Archive for the ‘IP Management’ Category

IP Marketing Iterative Process: Getting the Deal

Wednesday, March 24th, 2010

In recent posts on Marketing Intellectual Property, I have conveyed the merits of implementing an iterative marketing process; validating your decision to invest your resources in commercializing a technology; developing your marketing plan; executing your plan; and proactively scheduling checkpoints to regularly validate your plan. The final and most critical step is to ensure that you are attentive to the remaining tasks to position you to successfully execute a licensing agreement.

There are several key points to consider throughout this stage of the process.

  1. Understand the perspective of your licensee. You must ask the right questions and invest time to ensure that you understand what is included in the agreement for the licensee to position this deal for a successful win-win-win outcome (institution, inventors, and licensee). Will your technology provide the licensee with a strategic competitive advantage? It your technology synergistic or complementary to their existing commercial offerings, or does it provide the licensee with new market opportunities. Is the licensee anticipating that they will be granted exclusivity to your patents, or are they specifically looking for field of use or geographic rights? The answers to these questions provide the framework for a mutually-beneficial licensing agreement.
  2. Communicate the licensing process. It is imperative to clearly define, document, and communicate your licensing process for prospective licensees to improve the cycle time and the productivity for negotiating agreements. Publishing your expectations, licensing steps, application and agreement templates, and key contact information on your tech transfer website benefit all parties.
  3. Manage the licensing process. Proactively managing expectations regarding the time investment, key milestones in the licensing and approval process, along with financial commitment expectations will result in fewer surprises, debates, and disputes throughout the negotiation process. This is important for all internal and external stakeholders involved to avoid unnecessary delays. For many technologies, time-to-market is critical and delays in the licensing process can result in deals that do not get executed due to lost market opportunities from other emerging innovations. It is also important to continue to stay focused and not get distracted by other initiatives competing for your attention this close to the “finish line” of getting the deal.


Signing a licensing agreement is a very satisfying and rewarding experience and is often the culmination of a tremendous amount of hard work and planning over many months. Enjoy the moment and leverage your recent experiences as lessons learned for your next licensing deal. Remember that if your prospective licensee is not requesting exclusive access to your patents, you should also continue to support your marketing campaign in parallel with managing current deal opportunities.

—By Jack Spain

IP Marketing Iterative Process: Checkpoints for the Marketing Plan

Thursday, March 11th, 2010

In recent posts on Marketing Intellectual Property, I have described the merits of implementing an iterative marketing process; validating your decision to invest your resources in commercializing a technology; developing your marketing plan; and executing your plan. Another essential element of an effective iterative process is to incorporate timely checkpoints to test and validate your assumptions, reflect on the feedback that you have received, and communicate with your key stakeholders.


Pausing periodically to update your marketing plan based on the results you have achieved to-date positions you for greater success in commercializing your technologies and to proactively manage expectations with your management and the respective inventors. It is not uncommon for often unforeseen events to change the market landscape for a target innovation. For instance, consider the impact on:


  • the appeal of specific technologies after changes in political administrations (e.g. innovative green technology solutions)
  • the appeal of specific technologies after natural disasters (e.g. innovative geospatial solutions to assist relief efforts in Haiti and Chili)
  • the appeal of specific technologies after national security incidents (e.g. innovative airport security solutions)
  • the appeal of specific technologies after a major FDA product recall (e.g. innovative agricultural product screening solutions)


I recommend that you schedule a checkpoint every 30 to 90 days for each of the technologies that you are actively marketing to:


1.         Reevaluate the approach you are using to engage target licensees.


2.         Recalculate your anticipated return on investment from your marketing campaign.


3.         Reassess your target markets for commercializing subject technologies.


4.         Adjust your online marketing materials periodically to reflect frequently asked questions and additional insights you have gained.


4.         Proactively update key stakeholders on your progress and plans for the subject technologies.


Please share specific events that you have experienced that have had a remarkable impact on marketing innovations in your technology portfolio.


