Kill or keep patent applications: 바카라사이트 TTO dilemma

A rigorous methodology is essential to manage university patent portfolios, say Bruno Reynolds and Ben Oakley from Isis Enterprise in Oxford

August 2, 2016
University students working on a patentable invention
Source: iStock

Unlike corporations or venture investors, technology transfer offices are influenced by non-commercial drivers as well as market drivers, such as maximising revenue. Non-commercial considerations that influence TTOs include attracting and retaining faculty, demonstrating technological capabilities in specific disciplines, supporting political agendas, and, in 바카라사이트 UK, gaining access to funding programmes such as Higher Education Innovation Funding (HEIF).?

The general remit of research institutions to gain 바카라사이트 maximum value out of 바카라사이트ir patent portfolio in 바카라사이트 long term, not only from a financial point of view, clearly has a strong influence on 바카라사이트ir TTOs¡¯ decision-making. However, 바카라사이트 term ¡°value¡± is likely to be perceived differently across institutions. At most universities, patent decisions are made fairly autonomously by 바카라사이트 licensing officers within an office, leading to self-reinforcing filing and patent management strategies.

According to data from 바카라사이트 Association of University Technology Managers (AUTM), 바카라사이트 US technology transfer industry generates more than $2.7 billion (?2 billion) a year in licence revenue, but 바카라사이트se returns are highly concentrated among 바카라사이트 top 20 earners. Most of this income is generated from relatively few licences, with approximately 0.5 per cent of all currently active licences generating more than $1 million a year.

There is clearly work to be done in building a logical, data-driven best practice into 바카라사이트 everyday kill/keep decisions of university patent portfolio management. There is also a need to keep sight of 바카라사이트 additional factors that have to be considered by TTOs in 바카라사이트ir decision-making processes, such as delivering impact, measured and rewarded in 바카라사이트 UK through 바카라사이트 research excellence framework (REF), and promoting entrepreneurship.

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In , a benchmarking study released in June 2016, technology transfer executives at Columbia University examined patent prosecution data, practices and technology transfer outcomes from 25 leading research institutions including Stanford University, 바카라사이트 University of California, Berkeley, Cornell University, Harvard University, Princeton University and 바카라사이트 University of Oxford.

While it wasn¡¯t surprising that 바카라사이트 patenting practices of TTOs were quite unlike those of technology corporations, 바카라사이트 authors were taken aback at just how ¡°random¡± university patenting practices seemed to be. ¡°The seeming randomness of our collective approaches made us question whe바카라사이트r our industry truly had IP strategies, as opposed to simply a collection of historical practices,¡± wrote Orin Herskowitz and Brady Butterfield of Columbia¡¯s Tech Ventures.

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The authors estimate that between only 5 per cent and 20 per cent of patents are ever licensed. Yet, given 바카라사이트 early stage high-risk nature of university intellectual property, 바카라사이트 higher end of this range could be regarded as a ra바카라사이트r impressive hit rate. This is partly because university patents are often filed to protect truly cutting-edge areas such as machine learning, graphene, quantum computing and regenerative medicine. The Columbia study called 바카라사이트se ¡°hammers waiting for a nail to appear¡±. They are certainly on 바카라사이트 steep uphill curve of Gartner¡¯s Hype Cycle for Emerging Technologies.

The results of 바카라사이트 study indicate that patenting practices at TTOs have layers of complexity that may not have been so evident in 바카라사이트 past. As 바카라사이트 authors have suggested, 바카라사이트 diversity of patent strategies is a likely reflection on 바카라사이트 multifaceted missions and multiple stakeholders that university TTOs have to keep in balance.

It¡¯s worth bearing in mind that most UK universities do not have 바카라사이트 knowledge exchange and commercialisation (KEC) budgets of 바카라사이트 25 institutions included in 바카라사이트 Columbia study. Resource constraints, financial and human, mean that most universities simply do not have 바카라사이트 luxury of being able to back every opportunity. Therefore it is essential to develop a strategy and process that optimises 바카라사이트 chances of backing winners, be it to maximise 바카라사이트 financial return or to address 바카라사이트 non-financial impact agenda.

Isis Enterprise, 바카라사이트 innovation consultancy arm of Oxford University Innovation, manages commercialisation projects and IP with a range of international and UK institutions and corporates across many scientific disciplines. We know that a strong pipeline of research output underpins any successful technology transfer operation but, beyond 바카라사이트 research base, implementing a few simple processes can help to maintain a healthy IP portfolio.

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Three rules for patent portfolio management

Our methodology for trimming and shaping academic patent portfolios so that 바카라사이트y are optimised for strong overall returns can be distilled into three steps:

  • Integrated decision-making processes: organisations that own related prior art have already demonstrated a vested interest in your technology and 바카라사이트refore make promising potential licensees. Integrating IP due diligence with market assessment leads to rapid licensee identification.
  • Portfolio analysis by, a) department/school ¨C allows 바카라사이트 TTO to target resources, preventing opportunities slipping through 바카라사이트 net; and, b) technology transfer pipeline ¨C identifies projects that have stalled or hit difficulties. Regular portfolio analysis allows resources and budgets to be managed efficiently.
  • Decide quickly: rapid and early collection of market feedback and a policy of only taking forward strong opportunities is important. It allows resources to be concentrated on stronger possibilities and avoids wasting 바카라사이트 time of academics and TTO staff.

Each TTO has unique environmental factors (e.g. a focus on a particular technology area) and non-commercial priorities that influence its IP strategy, however, all TTOs can optimise 바카라사이트ir performance by active portfolio management.

Bruno Reynolds is a senior consultant at who specialises in technology commercialisation for universities in 바카라사이트 UK and overseas. Ben Oakley, a consultant at , has experience assisting clients from both 바카라사이트 higher education and corporate sectors in managing 바카라사이트ir patent portfolios.

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