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The Bilski Decision: Expert Strategies to Manage Its Impact on University IP

"Because forewarned is forearmed"
Format: MP3, CD, or PDF Transcript
Originally presented: March 30, 2010

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The U.S. Supreme Court’s highly anticipated ruling in the Bilski case has the potential to alter the landscape for business method patents and send shockwaves through the tech transfer community. Though no one can predict for certain the outcome, many observers believe the days of business method patents are numbered.

For TTOs, it’s critical to prepare now and determine your patent portfolio’s exposure to Bilski-related turmoil, decide how vigorously you want to defend affected patents, if at all, and explore alternatives for protecting relevant IP.

That’s why Technology Transfer Tactics has teamed with three university IP experts for a 90-minute audioconference focused on the practical steps and strategies you can take now to prepare for the fall-out — and minimize any negative impact on IP in development, already-patented innovations, pending applications, and existing license agreements.

Get critical guidance addressing every step
of the patenting and commercialization process

Our panel will cover the Bilski decision’s implications for every step of the commercialization and patenting process and deliver crucial guidance for tech transfer, licensing, and legal professionals:

  • What’s affected: The scope extends further than you might think, beyond software and IT
  • Understanding the machine-or-transformation test
  • Pre-disclosure: Working with faculty to configure innovations with M&T test in mind
  • Disclosure and triage/assessment: How should your investment and patent criteria change post-Bilski?
  • Patent strategy:
    • Impact on non-US rights
    • Using “do-not-publish” applications during pendency
    • Claim construction to match PTO guidance
    • Considering reissue applications for issued patents
    • Responding to rejections
  • Alternatives to patent protection: trade secrets, know-how, copyrights
  • Assessing and minimizing impact on existing licenses
  • Recalibrating enforcement actions
  • A bright side? Impact on patent trolls
  • And much more…

Your Panel of Presenters

Kevin E. Noonan, Ph.D., has extensive experience in biotechnology and the chemical arts. Dr. Noonan brings more than 10 years of experience as a molecular biologist working on high-technology problems to his legal work. He has wide experience in all aspects of patent prosecution, interference, litigation, and client counseling on validity, infringement, and patenting strategy matters. He represents pharmaceutical and biotechnology companies both large and small, and he is particularly experienced in representing university clients in both patent prosecution and licensing to outside investors.

Wesley D. Blakeslee, BS, JD, CLP, is executive director of Johns Hopkins Technology Transfer. He was formerly an associate general counsel at The Johns Hopkins University, where he practiced intellectual property and complex business law. Wes holds an engineering degree from Penn State University, and a law degree from the University of Maryland School of Law and is a Certified Licensing Professional. He began his professional career as an engineer and systems analyst with NASA, was later a partner in a small regional firm, and in 1983 formed his own practice in Westminster, Maryland, USA. From 1983 to 1989, while in private practice, Wes also served as director of computer development at the University of Maryland Law School, where he also taught computer law. He is frequently a featured speaker at national, state and local conferences and has been cited as a national authority on intellectual property issues in the Chronicle of Higher Education, and other publications.

Jim Baker, PhD, is currently the Director of Technology and Economic Development at Michigan Technological University. Jim’s current responsibilities include handling University inventions from disclosure, through patenting, and licensing to both established and startup businesses. Within the University, he is also responsible for terms of industrial sponsored research, non-disclosure, and material transfer agreements, as well as other related agreements with private sector partners. In addition to University technology transfer and industrial contracting, Jim directly supports the growth of regional technology companies through a close working relationship with a diverse network of the local and regional economic development partners and service providers including the Michigan Small Business and Technology Development Center supported by the U.S. Small Business Administration. Prior to entering the technology transfer field, Jim served as the Acting Director of the Michigan SmartCel Business Accelerator and has held positions in the engineering and information technology fields including the General Director of ChemAlliance, an online chemical industry regulatory compliance assistance center and Program Manager of the National Center for Clean Industrial and Treatment Technologies. Jim is a registered Patent Agent and holds a Ph.D. in Environmental Engineering from Michigan Technological University.

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