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TTO leaders have diverse opinions on ‘right’ case load for licensing staff

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Is there an appropriate number of new disclosures TTO managers should assign to members of their licensing staff each year? Some observers say that AUTM statistics indicate the proper range is between 20 and 26 per year, while authors have also cited 25 as a sensible target. But while many individuals contacted by TTT agree that as a target the number 25 makes sense, they still expect a wide range of performance and cases handled among their licensing managers for a number of reasons. In fact those variables, ranging from how the department is organized to the amount of support the TTO receives from other areas of the university, led others to say it’s virtually impossible to arrive at a target number that has any real meaning.

“Our goal of 25 or 26 has been pretty consistent,” says Alan Bentley, MS, assistant vice chancellor and head of the Center for Technology Transfer & Commercialization at Vanderbilt University. “I tell people that licensing professionals can handle around two new inventions a month plus their additional portfolio, which we assume is hundreds. In AUTM statistics, if you take the number of licensing FTEs in the database and divide it into the number of technologies disclosed for all respondents you get 22-25 year over year. Our personal model jibes very well with the overall basic AUTM statistics, but I’m willing to say this would not work at some other universities.”

“While we are pretty systematic in tracking metrics on a weekly basis for what tech managers do in the number of disclosures, filings, license options and other agreements, start-up companies, new revenue brought in, total patent expenses, and patent reimbursements, I cannot say that we have a specific metric that says if you have achieved this number you have under- or over-performed,” says Lesley Millar-Nicholson, director of the Office of Technology Management (OTM) at the University of Illinois at Urbana-Champaign. While I generally accept that it’s between 25 and 30 on average, I would be remiss given the nature of the business we’re in to simply allocate that number.”

“We’ve not operated with a target number, although what they say is probably about right,” adds Erik Halvorsen, PhD, senior director, Tufts University Office for Technology Transfer and Industry Collaboration. “We have four licensing professionals with 80 this year, which is right on target. But what you have to go into is overall case load; two a month is reasonable for new disclosures, but if you have a backlog of hundreds of active innovations you’ll need to focus on marketing, and that kind of tips the balance.”

“I think [around 25] is a reasonable range,” says Brian Wright, PhD, associate director for commercialization, Office of Technology Transfer, Auburn University. “I’ve been here 12 years; we’ve had fluctuations in staff and case load, and when we go above that number we have trouble doing it right. We become a ‘patent factory,’ file more patents than we should, and do not evaluate innovations properly.”

But Dan Sharp, OTC director and associate vice president for research at UT Austin, says, “We do it a little differently. You just don’t have that kind of control. We have licensing specialists as a general matter in a particular field, and when we receive disclosures they are assigned to the appropriate licensing specialist.” Certain deals, he notes, are “extraordinarily involved,” and individuals with such deals might have a smaller case load than their colleagues. “And if they say ‘I just say can’t get to this right now,’ we may assign it to someone else,” Sharp adds. He reports that in the last fiscal year there were 205 disclosures assigned to seven people.

“We may do things more dynamically,” he continues. “Maybe we’re old school — suck it up and do the work. We place an incredible emphasis on being responsive and service driven to the faculty. If we get an e-mail, we want it returned that day, or at least within two days. At the moment we also have seven interns.”

And Brendan Rauw, president and CEO, Westwood Technology Transfer and associate vice chancellor and executive director of entrepreneurship at the UCLA Office of Intellectual Property & Industry Sponsored Research, notes that “we don’t manage to a target, but I will say the target of 25 per year is about half of what we are doing. We bring in about 50 disclosures per license officer per year. Our team is doing an excellent job; it takes a lot of work to manage that load, but I don’t think it’s unmanageable.”

