Illustration communicating ideas and connections

TVSF applications being accepted through July

A man wearing a business suit touches a drawing of an illuminated lightbulb.Applications are being accepted for the University of Dayton-Miami University Technology Validation and Startup Fund (TVSF) on a rolling basis through July 2019.

Funded by a $200,000 grant awarded by the Ohio Third Frontier Commission and $200,000 in matching funds supplied by the two universities, the UD-Miami TVSF supports commercialization of technology developed at either institution. Commercialization can be accomplished either through collaborations with existing Ohio companies or through the creation of new start-ups in the state.

“The TVSF will allow both universities to stimulate more innovation and — more importantly — transfer the knowledge generated at each university to the Ohio community,” says Matt Willenbrink, University of Dayton’s Director of Technology Partnerships.

“This is an important step in furthering president Greg Crawford’s agenda to grow Miami University’s reputation for innovation and commercialization,” says David Taffet, Miami University Executive in Residence for Inclusive Innovation and Commercialization. “The matching funds Miami and Dayton have invested in this program signify the universities’ joint commitment to innovate at the speed of business.”

For more information, including guidelines and instructions for submission, visit the UD-Miami TVSF website. Questions about the program can be directed to Willenbrink, Taffet, or Miami University Associate Provost for Research, Jim Oris.


Ideas image by Geralt via Pixabay. Lightbulb image via Maxpixel, public domain.

Illustration communicating ideas and connections

TVSF now accepting applications

A man wearing a business suit touches a drawing of an illuminated lightbulb.Applications are now being accepted for the University of Dayton-Miami University Technology Validation and Startup Fund (TVSF). Funded by a $200,000 grant awarded by the Ohio Third Frontier Commission and $200,000 in matching funds supplied by the two universities, the UD-Miami TVSF supports commercialization of technology developed at either institution. Commercialization can be accomplished either through collaborations with existing Ohio companies or through the creation of new start-ups in the state.

“The TVSF will allow both universities to stimulate more innovation and — more importantly — transfer the knowledge generated at each university to the Ohio community,” says Matt Willenbrink, University of Dayton’s Director of Technology Partnerships.

“This is an important step in furthering president Greg Crawford’s agenda to grow Miami University’s reputation for innovation and commercialization,” says David Taffet, Miami University Executive in Residence for Inclusive Innovation and Commercialization. “The matching funds Miami and Dayton have invested in this program signify the universities’ joint commitment to innovate at the speed of business.”

For more information, including guidelines and instructions for submission, visit the UD-Miami TVSF website. Questions about the program can be directed to Willenbrink, Taffet, or Miami University Associate Provost for Research, Jim Oris.


Ideas image by Geralt via Pixabay. Lightbulb image via Maxpixel, public domain.

Photo illustration of the earth inside an illuminated lightbulb.

New inclusive innovation and commercialization initiatives provide opportunities for Miami students, faculty, and staff

Two new initiatives give Miami University students, faculty, and staff the opportunity to help usher in a new era of inclusive innovation and commercialization.

Miami University–AFRL Research Technology Commercialization Accelerator

Members of the Miami community are encouraged to work with technology transfer staff to identify patents or patent applications in the Air Force Research Lab’s (AFRL) open portfolio that match their current interests. These patents could supplement a current line of inquiry or jump start an innovation.

An agreement between Miami and the Wright Brothers Institute of Dayton gives Miami support in reviewing and accessing the Air Force Research Lab’s entire open portfolio of more than 1,000 patents and patent applications. The portfolio reflects the breadth of AFRL research programs.  Technological advances that include innovations in energy storage, healthcare monitoring, and advanced manufacturing go far beyond military sciences.

As a steward of taxpayer dollars, AFRL is committed to transferring technologies with non-defense applications to the commercial sector, where they can benefit everyday Americans.

“Miami University has a wealth of researchers and entrepreneurs with the drive and know-how to mature these technologies and bring them to market,” says David M. M. Taffet, executive-in-residence.  “The Miami University-AFRL Research Technology Commercialization Accelerator is a model for how a university can work at the speed of business.”

