1. Dr. Ashley J. Stevens President, Focus IP Group, LLC
WIPO’s Enabling Intellectual Property Environment Project Topic 8: Initial Technology Assessment, Triage and Selection Criteria Tehran, Iran December 9-10, 2017
Dr. Ashley J. Stevens
President, Focus IP Group, LLC

2. Initial Technology Assessment, Triage and Selection Criteria
WIPO EIE Project -- Tehran
Initial Technology Assessment, Triage and Selection Criteria
Getting patents is straightforward
Hire creative faculty
Incentivize them to think of and disclose inventions
Pay your lawyers
You’ll get patents
The challenge is to get patents someone will want to license
And pay for
The Technology Assessment and Triage process is designed to identify inventions that people will want to license
It also creates the information to market the technology

3. Initial Technology Assessment, Triage and Selection Criteria
WIPO EIE Project -- Tehran
Initial Technology Assessment, Triage and Selection Criteria
This is encapsulated in the First Look Technology Assessment process
FLTA

4. Six Key Questions The FLTA process answers 6 key questions:
WIPO EIE Project -- Tehran
Six Key Questions
The FLTA process answers 6 key questions:
What are the Products or Services that will result from the invention?
How big are the markets for those Products or Services?
What are the barriers to entering the market?
How likely are we to get a patent on the invention?
How well developed is the technology?
What are the key next steps to reduce the technical risk in the invention?

5. 1. The Products and Services
WIPO EIE Project -- Tehran
1. The Products and Services

6. Evaluating Early Stage Technology
WIPO EIE Project -- Tehran
Evaluating Early Stage Technology
It’s all about visualizing the products the science leads to
Scientists send us raw disclosures:
Detailed science
Light on technology
Hints of a product
Devoid of a value proposition
Industry buys products:
User oriented
Need clear benefits
The Value Proposition
Must be competitive

7. Step #1: Focus on the underlying value of the science
WIPO EIE Project -- Tehran
Step #1: Focus on the underlying value of the science
Understand the technology
(Requires meeting with the inventor or graduate student to grasp the problem(s) the technology solves, what it does, how it does it etc…)
…having an understanding of the technology will enable you to imagine what kinds of products can be created from it (sometimes different from inventor’s vision) and to effectively communicate the value to others

8. Step # 2: Give the Customer a reason to buy
WIPO EIE Project -- Tehran
Step # 2: Give the Customer a reason to buy
Look at everything through the eyes of the Customer
The most important decision is the decision to buy
To a Customer, a product is a collection of need satisfying attributes
hurting  buy pain killer
The challenge is to match the value of the science to the Customer’s needs
The more closely aligned the need is to your technology, the stronger the value proposition

9. So, Who is the Customer? Different people in different markets
WIPO EIE Project -- Tehran
So, Who is the Customer?
Different people in different markets
The person who pays for your product/service
The person who uses your product/service
The person who recommends your product/service
The person who delivers your product/service

10. Step #3: Communicate the Value Proposition
WIPO EIE Project -- Tehran
Step #3: Communicate the Value Proposition
Briefly describe how the technology works
What is the product?
Focus on the unique scientific merits of the technology that distinguish it from what currently exists
What is the unmet need?
Avoid getting into great detail and using scientific jargon
Don’t give away all the enabling details
This analysis feeds into preparation of initial marketing materials

11. WIPO EIE Project -- Tehran
The Value Proposition
Value = Benefits received / perceived by the Customer
The Customer defines and evaluates Value

12. Value = Benefits – Costs
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The Value Equation
The Value Equation:
Value = Benefits – Costs
How can you increase Value?

13. WIPO EIE Project -- Tehran
2. Market Assessment

14. A Two Step Process Secondary research  Primary research
WIPO EIE Project -- Tehran
A Two Step Process
Secondary research  Primary research
Secondary research = OPR (Other peoples’ research)
Primary research = MR (My research)

15. Stay skeptical Assume everything already exists
WIPO EIE Project -- Tehran
Stay skeptical
Assume everything already exists
First search for things that destroy your opportunity, then search for things that support it.
A quick kill of a project early in the process is preferable to wasting time on a dead end.
People (mistakenly) tend to focus their attention on supporting evidence
Investors look for ways to say NO

16. Secondary Research Resources
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Secondary Research Resources
Google
Business School Library
Subscription Services
Frost & Sullivan

17. Healthcare Much easier than physical sciences/IT/Software
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Healthcare
Much easier than physical sciences/IT/Software
Need is more obvious
Addressable market size is easier to estimate
Range of possible products is usually constrained

18. Healthcare But… horizons vary Drugs Devices Diagnostics
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Healthcare
But… horizons vary
Drugs
Stage of development is earlier
Leads to far reaching assumptions about performance
Devices
Returns are usually much lower than drugs
Therefore risk must be much lower
Translation: 510K, replace an existing therapy, has an established reimbursement code
Diagnostics
Market is highly competitive (many solutions, many entry points…)
Incumbents require compelling data
Expectations on performance are much higher (clinical samples)

19. Physical Sciences & IT Many possible products Many possible markets
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Physical Sciences & IT
Many possible products
Many possible markets
Varying levels of competition
Value chains not clearly defined
Market data harder to identify

20. WIPO EIE Project -- Tehran
Primary Research

21. Trust, but verify Validate your assumptions Pick up the phone…
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Trust, but verify
Validate your assumptions
Pick up the phone…
Open ended questions…
What is driving the move towards molecular diagnostics?
What are the top three challenges your are facing?
What reimbursement codes do you use for xx procedure?
What are the biggest time constraints in xx protocol?
Followed by direct questions…
Would a product that is taken orally and relieves these symptoms improve the lives of your patients?
Would a diagnostic that provides instant readout from a clinical sample change your clinical practice?

