AUTM on the Air

AUTM
AUTM on the Air

AUTM on the AIR is the weekly podcast that brings you conversations about the impact of research commercialization and the people who make it happen. Join us for interviews with patent and licensing professionals, innovators, entrepreneurs, and tech transfer leaders on the issues and trends that matter most.

  1. 19 DEC

    Customer Discovery in Tech Transfer: Ensuring Innovations Meet Industry Demands with Kate Havey

    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

    33 min

  2. 11 DEC

    Adapting to Change: Insights on Europe’s Unitary Patent System with Robert Alderson and Mariella Massaro

    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

    44 min

  3. 4 DEC

    Redefining Leadership: How CIOs Are Leading Universities into the Future with Kimberly Gramm and Glen Gardner

    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

    51 min

  4. 20 NOV

    Suspenders4Hope: How Tech Transfer Is Helping Transform Lives

    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

    46 min

  5. 13 NOV

    Balancing Innovation and Integrity: Ethical AI in Tech Transfer with Charles Holloran

    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

    44 min

  6. 6 NOV

    AI in Action: Transforming Outbound Marketing for Tech Transfer Success with Andrew Rankin

    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

    31 min

  7. 30 OCT

    Revitalizing Rural America: The Role of University Tech Transfer and Cooperative Extension with Dr. Richard Cahoon

    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

    40 min

  8. 23 OCT

    Inside the CRISPR Patent Wars: Innovation, Rights, and Legal Battles with Dr. Kevin Noonan

    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

    55 min
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About

AUTM on the AIR is the weekly podcast that brings you conversations about the impact of research commercialization and the people who make it happen. Join us for interviews with patent and licensing professionals, innovators, entrepreneurs, and tech transfer leaders on the issues and trends that matter most.

Information

  • Creator
    AUTM
  • Years Active
    2020 - 2024
  • Episodes
    235
  • Rating
    Clean
  • Copyright
    © AUTM.net
  • Show Website
    AUTM on the Air

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