Among the ways students will be involved with the AFRL portfolio is through a capstone course in the Farmer School of Business, led by Wayne Speer, an instructor of marketing..

Students, faculty, and staff who are interested in exploring the AFRL open portfolio should contact either Matt Willenbrink or Jim Oris. Willenbrink is director of technology partnerships at the University of Dayton, Miami’s tech transfer partner.  Oris is Miami’s associate provost for research and scholarship.

Miami University–University of Dayton Technology Validation and Start-up Fund

Applications to the Miami University–University of Dayton Technology Validation and Start-up Fund (TVSF) will be accepted beginning this month.

Supported by matching funds from the Ohio Third Frontier program [link], the Miami-UD TVSF represents an innovation because it is a partnership between a public and a private institution and because it spans two regional job markets.

Initial applications will be for Phase 1 or technology validation projects. Ohio Third Frontier defines the objectives for Phase 1 projects as follows:

  • Generate the proof needed to move technology to the point that it is either ready to be licensed by an Ohio start-up company or otherwise deemed unfeasible for commercialization.
  • Perform validation activities such as prototyping, demonstration and assessment of critical failure points in subsequent development, scale-up and commercialization in order to generate this proof, with strong preference for these validation activities being performed by an independent source.

“We would like to see projects that have high commercial potential by enabling product or services that have competitive advantages,” says Willenbrink. “A successful application will clearly detail both the commercial potential and specifically how the funding will move the technology closer to being commercialized.”

The TVSF offers an accelerated path to commercialization because projects that receive Phase 1 funding are better positioned for success in Phase 2, the start-up phase.

“Phase I TVSF projects are managed by the universities and are designed to bring university technology closer to being licensed or spun-out as a startup company. Phase II projects are for companies to further develop Phase I efforts,” says Willenbrink.

Anyone at Miami who thinks they would like to pursue a technological venture is encouraged to contact Willenbrink and Taffet to discuss potential ideas and learn more about the application process.

Both the Miami University–AFRL Research Technology Commercialization Accelerator and Miami University–University of Dayton Technology Validation and Start-up Fund are designed to leverage Miami University resources to benefit the wider community. All Miamians — including those from traditionally underrepresented groups — are encouraged to explore opportunities for sharing their talent, knowledge, and skill through these programs.


Written by Heather Beattey Johnston, Associate Director of Research Communications, Office for the Advancement of Research and Scholarship, Miami University.

Lightbulb image by PIRO4D via Good Free Photos, public domain. The Five Cogs of Innovation image by Jurgen Appelo via Flickr, used under Creative Commons license.

 

 

A compass sits on a page of financial information.

New faces in Miami’s tech transfer and commercialization community

A slide rule used to calculate flight paths.

Two new members of the Miami University community are helping guide Miami as it charts a course for the future university and business collaboration, with a focus on inclusive innovation. We introduce them here.


David M. M. Taffet

Executive in Residence for Inclusive Innovation and Commercialization, Miami University

David M.M. Taffet has a career spanning law, investment banking, private equity, not-for-profits, turnarounds, buy-outs, management, retail, and real estate.

He worked his way through college and law school and has built his own businesses, meeting the payroll needs of hundreds of employees. He has raised close to half a billion dollars of debt and equity on behalf of his own and others’ ventures. He has evaluated the merits of others’ ventures, turned others’ enterprises around, and worked internationally in varied industries with geographically-dispersed operations.

“I have enjoyed the real-world experience essential to assuming leadership positions not with a sense of entitlement, but rather with a healthy appreciation of the work ethic and personal sacrifice necessary to complete the small things that prove fundamental in accomplishing great things,” Taffet says.

