1. 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. 2 Technology Assessment Committees (TACs): Different Purposes u Patenting decision for –Freedom to operate –Licensing and other forms of commercialization –Prestige

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

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

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

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

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

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

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

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

11. 11 Invention Evaluation Forms: Typical Questions u Does the invention fill a market need? –Single or multiple market applications? u What is the size and growth potential for this market? u What will it take to get the invention to market? u What are the competitive advantages of the invention? –Features? Cost? u What are the buying keys of this marketplace? The barriers to adoption? Regulatory requirements? Standards requirements? u 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. 12 TACs: After the decision (sometimes)…… ……………… appeals process Did the inventor understand the decision criteria in advance?

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

14. 14 Thank you…….. Varda N. Main Director Technology Licensing Office Rochester Institute of Technology (585) 475-2986 vmain@mail.rit.edu www.rit.edu/tlo