When You Know the Answer, Stop Asking: Stories from the Field

When You Know the Answer, Stop Asking: Stories from the Field

When You Know the Answer, Stop Asking: Stories from the Field

U turnAs you ramp up for technology marketing, it’s important to keep an open mind—and open ears. I say “ears” because Fuentek interviews industry experts to gain extremely valuable market information that guides decisions about how, where, and when—or even whether—to begin marketing the technology. Listening carefully to what industry experts have to say about the market’s needs with respect to the technology lets you know which action is most appropriate. And in some cases, this means not merely holding off on marketing but actually stopping the assessment early. Let’s take a look at a real-world example.

As we assessed a client’s technology that was useful for high-precision manufacturing applications, we were looking for marketplace feedback on two key questions:

1. Was the technology mature enough for industry to seriously consider it or did it need to be further along the development life-cycle?

2. Did the innovation meet the market’s key requirements for adopting it, especially considering the expense of replacing existing equipment, implementing new processes, training, etc.?

The second question is particularly important. It isn’t enough for an innovation to advance the state of the art from a scientific or engineering perspective. To be attractive for potential licensing, the technology needs to be valuable enough that industry would abandon the current approach in favor of the new approach.

In this case, a prototype had been developed and tested for one potential application, but a second application in a different industry emerged as a significantly larger opportunity. During interviews with just a few experts, we quickly realized that the second market would require further development and testing of the innovation before the players would willing to convert to it.

This early information yielded a clear recommendation: Rather than press on with marketing, we advised the client to conduct further R&D for the second, larger opportunity. This not only saved time but also allowed our client to redirect the savings into marketing for other technologies.

The key take-away from this situation: Once the market expectations and needs are clear, accept that you have your answer. Gather enough information to make sound decisions without wasting time and resources gathering more data than is needed. In the process, you’ll free up resources that can be used to better manage the rest of your technology portfolio. This is a key part of what we do at Fuentek and it has paid off for our clients.

If you would like Fuentek’s help in gathering market information to map out the technology commercialization path, contact us today.

Clearing Out an IP Portfolio Backlog Gets Faculty on Your Side: A Case Study

Clearing Out an IP Portfolio Backlog Gets Faculty on Your Side: A Case Study

Clearing Out an IP Portfolio Backlog Gets Faculty on Your Side: A Case Study

Faculty Support - Before and AfterA conversation on one of the AUTM® discussion groups a bit ago focused on formalizing a technology transfer office’s (TTO’s) triage process. The director initiating the discussion was contemplating using interns for technology triage because his resources are limited. He also wanted his licensing project managers to remain focused on getting deals executed. Overall, his plan was to start providing feedback on inventions in a standardized format and within a certain timeframe. And part of the goal was to improve relations and build credibility with faculty.

All of this sent me down memory lane!

When Fuentek started working with a university TTO many years ago, the faculty were almost in revolt. Their opinion of the office was not particularly high, which was understandable. A backlog of hundreds of invention disclosures had not been acted on or even evaluated for their commercial potential.

As part of the effort to clear out the backlog in the intellectual property (IP) portfolio, Fuentek helped the TTO establish an internship program.

Here’s what happened.

 

Hiring Interns for a Summer Start

We helped the TTO get the interns hired to start at the beginning of the summer. Interns were full-time staff for several months, which meant they were still efficient during the school year despite other distractions.

We also selected students with technical backgrounds that matched the institution’s technology portfolio. (Having a business student without a technical background trying to understand an assay is not a good way to go.)

 

Paying Cash, Not Credit

Interns were paid an hourly wage, and this pay structure worked very well. My observations of “class projects” have shown them to be a pretty bad arrangement.

  • You only get the students for one semester, so you are wasting a lot of time training them for only a few months of productivity.
  • Partial credit is not enough to get a real commitment from them, and you are likely to be their lowest priority.
  • If they are doing it as part of a business plan class, they will have a vested interest in the outcome and that will taint the triage process.

