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Emory’s multi-stage triage process ensures all technologies get equal consideration

This article appeared in the July 2013 issue of Technology Transfer Tactics. Click here for a free sample issue or click here to subscribe.

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While triage processes are designed to optimize the potential for commercializing new technologies, a new multi-stage process at Emory University has a second — and equally important — goal. “This is really a way for us to provide more consistency to faculty as well as other internal stakeholders — to show them we treat each technology with the same level of diligence and to be able to provide them some written feedback that allows them to understand how we do our analysis,” explains Susanne Hollinger, director of license and patent strategy.

Emory’s conversion to a new triage model began about two years ago, and by the fall of 2011 100% of the university’s technologies were covered. The model was developed by a team led by marketing associate Lisa L. Matragrano. “The process we have in place is a step-wise yes/no process,” Matragrano tells TTT. (Scroll down for a template outlining the process.)

Three triage stages

Chronologically, the process is divided into three steps – Triage 1, Triage 2, and Triage 3, Matragrano explains. “We try to complete Triage 1 within three months of disclosure,” she says. “It not only includes a written component, but we then discuss the document and the technology in weekly meetings.” Included are technical summaries, IP (prior art), and the market (in fairly broad terms — major competitors, market size, and potential targets.)

“The written document gets shared with faculty members in order to provide feedback,” Hollinger adds. “For example, sometimes the disclosure is not written in a way that precisely describes what is being disclosed. Through this feedback we can make sure our understanding is consistent with what they thought they were sharing with us.”

Any questions that come up in the meetings are shared with the inventor in a follow-up meeting with the licensing associate, notes Matragrano. Triage 1, she adds, results in more than a simple go or no-go decision. (A go decision is termed “active” and a no-go “inactive.”) There is also a third category called “hold and re-visit.”

“We may be dealing with something really early — just a concept — and we need additional data,” Matragrano explains. In such cases a certain number of months are assigned before a follow-up meeting, during which a decision may be made to move forward or move the technology to “inactive.”

In addition, says Hollinger, there are two sub-categories under “active” — one is “active, no patent needed,” and the other is “active, patent needed.” “If a patent is needed, we put in a request to file,” she notes.

Whenever a technology is “activated,” it is put on Matragrano’s docket so she can arrange for a non-confidential summary, and in most cases marketing begins within a month. “This ensures we consistently put the same level of energy into all technologies and nothing falls by the wayside,” says Hollinger.

In addition, she observes, if at any point during the process the decision is made not to proceed further, there is information available that demonstrates to the inventor why the university will not be investing additional resources in the technology.

Provisional patents

Triage 2, Hollinger explains, is specifically designated to address technologies for which provisional patent applications have been filed. “The goal is to provide a little more in-depth analysis for things we’re starting to invest a bit more money in,” she says. “It’s supposed to happen several months before the conversion of a provisional application and is driven off that date.”

In many ways, she continues, it’s an update of Triage 1. The case manager contacts the inventor for any updates, determines if funding is still available, if changes or enhancements to the technology have been made, and makes any other necessary adjustments. At this stage, “the market research is a bit more expansive, including specific contacts, information on new events that have occurred, scientific updates, and so on,” says Hollinger. At the end of Triage 2, another meeting is held to review the technology’s status.

“For any technology brief or NCS we try to include feedback from the companies it went out to,” adds Matragrano. “We also try to relay [that feedback] to the inventor.”

At this point, Hollinger says, “either we don’t convert, or we file a U.S.-only patent, or we file a PCT, depending on the market, the technology, and the science behind it.”

The final stage

Triage 3 involves the smaller subset of technologies that make it past Triage 2, and action here is triggered by national phase decisions. “At the 30-month date we either go national phase or we don’t,” says Hollinger. That decision is based on a more detailed analysis of updates to the technology, market factors, and funding availability.

“At that point we have to have some third-party party comments on it, either from license term sheet discussions, or from case managers who have reached out to industrial partners for feedback, and we may get an additional report from a company we hire to give us contacts in the industry,” says Hollinger. “Third-party contact becomes very important here to provide more information about the market.”

In addition, she says, there is generally more information available about IP status, such as search reports. “We can see if we were on base with the original prior art search,” says Hollinger. As a result of that process there is another group meeting, where participants again walk through all the available information. “The result can be that the technology is no longer interesting, and we let the PCT go; we enter into a U.S.-only [application]; or we get information as to what countries we should go into and the level of monetary commitment we would be making,” says Hollinger.

If a technology passes through the third phase there is a final, extensive report produced that includes the completed forms from all three stages. “Each one is filled in with outlines about answers to specific questions, and ends up 20-plus pages,” says Hollinger.

Those questions, she adds, address specific topics such as marketing, but are not overly specific. “If they were they wouldn’t be relevant for every technology,” Hollinger explains. So, for example, for the market summary one question might be “Please please provide a high-level overview of the market.”

Competitive advantages

Hollinger says Emory’s new triage process offers distinct competitive advantages. “We really see the case managers thinking about the technologies,” she notes. “A lot of times [when reading the written summary], we won’t be sure exactly what the technology is, or there may already be a technology that addresses the unmet need.” In those cases, she says, those concerns go back to the faculty member who disclosed the technology.

“This provides an avenue for the inventors to clarify information about the technology,” Matragrano explains. “It helps us draw out discussions very effectively,” adds Hollinger. “It provides more specific questions, rather than global discussions. Until they see it in writing, people may not totally understand what it is [the technologies] do.”

The importance of having the triage documents reviewed in the meetings, she continues, can’t be overstated. “One thing I’ve found is that having written documentation in a lot of detail in front of a group allows people to reach back into their own knowledge base,” says Hollinger. “I’ve had people say, ‘Oh, I have a person at company A or Z’ because reading the document triggered this memory. You touch all these other people in your own group in ways you otherwise would not have. It also allows for more interaction with the [investment] community.” That feedback, she notes, sometimes leads to simple changes such as using a different animal model, which in turn can make the IP even more commercially relevant.

“I think the process is fabulous, although sometimes people complain because it does take time,” notes Matragrano. “On the other hand, when it comes to case management it also provides a lot more robust analysis in that it drives conversations with the faculty member in a way that was challenging before.

“It’s also great from a purely marketing angle,” she continues. “It simplifies putting together the NCS because everything is there in this one document, in a streamlined format. It ensures that every technology we move forward with — even research tools and software — get their thorough discussion and that we can start marketing them.”

Hollinger agrees that while the process does take more time, it is well worth it. “Initially we were timing the process with self-reported information from the case managers,” she recalls. “At each triage stage we asked how many hours it required, and it was between three and five hours per Triage 1, for example, including the entire case review plus a prior art search plus writing up the documents.”

While the actual writing is “not so bad,” says Hollinger, she warns that “you want to be careful about how you write them, particular when it comes to IP, because all these things are discoverable.”

In addition, she notes, there is a conscious effort to limit the time spent in the meetings. “We don’t want them to last five hours,” she comments. “Each discussion is supposed to be 15 minutes long — 10 minutes for the case manager to go through the triage and then five minutes of discussion.”

Both Hollinger and Matragrano say the process would be replicable at other TTOs. “We use it for everything we have, from software to research tools to therapeutics, and it covers our needs for all of them,” Matragrano says.

Contact Hollinger at 404-712-1179 or shollin@emory.edu; contact Matragrano at 404-727-7218 or matrag@emory.edu. 

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