Outsourcing:
From micro- to masterful, technology management
Lee M. Taylor, JD, LL.M, MBA
University of Hawaii
Standard/Stanford Model
Cradle to grave technology “management”
including sponsored research
Advantages:
Single point of contact
Diversity of the position – job satisfaction
Disadvantage: Severely limits loading,
favoritism in functionality/technology
IT revolution and the law
Greater changes in the last five years then in the last fifty in the practice of
the law due to economic downturn, outsourcing and software
improvements
Creates an opportunity to leverage a TTOs assets in new and powerful ways
A less gilded future
The legal business has undergone not only recession but also structural change. Ever-growing
profits are no longer guaranteed. Nor, for some firms, is survival
May 5th 2011 | NEW YORK |The Economist
Internal
MultiExpertise
Legal
•
Marketing
•
External
Business
Ventures
Market
Research
4
Resources
Advisory Services
• Patent Law Firms, Law Firms, Other
IP Strategy
• OTL, Consultants, Other
IP Valuation
IP Management
• Licensing Associate, Patent Attorney
IP Brokerage
• external posting, Website Posting
Assertive Patent licensing
• Law Firms or other firms
IP Enforcement on a contingency basis
5
UH OTTED’s external
assets
• Ashmar Patent Analytics for PMRs (Patentablity/Marketability reports)
Dr. Anurag Bist
anurag.bist@ashmarip​.com
• IP Checkups for valuations on pending and issued patents
Matt Rappaport
mrappaport@ipcheckups.com
• PriorSmart for docketing during prosecution, the “dashboard”
Kyle Jensen
kyle@priorsmart.com
Allows for a great free up of time for additional “client” interaction
Examples
• Promising gene therapy disclosure was going to have
simultaneous US utility and PCT filing, Ashmar found
academic publication that covered the disclosure entirely,
“but for” the report would have spent an initial $17,000 in
filing fees
• Issued patent basis of a startup company, used IP Checkups to
understand the strength of the patent and indicate promising
areas of research for red protein markers in jellyfish
• PriorSmart tracking of multiple disclosures from a single
inventor to keep track of their progress ($4/month/per tech)
Diligence
Be up front that interaction is on a trial basis
Be clear about the ability to be locked into a contract/pricing
Beware services that require a great deal of work on the part of
TTO staffers
Beware non-customized information and/or information that
would greater serve a licensee rather then the licensor
Addenda
Disclosure and licensing goals
Integration
Monitoring
Thank You
Lee M. Taylor
ltaylor3@hawaii.edu