Tech Transfer eNews Blog

A three-pronged approach to controlling costs of managing your patent portfolio


By Jesse Schwartz
Published: October 21st, 2020

A detailed article on strategies for controlling patent costs appears in the October issue of Technology Transfer Tactics. To subscribe and access the full article, click here.

For more information about the on-demand recording of the distance learning program “Maintaining a High-Quality Pa­tent Portfolio Under Severe Budget Constraints” or to order, click here. 

Peter Gordon, a founding and managing member of Patent GC, a team of IP, patent and trademark attorneys, began learning through “grace under fire” some of the keys to managing patent portfolio costs, and he shared those lessons, along with key tools and techniques, with the attendees of an October 5 webinar hosted by Tech Transfer Central entitled, “Maintaining a High-Quality Pa­tent Portfolio Under Severe Budget Constraints.”

Like many TTOs in today’s environment, “I was asked to reduce the patent budget to one-third of current spend,” he related. “Also, the [client company’s] CFO and CEO wanted me to explain how the budget grew to the current state. I was given a few weeks, and when I made my proposal, they then asked how much further I could cut it without hitting bone.”

Gordon said the framework of his overall strategy for doing “more with less” falls into three key areas:

  • Cost Model (generating a budget and analyzing costs);
  • Value Metrics (is the IP worth it?); and
  • Organizational issues.

The cost model, Gordon noted, can be used to generate the budget, analyze and track costs, and run through some “what if?” scenarios. “It’s primarily based on data about the portfolio and decisions and actions you will take on each matter,” he explained. The “key takeaways,” he shared, are how to use time to disposition (the average time it takes for you to make a decision of either abandonment or patent filing) as a key control in the budget, and how to manage the problem he calls “death by a thousand cuts.”

The structure of the model is divided into two key components — the portfolio, and variable costs. The portfolio, he explained, encompasses new invention disclosures and filings; existing and pending matters; and the maintenance and renewal component. Variable costs have two parts — “health” and “hygiene.”

The “health” component includes “large average costs that are key in any decision taken — like the cost for filing a new patent application.” Hygiene, on the other hand, refers to “how costs vary from matter to matter based on how well or consistently they are executed.” It’s these costs that he refers to as “death by a thousand cuts,” including excess claim fees, filing surcharges, incomplete applications, late/urgency fees, excess page fees, translation costs, corrections or drawings and specification, and reminders and requests for instructions.

“These little costs aggregate across the entire portfolio and have significant impact,” said Gordon. “There is a lot of variability in base costs due to wildly variable standards and how decisions are executed.”

The cost control strategy should revolve around “managing decision and action costs (and how to make decisions); the decision-making process affecting time to disposition; and things put in place to control death by a thousand cuts,” he summarized.

“First filings are clearly a percentage of invention disclosures, but others, like conversions, are dependent on decisions that may have been made by other people,” Gordon noted. “When you look at pending cases and maintenance and renewals, particularly pending, that is a function of all your previous filings and time to disposition. Maintenance and renewals depend on previous filings and a lapse in grant rates.”

If you decide to proceed further with any innovations, there will be an action cost, he noted. “The key drivers on those costs really depend on filing type, outside counsel selection and fee schedule,” he explained.

So, what are some of the keys to controlling time to disposition? “Anything that delays the patent application from getting to the examiner’s queue will delay getting it processed,” noted Gordon. “The other factor relates to knowing what you want to get out of the patent application at the time you’re filing it. If you do not have a good idea, a lot of time is spent flailing about. Have some strategy, some objective you want to get out of the application.

“Sometimes,” he continued, “you get prior art and it shoots down your goal. You need to be able to make a decision: are we going to be able to proceed or not? Going back and forth with the patent office can go on pretty much forever if you want it to; you have to decide when you’re done. A claim allowed is the easy one; the hard ones are when you have to decide to let go.”

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University of Oxford researchers develop “extremely rapid” COVID-19 test


By Jesse Schwartz
Published: October 21st, 2020

Researchers at the University of Oxford are developing a rapid throat swab test for COVID-19 that reportedly can produce results in less than five minutes. continue reading »

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Protect University Innovations by Drafting High Quality Provisional Patent Applications


By Jesse Schwartz
Published: October 21st, 2020

Poorly drafted provisional patent applications can be useless — or even worse, they can be used against you at conversion. According to the USPTO, nearly 170,000 provisional patent applications were filed in FY2019 — that’s about 466 provisional patent application filings each day. Provisionals are often devalued and tossed off as a quick and easy way to temporarily protect an invention, with minimal effort spent in drafting this application. But this early misstep can result in highly consequential problems during examination of the non-provisional application later.

That’s why Tech Transfer Central’s Distance Learning Division has secured a pair of experts from the Baker Donelson Law Firm in to bring you this critical webinar: Protect University Innovations by Drafting High Quality Provisional Patent Applications, scheduled for November 19th. You’ll learn best practices as well as common mistakes to avoid when drafting provisionals in this practical, detailed program.

For complete details and to register, click here.

