Technology Assessment Committees – Choosing the Optimal Structure

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Presentation transcript:

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

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

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

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

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

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

TACs: Patenting Decision Criteria Organizational reason for patenting Patenting budget

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

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

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?

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?

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

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

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