Episoder
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Getting groundbreaking technology from the lab to the market is no easy task, and it’s a challenge that every Tech Transfer professional understands well. While university Tech Transfer offices are often measured by the number of licenses executed, success isn't just about numbers; it's about ensuring the technologies developed truly meet market needs.
Kate Havey, the Assistant Director of Licensing at Venture Partners at CU Boulder, Is here to help us explore this topic. She brings a wealth of experience in research, teaching, and intellectual property management. She’s worked on everything from biomedical innovations to electric vehicle batteries. In our conversation, we dive into how early engagement with industry can help steer research in the right direction. Kate shares her insights on customer discovery, and starting these conversations before or at the proposal stage can make all the difference in ensuring that the technologies we create solve real-world problems.
We also explore the reality that while some innovations may seem groundbreaking, industry often needs practical, financially viable solutions. Kate discusses CU Boulder’s approach to fostering relationships with researchers through programs that refine technologies, debunking misconceptions about what industry really needs, and highlighting the importance of building strong ecosystems to support market-ready technologies. This conversation underscores the need to align both people and processes to make tech transfer truly effective.
In This Episode:
[01:58] We kick off with the biggest challenge aligning university innovation with market needs. It revolves about embracing the concept of customer discovery early in the process.
[02:28] Having customer discovery questions early in the process is key.
[03:39] Early means having conversations before or at the proposal stage.
[04:02] The importance of looking at what you're trying to achieve when increasing invention disclosures. Encouraging disclosure increases inventor engagement.
[05:05] Technology has to be ready for the market if it's going to be adopted.
[06:11] Kate shares an example of something that was too early for market. Their entry level program is called Starting Blocks, and it dives into customer discovery. Going out and finding the pain points. This process ensures an innovation that companies actually need.
[07:21] A technology developed by Dr. Rich Noble that developed ionic liquids for gas separation. They were able to switch focus. Early customer discovery helps develop a better product.
[11:28] The importance of patience and perseverance.
[12:27] The program helps ask the right discovery questions and teaches a framework for presenting ideas.
[13:31] There's a pipeline of programs which leads to deeper dives into customer discovery.
[15:26] Kate started the Translational Research Summit Series at CU which brings together PIs, companies, entrepreneurs, investors, and policy makers.
[16:47] Common misconceptions about what industry wants include the idea of just building it and there will be a market.
[17:40] Industry's view involves the idea of making money.
[18:24] Tech Transfer people need to find a way to have conversations about aspiration versus pragmatism.
[19:36] Kate shares advice for prioritizing market goals.
[21:46] The role the local innovation ecosystem plays in cultivating market ready technologies.
[24:21] Kate shares how CU Boulder fosters an environment that bridges the gap between research and commercialization.
[27:08] Kate pulls out her crystal ball and looks ahead and tells us what she's most excited about in the future. Large and small industries are becoming more excited about taking a role in university research.
[29:22] Being available for each step of the process is an emerging Tech Transfer role.
[30:05] The importance of aligning technologies for industry needs and aligning people and relationships with the broad process of Tech Transfer.
Resources:
Kate Havey - CU Boulder
Kate Havey - LinkedIn
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In 2024, the European patent system is undergoing one of its most significant transformations in decades. The introduction of the Unitary Patent and the Unified Patent Court is reshaping how intellectual property is protected and enforced across Europe. For innovators and businesses alike, this marks a pivotal moment—one that promises streamlined processes but also introduces new complexities. Today, we’re exploring what these changes mean and how they might impact the future of innovation.
Joining me for this fascinating discussion are two renowned experts in intellectual property law, Robert Alderson and Mariella Massaro, partners at Berggren, a leading European IP firm. Both Robert and Mariella bring unique perspectives and deep expertise to our conversation. Robert is a rare hybrid in the IP world, qualified to practice before the United States Patent and Trademark Office, the European Patent Office, and now the Unified Patent Court. With more than 20 years of experience spanning two continents, he offers a nuanced understanding of both U.S. and European patent practices.
Mariella’s career has been equally impressive. A Certified Licensing Professional and recognized IP strategist, she has nearly two decades of experience navigating the complexities of IP litigation and commercial transactions. Her work with clients preparing for the Unitary Patent system highlights the practical challenges—and opportunities—that lie ahead. From pharmaceuticals to fashion, her portfolio reflects the wide-reaching implications of this new patent framework.
Together, Robert and Mariella will break down what you need to know about the Unitary Patent and Unified Patent Court, offering insights on how to prepare, adapt, and thrive in this evolving landscape. Whether you’re an inventor, an entrepreneur, or simply curious about the future of innovation, you won’t want to miss this episode.
In This Episode:
[04:22] Mariella shares an example of what UPC is now. She talks about Seoul Viosys Co., Ltd. and Seoul Semiconductor Co., Ltd., v. Expert Klein GmbH, expert e-Commerce GmbH, Düsseldorf (DE) LD.
[05:06] The UPC court is very fast.
[08:56] Mariella talks about another case, 10X Genomics and Harvard v. Nanostring, that sets the criteria for claims interpretation for validity and infringement.
[10:00] Robert talks about Sanofi v. Amgen. This was the first successful revocation action at the UPC. If you're going to file a patent in the US and Europe, you have to satisfy the different requirements.
[12:38] The application of the doctrine of equivalents at the UPC.
[13:45] What happens when there is a UPC action that is conducted in parallel with the EPO opposition? Astellas versus Herios.
[15:41] Focusing on unitary patents and filing and prosecution strategy. There has been an uptick in unitary patents.
[16:29] Robert talks about the transitional period in unitary patents.
[19:41] AIM Sport versus Suponor. Some of these issues are only for the transitional period.
[22:02] If the national patent application strategy is going to be used, it's important to understand which countries you can use the PCT route and which countries you can't.
[22:34] How TTOs can use this transitional period to balance the risk. Use a unitary patent with the broadest possible claims, and then file a divisional application and classically validate that patent.
[24:22] We learn about literal double patenting. This is only available under specific circumstances.
[26:50] This strategy is being utilized in the US currently.
[27:14] What TTOs need to know when licensing their patent portfolios in Europe. Make sure all of your rights in the ownership agreement are addressed specifically.
[37:33] How representation of joint owners before the EPO and UPC work.
[38:13] The first applicant listed is considered the common representative.
[40:33] Robert and Mariella share what they think TTOs should look out for in 2025.
Resources:
Robert Alderson - Berggren
Robert Alderson - LinkedIn
Mariella Massaro - Berggren
Mariella Massaro - LinkedIn
Autm Annual Meeting In March
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The role of Chief Innovation Officer is transforming the way universities approach innovation and entrepreneurship. Once confined to the corporate world, this position is now becoming a cornerstone of academic leadership, enabling institutions to centralize their efforts around economic growth, interdisciplinary collaboration, and societal impact. Universities like MIT, Penn State, and Tulane are embracing this change, appointing CIOs to streamline activities across departments and amplify their influence on both campus and community.
Today, I’m joined by Kimberly Gramm, Chief Innovation and Entrepreneurship Officer at Tulane University, and Glenn Gardner, President of Gardner Innovation Search Partners. Kimberly is a powerhouse in early-stage technology development, having overseen the creation of over 300 startups that collectively raised $470 million in investment capital. At Tulane, she is building an entrepreneurial pipeline and leading initiatives like the NSF-funded Fuel project, a $160 million effort focused on energy transformation.
Glenn, with over 24 years of experience in recruiting innovation leaders, provides valuable insights into how this role is evolving and what it takes to succeed in bridging academia and industry.
In this episode, we unpack the strategies behind fostering innovation ecosystems, breaking down silos in academic settings, and creating seamless partnerships between universities and industry. They explore how CIOs are reshaping university culture, driving technology commercialization, and addressing some of today’s most pressing societal challenges.
We dive deep into the growing importance of the Chief Innovation Officer, offering a fresh perspective on how universities can maximize their potential and lead the way in global innovation.
In This Episode:
[00:52] The role of CIO or Chief Innovation Officer is gaining traction in universities.
[03:47] Kimberly breaks down what started the shift in academia.
[07:06] Glen shares what he's seen including breaking down silos.
[08:18] In academia the focus is on research and education and societal impact. Goals include fostering interdisciplinary collaboration.
Success is also measured through longer term outcomes.
[09:47] The mission of academia and academia innovation is impact. It's also about finding and retaining the best faculty.
[11:29] The vice provost for research can focus on research while the CIO can focus on innovation.
[12:17] Having a CIO helps streamline decision making and coordination.
