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Technology Assessment Committees – Choosing the Optimal Structure

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Presentation on theme: "Technology Assessment Committees – Choosing the Optimal Structure"— Presentation transcript:

1 Technology Assessment Committees – Choosing the Optimal Structure
Varda N. Main Director, Technology Licensing Office LES 2004 Annual Meeting Boston, MA October 20, 2004

2 Technology Assessment Committees (TACs): Different Purposes
Patenting decision for Freedom to operate Licensing and other forms of commercialization Prestige

3 TACs: Different Structures
Membership Internal External Avoiding conflicts of interest Protecting competitive advantages/confidentiality Internal and external Technical Business Technical and business

4 TACs: Membership Who needs to be involved? Subject matter experts
Decision makers

5 TACs: Meeting Format Periodicity: Presenters: Monthly Quarterly
As needed Presenters: Inventor Technical Champion IP Attorney Licensing Executive Business Development Manager

6 TACs: Patenting Decisions
Provisional patent applications Regular US applications PCT applications Foreign applications Maintenance decisions

7 TACs: Patenting Decision Criteria
Organizational reason for patenting Patenting budget

8 TACs: Patenting Decision Criteria
Pre-reading Invention disclosure Marketability assessment Prior art review Peer reviewed literature Patent literature Subjective/objective Business decision; not decision on scientific worth Ensuring consistent weighting factors Invention evaluation forms

9 Invention Evaluation Forms
Simple and short Complex and in-depth Background information Weighted questions Minimum score to pass Types of questions will vary with the organization

10 Invention Evaluation Forms: Typical Questions
Is the invention patentable? Any statutory bars? Are there any encumbrances on this invention? Does the invention incorporate any third party IP? If a patent issues, will it likely be strong and defensible?

11 Invention Evaluation Forms: Typical Questions
Does the invention fill a market need? Single or multiple market applications? What is the size and growth potential for this market? What will it take to get the invention to market? What are the competitive advantages of the invention? Features? Cost? What are the buying keys of this marketplace? The barriers to adoption? Regulatory requirements? Standards requirements? How will money be made from this invention? What is the business proposition for this invention? Where does this invention intersect the value chain?

12 TACs: After the decision (sometimes)……
……………… appeals process Did the inventor understand the decision criteria in advance?

13 TACs: In Summary Timely patenting decisions
Decision criteria supports organizational mission Decision criteria clearly understood by all

14 Thank you…….. Varda N. Main Director Technology Licensing Office
Rochester Institute of Technology (585)

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