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

2. AshmarIP 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

3. AshmarIP www.ashmarip.com 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

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

5. AshmarIP www.ashmarip.com US Universities IDF Data Growth AUTM Data

6. AshmarIP www.ashmarip.com University Disclosure Snapshot - 1 AUTM Data

7. AshmarIP www.ashmarip.com University Disclosure Snapshot - 2 AUTM Data

8. AshmarIP www.ashmarip.com Problem for University TTOs – Fact Lite Summary of Licensing Revenues AUTM Data

9. AshmarIP www.ashmarip.com 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

10. AshmarIP www.ashmarip.com –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?

11. AshmarIP www.ashmarip.com 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

12. AshmarIP www.ashmarip.com 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

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

14. AshmarIP www.ashmarip.com Unique Insights Researchers Business Managers Designers Researchers Business Managers & Strategist Designers Researchers Patent Landscape Example

15. AshmarIP www.ashmarip.com 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?

16. AshmarIP www.ashmarip.com 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

17. AshmarIP www.ashmarip.com 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 University Case Study 2

18. AshmarIP www.ashmarip.com 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 University Case Study 3

19. AshmarIP www.ashmarip.com 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

20. AshmarIP www.ashmarip.com 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

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