[14:21] Kimberly talks about focusing on societal needs.
[15:25] According to Glenn, de-risking is moving more towards the universities, and the tech transfer and corporate engagement offices are working more closely together.
[19:05] Seamless integrated innovation breeds success.
[20:12] It's important to find out who has the relationship with industry and find the problems that need solving.
[21:02] NIH and NSF funding is going down, so it's more important than ever to have industry collaborations.
[21:47] Kimberly shares an example of this in action where they have a cooperative agreement with the technology development arm of the energy engine in Louisiana. They were given $160 million and the state matched another 68 million.
[24:54] Kimberly outlines support and alignment for the CIO role in universities. She has worked at three different universities. Strong leadership support and executive backing is first and foremost. Defining metrics is also critical.
[28:39] Glenn emphasizes the importance of executive buy-in.
[31:05] The board at Tulane wanted to participate in innovation and entrepreneurship. This led to a framework of success and putting the right puzzle pieces in place.
[37:11] Specific strategies for implementing a CIO at a university. Number one is building trust in relationships.
[41:45] Glenn talks about how a hospital system views Innovation compared to a university.
[42:51] Glenn talks about how this role is necessary to keep up. The bar is raised. Even organizations that don't have this role, have people acting in the role.
[44:07] Glenn shares the qualities that make an ideal CIO. It's a diverse skill set. We need more people from the business side.
[46:05] It's about change management expertise and cultural transformation in complex organizations.
Resources:
Kimberly Gramm, MBA, PhD - Tulane University Innovation Institute
Kimberly Gramm, MBA, PhD - LinkedIn
Glen Gardner - Gardner Innovation Search Partners
Glen Gardner - LinkedIn
The Rise of the University Chief Innovation Officer
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Did you know that the restaurant and construction industries have among the highest suicide rates in the country? That's where Wichita State University's Suspenders4Hope initiative comes in, combining ingenuity and compassion to address mental health issues head-on. This breakthrough endeavor began as a campus-based campaign for suicide prevention and mental wellness training and has since spread to companies across the country.
We’re joined by three incredible guests who helped make it happen. Rob Gerlach, Wichita State’s Associate Vice President of Tech Commercialization, shares how tech transfer played a key role in scaling this initiative. Zeeshan Khan, Program Manager for Tech Transfer, discusses the challenges of working in a human-centered, non-traditional tech transfer space. Dr. Jessica Provines, the program’s creator and Chief Psychologist at WSU, opens up about her personal journey and the program’s mission to foster hope and reduce deaths of despair.
In this episode, we explore the innovative strategies behind Suspenders4Hope, including non-exclusive licensing and industry collaborations. We also examine how this program is making a significant difference, from providing individuals with mental health tools to altering businesses and communities. Stay tuned for an exciting discussion about how technology transfer can be a force for good.
In This Episode:
[02:26] This is an important conversation and a fascinating story.
[02:41] Jessica shares how Suspenders4Hope came about. She went through her own experience with depression. Her own experience through suicide loss made this cause near and dear to her heart.
[03:15] They got a Federal Suicide Prevention Grant to work on this issue.
[04:12] After creating a successful program on the campus, they decided to help more people. She was grateful that she was able to be guided by a Tech Transfer office.
[05:05] WSU is a leader in innovation and Technology Transfer.
[06:10] Rob talks about what it was like when this product first came to their Tech Transfer office. It didn't fit the typical mold. Jessica and her team were committed to moving the initiative forward.
[07:35] The purpose of moving the product out to the world was still in the same vein as a transfer project.
[08:12] Zeeshan talks about what made Suspenders4Hope stand out.
[08:58] There was a need for the team to understand and promote the product as ambassadors.
[10:02] Benefits of using non-exclusive licensing for mental health training.
[11:28] The Tech Transfer office and their expertise to help figure out how to scale.
[14:58] Zeeshan talks about the construction and hospitality industry adopting the program. Partnerships in the sectors are crucial.
People resonate with the program as a lifeline.
[17:32] Jessica talks about the core elements of the training and what makes it so impactful. They are focused on creating a movement.
[22:05] Branding and meeting the program where it's at.
[24:43] They've had very positive responses from the industries adopting the program.
[28:38] Jessica's dream is for the long-term impact of the program to help transform lives.
[31:16] The number one lesson is to always remember to think outside of the box.
[34:24] Think about how you're fulfilling needs when trying to get involved with social impact initiatives.
[37:39] According to Jessica, it comes down to relationships and being able to show love and compassion for people.
[39:24] There are broader uses of Technology Transfer than just finding patents. It's about transferring technology into the hands of people who can make the biggest impact.
[42:28] Advice for pursuing socially impactful projects.
Resources:
Suspenders4Hope
Rob Gerlack Wichita State University
Rob Gerlach LinkedIn
Zeeshan Khan Wichita State University
Zeeshan Khan LinkedIn
Dr. Jessica Provines Wichita State University
Dr. Jessica Provines LinkedIn
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Are we ready for the ethical challenges AI brings to Tech Transfer? Today’s episode dives into artificial intelligence's rapidly evolving role in tech transfer, examining the frameworks that help us navigate its legal, societal, and ethical complexities. Our guest, Charles Halloran, brings deep expertise in technology licensing and intellectual property, with a career that spans some of the most significant patent and trademark cases. His perspective on managing AI responsibly is invaluable for anyone looking to understand the delicate balance between innovation and integrity.
We’re exploring questions around the ethical use of AI, particularly in the unique environment of Tech Transfer offices at universities. Charles shares insights on how data should be curated and protected, ways universities can create their own safe AI systems, and the protocols necessary to avoid pitfalls in data-sharing. The discussion touches on real-world issues like inventorship, confidentiality, and open-source licensing, offering actionable steps for institutions striving to build trust while leveraging AI's capabilities.
Listeners will come away with practical guidance on fostering responsible AI use, from addressing bias in training data to implementing clear data-management policies. Charles emphasizes that adopting a strong ethical foundation isn’t just good practice—it’s essential for sustainable innovation. This conversation is packed with insights and strategies for navigating the AI-driven future of Tech Transfer with transparency and care.
In This Episode:
[02:02] Tech Transfer is a bridge that brings innovation to the public. Data used to train AI needs to be well-curated and ethically sourced.
[04:01] Legal and ethics challenges TTOs face in maintaining standards, especially when it comes to protecting proprietary information.
[05:05] Charles talks about data privacy and hosting your own AI infrastructure. We've come to understand what reasonable protections need to be in place for previous technologies.
[06:27] AI challenges include helping people understand what's working and what's happening to the data.
[07:37] Universities have put policies in place that restrict the use of LLMs that aren't the licensed commercial choice of the university.
[08:39] Charles talks about protocols and best practices for ensuring that TTOs maintain proper disclosure and human oversight over AI generated work.
[10:25] Ethical responsibilities regarding AI assisted inventorship. Tech Transfer offices need to ask how AI was used if it was used at all.
[13:08] Balancing Innovation with ethical safeguards. Charles talks about the 13 Principles for Using AI Responsibly in Harvard Business Review.
[13:57] Effectiveness and safety are primary concerns in the White House Bill of AI Rights.
[15:03] Find an AI Bill of Rights that works with your institutional culture.
[16:28] Many TTOs make these frameworks available on a website. Also build it into your education process and outreach to researchers.
[17:58] Charles has a strong background in open-source licensing.
[18:09] How principles from open source can inform responsible AI practices.
[21:18] Charles shares an example where lack of attention to responsible AI policies led to a speed bump in commercializing a product.
[23:07] Being casual about the data that you're using at the development stage leads to roadblocks or problems at the commercialization stage.
[26:18] Charles talks about issues with licensing and shared data between different hospitals or universities.
[27:56] We talk about the risks of social biases when using AI. The first place to begin is recognizing that bias is an issue.
[30:59] We are developing better tools and awareness to help counteract bias.
[32:02] What tech transfer offices can do to help broaden the use of underrepresented groups. Using AI tools to alleviate bias.
[35:05] Should TTOs take a leading role in setting ethical standards for AI use especially when it comes to managing bias in societal impact?
[37:32] It's likely ethical considerations in AI will evolve very quickly.
[41:34] How to start building a foundation for ethical AI use. Charles recommends choosing a framework. Use transparency and create trust.
