AUTM Eastern Region Meeting€¦ · AUTM Eastern Region Meeting 8 recently validated the commercial...

August 31 – September 1, 2015Raleigh Marriott City CenterRaleigh, NC USA

AUTM Eastern Region Meeting

www.autm.net


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AUTM 2015 Eastern Region MeetingWelcome to the AUTM 2015 Eastern Region Meeting in Raleigh, North Carolina. Over the next two days we will meet to discuss practices and strategies for industry-academia partnerships that culminate in successful product commercialization through company formation, licensing and other agreements. We will also discuss and showcase successful practices and new strategies to help weather complicated economic times.

AUTM 2015 Eastern Region Meeting Program Committee Assistant Vice President for Eastern Region MeetingRichard P. Swatloski, Ph.D., CLP, University of Alabama

Program Co-chairsRobert Benson, Ph.D., South Shaker Associates LLCRobert Schwartzman, Ph.D., J.D., Myers Bigel Sibley & Sajovec PA

Meeting & Site Co-chairs Kelly B. Sexton, Ph.D., North Carolina State UniversityJohn A. Zurawski, J.D., Pepper Hamilton LLP

Sponsorship Co-chairsJohn Lopinski, Ph.D., J.D., Hodgson Russ LLP

Lisa Pavento, Meunier Carlin and Curfman

Nicholas A. Zachariades, Ph.D., Esq., McHale & Slavin

Marketing Co-chairsCarla DeMaria, Ph.D., Whitehead Institute for Biomedical Research

Susan Patow, M.B.A., Virginia Commonwealth University

About AUTMThe Association of University Technology Managers is a nonprofit organization dedicated to bringing research to life by supporting and enhancing the global academic technology transfer profession through education, professional development, partnering and advocacy. AUTM’s more than 3,200 members represent managers of intellectual property from more than 300 universities, research institutions and teaching hospitals around the world as well as numerous businesses and government

organizations..

Partnering at the AUTM Eastern Region MeetingSponsored by

The AUTM Eastern Region Meeting features a powerful online partnering and networking tool, including a mobile application for iPhone and Android. The program enables attendees to create detailed organizational and personal profiles, search for other attendees, send and receive messages, easily search for licensing and collaboration opportunities and effortlessly schedule one-on-one meetings. Networking has never been easier!

Program CommitteeWesley D. Blakeslee, Johns Hopkins Technology Transfer

Tamara L. Connelly, M.B.A., Merck Sharp & Dohme Corp

Claire Driscoll, National Institutes of Health (NIH)

Emma D. Fernández, Ph.D., University of Puerto Rico

Frances Galvin, M.B.A.

Jaideep Goswami, M.S., M.B.A., RTTP, University of Delaware

Lee C. Heiman, J.D., Registered Patent Attorney

Catherine Innes, North Carolina State University

Burnley Jaklevic, Ph.D., University of Massachusetts Amherst

Louis Judge, M.B.A., CLP, North Carolina A&T State University

Yatin S. Karpe, Ph.D., Lehigh University

Rob Lindberg, Ph.D., North Carolina Biotechnology Center

Annie Mitsak, Ph.D., Massachusetts Institute of Technology

Joseph F. Murphy, Esq., Caesar Rivise Bernstein Cohen & Pokotilow Ltd

Domingos Silva, Ph.D., J.D., Saul Ewing

Janet Smart, Ph.D., Proteostasis Therapeutics, Inc.

Christopher Yochim, Easy Rider Stable Relationships


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Scholarship Provider

AUTM 2015 Eastern Region Sponsors

Platinum Sponsors

Gold Sponsors

Silver Sponsors

Of�ce of Technology Transfer

BEACON INNOVATION GROUP

A T T O R N E Y SL L P


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Medlmmune MedImmune is the worldwide biologics research and development arm

of AstraZeneca, a global, innovation-driven biopharmaceutical business

that focuses on the discovery, development and commercialization of

small molecule and biologic prescription medicines. MedImmune is

pioneering innovative research and exploring novel pathways across key

therapeutic areas, including respiratory, inflammation and autoimmunity;

cardiovascular and metabolic disease; oncology; neuroscience; and

infection and vaccines. Please visit www.medimmune.com.

Meunier Carlin & Curfman LLC Founded by leading practitioners from long-established Intellectual

Property firms, Meunier Carlin & Curfman focuses on the essential

elements of IP legal practice. The firm works with universities, research

institutes, small and large corporations, and emerging growth companies

to secure, assert and defend their intellectual property rights. For more

information, visit www.mcciplaw.com.

