Internship Best Practices for TTOs: How Students Can Help Drive Successful Tech Transfer

1. Internship Best Practices for TTOs:How Students Can Help Drive Successful Tech Transfer 27 January 2009

2. Introductions Lesley Millar Office of Technology Management Brendan Rauw Science & Technology Ventures • Disclosures (FY08) 243 • US Filings (FY08) 141 • Active US Patents 945 • Issued ~ 528 • Pending ~ 317 • Licenses/Options (FY08) 43 • Disclosures (FY07) 322 • Patent filings (FY07) 274 • Active US patents ~ 1,500 • Issued ~ 800 • Pending ~ 700 • Licenses/Options (FY07) 95

3. Programs’ Background • Began June 2001 with 16 students (4 teams of 4) dealing with a backlog of over 700 inventions • Currently 9 analysts, 7 in OTM office and 2 in satellite offices • Analysts are graduate students from MBA, Law and Library Info Science • 40 hrs per week over Summer (~12 wks) • 10 hrs per week for remainder of year (~35 wks) • Typical projects include • Screening/evaluation of new invention disclosures • Market and industry analysis for marketing • Prior Art analysis • FY09 Budget costs are ~ $82K for 7 interns • Started in June 2006 with 4 PhD students • Currently 30+ from 360+ applications received to-date • Fellows are Columbia graduate students and post-docs who work up to 10hrs / week • All work is done remotely • Typical projects include • Commercial assessments of new disclosures • Preparation of marketing materials • Scientific, market, or patent research • Outbound marketing / outreach • FY09 budgeted costs > $100k The Fellows are an extremely high quality, low-cost resource

4. How Do We Use Interns? Invention Screenings Other Projects • Every disclosure is screened and outcome presented to mgt group • Template format, ~ 10 hrs per screening • Basis for future marketing/leads • Provides record of decision • Provides background info for ‘no go’ decisions with faculty • Ensures consistency in approach • Quality control mechanism for office • Filling out invention disclosures for faculty • Marketing plans • Patent porfolio/claims summaries • Attend faculty seminars, identify new disclosures • Participate in OTM outreach • Help recruit new interns • Future Work • NDA’s • MTA’s • Marketing activities direct contact

5. How Do We Use Interns? Technology Assessments Research Marketing • Standard format for every new disclosure • Used as a briefing document for bi-weekly intake/ triage discussions • Primary source of info used by senior management • Shared with faculty • Shows evidence of work • Means to engage faculty on potential challenges / issues • Reference point for future • ‘Go to’ source for research questions, including: • Company information • Market size • Clinical pipelines • Royalty rates • Prior art • Provides useful starting point for a variety of projects • Business plans • Presentations • Seed fund proposals • Assertion opportunities • Preparation of non-confidential disclosures • Identification of prospects and contact information • Can be time-consuming • Contacting potential licensees via email • Maintenance of a customer relationship management (CRM) system

6. Invention Assessment / Screening Components • Technology Overview • Non-enabling Description • Features and Benefits • Applications • Intellectual Property Analysis • Potential Prior Art • Patentability • Overall IP Strength • Business Issues • Market Analysis • Size, structure, potential licensees, and potential competition • Market Potential • Commercialization Issues • Level of development, ease of implementation, and timing • Non-confidential marketing abstract • Technology Details • Potential Applications • Market Overview • Competition & Companies • Key Commercialization Challenges • Profiles of Key Companies • Patent & Publication Search Results

7. Recruitment & Retention • Recruiting is done on an as-needed basis, generally each semester • Depends on demand for projects and intern attrition • Advertised by emails to departments, flyers on campus, and word-of-mouth • Key selection criteriaRationale • Academic performance Smart people will figure it out • Scientific background Mixed success with MBA students w/o PhD’s • Commitment Heavy investment in training and coaching • ‘Real world’ experience Provides useful skills and perspective • Selection approach • Resume screen • Interview • 4-week trial period STV has received 360+ applications to-date, and maintains of selectivity ~ 10%

8. Recruitment & Retention • Information sessions, career services, flyers, email, word of mouth • Skills- scientific background, business experience/understanding, • Selection process- resume screen, case study and interview • Rationale- have to be able to work under pressure, need to understand science to the extent required to make a business decision, need to be able to work as part of a team, no previous IP or licensing experience required • Pay $18.50- 19.50 per hour • Hours submitted bi-weekly • ‘At will’ employees, but have not had attrition problems

