Disclosure Assessment and Triage: An Innovative Model for Patent Decision Making
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Transcript of Disclosure Assessment and Triage: An Innovative Model for Patent Decision Making
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Joy Goswami, MS, MBA, RTTP
Office of Economic Innovation & PartnershipsUniversity of Delaware
2012
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TTOs facing all round budget cuts
Being confronted with issues such as down-sizing their patent portfolios to prioritize focus on the more ‘licensable’ patents
Number of new invention disclosures being received is on the rise but proportionally, the number of license deals are NOT
Requirements to develop a more structured screening process to reduce accrual of ‘non-licensable’ patents
Demands to increase efficiency of already under-staffed and over-worked offices!
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1. What is triage? 2. Major elements of triage3. Properties of a triage tool4. Interpretation of ‘licensable’ technology5. In the shoes of potential licensee6. Objectives defined7. Decision matrix 8. Interpretation of the Decision Matrix9. Proposed Model for adoption (9-month rule)10. Conclusion ‘licensable’ technologies
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Triage is:
Preliminary screening assessment undertaken in an effort to ….
Identify high potential projects that may be worthy of significant effort and investment in commercialization.
AUTM- 09 US Licensing Activity Survey reported
20,309 disclosures 4,374 licenses executed 18,214 total U.S. patent applications filed
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University of Oregon’s Innovation Center (1970s) developed a list of 33 areas and factors that should be determined for commercial potential of invention.
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Desired:
1. Objective analysis2. Not ranking based3. Simple to use and apply4. Easy and reliable interpretation of results
Commonly known tools:
TechAccess ™ (Texas A&M) TechAdvance™ point system, based on 43 researched and validated criteria,
provides an easy-to-use system for ranking your technologies Innovation Assessment Program at Washington State University Others: mostly from commercial organizations
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Triage is the preliminary screening assessment undertaken by us in an effort to identify high potential projects (‘licensable technologies’ ) that may be worthy of significant effort and investment in commercialization.
“We do not want to leave any scope of MAYBE in our assessment here”
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An invention that is legally protectable.
Is relevant to a market need (has commercial value)
Can be envisioned as a material product (mature)
Is supported by inventors showing willingness to facilitate ‘technology transfer’
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What Licensees really want from the technology:
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What Licensees really want from the technology:
Strong Buy technologyDevelop
technological capability
Concentrate on opportunity(in-license)
Average
Keep out Look for opportunities
Strengthen marketing function
Weak Keep out Find niche Look for partners
Weak Average Strong
MarketStrength
Technological capability
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1. Licensing Revenue2. Sponsored Research3. University – Industry Partnership development4. Start-ups (Spin-outs and Spin-ins)5. Economic Development
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Patents are the media and NOT the end point for success
Even best patents might not be licensable
Patents can be obtained for almost everything if aimed low at claims
Defining a ‘good’ versus ‘bad’ patent is subjective but important
‘Good’ Patent = Licensable ; ‘Bad’ Patent = Non-licensable
All disclosures mandates close scrutiny and good screening to get ‘good’ patents
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THE DECITION MATRIXTHE DECITION MATRIX
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1. Very clear idea of the invention (technology for protection)
2. Precise idea of what the end (commercial) product will look like
3. Value Proposition: Faster/ Better/Cheaper (1992 NASA initiative)
4. Inventor(s) background
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Receive well documented invention disclosures that:
Describes invention clearly and concisely. Highlight why it is unique, non-obvious and useful
Attach all prior patent art, literature, citations
Mention Funding Source and Agencies
State the invention’s commercial value (with justifications)
Attach all commercial contacts (names/addresses) that may be interested in the invention
List Inventors (each inventor having at least one contribution to the patent claims)
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Look for non-favorable ‘licensing characteristics’ (commonality in disclosures that have been not been successfully licensed in the past).
One size does not fit all…
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Screen-out disclosures that have such non-favorable ‘licensing characteristics’.
Some of these characteristics include:
▪ Simple artifacts, involve rudimentary use of scientific principles▪ Disclosures involving know-how or process only (and not part of a portfolio) ▪ Comprise non-cooperative inventors ▪ Have specific and narrow application base▪ Is not amongst the list of emerging technologies*
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Advanced Materials Superconductors Advanced semiconductor devices Digital Imaging Technology High Density Data Storage High-performance computing Optoelectronics Artificial Intelligence Flexible computer-integrated manufacturing Sensor technology Chemical Engineering Agriculture and Plant Science Medicine Biotechnology Medical devices and diagnostics
(Source: Technology Administration Division, US Department of Commerce)
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1. Patentability
2. Commercial Viability
3. Stage of Technology Maturity
Decision Matrix
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Category Patentability Marketability Maturity Stage Go/No-Go Activity
I Narrow Low Early or Late No-Go Abandon or Assign rights back to inventors
2 Broad Low Early or Late No-Go Abandon or Assign rights back to inventors
3 Narrow High Early Further diligence required
Seek collaborators for sponsored research
4 Narrow High Late Go Seek Licensee with non-exclusivity terms
5 Broad High Early Go Actively seek licensee with option terms
6 Broad High Late Go Actively seek licensee for exclusivity
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1. To what extent has the invention already been disclosed to the public? (i.e. is it novel)
2. Obviousness - TSM test, an invention is obvious (and therefore un-patentable) only if there is a teaching, suggestion or motivation to combine prior art references.
3. Anticipated scope of claims?
Rate: Broad or Narrow
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1. Nature of the technology in the market: breakthrough or incremental improvement?
