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From dorm rooms to board rooms: How universities are promoting entrepreneurship

Published February 15, 2021

Earlier this year, 15 top U.S. universities joined forces to launch a one-stop shop where corporations and startups can discover and license patents.

Working in concert, Brown, Caltech, Columbia, Cornell, Harvard, the University of Illinois, Michigan, Northwestern, Penn, Princeton, SUNY Binghamton, UC Berkeley, UCLA, the University of Southern California and Yale formed The University Technology Licensing Program LLC (UTLP)  to create a centralized pool of licensable IP.

The UTLP arrives as more higher education institutions are beefing up their investment in the entrepreneurial pipeline to help more students launch startups after graduation. In some instances, schools serve as accelerators, providing students with resources and helping them connect with VCs to find seed funding.

To get a better look at the new program and more insight into the university-to-startup pipeline, we spoke to:

The UTLP initiative seems to be more focused on licensing IP to existing companies, rather than accelerating university startups.

Orin Herskowitz: The UTLP effort is really much more about licensing to the somewhat broken interface between universities and very large companies in the tech space when it comes to licensing intellectual property. But I know USC and Columbia and many of our peers, especially over the last three to seven years, have pivoted in a massive way to helping our faculty students fulfill their entrepreneurial dreams and launch startups around this exciting university technology.

The word “broken” jumped out at me. Historically, what has the problem been?

Orin Herskowitz: Universities have traditionally been a source of amazing, life-saving and life-improving inventions, for decades. There’s been a ton of new drugs and medical devices, cybersecurity improvements, and search engines, like Google, that have come out of universities over the years, that were federally funded and developed in the labs, and then licensed to either a startup or the industry. And that’s been great. At least over the last couple of decades, that interface has worked really, really well in some fields, but less well in others. So, in the life sciences, in energy, in advanced materials, in those industries, a lot of the time, these innovations that end up having a huge impact on society are based really on one or two or three core eureka moments. There’s like one or two patents that underlie an enormous new cancer drug, for instance.

In the tech space though, it’s a very different dynamic because, a lot of the time, these inventions are incredibly important and they do launch a whole new generation of products and services, but the problem is that a new device, like an iPhone, or a piece of software, might rely on dozens or even hundreds of innovations from across many different universities, as opposed to just one or two.

Obviously not every breakthrough necessitates the launch of a startup. I assume that the vast majority of these things that are coming would make the most sense to work with existing companies.

Jennifer Dyer: We’ve all had this renewed focus on innovation within the university and really helping our students and faculty that want to start companies, launch those companies. If you look at the space, helping educate our students that launching a company in a high-tech space may mean that they have to go out and acquire 100 different licenses, so maybe it doesn’t make sense. We’re going to be doing nonexclusive licensing, and it doesn’t preclude anyone from moving forward with this technology. This is probably the first pool for nonstandard essential patents in the high-tech space, which makes it somewhat unique. Because if you look back, most of the pools have been around standard essential patents.

The question of exclusivity is an interesting one. You wouldn’t grant exclusive rights for the right fee?

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IP strategy: How should startups decide whether to file patents

Published July 3, 2019
Bryant Lee, Ed Steakley & Saleh Kaihani
Contributor

Bryant Lee is the co-founder and managing partner of Cognition IP, a YC-backed IP law firm for startups. Ed Steakley was the Head of IP at Airware and Senior Patent Counsel at Apple. Saleh Kaihani is a partner at Cognition IP.

Deciding what to patent can be a confusing process but by creating a formal process it is something that every startup can manage.

Intellectual property (IP) is one of the most valuable assets of a startup and patents are often chief among IP in terms of value. Patents allow the startup to prevent competitors from using their technology, which is a powerful feature that can grant unique advantages in the marketplace.

From a business perspective, patents can help with driving investment and acquisitions, provide protection during partnerships and business deals, and help defend itself against patent lawsuits by others.

However, startups also often have a hard time determining when and what to patent. Innovative startups are inventing new things on a regular basis, and there is a danger of slipping into a haphazard approach of patenting whatever happens to be available rather than systematically analyzing the business needs of the company and protecting the IP that moves the needle the most.

Moreover, startups must balance the need to protect IP with other areas of the business: Patents are complex documents that require an investment of time and resources to obtain. They often require specialized legal counsel to write and a lengthy examination process at the U.S. Patent & Trademark Office (USPTO).

