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IP assessment jam sessions proposed

One-time expert advisory panels can slash IP backlogs

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Having external expert advisory panels available to offer free advice on patenting and commercialization issues is an attractive concept, but such panels may not be sustainable long-term for many technology transfer offices, says Laura Schoppe, MBA, MSE, RTTP, president of the Apex, NC-based intellectual property (IP) management and tech transfer consulting firm Fuentek LLC.

“Due to the volunteer nature of these panels, you often can’t count on panel members being around for a long period of time, especially if you ask a lot of them,” says Schoppe. “Recruiting strong panel members is hard work, and TTOs may find it overwhelming if they have to reinvent the panel potentially every few months to every few years. In addition, standing advisory panels can suffer from the limited expertise of the panelists, as well as from conflicts of interest.”

A more feasible option for some TTOs may be inviting an advisory panel to conduct a one-time review of an IP backlog, she suggests. “As with any panel, the TTO has to do some work upfront to bring panelists together and to do preliminary screening of the technologies. However, a single event has a lot of cachet for attracting experts because there is a limited commitment and their interest is piqued by the opportunity to share their expertise discussing multiple technologies.”

A time and money saver

A one-time panel offers several potential benefits, says Schoppe. “Some TTOs may have up to several hundred technologies that have been sitting around for quite awhile in their patent portfolios. If you aren’t sure what is still hot, a panel is a great way to prioritize your patent portfolio. Industry players can very quickly identify patents that need to be cleared off your table, allowing you to abandon patents that no longer have a market need — and save a lot of money in patent maintenance fees.”

A one-time panel also can help TTOs quickly identify high-potential technologies, she notes. “Industry experts are primed to notice new technologies of real interest that are worth the TTO diving into deeper.”

What these panels can’t do is provide “full-out market-based analyses,” says Schoppe. “They don’t have the time or the depth to do that, and they are not doing market research on the spot either. It will be ‘go/no go’ — with maybe a list of a few key players to contact. Either you’ll learn that you should move forward and analyze a technology more deeply, or you’ll learn that you need to abandon it.”

Tackling the backlog

Spartan Innovations, the venture creation arm of Michigan State University (MSU) in East Lansing, was created about a year ago to bring rigor to the new venture creation process. “At the time, we had a backlog of 2,200 invention disclosures,” says Brian Abraham, PhD, executive director. “Obviously, that was quite daunting.”

To tackle the backlog, Spartan Innovations’ first step was a quick categorization based on “some simple knockout criteria,” says Abraham. “We used mostly binary criteria, asking such questions as: Is the faculty member still at the university? Is there still life in the patent?”

This initial review allowed the Spartan Innovations team to slash its IP set down to about 150 inventions, he states. “At that point, we decided to invite the venture capital community to go through those pieces of intellectual property to help us decide which ones might be developed as platform technologies for the basis of a new venture.”

Spartan Innovations enlisted the help of Prophetec, an IP valuation company run by S. Michael Camp, director of the TEC Institute at The Ohio State University in Columbus. The two organizations worked together to plan a two-day session, says Abraham. “We designed how we would approach the session: what the desired outcome was, what criteria to use, what materials to have available for review, and what voting system to put in place. All said and done, it probably took two full weeks upfront — strewn over a six-week time frame — to design the approach. ”

Spartan Innovations also chose to have Camp’s group serve as the session facilitator. “We monitored both days of the session, but we largely stayed out of it because we didn’t want our biases to creep into the decision-making process,” explains Abraham. “In addition, having a facilitator at the helm kept the session on track over the two days.”

Spartan Innovations brought in 12 venture capital groups to participate in the panel. On day 1, the panel members assessed the 150 technologies using the review materials developed in the planning phase. “We didn’t want them to review raw patents,” he says. “We provided documentation that was more relevant to them drawing conclusions quickly.”

The panel used knockout criteria “a little more detailed than those we used to winnow down from [the original] 2,200,” says Abraham. “The group had to work quickly to get through 150 technologies in eight hours. So we broke out the technologies into general disciplines/market areas.” Spartan also developed scoring sheets that made the process both more efficient and more consistent among teams. (Click here for sample scoring sheet.)

The venture capitalists were divided into three subcommittees that worked in different disciplines. “Depending on the subcommittee, each had three to four participants. That allowed a venture capitalist whose main expertise was in some areas vs. other areas to really evaluate the technologies where they were more comfortable,” says Abraham.

By the end of day 1, the venture capitalists had chosen about 60 technologies for additional assessment. On day 2, the group reviewed those 60 technologies using even more detailed criteria.

“We captured comments and feedback along the way,” says Abraham. “The scoring sheets we designed prompted participants to rank the different invention disclosures on a number of parameters. Some parameters were simple, such as: ‘Is this a potential new venture or not?’ Others were more complex, such as: ‘How many years do you think this would take to bring to market? What does the value chain tell us? What are the market forces telling us? How many dollars do you think it would take to bring to market?’”

The scoring sheets allowed Spartan Innovations to determine “which invention disclosures people tended to be consistently positive on or consistently negative on per any number of parameters,” he says.

By the end of day 2, the panelists had identified 35 technologies with the most potential for new venture creation. “We are currently doing a deeper analysis on those technologies,” says Abraham. “The panel allowed us to target our resources on the technologies that have the best chance for success according to the entrepreneurial community and, importantly, the early stage financier community.”

Contact Schoppe at laschoppe@fuentek.com or 919-249-0327; contact Abraham at 517-884-4543 or babraham@spartaninnovations.org.


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