Resources:
Charles Halloran - KPPB
Charles Halloran LinkedIn
Harvard Business Review's 13 Principles for Using AI Responsibly
Blueprint for an AI Bill of Rights
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What if artificial intelligence could do more than just automate tasks? What if it could open doors to partnerships and markets we have never considered? In today’s episode, we’re exploring how AI is reshaping outbound marketing strategies in Technology Transfer, turning complex innovations into viable, real-world solutions.
This isn’t just about tech—it’s about discovering new ways to connect groundbreaking ideas with the industries and people who can bring them to life. To guide us on this journey, we’re joined by Andrew Rankin, the Intellectual Asset Marketing Lead at Idaho National Laboratory.
Andrew has spent the last five years pioneering how AI-driven tools can enhance outreach, especially in the complex world of Tech Transfer. With an MBA from Idaho State and an Early Career Professional of the Year award under his belt, he’s developed approaches that make his team’s work both smarter and faster. He’ll share insights into his own process, including how tools like FirstIgnite help him identify key contacts, craft strategic messages, and even reveal cross-sector applications that might otherwise go unnoticed.
AI isn’t a magic fix. He’s faced his share of challenges—from compliance issues to building secure, reliable systems—and learned how to start small, test, and adapt. So, if you’re curious about how AI could be a game-changer in Tech Transfer or are looking for practical advice on where to start, this conversation is for you.
In This Episode:
[00:44] How AI is reshaping outbound marketing strategies in the Tech Transfer sector.
[01:41] Outbound marketing and the Tech Transfer world. Outbound marketing involves actively reaching out to potential licensees.
[02:38] Andrew's main focus is on email outreach.
[03:14] Outbound also offers a more focused approach.
[04:21] Andrew began 5 years ago fresh out of college, and he pioneered the process.
[04:43] FirstIgnite software has been instrumental in his process.
[06:24] How AI is helping in the Tech Transfer industry. With AI, we can do more with less.
[08:42] AI doesn't replace humans. It helps us scale what we're already doing.
[09:17] Andrew walks us through a typical AI driven marketing initiative.
[10:16] It starts with an AI tool that creates a one-pager. FirstIgnite identifies the companies to reach out to. He then finds the person to contact and drafts through an email composer tool.
[12:24] He only uses information that is publicly available.
[14:22] AI can identify non-obvious industry applications, potential cross-sector uses, or even companies that weren't even on the radar at all.
[15:07] He developed a custom GPT, but they're currently working on a more secure tool.
[17:16] His process has allowed him to contact 940% more people than he could previously.
[18:34] Common obstacles and challenges a Tech Transfer office may face when implementing AI solutions, including compliance issues.
[22:09] Addressing data privacy and compliance.
[24:08] Regulatory compliance is also a focus.
[26:46] Start small and practice to get the hang of using AI as you progress.
[28:11] Andrew shares a success story. He reached out to Open AI, and they are discussing a larger research partnership.
Resources:
Andrew Rankin Idaho National Laboratory
Andrew Rankin LinkedIn
FirstIgnite
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For decades, rural areas have faced a steady decline—losing economic opportunities, grappling with the "brain drain" as creatives and young people migrate to urban centers, and watching local industries falter. But what if university Tech Transfer offices (TTOs) could reverse this trend and be the spark for rural revitalization? Today’s episode explores this potential with Dr. Richard Cahoon, an expert in the field who has over 30 years of experience in invention, intellectual property (IP) management, technology commercialization, and entrepreneurship.
Dr. Richard Cahoon, an Adjunct Professor in Global Development and former Director of Cornell’s Tech Transfer office, has worked extensively with universities, government agencies, and companies across more than 25 countries. In addition to advising on R&D partnerships, IP management, and venture creation, Richard is a seasoned innovator who holds several U.S. patents.
His vision? To align TTOs with Cooperative Extension offices and bring technology and entrepreneurship into rural communities to foster local talent, create sustainable businesses, and ultimately reshape these areas’ futures. Join us for this insightful conversation as Richard shares his strategies, lessons learned, and the transformative potential of connecting university resources with rural America.
In This Episode:
[02:04] Rural America has faced economic decline for decades, and traditionally, university tech transfer offices have focused more on urban or research-intensive areas.
[03:02] When Dr. Cahoon joined Cornell's Tech transfer office in 1990, he brought with him experience as an inventor and an entrepreneur. He was very involved in creating opportunities and recruiting entrepreneurs. He created the Venture Vision Summary which was like a tech brief.
[04:48] He wanted to take a proactive role in creating entrepreneurial activity in rural towns.
[06:10] Dr. Cahoon shares information about his first tech and entrepreneur pilot program in Auburn, New York.
[09:30] There was robust entrepreneurship at Cornell which helped with the pilot program that Dr. Cahoon was developing.
[10:19] How Tech Transfer professionals can help foster local talent retention through similar models.
[11:11] Thinking about the creative economy and creative people. Tech Transfer professionals are the bridge to enable the creative economy to flourish.
[12:56] He left the Tech Transfer office in 2009 just as it was beginning to thrive.
[13:41] We learn about a startup that came out of the Geneva campus at Cornell. It was about biological control of agricultural pests and disease.
[17:49] Dr. Cahoon made a connection with the owner of a car dealership while he was at Cornell. They ended up establishing a venture fund.
[18:51] Challenges when extending Tech Transfer models to a rural context.
[21:48] The importance of cooperative extension programs.
[24:09] Parallels between rural America's current situation and other countries or regions when fostering local innovation.
[25:55] How fortunate we are in the United States. Other countries have so much bureaucracy it's absolutely stifling.
[26:28] Key steps for growing this particular model at Cornell and other universities. It would be interesting to get a room full of Tech Transfer office directors and cooperative extension directors.
[28:13] It might be possible to start by getting Tech Transfer people together at AUTM.
[28:53] The AUTM 50th Anniversary meeting is coming up in March in Washington DC.
[29:11] Movements with impact often start with a small group.
[30:29] Dr. Cahoon shares the story about a small town that was once thriving because of technology and patents. This one is about the Channel Master TV antenna.
[32:05] This success can be reproduced with new technology.
[32:34] Practical advice for getting started and gaining traction in your local community. Reach out and look for technologies that might belong in a rural community. Do marketing with that in mind.
[35:08] How the TTO/Cooperative Extension could evolve. It has the potential to be one of the pillars of the mission of Tech Transfer.
Resources:
Dr. Richard Cahoon LinkedIn
Dr. Richard Cahoon
Dr. Richard Cahoon
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In recent years, CRISPR technology has emerged as a game-changer in the world of gene editing, unlocking remarkable possibilities across various sectors, including healthcare, agriculture, and environmental science.
But what is CRISPR? CRISPR stands for "Clustered Regularly Interspaced Short Palindromic Repeats" and is based on an ancient function of prokaryotes—single-celled organisms such as bacteria and archaea. These organisms use a specialized CRISPR-associated molecule, Cas, to cut and destroy the DNA of invading viruses called bacteriophages.
The CRISPR-Cas system has been engineered to work in eukaryotes, like animals and plants. Its ability to make precise, targeted cuts in DNA sequences allows scientists to insert, delete, and modify DNA across a wide variety of cells. Among the various Cas proteins identified, the best known is CRISPR-Cas9, which has become a transformative tool in genome editing.
Given the potential value of this technology, the CRISPR patent landscape is vast. Some estimates suggest there are more than 12,000 families of patents related to CRISPR technology. Unsurprisingly, disputes have arisen over the ownership of these patents. Most famously, two groups have claimed rights to the use of CRISPR-Cas9 for eukaryotic gene editing: the University of California, Berkeley, the University of Vienna, and Dr. Emmanuelle Charpentier (CVC) on one side, and the Harvard-MIT Broad Institute on the other.
This dispute has led to several complex and lengthy battles in the U.S. Patent and Trademark Office, the European Patent Office, the Japanese Patent Office, the Chinese Patent Office, and in various courts, where proceedings are still ongoing.
Here to help us understand the latest developments in these ongoing disputes is Dr. Kevin Noonan. Kevin is an experienced patent lawyer, molecular biologist, and renowned thought leader in biotechnology and pharmaceutical patent law. He is a partner at the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff, where he co-chairs the firm's Biotechnology and Pharmaceuticals Practice Group.
He is also the co-founder and regular contributor to Patent Docs, a website featuring news and commentary on patent law. In addition, he is a co-editor and contributing author of the book Claim Construction and the Federal Circuit, and a contributing author of Antitrust Issues in Intellectual Property Law, now in its second edition.
In This Episode:
[03:42] Dr. Noonan talks about how the Broad Institute and CVC became key players in the CRISPR patent landscape. Broad had very aggressively filed patents. CVC took a more laid back approach. Since the Broad patents were already filed they caused interference when the CVC patents came up.