—By Jack Spain

IP Marketing Iterative Process: Executing the Marketing Plan

Monday, February 1st, 2010

An effective, iterative IP marketing process should include a well-conceived plan that focuses on delivering an acceptable return on your resource investments. Once your plan is in place, the fun begins with Executing the Marketing Plan. This essential phase includes contacting the target licensees that you identified through your market research, and managing the interactions between the licensees, inventor, attorneys, and other key technology transfer office personnel. Key steps in this phase to support marketing your intellectual property include:


1.         Contact prospective target licensees utilizing the best practices and methodologies that you have outlined in your marketing plan. Quite often this is a combination of telephone calls, email, conferences, and workshops.


2.         During each marketing campaign, you need to manage your schedule accordingly to ensure you are available to respond to questions and requests about the target technology on a timely basis.


3.         In order to efficiently vet prospective licensees and manage your time effectively, you should have a consistent process to capture and document your interactions. Ideally, you should utilize an IP management database system throughout the entire life cycle of the intellectual property asset. Depending on the anticipated commercial potential of the technology and the number of projects you are managing, it is extremely valuable to have a repository that provides you with the current status and state of each prospective licensee along with key metrics to measure the overall progress of your marketing campaign.


4.         Most Inventors are consumed with their research projects and do not have a lot of time available for a high volume of interactions with prospective licensees. It is important that you are conscious and mindful of the Inventor’s availability and effectively manage the quantity and quality of interactions with each Inventor.


5.         An effective marketing plan is iterative and periodically updated and realigned to reflect the questions and feedback from target licensees. You should update the marketing promotional materials representing your technology to capture the relevant feedback you receive throughout the execution phase.


6.         Obviously, the end goal of this phase of the marketing process is to facilitate development of licensing applications that have a reasonable likelihood of progressing into the Deal phase with the objective of executing a formal licensing agreement.


An essential skill to exercise throughout the execution phase is effective listening. You should be acutely listening to the responses and feedback from your target licensees and learning from how the Inventor responds to questions and challenges from interested parties. While your marketing plan should be an excellent roadmap to present your technologies to prospective licensees – it is also just as important to continuously refine your plan based on how the market responds to the novelty and potential commercial applications of your target technologies.


—By Jack Spain

IP Marketing Is an Iterative Process: Developing the Marketing Plan

Monday, January 25th, 2010

An effective, iterative IP marketing process should include a well-conceived plan that focuses on delivering an acceptable return on your resource investments. Your plan should be more of a “living,” outline-level guide than a voluminous document that you rarely revisit. An effective marketing plan can be developed with the following steps:


1.         Meet with the inventor to ensure that you have a solid understanding of the current state of the technology and to confirm the inventor’s willingness and availability to support the marketing effort.


2.         Write an “elevator pitch” or clear, concise, and compelling technology marketing description that will capture the attention and interest of your target audience.


3.         Determine the optimal approach to showcase your technology in a cost-effective manner.


4.         Develop a technical specifications sheet consistent with industry standards for the technology based on the market research in the technology assessment and when you validated your “go” decision.


5.         Identify the suitable promotional materials and methods to support your marketing plan. Refining your specific promotional plan to the norms of your target market can be considerably more effective than a “one size fits all” approach.


6.         Establish a method to package and distribute the technology to licensees. It is typically less resource intensive to define your approach early in the marketing process as opposed to being reactive after you have executed your first licensing agreement.


7.         Schedule checkpoints with the key stakeholders to confirm and validate your plans along with your resource and schedule estimates.


Developing a thoughtful marketing plan will save your organization considerable time and money and should produce a greater number of successful outcomes in the form of licenses per resources invested.


Are there additional steps you take in developing a marketing plan?


—By Jack Spain

IP Marketing Is an Iterative Process: Validating the “Go” Decision

Tuesday, January 12th, 2010

An effective, iterative IP marketing process begins with revisiting the decision to proceed with marketing. This first step might seem odd, given that the “go” marketing decision was informed by an assessment. But in most cases, there is a lag between when you decide to market a technology and when you can market a technology (e.g., once a patent application has been filed). In the six months or more that usually have elapsed before marketing can start, the economic climate can change dramatically or the “shelf life” of the innovation may now be a factor. Pausing to confirm that the “go” decision is still valid helps ensure that your limited marketing resources are focused on the right commercialization opportunities.

