Using the IP Management Database to Answer Metrics FAQs

Using the IP Management Database to Answer Metrics FAQs

Using the IP Management Database to Answer Metrics FAQs

FAQ-crossword_iStock_000017784335_lowrezAt the end of my series of posts about metrics for new (or newly reorganized) technology transfer offices (TTOs), I noted that TTOs should also develop a way to generate a report summarizing their portfolio for internal purposes (though extracts may be useful for reporting and marketing purposes as well). Indeed, most TTOs want to — or have to — respond to frequently asked questions (FAQs) about the technology portfolio.

Frequently Asked Questions

Whether they are routine or ad hoc, these FAQs often come from key stakeholders and focus on TTO performance:

  • Which/How many technologies have startups planned/launched?
    As Laura Schoppe discussed, the startups question is currently one of the most frequent FAQs from a TTO’s stakeholders.
  • What’s the likely commercial potential for each technology in the portfolio?
    Knowing how many evaluated technologies were found to have high or medium-high potential gives stakeholders a sense of the overall potential of the portfolio and helps to set realistic expectations and strategically focus future efforts.
  • Are the technologies with the highest potential getting the bulk of the resources?
    I sure hope so!  
  • What is the status/progress of the various marketing efforts?
    The answer to this question shows, for example, whether passively marketed technologies are listed on the TTO website (and other technology portals, such as the AUTM® Global Technology Portal) or that targeted prospects have been contacted.
  • How many new/ongoing active licenses are there?
    The answer to this and many related questions are useful not only for stakeholder FAQs but also for AUTM’s annual licensing survey.
  • What success stories do you have? How many startups are still in business?
    These long-term outcomes are as important as the new deals.

As the F in FAQ suggests, these questions are asked frequently. Yet if a TTO frequently is scrambling to answer and struggles to generate the needed reports, then this indicates something is amiss. The TTO’s database for managing intellectual property (IP) as well as office procedures can — and should — be structured in such a way that the information needed to obtain answers to the above FAQs is accessible quickly and easily.

Effective IP Management Databases

An effective IP management database can generate a report that:

  • Summarizes the portfolio in a list that includes technology titles, related patents and their status, etc.
  • Indicates whether technology evaluation has been completed (and, if it has, includes a brief technology overview of what it is/does and its benefits and applications)
  • Lists each evaluated technology’s commercialization rating
  • Summarizes the plan (and its current status) for each technology that’s being moved forward

This information is useful for more than just internal stakeholders. In addition to helping you answer the AUTM survey more easily each year, a robust IP management database with good reporting functionality makes it easy to generate:

Of course, the structure and reporting functionality of the IP management database is only part of the solution. The information must be collected — and entered into the database — naturally as part of day-to-day operations. When you combine a well-structured database with the procedures to populate it consistently to maintain database integrity, a variety of meaningful and useful reports can be easily created.

How to Select/Develop a Powerful IP Information Management System

Having helped several clients select or develop powerful knowledge/information management systems, Fuentek has some suggestions on how to get started:

1. Take a Step Back

Think about the types of queries you need to answer frequently.

2. Look at What You Have

If you’re using spreadsheets to track everything, it might be time to invest in a more powerful system. If you already have a database-driven system, is it structured to store the information in such a way as to ease reporting?

  • If it is a well-structured system yet answering FAQs is a challenge, the problem may be that data are not being routinely collected and input as part of routine daily operations. Current operational procedures may need to be tweaked and/or more clearly communicated to staff.
  • If your current database is not structured appropriately, then…

3. Look at What’s Out There

Request demos of commercially available IP management systems to compare them to what you currently have. It can be very hard to let go of a system you’ve invested in. (Fuentek knows about this first hand, as discussed in The New Small by Phil Simon.) But technology changes so fast that the costs of switching to a new system may be far outweighed by the resulting improvements in functionality and productivity.