A wide range

“Even within an office where our 10 licensing officers manage faculty members from similar fields, have similar administrative and operational support, and have similar objectives, the numbers vary widely,” adds Orin Herskowitz, executive director and vice president of intellectual property and technology transfer at Columbia Technology Ventures. “For our most recent full fiscal year, licensing officers managed anywhere from 27 to 60 new invention submissions, with a median of approximately 40. At the same time, these licensing officers manage anywhere from 95 to 245 active U.S. patent families, with a median of 140. These are very large numbers, only possible because of the significant investments Columbia has made in providing a substantial support system for patent prosecution, financial management, compliance and risk, contract support, etc.”

Lisa J. Kuuttila, CEO and chief economic development officer at STC.UNM for the University of New Mexico, agrees that pegging productivity to a specific number can’t account for differences across TTOs. “It’s difficult; for example, while we have innovation managers that have portfolios, they not do everything — they have a lot of people helping them,” she says. “One does marketing, one helps with new ventures, and that takes a big chunk out of their responsibilities. We have student interns that do prior art searches and decisions about filing provisional patents. But different offices have different styles; some have case managers that often draft their own agreements. Our case managers work mainly on the deal-making side, so they can do a lot more.”

“You need to distinguish between new cases, licensed cases, older unlicensed cases, and so on,” adds Lita Nelson, director of biotechnology licensing at MIT. “Also, in order to keep from mixing apples and oranges, you need to specify how much of the ‘life of a case’ is managed by the TTO case manager. Does she manage securing patents, marketing, drafting agreements, negotiating agreements, managing of completed licenses, sponsored research agreement negotiations, sponsor compliance, MTAs, etc.? Our TL Officers, with TL Associates’ help, do all of these functions with the exception of compliance reporting, patent docketing, MTAs, and do only the IP negotiation of non-government research agreements. Other offices have separate marketing, drafting, or patent management departments. So, the devil is in the details.”

At MIT, she continues, “we have 12 TL Officers assisted by five TL Associates, two people to handle MTAs (several hundred per year) and two people to handle compliance reporting (government and other). With this staff, the department gets about 700 new invention disclosures per year and does about 100 licenses/options per year.”

Also of the belief that the target of 25 may be too low is Todd Sherer, PhD, CLP, RTTP, associate vice president of research administration and executive director of the Office of Technology Transfer at Emory University. “Way back in the day I seem to recall that carrying around 25 per person seemed pretty ideal, but I’m not sure you can expect a TTO to be capitalized heavily enough to get down to that number now,” says Sherer. “It might be very reasonable to get the total case load down to 150 technologies; if you get portfolios down to that you can get the licensing team to be more proactive, not reactive. If they carry 400 or so they become reactive and you may need more money in the patent budget.”

It’s not that he disagrees with the goal of that number as much as he does with its relevance. “What’s the relevance of new disclosures if the portfolios are different?” he poses.

“At one point we were between 150 and 175, and now we’re back up to close to 300 technologies,” Sherer reports, and “adding staff is just short of off the table.” In 2004, he recalls, he was able to go from a staff of eight to about 14 or 15. “That’s what allowed us for a few years to reduce case load,” he notes.

We’ve not come up with the right number of inventions per person, but currently our folks handle around 300 per licensing case manager — who also has an assistant,” says Katherine Ku, director of the Office of Technology Licensing at Stanford University. “We don’t have a target, but we are thinking that we should have fewer cases and we are working to reduce the load by dropping more cases, and not filing as much.”

Kuuttila adds that the common workloads at universities have evolved over the years. “I’ve been in this field since 1982 and I think the model back in ‘80s was more cradle to grave, where case managers did everything,” she recalls. “I think back then the total portfolio of about 100 inventions was the right one, but it has gone up over the years — probably in part because most offices have evolved so that other staff have taken on pieces of that responsibility. I know it’s not uncommon for case managers to have portfolios of 400, talking to my colleagues, but I do not know how they’re structured.”

Ku believes her office is staffed properly at the current rate of 130 new cases per year. “We file provisional patents on 90%; 50 are being added to the portfolio and we have two case managers,” she explains. “But with deal flow we do 50 or 60 a year moving into the licensing category and release some back to the university. I think we are at a very workable staffing level.”

