A different path to commercialization

Over at the Technology Transfer Tactics blog, there is a posting entitled Hospital TTO takes a different path to commercialization with private sale of IP. The story is about a pending IP sale:

The technology transfer office at Childrens Hospital Los Angeles (CHLA) is veering off the traditional path to commercialization, with a pending sealed-bid private sale of a portfolio of 10 issued U.S. patents and foreign patent applications for noninvasive substance detection, including a noninvasive blood glucose monitor. The TTO has hired the IP brokerage firm ICAP Ocean Tomo, LLC, in Chicago to conduct the private sale for the hospital. CHLA had tried the traditional commercialization route with this particular technology for several years, says Jessica Rousset, director of the hospital’s TTO. However, the standard path was slow-moving, particularly given the limited availability of the inventor, who is also a healthcare professional, she reports.

What is interesting about this both the patent sale and the description of patent sales. At first blush, it sounds like patent auctions are a radical new concept to the technology transfer offices. The article uses terms like “veered off the traditional path” and contrasts the sealed-bid sale as different from “standard path.” One wonders about why the concept of IP sales is such a non-traditional idea to technology transfer offices.

Turns out that the sale really is a different path. As the piece explains further:

CHLA worked with ICAP Ocean Tomo to negotiate a customized template license agreement, which in turn will be conveyed to potential bidders. The agreement is a hybrid between a straight sale and a standard license agreement with all of the reporting obligations and various triggers for payments to the IP holder, she explains. CHLA isn’t granting the IP rights as an assignment, which is ICAP Ocean Tomo’s traditional model, “but as an exclusive license, which is necessary for federally funded IP,” she [Rousset] explains. “Furthermore, we were able to get the appropriate reservation of rights in the terms and conditions that is customary when licensing government-funded technologies,” allowing CHLA and other academic institutions to continue to work with the licensed IP.

The way this is phrased it sounds like this is a model to overcome barriers for sale of federally funded IP. This may be variation of a sale-lease back arrangement OceanTomo has done before and the auction of some NASA patents earlier this year. I am especially interested in the restrictions allowing academics to work with the IP – which overcomes the sometimes problem of universities patenting a foundational technology.

So may be this really is a new approach after all.

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