This article is a how-to guide for startups to make the decision on when and what to patent with a mature approach to IP strategy.

Table of Contents

Creating a regular IP harvesting process

Index 02

In order to make a decision about what to patent, a startup must first know what IP it has. For very small teams, it may be possible for everyone to have a shared idea of the IP. However, once teams grow beyond a few people, it is no longer possible to have complete visibility into what everyone on the team is doing and potentially inventing. Therefore, a regular IP harvesting process must be put in place to ensure proper reporting of IP to the executive level.

Most startups are best served with a simple IP harvesting process involving just three steps: (1) disclosure (2) invention review and (3) patent filing. In the disclosure stage, employees who are in IP creation roles must be trained to disclose ideas that are potentially protectable IP.

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Startup Law A to Z: Regulatory Compliance

Published April 4, 2019

Startups are but one species in a complex regulatory and public policy ecosystem. This ecosystem is larger and more powerfully dynamic than many founders appreciate, with distinct yet overlapping laws at the federal, state and local/city levels, all set against a vast array of public and private interests. Where startup founders see opportunity for disruption in regulated markets, lawyers counsel prudence: regulations exist to promote certain strongly-held public policy objectives which (unlike your startup’s business model) carry the force of law.

Snapshot of the regulatory and public policy ecosystem. Image via Law Office of Daniel McKenzie

Although the canonical “ask forgiveness and not permission” approach taken by Airbnb and Uber circa 2009 might lead founders to conclude it is strategically acceptable to “move fast and break things” (including the law), don’t lose sight of the resulting lawsuits and enforcement actions. If you look closely at Airbnb and Uber today, each have devoted immense resources to building regulatory and policy teams, lobbying, public relations, defending lawsuits, while increasingly looking to work within the law rather than outside it – not to mention, in the case of Uber, a change in leadership as well.

Indeed, more recently, examples of founders and startups running into serious regulatory issues are commonplace: whether in healthcare, where CEO/Co-founder Conrad Parker was forced to resign from Zenefits and later fined approximately $500K; in the securities registration arena, where cryptocurrency startups Airfox and Paragon have each been fined $250K and further could be required to return to investors the millions raised through their respective ICOs; in the social media and privacy realm, where TikTok was recently fined $5.7 million for violating COPPA, or in the antitrust context, where tech giant Google is facing billions in fines from the EU.

Suffice it to say, regulation is not a low-stakes table game. In 2017 alone, according to Duff and Phelps, US financial regulators levied $24.4 billion in penalties against companies and another $621.3 million against individuals. Particularly in today’s highly competitive business landscape, even if your startup can financially absorb the fines for non-compliance, the additional stress and distraction for your team may still inflict serious injury, if not an outright death-blow.

The best way to avoid regulatory setbacks is to first understand relevant regulations and work to develop compliant policies and business practices from the beginning. This article represents a step in that direction, the fifth and final installment in Extra Crunch’s exclusive “Startup Law A to Z” series, following previous articles on corporate matters, intellectual property (IP), customer contracts and employment law.

Given the breadth of activities subject to regulation, however, and the many corresponding regulations across federal, state, and municipal levels, no analysis of any particular regulatory framework would be sufficiently complete here. Instead, the purpose of this article is to provide founders a 30,000-foot view across several dozen applicable laws in key regulatory areas, providing a “lay of the land” such that with some additional navigation and guidance, an optimal course may be charted.

The regulatory areas highlighted here include: (a) Taxes; (b) Securities; (c) Employment; (d) Privacy; (e) Antitrust; (f) Advertising, Commerce and Telecommunications; (g) Intellectual Property; (h) Financial Services and Insurance; and finally (i) Transportation, Health and Safety.

Of course, some regulations may touch on multiple regulatory areas, for example, the “Fair Credit Reporting Act” is a law ultimately about privacy, but it impacts many financial and employment-related services as well. Certain laws may therefore be cross-listed in more than one regulatory area. Also, since we can’t look at every U.S. state and city, this article will focus primarily on the federal and California state laws.

After you focus on the particular regulatory areas that may implicate your business, next reference the short quotations and links to relevant primary and secondary sources below, then work to identify the specific compliance risks you face. This is where other Extra Crunch resources can help. For example, the Verified Experts of Extra Crunch include some of the most experienced and skilled startup lawyers in practice today. Use these profiles to identify attorneys who are focused on serving companies at your particular stage and then seek out any further guidance you need to address the regulatory matters pertinent to your startup.

