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SPECIAL FOCUS: Technology Scouting

Scouting programs corral more quality disclosures

This article appeared in the June 2011 issue of Technology Transfer Tactics. Click here for a free sample issue or click here to subscribe.

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University technology transfer offices nationwide have begun to recognize that a proactive posture is the key to success in the new economic and business climate. At some universities, that sea change has resulted in a radical rethinking of the cradle-to-grave model, starting with how TTOs source technologies lurking in their research labs.

Emory University in Atlanta and the University of Minnesota in Minneapolis/St. Paul are among the universities that have abandoned the reactive cradle-to-grave model and implemented formal technology scouting programs to generate both a higher quantity and higher quality of invention disclosures.

University TTOs are increasingly being challenged to be accountable, points out Todd Sherer, PhD, associate vice president for research and director of the Office of Technology Transfer (OTT) at Emory. “Having a scouting program is one more indicator that you are running your office effectively and that the public has the best chance of benefiting when research discovery leads to something commercializable.”

Technology scouting isn’t a new concept, he acknowledges. “For as long as there has been technology transfer at universities, there has been some effort to scout for and find new technologies. But historically technology scouting has been more reactive than proactive because it was another layer of responsibility for licensing professionals.”

A formal scouting program, using dedicated scouts, creates “a robust infrastructure for identifying inventions,” says Sherer. “Faculty often don’t know what is an invention. So part of a technology scout’s job is to talk with researchers about their research, educate them about tech transfer, and find new inventions that can be disclosed to the office.”

A scouting program gives TTOs the ability “to better understand what their faculty are doing so that they can match the faculty and the technology with needs either in the marketplace or from an economic development perspective,” adds John Perchorowicz, PhD, president of the tech transfer consulting firm Triage Masters LLC, based in Tucson, AZ.

Faculty members often have a sort of tunnel vision that keeps them narrowly focused on rounding up grant money and training and teaching students, says Perchorowicz. “Typically they don’t have a lot of time for ‘extracurricular’ activities like technology transfer — at least in the abstract. Once they have something of interest, most faculty members are very engaged in the process. But before that, trying to teach them about the process without a concrete example is often challenging.”

Technology scouts address this challenge by working with faculty members to identify areas of interest for commercialization, says Perchorowicz. “That will engage them in the process far better than general seminars on technology transfer and other less-targeted approaches.”

Yes, it costs money, but …

The obvious disadvantage of a formal scouting program is the additional infrastructure costs, says Sherer. “First and foremost, universities need staff to negotiate licensing deals and a patent budget, but many universities that haven’t had a big hit yet struggle to support the costs for those two activities. So they often don’t want to add on ancillary activities like technology scouting that will require even greater investment in the tech transfer office. Consequently, a plan to create a formal program can be dead on arrival.”

TTOs that take this fiscally conservative approach can become trapped in “a self-fulfilling prophecy,” says Sherer. “It can take several thousand invention disclosures to have one that ends up being a big hit. If you don’t go out and look for inventions from your faculty, then you have decreased your odds that you’re going to find a big-hit technology that generates significant revenue for the university.”

Adopting a formal scouting program requires a philosophical attitude adjustment, agrees Kevin Lei, MS, MBA, CLP, associate director of the Emory OTT, director of the startup-assistance VentureLab Program, and Emory’s technology scout. “Many tech transfer professionals still don’t think that scouting programs are needed. They believe that tech transfer offices, large or small, always have enough to do. The question is: Do you always have enough good things to do? When potential licensees or entrepreneurs come looking to you for technologies, do you have good technologies?”

A paradigm shift is occurring within tech transfer, adds Sherer. “When I got into the business 20 years ago, the technology transfer office’s responsibility began after the inventor disclosed the technology. Now we’ve recognized that inventions are intellectual property assets that belong to the university and ultimately to the public, so we need to be more proactive about identifying and fishing out those inventions instead of putting all the responsibility on the faculty’s shoulders.”

