SRTTD MEETING NOVEMBER 12-13, 2003 ATLANTA, GEORGIA LUCY C. HICKS LEGAL COUNSEL, THE UNIVERSITY OF ALABAMA AT BIRMINGHAM

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1 SRTTD MEETING NOVEMBER 12-13, 2003 ATLANTA, GEORGIA LUCY C. HICKS LEGAL COUNSEL, THE UNIVERSITY OF ALABAMA AT BIRMINGHAM DIRECTOR, THE OFFICE OF INTELLECTUAL PROPERTY MANAGEMENT (THE UAB RESEARCH FOUNDATION/ SOUTHERN RESEARCH INSTITUTE) 1

2 AGENDA WHY TAKE ON THE CHALLENGE OF IMPROVING THE PROCESS NOW? WHAT ARE THE STEPS? TWO PARTS: ASSESSMENT IMPLEMENTATION WHAT DID WE FIND OUT AFTER ASSESSMENT? WHAT METRICS DID WE IDENTIFY? WHAT HAVE WE IMPLEMENTED TODAY? TIMELINE WHAT METRICS FOR SUCCESS HAVE IMPROVED? 2

3 WHY TAKE ON THE CHALLENGE OF IMPROVING THE TRANSACTION PROCESS NOW? Very frustrated customers internal and external No written processes; a maze of complex nonstandardized manual processes, forms, and documents Insufficient staff to perform contract and legal functions Lack of focus on transactions which resulted in highest value to organization i.e. research, license, cooperative agreements vs. MTAs, CDAs In the process of conversion from a paper system to a software system (KSS) 3

4 WHY TAKE ON THE CHALLENGE OF IMPROVING THE TRANSACTION PROCESS NOW? Easy metrics to show success to stakeholders and internal and external customers; turn around time, increase revenues Desire of UAB/Southern to grow; top 10 by 2010 Need to obtain additional internal financial support to expand the operations Tired of performing clean-up ; developer of opportunities, transactions and relationships not just 4 paper pushers

5 WHAT ARE THE STEPS? TWO BASIC STEPS: STEP 1 ASSESSMENT STEP 2 IMPLEMENTATION 5

6 WHAT ARE THE STEPS? ASSESSMENT Identify a person or persons to document the existing document flow; external if possible, not wed to the present processes; FULL TIME EFFORT Document the existing process flow Research, assess and take if necessary processes for improving and automating these processes; best practices Identify links to other parts of the business Identify the internal review group for buy in to the new and improved processes 6

7 WHAT ARE THE STEPS? IMPLEMENTATION Write them down and establish related SOPs Automate and standardize forms, documents, approvals Publish the improved processes, forms, documents Communicate and educate management and customers Establish metrics for success Reevaluate yearly; assign staff to manage the improved processes 7

8 WHAT DID WE FIND OUT AFTER ASSESSMENT? Very limited knowledge among customers as to our process or to the complexities of the process and resulting transactions Customers referred to the process as the black hole ; both internal and external customers Initial communications/contacts over promised, under preformed; lacked transactional experience The transaction process suffered from the front door syndrome i.e. is this handled by the Research Foundation or Grants and Contracts or Office of Counsel Transactions too complex for the relationships; bad use of form documents 8

9 WHAT DID WE FIND OUT AFTER ASSESSMENT? No ownership of the transactions; too many people just signing, not thinking about the transaction as a relationship Need authority to negotiate delegated down from swamped senior management and legal office Need to establish white papers to educate customers on complex issues direct/indirect calculations, sovereign immunity Need to encourage communications to all parties during development of the transaction documents 9

10 WHAT METRICS FOR SUCCESS DID WE IDENTIFY FOR THE TRANSACTION PROCESS? Return phone calls 72 hrs Team approach Development of Commercialization Strategy with Internal Customer; Partners meetings Written Correspondence to Internal and External Customers Compliance with Transaction Checklist Early Involvement of Business Divisions Management Early Identification of Conflicts Issues Staff and Customer Satisfaction 10

11 WHAT HAVE WE IMPLEMENTED TODAY? TIMELINE Dec 1, Hired External Consultant Highly qualified individual, software and efficiency background Dec 31, Review & Documentation of Existing Processes Completed Jan to Mar, Limited Publication and Education of Improved Processes to Internal Customer; Website Apr to Jun, Implementation of Improved Processes for IP Identification and Evaluation Jun to Nov, IP Backlog Utilization of Improved Processes to Clean-up Nov, 2003 Backlog Clean-up 90% complete 11

12 WHAT METRICS FOR SUCCESS HAVE IMPROVED? Turn around on MTAs, CDAs 3-4 days Initial communications with internal and external customer realistic and substantive Early and consistent communications with Conflicts Board and division management Office identified as valuable resource, facilitator not cog in transaction processes Written correspondence to internal and external customers the standard not the exception 12

13 WHAT METRICS FOR SUCCESS HAVE IMPROVED? Internal Support 65% increase in FY revenues increased over Research Agreement revenues (21%); License revenues (16%) Increase in Research Agreements which have longer term length and utilize multiple types of services and technologies (i.e. screening assay, toxicology, drug deliver in one RA) Increase in disclosure of intellectual property to Office; 43% increase in IPDs 13

14 THANK YOU! 14