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Technology Transfer University of Colorado Denver Invention Evaluation and Triage at the University of Colorado Rick Silva, PhD Director

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Presentation on theme: "Technology Transfer University of Colorado Denver Invention Evaluation and Triage at the University of Colorado Rick Silva, PhD Director"— Presentation transcript:

1 Technology Transfer University of Colorado Denver Invention Evaluation and Triage at the University of Colorado Rick Silva, PhD Director (303)

2 David Allen AVP Technology Transfer Kathe Zaslow Director of Operations IP/Patent Group (3 FTE) Finance and Administration (2 FTE) IT/Database (1 FTE) Tom Smerdon Director, Licensing and New Business Development Kate Tallman Director UCB/UCCS UCBoulder Team 3 Licensing Assoc 1 Admin Asst Rick Silva, Director UCD UCD Team 3 Licensing staff ¾ Admin asst.4 Marketing assoc CU System TTO Organization FTE Interns and paid contractors 5 Management group FTEs 6 Licensing professional FTEs 8 ¾ Admin FTEs

3 Background and volume

4 Quick asset identification is important Background and volume

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

6 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

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

12 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

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 UC Denver , $2168 per disclosure received, CU System , $1683 per disclosure received

14 Triage If we dont/cant own it (or have an interest), No-Go o Passive ownership is acceptable, often desirable o We wont subsidize sponsor owned patent filings o Somebody has to work on it going forward Roadmap the case from the start o Define enabling experiments at filing o Ensure scientific commitment & inventor ownership o Define the value proposition and addressable market early, it will guide the development plan or business plan o Ensure milestones are clear and funded (or funding planned) Define the exit strategy o Will conversion of provisional depend on development funding and/or POC? Enablement? Licensing? Mkt interest? o Give inventors homework, shared ownership, shared commitment o Try to stick to the exit discipline

15 Receive disclosure Accept disclosure Data incomplete- On Hold Commercial feasibility analysis Startup -or - licensing 4 months Release rights to inventor Advise Inventor (s) of commercial plan Release rights to inventor Agreement clarifying rights Notification of other owners Rights Determination Review of Related contracts LegalMarketIPTechnical Internal processing Internal Analysis Create case add to database Assign manager External Development Marketing Business plan Release rights to inventor Management Term sheet Term Sheet/ Negotiation Patent Filing Interest? No Yes Director Case Manager Mkt Manager Tech InternJD Intern Domain Advisors/Partners Assign Grade/classification Admin Triage - Life Cycle Mgt

16 Triage Monitor the filter, fine tune it

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 Formulate 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 Peoples 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 Thanks

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