McCoy Russell has substantial experience with academic and research institutions and their technology transfer offices.
McCoy Russell has handled hundreds of university projects. Below are some examples demonstrating specialized technology transfer expertise.
Collaboration and Educational Mentoring
McCoy Russell participates in a biomedical commercialization program at a university to provide legal insight as well as intellectual property education.
As a case study, McCoy Russell worked with a university professor and student team to identify patentable inventions and options to protect the inventions for a household product. McCoy Russell met virtually with the student team which was scattered across the globe, reviewing prototypes. A prior art and landscape study was generated leading to filing of a utility application covering a number of different aspects of the invention.
As another case study, working with both the university legal team and the research team, McCoy Russell assisted with identifying and protecting a series of developments as to nicotine cessation compounds and methods. In early-development, a number of novel compounds from the university laboratory were covered in patent filings. McCoy Russell has been able to secure early allowance and assist the client in further coverage of other compounds.
Artificial Intelligence/Machine Learning
McCoy Russell has handled a wide variety of patent matters directed to artificial intelligence (AI) and machine learning (ML) technologies for multiple universities and research institutions in diverse fields such as robotics, biomechanics, therapeutics and diagnostics, treatment protocols, and electronics.
Medical Device Post Grant Reviews
In a case involving patents licensed from a major US research university to a European-based medical device company specializing in catheter-based biophotonics systems, attorneys and technical specialists of McCoy Russell lead a multi-national and geographically dispersed team that included technology transfer management and patent counsel representing the university as patent holder, and executives and legal counsel representing the licensee as end-user of the patented technology, for supplemental examination and reexamination of patents determined to be of central strategic value to the licensee’s business. The results obtained include additional, strengthened patent claims tailored to cover the most valued aspects of optical coherence tomography (OCT) methods and in-catheter OCT devices commercialized and slated for future products
Instrumentation / Lasers
McCoy Russell has drafted numerous applications for US and international universities related to instrumentation, particularly those utilizing lasers. Expertise in optics, physics, material science, and chemistry is combined to enable strong patent applications.
McCoy Russell has also worked with a South Korean University to create a family of patents directed to hardware security of semiconductor devices.
McCoy Russell has substantial experience with academic and research institutions and their technology transfer offices. McCoy Russell provides specific support tailored to the unique challenges presented in academic and research environments pursuing technology commercialization. Our experience and strategic approach considers the full technology life cycle, from the evaluation stage to portfolio creation and development to licensing and post-grant proceedings.
The professionals at McCoy Russell have extensive experience working with a significant number of U.S. and international universities, including state and private universities. Our attorneys also have experience in supporting various start-ups that have spun-out of the academic institutions and universities. McCoy Russell works closely with technology transfer managers to ensure strategic alignment with the inventors and the output of commercially viable patent filings and resulting portfolios.
McCoy Russell focuses on innovation life-cycle support, from initial inventor disclosure meetings and review of the technology disclosure to commercial viability searching, patent drafting, patent prosecution, and portfolio development, as well as licensing negotiations and education. McCoy Russell’s experience with technology transfer includes direct support of academic faculty and students, both undergraduate and graduate, from initial concept development to follow-on innovations.
McCoy Russell also assists technology transfer offices by providing training programs for students, faculty, and staff to improve the efficiency and quality of patent filings. In addition to educational programs, we have developed proprietary software allowing us to perform detailed landscape searches to identify potential collaborators and licensing partners, and to highlight insights into the marketplace and commercial viability of their research.
Technology transfer work requires expertise in navigating complex rules and regulations. Special care is taken by McCoy Russell to ensure regulatory compliance as to government-funded work and work subject to government contracts. Requirements of the Bayh-Dole Act are front and center to effectively advise technology transfer offices.