Academic Research and Technology Transfer

Overview

The Bayh-Dole Act is arguably one of the most successful pieces of bipartisan legislation ever passed. Its first line says, “It is the policy and objective of the Congress to use the patent system to promote the utilization of inventions arising from federally supported research or development…” Since the act’s passage in 1980, the number of granted patents receiving government funding has increased dramatically.

Because of this, research institutions face unique challenges, from balancing large IP portfolios to identifying revenue-producing applications for their discoveries and inventions. McKee, Voorhees & Sease is a recognized leader in the technology transfer sector, helping clients translate cutting-edge science into products and processes that can be protected and commercialized.

Combining extensive IP experience prior to and following the Bayh-Dole Act passing, technical training, and a strategic business focus, we serve as the connecting force between scientific and commercial ventures. Throughout the commercialization process, we assist with patent strategy, prosecution, licensing, portfolio management, and enforcement to support our clients’ transactional and strategic needs.

Our team of seasoned advisors represents more than 40 technology transfer organizations, research foundations, and universities worldwide, from The Ohio State University and Colorado State University to the University of Saskatchewan and the University of Leicester. We are particularly attuned to the needs of land-grant universities in the Midwest, leveraging our location and the expansive scope of the technology transfer and research industry.

MVS has converted hundreds of chemical, mechanical, and biotechnology discoveries into successful patent applications with proper commercial applicability. Since 2014, we have held a 99 percent allowance rate in the Biotechnology and Organic Chemistry Tech Center, a 100 percent allowance rate in the Chemical and Materials Engineering Tech Center, and a 73 percent allowance rate across the Mechanical Engineering and Agriculture Tech Centers, setting the standard for national average allowance rates.

We cultivate long-lasting and collaborative working relationships with our clients and serve as active participants and thought leaders in the technology transfer field. Our lawyers have actively participated in the Association of University Technology Managers (AUTM) for decades – from serving on boards to speaking at invitation-only leadership forums – in order to stay up to date on pressing industry issues and advocate on behalf of our clients. MVS is proud to be an annual sponsor and supporter of AUTM Regional Meetings and Partnering Forums.

Services include:

  • Invention identification
  • Inventorship analysis
  • IP strategy development
  • Patent procurement in U.S. and foreign jurisdictions
  • Trademark prosecution and counseling
  • Drafting and negotiating license agreements
  • Patent enforcement
  • Legal and regulatory compliance

Experience

  • Prepared and prosecuted U.S. patent number 10,308,947, METHODS AND COMPOSITIONS FOR MULTIPLEX RNA GUIDED GENOME EDITING AND OTHER RNA TECHNOLOGIES, for The Pennsylvania State University.
  • Prepared and prosecuted U.S. patent number US 10,139,306 B2, METHOD AND SYSTEM FOR BRIDGE DAMAGE DETENTION, for the Iowa State University Research Foundation, Inc.
  • Prepared and prosecuted U.S. patent number US 9,745,561 B2, GENETIC TEST AND GENETIC BASIS FOR SCID IN PIGS, for Iowa State University Research Foundation, Inc.
  • Prepared and prosecuted U.S. patent number US 8,173,869 B2, PLANTS EXPRESSING ENVIRONMENTAL STRESS TOLERANCES HAVING PETUNA CBF GENES THEREN, for The University of Toledo.
  • Prepared and prosecuted U.S. patent number US 9,736,685 B2, CLOAKING WITH FOOTPRINTS TO PROVIDE LOCATION PRIVACY PROTECTION IN LOCATION-BASED SERVICES, for the Iowa State University Research Foundation, Inc.
  • Prepared and prosecuted U.S. patent number US 9,238,159 B2, LOG ROLL, for Auburn University.
  • Prepared and prosecuted U.S. patent number US 9,964,532 B2, BIODEGRADABLE SOIL SENSOR, SYSTEM AND METHOD, for North Dakota State University.
  • Prepared and prosecuted U.S. patent number US 9,795,708 B1, METHOD FOR MACHINING METALLIC FOAM, for the Iowa State University Research Foundation, Inc.
  • Licensing agreements for Colorado Wheat Research Foundation.
  • Licensing agreements for NUTech Ventures.

 

Academic Research and Technology Transfer Team

Mark D. Hansing

View Bio

Patricia A. Sweeney – Of Counsel

View Bio

Heidi S. Nebel

View Bio

Jill N. Link, Pharm.D.

View Bio

Luke T. Mohrhauser

View Bio

Jonathan L. Kennedy

View Bio

Sarah M.D. Luth

View Bio

Gregory Lars Gunnerson

View Bio

Oliver P. Couture, Ph.D.

View Bio

Julie L. Spieker

View Bio

Brian D. Keppler, Ph.D.

View Bio

Stay in Touch

Receive the latest news and updates from us and our attorneys.

Sign Up