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Reinventing Technology Transfer

OTT TMP
by

Emory Tech Transfer

on 27 November 2013

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Transcript of Reinventing Technology Transfer

Desk Audit process for licenses
Better decisions together
Commercialization evaluation report (CER) for all new disclosures
Align CER process with patent decisions
Monitor all active licenses
Current Emory Best Practices
Staffing
Senior Technology Scout – walk the halls
Director License and Patent Strategy – stay at the table with your licensees
Director of Operations – usually overlooked In the quest to triage and patent technologies
Dedicated MTA Specialist – maximize deal flow
Use Consultants/Volunteers To Build Capacity
Internship Program – triage inventions
Student/Consultant Graphic Design/writing – market & promote
Consistent Case
Management Initiative
Consistent Case
Management Initiative
Moving to Market Initiative
Emory Patent Group
Beyond the Bench Initiative
Beyond the Bench Initiative
Emory Device Initiative
Consistent Case
Management Initiative
As research funding rises, so does the number of new discoveries and innovation disclosed to OTT. Ensuring that each innovation is managed in a consistent and efficient manner given this rise is a top priority of the office.

OTT has embarked on a series of programs geared towards streamlining and improving the disclosure review process. Included in our Consistent Case Management (CCM) Initiative are:

The creation and integration of a new commercialization evaluation report (CER) and team review process.

An operational site visit program set on gathering best practices from other well-known university’s programs.

An upgrade to our internal database system to enhance and facilitate electronic record storage.

An upgraded license compliance program, focused on improving post-license compliance.
Moving to Market Initiative
Emory’s OTT views the marketing of both individual technologies and of the office as playing an increasingly critical role in moving technology from the bench to the bedside. Under our Moving to Market Initiative (MMI), OTT has initiated a multi-pronged approach to increase our reach within the biotech and life sciences communities.

OTT has opened up new communication channels, expanding into the social media realm.

Added a new technology marketing program, managed by a dedicated marketing associate.

Tripled the number of venture capital and company visits to OTT.

Implemented a new conference strategy, sending our staff members out to the leading industry conferences with the intent of making connections and building the reputation of Emory as a preferred partner with which to work.
Emory Patent Group
The Emory Patent Group (EPG) was created as an innovative strategy to address budgetary constraints that had begun to impact our ability to effectively patent new technologies, with the goal of patenting all of our unlicensed technologies using in-house counsel. Only a handful of TTOs have ever attempted to create an in-house patent department, and those that do have such a group treat it additional support rather than replacement of outside law firms.

In its current incarnation, the EPG is a team of two attorneys and a paralegal that provides support in three key areas: a) patenting in the biopharmaceutical space; b) patenting in the medical device and healthcare IT space; and c) administrative patent support for our intellectual property portfolios. Together, the EPG staff boasts over three decades of experience in filing and prosecuting patent applications, both for law firms and in biopharmaceutical companies.

In its first year, the initiative has been wildly successful by both achieving its budgetary goals and filing a record number of new patent applications, exceeding the previous record by over 30%. The EPG is consistently praised by our constituents for its abilities and accessibility, and has allowed the office to offer more in-depth analyses of our intellectual property assets for commercialization.
This office views connecting and training the next generation of scientists and technology transfer professionals as a valuable enterprise. Building upon the success of our existing internship program, our Beyond the Bench Initiative (BBI) seeks to expand our internship opportunity in both breadth and depth.

Included in the BBI program is the addition of a new intern track focused on intellectual property and integrated with the EPG. At the same time the office has spent considerable effort upgrading the formal education component for our interns through a series of boot camps focused on technology evaluation, marketing, and intellectual property and a complete overhaul and review of our written training materials. The office also continues to explore ways of increasing our recruiting efforts and grow the program so we can provide educational opportunities to more students looking to transition out of academia.
Informing Investigators Initiative
The investigator is at the core of what tech transfer does spinning out innovations, improvements, and discoveries. Reaching out and communicating with those investigators, providing them with information and education concerning the technology commercialization process is the focus of I3 (i-cubed - Informing Inventors Initiative).

Included in this initiative are projects and programs aimed at both improving communication and education with our faculty members.

Launch of a web-based disclosure portal to increase the ease and speed of the disclosure process.

The creation of an “Inventor’s Handbook,” and improvement of our website materials.

A series of both patent and small business seminars.

A commitment to meeting with the Deans of each school and Chairs of each department we contact.

An outreach program connecting and familiarizing department administrators with our MTA program.
Emory Device Initiative
Recognizing the growing number of medical device technologies OTT encounters, our Emory Device Initiative (EDI) encompasses programs and resources dedicated to expanding Emory’s reach within this field.

The first step taken under EDI was to hire and experience medical device attorney in house to facilitate and improve our service to surgeons, and other medical device focused investigators.

Beyond this, the office is in the process of exploring new ways to support the prototyping of devices, and has compiled a group of experienced medical device advisors to access, acknowledging that the challenges faced in the medical device arena differ significantly from that of pharma or biotech.
Systematic marketing of all approved technology
Systematic tech brief generation & mailing and posting
Increased use of social media
Conference strategy to increase visibility and build network
Moving to Market Initiative
Better IP protection
Creation of in-house patent group
Draft, manage, and prosecute all patents for unlicensed techs in-house
Better alignment between IP protection and budget goals
Emory Patent Group
Build OTT capacity
Engage more volunteer interns
Expand volunteer internship opportunities to include patent group & start up support
Create a business mentoring advisory board
Beyond the Bench Initiative
Transparency in technology transfer
Startup boot camp for Emory faculty
Craft an educational master plan
Improved inventor materials for website
Informing Investigators Initiative
Capture more innovation
Creative strategies for funding prototyping
Build pool of informal advisors
Emory Device Initiative
Beyond the Bench Initiative
Reinventing the Technology
Management Process

Focus visits on operational elements rather than licensing or start-up best practices.
The Kaufman Report emphasizes the need to assure accountability of operational practices
Make improvements based upon findings.

Operational Site Visit Program
Current Emory Best Practices
Programmatic
Staff incentive plan - focus on critical activities
Group patent decisions on new filings - better decisions with knowledge of the entire portfolio
Semi-annual Emory Breakfast Club technology presentations - never stop selling
Annual Celebration - tenure & promotion does not reward
New Best Practices
Programmatic
Annual review of ALL licenses
Align invention disclosure processing with tech scout
Renew commitment to faculty seminars – even if attendance is low
Robust marketing program – consistent& persistent marketing
OTT responsible for re-invoicing licensees and check receipt
Group patent decisions on ALL patent decisions
Track and enforce estimates on patent costs
Nominal cash bonuses for CLP/CRA certification
Promote staff credentials
New Best Practices
Staffing (no new hires)
License Compliance Manager - dedicated focus towards managing licensee performance
Dedicated Marketing Manager – can’t rely on licensing associates to find the time
Emory Patent Group – very rare, brings patent prosecution in-house
Emory University
Office of Technology Transfer
1599 Clifton Rd, NE, 4th Floor
Atlanta, GA 30322

Phone: (404) 727-2211
Fax: (404) 727-1271
Email: ott-web@emory.edu

Reinventing the Technology Management Process
Full transcript