"If you're not looking at licensing, you're really closing yourselves off from large opportunities," said David Smith, an attorney who served as senior vice president and general counsel at Pittsburgh-based TissueInformatics Inc. until February. Since then, he has formed Teregenics LLC, a strategic consulting firm for tissue engineering and regeneration applications.
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| Steven N. Czetli |
The reason to license a university-owned patent, Smith said, is "to expand your intellectual property position within your primary technology sector. But keep in mind that a patent is really the ability to prevent somebody else from practicing the invention."
He also looks at the flip side of licensing, offering two reasons that you might not want to consider licensing a particular technology at a given time: The intellectual property is too far from being "market-ready"; the intellectual property position is not materially advanced.
If you do go ahead and consider licensing a university-owned patent, Smith says, you need to consider, among other things: patent quality, access to inventors, publication rights, exclusive vs. nonexclusive, sublicensing rights.
Carl Mahler II, a senior project manager for the Innovation Transfer Center at Carnegie Mellon University, says CMU approaches potential licensees with several key questions regarding both the licensees and the technology.
First, it looks at whether the innovation is considered a core technology, which could form the basis of a new company, or an assistive technology, which might enhance an already-existing technology.
"If you're taking a core technology, you'll probably want an exclusive license that's a pretty broad field of use," he said.
Other questions to consider, he notes, include: Who owns and controls future patent rights? Who initiates and defends infringement actions ("It's extremely rare," he said, "but also extremely expensive")? How do you split awards? Who is doing your research and development? Is the original inventor involved? Where is the work to be done? And is it sponsored research or in-house?
As for payments, Mahler said, CMU typically extracts upfront fees and patent expenses "as part of almost every deal." It also requires milestone and success payments, allowing the university to "get a share when things work out."
If you license a technology from the University of Pittsburgh, you can, at the very least, expect to pay four "basic" levels of fees in a given deal, according to Harold Swift, a license manager at Pitt's Office of Technology Management. Among them: upfront fees, royalties, patent expenses and annual maintenance fees.
Still, Swift said: "Each licensing deal is very unique. We may extract the value at the beginning or maybe at the very end." But the bottom line, he added, is that his office "has the job of getting as much return as it can."
Networking vital
Also offered at the June 12 event was a panel on networking.
"People, quite frankly, get business based on who they know," said Suzy Teele, founder and chief executive officer of Aceda, a consulting firm specializing in customer acquisition. Understanding that hard fact is the first step in developing an effective networking and referral strategy for your business.
"Pittsburgh is a very hard city to network in," Teele contended. Many of the characteristics that make Pittsburgh a desirable place to live and raise a family in are also characteristics that make networking difficult. She described Pittsburgh as "insular," a place where generations of families have built close ties. Because of these tight relationships, networking becomes even more of an imperative in Pittsburgh, Teele said.
Penetrating Pittsburgh's tight networks is not impossible, however. Teele recommends that instead of attending every networking function, you focus your approach. She advocated that you align yourself with associations or activities that mesh with your business and personal strengths, such as working on the board of an association that allows you to make use of your particular talents.
A networking event is not always a networking opportunity; you should focus on events in which you are likely to meet with decision makers, said Bernadette Mihalic of Dynamite Coaching & Consulting. If the people you are networking with are not in a position to influence the purchase of your product or service, then your valuable time is wasted.
Mihalic joked that she asks herself a simple question when she contemplates attending a networking event: "Is this worth putting on makeup for?"
Mining your customers
Finding new customers is a time- and cost-intensive activity. Leveraging your customer base is a much faster and cost-effective way to grow your business, according to Marc Rosen of The Vector Group, a consultant that specializes in enhancing the revenue of organizations. Companies that do not make use of the good will established with existing customers "are leaving those assets undermined," Rosen said.
Rosen offered a detailed document to be used when you contact current customers and ask them to commit to making referrals for your business. The document comprises:
A referral initiation letter. This letter thanks customers for their business and informs them that you are working to expand your business and that you would like their assistance.
A client profile. This form describes the types of clients you are seeking (e.g., companies that are currently expanding, companies looking for assistance similar to the services you offer, etc.) and asks the customer to list three people who might benefit from your services.
Referral introduction methods. This page is a help sheet for your customer, offering tips and scripts for the actual referral process, such as in-person introductions, three-way phone conversations, voice mail and e-mail messages and letters of introduction.
Rosen said, "Most people are afraid to ask" their customers for referrals, but added that it was easier to work with a person with whom you have a good relationship than it was to sell to someone you have just met. "You don't need to market to new people -- market to people you know."