ashmarip best practices in outsourcing tto activities anurag bist [email protected] feb 28,...
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AshmarIP www.ashmarip.com
Best Practices in Outsourcing TTO Activities
Anurag Bist
www.ashmarip.com
Feb 28, 2012; Webinar
AshmarIP www.ashmarip.com
• Real-life examples of how outsourcing has benefitted tech transfer programs and their staffs
• Due diligence required in choosing the right outsourcing partner
• Case studies of how outsourcing has helped TTOs meet specific goals
• Tips on how to best integrate the outsourcing component in your decision metrics
• Strategies for monitoring outsourced activities and ensuring high quality
• Processes that make outsourcing a win-win for licensing officers, researchers and the university
Discussion Items
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• University TTO Landscape• What are the key bottlenecks?• How can Outsourcing of certain functions help?• Best Practices
– Choosing partner firm(s)– Key attributes of a good partners– Process flows
• Some case studies• Key takeaways
Agenda
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Due Diligence
-$
Patent Drafts
-$
Research/Invention Corroboration/Documentation
Pubs./IDFs UniversityTTOs
USPTO cycle
-$
Licensing Revenue +$
Start ups/Spin offs
Defensive Publications
More R&D/Produ
cts
University Funds (Endowment, R&D Grants,
Govt.)
$$
Equity
Liquidity (IPO/M&A)$$
University Invention Management Flow
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US Universities IDF Data Growth
AUTM Data
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University Disclosure Snapshot - 1
AUTM Data
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University Disclosure Snapshot - 2
AUTM Data
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Problem for University TTOs – Fact Lite
Summary of Licensing Revenues
AUTM Data
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• Early stage commercialization environment is a fact lite space
• This makes clear communication challenging and time consuming
• Better evidence would help overcome this
• But only in the circumstances where this is available quickly and cost effectively
Problem for University TTOs – Fact Lite
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– In house approaches could be adhoc and constrained because of resources• Many times interns are used with high turn over• A lot of training overhead • Time consuming• Complex, high level expertise needed• Limited audience buy-in to results
– External Services• Expensive• Superficial insights• Limited narrowly to IP and legal information• Hard to find expertise across various domain/research areas
Why Outsource?
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• Expertise of Principals and the team• Do they have prior experience in serving the TTO market?• Have they worked with similar size TTOs?
– What may work for a university with 400 annual disclosures may not work for one with 25 disclosure
• Do they understand technology transfer, and offer customized solutions for specific scenarios?
• Experts in all range of domains and research areas?– Bio-Sciences, Bio-Tech, High Tech, S/W, H/W, Cleantech, Medical Devices
etc.– Do they cover your innovation areas? More specifically, can they fill gaps in
internal TTO expertise, or complement them as needed?• What are their processes?
– Quality Control & Reliability– Presentation
Choice of an Outsourcing Partner
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• Services designed specifically to enhance university commercialization processes
• Rapid production
• Cost effective
• High level of Domain Expertise utilized
• High quality - feature by feature analysis
• Commissioned before provisional exists
• Informs Triage decision making
• Understands Innovation and University Technology Transfer!
