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A Step-by-Step Process for

Technology Screening

Danielle McCulloch | [email protected] | @mccullochdd

Laura Schoppe | [email protected] | @fuentek


Meet Laura Schoppe

• Founded Fuentek in 2001

• Leads major tech transfer projects at leading universities and government agencies and provides strategic consulting on intellectual assets to Fortune 500s

• 12 years as a defense contractor

• MBA (UNC-Chapel Hill), MSE in mechanical/aerospace engineering (Princeton), and BSE in mechanical engineering and engineering/public policy (Carnegie Mellon)

© Fuentek 2011 all rights reserved ● www.fuentek.com 2

@fuentek

http://www.linkedin.com/in/laschoppe

Meet Danielle McCulloch

• Joined Fuentek in 2008

• Leads activities for several government and university clients

• Leads screening training of Fuentek staff

• Technical expertise in medical devices, manufacturing, biotech, and process engineering

• MBA (Dartmouth College) and BSE in chemical engineering (Washington University)


@mccullochdd

http://www.linkedin.com/in/ddmcculloch

Goals for Today’s Webinar

Provide the basics of how technologies can be screened to determine their commercial potential

4

At a high level, teach attendees how to …

Access and utilize resources to evaluate the market potential of technologies

Perform market-based technology screenings

More effectively leverage completed screenings to secure more deals


Technology Management

5© Fuentek 2011 all rights reserved ● www.fuentek.com

Research organization perspective

• Identify, protect, manage, and market the intellectual property (IP)

• Serve the interests of the organization, its research sponsors, its innovators, and the public in securing benefit from funding

Licensee (commercial)

perspective

• Create new revenue sources

• Develop new products – leads to revenue generation

• Reduce costs (R&D and IP management) –leads to higher net income

6

Research

Organization

ResearcherTechnologySlow/ThoroughInterests/ImpactPapers/AwardsOptimal Performance

Industry

Supplier/CustomerNeeds/Solutions

Fast/Bottom-Line ROIPatents/Products Optimal ROI

Cost and Profit


Technology Chasm

Leap of faith



Technology Chasm

Screening

Technology competitiveness � IP protection � Market fit


Research

Organization

Industry

Measures of Success


Commercial companies measure success simply …

… money

AgreementsAgreements

LicensesLicenses

FundingFunding

Royalties, revenuesRoyalties, revenues

Community impactCommunity impact

StartStart--upsups

Proactively and Strategically Managing IP


… ensures appropriate resource allocation

… improves strategic value of portfolio

Related technologies can be grouped to improve attractiveness and marketing efficiency

… enables consistent, objective evaluation

against appropriate criteria

Why Do a Screening?


… facilitates rapid prioritization of portfolio

• Higher value = Further study (assessment)

• Lower value = Abandon efforts or passively market

Screening …Screening …

Screening Definition

In tech transfer, commercial potential

most often relates to the likelihood and benefit of

an invention being licensed to another party

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Limit labor and calendar time, limit pages

Provide record and substantiation

Focus on fit to market need and potential licensees


A very brief, written, market-centered evaluation of the commercial potential of an invention

screen·ing � skrēnING, noun

Screening Criteria

• Technology readiness

• Market attractiveness

• Intellectual property strength

• Champion

12

TechnologyTechnology

Competitive within Competitive within reasonable timereasonable timeand and investmentinvestment

IPIP

PProtectable rotectable and and enforceableenforceable

MarketMarket

BBuyer uyer and seller and seller interestinterest

Efficient Efficient

allocation allocation of of

resourcesresources


Screening Report


Screening Process


Technology disclosure

Market research

Technology overview

Inventor interview

Revise technology overview

Finish market research

Analyze findings

Rating andrecommendation

1 2 3 4

5 6 7 8

DecisionDecision

Technology Disclosure





Analyze findings


2 3 4

5 6 7 8

DecisionDecision

Technology overview

Market research

Inventor interview


1

Review Background

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Review just enough to understand what the technology does.

Do not get mired in the details of how it works.

• Disclosure

Gather background materials

• Patent applications

• Papers and presentations

Technology Overview


Technology Overview

Market research

Inventor interview



Analyze findings


3 4

5 6 7 8

DecisionDecision


1

Technology overview

2

Components

18

Technology description

Potential benefitsPotential

applications

TechnologyOverview

TechnologyOverview

Technology Overview


Audience

19

Techmanagers

• Allows tech manager to understand the technology without referencing background materials

Potential licensees

• Used (often verbatim) to market promising technologies on the Web

• Should be non-enabling

Inventors • Provides opportunity for inventors to ensure

that the screener understood the technology

Technology Overview


• Focus on what the technology does, not how it worksStart with “This technology is …”

• Text should be clear and concise3-5 sentences is often sufficient

• Assume the reader is not intimately familiar with the subject areaDo not use jargon or acronyms without defining them

• Description should be non-enabling

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Technology Description

Technology Overview


Potential Benefits

21

Focus on innovative aspects of invention

• How is this technology better, faster, cheaper?