If producing the answers to FAQs  a time-consuming process for your TTO — which can be a drain on resources that should be used to achieve the organization’s goals more directly — then it’s time to revisit your IP management database and decide on the best solution for dealing with it. Helping TTOs make and implement these decisions is part of what we do at Fuentek, so feel free to contact me to discuss how we can help.

5 Technology Sourcing Tips to Sprint Ahead in Innovation (plus a free webcast)

5 Technology Sourcing Tips to Sprint Ahead in Innovation (plus a free webcast)

5 Technology Sourcing Tips to Sprint Ahead in Innovation (plus a free webcast)

ObstacleRace_iStock_000006226679-lowrezIt’s no secret that universities, research institutes, and government labs are excellent sources for innovations that can jump-start new product development. Rather than sink significant resources into starting from scratch internally, companies can leverage others’ technologies. Doing so not only can save money, but it also reduces the risk associated with the early stages of the innovation pipeline. This is often called the technology sourcing part of open innovation.

What is less clear to some companies is how to make technology sourcing a reality. Below are some tips that Fuentek has developed based on a decade of helping corporate clients access the technologies they need via licensing, collaborative R&D, sponsored research agreements (SRAs), and other open innovation tactics.

1. Know When It’s Time to Look Outside

Be honest about what areas are your company’s strengths and what areas are outside your core competencies. Consider the make-vs.-buy decision early in the R&D process, evaluating all R&D projects before investment to see if another organization — perhaps in another industry — has already found a solution to the problem at hand.

For example, we worked with a company that needed better and “greener” ways to deliver its product cold to distributors. But this company specialized in making tasty beverages, not designing and installing solar panels on their truck roofs. Rather than try to innovate in a field that was not the company’s strength, the task was to look into whether the company could/should buy off-the-shelf from a vendor, merge/acquire a solar tech company, or provide funding to experts who could focus their R&D to address the company’s needs — but they knew developing it internally with their existing resources was not the right approach.

2. Look Beyond Your Backyard…

Having close proximity to your technology source is nice to have, but it always pays to look nationally and internationally to see who is innovating in the relevant space. For example, for a client based in Alabama who needed an expandable scaffolding structure, we identified the leading innovators as being in New York, Minnesota, and Wisconsin (with an operation in Alabama). The point is: It never hurts to cast a wide net, even if you end up partnering with a nearby organization. The goal is to make an informed decision.

3. … But Don’t Disregard Location Entirely

In some collaborative or sponsored R&D situations, it is important to be close to the source of innovation. Keeping a handle on things throughout the R&D process may help ensure any problems are identified early, and being close by makes that easier to do. Also, if the purpose is to recruit new employees, getting to know the graduate students is of great value.

There also might be cases where there is an economic development incentive with partnering locally. If the nearby solution is not on the cutting edge but is sufficient to solve the problem, there is value in “buying local.” Remember: Not everything has to be latest and greatest.

4. Understand the Academic/Government Perspective

perspectivesOnInnovation-webcast-iconWhereas companies are focused on increasing revenue and profits, universities and government labs are usually focused on developing new and unique concepts. Their research often is conducted to fulfill the requirements of the funding source, which for universities may be the federal government. They will be focused on ensuring they are being good stewards of taxpayer dollars.

More on This Topic: Check out Fuentek’s free 5-minute webcast “Perspectives on Innovation.”

5. Know the Limitations for U.S. Public Universities

Companies need to be aware that sponsoring research at public universities in the United States have some limitations on pre-negotiating IP rights dictated by IRS rules. However, there are ways to address this problem, such as via a letter of intent. Also, some universities address this issue systematically to avoid running afoul of the IRS and jeopardizing their tax-exempt bond status. For example, the Georgia Tech Research Corporation has its bond-compliance group review the university’s ~600/year SRAs, ensuring that limitations on the use of certain buildings are followed, both when the agreement is established and on an ongoing basis.

If you would like to read more on this topic, see How-To Tips for Corporate Licensing Officers Looking for University/Government Technologies. Or contact me to discuss how Fuentek can help you with your Technology Sourcing needs.