Apples and oranges

Several observers have indicated that it’s difficult to establish a target number because there is such a variety of structures and staffing among TTOs. Beyond that, they note, all cases are not created equal. “I was in charge of a portfolio of 242 open cases, including ones that were licensed,” says Wright. “Sometimes they require a lot of work, and sometimes they don’t. For example, about 50 have matured, and are up on the website, while others are unlicensed and active to some degree.”

Herskowitz agrees. “Some projects will require years of active management to incubate the technology, whereas others are relatively close to commercialization,” he notes. “Sometimes there might be five to 10 dockets that would by necessity be marketed and licensed together as a bundle, whereas others are standalones. Some inventions will require negotiating complex, custom-crafted exclusive licenses to start-ups, whereas others may be commercialized via relatively standardized licenses to research reagent companies. So identifying the ‘right’ number per licensing officer isn’t a straightforward answer.”

“If you are a cradle to grave office it is so complex, and management of that requires so many different interactions,” says Millar-Nicholson. “For example, if a new person comes in, it’s highly unlikely they’ll get 25 new disclosures as they get up to speed.”

While she has expectations of total disclosures handled in the office between tech managers, she continues, it still varies individually according to the portfolio each manager has in place. “If someone has a very startup-centric portfolio and they work alone, I’d not be at all surprised if they actually re-allocate disclosures gone to them,” she says.

So, while she has seven tech managers (she’d like more) and over the last four years they may have averaged 25-26 disclosures each, “at various times someone may have had fewer than seven, but it could go up to 30,” Millar-Nicholson observes. “I don’t know what the average life of a tech manager is these days, but portfolios are in the hundreds,” she adds.

The bottom line, she says, is that “I get really worried by single metrics out of context. For example, some of my managers also have administration responsibilities plus their portfolio, so there are supervisory responsibilities. I’d be remiss to compare one without these [extra duties] to someone who has them. This is why I do not just get drawn like a magnet to one number.”

Another major factor in case load is the technology area of the cases, stresses Rauw. “For example, engineering tends to be more efficient in generating disclosures, so if you look at AUTM statistics Cal Tech and MIT are impressive. The way I tend to look at it is in terms of research funding and productivity.”

In short, he says, you really have to look at the portfolio closely to assess an appropriate case load. “You may get a lot of cases, but you may close them out really quickly, or the technology may not be ready yet so you may put it aside,” he points out. “It’s the active case load that’s more meaningful in terms of management workload. Also, the context matters — whether or not it’s licensed, part of a broader portfolio, how actively it’s being marketed. Someone with a smaller case load can actually have more work. Some inventions are harder to license; some people spend more time on marketing, others on deals. But while there’s not a hard and fast number, I have noticed that if the active caseload starts to exceed 300 cases, it becomes very difficult to manage.”

“There are clearly different ways to characterize cases on the docket,” says Halvorsen. “I separate out those that are already licensed or inactive. They’re still assigned, but they are what they are. Licensed cases can be active, with a certain amount of follow up with licensees, but that’s relatively low. Then, I look at everything else, which hopefully requires a high level of activity.”

Of course, he adds, “If a new person comes in, if they don’t get existing portfolios they should be working at a much higher volume.”

In terms of TTOs as a whole, says Halvorsen, “Some offices have specific people involved in initial triage, some use interns. Also, some just have licensing professionals who do everything, while others have specialization around marketing or patenting or contracting or business development.”

Expanding productivity

One factor nearly all observers agreed on was the fact that with reduced resources, it is more important than ever to improve workload management and productivity in order to maximize the number of cases their staffs are able to handle.

 “You can use these metrics as a way to get more staffing to show you are understaffed, and then to get more people to remove the bottleneck,” Wright comments. “In addition, we leverage our intern program for prior art, market evaluation, identifying target companies — the early stuff. Also, what a lot schools do to manage older cases is to try to package them in some way to make them more efficient, or for high volume, using click-through licenses. This helps move or close out a lot of your cases to help reduce overall case load.”