Earlier this year, Taffet was selected as Miami University’s first executive-in-residence in the area of inclusive innovation and commercialization. Taffet’s accomplishments in this position include the following:

  • An agreement between Miami University and the Wright Brothers Institute of Dayton, an entity that assists the U.S. Air Force Research Lab with technology transfer, interactions with the community, workforce development, and innovation. This collaboration created the Miami University-AFRL Research Technology Commercialization Accelerator and gives Miami support in reviewing and accessing the lab’s entire open portfolio of over 1,000 patents and patent applications.
  • A successful joint submission by Miami and the University of Dayton to the Ohio Third Frontier that resulted in $200,000 in state matching funds awarded for the creation of a technology validation and start-up fund (TVSF). The TVSF will invest in advancing technologies at both institutions that can be further developed into products by startups and other young companies in Ohio.
  • An agreement between Miami and the University of Dayton to share technology transfer services. The agreement provides more efficient services in Southwest Ohio by leveraging resources of the University of Dayton to provide support for patent exploration and other areas of development and commercialization for Miami research.

Matt Willenbrink

Director of Technology Partnerships Office, University of Dayton Research Institute

As part of the shared services agreement between Miami and the University of Dayton, Matt Willenbrink is now the point-of-contact for technology transfer at Miami.

For the past decade, Willenbrink has been the director University of Dayton Research Institute’s Technology Partnerships Office, where he negotiates research-related contracts (including license agreements), intellectual property matters and other legal matters. Prior to earning his MBA and JD, Willenbrink worked as a biochemist in industry.

Willenbrink’s office provides the following services to researchers from both the University of Dayton and Miami University:

  • Support in securing industrial sponsorship for research projects;
  • Development of appropriate research agreements with industry to protect institutional intellectual property rights;
  • Handling of intellectual property issues in government and industrial contracts;
  • Commercial development of inventions to generate royalty income from licenses to support the technology commercialization program and university research programs;
  • Support to obtain patents on university inventions and to license university technology to outside companies.

University of Dayton Research Institute’s technology commercialization program has been successful in developing and commercializing inventions such as phase change materials, the RULER and COAT (smart dipstick) technology, Autodamp/Autobeam software, material analysis and testing software (MATE), and advanced polymer materials.


Compass image by freeGraphicToday via Pixabay. Flight computer image by Duke via Wikimedia Commons. Both used under Creative Commons license.

Miami University's College of Engineering and Computing lab

New collaborations increase opportunities for commercialization

Scott Hartley supervises the work of graduate students in his lab.
A new agreement will soon bring together Miami faculty and students with AFRL and industry researchers.

Miami University is currently re-casting technology commercialization efforts. While traditional technology transfer has been the focus in the past, the focus moving forward will be on a more collaborative business partnering model. This model will create connections to early-stage and established businesses on research and development efforts. Two recently announced collaborations — between Miami University and the Wright Brothers Institute and between Miami and the University of Dayton — are among the first steps to implementing the new model.

Miami University-AFRL Research Technology Commercialization Accelerator

Miami University and Wright Brothers Institute of Dayton will work together to identify technologies from an Air Force Research Lab portfolio of more than 1,000 patents that have potential commercial use for public good.

The agreement creates the Miami University–AFRL Research Technology Commercialization Accelerator. This collaboration gives Miami support in reviewing and accessing the lab’s entire open portfolio of patents and patent applications.

The patent portfolio mimics the breadth of AFRL research programs. Technological advances that include innovations in energy storage, healthcare monitoring, and advanced manufacturing go far beyond military sciences.

Miami will create and lead programming to connect those technologies with entrepreneurs, funding, and other resources needed to bring the technologies to market.

“This agreement is a significant step in Miami University’s evolution into being an entrepreneurial university,” said President Greg Crawford. “It will provide great learning experiences for our students in entrepreneurship, science, engineering and intellectual property law.”

It will also open up opportunities for research collaborations between Miami and the Air Force Research Lab.

Wright Brothers Institute assists the Air Force Research Lab, headquartered at Wright-Patterson Air Force Base, with technology transfer, interactions with the community, workforce development and innovation. It works hand-in-hand with the lab to commercialize Air Force-developed technology; to establish collaborations with regional, state and national entities; and to provide innovative solutions to complex technical and organizational problems.