2. Competitive products: currently available in the market?
3. Market Assessment: size, fields of use, company players?
4. Value Proposition: Does the added value exceed the cost of development?
Rate: High or Low
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1. Anticipated time to license?
Rate: Early or Late
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Category Patentability Marketability Maturity Stage Go/No-Go Activity
I Narrow Low Early or Late No-Go Abandon or Assign rights back to inventors
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Category Patentability Marketability Maturity Stage Go/No-Go Activity
2 Broad Low Early or Late No-Go Abandon or Assign rights back to inventors
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Category Patentability Marketability Maturity Stage Go/No-Go Activity
3 Narrow High Early Further diligence required
Seek collaborators for sponsored research
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Category Patentability Marketability Maturity Stage Go/No-Go Activity
4 Narrow High Late Go Seek Licensee with non-exclusivity terms
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Category Patentability Marketability Maturity Stage Go/No-Go Activity
5 Broad High Early Go Actively seek licensee with option terms
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Category Patentability Marketability Maturity Stage Go/No-Go Activity
6 Broad High Late Go Actively seek licensee for exclusivity
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Category Patentability Marketability Maturity Stage Go/No-Go Activity
I Narrow Low Early or Late No-Go Abandon or Assign rights back to inventors
2 Broad Low Early or Late No-Go Abandon or Assign rights back to inventors
3 Narrow High Early Further diligence required
Seek collaborators for sponsored research
4 Narrow High Late Go Seek Licensee with non-exclusivity terms
5 Broad High Early Go Actively seek licensee with option terms
6 Broad High Late Go Actively seek licensee for exclusivity
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Category Patentability Marketability Maturity Stage Go/No-Go Activity
I Narrow Low Early or Late No-Go Abandon or Assign rights back to inventors
2 Broad Low Early or Late No-Go Abandon or Assign rights back to inventors
3 Narrow High Early Further diligence required
Seek collaborators for sponsored research
4 Narrow High Late Go Seek Licensee with non-exclusivity terms
5 Broad High Early Go Actively seek licensee with option terms
6 Broad High Late Go Actively seek licensee for exclusivity
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Getting market ‘cues’ is most critical for fruitful decision making
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1. Enforcement Licensing2. Opportunity Licensing3. Opportunistic Licensing4. Divestiture licensing5. Partnering Licensing6. Startup Licensing
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Identify sensitivity of the technology to various risks: Technology itself The market IP issues Government and society
Consider economics Identify application fit to an unmet need Review production capacity Study scale-up or mass production feasibility
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Invention disclosure
submitted to TTOProvisional Filed:
0 months
“Marketing Active”
Decision to convert or abandon: 9 months
Review disclosure using
DECISION MATRIX
Patent Prosecution: 12 months
Prepare technical flyer, Assess target market and contact companies (20 +), review start-up
interest assess technology and gather data
“9 months rule” – No conversion unless favorable marketability response
Within the 9 month period of provisional filing:
1. Perform ‘push’ marketing to pertinent target market2. Collect data (positive, negative and no responses)3. Analyze data in light of the decision matrix to determine conversion decision
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USE INTERNET AS THE PRIMARY TOOL
Contact Potential Licensees
E-mail first If a known contact, either e-mail or call, but respect their time.
Follow up
Ensure receipt by phone or e-mail
Respond to requests for more info in a timely manner
Have a draft CDA ready to send out within a day of the request Call faculty to get answers to speed up response to the company
Keep complete records of your marketing activities (data collection)
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Lots of good ideas are patentable but may not be licensable
Take a comprehensive approach to your screening process
Identify ‘good’ (licensable) technologies using a well designed triage tool
Define your objectives (… merely getting patents is NOT an objective)
Get all critical pieces of the invention
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Adopt a simple two-step triage process comprising of preliminary screening , and decision matrix
Decision matrix comprising of a minimum of the three criteria: patentability, marketability and stage of maturity
Analyze – go or no-go (no intermediates)
Capitalize on the provisional period to gather data (market cues)
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Lowe Paul. The Management of Technology – Perception and Opportunities: 1st edition. Chapman & Hall, 1995
Kotler, Philip and Kevin Lane Keller. Marketing Management, 12th edition. Upper Saddle River, NJ: Prentice Hall, 2006
Razgaitis, Richard. Valuation and Pricing of Technology – Based Intellectual Property, 2nd edition. Hoboken, NJ: John Wiley and Sons, Inc., 2003.
Christopher M. Arena and Eduardo M. Carreras. The Business of intellectual Property. 1st edition. Oxford University Press, 2008.
Stim Richard. License your invention – sell your idea and protect your rights with a solid contact. 3rd edition. Nolo, 2002
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THANK YOU
It is better to debate a question without settling than to settle a question without debating it.
-Jeseph Joubert
Joy Goswami (MS, MBA, RTTP)
Licensing AssociateRegistered Technology Transfer Practitioner
University of Delaware Office of Economic Innovation & Partnerships1, Innovation Way, Suite 500Delaware Technology ParkNewark, DE 19711Phone: 302-650-9710 (Cell)Fax: 302-831-3411Web: www.udel.edu/oeip
Joy Goswami (MS, MBA, RTTP)
Licensing AssociateRegistered Technology Transfer Practitioner
University of Delaware Office of Economic Innovation & Partnerships1, Innovation Way, Suite 500Delaware Technology ParkNewark, DE 19711Phone: 302-650-9710 (Cell)Fax: 302-831-3411Web: www.udel.edu/oeip