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Internship Best Practices for TTOs:How Students Can Help Drive Successful Tech
Transfer
27 January 2009
2
Introductions
Lesley MillarOffice of Technology Management
Brendan RauwScience & Technology Ventures
Disclosures (FY07)
322
Patent filings (FY07)
274
Active US patents
~ 1,500
• Issued
~ 800
• Pending
~ 700
Licenses/Options (FY07)
95
Disclosures (FY07)
322
Patent filings (FY07)
274
Active US patents
~ 1,500
• Issued
~ 800
• Pending
~ 700
Licenses/Options (FY07)
95
Disclosures (FY08)
243
US Filings (FY08)
141
Active US Patents
945
• Issued
~ 528
• Pending
~ 317
Licenses/Options (FY08)
43
Disclosures (FY08)
243
US Filings (FY08)
141
Active US Patents
945
• Issued
~ 528
• Pending
~ 317
Licenses/Options (FY08)
43
3
Programs’ Background
Began June 2001 with 16 students (4 teams of 4) dealing with a backlog of over 700 inventions
Currently 9 analysts, 7 in OTM office and 2 in satellite offices
Analysts are graduate students from MBA, Law and Library Info Science
• 40 hrs per week over Summer (~12 wks)• 10 hrs per week for remainder of year (~35 wks)
Typical projects include • Screening/evaluation of new invention
disclosures• Market and industry analysis for marketing • Prior Art analysis
FY09 Budget costs are ~ $82K for 7 interns
Started in June 2006 with 4 PhD students
Currently 30+ from 360+ applications received to-date
Fellows are Columbia graduate students and post-docs who work up to 10hrs / week
• All work is done remotely
Typical projects include• Commercial assessments of new disclosures• Preparation of marketing materials• Scientific, market, or patent research• Outbound marketing / outreach
FY09 budgeted costs > $100k
The Fellows are an extremely high quality, low-cost resource
4
How Do We Use Interns?
Every disclosure is screened and outcome presented to mgt group
• Template format, ~ 10 hrs per screening
Basis for future marketing/leads
Provides record of decision
Provides background info for ‘no go’ decisions with faculty
Ensures consistency in approach
Quality control mechanism for office
Invention Screenings Other Projects
Filling out invention disclosures for faculty
Marketing plans
Patent porfolio/claims summaries
Attend faculty seminars, identify new disclosures
Participate in OTM outreach
Help recruit new interns
Future Work• NDA’s• MTA’s • Marketing activities direct contact
5
How Do We Use Interns?
Technology Assessments Research Marketing
Preparation of non-confidential disclosures
Identification of prospects and contact information
• Can be time-consuming
Contacting potential licensees via email
Maintenance of a customer relationship management (CRM) system
‘Go to’ source for research questions, including:
• Company information• Market size• Clinical pipelines• Royalty rates• Prior art
Provides useful starting point for a variety of projects
• Business plans• Presentations• Seed fund proposals• Assertion opportunities
Standard format for every new disclosure
Used as a briefing document for bi-weekly intake/ triage discussions
• Primary source of info used by senior management
Shared with faculty• Shows evidence of work• Means to engage faculty on
potential challenges / issues
Reference point for future
6
Invention Assessment / Screening Components
Technology Overview• Non-enabling Description• Features and Benefits• Applications
Intellectual Property Analysis• Potential Prior Art • Patentability• Overall IP Strength
Business Issues• Market Analysis
–Size, structure, potential licensees, and potential competition
• Market Potential• Commercialization Issues
–Level of development, ease of implementation, and timing
Non-confidential marketing abstract
Technology Details
Potential Applications
Market Overview
Competition & Companies
Key Commercialization Challenges
Profiles of Key Companies
Patent & Publication Search Results
7
Recruiting is done on an as-needed basis, generally each semester• Depends on demand for projects and intern attrition• Advertised by emails to departments, flyers on campus, and word-of-mouth
Key selection criteria Rationale• Academic performance Smart people will figure it out• Scientific background Mixed success with MBA students w/o PhD’s• Commitment Heavy investment in training and coaching• ‘Real world’ experience Provides useful skills and perspective
Selection approach• Resume screen• Interview• 4-week trial period
STV has received 360+ applications to-date, and maintains of selectivity ~ 10%
Recruitment & Retention
8
Recruitment & Retention
Information sessions, career services, flyers, email, word of mouth
Skills- scientific background, business experience/understanding,
Selection process- resume screen, case study and interview
Rationale- have to be able to work under pressure, need to understand science to the extent required to make a business decision, need to be able to work as part of a team, no previous IP or licensing experience required
Pay $18.50- 19.50 per hour
Hours submitted bi-weekly
‘At will’ employees, but have not had attrition problems
9
Training & Resources Provided
3-week training period sets standards, expectations
Intern Handbook- a ‘go to’ source for everything conceivable
Use prior years interns to train and mentor- 2 year plan for one intern
Have ongoing training/seminar sessions through summer – access to company CEO’s, VC’s, local entrepreneurs, faculty, attorneys etc.