[05:41] Broad had the earlier filing date.
[06:35] Dr. Noonan explains interferences.
[11:21] Eventually, the patents and applications may need to be decided in court.
[12:03] A summary of the main claims and inventions in the first interference. One had a more narrow claim to CRISPR.
[13:22] PTAP dismissed the first interference finding no interference.
[15:57] Interference number one was a victory to Broad.
[16:14] California wasn't happy with the first decision, so they filed a second interference.
[17:40] We learn about the rationale behind PTAB holding for Broad.
[21:55] The PTAB determined in the first interference that this was complicated and if it didn't work, they didn't really have conception.
[24:42] This is really an anomaly in interference law to have the second to conceive in the absence of these diligence issues, to have the second to conceive get the priority.
[25:14] Because it's so complicated, it's taking the Federal Circuit a long time to decide.
[26:22] Dr. Noonan shares how Broad should approach the case.
[27:32] There are four more CRISPR interferences involving Broad and CVC. Two involve Sigma Aldrich and the other two involve ToolGen.
[31:21] Dr. Noonan talks about what this means for the future of CRISPR research and applications and what tech transfer offices should be most aware of.
[34:42] Lessons that innovators, researchers, and tech transfer offices can draw from all of these interferences moving forward.
[39:35] The status of the Broad Institute and CVC's CRISPR-Cas9 patents in Europe.
[45:08] We discuss Sigma and ToolGen's patents in Europe.
[47:15] The status of the Broad Institute’s and CVC’s CRISPR-Cas9 patents in Japan and China.
[48:28] Final thoughts for Tech Transfer offices. It's a moving target, and as time goes by, there's more types of genetic interferences.
[49:45] The University of Missouri has gotten the first CRISPR pig patent in Europe. There's a proposed ban in Europe on selling CRISPR genetically modified plants.
Resources:
Dr. Kevin Noonan
Dr. Kevin Noonan LinkedIn
Patent Docs
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What if the next technology or scientific breakthrough is hidden in ancient tribal knowledge? Today, we'll look at Indigenous knowledge and intellectual property, and how Tech Transfer Offices deal with the specific issues of protecting and honoring these cultural assets.
We're delighted to welcome Graham Strong, Otago Innovation's commercialization manager with over 25 years of business expertise. Graham is an expert in both intellectual property and Indigenous rights, with a PhD in Botany and a Master of Laws focusing on the monetization of Māori medicinal knowledge.
As Otago Innovation's expert in natural product commercialization and Indigenous intellectual property, Graham is perfectly positioned to help us navigate this complex landscape.
We'll look at the underlying contrasts between Indigenous and non-Indigenous intellectual property systems, the problems of protecting Indigenous IP during technology transfer, and the importance of respectful interaction with Indigenous people.
We also look at how universities may form meaningful, long-term relationships that go beyond transactional agreements, ensuring that Indigenous perspectives are heard and their expertise is appropriately recognized and preserved during the innovation process.
In This Episode:
[01:44] Graham has a lot of expertise in both intellectual property and indigenous rights.
[02:02] Graham shares that traditional knowledge and indigenous IP are two different things.
[04:02] We talk about how universities can engage indigenous communities in a culturally respectful and meaningful way.
[05:01] Conversations can start when everyone realizes it's okay to be uncomfortable. Graham also talks about reputational damage.
[06:06] Key challenges when protecting indigenous IP in the context of text transfer.
[07:19] We talk about things like handling consent and ownership when traditional knowledge is embedded in new technology.
[08:14] It's difficult to protect background IP which is in the public domain. Graham talks about prior informed consent and mutually agreed terms. These are some of the ingredients that can be in place to handle consent of ownership.
[10:05] Drafting these types of agreements is still a work in progress for Graham's institution.
[11:32] The role that indigenous communities play in the decision-making about how they're knowledge is used.
[13:14] It's a balance between financial and non-financial when putting these partnerships together.
[15:45] We learn about the distinctions of which group you should engage in when looking for permission to use indigenous IP.
[18:33] Talking about cultural respect in tech transfer.
[20:33] We discuss whether universities are able to navigate these complexities while maintaining their core focus on research and innovation.
[23:02] Treating indigenous partners like any other partner and having a negotiation and seeing where it lands.
[24:38] Dealing with issues early on before money is involved.
[27:32] Graham shares a situation where involvement of indigenous communities has slowed down the commercialization of a technology.
[30:02] There have been times when there's been limited flexibility in developing commercialized technology with indigenous communities.
[32:03] We learn about how best practices in indigenous IP protection from other countries apply to universities in various legal, cultural, or economic contexts.
Resources:
Graham Strong - Otago Innovation
Graham Strong LinkedIn
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The bourbon industry is a major economic driver for the Kentucky region, with 95% of the world's bourbon supply made and aged in the Bluegrass State. There’s more behind those barrels than aging whisky.
I’m joined by Dr. Greg Tucker , a licensing manager and commercialization specialist III at the University of Louisville. His extensive experience includes negotiating business terms for license agreements, managing university technologies, and establishing partnerships between innovators and companies. He holds a doctorate in chemistry from Arizona State University and has multiple U.S. patents in renewable energy.
We talk about the rich history of bourbon, exploring its origins dating back to George Washington and the evolution of its production process. We discuss how intellectual property plays a crucial role in the bourbon industry, from trademarks protecting iconic brands to patents safeguarding innovative distillation methods.
Greg also shares insights into notable IP cases, including the Jack Daniel's dog toy dispute and Maker's Mark's signature red wax seal. We also explore groundbreaking innovations emerging from the University of Louisville, with a spotlight on Bioproducts LLC. This company is revolutionizing the industry by transforming distillery waste into valuable products like animal feed, healthy sugar alternatives, and even materials for 3D printing.
Whether you're a bourbon enthusiast or just curious about how innovation impacts industry, this episode is for you. Grab your glass, sit back, and let’s toast to the history and future of bourbon.
In This Episode:
[02:17] Greg is the licensing manager at University of Louisville Research Foundation and the diversity and inclusion pillar lead for HIPAA, our Kentucky Intellectual Property Association here locally in Louisville.
[04:12] Bourbon is a 9 billion dollar industry in Kentucky.
[05:12] Greg shares the history of bourbon with us.
[07:29] What makes bourbon a bourbon is that the mash is at least 51% corn. It also has to be distilled and aged in an oak barrel.
[11:09] During prohibition people could still buy medicinal bourbon.
[11:40] September is also bourbon heritage month.
[12:13] You can still find George Washington's still at Mount Vernon.
[13:39] Tennessee whiskey is bourbon with an additional process.
[15:29] Greg talks more about what makes a bourbon a bourbon.
[16:31] The role that IP plays when it comes to bourbon. It touches every aspect from names and trademarks to copyrights and design patents.
[19:34] There are also a lot of bourbon trade secrets.
[21:13] Greg talks about Jack Daniels vs. VIP Products, where a Jack Daniels bottle replica was used as a dog toy. Maker's Mark also had a case involving the red signature wax that drips from the top of the bottle.
[25:23] Bioproducts transform organic waste from distilleries into value-added products.
[27:20] Stillage is the organic grainy waste leftover from the fermentation process. Some interesting uses have been for it from animal feed to sweeteners.
[30:07] There is also a company working on developing Biocoal.
[32:35] Greg talks about working with farmers and collaborations using biomass.
[34:31] The Estate Whiskey Alliance is trying to make the industry more efficient.
[36:05] Greg talks about using carbon credits and becoming more efficient.
[38:07] Challenges from scaling up with Bioproducts
[44:19] We learn about a quantitative method that can be used to identify the type of bourbon or whiskey due to its unique grain pattern.
[46:26] For Greg, bourbon tasting is not only work, it's a hobby too.
[47:46] Greg talks about his favorite bourbon and whiskey along with an IP story.
[53:44] This episode winds down with talking about favorite bourbons and sharing a virtual drink.
[55:57] Greg walks us through a traditional Kentucky bourbon tasting.
Resources:
T. Gregory Tucker, Ph.D. LinkedIn
Telpriore Greg Tucker Facebook
Bioproducts, LLC
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AI is transforming the tech transfer industry, but how can we stay ahead of this rapidly evolving technology and fully leverage its capabilities? In this episode, we explore how AI is becoming an essential tool, helping accelerate licensing deals, identify the right industry partners, and market innovations more effectively.
