer derived the invention from
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