List key potential benefits

• Start with a key phrase followed by brief description

• Description should support the claimed benefit

Technology Overview


Potential Benefits Examples

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Technology Overview


FasterUse of a more powerful chip produces test results in half the time of other systems

More accurateImproved optics provide sensitivity that is 10% better than conventional tools

Improved reliability Use of fewer hardware components reduces the risk of failure

SmallerTechnology is 25% smaller than similar systems, enabling use in more products

Less expensive Use of off-the-shelf parts decreases overall system cost

SaferOpen flame is not required, providing improved safety over similar solutions

Potential Applications

23

Applications should not be limited to the original intended area of use

Think broadly

What problem does this technology solve?

Who else might have that same problem?

Technology Overview


Technology Overview Example

This technology is a novel flow control valve that directs the fluid through the axial body of the valve and regulates the flow by opening and closing the mouth of the valve. The flow tube has external controls to adjust position. It does not use a gate, ball, or vane as with most established methods.

Potential benefits:

• Precise - ball screw actuation offers high position and thus flow rate accuracy• Easily customized - the inlet to the valve can be contoured to provide specific

fluid flow rates for a given fluid• Less expensive – simple design decreases manufacturing costs

Potential applications:

• Aerospace propulsion• Oil and gas production• Waste water treatment• Desalination


Technology Overview

Market Research


Market Research

Inventor interview



Analyze findings


4

5 6 7 8

DecisionDecision


1

Technology overview

2

Market research

3

Objectives

26

• Market size

• Market growth and maturity

• “Hot” industry issues

• Key players (potential licensees)

– Number (many or few)

– Names

Quickly find information about …

Market Research


Approach

27

Market Research

Document findingsDocument findings

Conduct online searchingConduct online searching

Develop keywordsDevelop keywords


Develop Keywords

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Market Research


Broaden terms as

necessary to get

sufficient results

• Use synonyms

• Identify industry vernacular

• Use words pertaining to the broader industry

Start with detailed

keywords – use

words from

invention disclosure

Google®

• Search key word terms AND “market” and “million” OR “billion”

• Good free data in press releases issued by market research companies; include company name in the search string

Subscription market research databases

• OneSource®, Dialog®, Profound, etc.

Industry association websites

• Often provide good market overviews and $ values (e.g., the Aluminum Association's website)

Search major market research sites

• Such as www.bccresearch.com or www.frost.com

• Market size and sales are often listed in the abstract of the report or companies are listed in the TOC

Conduct Online Searching

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Market Research


What Is Relevant

30

Market Research


• Market size – revenue, units

• Market growth – slow vs. fast

• Market maturity – emerging, mature, declining

• State of the art

• Market players

– Number

– Market share distribution

– Key names

• Market dynamics

– Early adopters vs. risk averse

– Certifications or capabilities required for solutions

Document Findings

31

Market Research


Cut and paste short excerpts

Include source information for all data, whether quoted or summarized – title, source, date

Write summary paragraph for beginning of the section• Include statements about market size, growth, and hot trends• Assume reader will stop here

Your goal is to

summarize

Summary Examples

32

Market Research


Market size

with citation

Market size

with citation

There is a $50 billion global market for valves. Flow control valves are a significant segment of that market, projected to approach $6 billion in 2012. [“Industrial Valves World Markets,” McIlvaine Company, March 2009].

Market research suggests a strong and growing need for robust, reliable control valves that can operate with very harsh fluids and in corrosive environments.

Alternative control valve applications beyond rocket propellants include oil, gas, liquid natural gas (LNG), tar sands, ground water remediation, and desalination.

Market needMarket need

Summary Examples

33

Market Research


No market data available

No market data available

Logical assumptions

Logical assumptions

Market correlation

Market correlation

Although there is little information available regarding the market for battery monitoring systems,

there is strong projected growth in the battery market, and thus there is likely corresponding strong growth forecast for alternate battery monitoring systems. As green energy initiatives increase and funding from the Economic Recovery Act become available, the need for energy storage and the availability of storage systems will increase. To have safe and reliable energy storage, battery management systems are critical and will thus experience strong market growth.

A few analysts forecast that by 2020, plug-in vehicles, including plug-in hybrids and purely electric cars, will make up almost a third of new-car sales in the United States.

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How to Use IP Information

Market Research


• Look for potential licensees – companies holding patents in the same general field may be interested

• Use the patent landscape as a tool to assess the market for the technology

• Assess how unique the subject invention is

– Is the invention one of only a few or one of many?

– Is the field itself pretty broad or very narrow in scope?

