Best Practices in Outsourcing TTO Activities

1. Best Practices in Outsourcing TTO Activities Anurag Bist anurag.bist@ashmarip.com www.ashmarip.com Feb 28, 2012; Webinar

2. Discussion Items • 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

3. Agenda • 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

4. University Invention Management Flow Pubs./IDFs University TTOs $$ Corroboration/Documentation Due Diligence -$ Research/Invention USPTO cycle -$ University Funds (Endowment, R&D Grants, Govt.) Patent Drafts -$ Defensive Publications Licensing Revenue +$ $$ Liquidity (IPO/M&A) Equity Start ups/Spin offs More R&D/Products

5. US Universities IDF Data Growth AUTM Data

6. University Disclosure Snapshot - 1 AUTM Data

7. University Disclosure Snapshot - 2 AUTM Data

8. Summary of Licensing Revenues Problem for University TTOs – Fact Lite AUTM Data

9. Problem for University TTOs – Fact Lite • 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

10. Why Outsource? • 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

11. Choice of an Outsourcing Partner • 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

12. Key Attributes of a Good TTO 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!

13. IP Attorneys IP Attorneys IP Attorneys IP Attorneys Researchers Business Managers IP Attorneys Researchers Business Managers IP Attorneys Researchers Business Managers Researchers Researchers Researchers IP Attorneys Business Managers Designers IP Attorneys Business Managers Designers IP Attorneys Business Managers Designers Conceptualization Conceptualization Conceptualization Technology Market Analysis Technology Market Analysis Technology Market Analysis Research & development Research & development Research & development Value Extraction Value Extraction Value Extraction Commercialization Study Commercialization Study Commercialization Study Landscape Analysis Landscape Analysis Landscape Analysis Patentability Search Patentability Search Patentability Search Patent Drafting Patent Drafting Patent Drafting Freedom to use Study Freedom to use Study Freedom to use Study Patent Filing & Prosecution Patent Filing & Prosecution Patent Filing & Prosecution White Space Analysis White Space Analysis White Space Analysis Litigation Support Litigation Support Litigation Support Patent Valuation, Acquisition & Partnership Patent Valuation, Acquisition & Partnership Patent Valuation, Acquisition & Partnership State-of-art Study State-of-art Study State-of-art Study Competitive Analysis Competitive Analysis Competitive Analysis Claims Mapping Claims Mapping Claims Mapping Overlap Analysis Overlap Analysis Overlap Analysis Licensing need Analysis Licensing need Analysis Licensing need Analysis Portfolio Analysis Portfolio Analysis Portfolio Analysis IP Value Chain: Outsourcing Potentials

14. Patent Landscape Example Business Managers & Strategist Unique Insights Business Managers Researchers Business Managers Designers Researchers Designers Researchers

15. Best Practices: Marketing University IP What to Outsource? • 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

16. University Case Study 1 • 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%

17. University Case Study 2 • 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

18. University Case Study 3 • 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

19. Key Benefits of Good Outsourcing • 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

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

21. Thank you! Questions and Comments? anurag.bist@ashmarip.com (949) 929 1022 (Cell)