Templates heavily used
Tools and resources• Access to myriad of services via university library- Hoovers, Frost and Sullivan, etc.• Delphion• Knowledge Express
10
Training & Resources Provided
Initial ½-day Training Session• Introduction to technology transfer• How to approach typical projects• Primer on intellectual property
Mentorship from experienced Fellow
Templates and examples
Reference guides• Company research• Patent research• Market analysis
Ongoing workshops• Patents 101• Assertion analysis
Training Tools & Resources Provided
Knowledge Express (site license)
Frost & Sullivan (Market Engineering)• Total Healthcare• Telecom, Wireless, Network & Systems• Semiconductors• Alternative Energy• Environmental Management, Water and
Wastewater• Specialty & Fine Chemicals
Boliven (Free)
Hoovers (Free, through libraries)
11
Workflow Management
Intern Coordinator manages assignments• Uses simple excel spreadsheet tracking tool
Technology Manager reviews progress and output and suggests changes, etc.
Completed screenings are presented at weekly management meeting for concurrence of decision
Screenings archived on IPP database all background material held on server
Agendas for Management meetings show all current screenings, disclosures received during week, outstanding screenings, progress on licenses, etc.
12
Workflow Management
Fellows are managed by experienced Senior Fellows• One manages schedules, assignments and administration• One manages quality control (QC) and program development
Fellows are given assignments on a weekly basis• One-week turnaround expected (e.g., Thursday-Thursday)
Assignments and files managed through secure, online collaboration tool
After QC, completed projects are emailed to client and centrally archived
Fellows are paid on an hourly basis• Each assignment has a standard number of hours (generally 4-5 hours each)• Hours are self-reported every two months
13
Programs’ Impact
Low-cost mechanism to manage 80% increase in inventions since inception
Can deliver commercialization decisions within 8 weeks to faculty
New elements of program add further value to faculty
• IP mining • Satellite programs for specific client needs
Allows Technology Managers to focus on marketing and licensing activities
Real career changing experience for most students
Have analyst alumni in tech transfer offices throughout US and Canada
For TTO…
… provides objective analysis for patenting decisions… frees licensing officer’s time for other tasks
… demonstrates efforts to Faculty… spreads word about STV on campus
For Researchers…
… realistic feedback on commercialization challenges… resource for business plans and proposals
… gets many more technologies in front of companies
For Students…
… insights into commercializing new technologies… training & exposure to careers outside academia
… builds resume and opens doors
14
Key Challenges and Risks
Successfully recruiting and retaining the best talent• Success – and time commitment – crucially depends on quality of recruits• Lapse in recruitment could adversely affect organization dependent on intern services
Training and intern development• Most students are not initially familiar with the commercial environment or IP
Negative reactions from faculty about students involvement• Concerns over capability, confidentiality, and conflicts of interest of students
Commitment of students and adherence to deadlines• This is not their primary commitment! Inevitably, people leave and deadlines slip…
Export control issues when employing foreign national students• Need to be cognizant of regulations and whether a technology is export-controlled• There may be restrictions on who can review confidential information
15
Lessons Learned
Ongoing investment in recruiting needed to maintain high profile for the program• Use word of mouth, showcase on campus
Confidentiality agreements are not enough!• Students need to be regularly reminded of risks and obligations
Demonstrate high-quality work product to gain faculty and administration buy-in • Standard templates and comprehensive training materials key to consistent results
Keep on top of potential export control issues• Low probability of real issues arising
Make students feel part of the tech transfer team• Recognize their efforts, communicate regularly with them about their work, ask
office staff to help with training, include them in office events
16
Program Checklist
Defining needs – where is the problem?
Management and training – who/when/how/cost?
Space/location – on location or satellite, confidentiality issues
Costs/budget – how much, who pays, how to measure value?
Screening Process – for consistency of experience for analysts
Other projects – part of core work or not?
Continuity between programs – helps to have mentor?
Getting buy in – faculty, other licensing staff
APPENDIX
18
Illinois Screening Process
6-8 wks
19
Invention Review Meeting
• Meeting with PI, TLO, PLG and often outside legal counsel for more information
Columbia Intake Process For New Disclosures
Receipt
• Faculty submits Invention Report (IR)
• IR assigned to TLO• IR logged and forwarded
to PLG and FellowsReview
• Invention assessment completed
• Internal counsel reviews• TLO discusses with PI
Portfolio Discussion
• Bi-weekly discussion with Senior Management and all Campus TLOs
Decision
• File patent application• Market without patent• Defer decision• Do not market or patent
~2-4 weeks
~24 hrs
< 30-60 days
Email tofaculty