To dive deeper into these advancements, we offer a sneak peek into our upcoming 4-week virtual course, The Future of Tech Transfer: Leveraging AI to Find & Secure Licensing Deals. This course is designed to equip you with practical AI skills that can revolutionize your approach to tech transfer.
It covers topics ranging from finding ideal industry partners to crafting personalized marketing strategies, all while emphasizing AI tools that boost efficiency and productivity in tech transfer offices. We also address the importance of adopting AI now to avoid falling behind in this fast-moving field.
Joining us are the course’s expert instructors: Peter Bittner, founder and CEO of The Upgrade, who has helped organizations like NASA and Apple close the AI skills gap, and Dr. D’vorah Graeser, founder and CEO of RocketSmart.io, a platform using AI to connect universities with top corporate partners.
In This Episode:
[02:14] This course is intended to look at AI from the perspective of a tech transfer professional. It's about using AI tools to make the process faster and more productive.
[03:37] AI tools can help innovations find the right commercial home and the right partner to commercialize the innovation and bring it to market.
[04:42] These tools will help tech transfer professionals find the right contact and make the right case.
[05:24] D’vorah talks about challenges for tech transfer offices finding corporate partners.
[06:42] Peter talks about the wide range of tools that they'll be covering in the course.
[10:32] D’vorah talks about how AI tools can help with invention summaries by defining the essence of the summary in regular language or from a business perspective.
[12:20] One way to craft a stronger pitch is to find the buyer side persona. Who is the buyer? How to identify the correct buyer persona?
[14:17] The pre-recorded modules of the live course will give everyone a foundation. The live part of the course will show how the tool can be used within specific contexts.
[15:13] There will be a pre-recorded module before every live module that corresponds to the content.
[16:40] Peter talks about how AI will allow all storytellers to do more with less.
[18:06] They're going to have office hours titled, Ask Us Anything About AI.
[20:04] D’vorah also encourages everybody to join the AI Special Interest Group. She also has a book coming out. They want to scale down AI for specific fields.
[22:51] D’vorah and Peter talk about the specifics of the modules and how busy people can fit the class into their schedules.
[24:34] Peter shares an AI success story and how AI enables a small team to be scrappier and more productive.
[27:21] How AI is going to evolve over the next 5 to 10 years and the possibilities of reducing friction.
[29:02] We talk about why tech transfer professionals should get involved in AI right now.
Resources:
The Future of Tech Transfer: 4-Week Virtual Training Course: October 15 – November 7
Peter Bittner - The Upgrade
Peter Bittner LinkedIn
Dr. D’vorah Graeser - Rocket Smart
Dr. D’vorah Graeser LinkedIn
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Recent research has highlighted that patents from majority-female inventor teams receive significantly fewer citations—up to 22% less—than those from majority-male teams. Citations play a key role in measuring the impact and value of patents, making this gap significant not only for the inventors themselves but also for the broader innovation landscape.
Why are female inventors' patents cited less frequently, and how does this imbalance affect their future development and the total capacity for innovation?
Our guest today is Gauri Subramani, an assistant professor in Lehigh University's Department of Management. Gauri's research focuses on gender and resource disparity in innovation, using data-driven methods to identify gaps and investigate potential remedies.
Prior to joining academia, Gauri worked as a consultant and political appointee in the Office of Economic Policy at the United States Department of Treasury under the Obama administration. Her research spans the United States patent system and digital platforms, where she investigates the impact of representation on innovation and entrepreneurship.
One of the major topics we explore is the persisting gender discrepancy in patent citations, even after controlling for a variety of variables. We investigate whether this disparity is predominantly caused by applicant-added citations rather than examiner-added citations. Our discussion delves into the tendency of majority-male teams to regularly cite patents from other majority-male teams, as well as how patents from majority-female teams are less likely to be further developed.
We also look at how women's patent undercitation affects businesses that rely significantly on cumulative innovation, such healthcare and technology. Finally, our study contributes significantly to the continuing discussion about diversity, inclusion, and innovation in the field of patenting and intellectual property.
In This Episode:
[03:08] Patent citations are an established way by which researchers really measure the impact and quality of an invention. Gauri wanted to explore the gap in citations between female and male inventors.
[04:04] Female inventor teams received up to 22% fewer citations than male counterparts. Why does this citation gap exist?
[05:21] After implementing multiple controls in the study there's a 4% gap that they can't answer for.
[05:48] They've discovered that female inventors' patents are less likely to be cited and appear to be less likely to be further developed by subsequent inventions.
[06:59] This could mean that female inventor patents are less likely to be cited because they're less likely to be built upon. It's also possible that female patents could be perceived as less impactful.
[08:57] Citations are primarily added to patents by applicants or examiners.
[10:17] The gender gap seems to be driven entirely by applicant-added citations.
[11:22] Gender in-group preference appears to be a factor in patent citations.
[14:19] Technology areas with more female inventors grow more slowly. Female inventors' patents are also more distinct.
[15:26] We discuss how gender affects access to social networks that facilitate knowledge diffusion in the patent system.
[17:13] This gap could translate into other gaps and make less incentive for females to develop their inventions.
[19:08] Being less likely to build on inventions by female inventors exasperates several underlying problems especially in the healthcare and technology fields.
[20:39] There can be a desire to cite as little as possible on patent citations.
[22:23] Applicants and tech transfer offices should proactively think about the processes by which they search for and add citations.
[24:32] The Council for Inclusive Innovation is a signal of the USPTO's commitment to increasing diversity in patenting.
Resources:
Gauri Subramani
Gauri Subramani Lehigh University
Gauri Subramani LinkedIn
Untapped Potential: Investigating Gender Disparities in Patent Citations
Council for Inclusive Innovation
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Artificial Intelligence (AI) is revolutionizing industries across the board, from healthcare to finance, bringing with it new challenges for inventors, universities, and the IP community. The U.S. Patent and Trademark Office (USPTO) recently issued new guidance on subject matter eligibility for AI inventions, providing much-needed clarity on how AI-related innovations can be patented. This update is vital for those working at the intersection of technology and intellectual property, especially in tech transfer offices and research institutions.
My guest today is someone deeply involved in shaping these policies: Derrick Brent, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO). As Deputy Director of the USPTO, Derrick serves as the principal advisor to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Kathi Vidal. In his role, Derrick works to advance intellectual property policies that foster innovation, support startups, and enhance entrepreneurship nationwide.
We discuss AI subject matter eligibility guidance and its impact on the future of AI patenting. Derrick shares that the goal of this guidance is to promote clarity and consistency for both USPTO staff and external stakeholders in analyzing AI and critical emerging technologies. The USPTO aims to streamline the patenting process for AI-related inventions through clarity and consistency to patent subject matter eligibility. We also cover where stakeholders can submit comments and feedback on these guidelines. Additionally, we explore the tools and resources available to help everyone become AI fluent to navigate this rapidly evolving landscape.
In This Episode:
[02:39] Derrick gives us a brief overview of the key updates in the USPTO's AI subject matter eligibility guidance.
[03:02] AI presents one of the greatest technological innovation opportunities in a generation. It's transformative and an amazing Innovation opportunity.
[03:32] Order 14110 or the Safe, Secure, and Trustworthy Development and Use of AI. Was used as a guiding principle.
[04:06] The guidance on the intersection of AI and IP, which could include patent eligibility issues related to innovation in AI and Critical Emerging Technologies was issued on July 17th of 2024. We are now in the middle of the comment period.
[04:12] There are three main parts to the guidance. The first part is to assist USPTO personnel and stakeholders in evaluating subject
matter eligibility for AI inventions.
[04:38] The second part of it is to provide a new set of examples to assist in applying guidance. The third part is to address feedback from stakeholders and also to discuss the law and policy landscape.
[06:40] Derrick shares information about the previous guidance that led up to this new guidance.
[12:19] The comment period is going on now, so submit your feedback regulations.gov.
[13:22] They are going to stay current with developments through engagement with stakeholders and interagency conversations and collaborations.
[15:41] Derrick shares important tools like Site Experience Education Program (SEE) and the Patent Examiner Technology Training Program (PETTP). The USPTO also has an AI portal.
[17:53] How the guidance addresses distinguishing between abstract ideas and practical applications.
[18:36] There is a two prong analysis. If the first prong is met then you move to the second prong.
[22:53] Use the tools with AI related patent applications. Be diligent and describe your invention as clearly as possible
[26:39] If you're interested in commenting, go to regulations.gov. The deadline for commenting should be in the portal.
[27:41] In spite of the type of IP, there is a consistency for the rules and guidelines of evaluation.
