Tech Transfer Central

Best Practices in IP Portfolio Assessment and Triage

Format: On-Demand Video/Transcript, or DVD
Originally presented: September 20, 2011

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Price: $197
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One of the most challenging issues for technology transfer professionals is choosing which technologies to shelve and which to move through the pipeline. Each decision you make is a tightrope walk which can run the risk of degrading relationships with researchers and wasting tens of thousands of scarce dollars on technologies that just aren’t commercially viable. Unfortunately, there is no crystal ball to tell us which early-stage innovations are worth your time and money, and which will only serve to sap your energy and patent budget. So how can you make these tough decisions and make sure you back more winners and fewer losers?

Most TTOs employ some version of an assessment and triage process, but adopting proven best practices can bring higher success rates, more effective use of staff time and patent budgets, and better relationships with faculty inventors. That’s why we’ve lined up two veteran TTO leaders — Zach Miles from the University of Utah and Garold Breit from the University of Manitoba — for a webinar that promises to help you more consistently identify the technologies that ultimately lead to real revenues via licenses and successful start-ups:

Best Practices in IP Portfolio Assessment and Triage

Both of our presenters’ TTOs manage and move an impressive number of technologies through to the start-up or licensing phase — but their successes don’t tell the full story. Their ability to sift through hundreds of disclosure and IP assets in their portfolios, and focus their efforts on the best of the best, has had a huge impact on their outstanding results.

Join us for this 90-minute program where you’ll hear their best practices for handling sensitive IP assessments while maintaining solid relationships with their researchers. They will discuss:

  • Initial assessment
    • The tough decisions are toughest here
    • Where to place bets
    • Game changers versus other technologies
    • Dealing with relations internal and external
  • Using interns to improve IP assessments
    •  Selection tips
    • Developing a bullpen
    • Key tasks and training
      • prior art searches
      • market research
  • Initial Disclosure
    • Triage process with timeline expectations
    • Prior art search and faculty feedback
    • Market research: what you must include
    • Game plan deliverable
      • Identifying a course of action
      • A roadmap for manager and PI to follow
      • Avoid non-communication or false expectations
  • Follow-on Assessment
    • Market and prior art validation from stakeholders and experts
    • Finding prospective licensees and generating feedback

Your Expert Presenters:

Zachary Miles, JD, is currently the Interim Director at the University of Utah Technology Commercialization Office, where he oversees the development of sound operational practices, procedures, systems and controls to ensure that intellectual property portfolios are effectively managed from initial receipt of an invention disclosure to final disposition of intellectual property rights. Some of his responsibilities include reviewing and making changes to the organizational structure of the office, reviewing and modifying interactions with external and internal counsel, updating boilerplate agreements, and helping to organize several student intern and externship programs, including the legal and MBA clinics. Zachary is also intimately involved with start-up companies based upon intellectual property owned by the University of Utah Research Foundation.  He is working closely with internal and external stakeholders to identify and implement best practices the TCO can implement to add value to its start-up companies and assist those companies in overcoming the financial “Valley of Death.”

Garold Breit, Executive Director of the University of Manitoba Technology Transfer Office, has extensive experience in technology-based organizations. Mr. Breit has founded, financed and served as the president of biopharmaceutical companies (Antibodies, Inc. and RedStorm Scientific) and has launched successful intellectual asset programs at dramatically different academic institutions (Creighton University, the University of South Alabama and the University of Texas). Since 2005 he had led the University of Manitoba’s TTO, which is widely regarded as one of Canada’s most productive intellectual asset programs.

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