Ownership Issues and TechAssess

Sometimes technologies depend on the use of other intellectual property. It may be an improvement over someone else's patent, for instance. Or, it may be an algorithm that runs on a particular platform made by someone else. It is up to the case manager to figure out if rights are available....and, that takes time.

Ownership Issues is one of five categories evaluated with the TechAssess tool. It covers such cases, resulting in a positive or negative influence on a speed-dial graphical display for Ownership. The first question, in fact, is related to whether intellectual property is needed from others to use or produce the innovation. It may be answered with a "no," a "yes, minor licensing issues," like those of simply purchasing a commercially available software package, "yes, significant licensing issues," like having to obtain specific rights from another institution, and "not applicable," used when you don't know the answer yet or in cases where the question might not apply, like licensing to the owner of the other intellectual property.

A second question asks if there are co-innovators from elsewhere. Here, it is a question of having to enter into an agreement with the other party or whether to license non-exclusively. Either way, it may lower the potential benefit to the university. Since this case will almost certainly lead to discussions and negotiations with another party, the negative answer of "yes, more than one place" carries a heavier negative weighting when contributing to the score and the position of the needle on the speed dial.

If the innovation was conceived under a consortium or Joint Industry Project with industrial partners, the case will be harder to manage than others in your portfolio. Not impossible, just harder. And, occasionally, you may have a case where funding contracts are not available. This leads to further negotiations as well, and must be considered for its impact.

Example TechAssess showing a perfect score for the Ownership category.

You can now begin to see how the speed dials obtain a certain position on the TechAssess form. Each answer carries an associated, weighted score which contributes to a total for each speed dial. The questions, the answers and the weighting can all be adjusted by the user.