“We are very excited about this partnership. Miami has access to state, research, alumni and student resources that are critical for building a commercialization ecosystem,” said Les McFawn, executive director of Wright Brothers Institute.

The Air Force Research Lab employs more than 5,700 researchers and scientists who execute a $5 billion annual budget on behalf of the United States Air Force. The research lab spends more than $550 million in Ohio, with a majority going back into the Dayton region. Nearly $12.5 million goes to Ohio academia, $260 million toward small business and the remainder to industry.

Work done within the Air Force Research Lab has contributed to significant advancements in modern communications, electronics, manufacturing, and medical research and products available to the public.

For example, Polybenzimidazole fiber, used in firefighters’ gear, space suits and welders’ gloves, was developed by the research lab.

There are many more opportunities for development with the 1,000-plus patent portfolio that Miami’s faculty, students and the Wright Brothers Institute can help bring to the marketplace through connections within the business community.

As early as spring semester 2018, Miami will incorporate patent review, technology exploration, and potential business plan development into its entrepreneurship curriculum.

At the same time, the institute will conduct commercial opportunity analyses and facilitate key connections within the Air Force Research Lab and the community to nurture the accelerator.

A key feature of the accelerator is that it brings together students with different academic majors from across the university.

Wright Brothers Institute is a non-profit innovation institute that provides breakthrough solutions to the Air Force Research Laboratory’s most complex problems. WBI has been a Partnership Intermediary to AFRL since 2003 and actively supports Headquarters AFRL and the four Technology Directorates located at Wright-Patterson AFB in Dayton, OH.

University of Dayton

To serve Southwest Ohio more efficiently, Miami University and the University of Dayton have entered into a shared services agreement for technology transfer activities.

The agreement leverages resources of the University of Dayton to provide support for patent exploration and other areas of development and commercialization for Miami research.

“This agreement allows us to streamline operations to avoid the duplication of processes and infrastructure within the Dayton region,” said Jim Oris, associate provost for research and scholarship at Miami.

In addition, Miami and the University of Dayton have submitted a joint request to the state for matching funds to create a technology validation and startup fund. The state funds would come from Ohio Third Frontier, which is committed to transforming the state’s economy through the accelerated growth of diverse startup and early-stage technology companies.

If funded, the proposed Miami University-University of Dayton tech validation and startup fund will invest in advancing technologies at both institutions that can be further developed into products by startups and other young companies in Ohio.

Together with a recently-announced collaboration between Miami and the Wright Brothers Institute to commercialize Air Force Research Laboratory-developed technology, these collaborations between Miami and the University of Dayton enhance the capacity for technology development and the startup ecosystem in the region.

The University of Dayton Research Institute is a national leader in scientific and engineering research. Its professional researchers provide support in a variety of technical areas, ensuring customer success by delivering affordable and innovative solutions, leading-edge technologies and outstanding service. The institute leverages the expertise of faculty and students, along with its partners in academia, government and industry, to address unique technical challenges and help the university fulfill its commitment to education, research and public service.


Photos by Jeff Sabo, Miami University Photo Services.

Four schematics of a Lego figure of a man appear in white on a grey background. The figures are labeled Fig. 6 (back of the Lego figure, with arms and legs extended as though the figure were walking); Fig. 7 (front of the figure in the same walking-type pose as Fig. 6); Fig. 8 (back of figure in sitting position, with arms and legs extended straight out from the front of the figure); and Fig. 9 (front of figure in same pose as Fig. 8). Written at the top is "U.S. Patent Dec 18 1979 Sheet 2 of 2 Des. 253,711.

Inventors play critical role in patenting, licensing inventions

A yellow Lego figure "wearing" a blue uniform stands at the center of a green tile platform. The figure holds a black stick that touches a paper laid out on a drawing board in front of him. The paper has several schematics hand-drawn on it. The drafting table, which is made of white plastic tiles and grey plastic cubes and spirals, has a mini spotlight attached to it. Behind the inventor is some sort of machine -- it has a clear bubble on top of a grey wheeled cart with a corrugated pipe extending from it. On a shelf in the background, several plastic parts are stacked. Other plastic parts are on the floor surrounding the figure.

