Tech Transfer Central
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Inter-Partes and Post-Grant Reviews: How to Protect Your University IP

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: December 16, 2014

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University IP is in the crosshairs for inter partes and post-grant reviews … and some are coming out on the losing end.

Just ask tech transfer leaders at the University of Illinois, the University of Michigan, and Kyoto University. They are just a few universities who’ve been bitten by a growing squall of petitions for inter partes reviews that have been filed in the aftermath of the AIA’s passage. If it can happen to them, IT CAN HAPPEN TO YOU.

To combat the risks associated with inter partes and post-grant reviews, Technology Transfer Tactics has partnered with three world-class experts to provide the tools you need to arm yourself against these new and potentially damaging patent challenges. Please join DJ Nag, President of IP Shakti, Scott Eidson, Partner at Armstrong Teasdale, and Shawn Ambwani, COO of Unified Patents, for this critical and timely webinar:

Inter-Partes and Post-Grant Reviews:
How to Protect Your University IP

Our panel will provide you with:

  • A solid understanding of the mechanics IPR (inter partes review) and PGR (post-grant review)
  • Due diligence best practices to help avoid patent challenges
  • How IPR is being used as a license negotiation tactic
  • What technologies in your patent portfolio are most likely to be targeted
  • Numbers and trends: Filings in 2014 and forecast for 2015
  • A review of the universities that have lost patents due to IPR – and how they could have prevented the challenges
  • Strategies to reduce the effects of IPR and PRG on early stage technologies and start-ups
  • How to keep your TTO’s legal and patent budget in check in light of potential challenges
  • Understand how the 11th Amendment immunity clause may work for state schools
  • And much more…

Meet Your Program Faculty

Shawn Ambwani, Chief Operating Officer, Unified Patents. Shawn is responsible for running Unified’s operations, membership recruitment, and marketing. He is Chairman-elect of Licensing Executives Society US / Canada – High Tech Sector. Most recently, Shawn was VP of Licensing and Business Development at Intertrust Technologies, Inc., responsible for patent and technology licensing programs with over $500 million in revenue. Prior to that he served as EVP at Nextreaming and co-founded Envivio. Shawn has a JD and MBA from Boston University and a BS in Mathematics from UCLA.

Dipanjan “DJ” Nag, CEO and President, IP Shakti LLC. Dr. Dipanjan ‘DJ’ Nag is the CEO and President of IP Shakti LLC, an early-stage translation fund focused on medical devices. In 2013, IP Shakti launched two successful medical device companies and acted as an advisor for a licensing company, which went public in the U.S. DJ was previously the Executive Director, Office of Technology Commercialization at Rutgers University. Under his leadership Rutgers University ranked among the top 10 universities in 2011 for creating start-ups, according to the AUTM survey.  Previously DJ was a Vice President at ICAP-Ocean Tomo, an intellectual property transaction firm. He concentrated on the private sale of biotechnology and life sciences technologies. Before that he was a Director at Ocean Tomo, an intellectual property merchant bank responsible for private sale, patent auctions, and valuation of intellectual property assets. He has been responsible for creating more than 30 start-up companies and executing more than 300 license agreements from university technology transfer.

B. Scott Eidson, Partner, Stinson Leonard Street LLP. Scott has a nationwide litigation practice focusing on complex intellectual property matters pending in state, federal and appellate courts. He has successfully tried multi-million dollar patent and trademark cases for Fortune 500 companies. These victories led Super Lawyers to name him one of the top IP litigators in Missouri and Kansas. Also recognizing his litigation skills, Washington University School of Law, Scott’s alma mater, invited him to serve as an adjunct professor. In this role, Scott teaches trademark litigation to upper level law students and LLMs. His numerous successes include defending companies against patent infringement allegations brought by license acquisition companies (patent trolls), and obtaining attorneys’ fees for his clients. As a registered U.S. patent attorney, Scott also helps clients (including many universities) manage their patent portfolios during prosecution and provides strategic advice pertaining to portfolio development and enforcement. At the U.S. Patent and Trademark Office, he has extensive experience representing companies in Inter Partes Review proceedings before the Patent Trial and Appeal Board and leads the firm’s Post Grant Review Group.

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CLP Credits are also available.


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