[29:49] Challenges include new and unprecedented inventions.
[30:56] Derick talks about government collaboration.
[33:14] AI is going to be a transformative problem solving tool.
Resources:
Derrick Brent
Derrick Brent LinkedIn
Journey to the USPTO — Derrick Brent, USPTO Deputy Director
Regulations.gov
Site Experience Education Program
USPTO Artificial Intelligence
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The Manufacturing Extension Partnership (MEP) is a public-private partnership with centers in all 50 states and Puerto Rico. This episode dives into MEP and the MEP National Network—an initiative that has been a pillar of U.S. manufacturing, offering comprehensive solutions to manufacturers across the country and fueling growth and innovation in the sector.
Joining us for this discussion are two distinguished experts. First, we have Nagesh Rao, the acting director of the Manufacturing Extension Partnership at NIST. With over 25 years of experience across the public, private, and non-profit sectors, Nagesh brings a wealth of knowledge to the table. He previously served as Chief Information Officer for the Bureau of Industry and Security at the U.S. Department of Commerce, co-developed federal initiatives like i6 Green and Patents for Humanity, and led crucial technology efforts during the COVID-19 response.
David McFeeters-Krone is a commercialization and business development executive with over 25 years of experience at MIT, NASA-RTTC, Intel, and his own firm. He currently manages a Manufacturing Extension Partnership (OMEP) grant, engaging small manufacturers with the ManufacturingUSA institutes. David has reviewed numerous commercialization plans, founded two companies, and serves as an adjunct professor at Portland State University. He has established strategic R&D partnerships with organizations like the U.S. Air Force, NASA, and NIST, and was awarded the Federal Lab Consortium’s Outstanding Service Award in 2008.
In this episode, we’ll explore the MEP National Network’s role in supporting U.S. manufacturers, discuss innovative approaches to growth and competitiveness in the manufacturing sector, and gain valuable insights from Nagesh and David.
In This Episode:
[02:57] Nagesh shares how his background has led to innovation in the manufacturing sector.
[03:41] Nagesh started my career in technology transfer and commercialization back in 2002 at Rensselaer Polytechnic Institute.
[04:29] Coming to the MEP program in 2023 was a full circle journey of his career. He worked in engineering, public policy, the US patent and trademark office, then worked in industry and the national security space.
[05:07] He now ensures evidence-based policy decision making at the federal level to support small and medium-sized manufacturers.
[07:10] For our country to be competitive from a national security perspective we need a robust manufacturing scene.
[08:20] Challenges include keeping up with software demands and having a talented technical workforce.
[10:39] The role of MEP in helping small and medium-sized manufacturers navigate these challenges. MEP has a 30-year history of being a trusted advisor. They meet these manufacturers wherever they are.
[11:46] Collaboration ensures new technologies make it from the lab to the production floor.
[13:29] MEP is perfectly positioned to help companies overcome hurdles especially with connections. The role of the MEP Advanced Technology Team.
[15:11] How the MEP supports tech transfer in the manufacturing sector and the role for tech transfer Professionals in this ecosystem. MEP National Network is a network of networks within a greater network of innovation ecosystems across the United States.
[16:10] Think of an MEP center as a hub of excellence for a company that is in the business of manufacturing.
[20:08] Navigating the complex balance between academia and industry for a mutually beneficial relationship. Communication, culture, and contact.
[22:54] David shares examples of successful partnerships that led to significant advancements in manufacturing technology. One of the examples he uses is 3D printed plastic parts to service forms for metal press part making.
[26:02] Measuring the success of the MEP manufacturer initiatives.
[27:04] Common pitfalls manufacturers encounter when trying to bring about new technology. Lack of time and not realizing the value of partnerships are common.
[34:00] The government has done a tremendous amount of lift for many companies. Large companies know how to use the federal government.
[39:59] Predictions for where the MEP is going to go in the next 5 years.
[41:16] How making investments to move forward will help in the long run.
[46:49] Advice for getting involved in an MEP Network and supporting local manufacturers includes beginning with connecting with your local center and going to the MEP website on NIST.gov.
Resources:
NIST MEP
MEP National Network
Nagesh Rao
David McFeeters-Krone
David McFeeters-Krone LinkedIn
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In a world where groundbreaking discoveries often struggle to leave the laboratory, we explore how to transform scientific insights into real-world solutions. We’re focusing on bridging the gap between academic research and community impact.
My guest today is Dr. Kendra Stenzel, the Director of Innovation Talent at the University of Kentucky's Office of Technology Commercialization. With her unique blend of scientific expertise and business acumen, Dr. Stenzel is at the forefront of training the next generation of entrepreneurs and commercialization professionals.
Armed with a Ph.D. in Pharmacology and an MBA with a focus on entrepreneurship, she serves as a vital bridge between researchers and the Tech Transfer office. Her mission? To help researchers reimagine their work through a commercialization lens, encouraging them to "fail fast and pivot" – a mantra that's reshaping how academic innovations reach the market.
She's also a facilitator, helping innovators develop business models, secure funding, and navigate the complex path from lab to market. Her experience with the Kentucky Network for Innovation and Commercialization (KYNETIC) has given her invaluable insights into nurturing early-stage innovations.
Today, we explore Dr. Stenzel's perspectives on how researchers can frame their outcomes to maximize community impact, the challenges of commercializing academic research, and her vision for the future of innovation in academia. Let's dive into this conversation about turning scientific breakthroughs into tangible benefits for society.
In This Episode:
[01:58] One of the main challenges with translating academic research into community impact is education.
[02:37] Common misconceptions and challenges include some innovators not understanding that their innovations aren't market ready or community ready and getting innovators to understand the word commercialization.
[04:20] The goal is beyond making money, it's having an impact on the community. Getting innovators to accept this reality has a lot to do with being intentional with the relationship.
[06:00] Balancing the academic focus on research and the need for commercialization includes relating with the researcher and investing in the relationship. Meeting the researchers in the lab and having the conversation about the science and defining the research and outlining the path forward.
[07:10] Barriers that prevent research from making it out of the university include lack of time, having all of the necessary qualifications, and having the knowledge and support.
[09:35] From the start they focus on things like the regulatory pathway, prototyping, and the facilities they have to use. Launch Blue has an innovation training program and programs that keep innovators engaged.
[10:46] Kendra talks about crucial elements of a successful education program for researchers.
[12:09] thinking outside the box and communicating that everyone can be an innovator.
[12:53] Money to put towards proof-of-concept development is crucial. The education and framework brought to the innovator is also very important.
[14:56] Collaboration and cultivating partnerships that align with university goals and needs of the broader community.
[16:44] Measuring the long term impacts of intellectual property assets. Defining success goes back to understanding stakeholders. They do have quantitative metrics to protect intellectual property assets. Kendra likes to look at the qualitative metrics and the innovator and the team.
[19:16] The MBA that Kendra is getting has really taught her to think in terms of strategy.
[20:43] Advice includes meeting innovators where they are and keeping relationships first.
Resources:
Kendra Stenzel Director, Innovation Talent Development UK
Kendra Stenzel University of Kentucky
Kendra Stenzel LinkedIn
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Did you know that despite being behind many groundbreaking inventions and patents, women are less likely to turn their ideas into commercial products? It's a trend that's holding us back, and we're here to explore why. To discuss the experiences and insights of leading women scientists, researchers, and inventors. We have two prolific and leading women with us today.
Dr. Marianne Privett, is a Partner and patent attorney with extensive knowledge in chemistry and materials science. Marianne manages patent portfolios for a diverse range of clients, including multinationals and universities, with a focus on clean tech. She's a strong advocate for women inventors and entrepreneurs and actively participates in networks like Women in Health Tech and the Global Women Inventors & Innovators Network.
Dr. Aardra Kachroo, a Professor at the University of Kentucky specializing in plant pathology. Her research delves into the intricate signaling mechanisms in plants, particularly how they adapt and respond to various pathogens. Aardra has received numerous awards for her work and is deeply involved in outreach, including workshops for youth and presentations to farmers.
In This Episode:
[02:18] Marianne shares her journey in science and innovation. She discovered that patents were a good way to marry business with science.
[03:26] Aardra always loved science, and she's a researcher. She didn't want to work with animals so she chose plant research. She has two patents and a company based on one of those.
[05:12] Challenges that women inventors face navigating the IP landscape. Research shows that women aren't engaging as much with the patent process.
[06:59] There are fewer girls and young women studying STEM subjects.
[08:13] We need to have uncomfortable conversations about why women aren't showing up as inventors.
