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

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

3. 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

4. OHSU Patent Expenses and Reimbursements
Patent Team Established

5. 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

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

7. 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

8. 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

9. 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

10. 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

11. 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!

12. 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!

13. 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!

14. Questions?