Also coming soon:

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U at Buffalo launches its first VC fund for university start-ups


By Jesse Schwartz
Published: October 21st, 2020

The University at Buffalo (UB) has launched its first-ever venture capital fund for start-ups aiming to commercialize technologies developed at the university. continue reading »

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Arizona State start-up advances novel antibody-based diagnostic technology


By Jesse Schwartz
Published: October 21st, 2020

Calviri, Inc., a start-up from Arizona State University (ASU), aims to commercialize a novel, antibody-based diagnostic platform in the U.S. and abroad. continue reading »

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Lodo Therapeutics acquires cancer research startup co-founded by MSU and UC-Riverside researchers


By Jesse Schwartz
Published: October 21st, 2020

Biotech company Lodo Therapeutics has acquired Hibiskus BioPharma, a cancer research start-up co-founded by professors at Michigan State University (MSU) and the University of California-Riverside (UCR).

Hibiskus develops treatments that target proteasomes, which can lead to cancer growth through their process of shredding excess protein into small peptides.

“The proteasome inhibitors we found block the shredder’s ‘teeth’ (the proteasome activity), stopping the production of small paper pieces (peptides) and preventing cancer growth,” says MSU professor André Bachmann, who co-founded Hibiskus alongside UCR professor Michael Pirrung. “Another advantage is that cancer cells are also more sensitive to proteasome inhibitors than normal healthy cells.”

In recent studies, the lead candidate LODO-141 was shown to be more effective than three marketed proteasome inhibitors in resistant multiple myeloma and mantle cell lymphoma.

“We believe these novel proteasome inhibitors are an excellent fit for Lodo,” says Dale Pfost, Lodo’s CEO. “They are derived from natural products and have the potential for improved efficacy and therapeutic index compared to existing proteasome inhibitors, a mainstay of multiple myeloma treatment.”

Frank Urban, director of venture creation at the MSU Foundation, comments, “It is great to see new technologies like the proteasome inhibitors Hibiskus was developing attract the attention of a group with experience in therapeutic development like Lodo Therapeutics, which has the expertise and resources to move novel therapies into clinical trials quickly. These transactions are exciting to see and work to progress the great technologies being developed at MSU.”

Source: The State News

Global Licensing Terms & Agreements in Pharma, Biotech & Diagnostics provides comprehensive and up-to-date access to the latest licensing agreements announced in the pharmaceutical, biotechnology, and diagnostic sectors – all details of licensing agreements from 2014 through mid-2020. Click here for details.

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Silo Pharma and UM-Baltimore sign option agreement to advance psilocybin-based CNS treatments


By Jesse Schwartz
Published: October 21st, 2020

Drug developer Silo Pharma has entered into an option agreement with the University of Maryland-Baltimore (UMB) to advance a technology that could support the delivery of psilocybin-based therapeutics for central nervous system (CNS) diseases such as multiple sclerosis (MS). continue reading »

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Pharmather licenses ketamine-based Parkinson’s drug from U of Arizona


By Jesse Schwartz
Published: October 21st, 2020

Pharmather, a life sciences company developing psychedelic therapeutics, has entered into an exclusive license agreement with the University of Arizona (UA) to accelerate a ketamine-based treatment for Parkinson’s disease. continue reading »

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Unique software offers precise yet affordable IP valuation tool


By Jesse Schwartz
Published: October 21st, 2020

Most IP valuation methods that have been developed are either inexpensive but yield very coarse results, or so costly they are out of reach for most TTOs and many other IP professionals. The Competitive Advantage Valuation (CAV) system is a software program designed to close that gap, offering both affordability and precision.

The CAV method was developed over many years to value IP assets and formulate technology commercialization strategies on behalf of corporate, university and federal laboratory clients of the Technology Commercialization Research Center at Syracuse University.

CAV is the only software-based valuation method that:

  • Considers all of the variables that determine IP value;
  • Calculates discrete dollar and percentage amounts for IP value variables;
  • Calculates IP competitive advantage relative to competing IP;
  • Quantifies technical, market and intellectual property risk associated with IP;
  • Equalizes return on investment in IP for parties engaged in an IP exchange.

The CAV software yields clear and logical valuation results at an extremely low price when compared with other products or typical consulting fees. The pricing is designed to make valuation expertise more widely available and allow any organization, regardless of budget, to conduct valuation analyses in-house. Under a special agreement with 2Market Information, the CAV system is available for only $350.

For complete details and an online demo, click here.

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Clemson start-up enhances surgical screws to monitor bone healing


By Jesse Schwartz
Published: October 21st, 2020

A Clemson University start-up is embedding surgical screws with a monitoring technology to track the progress of fracture healing. continue reading »

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Duke start-up advances lung imaging tool with no radiation exposure


By Jesse Schwartz
Published: October 21st, 2020

A Duke University start-up aims to provide patients with a novel tool to better understand their lung disease, including those suffering from the aftereffects of COVID-19. continue reading »

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Rain International licenses seed-based nutrition technology from U of Maryland


By Jesse Schwartz
Published: October 21st, 2020

Health tech company Rain International has licensed a technology from the University of Maryland (UM) to advance an innovation in seed-based nutrition. continue reading »

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