Education

Whether you are involved in license maintenance, finance, or patent administration, you need to understand license agreements to effectively do your job. This session will include an introduction to license agreements by describing the various sections of a typical license agreement and providing an explanation of the importance of the various terms. A discussion of the differences between license agreements for patent rights, copyright/software, and trademark will be included.

Webinar on AUTM: Anatomy of a License

Impact on Technology Transfer: We are entering the third wave of the artificial intelligence (AI) evolution, which is disrupting and revolutionizing many industries. While some worry about the unchecked expansion of AI, others praise its potential to improve life. This panel will present the framework and terminology of AI and delve into some of its applications and impacts on technology transfer. Speakers from both university and industry will explore the challenges and applications in licensing practices, and describe non-traditional university-industry deals, while exploring applications, including healthcare indications and social media. Proposed solutions will be presented and speakers will address the background and current state of AI patent subject eligibility.

Webinar on AUTM: Artificial Intelligence Webinar on AUTM

Technology transfer offices are seeing more and more software disclosures. Software developed in research organizations often includes components downloaded from the Internet that include their own license terms and obligations. Meanwhile, researchers often want to release their software under an open source license while pursuing their commercialization interests. How does a licensing professional navigate the multitude of available open source licenses to select the appropriate license? What are the implications of releasing software with an MIT license versus Apache? Will the release of software under an open source license impact its patent filing? Is it possible to build a successful start-up using software released under an open source license? These are just some of the questions we'll tackle.

Webinar on AUTM: Choosing the Right Open Source License for Your Software

The repurposing of therapies for alternative disease indications is an attractive approach that can save significant investments of time and money during drug development. It can also generate highly marketable technologies for the savvy university. Repurposed drugs are generally approved faster, are awarded market approval at a rate three times higher than new drug applications, and at half the cost associated with new drug applications. Academic researchers have successfully begun integrating repurposing into their grant applications from both federal and private donors. In this webinar, we will discuss these themes as well as what, from a university perspective, can lead to a successful program in licensing repurposed drug assets. Particular emphasis will placed on how to develop strong patent strategies for repurposed drug assets.

Webinar on AUTM: Drug Repurposing from a University Perspective

For many universities, the decision whether to file for patent protection for an invention is multi-faceted and challenging. Not only can these filings be expensive, but many foreign countries have patentability and enforcement challenges that are different than those encountered in the United States. Additionally, drafting claims for the US does mean compliance with the rest of the world. In fact, there may be opportunities overseas for subject matter that are difficult to protect in the US. This webinar will examine the requirements for patenting inventions in Australia, Brazil, Canada, China, Europe and Japan and provide practical tips for universities to consider when making strategic filing decisions.

Webinar on AUTM: Foreign Filing Considerations & Strategies for Universities

Providing founders with a “fair and equitable” equity share can be critical to the success or failure of a start-up. This webinar will cover equity distribution for the founders of start-ups based on intellectual property.. Panelists will highlight key issues and make recommendations based on best-practices. They will present their experiences, showcasing what went right, what went wrong, and why. Join this important webinar to get a roadmap on how best to proceed.

Webinar on AUTM: Founders & Initial Equity Distribution for Startups

In a unanimous decision on Helsinn v. Teva, the Court held that the sale of an invention to a third party, who is required to keep confidentiality, qualifies as prior art under the AIA. This ruling will affect post-AIA patent practice and is expected to have a major impact on prosecution, other court cases, and Patent Trial and Appeal Board proceedings. Join us to learn how it will affect you and pitfalls to avoid.

Webinar on AUTM: How New Supreme Court Rulings Impact Prior Art

This webinar will address the fundamentals of inter-institutional agreements (IIs), material transfer agreements (MTAs) and confidentiality agreements (CDAs) from the university perspective. We will then introduce each section of these agreements, explain typical terms and why they're used, illustrate potential issues created with certain approaches, and the legal underpinnings that motivate certain specific terms. Finally, we will end with a question and answer section.

Webinar on AUTM: Intro to IIAs, MTAs and CDAs from the University Perspective

It can be frustrating when your researchers don't understand inventorship. It's different from authorship, but what does that mean? How can I be an author and not an inventor? What sort of documentation do I need to support my claims? The questions can be endless and time consuming. A panel of attorneys and tech transfer experts will help those new to the profession find answers, and provide an opportunity for more seasoned professionals to share their favorite (or most hair-raising) stories.

Webinar on AUTM: Inventorship: Let's Help Each Other

This free webinar will provide an introduction to the fundamentals of intellectual property that can be applied to software innovations. Course includes an overview of patents, copyrights, trademarks and trade secrets. Some basic computing and software terms will also be discussed.

Webinar on AUTM: IP Basics for Software Innovations

This webinar will address the fundamentals of how to use the patent system to commercialize innovation. We will start with the history and policy behind the patent system. We will then discuss the process and requirements for obtaining a patent, which are important to know when evaluating viability of invention disclosures. Further, we will address strategies for managing a portfolio of pending and granted patents, and for monetizing the portfolio. Finally, we will end with a question and answer section.