Put simply: I do not advise setting up a TTO intern program that relies on course credit. You get what you pay for.

 

A Well-Defined Technology Screening Process

We used a formal and well-defined technology screening process. This is essential if you are going to have students perform the tech triage for you. Remember: The students will not be with you very long or for very many hours a week.

Our structured process resulted in a high level of consistency. It also allowed us to monitor quality without having to do a lot of retraining.

One detail I mentioned in the AUTM discussion group: Less is more. Doing 40 check-boxes to rate the technology in various categories will not change the final disposition decision. But it will add a lot of time and frustration.

 

Training and Mentoring the Interns

We did extensive training and mentoring of the interns. As a result, the interns became independent, efficient, and effective with the screening process. We’ve blogged quite a bit about training and mentoring interns. These insights are collected here.

 

Clearing Out the Backlog

Four 4-intern teams cranked out a couple of screenings per day. This unusually high rate is tied to the fact that we had a consultant working with the interns full time.

For TTOs who do not have the resources to duplicate that arrangement, expect interns to take 15 to 20 hours to do a screening. (They don’t have the expertise or experience, so they need to do more homework.)

Depending on how many hours/week you have them in your office, interns will probably take 2 to 4 weeks to do one report. If you have them in a summer internship first, you can reduce this time and really improve their efficiency.

 

Keeping the Experts Involved

After interns did the legwork for the screen/triage, the pros reviewed their findings. In this case, Fuentek consultants always reviewed/approved the interns’ reports and outcomes.

The TTO’s tech managers then used the reports to make their final disposition decisions. In most cases, the tech managers need to review and approve the reports before they can be used in discussions with innovators (see below).

 

Transparency with Inventors

Tech managers discussed each screening’s findings and disposition decision with the inventor. This was time-consuming but essential for building positive relationships with faculty.

We explained our well-defined screening process to the faculty. And the structured reports provided a consistent product that explained to faculty the market potential (or lack thereof), which mitigated complaints.

Caveat: If your triage process includes calling experts and potential licensees (i.e., primary research), exclude these details — especially their contact information — from the report given to the inventor. There are a bunch of reasons for this, but the main one is that you do not want the inventor contacting a potential licensee. This risks disrupting your negotiations or damaging the relationship if the inventor challenges them on their specific comments. (At Fuentek, we save the primary research effort for when we ramp up for technology marketing.)

 

The Results

It was amazing how quickly the faculty came around after we gave them their reports, explaining our process and criteria. Once they got it, they became supportive. We had a larger communications strategy at work as well, but the screening/triage reports were key.

We had started the project in May, and by late winter the faculty were backing the TTO. Pretty cool, no?

We have more insights about using interns for technology screenings, including our white paper “Developing an Effective Internship Program for Your University’s Technology Transfer Office.” Or contact us to discuss how Fuentek can help your TTO establish an effective intern program.

Reaping Long-Term Rewards from Strategic IP Portfolio Optimization: Stories from the Field

Reaping Long-Term Rewards from Strategic IP Portfolio Optimization: Stories from the Field

Reaping Long-Term Rewards from Strategic IP Portfolio Optimization: Stories from the Field

Buckyball Molecular ModelPrioritizing an intellectual property (IP) portfolio is an important, and often huge, task for tech transfer offices (TTOs). In today’s post, I share details of how an effective IP Portfolio Optimization helped a university do more than just prioritize its IP for future technology transfer and marketing efforts.

A 30-Tech Nano Portfolio

A major research university approached Fuentek about screening a group of 30 technologies in the nanotechnology sector. Our “FIT Review” process for screenings provides an objective rating of the technology’s commercial potential, based on the analysis of data on the market need and IP landscape. This separates the wheat from the chaff and identifies those technologies with the highest commercialization potential.

Achieving Efficiencies through Clustering

The interesting part of this story is that our screening revealed more than just those few top technologies where marketing resources should be focused.

