Market Assessment Checklist for Federal Labs

1. Market Assessment Checklistfor Federal Labs Laurie Arrants National Institute of Neurological Disorders and Stroke National Institutes of Health

2. Assessing Content Starts with relationship with inventor • Do interviews in person • Keep in touch -Stay in touch • Broaden their perspective • Inform

3. Assessing Value Starts with relationship with market • Who are the players • Find a champion • Know typical term sheet

4. Assessment Factors • Agency /Lab Mission • Scientific Basis • Legal Basis • Technical Basis • Market Basis

5. Where are you entering the market? Patent status companies In Market Pre Market Product sample Basic Science Tested Product Pre-clinical Technology Phase II trial Regulatory approval Cost scale Income scale

6. Approach to Assessment • Background • Technology Information • Market Information • Commercial Information

7. BACKGROUND CRITERIA BG-1 Brief description BG-2 Consistency with Mission BG-3 List of inventors and contributors BG-4 Clarify in detail the employment status BG-5 Past or upcoming disclosure BG-6 Outside materials or funding BG-7 Relevant key words BG-8 Scientific references BG-9 Top five investigators in field BG-10 Companies in the area of discovery BG-11 Simple Patent search BG-12 Existing related technology in present portfolio

8. BACKGROUND CRITERIA BG-1 Brief description of technology • Non-scientific • Straightforward • Market oriented • Presentation of information

9. BACKGROUND CRITERIA BG-2 Consistent with Mission at Agency or lab level BG-3 List of inventors and contributors Let legal group determine “inventorship” Get good description of input of each BG-4 Employment status of everyone in #3 BG tenure –tenured track Visiting researcher Post doc

10. BACKGROUND CRITERIA BG-5 Past or upcoming disclosure • Specifically ask about each of the following; abstracts, presentations, publications and posters by anyone in the lab or collaborators. • Are there year end or performance reports that could act as a disclosure • Has a post-doc presented in a retreat setting • Has a collaborator put on website or SEC report BG-6 Outside materials or funding • Were third party materials utilized • Any external or third party funding utilized

11. BACKGROUND CRITERIA BG-7 Relevant key words • As relevant to the discovery itself • As relevant to closest science to the discovery • As relevant to known applications BG-8. Scientific references Have inventor give top ten – not five pages BG-9 Ask each Investigator to name their top five investigators in the field of science

12. BACKGROUND CRITERIA BG-10 Ask each Investigator for names of any companies they think would be interested. BG-11 Simple Patent search at USPTO • On each of 5 key words • On last author on each of the references given • On list of top five scientists BG-12 Existing related technology in present portfolio • Confirm if your or related labs have similar or disabling inventions already in portfolio

13. 1ST CHECKPOINT • 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?

14. Where are you entering the market? Patent status companies In Market Pre Market Product sample Basic Science Tested Product Pre-clinical Technology Phase II trial Regulatory approval Cost scale Income scale

15. TECHNOLOGY INFORMATIONOVERVIEW TI-1. Level of sophistication TI-2. Development Status TI-3. Spectrum of uses TI-4. Window of opportunity

16. TECHNOLOGY INFORMATION TI-1. Do Inventors describe the technology as: • state of the art • competitive to present technologies • disabling to a present technology TI-2. Development Status • proof of principle experiments • prototype

17. TECHNOLOGY INFORMATION TI-3. Spectrum of uses of technology: • could this be a platform technology • try to get at novel features • what other “mouse trap” is out there? TI-4. Timeframe for full development • What are the steps required to be fully developed? • What timeframe is required for full development?

18. Where are you entering the market? Patent status companies In Market Pre Market Product sample Basic Science Tested Product Pre-clinical Technology Phase II trial Regulatory approval Cost scale Income scale

19. 2ND CHECKPOINT • You understand the level of development of technology • You understand what other technologies offer? • At first glance, does it pass the mousetrap test?

20. MARKET INFORMATIONOVERVIEW MI-1. Is there an identifiable market or need? MI-2. Window of opportunity MI-3. Competitive products or technologies MI-4. Is the market accessible?

21. MARKET INFORMATION MI-1. Is there an identifiable market or need? • Is there a clear need for a suitable technological solution in this market (market-pull) • Is the technology being proposed as a solution for an undefined need (market-push)? • is it mature technology about to be replaced • is it additive to already functioning technology • is it revolutionary but will add to direct or indirect costs

22. MARKET INFORMATION MI-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 cycle

23. MARKET INFORMATION MI-3. Competitive products or technologies • Need to understand products competitive to your invention • Discuss comparable strengths and weaknesses of commercially available products and technologies • Be aware of potential disabling technologies presently developing • Look 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 companies

24. MARKET INFORMATION MI-4. Is the market accessible? • Is the market currently poorly served or are there existing good, established, products / technologies? • Is this a market with an excessively crowded patent landscape – requires stacking or multiple licenses. • What regulatory obstacles exist? • Typical time frame for market entry biotech versus energy • Does your product require large reinvestment/reprocess? new product in producing Clean coal new research tool requiring all new microscopes

25. 3rd 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.

26. Where are you entering the market? Patent status companies In Market Pre Market Product sample Basic Science Tested Product Pre-clinical Technology Phase II trial Regulatory approval Cost scale Income scale

27. COMMERCIAL INFORMATIONOVERVIEW CI-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?

28. 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.