Self-policing is important, he continues. “If staff are overwhelmed they do not have time to hunt for new disclosures — and that’s not a positive thing,” says Wright. “You have to be careful there, because you will probably miss out of on disclosures you should be getting.”

“One area we’ve prioritized to help increase outreach and disclosure rate is to improve operational support available,” adds Rauw. “We have a patent prosecution group; our licensing support group helps with disclosure intake to filing, getting agreements aligned, and processing CDAs. Those support functions are critical to enable us to focus on new technologies and faculty.”

Halvorsen agrees. “If your office can sustain some specialized personnel to help with processing that’s a good step,” he says. “All of us are better at certain things, and I’ve found a more efficient and effective way to run an office is to create specialized roles.” In his experience, such roles have included a director of contracting — an attorney who handled all drafting of licenses and worked closely with the licensing staff. “With specific subject matter experts turnaround time is much better,” he adds. “The same thing with marketing — having dedicated marketing professionals who generate marketing material and leads means you don’t have to rely on the licensing person getting to it when they can. Raising the level of marketing also makes the office more effective.”

“I was asked to address this when I got here,” recalls Sherer. “One of the first things we did was hire an MTA person. That not only took MTAs off the desks of licensing managers but it clarified expectations for their performance. We also took compliance off their desks — like government reporting; someone else does that. Another thing offices have done is to [delegate] start-up support — like a dedicated start-up guy. Then there’s legal invoicing — like expenses associated with patents. Another function was post-license monitoring and marketing. When you have people running 300 cases, do you really wonder why they’re not doing a better job of marketing?”

“One thing we do is have a very strong intern program,” Millar-Nicholson notes. “They usually do customary screening and evaluation, and we also have patent fellow assistants. We have four marketing and communication interns, who put together some material that otherwise would be with tech managers. We also work really closely with other parts of the innovation ecosystem, like the incubator. We have a VC department; we take something as far as we can but then we introduce it to them.”

Sharp says he regularly reviews the work balance in tech transfer efforts. “We do year-end performance reviews,” he says. “If for whatever reason one particular college generates a whole lot of disclosures and someone has doubled disclosures this particular year, we may not notice it in real time, but performance reviews take a deeper look. That’s when we can say this person really needs to step up, because they’re not that productive. Or maybe one person knocked it out of the park; they had an incredible number of disclosures and still did well.” Sometimes, he continues, such results will lead to a shift of technologies from one associate to another.

Vanderbilt takes another approach. “We look at balancing workload across all professionals; if someone gets around 45 cases and another 15 that is not efficient,” Bentley asserts. “In terms of incentives, we definitely have those for deal flow and revenues. That helps them make better decisions — if a technology is evaluated and does not have the potential, they are more likely to close it down so they keep enough bandwidth to efficiently commercialize those that show more promise. At universities it is generally difficult to close cases down, but if some are closed and off the docket your staff can spend more attention where it is needed. If offices do not have the ability to hire more people, then they have to take action to cull out 50 inventions down to 25. You have to have more harsh, discerning triage activity.”

Contact Bentley at 615-343-2430 or alan.bentley@vanderbilt.edu; Halvorsen at 617-636-0360 or erik.halvorsen@tufts.edu; Herskowitz at 212-854-1242 or Orin.Herskowitz@columbia.edu; Kuuttila at 505-272-7905 or kuuttila@stc.unm.edu; Millar-Nicholson at 217-333-6807 or millar@illinois.edu; Nelson at 617-253-6966 or lita@mit.edu; Rauw at 310-794-0558 or brendan.rauw@research.ucla.edu; Sharp at 512-471-4738 or dsharp@otc.utexas.edu; Sherer at 404-727-5550 or ttshere@emory.edu; and Wright at 334-844-7962 or wrighb3@auburn.edu.


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