Tech Transfer Central
Industry-Sponsored Research Management

Patent Infringement: Deciding When and How Your TTO Should Take Action

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Originally presented: December 16, 2010

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University technology transfer offices have long had a reputation for being hesitant, if not outright pushovers, when it comes to enforcing their patent rights. The big companies that take liberties with university IP assume the worst case scenario is a non-punitive compulsory license – and the result of this widespread perception is a weakening of university IP rights and, in essence, a huge discount from its real value.

Breaking this cycle can have a massive impact on the overall monetary value of your patent portfolio, and also speaks volumes to both potential infringers,  your licensees,  and your own faculty innovators who entrust you with their patents. But it’s not an easy thing to do.

That’s why Technology Transfer Tactics’ Distance Learning Division has recruited a top attorney and TTO executive to assist you in erasing the “pushover perception,” identifying  when a potential breach has occurred, determining when it’s best to take action against infringers, assessing other legal options short of a full-blown court case, and supporting your attorneys though the process. In this information-packed 60-minute program, our experts will help you:

  • Identify potential infringement by:
    • Monitoring the marketplace
    • Analyzing and evaluating existing patent portfolios
  • Decipher license agreement phrasing
  • Conduct effective licensee due diligence
  • Identify the right audit team
  • Fortify your audit procedures
  • Create a timeline from audit to litigation decision
  • Understand the pros and cons of litigation
  • Consider litigation as an investment
  • Gauge the Declaratory Judgment Risk

Plus, understand the intricacies of:

  • ADR and mediation
  • Initiating and evaluating settlement proposals
  • Creative and non-traditional resolutions
  • Return on investment analysis

Your Expert Presenters:

Lawrence K. Nodine is a partner at Ballard Spahr in the Intellectual Property Department.  He is the partner-in-charge of the firm’s Intellectual Property Litigation Group, and a member of its Trademarks and Copyrights Groups.  Since 1983, Mr. Nodine has served as lead counsel, including first chair trial counsel in bench and jury trials, on a wide variety of cases involving trademarks, copyrights, and patents, including many complex patent cases encompassing such diverse technologies as biotechnology, electronics, programming guides, vehicular telematics, pharmaceuticals, antimicrobial agents, hand-held electronic devices, commercial carpet and flooring systems, and avionics. Mr. Nodine has served as an arbitrator in patent infringement cases for the American Arbitration Association (AAA) and in private arbitration.  He is also an active mediator, having mediated more than 40 cases.  Currently, he serves as a domain name dispute arbitrator panelist, rendering more than 50 WIPO decisions pursuant to the Uniform Domain Name Disputes Resolution Policy. As an adjunct professor at Emory Law School since 1987, Mr. Nodine also teaches a variety of Intellectual Property classes and currently teaches Internet Law.

Dr. Pamela York is the Executive Director of the University of Iowa Research Foundation (UIRF), which manages intellectual property, licensing, and new company formation. Revenues and profits in FY09 were $45M and $8M, respectively, in a human life science-centric portfolio of 600 technologies. UIRF intends to generate a sustainable business model  and efforts to date include creating a more robust management and financial infrastructure, introducing an ROI-based approach, and increasing revenue by $19mil in FY09. Long term strategies include increased startup formation, and results since ’07 include building a new ventures effort, hiring CEOs-in-Residence, and providing proof of concept grants or convertible debt financing to selected projects or companies. About 40 startup concepts have been vetted, and a quarter has received non-dilutive funding or equity financing. Previously, Pamela was part of the founding team in two venture capital backed companies, Orchid Biosciences (NASDAQ: ORCH) and Princeton Lightwave (private). Her experience includes creating companies from scratch, raising capital, and business strategy. She has a PhD in electrical engineering from the University of Illinois, Champaign-Urbana, and has published on and holds patents in several technologies.

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CLP and CLE Credits Available
Please review your State Bar’s policy on distance learning credits prior to submitting the non-refundable application fee. We submit CLE applications (excluding NY, NJ, IL, LA & PA) for an additional $50 (unless otherwise specified upon checkout). Approval times vary per state and cover all attorneys in attendance. Application is not a guarantee of approval and attendance forms must be submitted following the program.

CLP Credits are also available.


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