Maximize Your TTO’s Patent Budget Brendan Rauw and Jeff Sears

Agenda Topics Operational Choices: OHSU’s Perspective Management of OLC: Columbia’s Perspective General Advice Questions

Presenters Brendan Rauw, MBA, CLP Vice President, Technology Transfer & Business Development Oregon Health and Science University Jeffrey M Sears, PhD, JD Associate General Counsel and Chief Patent Counsel Columbia University Introductions Overview of Columbia and OHSU approaches

OHSU Patent Expenses and Reimbursements Patent Team Established

Senior Patent Associate OHSU Patent Team Senior Patent Associate Roles/Duties/Responsibilities Prior Art Analysis Patent Strategy Patent Drafting, Prosecution and Maintenance Managing Outside Patent Counsel Patent Decision Making Process Collective decision making process with licensing associates and leadership Clear “Go / No-Go” decision criteria Team meetings with the inventors Patent Associate Patent Associate Docketing Specialist

OHSU Disclosures and Patent Filings Number of filings initially fell, but are now at pre-2012 levels Patent Team Established

OHSU Lessons Learned Reduced law firm engagements from >30 firms to ~12 Successful in reducing overall patent costs Approximately 500% ROI on operational investments Additional benefit: reduced workload on licensing associates Approximately 50% increase in disclosures since FY2013 However, there were short-term and long-term costs Increased personnel budget Operational disruption during transition Internal and external buy-in is critical in transition Process matters Clear decision criteria Increased transparency Ongoing communication with inventors Final thought? The scale and scope of the institution matters

Columbia Approach (1) Evaluate which projects and/or tasks can be best handled in-house and which ones should be outsourced Take an executive approach You can handle only a small number of matters with confidence and quality You need a filter! Handle only the projects and/or tasks that fall in the filter Some sample filters Rely upon OLC to handle the rest Outsource and defer to OLC on routine matters Example: An approach to handling patent filings

Columbia Approach (2) Improving patent portfolio management for cost savings If you are making the same filing decisions, how do you spend less? The myth of billing rates Volume leverage Alternative fee arrangements Both you and your OLC have businesses. Make cost savings work for both of you! My goal is NOT to have my OLC write-off time My goal is to buy quality pages, just fewer of them

Best Practices for Managing OLC Find an OLC whom you trust, build a relationship, and make them a partner in the process Relationships and loyalty matter Avoid RFPs! You need a process for identifying cost overruns OLC needs to know you are watching the bills a sample approach for asking for a reductions Be transparent – when you set a flat fee, explain the rationale behind it and the process for exceeding it Require OLC to be pro-active in requesting exceptions

Working More Efficiently With OLC Do not micromanage! Train OLC, and then let them do their job Make sure OLC understands that they work for you Encourage OLC to “ring the bell” early! Notice pleading Be fair and consistent Criticism is necessary But do not forget praise! Do NOT use artificial deadlines If you need it, you need it But you want OLC to want to work for you!

How Do The Approaches Work in Practice? Prosecution management process Deadline charts and centralized periodic decision meetings Managing interactions with licensees and attorneys Lead, follow, or get out of the way! Ensure OLC knows that you are the client Beware of gamesmanship!

General Advice There is no one “right” model Consider institutional size, scope, budget, operational structure If you are open to considering your filing decisions, how do you do it? Talk to your peers - benchmark Review your licensing success in various tech areas Patents have 20 year terms If the patent ever has any value, it will be litigated Savings today will be long forgotten Tradeoff is scope of the patent vs cost Faculty drive the process – keep them engaged!

Questions?