Troutman Sanders LLP Troutman Sanders is an international law firm with more than 600 lawyers

practicing in 16 offices located throughout the United States and Asia.

Our intellectual property lawyers counsel clients on matters involving the

development, prosecution, management, and exploitation of intellectual

property assets, including patents and patent portfolios, trademarks,

copyrights, and trade secrets.

Kilpatrick, Townsend & Stockton LLPWe represent universities, academic medical centers, innovators and

funding sources in matters related to intellectual property protection and

commercialization, licensing transactions, and technology spin-offs.

We have a strong presence in four of the nation’s leading innovation

centers (Silicon Valley, Raleigh-Durham, Atlanta, and San Diego).

AUTM 2015 Platinum Sponsors

November 17 – 18, 2015Hyatt Regency DallasDallas, TX USA

AUTM 2015 Business Development Course Medical Devices

Join the researchers who are accelerating innovation and commercialization of medical device technology.

Learn how to navigate healthcare’s regulatory environment, economic value and reimbursement, and clinical hurdles on the way to finding a winning medical device technology.


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Meeting Agenda

Monday, August 317:30 a.m. – 5 p.m. Registration and Exhibits

Location: State Ballroom Foyer

7:30 – 8:30 a.m. Continental Breakfast

Location: University Ballroom

8:30 – 10 a.m. Workshops: Session 1

A1 How Startup Ecosystems Work to Launch, Support and Fund Companies

Location: State Ballroom D

Moderator: Wade Fulghum, North Carolina State University

Speakers: Jay Bigelow, Council for Entrepreneurial Development

Christopher Evans, Blackstone Entrepreneurs Network

Don Rose, Carolina KickStart, UNC Chapel Hill

Judd Staples, Duke Innovation and Entrepreneurship

Developing and leveraging entrepreneurial ecosystem partners and programs is key to guiding and directing startup companies along the path towards successful commercialization. In this session, the panel will discuss the roles played by several key partners across a region and how they work to launch, support and fund startup companies. You will hear about best practices, programs that have proved successful, and lessons learned along the journey.

A2 Managing Conflicts of Interest for Faculty Startups

Location: State Ballroom E & F

Moderator: Cheryl Junker, University of Georgia

Speakers: Jeffrey Childers, Ward and Smith Jeffrey Steltzer,

Georgia Institute of Technology Jill Uhl, Johns Hopkins University

In recent years, many research universities have increasingly focused on growing the number of faculty startups that originate from university research. While these companies can provide many benefits back to the university, such as publicity, licensing revenue and eventual research funding,

problems can arise when faculty members are not well-educated as to the pitfalls of being a researcher and an entrepreneur. The goal of this session is to outline the most common pitfalls that licensing professionals and faculty entrepreneurs face. These issues will include managing financial interests, the use of students on research projects, where company research may be undertaken, use of university facilities, and development of conflict of interest plans. You will learn how to easily and preemptively address conflicts of interest with faculty entrepreneurs at the time of licensing.

10 – 10:30 a.m. Networking Break


10:30 a.m. – Noon Plenary Session: The 3 Keys to Doubling Industry Research Support Through Creative Collaborations

Sponsored by

Location: State Ballroom D, E & F

Speakers: Patrick Burke, Myriad Brian Cummings,

Alta Ventures Capital Firm David Huizenga, TAO Life Sciences Inc. Robert MacWright, University of

Massachusetts Amherst

The growth in industry funding has only increased a couple of percentage points over the last five years but Fortune 500 companies are more than willing to spend their dollars on your campus. Why the disconnect and what new tools are being developed to overcome this problem? A panel of industry and university experts will give direction and examples for changing this relationship with a focus on research support. This will not be a typical discussion about how to improve industry-university relationships but a roadmap to make this a priority for both sides.

Noon – 1:30 p.m. Lunch Sponsored by



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1:30 – 3 p.m. Workshops: Session 2

B1 Live By the Sword: Post Grant Challenges to University Patents - CLE Eligible


Moderator: Thomas J. Engellenner, Pepper Hamilton LLP

Speakers: Jacqueline Quay, University of North Carolina Chapel Hill

Andrew W. Schultz, Pepper Hamilton LLP

Of the thousands of patents issued to universities and other institutions each year, some of these patents become controversial either because they are asserted in litigation or are otherwise considered to be threatening to an established business or industry. Increasingly, universities are finding themselves back at the patent office defending their patents in “post grant” proceedings. Nearly two dozen patents owned by AUTM members have been challenged or are currently undergoing review. We will discuss how to handle “inter-partes review” (IPR) proceedings to manage costs and preserve their patents.