Sources of IP Information

Other

helpful

resources

Market Research


• FreePatentsOnline Help

– Tutorial http://www.freepatentsonline.com/help/item/Search-Tutorial.html

– Syntax examples http://www.freepatentsonline.com/help/topic/Syntax-Examples.html

– Conducting a search http://www.freepatentsonline.com/help/item/Conducting-a-patent-search.html

– Field abbreviations http://www.freepatentsonline.com/help/topic/Field-Abbreviations.html

• USPTO Help

– Help on the Advanced Search Pagehttp://patft.uspto.gov/help/helpadv.htm#field

– Tips on Fielded Searching http://patft.uspto.gov/help/helpflds.htm#Abstract

35

IP Summary Example


Although the number of patents for valves, actuated valves, and actuated flow control valves is very large, the number of patents of ball screw propellant flow control valves is much smaller, indicating that this area is active but not overcrowded. In addition, there are several prominent industry players who appear to be working on related technologies.

Relevant assignees for the area of ball screw propellant flow control valves include:

• Aqua Products, Inc

• Alliant Techsystems

• Caterpillar Inc

• Deere & Company

• General Electric Company

• Kistler Aerospace Corp

• Precision Valve Corp

Market

indications

Market

indications

Potential

licensees

Potential

licensees

Market Research

Key Screening Steps for Interns


Market research


3

8

DecisionDecision


1

Technology overview

2

Analyze findings

7


6


6

Inventor interview

4

Inventor interview

4


5


5

Inventor Interview

Inventor Interview Objectives

• Solidify your understanding of the novel aspects of the innovation

– What problem does it solve?

– How is it “better, faster, cheaper”?

– What other industries have the same problem?

• Understand how the innovation compares to the state of the art

– Determine the state of development

• Discuss potential applications for the technology or likely users


After the inventor interview, revisit the Technology

Overview and Market Research to ensure they reflect

any new information you gained

Inventor Interview

Analyze Findings


Analyze Findings

Market research

Inventor interview




3 4

5 6 8

DecisionDecision


1

Technology overview

2

Analyze findings

7

Objectives of Analysis

40

Analyze Findings


• Provide consistent, objective

evaluation of key factors across all technologies

• Ensure a focus on critical factors

related to market need and potential licensee fit

– Market attractiveness

– Commercialization factors

– IP landscape

Rating and Recommendation


Recommendation

Technology overview

Inventor interview



3 4

5 6

DecisionDecision


1

Market research

2

Analyze findings

7


8

Objectives of Recommendation

42

Recommendation


• Provide a definitive rating of commercial potential – essential for resource prioritization

• Summarize findings that support the rating

• Highlight potential next steps

High Most findings are favorable for commercialization

Medium-high

Looks promising but some aspects are not compelling

Medium-low

Limited market potential or somecommercialization barriers

Low Little or no market potential and significant barriers

Technology Ratings

43

Recommendation


Writing the Recommendation

Text should support the rating – include a

sentence that specifically justifies the rating

• For High or Medium-High, include suggested items for follow up

– Development status, further funding, test results

– IP considerations

– Technologies that could be grouped

• For Low or Medium-Low, consider including suggestions for inventor: non-commercial opportunities, market requirements/standards

44

Recommendation


Example - Medium High

45

Recommendation


This technology appears to be an improvement over existing orthopedic knee braces, providing features that could improve rehabilitation outcomes. In addition, the market for such devices is large, with steady growth projected. The license potential for this technology is rated as Medium High, and further assessment of commercialization potential is warranted. Special attention should be given to pending test results, expected in early 2011, as they will be of interest to potential licensees.

Comparison to state of the artComparison to state of the art

Market summary

Market summary

Special notesSpecial notes

Example – Medium Low

46

Recommendation


The market for shipping pallets is large, with worldwide market estimates near $15 billion. The demand for more economical solutions is also high, with the plastic pallet segment exhibiting strong growth. This technology appears to offer a solution that has compelling technical benefits and is economical. However, the technology is basically in the concept stage with design optimization still needed. Despite the promise of the technology, the lack of an established competitive advantage leads to a licensing potential that is presently judged to be Medium Low.

However, given the large overall market, if the inventor can optimize the design and prove superior performance, the commercial opportunity could be significant. If a superior design is demonstrated in the future, commercialization possibilities should be revisited.

Level of development

Level of development

Potential opportunity

Potential opportunity

Example - Low

Although the market for inspection of produce is large, the complexity and expense of this fruit inspection technology may preclude this low-margin market from being able to readily adopt such a system. In addition, significant time and investment will likely be required to develop a market-ready product. As a result, this technology is rated Low and no further commercialization efforts are recommended.

47

Recommendation


Technology weaknessesTechnology weaknesses

Ratings – Typical Results

6%

28%

24%

42%

48

Recommendation


Specialized Research Lab144 screenings

High

Medium-high

Medium-low

Low

15%

25%

24%

36%

Large Research University730 screenings

High

Medium-high

Medium-low

Low

Proactively and Strategically Managing IP


Thank You!


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