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Is your TTO focusing on the IP “forest,” or only the trees?

In her recent blog post, Danielle McCulloch, vice president of tech transfer consulting firm Fuentek, advises TTOs on the benefits of conducting a regular review of their entire IP portfolios. “Technology transfer offices need to see the forest and the trees,” McCulloch writes. “TTOs have to evaluate each innovation individually, but they also need to consider its strategic value relative to other IP in the portfolio.”

According to McCulloch, TTOs should view the larger portfolio periodically, but just when and how often depends on the TTO and its current position. If a larger organization, be it a university or another research institution, wants to change its strategic focus regarding what to do with its IP, it would be wise for you to take a step back and look at the technologies side by side.

“Perhaps innovations previously considered low priority now are ideal candidates for achieving a new goal or metric (e.g., launching start-ups, supporting local/regional industries). And vice versa,” McCulloch writes. “The point is: When the organizational landscape has changed, take a look at the IP portfolio to see how it overlaps with that new landscape, and shift plans accordingly.”

If you are stepping in as a TTO’s new director, reviewing the entire portfolio helps you get a handle on what you’re responsible for and how those innovations compare to what’s already on the market. This will help outline your next steps going forward in the new position.

McCulloch points to a Fuentek client who felt that a particularly technology area may have been overlooked by the TTO in the past and now wasn’t sure what to do with it. Since it represented a large portion of the IP portfolio, McCulloch and her team focused on only a section of it to analyze whether the past strategy (or lack thereof) still worked, or whether a new approach should be introduced.

Another client had a university innovation return to the TTO after the start-up licensee realized it couldn’t accomplish its goals some five years after first licensing a technology. “This return [of the IP] created an opportunity to reexamine not only that technology but also about 30 related inventions that had been shelved when the original license had been executed,” recalls McCulloch.

IP portfolio reviews can serve several worthy goals: to identify technologies where market interest looks promising and warrants a strategic analysis; isolate those with medium-low potential now but that might have greater potential as they are developed further; pinpoint areas of research with significant market sector activity; and unearth technologies that can be packaged together to maximize their market value.

“The goal,” concludes McCulloch, “is to complement the tech-by-tech analysis that is the trees and consider the strategic value of the whole IP portfolio forest.”

Source: Fuentek

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