IP portfolio review for UK charity

Challenge: 

A UK-based charity with significant revenues from an older patent portfolio was facing a sizable reduction in income from 2017/18 due to patent expiry. With a current research portfolio of 300 active grants, the charity wanted to increase the conversion of its research findings from these investments in to new treatments, products and services for direct patient benefit. The charity wanted to better understand its portfolio, identify investments that could replace the imminently receding revenue stream, and get a better understanding of areas of research that should be supported in future funding rounds.

Solution:

Our approach involved three in-depth streams of work:

• Predictive Stratification: We reviewed the charity's research awards within the last 10 years (580 awards were in scope) to stratify the research portfolio by IP potential (filed and emerging). Stratification was based on an outline assessment of the novelty of the research, the research field and stage of development.
• Academic and TTO Surveys: We then ran an IP project characterization template on a secure web-based platform asking PIs to nominate exploitable IP from their research, by completing a simple IP characterization form for each invention arising from charity funding. In parallel, we surveyed every technology transfer office associated with management and/or commercialization activities of the IP/invention.
• Detailed Award IP Review: For each of the awards identified in Step 2 as having filed or emerging IP, we conducted telephone interviews with the relevant principal investigator to discuss the nature of the invention and the underlying science, current status of IP, future development plans, associated publications, views on commercial application and market opportunity.

We then characterized each project profile in terms of prospective value, risks and time to impact based on our in-house knowledge supplemented with desk research. We developed representations of the entire portfolio, illustrating the relative attractiveness of the various projects. In addition to a report outlining the prospective value of each invention, we submitted recommendations for changes to the organisation, processes and personnel to enable active management of the IP within the portfolio, as well as recommendations about which projects to put further resources in to.