Lance K. Anderson has a number of bones to pick with TTOs, but perhaps his biggest pet peeve — and biggest turn-off when being approached about investing in a technology — is when managers rush to file a provisional patent to impress him. In many cases, he says, these quick and dirty provisionals far overstate the true potential of the IP. Anderson, who is associate general counsel and IP manager for Emergent Technologies, Inc., an Austin, TX-based VC operating company that focuses on developing commercial opportunities for university-based technologies, describes the following hypothetical: “Let’s say a researcher is developing a new compound that shows efficacy in liver function,” he offers. “The minute I show interest, they go zip in and file an application and show me the filing date three days before with the broadest claims we know will never get issued. This causes people to overvalue what they have and gives us a priority date we will have to deal with.”

Anderson adds that it upsets him when the university files a provisional without due diligence into the patent’s ability, which can make for big disappointments. “In the quality of those priority documents you set the stage for the entire asset, and that can cause more damage to the value of IP than anything I’ve seen,” he asserts. Another complaint Anderson registers is that some TTOs simply don’t respond to his requests in a timely manner. “We do appreciate a call back,” he says. “It’s amazing how little support you receive from TTOs; there seems to be an inherent distrust with these offices.”

A detailed article on best (and worst) practices in attracting investors and licensees appears in the September issue of Intellectual Property Marketing Advisor. For subscription information, CLICK HERE.

Posted September 30th, 2008 under Intellectual Property Marketing

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