Webinar on AUTM: Patenting 101

Post-Ariosa, the district courts and the Federal Circuit have increasingly used this decision to justify application of the Mayo/Alice rule to deny the patentability of claims directed to diagnostic methods and products of nature. Apart from the CellzDirect decision, which was characterized as a new method of making freeze/thaw resistant cells, the Court has been resistant to allowing diagnostic claims that arise from the discovery of a naturally occurring correlations. In Meriel, and in Cleveland Clinic, the diagnostic conclusions were dismissed as being no more than natural phenomenon, detected and evaluated using "routine steps".

The court has reiterated that the "inventive concept" required by the Mayo/Alice Rule cannot be provided by recognition of the importance of a natural correlation, even while recognizing that the rule renders many important advances in diagnostic medicine patent-ineligible. At least one district court has held that claims to unit dosage forms of naturally occurring compounds, such as vitamins, are patent-ineligible attempts to claim natural products. While the Patent Office continues to allow method of treatment claims, it may not be long before the Federal Circuit takes another look at Myriad and bans these claims as well.

Webinar on AUTM: Products of Nature

What University Staff Should Know: The Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) programs, also known as America's Seed Fund, are some of the largest sources of early-stage capital for technology commercialization in the US. These programs allow US-owned and operated small businesses to engage in federal research and development that has a strong potential for commercialization. These funds are specific budget set-asides reserved for small business research.

Under the SBIR program, universities and nonprofit research institutions usually play key roles as collaborators for small businesses, while under the STTR program, the small businesses must formally collaborate with a university or nonprofit research institution to qualify for the funding opportunity. In addition to access to these funds, the SBIR and STTR programs can also provide technology development and licensing opportunities for university-owned technologies. In this session, we'll discuss how for universities, it can be a win-win for those knowing what's available and how to proactively engage for the institution and its researchers.

Webinar on AUTM: SBIR/STTR

Bringing a new medical device to market can be an expensive and time-consuming process fraught with risk. This webinar will provide you with a better understanding of the process and challenges of commercializing medical device technologies. We will address, among other topics, the general regulatory processes, market risks and technology risks.

Webinar on AUTM: Strategies & Programs for De-Risking Medical Device Commercialization

When licensing technology to a small company, a grant of equity is a likely consideration by the licensee. To capture the potential value of the equity, it is important to negotiate additional legal agreements that have significant nuances which may not be familiar to someone without experience in this area. During our session, we will review the terms of Stock Purchase Agreements, Investor Rights Agreements and other agreements common to these types of transactions. We will also address specific topics such as participating preferred equity, dividends, tag along and drag along rights, etc. Questions and comments will be greatly appreciate to make sure we are covering topics of interest to everyone.

Webinar on AUTM: Understanding Equity Agreements

This webinar will review the fundamentals of basic industry-university collaboration agreements. We will start with a discussion of the common perspectives and objectives of each side coming into collaboration arrangements, where they are aligned and where they may not be. We will introduce the main sections of a typical agreement and explain key terms used to capture the deal, using examples to illustrate potential issues created with certain approaches, and the legal underpinnings that motivate certain specific terms. We will also address industry-university service agreements and how they may vary.

Webinar on AUTM: University Industry Collaboration Agreements 101

Technology practitioners are often unaware of U.S. government regulations restricting the export of technology outside the U.S. or with foreign nationals located in the U.S. or abroad. Whether you work for a corporation, university, or any other institution, you should have a general awareness of legal restrictions on the export of certain technical information. Restricted transfers can take place when you send technical information via email, data downloads, or through conversations. Who is authorized to receive such information and when do you need to obtain an authorization from the government? How will that information be used abroad? Are you dealing with a denied party? Does your institution have a procedure for laptop travel abroad? Violations of the rules can yield penalties in the millions of dollars and jail time. In this webinar, we will cover the basics of U.S. export controls under the International Traffic in Arms Regulations and the Export Administration Regulations, case examples, and best practices.

Webinar on AUTM: U.S. Export Controls on Technology - What You Need to Know

U.S-based tech transfer offices have supported the contribution of more than $591 billion to the gross domestic product since 1996-but could it have been more? Typical academic commercialization pathways sometimes miss underrepresented entrepreneurs, leaving research in the lab and preventing consumers from accessing valuable science and technology. Tech transfer officers help creative, entrepreneurial scientists achieve their goals by developing effective networks. Networks help us access ideas, recruitment sources, partnerships, mentoring opportunities, novel perspectives, capital, and the latest innovations.

In this webinar, we will cover the key characteristics of effective networks and provide strategies for both assessing and growing your network. Funded by the Ewing Marion Kauffman Foundation, the nation's leader in entrepreneurship innovation, S2M has been used to develop and test promising practices for inclusive decision-making, advancing STEM founders from groups that have often been overlooked by entrepreneurial support.

Webinar on AUTM: Why Settle? Networking Your Way to Greater Innovation