A good starting point is to evaluate whether the information obtained during the assessment process still accurately represents the perspective of the target licensees:

  • Who the ideal target licensees for this particular technical innovation are
  • Why a prospective licensee would be interested in licensing this technology
  • What the specific features, functions, and attributes are that make this innovation compelling

Here are several steps that we recommend for validating the “go” decision without expending excessive resources:

  • Review the assessment and evaluation reports that have been generated by your Tech Transfer Office;
  • Review the invention disclosure and other more recent disclosures from the inventors—particularly those filed since the assessment was conducted;
  • Briefly review relevant papers, presentations and publications from the inventors, focusing on identification of potential commercialization opportunities;
  • Confirm the current IP protection status of the innovation;
  • Identify key milestones by which commercialization interest needs to be secured;
  • Research the requirements and expectations regarding any relevant industry technical standards that will impact or influence commercialization opportunities; and
  • Consult briefly with experts within your professional network for additional background and insights that will enhance your marketing plan.

Once this has been done, you can confidently begin to outline your marketing outreach and campaign strategy, scope and approach – a process that will be described in a future post.

Have you been in situations where this type of reevaluation has served you well – or where you wish you had done it?

–By Jack Spain

Best Practices for Marketing Intellectual Property

Monday, November 30th, 2009

Fuentek has had many years of hands-on experience in generating scores of licenses and successful partnership agreements for clients, and has identified the following collection of “Best Practices” to effectively and efficiently market intellectual property.

  1. Define, implement and institutionalize an agile marketing process as a guide for consistent quality results.
  2. Secure inventor commitment and availability before initiating a marketing campaign—their involvement is crucial to success.
  3. Prioritize your portfolio of technologies and allocate the appropriate level of resources by adhering to a proven filtering methodology.
  4. Focus on ROI to ensure maximum return on your investment of your limited human and financial resources.
  5. Employ the right promotional tools that are appropriate for the target technology and target audience.
  6. Make use of your Web resources as a cost-effective marketing tool.
  7. Qualify licensees effectively to ensure that you focus your limited resources on opportunities that have been property evaluated and scrutinized to position your team to achieve your licensing goals.
  8. Utilize an IP management database system to proactively monitor and manage all of your marketing interactions and initiatives.
  9. Engage IP marketing professionals with the right technical and business backgrounds to successfully commercialize technologies in your portfolio.
  10. Embrace your “lessons learned” from all of your technology assessments and marketing activities.

Licenses and agreements for your technology portfolio are the direct result of a consistent and disciplined adherence to your technology assessment and marketing processes along with thoughtfully formulated promotional strategy and tactics. Adopting these 10 best practices will position your organization for success in achieving your technology marketing goals and objectives.

—By Jack Spain

November 30th, 2009

Operational Excellence for Tech Transfer Offices

Wednesday, November 4th, 2009

Maintaining a continual focus on planning, prioritization, and execution of projects and tasks for your Technology Transfer Office is complex and requires effective integration of numerous interrelated operational processes to ensure that the allocation and engagement of your staff is optimized for your organization. In fact, as a leader and manager for your team, it is difficult to argue that this dimension is not your most critical responsibility. I offer the following leadership guidance to position your organization for consistent and optimal performance across your entire team.  

1. Translate strategy into action plans. Leaders translate the vision, strategy, goals, and objectives into specific actions plans for each staff member to ensure the overall success of the organization.  

2.  Confront reality. Effective leaders are well grounded with a solid grasp of the real challenges and issues that your organization is facing and provide the requisite guidance to deal with adversity and opportunities directly while looking at each challenge and experience as a learning opportunity.  

3. Set high expectations to fully leverage available resources throughout the organization. Leaders establish challenging, but realistic and attainable goals for each member within their organization that are synergistic with the overall goals and objectives of the enterprise.  

4. Inspire the team to succeed. Leaders have an obligation and responsibility to motivate and inspire their subordinates to exceed the goals and expectations for their organization.  

5. Delivering results with integrity. We have been continuously reminded during this past decade of the consequences that result from leaders who do not set an exemplary example of leading and delivering results with integrity. Leaders have an awesome responsibility to set and maintain an example in each and every action she or he takes.  

—By Jack Spain

November 4th, 2009

Disciplined use of an IP management database enhances marketing efforts

Sunday, November 1st, 2009

I published an article in the Intellectual Property Marketing Advisor, November 2009 Issue on utilizing IP management database software for marketing Intellectual Property.

— Jack Spain

November 1st, 2009