Key Attributes of a Good TTO Partner
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IP Value Chain: Outsourcing Potentials
Technology Market Analysis
Conceptualization Research & development
Value Extraction
Landscape Analysis Patentability Search Patent DraftingCommercialization
Study
White Space AnalysisFreedom to use Study Patent Filing &
Prosecution Litigation Support
Competitive Analysis State-of-art StudyPatent Valuation,
Acquisition & Partnership
Overlap Analysis Claims Mapping
Licensing need Analysis Portfolio Analysis
IP Attorneys Researchers
Business ManagersResearchers IP Attorneys
IP Attorneys Business Managers
Designers
Technology Market Analysis
Conceptualization Research & development
Value Extraction
Landscape Analysis Patentability Search Patent DraftingCommercialization
Study
White Space AnalysisFreedom to use Study Patent Filing &
Prosecution Litigation Support
Competitive Analysis State-of-art StudyPatent Valuation,
Acquisition & Partnership
Overlap Analysis Claims Mapping
Licensing need Analysis Portfolio Analysis
IP Attorneys Researchers
Business ManagersResearchers IP Attorneys
IP Attorneys Business Managers
Designers
Technology Market Analysis
Conceptualization Research & development
Value Extraction
Landscape Analysis Patentability Search Patent DraftingCommercialization
Study
White Space AnalysisFreedom to use Study Patent Filing &
Prosecution Litigation Support
Competitive Analysis State-of-art StudyPatent Valuation,
Acquisition & Partnership
Overlap Analysis Claims Mapping
Licensing need Analysis Portfolio Analysis
IP Attorneys Researchers
Business ManagersResearchers IP Attorneys
IP Attorneys Business Managers
Designers
AshmarIP www.ashmarip.com
Tec
h 1
Tec
h 2
Tec
h 3
Tec
h 4
Tec
h 5
Co 1
Co 2
Co 3
Co 4
Co 5
Co 6
Co 7
Co 8
Co 9
Co 10
High IP risk domain –
collaboration required
Under researched domain –Research
opportunity
Single market leader, absent
in other domains -
Cross licensing possible
Alternative technology
licensing / tie-up’s possible
Single technology presence -
Cross licensing possible
Few patents in
various tech
domains in-licensing possible
Tec
h 1
Tec
h 2
Tec
h 3
Tec
h 4
Tec
h 5
Co 1
Co 2
Co 3
Co 4
Co 5
Co 6
Co 7
Co 8
Co 9
Co 10
High IP risk domain –
collaboration required
Under researched domain –Research
opportunity
Single market leader, absent
in other domains -
Cross licensing possible
Alternative technology
licensing / tie-up’s possible
Single technology presence -
Cross licensing possible
Few patents in
various tech
domains in-licensing possible
Unique Insights
ResearchersBusiness Managers
Business Managers
DesignersResearchers
Business Managers & Strategist
DesignersResearchers
Patent Landscape Example
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• Articulate the possible applications clearly
• Demonstrate usage scenarios with viable prototypes
• Better preparation of IP Differentiations
– Patentability and Marketability Studies
– IP Landscape Studies
• Identification of key partners and companies where the IP fills gaps
• Demonstrating monetization path by clearly identifying applications and use cases
• Finding the in-house champion who will take the role of Chief Marketing Officer (CMO) for deriving the maximum potential for the IP
• Prepare for thorough technical, business and IP due diligence
– Keep Patentability and Marketability Study ready
– Keep technical due diligence ready
– Articulate the monetization potential clearly
– Do valuation comparisons before hand
Best Practices: Marketing University IP What to Outsource?
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• Mid sized US research university
• Around 200 disclosure per year
• 75% disclosures to patent analytics report
• Patents
• 50% cost reduction in initial patent protection
• Better feedback to inventors
• Result: Quality up; Disclosures up by 50%
University Case Study 1
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• Small research university• 100 disclosures per year• Patentability and Marketability Studies of Invention Disclosures• Savings in cost with more focused information for Patent Drafting and
more intelligent conversion rate of Invention Disclosures • Savings in Cost by reducing redundant filings. 10-20% reduction in
redundant filings may translate to $100-$200K savings in patent prosecution budget. Front end cost alone – not counting Office Action, patent maintenance, foreign filings etc.
• Better Quality Patents – with better claims from information provided in Ashmar Reports
University Case Study 2
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• Large Top Tier Private University• TTO wanted help in analyzing a portfolio of 50 patents/patent
application for Licensing• TTO Commissioned a Market and IP Landscape Analysis • First Step in Analysis segmented the patents into 6 different sub-
categories or classes– For each class key patents and competing products identified– Detailed product vs. Claim map generated– Highest probability targets identified for licensing for each class
• Benefits – TTO was able to monetize the portfolio; analysis used in licensing negotiations and as marketing collateral
University Case Study 3
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• Better feedback to inventors• Better quality invention disclosures• Less provisionals filed, then lapsed• Less money sunk into “buying time”• More business development time • Better patent drafting/stronger claims• Faster access to business development relationships
and resources
Key Benefits of Good Outsourcing
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• Enhanced innovation leadership
• Positive reputation, internally, externally
• Better deals
• Higher portfolio value
• Lower cost of operations
• Better ROII (Return On Investment on Innovation)!
Impact on University TTOs
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Thank you!
Questions and Comments?
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