Because Fuentek always seeks to provide our clients with the best value, we identified opportunities to cluster some of the technologies into groups for efficiency in ramping up to marketing. These were technologies that had originally been developed for disparate applications and initially seemed unrelated. But Fuentek recognized that they likely would be of interest to the same target companies and therefore should be grouped together.

Positive Results

This strategic approach to technology screening did more than simply point out where to focus or abandon technology transfer efforts to achieve efficient resource allocation:

  • Clustering enabled technologies that were rated lower in terms of commercialization potential to be combined with higher rated ones and assessed/marketed as a group rather than individually, adding depth and credibility to our client’s technology offerings.
  • As an added bonus, our screening reports helped university innovators make market-based decisions regarding funding of technology R&D, ensuring a better match-up with the market.
  • The screening process also identified a couple of areas where the market had moved beyond the university’s technology, so funding to these programs was cut and reallocated to more promising research.

As a result of these outcomes, several key decision makers in the university gained an understanding of the value of proactive technology transfer through strategic IP Portfolio Optimization, yielding greater support for technology transfer activities.

The Lesson

Taking a strategic approach to IP Portfolio Optimization has long-term value beyond the near-term help with prioritizing technology transfer activities.

If you find that your TTO’s tech managers don’t have enough time to proactively identify the high-priority techs, then consider tapping into Fuentek’s services so they can focus on negotiating deals. Contact us today to discuss how Fuentek can provide the help needed to keep your deal pipeline filled.

Insights for Intern Training and Mentoring: Stories From the Field

Insights for Intern Training and Mentoring: Stories From the Field

Insights for Intern Training and Mentoring: Stories From the Field

We are gearing up for Fuentek’s webinar designed to help TTOs put their interns to work on technology screenings. So, we’re taking stock of our own lessons learned from tech transfer intern programs.

This Story from the Field is based on Fuentek’s real-world experience with training tech transfer interns at a major research university.

 

What Happened

The tech transfer office hired interns to begin work at the start of the fall semester. Kick-off training sessions were held in late August and early September, before academic classes ramped up. These sessions provided an overview of the tech transfer process. They also gave basic information about the stages of intellectual property (IP) management.

Fuentek then provided an in-depth series of webinars over 4 weeks on how to conduct an effective technology screening. These training sessions gave interns:

  • An overview of why screening is critical and where it fits into the IP management process
  • Extensive details about how to perform each step of the screening process
  • Real examples of effective screenings
  • Time for discussion and Q&A

Following this in-depth training, each intern was assigned a technology to screen. We also assigned a Fuentek mentor to provide guidance throughout each of the screening steps. Our mentors helped the interns:

  • Ensure they understood the technology fully
  • Brainstorm effective keywords to conduct market research
  • Consider other aspects of the market that they may have overlook, which often affected the rating or recommendation for the technology
  • Develop a clear list of next steps based on the recommendation
  • Write their findings as clearly as possible

After this critical hands-on part of the process, each intern continued to conduct screenings independently. Early on, the Fuentek mentors reviewed each of the completed reports as a quality assurance step. Mentors provided feedback for changes or improvements as well as any needed follow-up discussion.

 

What We Learned

Our experience showed that it was very helpful to provide nuanced guidance over time:

  • When interns are first learning, have them focus on the key elements of screenings.
  • As they become more familiar with the process, interns can focus on the more subtle but very important aspects that help them put together an effective rating and recommendation that is valuable for the TTO.

We also found that the progression from in-depth training to hands-on mentoring to more independent work with follow-up reviews let interns benefit from feedback during or immediately following each screening. This allowed them to quickly adopt improved techniques and gain additional confidence for each subsequent screening.

Fuentek and our university client saw clear improvement in the interns’ work over the course of this process.

Our training also highlighted the value of providing guidance on more than one screening. Advising interns on variety of screening assignments helped them develop their skills more fully. They could then effectively navigate the evaluation factors as they began to work more independently.

 

Are you getting ready for your summer interns to arrive on the scene? Fuentek can help you benefit from these lessons learned and many more. We have a webinar recording that will help your interns hit the ground running with technology screenings.

