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Lee M. Taylor, JD, LL.M, MBA University of Hawaii

Lee M. Taylor, JD, LL.M, MBA University of Hawaii. Outsourcing: From micro- to masterful, technology management. Standard/Stanford Model. Cradle to grave technology “management” including sponsored research Advantages: Single point of contact Diversity of the position – job satisfaction

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Lee M. Taylor, JD, LL.M, MBA University of Hawaii

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  1. Lee M. Taylor, JD, LL.M, MBA University of Hawaii Outsourcing: From micro- to masterful, technology management

  2. Standard/Stanford Model Cradle to grave technology “management” including sponsored research Advantages: Single point of contact Diversity of the position – job satisfaction Disadvantage: Severely limits loading, favoritism in functionality/technology

  3. IT revolution and the law Greater changes in the last five years then in the last fifty in the practice of the law due to economic downturn, outsourcing and software improvements Creates an opportunity to leverage a TTOs assets in new and powerful ways A less gilded future The legal business has undergone not only recession but also structural change. Ever-growing profits are no longer guaranteed. Nor, for some firms, is survival May 5th 2011 | NEW YORK |The Economist

  4. The New Paradigm External Internal 4

  5. The IP Supply Chain 5 • Resources • Advisory Services • Patent Law Firms, Law Firms, Other • IP Strategy • OTL, Consultants, Other • IP Valuation • IP Management • Licensing Associate, Patent Attorney • IP Brokerage • external posting, Website Posting • Assertive Patent licensing • Law Firms or other firms • IP Enforcement on a contingency basis

  6. UH OTTED’s external assets • Ashmar Patent Analytics for PMRs (Patentablity/Marketability reports) Dr. Anurag Bist anurag.bist@ashmarip​.com • IP Checkups for valuations on pending and issued patents Matt Rappaport mrappaport@ipcheckups.com • PriorSmart for docketing during prosecution, the “dashboard” Kyle Jensen kyle@priorsmart.com Allows for a great free up of time for additional “client” interaction

  7. Examples • Promising gene therapy disclosure was going to have simultaneous US utility and PCT filing, Ashmar found academic publication that covered the disclosure entirely, “but for” the report would have spent an initial $17,000 in filing fees • Issued patent basis of a startup company, used IP Checkups to understand the strength of the patent and indicate promising areas of research for red protein markers in jellyfish • PriorSmart tracking of multiple disclosures from a single inventor to keep track of their progress ($4/month/per tech)

  8. Diligence Be up front that interaction is on a trial basis Be clear about the ability to be locked into a contract/pricing Beware services that require a great deal of work on the part of TTO staffers Beware non-customized information and/or information that would greater serve a licensee rather then the licensor

  9. Addenda Disclosure and licensing goals Integration Monitoring

  10. Thank You Lee M. Taylor ltaylor3@hawaii.edu

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