Presentation on theme: "Rick Silva, PhD Director (303) https://www.cu.edu/techtransfer/ "— Presentation transcript:
1Rick Silva, PhDDirector(303)https://www.cu.edu/techtransfer/Technology Transfer University of Colorado Denver Invention Evaluation and Triage at the University of Colorado
2CU System TTO Organization 5 Management group FTEs6 Licensing professional FTEs8 ¾ Admin FTEs10-12 FTE Interns and paid contractors
3Background and volumeWe 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.
4Background 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.
5Background and volume * * On pace for 24+ exclusive licenses and options in the current fiscal year
9Guiding PrinciplesEffective triage, life cycle, and portfolio management must be systematic and transparentPrioritize resource allocation objectively, have transparent criteriaA filter reflecting “TTO Pragmatism,” with a bit of investment disciplineBuy time and let the market pick winnersLeverage external expertise & bandwidth to add valuePrune- fail early, fail cheaply where possibleAvoid the black box syndrome
10Customer Service Shared interest, shared responsibility Plot the course early, divide homework assignments, reevaluate in 9 monthsAdvancement is milestone and deliverable drivenTry to make it work, solve problems, get to yesWe are not here to say no unless we have to, let the market decideValidate promising opportunities and assets through POC funding or partnering
11Portfolio ManagementMarketing 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.
12Portfolio ManagementPortfolio strategy is critical to resource allocationSocietal impact is a major subjective outcome we strive to achieve.Therapeutics are the most scalable of our technologies froma clinical impact and economic development perspective.Our resource allocation is leverage driven, i.e. follow-on investmentis a key outcome we monitorThe 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.
13Triage Reduce legal costs Distinguish discoveries from inventions Tee it up, draft claims & embodiment outlineDescribe the product (i.e. a drug, method of Tx)Are near term development and proof points funded?Leverage relationships w/ law firms, volume pricingDistilling 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
14Triage If we don’t/can’t own it (or have an interest), No-Go Passive ownership is acceptable, often desirableWe won’t subsidize sponsor owned patent filingsSomebody has to work on it going forwardRoadmap the case from the startDefine enabling experiments at filingEnsure scientific commitment & inventor ownershipDefine the value proposition and addressable market early, it will guide the development plan or business planEnsure milestones are clear and funded (or funding planned)Define the exit strategyWill conversion of provisional depend on development funding and/or POC? Enablement? Licensing? Mkt interest?Give inventors homework, shared ownership, shared commitmentTry to stick to the exit disciplineI 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.
15Triage - Life Cycle Mgt Internal processing Internal Analysis ReceivedisclosureData incomplete-On HoldAcceptdisclosureCreate caseadd to databaseAssignmanagerAssignGrade/classificationInternalAnalysisRelease rightsto inventorRightsDeterminationReview ofRelated contractsNotification ofother ownersAgreementclarifying rightsCommercialfeasibilityanalysisLegalMarketIPTechnicalRelease rightsto inventorThe 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 monthsBusiness planManagementTerm sheetStartup-or -licensingPatentFilingAdviseInventor (s)of commercialplanMarketingInterest?YesTerm Sheet/NegotiationDirectorExternalDevelopmentCase ManagerMkt ManagerRelease rightsto inventorNoTech InternJD InternAdminDomain Advisors/Partners
16Triage 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.
17Prioritize- Active Mgt A = Term sheet and transaction pendingB = First priority for marketing & patent $C = Viable, second priority marketing & patent $D = Viability issues, candidate for abandonmentU = Unresolved ownership, enablement, viability concerns (undecided on patenting)Senior Mgr.AssocManagerDirector
18Prioritize- Passive Mgt E = Exclusively committed, not in playN = Nonexclusively committed, still in playM = Tangible Materials and ToolsO = Managed by coownerX = Released, Abandoned, or Inactive
19Buying Time Refile undisclosed provisionals Wait to regularize as long as possibleUtilize penalties for expensive filings at the marginsRolling divisionalsKeep cheap keepersNationalize crown jewels, top 5-10%Find subsidies through optionees
20Leverage“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.
21LeverageAdvisory panels are customers, buyers, collaborators and advisors. Most importantly, they can open doors.Let the market guide us: use feedback from future partnersTake advantage of QUALITY incubation infrastructureIf you have POC funds, let advisors push projects forward with “OPM” (Other People’s Money)
22Prune the portfolioLet the market decide about value and merit, assume nothing, externalize feedbackAvoid 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 NoGosBuild consensus about abandonment decisionsJustify abandonment with data and rationaleChanging your mind is ok
23Technology Transfer University of Colorado Denver Invention Evaluation and Triage Rick Silva, PhDDirectorhttps://www.cu.edu/techtransfer/Thanks