[08:32] Aardra shares her patent experience. Her company was patented by her husband. She refers to studies where women want everything to be 100% where a man is more confident and will go ahead before the project reaches that point.
[09:38] Women being unwilling to commercialize their innovation because of perfectionism.
[10:21] Women also seem to face more barriers than a man in the same position.
[12:05] The low percentage of women that get VC funding is scary. Role models also have something to do with this. We need to normalize women entrepreneurs.
[14:04] Aardra talks about outreach contributing to the commercialization of research. She shares a story about how what she was doing in the lab was able to make it into society.
[16:35] It's easier for a student to understand what you're studying if you show them that it's applicable in the real world.
[18:44] Marianne talks about networking groups such as Women in Health Tech and the Global Women Inventors & Innovators Network.
[21:44] She also shares global innovation advice for women to protect their inventions.
[25:10] Opportunities on the horizon for women inventors. The CHIPS and Science Act creates a more streamlined pathway to innovation and commercialization. There's also a lot of focus on supporting women and minorities.
[26:59] Technology, Innovation and Partnerships (TIP) has funding programs for every step of the way.
[28:19] The UK also has similar programs just on a smaller scale.
[29:35] How tech transfer professionals can better support women.
Resources:
Dr. Marianne Privett
Dr. Marianne Privett LinkedIn
Dr. Aardra Kachroo
Dr. Aardra Kachroo LinkedIn
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Tech Transfer professionals have a lot to stay on top of, including the legislative and legal landscape in Washington, DC. My guest today is Jeffrey Depp, who shares his expert knowledge on the current cases we should be aware of.
Jeffrey is a registered patent attorney with extensive experience in intellectual property and innovation policy. His diverse background spans university Tech Transfer, the pharmaceutical industry, law, and the federal courts. Currently pursuing his PhD at the University of Pittsburgh, Jeffrey applies an Austrian economics lens to U.S. innovation, bringing a unique perspective to our discussion.
In addition to his academic pursuits, Jeffrey consults on biopharmaceutical innovation for the Center for Strategic and International Studies. His commitment to shaping policy is evident through his active involvement in various professional organizations, including his current membership and former role as chair of the Public Policy Legal Task Force at AUTM.
In today's episode, we'll explore Jeffrey's rich background and how it influences his current work. We'll provide an overview of this year's comment requests from Washington, DC, discuss the administrative landscape affecting Tech Transfer, and examine recent Supreme Court decisions, including Loper Bright v. Raimondo and SEC v. Jarkesy, and their implications for the tech transfer field.
We also look at key decisions in the federal courts and Congress. Jeffrey breaks down these cases and explains their relevance to us, while also sharing tips for tech transfer professionals to stay informed.
In This Episode:
[01:57] Jeffrey works with a number of organizations in DC trying to promote the progress of science through technology and commercialization.
[02:20] He has real world experience and formal training. He spent many years in the pharmaceutical industry and in university technology transfer. He has an MBA. He's a registered patent attorney. He's working on a PhD dissertation focused on the nature and causes of American innovation from an Austrian economics perspective.
[03:50] We learn why it's important for tech transfer professionals to stay updated on the legislative activities happening in DC. Staying on top of legislation is just another job that tech transfer professionals have to do.
[05:21] Bad policy can devour even the best of science. This is why Jeffrey has gotten involved to help great technology move forward instead of being stifled by bad policy.
[06:47] We try to keep our eye on three buckets, the administrative law side of it, what's going on in Congress with legislation, and of course, what the courts are doing.
[07:28] This year has been extremely active with nine or so comments requested from agencies.
[08:13] The USPTO has put out guidance about who is the inventor when it comes to AI technologies. There has to be sufficient human inventorship in order to be patentable.
[10:05] The patent office asked for comments about how to promote more innovation in the marketplace. There were also fee increases.
[14:44] Jeffrey talks about more of the comment request issues this year.
[17:31] There's another one about the impact of AI on prior art. The human being needs to be paramount in inventorship.
[22:29] The last one is about the experimental use exception.
[24:43] SEC v. Jarkesy referenced the Oil States case which did directly implicate intellectual property issues.
[28:19] Jeffrey talks about the private rights public rights doctrine of patents.
[29:01] Jeffrey talks about Loper Bright v. Raimondo.
[30:45] We discuss pending cases in the Supreme Court that we should keep an eye on including Cellect, LLC v. Vidal.
[31:21] This case is very important for tech transfer professionals to be following. The case establishes binding
precedent that a terminal disclaimer cuts off any extended patent term granted through PTA.
[38:28] Jeffrey shares his thoughts on some of the key decisions in the federal circuit court. Including the LKQ Corp. case which affects design patents.
[41:29] We also talk about University of California v. Broad Institute Inc. regarding CRISPR technology. This is important because gene editing is only going to continue to grow in creating health breakthroughs.
[45:28] We talk about the legislative side. Congress has introduced multiple patent bills including the Prevail Act, the Patent Eligibility Restoration Act, the Restore Act, RALIA, and the Balancing Incentives Act.
[46:16] Problems with the patent system include things that make patents unreliable and things that make patents uncertain.
[53:47] Jeffrey talks about the Countering Communist China Act and the Invent Here, Make Here Act.
[58:42] We discuss the FTC's move to ban non-compete agreements and how this could affect technology transfer offices.
[01:02:53] The best way to stay on top of things is to compartmentalize it in your mind and keep an eye on what's going on in the courts and the federal circuit. The Judiciary Committee has a subcommittee focused on IP. Also focus on the USPTO and the NIH.
Resources:
Jeffrey Depp LinkedIn
SEC v. Jarkesy
Loper Bright v. Raimondo
LKQ Corp case v. GM
Countering Communist China Act
Invent Here, Make Here Act
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Innovation is at the heart of both Tech Transfer and human progress. It's in our nature to seek better ways of implementing ideas, but historically, innovation hasn't always received the scholarly attention it deserves, despite technology being integral to our lives—think of the 250,000 patents in a single smartphone.
I’m thrilled to have Joy Goswami, Senior Director of Corporate Engagement at Johns Hopkins University, here to talk about the role of Technology Transfer in fostering innovation, distinguishing between invention and innovation, and exploring how tech transfer professionals categorize, assess, and commercialize new inventions.
We'll discuss how the invention process begins with disclosure, followed by classification into sustaining, disruptive, and breakthrough technologies, among others. Disruptive innovations, in particular, create entirely new markets. We'll also touch on inspiring stories, like the invention of a glass keyboard for people with disabilities that became part of the iPhone, and a nurse's passion that led to a startup for wearable simulators.
As we look to the future, trends such as interdisciplinary research, entrepreneurship, and emerging technologies like AI, machine learning, cybersecurity, and biotechnology will shape the landscape of innovation. Join us to get an inside look into the power of innovation and the bright future of Tech Transfer.
In This Episode:
[02:10] Innovation is the cornerstone of what Tech Transfer professionals do. It's also the cornerstone of human development in general. It's our nature to seek new and improved ways of putting ideas into action.
[03:02] Innovation hasn't always received the scholarly focus that it deserves. Yet, technology is everywhere. There are 250,000 patents in our cell phone alone.
[05:02] Today we're going to talk about Technology Transfer in the role of innovation in Technology Transfer.
[05:16] The distinction between invention and innovation. Inventions are solutions to problems. Innovation is a commercially successful use of invention.
[06:22] The starting point is an invention disclosure.
[08:06] We chop up the invention disclosure in different segments and plug it into an assessment knowledge canvas.
[08:32] There are three broad categories to understanding innovation: understanding the innovation, the classification of the innovation, and additional details broken into 10 different subparts.
[09:32] We want to take the innovation from the point the inventor has given us to commercializing.
[10:14] Four kinds of patent protection including process, composition of matter, articles of manufacture, and machines.
[11:23] Classification also has four classes including sustaining, discontinuous, disruptive, and breakthrough technologies.
[12:16] Disruptive is critical, because it's the one that creates new markets.
[13:36] Tech Transfer professionals have a lot of responsibility with categorizing the Invention from the beginning and making sure that it has a value proposition.
[14:11] Crucial mindset for academic researchers to foster innovation. Academics are moving from doing the research and sharing knowledge to research that has an impact on society.
[17:35] There are translational researchers who love working in the translational space. They can be used as ambassadors to coach the next generation. Education about the process and benefits of tech transfer is crucial for innovation.
[19:32] Joy shares some personal experiences that highlight the power of mindset when it comes to innovation.