Scouting best practices

Keys to creating an effective scouting program include:

• Don’t go in ill-prepared.

“You can alienate faculty quite quickly if they are not getting the service they want,” says Sue Patow, MBA, MS, a technology marketing manager in the Office for Technology Commercialization (OTC) at the University of Minnesota (UMN). Patow works collaboratively with the scouts, called technology strategy managers, at the UMN OTC. “Make sure you have a well thought-out program. You want it to be a success coming out of the box,” she stresses.

At the same time, TTOs should avoid setting initial expectations too high. “Scouts may not be able to cast a wide net quickly,” says Perchorowicz. “It takes time and effort on the part of the TTO professionals to build their Rolodex and understand what industry is looking for. Technology scouting is a relationship-building exercise just like commercializing technology is. It’s a one-on-one process. The old saw about technology transfer being a contact sport holds true at both ends.”

• Understand that scouting differs from faculty outreach.

Technology scouting “is faculty outreach with a fairly single-minded purpose,” says Sherer. “The single-minded purpose is to get more invention disclosures.”

Faculty outreach often is limited to educating faculty members about the role of the TTO and the invention disclosure process, he explains. “Technology scouting is going out to say, ‘I want to hear about your research. I want to help determine if you have something that you should disclose to my office.’ So technology scouting is focused on finding out what the researchers are doing; faculty outreach is usually oriented toward educating faculty about technology transfer.”

• Get creative developing the program.

A scouting program needs to have “an organizational form,” says Lei. “If you don’t designate specific people to assume responsibility, the program will not work.” However, while the scout needs to be a dedicated staff member, scouting doesn’t have to be a full-time job, notes Sherer. Emory started small, incorporating scouting duties as part of a single FTE.

“Many offices may have the same problem that I did — getting support for a full-time technology scout,” says Sherer. “So it’s important to think strategically about what other faculty-oriented services you can combine with the technology scouting to help sell it.”

The one thing to avoid is having scouts manage a portfolio, he advises. “When I made the case to create the position, I received relatively strong pressure from several different directions to have the scout manage at least a small portfolio of technologies.”

Sherer felt strongly enough to take a stand and argue against it. “Some licensing professionals manage portfolios of 150 to 200 technologies, but even a portfolio of 50 technologies is enough to be full-time work if you want to manage that portfolio on a comprehensive basis,” he says.

Lei’s position incorporates synergistic responsibilities that address additional facets of the faculty advocate role that licensing professionals rarely have time to provide, says Sherer. These include providing start-up development services, as well as helping faculty “obtain translational research support for their invention disclosures,” he explains. “That role is a nice combination with the technology scouting role.”

Report shows scout’s value

• Do what it takes to show value.

Sherer and Lei created a Prelicensing Value Creation Report to demonstrate the value of Lei’s position at Emory. “This monthly report tracked every hour that I spent for about three years,” says Lei. For example, in February 2008, Lei’s 189.5 work hours included 75.25 hours of technology scouting, during which he made 31 new faculty contacts; four hours in ongoing faculty support; 3.25 hours doing public relations/trade shows; 48.25 hours of proof-of-principle development; and 41.25 hours in start-up development.

“I wouldn’t recommend everyone doing this because tracking a person’s time, hour by hour, is a painful job. However, it helped justify my position,” says Lei. “At a certain point, we stopped doing that because the program was effective and nobody questioned the validity of my position.”

• Consider embedding scouts with faculty.

Some larger TTOs embed scouts in various departments, notes Perchorowicz. “The scouts actually have an office in the department, and they spend more time with the faculty than they might if they were in a more remote office where the faculty has to come to them. The University of Minnesota and the University of Arizona in Tucson practice that model. These scouts work closely not only with the faculty to commercialize technology, but also with development officers to bring in research funding and identify opportunities for professors from that perspective.”

Assignments at the University of Minnesota are based on the strengths of the university, says Patow. For example, strategy managers have been placed at the UMN Academic Health Center, which includes the Medical School, the College of Veterinary Medicine, and the College of Pharmacy; the Swenson College of Science and Engineering; and the Department of Computer Science and Engineering.

