Market Assessment Checklist for Federal Labs

Market Assessment Checklistfor Federal LabsLaurie ArrantsNational Institute of Neurological Disorders and StrokeNational Institutes of HealthAssessing ContentStarts with relationship with inventoroDo interviews in personoKeep in touch -Stay in touch oBroaden their perspectiveoInform Assessing ValueStarts with relationship with marketoWho are the playersoFind a championoKnow typical term sheetAssessment FactorsAgency /Lab MissionScientific BasisLegal Basis Technical BasisMarket Basis Where are you entering the market?Patent statusPre MarketPre-clinicalProduct sampleBasic SciencePhase II trialRegulatory approvalIn MarketTested ProductCost scaleIncome scaleTechnologycompaniesApproach to AssessmentBackgroundTechnology InformationMarket InformationCommercial InformationBACKGROUND CRITERIABG-1Brief descriptionBG-2Consistency with MissionBG-3 List of inventors and contributorsBG-4 Clarify in detail the employment statusBG-5 Past or upcoming disclosureBG-6 Outside materials or fundingBG-7 Relevant key wordsBG-8 Scientific referencesBG-9 Top five investigators in fieldBG-10 Companies in the area of discoveryBG-11 Simple Patent searchBG-12 Existing related technology in present portfolioBACKGROUND CRITERIABG-1 Brief description of technologyoNon-scientificoStraightforwardoMarket orientedoPresentation of informationBACKGROUND CRITERIABG-2 Consistent with Mission at Agency or lab levelBG-3 List of inventors and contributorsLet legal group determine “inventorship”Get good description of input of eachBG-4 Employment status of everyone in #3 BGtenure –tenured trackVisiting researcherPost docBACKGROUND CRITERIABG-5 Past or upcoming disclosureoSpecifically ask about each of the following; abstracts, presentations, publications and posters by anyone in the lab or collaborators.oAre there year end or performance reports that could act as a disclosureoHas a post-doc presented in a retreat settingoHas a collaborator put on website or SEC reportBG-6 Outside materials or fundingoWere third party materials utilizedoAny external or third party funding utilizedBACKGROUND CRITERIABG-7 Relevant key wordsoAs relevant to the discovery itselfoAs relevant to closest science to the discoveryoAs relevant to known applicationsBG-8. Scientific references Have inventor give top ten –not five pagesBG-9 Ask each Investigatorto name their top fiveinvestigators in the field of scienceBACKGROUND CRITERIABG-10 Ask each Investigator for names of any companies they think would be interested.BG-11 Simple Patent search at USPTOoOn each of 5 key wordsoOn last author on each of the references givenoOn list of top five scientistsBG-12 Existing related technology in present portfoliooConfirm if your or related labs have similar or disabling inventions already in portfolio1STCHECKPOINTYou have established parameters of the inventionWhat timeframe or schedules are required?At first glance, does the discovery appear novel and is there an inventive step?Where are you entering the market?Patent statusPre MarketPre-clinicalProduct sampleBasic SciencePhase II trialRegulatory approvalIn MarketTested ProductCost scaleIncome scaleTechnologycompaniesTECHNOLOGY INFORMATIONOVERVIEWTI-1. Level of sophisticationTI-2. Development StatusTI-3. Spectrum of usesTI-4. Window of opportunityTECHNOLOGY INFORMATIONTI-1. Do Inventors describe the technology as:ostate of the artocompetitive to present technologiesodisabling to a present technologyTI-2. Development Statusoproof of principle experimentsoprototypeTECHNOLOGY INFORMATIONTI-3. Spectrum of uses of technology:ocould this be a platform technologyotry to get at novel featuresowhat other “mouse trap” is out there?TI-4. Timeframe for full developmentoWhat are the steps required to be fully developed?oWhat timeframe is required for full development?Where are you entering the market?Patent statusPre MarketPre-clinicalProduct sampleBasic SciencePhase II trialRegulatory approvalIn MarketTested ProductCost scaleIncome scaleTechnologycompanies2NDCHECKPOINT You understand the level of development of technologyYou understand what other technologies offer?At first glance, does it pass the mousetrap test?MARKET INFORMATIONOVERVIEWMI-1. Is there an identifiable market or need? MI-2. Window of opportunityMI-3. Competitive products or technologiesMI-4. Is the market accessible?MARKET INFORMATIONMI-1. Is there an identifiable market or need?oIs there a clear need for a suitable technological solution in this market (market-pull) oIs the technology being proposed as a solution for an undefined need (market-push)?ois it mature technology about to be replacedois it additive to already functioning technologyois it revolutionary but will add to direct or indirect costs MARKET INFORMATIONMI-2. Window of opportunityIs the application of the technology likely to be severely time limited? Is the technology only an incremental development on existing technology –therefore short term or small market percentageIs it „disruptive‟ in nature –longer to be accepted but longer sales cycleMARKET INFORMATIONMI-3. Competitive products or technologiesoNeed to understand products competitive to your inventionoDiscuss comparable strengths and weaknesses of commercially available products and technologies oBe aware of potential disabling technologies presently developingoLook at the companies in the field, not just the technology -the companies that have a patent position in area of interest -IP brings more value than product in many companiesMARKET INFORMATIONMI-4. Is the market accessible?oIs the market currently poorly served or are there existing good, established, products /technologies?oIs this a market with an excessively crowded patent landscape –requires stacking or multiple licenses. oWhat regulatory obstacles exist? oTypical time frame for market entry biotech versus energyoDoes your product require large reinvestment/reprocess?new product in producing Clean coalnew research tool requiring all new microscopes3rd CHECKPOINT Use the information from your background information to gather names of companiesYou understand market(s) which match up to your technology.You are beginning to develop a time schedule which gives estimates of costs, income, benefits.Where are you entering the market?Patent statusPre MarketPre-clinicalProduct sampleBasic SciencePhase II trialRegulatory approvalIn MarketTested ProductCost scaleIncome scaleTechnologycompaniesCOMMERCIAL INFORMATIONOVERVIEWCI-1. Are there any conflicts of interest? CI-2. Who are prospective licensees?CI-3. What competitive advantage does the product give the licensee?CI-4. In the public interest –what is the most appropriate mechanism for commercialization? AcknowledgementsBrian O‟Neil –Enterprise IrelandMy fellow tech transfer professional at NIH –they have been generous in their sharing.The FLC –for all they do to keep us outside our boxesEach of you for having the quality of curiosity.