Invention Disclosure Analysis / Triage

Overview Decision making Components of an invention disclosure Review process Qualitative factors – art vs. science Tools / frameworks

Decisions, decisions The simplified process Patent vs. punt A more mature tech transfer process involves technology development Address key questions investigators need to answer before we can patent and/or license Identify key projects that will create value inflection points for promising technologies Locate financing / management to further develop technology

Components of a new disclosure Named inventors Invention title Description Patentability bars Disclosure Offer for sale Funding

Review process Ownership / rights assessment – Do we own it? Commercial feasibility – Will people buy it? Patentability – Can we protect it? Technical feasibility – Does it work? Legal constraints

Ownership / rights assessment Factors driving ownership People - Who did the work? Financing – Who paid for the development of the technology? Location - Where was the work done? Were proprietary tools used? Biomaterials (MTA’s) Code Funding sourceImplications Univ. of ColoradoNo strings Federal governmentBayh-dole restrictions apply Foundations / Associations Typically no licensing restrictions but royalty kick-back sometimes required Industry sponsored research Low probability of ownership; careful analysis of SRA and/or consulting agreements

Patentability Will inventors own disclosure, sale or use bar patentability? To what extent has the invention already been described? (i.e. is it novel) Patents Literature Obviousness - TSM test, an invention is obvious (and therefore unpatentable) only if there is a teaching, suggestion or motivation to combine prior art references. Incremental improvement vs. disruptive technology? Anticipated scope of claims Blocking patent vs. an asset to induce investment

Commercial feasibility Opportunity or need Market potential Growing vs. declining markets Market structure What is the problem being solved? What is the product and what the applications? Target market Unique benefits / value proposition Competitive analysis Risks Does the added value exceed the cost of development? Who are the target licensing partners? How many degrees of freedom are there?

Technical Feasibility Stage of development Conception Reduction to practice What data exists that demonstrates it works? Estimated time and money expended? Expertise, resources (funds) available for further development?

Other Legal Constraints Regulatory path Policy Reimbursement

Art vs. Science – qualitative drivers Inventor motivation Commitment to technology (focus) Inventor reputability Interest in the market space Politics

Assessment tools Tech assess Case summary template

Resources ResourceUseLocation Micropatent, Lexis-NexisPatent searchPaid databases – see licensing manager for access Pubmed, BLAST, GenbankSearch scientific journals, genetic sequences Frost & SullivanMarket research reports for IT and healthcare CU business school web site) CRISPSearch NIH grantshttp://crisp.cit.nih.gov/crisp/crisp_q uery.generate_screen