best practices in outsourcing tto activities

AshmarIP www.ashmarip.com

Best Practices in Outsourcing TTO Activities

Anurag [email protected]

www.ashmarip.comFeb 28, 2012; Webinar

mailto:[email protected]

http://www.ashmarip.com/


• Real-life examples of how outsourcing has benefitted tech transfer programs and their staffs

• Due diligence required in choosing the right outsourcing partner• Case studies of how outsourcing has helped TTOs meet specific goals• Tips on how to best integrate the outsourcing component in your

decision metrics• Strategies for monitoring outsourced activities and ensuring high

quality• Processes that make outsourcing a win-win for licensing officers,

researchers and the university

Discussion Items


• University TTO Landscape• What are the key bottlenecks?• How can Outsourcing of certain functions help?• Best Practices

– Choosing partner firm(s)– Key attributes of a good partners– Process flows

• Some case studies• Key takeaways

Agenda


Due Diligence

-$

Patent Drafts

-$

Research/Invention Corroboration/Documentation

Pubs./IDFs UniversityTTOs

USPTO cycle

-$

Licensing Revenue +$

Start ups/Spin offs

Defensive Publications

More R&D/Produ

cts

University Funds (Endowment, R&D Grants,

Govt.)

$$

EquityLiquidity (IPO/M&A)

$$

University Invention Management Flow


US Universities IDF Data Growth

AUTM Data


University Disclosure Snapshot - 1

AUTM Data


University Disclosure Snapshot - 2

AUTM Data


Problem for University TTOs – Fact Lite

Summary of Licensing Revenues

AUTM Data


• Early stage commercialization environment is a fact lite space

• This makes clear communication challenging and time consuming

• Better evidence would help overcome this• But only in the circumstances where this is available

quickly and cost effectively

Problem for University TTOs – Fact Lite


– In house approaches could be adhoc and constrained because of resources• Many times interns are used with high turn over• A lot of training overhead • Time consuming• Complex, high level expertise needed• Limited audience buy-in to results

– External Services• Expensive• Superficial insights• Limited narrowly to IP and legal information• Hard to find expertise across various domain/research areas

Why Outsource?


• Expertise of Principals and the team• Do they have prior experience in serving the TTO market?• Have they worked with similar size TTOs?

– What may work for a university with 400 annual disclosures may not work for one with 25 disclosure

• Do they understand technology transfer, and offer customized solutions for specific scenarios?

• Experts in all range of domains and research areas?– Bio-Sciences, Bio-Tech, High Tech, S/W, H/W, Cleantech, Medical Devices

etc.– Do they cover your innovation areas? More specifically, can they fill gaps in

internal TTO expertise, or complement them as needed?• What are their processes?

– Quality Control & Reliability– Presentation

Choice of an Outsourcing Partner


• Services designed specifically to enhance university commercialization processes

• Rapid production• Cost effective• High level of Domain Expertise utilized• High quality - feature by feature analysis• Commissioned before provisional exists• Informs Triage decision making• Understands Innovation and University Technology

Transfer!

Key Attributes of a Good TTO Partner


IP Value Chain: Outsourcing Potentials

Technology Market Analysis Conceptualization Research &

development Value Extraction

Landscape Analysis Patentability Search Patent Drafting Commercialization Study

White Space Analysis Freedom to use Study Patent Filing & Prosecution Litigation Support

Competitive Analysis State-of-art StudyPatent Valuation,

Acquisition & Partnership

Overlap Analysis Claims Mapping

Licensing need Analysis Portfolio Analysis

IP Attorneys Researchers

Business ManagersResearchers IP Attorneys

IP Attorneys Business Managers

Designers












Designers












Designers


Tech

1

Tech

2

Tech

3

Tech

4

Tech

5

Co 1

Co 2

Co 3

Co 4

Co 5

Co 6

Co 7

Co 8

Co 9

Co 10

High IP risk domain –

collaboration required

Under researched domain –Research

opportunity

Single market leader, absent

in other domains -

Cross licensing possible

Alternative technology

licensing / tie-up’s possible

Single technology presence -


Few patents in

various tech

domains in-licensing possible

Tech

1

Tech

2

Tech

3

Tech

4

Tech

5

Co 1

Co 2

Co 3

Co 4

Co 5

Co 6

Co 7

Co 8

Co 9

Co 10

High IP risk domain –

collaboration required

Under researched domain –Research

opportunity

Single market leader, absent

in other domains -


Alternative technology

licensing / tie-up’s possible

Single technology presence -


Few patents in

various tech

domains in-licensing possible

Unique Insights

ResearchersBusiness Managers

Business Managers

DesignersResearchers

Business Managers & Strategist

DesignersResearchers

Patent Landscape Example


• Articulate the possible applications clearly• Demonstrate usage scenarios with viable prototypes• Better preparation of IP Differentiations

– Patentability and Marketability Studies– IP Landscape Studies

• Identification of key partners and companies where the IP fills gaps• Demonstrating monetization path by clearly identifying applications and use cases• Finding the in-house champion who will take the role of Chief Marketing Officer (CMO) for

deriving the maximum potential for the IP• Prepare for thorough technical, business and IP due diligence

– Keep Patentability and Marketability Study ready– Keep technical due diligence ready– Articulate the monetization potential clearly– Do valuation comparisons before hand

Best Practices: Marketing University IP What to Outsource?


• Mid sized US research university• Around 200 disclosure per year• 75% disclosures to patent analytics report• Patents• 50% cost reduction in initial patent protection• Better feedback to inventors• Result: Quality up; Disclosures up by 50%

University Case Study 1


• Small research university• 100 disclosures per year• Patentability and Marketability Studies of Invention Disclosures• Savings in cost with more focused information for Patent Drafting and

more intelligent conversion rate of Invention Disclosures • Savings in Cost by reducing redundant filings. 10-20% reduction in

redundant filings may translate to $100-$200K savings in patent prosecution budget. Front end cost alone – not counting Office Action, patent maintenance, foreign filings etc.

• Better Quality Patents – with better claims from information provided in Ashmar Reports



• Large Top Tier Private University• TTO wanted help in analyzing a portfolio of 50 patents/patent

application for Licensing• TTO Commissioned a Market and IP Landscape Analysis • First Step in Analysis segmented the patents into 6 different sub-

categories or classes– For each class key patents and competing products identified– Detailed product vs. Claim map generated– Highest probability targets identified for licensing for each class

• Benefits – TTO was able to monetize the portfolio; analysis used in licensing negotiations and as marketing collateral



• Better feedback to inventors• Better quality invention disclosures• Less provisionals filed, then lapsed• Less money sunk into “buying time”• More business development time • Better patent drafting/stronger claims• Faster access to business development relationships

and resources

Key Benefits of Good Outsourcing


• Enhanced innovation leadership• Positive reputation, internally, externally• Better deals• Higher portfolio value• Lower cost of operations• Better ROII (Return On Investment on Innovation)!

Impact on University TTOs


Thank you!

Questions and [email protected]

(949) 929 1022 (Cell)

mailto:[email protected]

best practices in outsourcing tto activities

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