9. Training & Resources Provided • 3-week training period sets standards, expectations • Intern Handbook- a ‘go to’ source for everything conceivable • Use prior years interns to train and mentor- 2 year plan for one intern • Have ongoing training/seminar sessions through summer – access to company CEO’s, VC’s, local entrepreneurs, faculty, attorneys etc. • Templates heavily used • Tools and resources • Access to myriad of services via university library- Hoovers, Frost and Sullivan, etc. • Delphion • Knowledge Express

10. Training & Resources Provided Training Tools & Resources Provided • Initial ½-day Training Session • Introduction to technology transfer • How to approach typical projects • Primer on intellectual property • Mentorship from experienced Fellow • Templates and examples • Reference guides • Company research • Patent research • Market analysis • Ongoing workshops • Patents 101 • Assertion analysis • Knowledge Express (site license) • Frost & Sullivan (Market Engineering) • Total Healthcare • Telecom, Wireless, Network & Systems • Semiconductors • Alternative Energy • Environmental Management, Water and Wastewater • Specialty & Fine Chemicals • Boliven (Free) • Hoovers (Free, through libraries)

11. Workflow Management • Intern Coordinator manages assignments • Uses simple excel spreadsheet tracking tool • Technology Manager reviews progress and output and suggests changes, etc. • Completed screenings are presented at weekly management meeting for concurrence of decision • Screenings archived on IPP database all background material held on server • Agendas for Management meetings show all current screenings, disclosures received during week, outstanding screenings, progress on licenses, etc.

12. Workflow Management • Fellows are managed by experienced Senior Fellows • One manages schedules, assignments and administration • One manages quality control (QC) and program development • Fellows are given assignments on a weekly basis • One-week turnaround expected (e.g., Thursday-Thursday) • Assignments and files managed through secure, online collaboration tool • After QC, completed projects are emailed to client and centrally archived • Fellows are paid on an hourly basis • Each assignment has a standard number of hours (generally 4-5 hours each) • Hours are self-reported every two months

13. Programs’ Impact • Low-cost mechanism to manage 80% increase in inventions since inception • Can deliver commercialization decisions within 8 weeks to faculty • New elements of program add further value to faculty • IP mining • Satellite programs for specific client needs • Allows Technology Managers to focus on marketing and licensing activities • Real career changing experience for most students • Have analyst alumni in tech transfer offices throughout US and Canada For TTO… … provides objective analysis for patenting decisions … frees licensing officer’s time for other tasks … demonstrates efforts to Faculty … spreads word about STV on campus For Researchers… … realistic feedback on commercialization challenges … resource for business plans and proposals … gets many more technologies in front of companies For Students… … insights into commercializing new technologies … training & exposure to careers outside academia … builds resume and opens doors

14. Key Challenges and Risks • Successfully recruiting and retaining the best talent • Success – and time commitment – crucially depends on quality of recruits • Lapse in recruitment could adversely affect organization dependent on intern services • Training and intern development • Most students are not initially familiar with the commercial environment or IP • Negative reactions from faculty about students involvement • Concerns over capability, confidentiality, and conflicts of interest of students • Commitment of students and adherence to deadlines • This is not their primary commitment! Inevitably, people leave and deadlines slip… • Export control issues when employing foreign national students • Need to be cognizant of regulations and whether a technology is export-controlled • There may be restrictions on who can review confidential information

15. Lessons Learned • Ongoing investment in recruiting needed to maintain high profile for the program • Use word of mouth, showcase on campus • Confidentiality agreements are not enough! • Students need to be regularly reminded of risks and obligations • Demonstrate high-quality work product to gain faculty and administration buy-in • Standard templates and comprehensive training materials key to consistent results • Keep on top of potential export control issues • Low probability of real issues arising • Make students feel part of the tech transfer team • Recognize their efforts, communicate regularly with them about their work, ask office staff to help with training, include them in office events

16. Program Checklist • Defining needs – where is the problem? • Management and training – who/when/how/cost? • Space/location – on location or satellite, confidentiality issues • Costs/budget – how much, who pays, how to measure value? • Screening Process – for consistency of experience for analysts • Other projects – part of core work or not? • Continuity between programs – helps to have mentor? • Getting buy in – faculty, other licensing staff

17. APPENDIX

18. Illinois Screening Process 6-8 wks

19. Columbia Intake Process For New Disclosures Receipt • Faculty submits Invention Report (IR) • IR assigned to TLO • IR logged and forwarded to PLG and Fellows Review • Invention assessment completed • Internal counsel reviews • TLO discusses with PI Decision • File patent application • Market without patent • Defer decision • Do not market or patent Invention Review Meeting • Meeting with PI, TLO, PLG and often outside legal counsel for more information ~24 hrs Portfolio Discussion • Bi-weekly discussion with Senior Management and all Campus TLOs ~2-4 weeks < 30-60 days Email tofaculty