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Technology Sourcing

Worth Reading in Tech Transfer: Summer 2015

Worth Reading in Tech Transfer: Summer 2015

Worth Reading in Tech Transfer: Summer 2015

Online reading of technology transfer news
Today we bring back a reader favorite for our blog. In returning to these “Worth Reading” posts, we’re changing things up to include insights from across Fuentek’s leadership. These perspectives from Laura Schoppe, Danielle McCulloch, and Becky Stoughton are based on the expertise they have gained in doing what we do as well as their past experience. Enjoy!

 

Where Should Pharma Hunt For Academic Innovation? • Forbes.com • July 21, 2015 • This post posits that, although A-List universities (e.g., Harvard, Rockefeller, Stanford, UCSF, Yale) are worthy collaborators, pharmaceutical companies miss breakthrough research opportunities when they ignore the rest of the pack.

laschoppe-85pxFrom Laura: This article is absolutely right that pharmaceutical companies should look beyond the A-list universities for potential partners. In addition to the three valid reasons listed, there’s another benefit of casting a wider net — and this applies not just to pharma but to any industry.

Because leading faculty and institutions are highly sought after and in a better position to be choosy about what they work on, it can be hard to get their attention. Companies may do better to seek out others with sufficient qualifications. A great database to search for the universities innovating in a particular field is the AUTM® Global Technology Portal. Searches are free, and using a keyword search you’ll quickly find which universities (and government labs) are likely have the expertise you’re looking for. (BTW, if you’re a university posting in AUTM’s GTP, here are some tips for your online postings.)

 

UC San Diego Wins Legal Battle in Dispute with USC Over Alzheimer’s Project • Los  Angeles Times • July 24, 2015 • This story reports on the case of a departing principal investigator who was accused of illegally transferring the database for a landmark research project to his new employer. Although monetary damages had not yet been decided, the judge did rule that UCSD owns the database as its intellectual property (IP). 

rstoughton-85pxFrom Becky: This case is an excellent example of how important it is to draw a clear line regarding the date of the researcher’s employment transition and — more importantly — what IP existed before that date. The IP might include patents, patent applications, copyrights, invention disclosures, or (in this case) data.

Having a clear delineation makes it easier to establish an arrangement governing how the two institutions will manage the IP, should that become necessary and/or mutually beneficial. It’s important to note that such an arrangement — possibly a research license, a material transfer agreement (MTA) granting specific rights, an inter-institutional agreement (IIA), or even an assignment of rights — might not be established at the time of transition. In fact, you might find yourself in the tricky position of working to establish the agreement years later, which further underscores the importance of documenting the current state of the IP at the time of the researcher’s departure.

 

NASA Releases Over 1,000 Free Software Programs • Tech Transfer eNews Blog • May 19, 2015 • This post announces the publication of NASA’s 2nd annual catalogue of free software. As noted, “the catalog website has had millions of visitors… [and] NASA remains the first and only federal agency to release this comprehensive a collection of free software tools.”  

DanielleMcCulloch-85pxlFrom Danielle: The Software Catalogue is just one of several efforts spearheaded by NASA Headquarters to present a cohesive presence of the Agency’s tech transfer program. This is a formidable goal, given that each of NASA’s 10 Field Centers has its own tech transfer office. Yet, as we have pointed out before, consolidating/centralizing certain activities across “campuses” can avoid duplication of effort and other inefficiencies. It also provides a one-stop shop for outsiders who are unlikely to recognize (or care) exactly where within a larger organization a technology originated — they just want to access it quickly and efficiently. We are assisting NASA with a few other efforts in this vein, and you’ll be hearing more about them in the weeks to come.