The innovation enterprise in academia is dependent on two complementary processes: the recognition of an innovation or discovery by the innovators, and the harvesting of those opportunities by the university. Because the pursuit of patents is costly and university budgets are constrained, the university must evaluate each case to assess its commercial potential and patent prospects prior to deciding whether to move forward into the patent process.

Patent preparation and prosecution are the most time-consuming elements of the commercialization process for most inventors. Because inventions tend to be very technical, the patent attorney assigned to the invention case usually needs substantial input and review from the inventor to best capture the key elements of the technology that will inform the scope of the patent claims. While patent attorneys will have technical expertise in subject matter areas they routinely handle, they also need the innovator’s input to structure the claim set and support those claims effectively.

Once the application enters the prosecution phase at the U.S. Patents and Trademark Office (USPTO), inventor input is critical to helping inform the USPTO about the prior art most closely related to the invention. The key here is to identify and report information that is material to the patentability of any claim in the application. This obligation extends to the inventors, the patent attorney, and any other individual (associated with the inventor or owner of the invention) who is substantively involved in the preparation of the application. In this case, the inventor does not have a duty to search for references or descriptions of closely related technology, but merely has to provide copies of the information about which they are aware through their work on the technology. This information is communicated to the patent office by way of an Information Disclosure Statement (IDS).

Section 2016 of the Manual of Patent Examination Procedures (MPEP) specifies that “a finding of ‘fraud’, ‘inequitable conduct’, or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.” Therefore, diligence must be applied when completing an IDS.

Responding to USPTO Office Actions also requires substantial input from the inventor. An Office Action is an official, time-sensitive notification indicating whether the patent is allowed or rejected (for reasons stated in the Office Action). If a claim is rejected for any reason, the patent attorney will seek analysis and input from the inventor to help overcome the examiner’s rejection(s). The inventor’s technical expertise and intimate knowledge of the invention are critical factors in convincing the examiner that the innovation should be allowed to issue as a patent.

In many cases, academic technology transfer offices have an inventory of applications and patents that need further development before they are marketable. This intellectual property must be marketed to potential licensees by the technology transfer office.

Often, the inventor’s role in marketing is simply to connect the technology transfer office with individuals who are already aware of the research program and have an interest in pursuing licensing opportunities. This is especially common when the inventor has partnered with a corporate research sponsor in the development of the innovation, and in many cases the corporate sponsor will have certain option or license rights through the funding agreement. In other cases, the inventor’s familiarity with the target market will provide potential leads.

The technology transfer office will also attempt to establish leads by examining ownership of related patents, reading market research reports from subscription services, conducting independent analysis of potential product markets, and leveraging business contacts and relationships. The inventor should be active in asking about marketing strategy and offering to review potential target lists. Later in the process, the inventor will likely be asked to assist with the review of marketing materials, or to meet with company representatives to provide insight on what makes the innovation commercially valuable.

Once a licensing negotiation has begun, the inventor can assist with the process of identifying opportunities for non-royalty components, such as appropriate milestone achievements for future development, future sponsored research to continue with development of the technology, or consulting opportunities.

Although some inventions from the academic realm may have found significant commercial success without substantial assistance from the inventor after issue of the patent, a hallmark of most successfully commercialized academic inventions is a motivated inventor or group of inventors who communicate a vision for achieving a successful outcome for an innovation that is measured in terms that extend beyond royalty rates or license fees. Public benefit from an invention or discovery is derived in a number of additional ways, such as transfer of knowledge and research resources. Each element of success relies on a partnership between the inventor and the technology transfer office.

Written by Reid Smith, Director of Technology Transfer & Business Partnerships, Office for the Advancement of Research & Scholarship, Miami University.

Lego patent image via Flickr user Vera de Kok (U.S. patents published prior to 1989 are copyright-free).  Lego inventor image by crises_crs via Flickr, used under Creative Commons license.