Judith A. Sheft is the Associate Vice President Technology Development at the New Jersey Institute of Technology. She is responsible for managing the university’s Office of Technology Development and creates programs and policies focusing on patent creation, intellectual property valuation, strategic use and protection of IP assets.
As an expert in intellectual property and licensing, what do you see as the challenges of most tech companies, today?
For technology companies the focus needs to be on the market and the business model, not on the technology. Technical people start many companies and for them it can be hard to appreciate the business side. In today’s environment where access to early stage funding is challenging it is critical that businesses accelerate their path and reduce their time to market, time to revenue and time to profitability. Companies need access to capital and even for those looking at federal programs such as SBIR/STTR it is important for them to be able to discuss the commercialization paths–not just the technology milestones.
What mistakes do you see companies make when it comes to patent creation and protection?
Companies need to be able to put their IP/patent strategy in line with the overall business strategy. However for early stage companies this can be a challenge – especially as their strategy may be evolving. In addition they need to make decisions about filing in foreign jurisdictions and that can be extremely expensive. Having a discussion with their outside patent counsel early on is critical. In addition with the new patent rules (America Invents Act signed by President Obama Sept. 16, 2011) they will need to be aware of changes such as first to file as opposed to first to invent that could have an impact.
Lastly most angel and VC funders will want to know what IP/patents the start up has so it is important to have an IP portfolio.
What words of wisdom would you impart when it comes to protection of IP assets?
Speak to your patent counsel early and often. They can help make the appropriate decisions regarding what to file on, where to file and how to utilize the patent system for strategic advantage.
Also – a company should not overlook other elements of IP protection such as trademarks, service marks, copyrights and trade secrets. These all have a place in protecting the company’s assets.
How have intellectual property protection, valuation, and strategic usage changed over the last 10, 15 years?
The biggest change is the recent America Invents Act, Sept. 16, 2011. This can cause a race to the patent office by teams that are working on the same technology area. Until it is implemented here in the US we won’t know the full impact on small businesses. These changes align the US system with the rest of the world. Furthermore as the US economy becomes more knowledge intensive, IP takes on a stronger role.
What sort of programs and policies have you created for the NJIT in the area of patent creation?
NJIT has an IP policy that encourages our faculty to disclose inventions to the Office of Technology Development. We have a very generous royalty sharing policy – one of the most generous among universities. We work with our faculty to identify commercialization paths for these inventions. Some may be suitable for licensing to a large company since they are not appropriate to start up a company based on the IP. Other inventions could be the basis for a new business. We showcase our technology/inventions in many venues to gauge industry reaction. We also work with a faculty that is interested in exploring opportunities to start up a business around technology they have developed.
What else are you currently working on?
I’m working with the NJIT SOM–Professor Michael Ehrlich, on the NJ Innovation Acceleration Center and the NJIT Student Innovation Acceleration Club. Our goal is to give students the opportunity to explore entrepreneurship and have a framework and forum to develop business concepts. We have been fortunate to receive support from Capital One to enable us to move these initiatives forward. This year we are hosting the 3rd Annual Newark Innovation Challenge for high school and college students. Students submit practical innovative ideas for review by a panel of judges for a chance to win a summer fellowship from Capital One bank to work on their idea at the NJIT EDC incubator. Last year the ideas ranged from new concepts for energy efficient buildings, smart phone applications, electric car charging station systems and survival/disaster kits. There is real desire by students to help contribute to making the world a better place.
You helped foster long-term alliance with Lucent/Agere and NEC, can you describe what has kept it together for more than ten years?
The reason we were successful was due in large part to the project management rigor that the technical teams followed. They had a very detailed workplan with hundreds of milestones that were reviewed in joint quarterly meetings. As a result of this discipline it was possible to complete a technical program with partners half way around the world and continue collaborating for a decade. All this happened in the early 90’s, before the proliferation of instant communication and mobile devices and apps. Fax communication was the preferred method of communication with e-mail gaining popularity later on the project. Having the project evolve in bite size segments enabled us to shift development priorities as need be – a term that today is referred to as pivoting strategy.
Did you have a mentor, or was there a book, or grad class, that influenced your career?
Curtis J. Crawford, President and Chief Executive Officer of XCEO, Inc., a consulting firm specializing in professional mentoring, personal leadership development and corporate governance was a mentor to me. During the time I worked for him he was President and CEO of Lucent Technologies Microelectronics Group and President of the Intellectual Property Division. He taught me to always give people a chance, to give them the opportunity to stretch their capabilities and expect greatness. He was a fantastic person to work for because in a large corporate setting he was willing to let people experiment and at times fail. The lessons I learned have transferred over to the work I am doing with entrepreneurs.