NSF SBIR - Technology Commercialization Strategy and Patent Data
I have been working with the National Science Foundation Small Business Innovation Research (SBIR) Program for a number of years now. This past January I organized an all day Technology Commercialization Workship at MIT. A few weeks ago I followed up on that workshop and gave a talk on Intellectual Property Strategy at the NSF SBIR Phase 2 Conference in Baltimore. The two hundred Phase 2 SBIR Grantee companies in attendance are selected through a rigorous NSF review process that looks at technical merit and commercial potential. Each receives $500,000 over a 2 year period. The takeaway: these are high potential companies seeking to commercialize new technologies.
One of the approaches that I encourage innovators to use in forming their technology commercialization strategies is to make use of patent data. The patent system is a social contract in which society grants a limited time monopoly to an inventor in exchange for the disclosure of his or her invention. For a society that is very much "anti-monopoly" this is a big deal and it has long been part of the American landscape - it appears in the Constitution itself. The theory is that the patent system increases our useful knowledge and helps propel our inventions and innovations. The reality is that this knowledge has been difficult to access practically because of the detailed text-based nature of patents. Fortunately data visualization technologies such as those used by IPVision has changed this.
Oil Fields and Medical Devices
An example I gave to the NSF SBIR Grantees comes from a project done by a MIT Sloan Fellow student of mine in 2003. Sloan Fellows are sent by their companies to the MIT Sloan School of Management for an intensive one year MBA.
- This student from a South American Oil Field Products and Services Company was considering a relatively new technology known as “Expandable Tubes” which it was thought might cause a drastic change in the architecture of oil drilling and wells.
- He wanted to investigate the patent landscape as part of his technology and opportunity assessment.
- He and his patent lawyer had identified 4 patents of interest to be investigated.
In 2003 the 4 patents ("Starting Set") were cited by 9 other patents. Eight of them had "oil field" type of titles but one of them was a bit different: "Removable gripping set screw". A Forward Patent Landscape Map of these 4 patents showed that this then recently issued patent had cited 64 other patents as prior art (shown as the "64" in the (64,0) label in the green patent box):
To identify these 64 patents we produced a Backward Citation Map for this "set screw patent":
We noticed that most of these 64 prior art patents were medical device patents, specifically spinal implant related.
The Sloan Fellow student found this quite exciting because the technical issues involved in this oil field application and the medical device area were similar in many ways, although the environments are radically different. As the saying goes: "We are all victims of our own experience". In his paper he stated: "[For this particular patent] most of the innovations fall within the medical equipment industry. This interesting characteristic of the IP landscaping techniques forces managers to do what is otherwise considered awkward and is often avoided: to look around and into different industries and study how their solution to problems could represent a possible alternative for innovations. In this case, the technology of wells drilling and completion (Oil & Gas industry) tangentially contacts the Medical Equipment industry."
In using this example in my NSF presentation I looked to see what had happened to the landscape of these 4 Starting Set patents since 2003. In 2003 there were 9 forward citation patents citing the 4 Starting Set patents - today there are 166. On the left below is what a Landscape Map looked liked in May 2011 (the red vertical line is 2003). The map on the right is the Set Screw Landscape Map showing the 30 patents that now cite this patent:
As the Sloan Fellow noted: "This systematic exercise provides the company with a powerful tool to constantly assess its position from a technological stand point, gives direction of new technology development avoiding further encroachment either by competitors or to competitors patents, and finally helps identifying opportunities for merging, acquisitions, alliances and license agreements."
Isn't this exactly what Technology Commercialization is all about? Based on the questions I received following my presentation it is clear that these NSF SBIR Innovators "get it".
Note: To see this and other papers on Intellectual Property Strategy go to patents.mit.edu.