And if you are thinking about launching a new intern program, check out our white paper on setting up an effective internship program. Or get in touch with us to see how we might be able to help you get started!

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Insights for Intern Training and Mentoring: Stories From the Field

Lessons from Royalty Negotiations: 3 Stories from the Field

Lessons from Royalty Negotiations: 3 Stories from the Field

Stories From The FieldNegotiating royalties is challenging under the best of circumstances. In this post, I outline several real-world examples of successes, near-failures, and collapsed deals.

 

Example 1: David versus Goliath

Several innovators (we’ll call them the Davids) from a corporate giant (Goliath) formed a startup company and attempted to negotiate a license deal to acquire the rights to the technology that they developed while at Goliath. Goliath had no current use for (and no intentions to use) the technology.

The Davids asked Fuentek to assist them in their negotiations. During our initial call with the Davids, they indicated that they planned to offer Goliath a whopping 60% royalty rate. “Why so high?!” we asked. It turned out the Davids were paralyzed with fear that Goliath would shut them out. Without the technology, they had no business.

We pointed out that having a 60% royalty rate would also mean they wouldn’t have a business. “Run the numbers,” we recommended. After doing some financial analysis, the Davids realized that we were right.

Solution: A Rising Royalty Rate

To be successful, they had to not only get a license, but do so at a more reasonable rate. We were able to help them negotiate a license that started out at 5% and ramped to 10% over time. Working from a position of strength—based on the merits of their business plan rather than a position of fear—the Davids were able to negotiate successfully.

The deal was a huge win for both parties involved. The Davids successfully built their company and sold it a few years later in a multi-million-dollar sale.

Lesson Learned

Put fear and emotions aside and examine the economics of the deal.

 

Example #2: Sometimes a Bird in the Hand Really Is Worth Two in the Bush

This next one is a deal that on the surface first appeared to be a “give away.” Our client was approached by a company for a single-use, internal-use-only technology license. We estimated the value of the technology to the prospect at $100K in cost savings. But the prospect had offered only about $10K for the license.

At first glance, this seemed like a poor offer that fell well short of the true value of the technology.

However…

The innovation was a method for improved manufacturing. Any infringement would be virtually impossible to detect. The licensor (our client) believed that if they rejected the offer, the prospect would use the technology anyway. And the licensor would have great difficulty enforcing their patent.

Based on this logic and our royalty negotiation discussions, the client decided to take what they could get, and accepted the offer as is.

Lesson Learned

When evaluating a deal, always question what the outcome would be if you don’t go through with the deal. Sometimes withdrawing from the deal may be more expensive than taking a low offer.

 

Example #3: Blinded by Greed

The licensing manager from a Fortune 100 company called Fuentek to tout a deal that he had just signed. Several internal innovators had formed a startup and licensed their technology—and the licensing manager was thrilled to have negotiated an up-front payment of $1 million, payable in three installments over the first year.

This scenario was quite similar to one faced by our earlier Davids, as they attempted to negotiate with a Goliath. But this time around, Goliath had won the first round of negotiations.

Although we hated to burst the licensing manager’s bubble, we predicted that the innovators would be back to renegotiate the license before the second installment was due. “Cash is king in a startup,” we said. Such a large up-front payment created a heavy burden that would drain the startup’s coffers. The liability also would prevent the startup from getting additional funding from other investors.

The licensing manager brushed our comments aside and insisted the deal was a good one.

As We Expected…

The innovators returned several months later with a request to renegotiate the deal. Fortunately for everyone involved, Goliath was more reasonable this time around, and we helped the group develop a win-win deal.

Lesson Learned

Look at all of the implications of a deal—both for the licensor and licensee. To be successful, a deal has to make good business sense for both parties. A good deal is one that works for everyone.

 

Fuentek has been helping clients negotiate win-win licensing deals since our founding in 2001. Let us help your company or technology transfer office get the best deal. Contact us today.