The Threshing Continues: A Step-by-Step Process for In-Depth Technology Assessment

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

As the second phase in technology evaluation, the technology assessment is performed on technologies that successfully "pass" the preliminary screening and now require more in-depth analysis to confirm the commercialization potential. (For more about screening, see part 1 of this series "Separating the Wheat from the Chaff: A Step-by-Step Process for Cost-Effective Technology Screening.")

Based on more detailed information than a screening, the in-depth assessment uses extensive market information to recommend whether to proceed with a commercialization effort. For technologies that continue down the path to commercialization, an assessment also provides the basics of the marketing plan. This article presents the steps to take in assessing a technology and preparing a report for use by decision makers determining whether to proceed with marketing of the innovation.

Step 1: Review the Screening Report
If a screening has not been performed, then that is the first step of the assessment process (see the authors’ article "Separating the Wheat from the Chaff: A Step-by-Step Process for Cost-Effective Technology Screening"). If the screening was performed by someone else, the assessor should review that report, as well as other pertinent background documentation, in order to develop an adequate familiarity with the technology before proceeding with the inventor interview in Step 2.

Step 2: Interview the Inventor
By interviewing the inventor, you will solidify your understanding of the truly novel aspects of the innovation, its level of development, whether it is a single technology or part of a larger body of related work, and future plans for it. Ask the inventor to identify other potential applications for the technology, who might be interested in the innovation, and how easy/likely it would be for them to adopt it and/or develop it into a commercial product. Also ask for suggestions about possible products and sources of market information or industry experts to interview (see Step 6). Most importantly, gather details about any public disclosures of unpatented technology, which will aid attorneys when they develop the patent application

After the interview, update the technology overview developed during the preliminary screening, including a description of what the technology does, not how the technology works. Ask the inventor to review the description to confirm it is accurate, and remember that descriptions of unpatented technologies used to solicit expert interviews (see Step 6) must be "non-enabling" and not disclose any information that would trigger a "stat bar," which starts the 1-year clock for the filing of a U.S. patent application.

Step 3: Create a Value Chain
A value chain is a string of companies or collaborating players who work together to satisfy market demands for specific products or services. A well-constructed value chain demonstrates an understanding of the industry and shows how the technology can "fit" into the market. Understanding the various levels of product supply aids in targeting the appropriate types of companies for the expert interviews (see Step 6) and later marketing efforts.

Step 4: Refine the IP Data and Analysis
As discussed in the screening article, a technology’s commercialization potential is determined, in part, by the current IP landscape. During the screening this information was obtained quickly (less than 30 minutes) and without having interviewed the inventor (see Step 2). Now that first-hand information is available from the technology’s inventor, revisit the IP search conducted during the screening. As with earlier IP searches, the intent is not to search for infringers or prior art. Rather, the goal is to determine how active the field is and identify assignees on related patents that could be targets for expert interviews.

Step 5: Conduct Market Research
Again, the market data analyzed during the screening was obtained quickly and from limited sources. During the assessment, more detailed market research is not only warranted but required to confirm the technology’s commercialization potential. The questions are essentially the same as during the screening: what is the market size, market growth, and general market trends and who are the good potential licensees. For assessments, more time is devoted to the search (upwards of 6 hours) and a greater variety of sources are tapped (fee-based information as well as Internet-based free sources).

In the next step, the data obtained from secondary information sources are further refined through primary research-that is, by interviewing industry experts.

Step 6: Interview Industry Experts
The expert interviews provide first-hand impressions from people working with relevant technologies on a daily basis. These individuals can provide information that often is difficult to locate in traditional secondary sources of information. In addition, experts interviewed may be potential licensees or partners, and they may be able to provide other contacts in the industry.

Selecting the experts. The most obvious targets are companies or organizations that are doing work in the same technology area as that of the subject technology. In addition, entities working in related fields where a relevant technology might be used also are targets.

Requesting the interview. Contacting and engaging experts can be challenging, so this step requires tenacity and a willingness to use multiple approaches if necessary. E-mail is a quick method for contacting a large number of experts in a short amount of time. The e-mail should include the following:

• Brief introduction: Introduce yourself and the nature of your effort.
• Overview of the goals of the interview:Include a few sample questions as well as a time estimate for the interview.
• Technology description: Ensure the description is non-enabling if necessary (see Step 2).

Conducting the interview. During the interview, remember that the goal is to gain insight on the critical aspects of commercial evaluation:

• How does the technology compare to the state of the art?
• What aspects of the technology are innovative?
• What industries could use the technology?
• What is the market size?

Step 7: Develop the Recommendation and Next Steps
Based on the research conducted above, develop an action-oriented commercialization recommendation. The following list of recommendations is listed as an example: 

• Pursue an active, outbound marketing campaign. A healthy market for the technology with viable and interested licensee prospects exists, and most likely a deal would at the very least cover marketing costs.
• Post the technology to online sites as a passive marketing campaign. The technology is not deemed very competitive but, if IP protection exists, passive marketing may recoup some costs.
• Release the technology without spending further resources on commercialization or IP protection.

An "other" recommendation may be used in cases where further technology developments are needed, where the market seems poised for growth but is not yet ready for the technology, or where there is potential for positive human impact even if the market is minimal (i.e., the value of a license is in good publicity, not the bottom line).

Conclusion
Once complete, the assessment provides the objective, market-based information that decision makers need to determine whether commercialization should be pursued. For those technologies whose market potential is sufficient to warrant further investment of resources, the assessment report also provides the next steps that serve as the blueprint for the marketing campaign. Indeed, the marketing effort essentially has begun already, thanks to the expert interviews conducted during Step 6. As the second half of a two-part technology evaluation approach, assessments are a cost-effective way to make an informed commercialization decision and then-when the potential is there-move forward toward licensing success.

Danielle McCullouch and Laura A. Schoppe, Fuentek, LLC