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Opportunities and Pitfalls in Joint Development and Patent Licensing under the AIA


By David Schwartz
Published: July 11th, 2017

The America Invents Act created new benefits — but also some unexpected traps — in the patent laws surrounding university-industry collaborations. One key change involves carve-outs for “prior art” that would otherwise invalidate a patent. For example, the work of a “joint inventor” will be disregarded as prior art in certain circumstances. Likewise, an earlier-filed application does not count as prior art against a later-filed application if both applications were commonly owned (e.g., through a joint venture or partnership) at the time the second application was filed. This same prior-art avoidance can be achieved by entering into a “joint research agreement” without formally assigning ownership of the patent.

On the other hand, applicants must be aware of some traps in the law that can jeopardize the validity of patents. Filing an application in the name of the owner (as opposed to the inventor) may forfeit priority rights to a provisional application. Also, the Patent Office and the courts disagree whether a secret offer to sell the invention will be treated as prior art against the patent.

There’s much to consider, and Tech Transfer Central’s Distance Learning Division has scheduled a practical webinar will clarify the risks and benefits facing universities and their industry partners seeking to license jointly developed innovations. Join us on August 3rd for Opportunities and Pitfalls in Joint Development and Patent Licensing under the AIA.

For complete program and faculty details, CLICK HERE.

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