Separating the Wheat from the Chaff: A Step-by-Step Process for Cost-Effective Technology Screening

By Danielle McCulloch and Laura A. Schoppe, Fuentek, LLC

Technology screening is the first half of a two-part structured process that helps prioritize the innovations in a technology portfolio to ensure effective use of resources for commercialization marketing and deal making. Screening involves rapid research about an individual technology. The process yields a preliminary evaluation of a technology's commercial/market potential, identifying those technologies that show promise and should be studied via an in-depth assessment (Part 2). In addition, technology screening indicates where it makes sense to spend funds on filing for a patent.

Because screening is a preliminary evaluation of a technology, it is an expedited and economical process that can be completed in 2 hours when performed by seasoned professionals with appropriate subject matter background, judgment, and experience.

This article presents an overview of the steps for screening a technology and preparing a report to aid decision makers.

Step 1: Review Background Materials

The key document is typically the invention disclosure. If the inventor included additional materials (e.g., papers, presentations), those may be helpful. Although it is recommended to conduct the screening before filing a patent application, any filings that have already been made can be reviewed as background materials. Spend about 20 minutes, reading only as much background material as is necessary to understand the technology.

Step 2: Write a Technology Overview

To help decision makers determine the technology's commercialization disposition, include a brief, easy-to-understand description of what the technology is, what it can be used for, its potential benefits, and its advantages over the current state of the art. An experienced screener can complete this write-up in as little as 15 minutes. (Note: This step can be done after conducting the IP and market research in Steps 4 and 5.)

Step 3: Categorize the Technology and Identify Keywords

Assigning a technology category will make it easier to group related technologies together across the IP portfolio, aiding in more strategic decision making. Also choose a set of keywords that can be used in IP and market searches (see Steps 4 and 5). Keywords should be detailed enough to provide results that are relevant to the subject technology, yet not so specific that related technologies are excluded.

Step 4: Conduct IP Research

Searching for IP information can be completed in about 30 minutes. Consider IP density (i.e., how much activity exists for a particular technology area) and the similarity of existing patents (i.e., how closely the existing technologies resemble the subject technology). Online tools include the U.S. Patent and Trademark Office; Free Patents Online; and paid options such as Delphion®, PatBase®, or Innography® services. Rather than focus on the technology's patentability, try to determine how active the technology's field is.

Step 5: Conduct Market Research

The goal in this stage of the screening—which takes no more than 30 minutes—is to get a snapshot of market activity using rapid online research. Keep an eye out for market information that can help identify the market size, market growth, general market trends, (see Step 6) and good potential licensees (see Step 7). Summary information as well as specific market information, such as short excerpts from market research reports, can be helpful to include in the screening report. Particularly useful online resources for free market data include search engines such as the Google® engine; press releases and report abstracts from market research companies; market research databases (e.g., OneSource®, Dialog®, Business Insights™ databases) that include market reports broken down by industry; and industry association Web sites.

Step 6: Analyze Research Results

In less than 30 minutes, analyze the findings of the IP and market research according to the key factors to consider when making a commercialization decision. Such factors include market size, the technology's level of development and ease of adoption, and how broadly applicable it is.

Step 7: Rate the Technology and Identify Potential Licensees

Based on the research and analysis, assign a rating to make it easier to prioritize resources on the portfolio. Rating them from Low to High can be very helpful, where those rated Low have little to no commercialization potential and High has shown to have the most favorable results and should receive a market-based assessment to verify the market's interest and develop a preliminary marketing strategy.

In the screening report, list companies identified in the IP and market research that might have interest in licensing the technology.

Conclusion

The screening report includes enough (but not too much) information for decision makers to determine whether further investment of resources is warranted. The economical and time-saving process outlined in this article will help focus resources on the most promising technologies for commercialization and will help hone any future marketing efforts.

Look for part 2 of this series, The Threshing Continues: A Step-by-Step Process for In-Depth Technology Assessment, in next week's edition of Insights.

Delphion is a registered trademark of Thomson Reuters (Scientific) Inc. PatBase is a registered trademark of Minesoft LLC. Innography is a registered trademark of Innography Inc. Google is a registered trademark of Google Inc. OneSource is a registered trademark of InfoGroup Inc. Dialog is a registered trademark of Dialog LLC. Business Insights is a trademark of Business Insights Ltd.