B2 Social Innovation and Enterprise


Moderator: Lisa Goble, University of North Carolina Greensboro

Speakers: Tim Benoit-Ledoux, University of New Hampshire

Dinesh Divakaran, North Carolina State University

Heidjer Staecker, TreMonti Consulting

Social Enterprise can become a significant component of our portfolios. Our social, clinical and educational faculty members are seeking private sector outlets for knowledge dissemination, and our philanthropic and entrepreneur communities are increasingly seeking opportunities to make societal impact. While research funds for academics grow scarcer, new social enterprises can enhance the opportunity to attract public and private capital. We will explain the “what” and “how” of Social Innovation and Enterprise. We will describe social and clinical portfolios, and provide case studies of how to market innovations and build enterprises. You will learn how success was achieved from the developer/creator, the company and the technology transfer perspectives.

3 – 3:30 p.m. Networking Break



C1 What Happens to Your Science Invention After It Leaves the Lab? A Guide to Clinical Development


Moderator: Steven M. Ferguson, National Institutes of Health (NIH)

Speakers: Liza M. Rivera, FUJIFILM Diosynth Biotechnologies U.S.A., Inc.

Wendy Sanhai, Exponent Consulting

Fredrick Sax, Quintiles, Inc.

With life science inventions that have therapeutic applications, the most difficult, time-consuming and costly phase of development occurs AFTER the invention leaves the lab. This can often be under appreciated by inventors, research administrators or even technology transfer officers. This session is designed to be a basic primer of what to expect in terms of activities regarding the three critical areas of clinical development: good manufacturing practices (GMP) and increasing scale of therapeutic compounds; common requirements and guidelines from regulatory agencies; and the clinical trial itself whether conducted at the university or by a contract research organization (CRO).

C2 Mining Value in Design Patents: A Review of Patentability, Enforcement and the Implications for an Alternative Patent Market - CLE Eligible


Moderator: John A. Zurawski, Pepper Hamilton LLP

Speakers: Jeffrey Fougere, Hewlett-Packard Company

Patrick M. Sheldrake, CNH Industrial America, LLC

Design patents have become a more salient component to intellectual property portfolios as the patentability of utility patent applications has been challenged at a U.S. federal court level. At the same time, the U.S. federal courts have

Meeting Agenda

Monday, August 31 (continued)


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recently validated the commercial value of design patents as companies such as Apple have succeeded in enforcing their design patents on a relatively broad scale (Apple Inc. v. Samsung Electronics Co., Ltd. (Fed. Cir. 2015). Given the lower cost to prepare and file design patent applications, knowing what amount of work and amount of strategy going into design patents may be a benefit to intellectual portfolio managers. This seminar will focus on design patent basics, understanding the upsurge of design patent relevance in the patent system, uncovering what international rules may influence ex-U.S. patent protection, and prosecution strategies.

5:30 – 7:30 p.m. Offsite Reception The Stockroom 230 Fayetteville St., Raleigh, NC

Join us for an offsite reception in a unique urban venue. Come and enjoy the relaxed vibe, live music and chic atmosphere right in the heart of Raleigh’s downtown business district. This is a “can’t miss” event.

Tuesday, September 17:30 a.m. – 5 p.m. Registration and Exhibits


7:30 – 8:30 a.m. Continental Breakfast


8:30 – 10:30 a.m. Workshops: Session 4

D1 Best Practices Inter-Institutional Agreements – Can We Do Better? CLE Eligible


Moderator: Gennaro J. Gama, University of Georgia

Speakers: Alan R. Bentley, Vanderbilt University Kelly B. Sexton,

North Carolina State University

The negotiation of inter-institutional agreements (IIA) is often protracted and involves intellectual property assets, the commercial potential of which has not yet been realized or for which there are no strong indicators of potential commercial success. The complexity of such negotiations increases considerably as the number of parties involved grows. It is

not uncommon for negotiations of multi-party IIAs to take nearly a year to complete. Unreasonable demands such as exorbitant management fees and unreasonable claims of “share of inventive contribution” are often at the center of litigious clauses and delayed conclusion. Irrespective of how complex negotiations are, the outcome is frequently predictable. As inter-institutional research programs become central to funding agencies, especially in applied research, commonly-owned intellectual property is more likely to be developed and the need for the expeditious execution of IIA greater. The panel will present a recent study of IIAs practices in our industry and foster discussions involving the audience on the viability of developing commonly acceptable standards that can be the basis for these agreements and shorten negotiations.