22. WIPO EIE Project -- Tehran
3. Will we get a patent?

23. Patent Due Diligence Two Levels of Analysis Patentability Us
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Patent Due Diligence
Two Levels of Analysis
Patentability Us
Likelihood of getting our patent issued
Prior Art
Obviousness
Freedom to Operate
Them
Dominating patents
Will need a license to them to be able to practice our patent
FLTA
FLVA

24. Prior Art Searching One of the first steps in evaluating a technology
WIPO EIE Project -- Tehran
Prior Art Searching
One of the first steps in evaluating a technology
Are we going to be able to get the right sort of patent to protect the products we envision?

25. Criteria for patentability
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Criteria for patentability
Novelty
Utility
Non-obviousness
Prior art search

26. Mechanics of IP searching
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Mechanics of IP searching
Search engines
Search terms
Search strategies

27. Types of Searches Patent Searches Non-Patent Searches USPTO WIPO EPO
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Types of Searches
Patent Searches
USPTO
WIPO
EPO
Non-Patent Searches
"Literature”

28. What tools are used to search patents?
WIPO EIE Project -- Tehran
What tools are used to search patents?
Finding Patents
USPTO –
WIPO –
European Patent Office – worldwide.espacenet.com/
Google Patents –
Prior Smart –
Patentlens –
FreePatentsOnline --

29. Search Terms: Work with the Inventors!
WIPO EIE Project -- Tehran
Search Terms: Work with the Inventors!
Use alternative terms
e.g. “steerable needle”=“manipulator”
“nanowires” = “thin channels”
Names of competitor academic labs
PIs have best information (but still may not be enough)
Names of competitor companies
PIs, patent assignees, licensors

30. What should you expect? Pioneering invention, little related art
WIPO EIE Project -- Tehran
What should you expect?
Pioneering invention, little related art
Search as broadly as possible
Use “any field” to look for terms
Use as few terms as possible
Well-populated field, great deal of art
Design highly specific search
Use very restricted fields – abstract, title
Include as many terms as possible

31. Step 5: How far along are we?
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Step 5: How far along are we?

32. Technology Development
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Technology Development
Academic technologies are normally embryonic and untested
How well developed is the technology?
Prototype?
Beta-testable?
Non-rodent animal models?
What are the key next steps in proving the viability of the technology
What will these experiments cost?
How easy will it be to raise that funding?

33. Pulling It All Together
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Pulling It All Together
The First Look Technology Assessment

34. First Look Technology Assessment Report Content
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First Look Technology Assessment Report Content
Technology Description and Resulting Products
Potential Benefits
Potential Commercial Markets
Prioritization
Development Status of the Technology
Intellectual Property Status of the Technology
Market Interest
Competing Technologies and Competitors
Barriers to Market Entry
Recommendations
Commercial Potential Rating

35. WIPO EIE Project -- Tehran
Technology Rating
Factor Weight Score (1-5) Market Potential 25% Market Maturity 15% Current status 15% Proof of Concept 15% Competition/Barriers to entry 15% Patents 15% Total

36. Outcomes Go >3.5 Conditional Go 2.5-3.5 Conditional Kill 2-2.5
WIPO EIE Project -- Tehran
Outcomes
Go >3.5
Conditional Go
Conditional Kill 2-2.5
Kill <2

37. Process An FLTA generally takes about 10-20 hours
WIPO EIE Project -- Tehran
Process
An FLTA generally takes about hours
2 / week for full time employees
1-2 weeks for 10 hour / week students
Work with professor prior to and during FLTA
Show to professor before distribution
Allow him / her to disagree and / or correct
Enhances buy-in to negative outcome
Share with Management, Patent Committee, etc.

38. Case Study – Forsyth Institute
WIPO EIE Project -- Tehran
Case Study – Forsyth Institute
Small institute in Cambridge, MA
Affiliated of Harvard Medical School
Dental in origin
Founded in 1910 to improve the oral health of poor children in Boston
Created the concept of the Dental Hygienist
Hygienists deliver half the oral care in the U.S.
Half the dental schools in the U.S. closed
Largest recipient of funding from NIDCR
Research budget ~$23 million
Always supported faculty patenting efforts
No institutional support for commercialization

39. Case Study – Forsyth Institute
WIPO EIE Project -- Tehran
Case Study – Forsyth Institute
I started helping in 2011
Negotiated a spin-out
Agreed to chair patent committee
Recruited 2 local VC’s and 2 product development entrepreneurs
Volunteers --- uncompensated
4 two hour meetings per year
One of my students that year worked at Forsyth
Research technician in core facility
Wanted to do evaluations
Transferred 2 days per week to tech transfer
Wrote marketing pieces for all existing patents
Did FLTA’s of all new disclosures

40. Case Study – Forsyth Institute
WIPO EIE Project -- Tehran
Case Study – Forsyth Institute
After 1 year, most senior scientist (and major inventor) said at patent committee meeting:
You’ve transformed the faculty’s attitude to innovation
-- they used to think they’re on their own
-- now they think the Institute understands what they’re doing and is trying to help

41. WIPO EIE Project -- Tehran
Questions?