 

Doctorpreneurs: Many Bright Inventions Come Out of the NHS. Too Few Are Exploited • The Economist • July 4, 2015  • This article briefly describes the obstacles blocking successful transfer of technology developed in British hospitals within the National Health Service (NHS). 

laschoppe-85pxFrom Laura: This relates to Danielle’s NASA article and the importance of coordinating/centralizing among “sibling” TTOs. Although the Economist article did not specifically cite it, an insightful tweet from our friends at Knowledge Investors made the centralization connection. It was solidified for me when I found a June 2015 study entitled “Improved Circulation: Unleashing Innovation Across the NHS,” which makes recommendations for the 15 regional Academic Health Science Networks (AHSNs). Established ~18 months ago, the AHSNs’ agenda was set by the NHS as “to drive adoption and spread of innovation… [and] create a synergy between researchers in universities, industry and entrepreneurs, and the local NHS to identify, exploit and commercialise innovations.” Sound familiar?

What makes these AHSNs unusual is that each serves multiple institutions, rather than each hospital having its own TTO. Plus there appears to be at least some collaboration across the AHSNs, not unlike what we’ve observed in other countries. I look forward to watching these collaborations continue and seeing what (if any) centralization/consolidation they pursue.

 

And here are some tweets about other stories that caught our eye…

Categories

Worth Reading

License Negotiation Forget-Me-Nots for Technology Transfer Offices

License Negotiation Forget-Me-Nots for Technology Transfer Offices

License Negotiation Forget-Me-Nots for Technology Transfer Offices

StringOnFinger_iStock_000021963522_lowrezThe past few months have seen several of us at Fuentek supporting multiple clients with negotiating licenses for their technologies. One project that I’ve been helping a client with embodies several best practices of license negotiations. Ironically, these concepts are so essential that they’re sometimes forgotten.

So here is a list we’ve put together to ensure that the most important aspects of license negotiations stay front and center.

 

1. Value Is More Important than Price

Often we are asked for help in coming up with a price for the technology to be licensed. But such attempts at “price tagging” usually yield a number that’s too high or too low, over- or underestimating how much the technology is worth to the licensee. So rather than putting a price on the technology, one must put a value on the deal.

Example

Our client was contacted by a company asking what the cost would be to license a particular software technology. I helped her turn the question around and think about it from the prospect’s perspective. This changed it from What’s the price of our technology? to What value does our technology bring to the market? How will this licensee use it? What are the specific circumstances of the market? (BTW, ideally you’ve done the market-focused research to begin to answer these questions.)

 

For more insights on tech transfer negotiations, download our free webcast. Read more here.

2. Let the Licensing Prospect Make the First Offer

Actually, we recommend that TTOs require the prospect to make the first offer. Remember: You hold the technology that they want, so you get to set the rules of the negotiation. And one of the best rules is the two-step application process, which we’ve helped several TTOs successfully implement.

Example

When the client asked me how she should respond to the company’s inquiry, I advised her in putting together the basic elements of a term sheet for the prospect to fill out and submit as an application for a license. This first step puts the TTO in a position of power, because the application sets the floor for the negotiations. (The offer won’t get lower than this, and there’s nowhere to go but up.)

 

3. Grant Exclusivity Judiciously

Companies often want an exclusive license to protect their interest, which is understandable. Yet there is no need to go whole-hog in granting exclusivity and hamstring the TTO if/when other companies express interest in the technology. (Yes, this vegetarian just used “hog” and “ham” in the same sentence!) A field-of-use exclusive license provides the protection companies want while maintaining the flexibility to secure additional licenses.

Example

The term sheet submitted by the company requested across-the-board exclusivity. However, we knew other companies in other fields were interested in the technology. Plus, we knew that this small company would not be able to cover all markets for this technology, and other players were better suited for the other markets. Therefore, we advised our client narrow the blanket-exclusivity request to specific fields of use.

 

4. Use Caution in Setting the Royalty Rate

In looking at the royalty rate, be sure to consider (1) the percentage of the total product and (2) the portion of the product portfolio that the technology will impact. We at Fuentek call this measurement the “Attributable Portion of Revenue” — that is, the amount of revenue generated that can be attributed to the licensed technology.