• Hire scouts with the appropriate skill set.

Not everyone makes a good technology scout. “Having the right skill set and the right personality to work with the inventors is crucial,” says Patow. Strategy managers at the UMN OTC typically have PhDs in the specific discipline of the department where they are embedded. “Many of them have worked in industry, so they understand what industry is looking for,” adds Patow. “In addition, they all have been at the bench as post-docs. So they understand the stresses involved, and they know that there are good days and bad days in research.”

Some models work well using junior staff as scouts, acknowledges Sherer. However, the Emory model depends on senior-level staffing. “One benefit is that senior staff have that much more respect and recognition from the faculty,” he notes. “Often you have to push on your faculty to get an invention disclosed. Faculty usually respond better to senior staff members than they do to new hires straight out of a graduate program.”

In addition, senior licensing professionals “understand the technology commercialization process and all aspects of technology transfer, so they often can answer inventor questions that junior or entry-level scouts won’t be able to answer,” says Lei.

• Give scouts formal and informal tasks.

Successfully working with faculty members involves both formal and informal tasks for strategy managers at UMN, says Patow. “It’s a combination. The more you do, the more interest you get.”

The formal activities include meeting and orienting newly hired faculty; attending department and lab meetings, as well as faculty/graduate student symposia; working with SPA (the university’s system-wide grant office) to monitor grant submissions; keeping office hours in the department; promoting faculty on the UMN website and in marketing materials; keeping the dean or department head in the loop; organizing recognition ceremonies for inventors; monitoring stage-gate development milestones and patent prosecutions; and holding educational programs for faculty inventors on patentability requirements and keys to forming start-up companies.

“Attending department and lab meetings makes a big difference,” says Patow. “The faculty members get to know who you are, and you get to understand their science a little better, which is important when you talk to them about their invention. That kind of attention demonstrates that you’re in there to help them.”

Informal activities run the gamut as well, says Patow. They can include faculty lunches to exchange ideas, helping faculty identify partnering opportunities through industry contacts and innovation grants, match-making between departments to break down silos and promote collaboration, and simply “walking the halls and labs to learn what’s happening on the ground.”

Measure scouting effectiveness

• Develop metrics for success.

TTOs should compile metrics that reinforce the importance of scouting and encourage appropriate behaviors in scouts, says Sherer. The sticking point in developing an incentive plan is that “how to measure the success of a scouting program is a question mark for everyone,” says Lei. “No standard measures of success are available.”

Currently, the Emory OTT tracks every meeting Lei has, putting an asterisk beside faculty members who have not interacted with the office in the last three years. “If they haven’t interacted with us in the last three years, we consider those new faculty contacts because our experience is that faculty don’t remember what we do for very long,” Sherer points out. “We track the number of those meetings, and we compare them to prior years so that we can develop a target.”

Emory’s incentive plan also uses “the absolute number of invention disclosures” as a key measure, says Lei. “We are also considering such measures as revenue-generating disclosures or high net-worth disclosures, which we define as technologies that generate $1 million or more,” he notes.

The UMN OTC annually sets individual and office-wide goals/metrics for the strategy managers and marketing managers. Incentives are based on attaining both types of goals, says Patow. The annual office metrics include faculty visits; interactions; the number of invention disclosures; turn-around time for review and disposition; over 75% reviewed within three months of disclosure; and faculty satisfaction (assessed by third-party survey).

“Clearly, faculty satisfaction is a big issue, and it is a metric that we take seriously. At the end of the day, the faculty members are one of our customers,” says Patow.

Contact Patow at 612-624-6554 or patow001@umn.edu; Perchorowicz at 520-904-1111 or jtp@perchorowicz.com; Lei at 404-727-7241 or klei@emory.edu; via his assistant Connie Newsome at 404-727-2514 or cmnewso@emory.edu. 


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