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Kristie Prinz Interviewed by Technology Transfer Tactics on Issue of Whether Poster Presentations Jeopardize a TTO’s Commercialization Efforts

Written by on Friday, February 12th, 2010

Technology Transfer Tactics recently interviewed me on the issue of whether poster presentations jeopardize a tech transfer office’s commercialization efforts.

I wanted to share the interview because the article raised some interesting questions.  Of course, universities have long been dealing with the challenges of having to reconcile the competing interests of the educational/research institution’s desire to publish and provide educational opportunities to students vs. the intellectual property protection/commercialization goals of a tech transfer office.  However, this article addressed a unique aspect of that conflict, which I think will be of interest to blog readers.

Category: Biotech Blog in the News, University Tech Transfer  |  Comments Off on Kristie Prinz Interviewed by Technology Transfer Tactics on Issue of Whether Poster Presentations Jeopardize a TTO’s Commercialization Efforts

Seventh Circuit Rules in favor of WARF in Licensing Dispute with Xenon Pharmaceuticals

Written by on Thursday, January 14th, 2010

The Seventh Circuit decided last week in favor of the Wisconsin Alumni Research Foundation (“WARF”) in its licensing dispute with Xenon Pharmaceuticals.

As I stated in my Silicon Valley IP Licensing Blog posting on this case, I strongly agree with the outcome in this case and I view this decision as an affirmation of a licensor’s rights in an exclusive license of joint intellectual property.  Had the case been decided differently, I certainly would have had some practical concerns as an IP licensing attorney as to how exclusive licenses to joint intellectual property in collaborations should be drafted.

For another take on this case, you might want to check out PatentlyO, which did not really take a position on the outcome, but provided a little different commentary on the court’s decision.

While this case may not have any groundbreaking precedential value as an intellectual property decision, I think it provides some good practical lessons for anyone drafting or negotiating license and collaboration agreements in the biotech world, whether representing a corporation or working for a tech transfer office at a university, as well as for those who are actually executing the agreements once they are signed.  Clearly, some mistakes were made here that resulted in expensive litigation and will likely result in a costly damage award against Xenon as the loser.

Category: Biotech Deals, Biotech Disputes, Biotech Legal Disputes, Biotech Patent Licensing, Practical Tips, University Tech Transfer  |  Comments Off on Seventh Circuit Rules in favor of WARF in Licensing Dispute with Xenon Pharmaceuticals

IRS Taking Closer Look at Tech Transfer Offices’ Activities

Written by on Friday, October 24th, 2008

The IRS has launched an effort to review universities’ tech transfer office activities, reported Biotech Transfer Week.

The IRS began mailing out compliance questionnaires last week to four hundred (400) colleges and universities.  According to the IRS website, these compliance questionnaires will explore the following:

  • report revenues and expenses from taxable trade or business activities on Form 990-T, Exempt Organization Business Income Tax Return;
  • classify activities as exempt or taxable activities;
  • calculate and report income on losses on Form 990-T;
  • allocate revenues and expenses between exempt and taxable activities;
  • invest and use endowment funds; and
  • determine types and amounts of executive compensation.

Biotech Transfer Week reported on the IRS review as follows:

The questionnaire is not an audit, and schools will not be penalized for refusing to participate, according to the IRS. However, the agency said that it reserves “the option of opening a formal investigation, whether or not the organization agrees to participate in a compliance check.”
The 33-page-long document contains 74 questions intended for all 400 institutions and 20 additional questions applicable only to private organizations. Private nonprofit universities are generally exempt from tax under Internal Revenue Code section 501(c)(3) and, like state universities, are subject to unrelated-business income tax, the IRS said.

It seems apparent that the IRS believes that it is currently losing taxable revenue from technology transfer activities that is going unreported by universities around the country, and that perhaps all universities with a technology transfer office–whether they received a questionnaire or not– would be wise to conduct their own review in parallel to the IRS review, in order to determine what, if any, mistakes in reporting are currently being made by their institutions.

Of course, given the fact universities are typically nonprofit organizations, you might wonder what kind of taxable income exactly could arise at a university.  The IRS website explains this dichotomy as follows:

Even though an organization is recognized as tax exempt, it still may be liable for tax on its unrelated business income. Unrelated business income is income from a trade or business, regularly carried on, that is not substantially related to the charitable, educational, or other purpose that is the basis of the organization’s exemption. An exempt organization that has $1,000 or more or gross income from an unrelated business must file Form 990-T. Form 990-T. . . .

The IRS defines “unrelated business income” as follows:

For most organizations, an activity is an unrelated business (and subject to unrelated business income tax) if it meets three requirements:

  • It is a trade or business,
  • It is regularly carried on, and
  • it is not substantially related to furthering the exempt purpose of the organization.

IRS Publication 598 explains the issue of tax on the unrelated business income of tax exempt institutions.

It will be interesting to watch how the IRS review of technology transfer offices pans out.  As we have previously reported on the California Biotech Law Blog, technology transfer offices often generate tremendous revenue for universities.  Apparently the IRS has been watching the growth of technology transfer offices around the country and wants a larger piece of the action.

The California Biotech Law Blog  will be following this issue as it develops and will keep our blog readers posted on those developments.

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