Fuentek's Tech Transfer Blog

Time to Strategically Manage the IP Portfolio for Tech Transfer

In preparing to give a new webinar on actively managing IP portfolios, I have been thinking a lot about efficiency. Because time is always limited, you must make the most of what you have. So, today I’m offering Fuentek’s insights about the time associated with strategically managing the IP portfolio.

Saving Time Takes Time

Time invested up front often saves time in the long run. A perfect example is the market-based analysis required for strategic portfolio management. This involves not only market research into secondary (documented) sources but also direct interviews with primary sources of market insights.

Although this level of diligence takes time, we have found time and again that it yields savings in the long run:

  • It helps eliminate low-probability opportunities earlier in the process.
  • For high-probability opportunities, it converts cold calls into warm leads, speeding up marketing and licensing.

So don’t shy away from spending time in the near term to be more efficient later.

Get It Right the First Time

Do not underestimate the value of having professionals with technical competency and business acumen conduct these interviews. Student interns are ideal for gathering IP and market data from secondary sources for preliminary disposition decisions. But experienced professionals are best for the customer development–type phone calls because they:

  • Have the experience and expertise to effectively communicate most technologies coming out of universities and government labs — that is, complex and/or embryonic innovations that tend to be a portion of a product rather than a stand-alone solution
  • Can respond effectively to an interviewee’s questions without creating “I’ll have to get back to you on that” delays, revealing strategic information, or making inappropriate commitments
  • Recognize the implications of interviewees’ feedback and can ask follow-on questions that inform not only this commercialization effort but also innovators’ future research or alternate prospects
  • Have the insight to understand the value proposition for each prospect and effectively cultivate the potential licensee’s interest from the beginning

The bottom line: For maximum efficiency, be as effective as possible in each phone call.

The Early Bird Gets the Worm

To make decisions strategically, gather the required information before you need it. That means starting early. As the clock icon in our Cultivate Your IP infographic shows:

  • Technology screening ideally happens before IP protection, which informs the decision about filing for a provisional patent.
  • Marketing preparation occurs before filing for the more expensive non-provisional patent.
  • The goal is to be in the deal-making phase before the deadline to nationalize a PCT. This not only allows you to know which countries align with the licensee’s goals, but it also gives you the chance to share (or offload) the cost of nationalization with the licensee.

Strike While the Iron Is Hot

This is not to say that the “IP clock” is the main guidance for these efforts. Instead, focus on the readiness of the market. Take a comprehensive look at the IP portfolio relative to market needs. Identify the technologies that align with those “ripe” markets and screen those innovations. This approach maximizes efficiency and increases the potential for deal-making success.

The Value of Quick Success

In addition, strategically focusing on a key section of the portfolio can efficiently lead to success more quickly. This can be important for tech transfer offices facing low researcher involvement and/or stakeholder criticism.

Of course, it’s important to communicate the complexity of the tech transfer process and set reasonable expectations while helping researchers and administrators/managers see results. Having accomplishments you can point to quickly helps get the buy-in from stakeholders needed to obtain necessary resources and time to achieve longer term outcomes.

Consider the garden metaphor. Say you don’t have time to weed and mulch all the beds in one weekend. If you do one of these two tasks all over the garden, the whole thing looks unfinished. But if you focus on doing both tasks in a highly visible bed, then you have one section that looks fabulous and demonstrates the great things to come.

To see this concept at work in tech transfer, check out this example of how a strategic focus on clearing out a backlogged IP portfolio transformed researchers’ resistance into buy-in. Or see this example of the positive results achieved with a sector-specific portfolio optimization.

To learn more about how Fuentek can help you strategically manage your IP portfolio, contact us today.