D2 Protect and Accelerate: Commercialization of Software and Information Technology


Moderator: Wendy Zimbone, Talem IP Law LLP

Speakers: John Austin, Groundwork Labs Dinesh Divakaran,

North Carolina State University Mark Easley, Goldhat Advisors

Commercializing software technologies presents some unique challenges for university technology transfer offices which are not typically found with physical and life science technologies. A recently decided Supreme Court case, Alice vs. CLS Bank, has changed the landscape in software patenting and created new obstacles in protecting software. University technology transfer offices can learn the new strategies for protecting software and methods for maximizing their software IP strategy. Technology transfer offices can also implement some best practices and processes for commercialization of software, including setting up an internal beta prototyping program. For software startups, partnering externally with incubators and/or accelerators can be the key to product development and long-term success. However funding is critical and always in short supply for startups. The new financial technology called investment crowdfunding can help solve this problem, especially for software startups, by allowing the university community of alumni, faculty and students to fund these startups in a cost-effective way.

Meeting Agenda

Monday, August 31 (continued)


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10:30 - 11 a.m. Networking Break


11 – 11:15 a.m. AUTM Presidential Address


Speaker: David Winwood, Ph.D., RTTP, AUTM President Elect, Pennington Biomedical Research Center

David Winwood, AUTM’s President Elect, will welcome you to Raleigh, share his vision for AUTM and discuss the issues AUTM plans to address in the coming years — from advocacy initiatives to increased partnering opportunities, plans for professional development courses and events.

11:15 a.m. – 12:15 p.m. Industry Forum


Join us to hear what industry representatives are seeking from university partners. Following brief introductory remarks, attend lunch with the industry experts where you can discuss opportunities with industry representatives.

BASFBecton DickinsonEastman Chemical

MedImmuneMonsantoSyngenta

12:15 – 1:30 p.m. Lunch with the Industry Experts Sponsored by



E1 The Wright Stuff: Best Practices for University - Foundation Sponsor Relations - CLE Eligible


Moderator: Christopher Paschall, University of Virginia Licensing and Ventures Group

Speakers: Meredith Haupt, Michael J. Fox Foundation for Parkinson’s Research

Michael Straightiff, University of Virginia Licensing and Ventures Group

With dwindling pay lines and increased competition for federal research dollars, university faculty are increasingly seeking funding from non-traditional sources such as industry and private foundations. While many technology transfer professionals have negotiated provisions of industry-sponsored research contracts and are familiar with the standard positions and interests of industry, such professionals may not be as familiar with the unique research contract provisions of private foundations. Foundations such as the Juvenile Diabetes Research Foundation (JDRF), the Bill & Melinda Gates Foundation and the Leukemia & Lymphoma Society (LLS) often insist on intellectual property (IP) policy or licensing terms that can be challenging for the technology transfer office. For example, is your office dealing with terms and conditions of foundation IP policies that materially affect your licensing practices and finances? Are foundations dictating terms in agreements or seeking approval rights to agreements?

This session will survey the IP policies of various private foundations and present a case study negotiation between a university and a foundation sponsor. Panelists from foundations will share their perspectives on the case study and working with universities. In addition, panelists will offer suggestions for best practices in university-foundation relations with respect to intellectual property provisions and obligations.

E2 Ag-Biotech Licensing: Industry and University Perspective - CLE Eligible


Moderator: Kultaran Choban, North Carolina State University

Speakers: Connie M. Armentrout, Monsanto Company Lahoucine Achnine, BASF Plant Science Stacy Miles,

Syngenta Corp Protection, LLC Andy Renz, Benson Hill Biosystems Mark Turner, Bayer CropScience

Ag-biotech is a rapidly growing industry. There are exciting discoveries and new technologies being developed in this field. Learn about licensing trends in ag-biotech. This panel will share their insights and experiences on identifying potential licensing opportunities, best practices in evaluating and negotiating successful ag-biotech licenses, and licensing of university technologies.

Meeting Agenda

Tuesday, September 1 (continued)


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3 – 3:30 p.m. Networking Break


3:30 – 4:30 p.m. Workshops: Session 6

F1 Commercialization Strategies for Neglected Diseases


Moderator: Rachael Widener, University of Georgia Research Foundation, Inc.

