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