Joy Goswami, MS, MBA, RTTP
Office of Economic Innovation & Partnerships
University of Delaware
2012

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 overworked offices!
What is triage?
Major elements of triage
Properties of a triage tool
Interpretation of ‘licensable’ technology
In the shoes of potential licensee
6. Objectives defined
7. Decision matrix
8. Interpretation of the Decision Matrix
9. Proposed Model for adoption (9-month rule)
10. Conclusion ‘licensable’ technologies
1.
2.
3.
4.
5.
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














Legality
Safety
Environmental impact
Societal impact
Potential market
Product life cycle
Usage learning
Product visibility
Service
Durability
New competition
Functional feasibility
Production feasibility
Stability of demand













Consumer/user
compatibility
Marketing research
Distribution
Perceived function
Existing competition
Potential sales
Development status
Investment costs
Trend of demand
Product sales
Development status
Investment costs
Trend of demand










Product line potential
Need
Promotion
Appearance
Price
Protection
Payback period
Profitability
Product
interdependence
R&D
University of Oregon’s Innovation Center (1970s) developed a list of 33 areas and
factors that should be determined for commercial potential of invention.
Desired:
Objective analysis
Not ranking based
Simple to use and apply
Easy and reliable interpretation of results
1.
2.
3.
4.
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
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”
 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’
What Licensees really want from the technology:
Freedom to
operate
Barriers to
Entry
Threats to
Substitute
Minimize Risk
‘Good’
Competitive
Technology
Value
Extraction
Consideration
What Licensees really want from the technology:
Market
Strength
Develop
technological
capability
Concentrate on
opportunity
(in-license)
Strong
Buy technology
Average
Keep out
Look for
opportunities
Strengthen
marketing function
Weak
Keep out
Find niche
Look for partners
Weak
Average
Strong
Technological capability
1. Licensing Revenue
2. Sponsored Research
3. University – Industry Partnership development
4. Start-ups (Spin-outs and Spin-ins)
5. Economic Development

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
THE DECITION MATRIX
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
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)
Step 1
Preliminary
Screening
Step 2
Implement
Decision
Matrix
Step 1
Preliminary
Screening
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…
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*















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)
Step 2
Implement
Decision
Matrix
1.
Patentability
2.
Commercial Viability
3.
Stage of Technology Maturity
Protectable
Invention (IP)
Commercial
Value
Decision Matrix
Maturity
Good
(Licensable)
Patent
Category
Patentability
Marketability
Maturity Stage
Go/No-Go
Activity
I
Narrow
Low
Early or Late
No-Go
Abandon or Assign rights
back to inventors
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 nonexclusivity terms
5
Broad
High
Early
Go
Actively seek licensee with
option terms
6
Broad
High
Late
Go
Actively seek licensee for
exclusivity
2
Protectable
Invention
(IP)
Commercial
Value
Maturity
Good
(Licensable)
Patent
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 unpatentable) only if there is a teaching, suggestion or motivation to
combine prior art references.
3.
Anticipated scope of claims?
Rate: Broad or Narrow
Protectable
Invention
(IP)
Commercial
Value
Maturity
Good
(Licensable)
Patent
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
Protectable
Invention
(IP)
1.
Commercial
Value
Maturity
Anticipated time to license?
Rate: Early or Late
Good
(Licensable)
Patent
Category
Patentability
Marketability
Maturity Stage
Go/No-Go
Activity
I
Narrow
Low
Early or Late
No-Go
Abandon or Assign rights
back to inventors
Category
2
Patentability
Marketability
Maturity Stage
Go/No-Go
Activity
Broad
Low
Early or Late
No-Go
Abandon or Assign rights
back to inventors
Category
Patentability
Marketability
Maturity Stage
Go/No-Go
Activity
3
Narrow
High
Early
Further diligence
required
Seek collaborators for
sponsored research
Category
Patentability
Marketability
Maturity Stage
Go/No-Go
Activity
4
Narrow
High
Late
Go
Seek Licensee with nonexclusivity terms
Category
Patentability
Marketability
Maturity Stage
Go/No-Go
Activity
5
Broad
High
Early
Go
Actively seek licensee with
option terms
Category
Patentability
Marketability
Maturity Stage
Go/No-Go
Activity
6
Broad
High
Late
Go
Actively seek licensee for
exclusivity
Category
Patentability
Marketability
Maturity Stage
Go/No-Go
Activity
I
Narrow
Low
Early or Late
No-Go
Abandon or Assign rights
back to inventors
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 nonexclusivity terms
5
Broad
High
Early
Go
Actively seek licensee with
option terms
6
Broad
High
Late
Go
Actively seek licensee for
exclusivity
2
Category
Patentability
Marketability
Maturity Stage
Go/No-Go
Activity
I
Narrow
Low
Early or Late
No-Go
Abandon or Assign rights
back to inventors
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 nonexclusivity terms
5
Broad
High
Early
Go
Actively seek licensee with
option terms
6
Broad
High
Late
Go
Actively seek licensee for
exclusivity
2
Getting market ‘cues’ is most critical for fruitful
decision making
1.
2.
3.
4.
5.
6.
Enforcement Licensing
Opportunity Licensing
Opportunistic Licensing
Divestiture licensing
Partnering Licensing
Startup Licensing

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

“9 months rule” – No conversion unless favorable marketability response
Invention disclosure
submitted to TTO
Decision to convert or abandon:
9 months
Provisional Filed:
0 months
Review disclosure
using
DECISION MATRIX
“Marketing Active”
Prepare technical flyer, Assess target market
and contact companies (20 +), review start-up
interest assess technology and gather data
Within the 9 month period of provisional filing:
1.
2.
3.
Perform ‘push’ marketing to pertinent target market
Collect data (positive, negative and no responses)
Analyze data in light of the decision matrix to determine conversion decision
Patent Prosecution:
12 months
Companies
(Potential
Licensees)
Alumni
(Expert
Network)
VCs and
Entrepreneurs
TTO
Current
Licensees
University
‘Excels’
Inventors
USE INTERNET AS THE PRIMARY TOOL

Contact Potential Licensees



Follow up


Ensure receipt by phone or e-mail
Respond to requests for more info in a timely manner



E-mail first
If a known contact, either e-mail or call, but respect their time.
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)

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

Adopt a simple two-step triage process comprising of preliminary screening , and
decision matrix
Step 1
Preliminary
Screening
Step 2
Implement
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)

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
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 Associate
Registered Technology Transfer Practitioner
University of Delaware
Office of Economic Innovation & Partnerships
1, Innovation Way, Suite 500
Delaware Technology Park
Newark, DE 19711
Phone:
302-650-9710 (Cell)
Fax:
302-831-3411
Web:
www.udel.edu/oeip