With that as context, the Startup Law A to Z – Regulatory Compliance checklist is below:

Taxes

Securities

Employment

Privacy

Antitrust

Advertising, Commerce and Telecommunications

Intellectual Property

Financial Services and Insurance

Transportation, Health & Safety

Before diving into further detail, it may be helpful for some readers to note the distinction between a law and a regulation. Simply put, regulations provide more detailed direction on how certain laws should be followed. So regulations are not technically laws, but they carry the force of law (including penalties for violation), since they are adopted by governmental agencies under authority granted by statute. Beyond that, understanding how laws and regulations are actually enacted is helpful to illustrate the extent to which the process is politically driven.

In the U.S., a bill must first pass both legislative branches of government, then, if signed by the executive branch, it will be codified in statute as law (Schoolhouse Rock anyone?). Once codified, the legislative branch will authorize the relevant executive department or agency to determine whether specific regulations are necessary to give the law effect. If so, those executive departments or agencies will determine what further rules are needed, and in turn, work to enforce them.

At the federal level, for example, proposed regulations are developed first through a “Notice of Proposed Rulemaking,” listed in the Federal Register and filed in the corresponding executive agency’s official docket (available at Regulations.gov). This affords the public an opportunity to comment on the regulations. After receiving comments, the filing agency may revise the proposed regulation before final rules are issued, which again will be published in the Federal Register and then filed in the agency’s official docket at Regulations.gov, before they are codified in the Code of Federal Regulations (CFR).

At nearly every step in this process then, institutions, government, and interest groups are working – sometimes at cross purposes – to shape what the law will be and how it will impact your startup.

The Startup Law A to Z – Regulatory Compliance reference guide is below:

A. TAXES

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Protecting intellectual property rights in the billion-dollar world of virtual gaming

Published January 23, 2018

 It’s clear that the days of esports being merely a spectator sport are numbered, as soon users won’t just be sitting and watching the story unfold on a computer screen, they’ll be immersed in it. What challenges will this immersion create when it comes to protecting one’s intellectual property rights to the contents of a game and the innovative technologies involved,… Read More

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As Egnyte turns 10, it moves into data protection

Published June 28, 2017

 Egnyte had a big milestone last week. It turned 10 years old, which is a pretty big deal for a startup. The company has survived and even thrived, but as it moves into its second decade, it recognizes that it can’t live on file sync and share alone, and today it announced the general availability of a new product called Egnyte Protect. The product was introduced in Beta last year, but… Read More

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Binded raises another $950K for its copyright-protecting tools

Published May 25, 2017

Nathan Lands Binded aims to make it easier for photographers to protect their intellectual property by creating a permanent record of their copyright in a public database, namely the blockchain. The startup was previously known as Blockai, but it’s rebranding today — the new name is meant to focus less on technology and instead emphasize the idea of creating a legally binding record. Read More

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To IP or not to IP, that is the question

Published November 3, 2016

ip-homer-raph-pika The rise and fall of Pokémon GO begs us to ask many questions regarding how to launch a game to position it for success. One specific question it raises is whether branded intellectual property is something game makers should consider prior to launch. Branded IP is one of the most time-tested ways to launch games that go on to become immensely popular. Read More

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Intellectual property strategies for startups

Published October 31, 2016

man-powered vehicle patent, 1939 Intellectual property protection is an important consideration for most startups. Obtaining intellectual property protection, such as patents, can minimize competition and act as a defensive mechanism against infringement claims from others. Intellectual property also can attract or solidify funding and partnerships. Read More

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Companies expect IP theft to rise in the next year, according to a new survey from Deloitte

Published October 25, 2016

IPtheft Intellectual property theft may not be discussed as much as data breaches that see customers’ credit card and other personally identifiable information stolen by hackers. But online theft of IP is a growing concern in tech, according to a new survey by Deloitte, Cyberattackers and Your Intellectual Property. That concern is even higher within the automotive industry, where 64% think it… Read More

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A prescription for preventing 3D printing piracy

Published August 13, 2016

Scattered colorful medical pills and capsules In the year 2000, the music business was still strong. Record companies produced albums and shipped these physical objects to the stores that sold them. The internet was slowly becoming a system of mass consumption and distribution, but the majority of consumers still purchased physical media. And while the record industry was aware of piracy online, the threat seemed minimal. Then came Napster. Read More

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