Example

The royalty rate that the company proposed looked reasonable at first. But a closer look showed me that the rate being offered was too low given how the technology would fit in the company’s product line. You see, the company wanted to sell hardware that implemented our client’s software. Their calculations assumed that the software was just a small portion of their product, which in a sense it was. Yet without our client’s software, the company had no product. Therefore, the low royalty rate was inappropriate.

For more on this topic, check out this post on negotiating a reasonable royalty rate as well as these additional examples.

 

5. Rethink the Concept of the “Counter-Offer”

Earlier I mentioned that the first offer from the prospect sets the floor for negotiations. A counter-offer sets the ceiling. (The offer won’t get higher than this, and there’s nowhere to go but down.) So rather than structure a detailed counter-offer, provide feedback to the prospect about the proposed terms that need adjusting. When done effectively, this feedback keeps the dialogue open and leads to a second offer from the prospect.

Example

Since this type of conversation can be daunting, I talked through the possible dialogue in advance with the client. (If they say X, you respond with Y.) We even did a couple of dry runs so that the TTO representative could practice conveying her position without shutting down negotiations. The result: A revised offer has been received, and negotiations are ongoing.

 

6. Remember: Both Sides Want the Best Deal Possible

Quite frankly, that’s the essence of negotiations, isn’t it? We have found that looking at the various aspects of a deal from different perspectives gives you the whole picture, which empowers you to negotiate more effectively and get the best deal for your organization.

And remember: The person on the other side of the negotiating table is doing the same thing. So don’t assume their first offer is their best offer.

Feel free to contact me to find out more about how Fuentek can help your organization proceed successfully through deal negotiations.

Shark Tank and Beyond: Helping Researchers Pitch to Investors, Licensees, and Partners

Shark Tank and Beyond: Helping Researchers Pitch to Investors, Licensees, and Partners

Shark Tank and Beyond: Helping Researchers Pitch to Investors, Licensees, and Partners

Shark_iStock_000054215058Today you get a sneak peek at a webinar I’ll be moderating to teach technology transfer offices (TTOs) how to coach researchers on speaking with potential collaborators, funders, licensees, and others. These skills also apply when the innovator is launching a startup and talking to venture capitalists (VCs)… even those featured on Shark Tank.

Called “Best Practices for Coaching Researchers on Pitching to Investors, Licensees, and Partners,” this Technology Transfer Tactics webinar will focus on:

  • Why it’s important for TTOs to help innovators with their pitch
  • Examples of how TTOs can work with innovators
  • Tools to use in developing the pitch

This webinar is perfect for TTOs at universities that are looking to increase their deal flow in terms of licenses, partnerships, and startups. That is to say, all universities . Similarly, it’s ideal for government lab TTOs and their counterparts at other research institutions. Even private companies can use the information that will be shared during the webinar.

Zachary Shulman of Cornell University will focus on coaching innovators who are going the entrepreneurial route. What do they need to sell a technology to a VC? Zach will lay out what VCs want — and need — to know from your entrepreneurial researcher.

Laura Fobel will discuss some of the successful inventor-preparation efforts at NASA’s Armstrong Flight Research Center, where she is the TTO chief. Do you have an innovator who rambles, has “loose lips,” or is painfully shy? Laura will give you the techniques to help them be more successful.

Then Fuentek’s Becky Stoughton (who was part of the Fuentek team that trained entrepreneurial researchers in Poland during the past year) will present the tools that researchers need when talking to any audience, including:

  • IP management personnel at your university, lab, or corporation
  • Potential collaborators or other types of partners
  • Potential licensees at large or small companies (if licensing)
  • Potential investors, such as government economic development granting agencies, venture capitalists, angel investors, even friends and family (if forming a company or needing initial startup funds)
  • Potential management team members or employees
  • Potential customers

Wondering how to help researchers outline their pitches? Becky will give TTOs — and the researchers they coach — guidelines for presenting innovations clearly, succinctly, and in a way that resonates with the audience.

Note: A recording of the live webinar is available here.