Fuentek's Tech Transfer Blog

Managing Intellectual Property Proactively, Efficiently, and Effectively

Managing IP proactively is essential for any R&D organization, regardless of whether it’s a university, private company, government lab, hospital, or not-for-profit research organization. Being proactive leads to better, more thoughtful decisions about patenting, resource allocation, and other strategic choices for intellectual property (IP). It also helps you focus on achieving your goals rather than reactively putting out fires.

Fuentek has helped scores of technology transfer offices (TTOs) and other clients achieve success in managing IP. Here are some of those best practices that can make your TTO or other innovation operation more proactive, efficient, and effective.

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Prioritize the IP Portfolio

Fuentek studied the entire portfolio and determined the strengths and weaknesses. With this insight, our team has a better understanding of the processes needed to increase the value of the portfolio.”

If it has been a while since you reviewed the IP portfolio, analyze it now and prioritize what you have. This lets you focus resources on the innovations with the greatest potential for success. Prioritizing and optimizing the IP portfolio has other benefits as well, especially when there is a backlog of innovations awaiting a disposition decision.

It can be hard to make time to analyze and prioritize your portfolio, especially when your office staff are overwhelmed with cases. Yet, that is exactly when it is most important to take a strategic look at what you have that’s valuable… and what’s not.

To help address this, Fuentek offers Portfolio Optimization and Prioritization as one of our IP management services. We have achieved excellent results for our clients (example) and have had even greater success with our newest techniques. We also have shared our insights on tackling the IP portfolio in blog posts and webinars for companies, universities, and other R&D organizations.

Consider the Market When Evaluating a Technology

The report is brilliant! Fuentek has certainly taken technology assessment reports to a whole new level of thoroughness, accessibility and overall usefulness.”

When it comes to an innovation’s commercialization potential, the market’s need for it is as important as (if not more than) its technological advantages and whether the IP can be protected. So, before filing for a patent, first screen the technology for its market fit.

When a technology does fit the market, ramp up to marketing with a solid strategy for obtaining market feedback and securing licenses or an industry partner to sponsor/collaborate on further R&D.

For more specific advice for managing IP, check out our webcasts and blog posts on technology evaluation and strategy development.

How to Pursue Marketing Strategically

I am especially pleased with how Fuentek has reached out to industry, making contacts with prospective licensees and doing such an excellent job at marketing our technologies.”

Proactively identifying and connecting with qualified prospects interested in a technology isn’t a simple task. However, we have found several techniques consistently create the opportunity to find and cultivate strong leads for licenses or collaborative/sponsored R&D. Here’s just a small sampling of Fuentek’s recommendations for active marketing projects:

  • Develop effective marketing collateral by thinking through the AMMO (audience, message, mechanism, and outcome).
  • Write engaging online listings for every technology that’s available for license.
  • If the innovation is of interest to a market with lots of players, host a webinar-based technology briefing.
  • If the innovation has broad market potential, prioritize your targets.
  • Be realistic about the technology and its market potential so you know when to push.

You can read more Fuentek insights on creating effective marketing collateral and on developing and implementing successful strategies for marketing technologies.

Tips for Standardized and Negotiated Deals

Once the qualified leads have arrived at the negotiating table, it’s time to make a deal. Whether you offer a no-negotiation express license or are working out the details for royalty rates and non-financial terms, it is important to be informed and thoughtful. Here is what Fuentek suggests:

  • Have prospects submit license applications in phases, which expedites negotiations.
  • Always do your due diligence on license applicants (see slide graphic below).
  • Use multiple deal valuation techniques to find a valuation convergence range to ensure you’re setting a reasonable royalty rate.
  • If your goal is to increase royalty revenue or create jobs, focus on licensing to well-established, small-to-medium enterprises rather than to startups.
  • Take a creative approach when constructing offers and counter-offers.

We have lots of insights on negotiating licenses and conducting deal valuations on this blog.

All of this guidance on managing IP is based on Fuentek’s experience working with more than 4,000 technologies from a wide range of R&D clients. Contact us today to discuss how you can benefit firsthand from this expertise. We can train your professional staff and/or interns or provide direct support from our highly experienced team utilizing our cutting-edge approaches.