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Rick Silva, PhD Director (303) https://www.cu.edu/techtransfer/

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Presentation on theme: "Rick Silva, PhD Director (303) https://www.cu.edu/techtransfer/ "— Presentation transcript:

1 Rick Silva, PhD Director (303) https://www.cu.edu/techtransfer/ Technology Transfer University of Colorado Denver Invention Evaluation and Triage at the University of Colorado

2 CU System TTO Organization
5 Management group FTEs 6 Licensing professional FTEs 8 ¾ Admin FTEs 10-12 FTE Interns and paid contractors

3 Background and volume We classify inventions into “pipeline categories” and market in a focused manner into corresponding industry channels. Our portfolio makeup for the cohort of disclosures from last Fiscal Year is attached on the next slide.

4 Background and volume Quick asset identification is important
The table shows allocation of proof of concept funding into major biomedical technology categories (includes UC Boulder). Heavy emphasis on medical device and diagnostics and corresponding emphasis among followon investors.

5 Background and volume * *
On pace for 24+ exclusive licenses and options in the current fiscal year

6 Background and volume

7 Background and volume

8 Background and volume

9 Guiding Principles Effective triage, life cycle, and portfolio management must be systematic and transparent Prioritize resource allocation objectively, have transparent criteria A filter reflecting “TTO Pragmatism,” with a bit of investment discipline Buy time and let the market pick winners Leverage external expertise & bandwidth to add value Prune- fail early, fail cheaply where possible Avoid the black box syndrome

10 Customer Service Shared interest, shared responsibility
Plot the course early, divide homework assignments, reevaluate in 9 months Advancement is milestone and deliverable driven Try to make it work, solve problems, get to yes We are not here to say no unless we have to, let the market decide Validate promising opportunities and assets through POC funding or partnering

11 Portfolio Management Marketing collateral for our therapeutic composition. We so this for all technology categories- very effective marketing tool and time saver. This approach provides real transparency to the business community.

12 Portfolio Management Portfolio strategy is critical to resource allocation Societal impact is a major subjective outcome we strive to achieve. Therapeutics are the most scalable of our technologies from a clinical impact and economic development perspective. Our resource allocation is leverage driven, i.e. follow-on investment is a key outcome we monitor The table shows allocation of proof of concept funding into major biomedical technology categories (includes UC Boulder). Heavy emphasis on medical device and diagnostics and corresponding emphasis among followon investors.

13 Triage Reduce legal costs Distinguish discoveries from inventions
Tee it up, draft claims & embodiment outline Describe the product (i.e. a drug, method of Tx) Are near term development and proof points funded? Leverage relationships w/ law firms, volume pricing Distilling out the invention, providing subject matter for the spec, and general basis for claims allows attorney to get a headstart, and minimize facetime with inventors, thus lowering costs. Avoid churn, avoid paying for unnecessary analysis and activity (i.e. prior art search, patentability opinions, high priced amin overhead, redundant or unnecessary subject matter filings, data amendments, discussions with inventors while the meter is running. We use an engagement letter to define the parameters of deliverables and cost expectations- that drives judicious prioritization of the universe of possibel legal activity. UC Denver , $2168 per disclosure received, CU System , $1683 per disclosure received

14 Triage If we don’t/can’t own it (or have an interest), No-Go
Passive ownership is acceptable, often desirable We won’t subsidize sponsor owned patent filings Somebody has to work on it going forward Roadmap the case from the start Define enabling experiments at filing Ensure scientific commitment & inventor ownership Define the value proposition and addressable market early, it will guide the development plan or business plan Ensure milestones are clear and funded (or funding planned) Define the exit strategy Will conversion of provisional depend on development funding and/or POC? Enablement? Licensing? Mkt interest? Give inventors homework, shared ownership, shared commitment Try to stick to the exit discipline I think to some extent, TTOs need to be science driven. W/o good scientific background and a culture of science, more faculty will steer and not self-select to participate.

15 Triage - Life Cycle Mgt Internal processing Internal Analysis
Receive disclosure Data incomplete- On Hold Accept disclosure Create case add to database Assign manager Assign Grade/classification Internal Analysis Release rights to inventor Rights Determination Review of Related contracts Notification of other owners Agreement clarifying rights Commercial feasibility analysis Legal Market IP Technical Release rights to inventor The policies and process associated with cradle-to-grave IP management are very complex. This diagram and decision process is a very basic representation, we have all seen and used a similar process. Colors indicate compartmentalization of workflow. The divide and conquer approach allows us to delegate responsibility to contractors and interns more readily. Licensing Managers still have cradle to grave ownership and accountability, but division of workflow allows them to leverage. 4 months Business plan Management Term sheet Startup -or - licensing Patent Filing Advise Inventor (s) of commercial plan Marketing Interest? Yes Term Sheet/ Negotiation Director External Development Case Manager Mkt Manager Release rights to inventor No Tech Intern JD Intern Admin Domain Advisors/Partners

16 Triage Monitor the filter, fine tune it
The VC filter doesn’t look at all like this. Nor does an in-licensing shop. Be careful in the use of such principles (too robust a filter). The weeds and the fruits are difficult to distinguish at germination, let them grow a bit, fertilize.

17 Prioritize- Active Mgt
A = Term sheet and transaction pending B = First priority for marketing & patent $ C = Viable, second priority marketing & patent $ D = Viability issues, candidate for abandonment U = Unresolved ownership, enablement, viability concerns (undecided on patenting) Senior Mgr. Assoc Manager Director

18 Prioritize- Passive Mgt
E = Exclusively committed, not in play N = Nonexclusively committed, still in play M = Tangible Materials and Tools O = Managed by coowner X = Released, Abandoned, or Inactive

19 Buying Time Refile undisclosed provisionals
Wait to regularize as long as possible Utilize penalties for expensive filings at the margins Rolling divisionals Keep cheap keepers Nationalize crown jewels, top 5-10% Find subsidies through optionees

20 Leverage “Form”ulate a roadmap: use an eval form to gather info on ownership, FTO, prior art, addressable market. PhD students, postdocs, MD, JD students can all be valuable resources if well trained and mentored to help execute a well defined tech & IP eval. process. MBA students need to be utilized thoughtfully, they are usually driven by market and financial analysis. Avoid the garbage in, garbage out problem.

21 Leverage Advisory panels are customers, buyers, collaborators and advisors. Most importantly, they can open doors. Let the market guide us: use feedback from future partners Take advantage of QUALITY incubation infrastructure If you have POC funds, let advisors push projects forward with “OPM” (Other People’s Money)

22 Prune the portfolio Let the market decide about value and merit, assume nothing, externalize feedback Avoid tendency to apply a VC or in-licensing philosophy (i.e. use the wrong filter) Use market feedback to drive consensus on the roadmap and NoGos Build consensus about abandonment decisions Justify abandonment with data and rationale Changing your mind is ok

23 Technology Transfer University of Colorado Denver Invention Evaluation and Triage
Rick Silva, PhD Director https://www.cu.edu/techtransfer/ Thanks


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