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How universities can focus their patenting on technologies with the highest potential

By David Schwartz
Published: August 10th, 2016

In their recent article for Times Higher Education, Bruno Reynolds and Ben Oakley of Oxford University’s commercialization arm Isis Enterprise address a common dilemma at tech transfer offices: whether to kill or pursue patent applications for technologies with unknown commercial potential.

According to data from the Association of University Technology Managers (AUTM), the U.S. tech transfer industry generates over $2.7 billion each year in licensing revenue. However, Reynolds and Oakley point out, only half a percent of all currently active licenses generate more than $1 million a year.

“There is clearly work to be done in building a logical, data-driven best practice into the everyday kill/keep decisions of university patent portfolio management,” say the authors. “There is also a need to keep sight of the additional factors that have to be considered by TTOs in their decision-making processes, such as delivering impact … and promoting entrepreneurship.”

A team of tech transfer executives at Columbia University recently published a study examining patent prosecution practices and outcomes from 25 major research institutions. The study finds that only between five and 20 percent of university patents are ever licensed.

“This is partly because university patents are often filed to protect truly cutting-edge areas,” write Reynolds and Oakley, such as machine learning and regenerative medicine. The Columbia study calls these patents “hammers waiting for a nail to appear.” But the schools mentioned in the study typically have more tech transfer funding than UK universities, which often have to focus patenting on only the most promising technologies. Here are Reynolds and Oakley’s tips for developing a strategy that favors patents with the highest commercial potential.

  1. Integrated decision-making processes. Seek to license a university technology out to organizations that own related prior art; these parties have already demonstrated a vested interest in your innovation, and therefore make more promising potential licensing partners.
  2. Portfolio analysis. Organizing your patent portfolio by academic department helps the TTO target resources to prevent opportunities from slipping through the cracks. In addition, sorting out the projects that have stalled or hit difficulties allows resources and budgets to be managed more effectively.
  3. Decide quickly. It’s important to collect market feedback early on, and to establish a policy of only going forward with strong opportunities. “It allows resources to be concentrated on stronger possibilities and avoids wasting the time of academics and TTO staff,” the authors say.

Source: Times Higher Education

Posted under: Tech Transfer e-News

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