Speakers: Steven M. Ferguson, National Institutes of Health (NIH)

Jordan Jacobson, Bill and Melinda Gates Foundation

Chan Park, Medicines Patent Pool

It is extremely difficult to efficiently commercialize inventions that are in the neglected disease space. There is little to no commercial market to recover research and development investment costs and compensate for-profit companies for the risks and opportunity costs of these medicines. Despite this hurdle, there is a critical need to accelerate the development of novel drugs, vaccines and diagnostics to address the unmet medical needs of the developing world. Panelists from universities, nonprofit foundations and companies will explore a variety of strategies that enable technology transfer offices to support these inventions.

F2 Tech Scouting: What Industry Is Looking For and How to Be Found


Moderator: Laura A. Schoppe, Fuentek LLC

Speakers: Sophia L. Herbert-Peterson, Georgia Tech Research Corporation

Luke Hinson, Wellspring

There is growing recognition among academia and industry that they have mutually compatible strengths and needs, making collaboration a worthy pursuit. To make the oppor-tunities for collaboration easier to identify, a variety of data-base-oriented resources have entered the arena. This session will tap into the expertise of representatives from all three parties to help improve your success in establishing univer-sity-industry collaborations. The presenters will address: (1) how companies approach their research and development, identify a technical need and seek out a solution; (2) how universities can be more effective in presenting their value to industry (i.e., their technologies, capabilities, and other strengths); and (3) how to maximize use of the various online platforms available to find and connect with each other. Information about the range of available databases and tools will be presented, and the best practices shared during the session will be broadly applicable to all of them.

4:30 p.m. Meeting Adjourns

Meeting Agenda

Tuesday, September 1 (continued)


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The AUTM Eastern Region Meeting Is a Paperless MeetingThe AUTM 2015 Eastern Region Meeting is paperless. All registrants can access handouts before and after the meeting. Visit www.autm.net, where all handouts submitted by speakers and moderators will be posted prior to the meeting.

The Eastern Region Meeting will provide 10 hours of continuing education (CE) credits for those who attend the entire meeting.

Registered Technology Transfer Professional (RTTP) Demonstrate your expertise in the academic technology transfer profession by becoming a Registered Technology Transfer Professional (RTTP). All AUTM professional development courses and designated educational offerings and meetings are eligible for continuing education (CE) credits, which support your registration application. For more information about the registration process and requirements, visit the Alliance of Technology Transfer Professionals website at www.attp.info.

Continuing Legal Education (CLE)AUTM has received 7.5 hours (no Ethics) of continuing legal education credits in Georgia, Massachusetts, North Carolina, New York, New Jersey and Pennsylvania for sessions B1, C2, D1, E1, E2.

Certified Licensing Professionals (CLP) Continuing EducationCertified Licensing Professionals are required to demonstrate continued competence in their field to maintain their certification status. Individuals who hold the CLP designation can renew their credential by earning at least 40 continuing education (CE) credits. All AUTM professional development courses and designated educational offerings on the topics of licensing, technology transfer, and technology commercialization at AUTM conferences or meetings are eligible for CLP continuing education (CE) credits for certification renewal. Visit www.licensingcertification.org for more information on the recertification requirements.

Association of University Technology Managers®, AUTM® and are registered trademarks

of the Association of University Technology Managers.

www.autm.net

Annual Meetings2016February 14 – 17Manchester Grand Hyatt San DiegoSan Diego, CA USA

2017March 12 – 15The Westin Diplomat Resort & SpaHollywood, FL USA

2018February 18 – 21JW Marriott Desert Ridge Resort & SpaPhoenix, AZ USA

2019February 10 – 13JW Marriott AustinAustin, TX USA

2020March 8 – 11Manchester Grand Hyatt San DiegoSan Diego, CA USA

Save the Date

2015 Region MeetingsWestern Region MeetingSeptember 10 – 11Hyatt Regency CalgaryCalgary, Alberta CANADA

2015 Professional DevelopmentAUTM 2015 Technology Operations and Organization Licensing Skills (TOOLS) Course & Essentials of Academic Technology TransferOctober 5 – 7The Westin SeattleSeattle, WA USA

2015 Partnering MeetingsAUTM Partnering Forum Animal Health & NutritionSeptember 1 – 2Kansas City Marriott DowntownKansas City, MO USA

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AUTM Eastern Region Meeting€¦ · AUTM Eastern Region Meeting 8 recently validated the commercial...

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