What to Do When a Patent Is a Couch Potato

I’m back, with another post about the AUTM® Eastern Region Meeting, which I first blogged about last week. Today’s topic: The workshop session “Strategies to Offload Patents that Are Doing Nothing for Too Long.”

This session, which I came to think of as the “couch-potato patent session,” was moderated by the University of Delaware’s Joy Goswami and featured panelists Kelly B. Sexton, director of North Carolina State University’s technology transfer office (TTO), as well as consultant Eugene Buff and Fuentek’s own Laura Schoppe.

The session focused on best practices for determining the “license-ability” of technologies as well as strategies for a lean, cost-effective, and focused mode of operation. Some of the strategies aligned with earlier posts on this blog, while others were decidedly new.

Focusing on the Entrepreneurial Community

One new strategy was presented by Kelly, as she described NC State’s process for strategically and systematically identifying patents in the portfolio that have become candidates for abandonment, sale, release, etc. NC State has initiated an effort to develop a separate Web page focused on articulating startup opportunities to entrepreneurs, as opposed to marketing licensing opportunities to established companies. The description of these startup opportunities presumably will include details that typically are not included in the description of licensing opportunities, such as a discussion of the market.

This strikes me as being one of those ideas that is so obvious you wonder why more folks aren’t already doing it. If your TTO is, it would be great to hear more about what types of information you share, how you decide who has access to it, and how you control that access (e.g., do they sign a non-disclosure agreement first, is the page password protected, etc.).

If your TTO hasn’t tried this type of targeted outreach, you may want to consider emulating what NC State is doing. In particular, such an approach could be useful for those who are looking to connect with their local innovation ecosystem (what Mike Cohen at UC-Berkeley called a Hy-LIE).

Beyond Active/Passive: A Third Option

Speaking of a targeted outreach, this was a strategy that Laura mentioned in her discussion of how to passively market IP. Although many universities tend to assign technologies in their portfolio to either “active” or “passive” marketing status, Laura recommended selective use of “targeted” marketing as a third level of activity. She explained that the targeted strategy is useful when there appear to be only a handful of potential licensees. In such cases, the TTO can reach out directly to the potential partners to articulate the benefits of the technology to them specifically, without necessarily needing to develop and post more formal marketing materials as would be done for active or even passive marketing.

Laura also reiterated an important point she has made on this blog before: Capturing technology descriptions, benefits, and applications in writing (at least as a draft technology overview) at the time the invention disclosure is initially reviewed is a great way to make a TTO more efficient. We do this as part of Fuentek’s preliminary screening process, and it strikes me as another of those good ideas that I suspect more TTOs could put into action. (BTW, we can help you with that.)

Don’t Be Afraid to Let It Go

The last point I’d like to share was made by Eugene. He advocated a portfolio management approach that views invention triage as looking for reasons to throw things out rather than looking for jewels. This point is always worth a reminder. Removing unproductive technologies from the portfolio as quickly as possible lets you be more efficient. This is the concept illustrated in the Fuentek Filtering Process, shown below. (You can watch a webcast to learn more about the process or read more of Fuentek’s insights on how to zero in on those innovations that have the best chances for commercialization or other tech transfer success.)

 

Fuentek Filtering Process

 

Would you like to learn more about how Fuentek can help you offload couch potato patents? Send me a message here.

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Posted by Rebecca Stoughton

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