[21:19] The story of a keyboard developed on glass which was meant for people with disabilities. The inventors were able to sell the patent for this to Steve Jobs and it was integrated into the iPhone.
[23:03] The impact and passion that these inventors had led to success.
[24:28] A nurse who developed a wearable simulation device for training healthcare practitioners was so passionate that it became a startup called Avkin that makes wearable simulators.
[25:56] Johns Hopkins University is one of the oldest universities established in 1876. It was also one of the first universities to have research as a component. They now do $3.4 billion dollars of research. They get more than 400 disclosures a year.
[27:21] The Tasty Tape is a tape that holds a burrito together. It's simple and yet it was complicated. Hopkins also developed the targeted real-time early morning system or TREWS.
[28:41] Saccharin, rubber gloves used by surgeons, and the smart tissue autonomous robot STAR have been developed by Johns Hopkins.
[29:41] Exciting trends in academic transfer that boost innovation include integrated technology in the process. The world's getting smaller and everything's at a global scale.
[32:11] There's an increased focus of interdisciplinary research not just in the US but globally. Universities are also developing consortium models. There's also a growing emphasis on entrepreneurship and startup culture.
[35:07] Practical steps to create a culture that encourages and awards innovation amongst faculty and researchers. They need to be treated with a little TLC, because they do multi-functional work with education and research. We also need to continue to educate the faculty members.
[38:53] Emerging trends and technology shaping the future include AI and machine learning. Other emerging trends include cybersecurity, biotechnology, genomic space, and personalized medicine, and CRISPR technology.
[40:23] 3D printing, electronics, healthcare, energy manufacturing and data science are also sectors to watch.
[41:24] Things are going to become more complicated and sophisticated as we move forward.
Resources:
Joy Goswami, Senior Director of Corporate Engagement at Johns Hopkins University
Joy Goswami LinkedIn
Joy Goswami Twitter
Partners in Discovery: Unlocking the Potential of Research Collaborations With Gaylene Anderson
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Let’s take a deep dive into innovation in the health sector and the role that university research plays in this sector. Joining us today is Richard Gannotta, a seasoned healthcare executive with a remarkable career spanning top academic and public health systems.
From leading UC Irvine Health to shaping policy at NYC Health + Hospitals, Rick's expertise is unparalleled. As managing partner of Washington Square Advisors, he continues to drive innovation in the medtech and biotech industries. He's also a dedicated educator at NYU and the host of the Healthcare Nation podcast.
In this episode, we explore the future of healthcare and technological development. We'll explore how telehealth is transforming patient care, the groundbreaking potential of AI in medicine, and the critical role of intellectual property in driving innovation.
We'll also discuss the evolving landscape of healthcare delivery, the impact of new technologies like wearables, and the policies needed to support this exciting transformation. Join us as we uncover the trends shaping the future of health and wellness.
In This Episode:
[02:16] Rick shares his amazing career journey. According to Rick, he's just a kid from Brooklyn who caught a couple of good breaks along the way.
[02:46] He's always been interested in technology, science, and medicine.
[03:17] He ended up dropping out of high school and becoming a nurse's aide and then an LPN. This was a big break for him. It eventually led to nursing school, becoming a nurse practitioner, and getting a degree. He now has an MBA and a doctorate in healthcare policy.
[04:33] Starting out working at the bedside was invaluable information for his further career. He's also always taught academically. His firm Washington Square Advisors is a boutique firm navigating the intricacies of the healthcare sector.
[06:26] Career paths aren't linear. They can have many twists and turns.
[06:54] Rick believes that technology is the new biology. It will be equally important for the health and wellness of society and individuals.
[08:03] Validating ideas and whether the innovation is addressing the issue.
[10:17] Three Factor Framing. There are three factors that are the key components of disruptive innovations. The first Factor F1 is really market eligibility or ideation. Is there demand?
[12:14] F2 is the governing process. The environmental gating conditions that would slow things down or speed them up.
[12:56] F3 is the out of field variable or the X factor. It's an approach or technology commonly used in a different sector.
[14:05] These can be applied to idea generation, brainstorming and more.
[16:15] Rick talks about Telehealth and AI revolutionizing healthcare. There are incredible opportunities to change the game.
[18:02] Rick predicts a convergence of The Internet of Things and medical technology.
[20:14] The first rule at Washington Square Advisors is to seek to understand your client's challenges. Work closely with the teams to understand the philosophy.
[23:18] Rick talks about navigating IP challenges working with startups in the healthcare sector. It's essential to secure your patent early.
[27:44] Governmental policies are very important when you're thinking about startups.
[28:19] Can we make healthcare better, more convenient, and more accessible using technology? Another big issue is the medical professional shortage.
[32:46] Strategies for tech transfer offices include having strong relationships with industry partners, having your finger on the pulse of what's happening, and understanding the resources that you need to provide.
[34:33] Partnership agreements and joint ventures make a lot of sense.
[35:16] Pitfalls include not fully understanding or underestimating hurdles such as regulatory issues. Inadequate market understanding, fit, and validation are also concerns that need to be addressed.
[36:43] All of the processes begin with education.
[37:47] Rick's advice includes focusing on understanding the real clinical need and the why.
Resources:
Richard Gannotta NYU Wagner
Richard Gannotta LinkedIn
Healthcare Nation Podcast
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Navigating the intricacies of university-industry partnerships is more important than ever in an era when colleges increasingly see their intellectual property portfolios as attractive sources of prospective revenue. Today, I'm thrilled to have Donald Siegel join us to talk about university-industry partnerships, as described in his book The Chicago Handbook of University Technology Transfer and Academic Entrepreneurship.
Don is a Foundation Professor of Public Policy and Management at Arizona State University and Co-Director of the Global Center for Technology Transfer. With a remarkable career that includes serving as Dean of the School of Business at the University at Albany, SUNY, and editing prominent journals such as the Journal of Technology Transfer, he has unrivaled knowledge of university technology transfer and academic entrepreneurship.
Don and his co-editors have prepared a thorough guidebook that synthesizes cutting-edge research and gives critical insights from experts across many fields. Today, we'll look at key themes from the book, including the evolution of technology transfer, intellectual property management systems, and how to foster an entrepreneurial culture within universities.
In This Episode:
[02:14] All of the authors are academics that have been studying Tech Transfer. They've seen the field evolve as an academic field. It's a global phenomenon and people in multiple disciplines have been studying this field.
[03:06] They decided to approach the University of Chicago Press and pitch their idea. It was a difficult sale, because they've never done a handbook or anything on tech transfer.
[04:36] It's a collection of leading edge research on the topic.
[05:04] One of the chapters is an entrepreneur's guide to the university. Open innovation is one of the important concepts.
[06:40] One of the major changes that Don has seen are people with business and entrepreneurial experience in the Tech Transfer office.
[07:39] They've moved beyond licensing and patenting with a greater focus on entrepreneurship.
[09:22] There's also a much greater appreciation of the role of technology and economic development.
[11:20] Don talks about how AUTM has changed and how they have more real world professionals with business experience. There's a strong entrepreneurial component to what Tech Transfer does.
[12:44] Tech Transfer offices also play a very important role in educating faculty and administrators about the value of Tech Transfer.
[15:01] Social returns to basic research maximize the value to the economy and society.
[16:55] Tech Transfer offices are under resourced. One of the problems is stakeholders don't understand the value.
[19:39] Don talks about using business school students to get engaged with Tech Transfer.
[26:20] We need to hire university leaders that value Tech Transfer and understand how important it is.
[28:10] Prosocial Tech Transfer and defined ways of measuring it. Interviewing and surveying faculty to understand what motivates them.
[30:53] Psychological issues and the importance of champions and leadership. Tech Transfer role models are important.
[36:47] How there is a larger interest in Tech Transfer abroad. There's a much stronger international presence.
[42:09] Immediate actions include more successful marketing of Tech Transfer within the university. The responsibility falls on the leaders. Academic entrepreneurship and messaging.
[44:39] It's also been difficult to get minorities interested in Tech Transfer as a profession.
[47:37] The three key takeaways that Don would like to highlight includes whoever manages the university needs to think of Tech Transfer as a major strategic issue.
[48:58] Tech Transfer strategy asking whether it's a priority. Set institutional goals and priorities.
[49:28] If it is a priority, the resources should reflect that.
[50:16] Which modes of tech transfer should be stressed? How should it be rewarded?
[53:39] Strategies for stressing startups.
Resources:
Donald Siegel ASU
The Chicago Handbook of University Technology Transfer and Academic Entrepreneurship
VentureWell
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