Tech Transfer Central
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Preparing for Patent Litigation: Practical Strategies for University Tech Transfer Offices

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: April 21, 2016

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Patent litigation is, by all accounts, an absolute nightmare that can drain your TTO staff’s time and precious financial resources, while damaging relationships with licensees and sometimes with inventors. But there are proven ways to prevent massive disruptions to your operations, your budget, and your IP strategy. By taking a proactive approach and assembling a dedicated team of internal and external stakeholders, you can stave off litigation threats, and handle them swiftly and appropriately if they do come your way – without throwing your TTO into chaos and interrupting your many other important initiatives.

Technology Transfer Tactics and Shore Chan DePumpo, LLP have assembled a team of four experts with first-hand knowledge of the litigation process, who are ready to share their best tactics for mitigating the impact on your day to day IP commercialization activities. Please join us when Alfonso Chan moderates this one-hour, interactive panel discussion that will cover:

  1. Defining a control group for litigation and decision-making responsibilities:
    • Authority and responsibilities
    • Recruiting criteria for control group:
      • university in-house counsel
      • technology transfer office
      • dean of research, the applicable department/school
      • the inventor  
    • How communications with and among the control group should be conducted
  2. Special considerations for public universities such as:
    • Decision-making between an individual campus and larger state university system
    • Communication with the state attorney general or other state governmental authorities
    • Understanding special contracting requirements that may govern the retention of outside litigation counsel
  3. Managing expectations among different university constituents:
    • inventor/professor
    • inventor/student
    • startups/spinoffs
    • licensees
    • general counsel
    • academic departments
    • board of trustees
  4. Handling public relations (press inquiries, online media commentary, promotion) effectively

Moderator:

Alfonso Garcia ChanAlfonso Garcia Chan
Partner
Shore Chan DePumpo, LLP

Mr. Chan is a trial lawyer, experienced in litigating complex intellectual property cases on behalf of universities and government research institutes. His law firm, Shore Chan DePumpo LLP, was originally founded to enforce university-owned patents.  Mr. Chan focuses primarily on semiconductors, electronic technologies, and the physical sciences. He also serves as an adjunct professor of law at Southern Methodist University, Dedman School of Law. Prior to practicing law, he was an officer in the United States Navy and a nuclear propulsion engineer at Naval Reactors Headquarters.

Panel of Presenters:

Michael PrattMichael Pratt
Interim Director of Technology Development
Boston University

Mr. Pratt joined Boston University’s Office of Technology Development in May 2000. He worked in Technology Transfer, focusing on the fields of physical, engineering, and computer sciences. Later as Director of the Office of Corporate Business Development, he was responsible for building long-term partnerships with a special focus on technology development between Boston University/Boston Medical Center and industry. And as Director of Translational Research & Corporate Relations, he provided support to faculty that participate in translational research programs through proposal development, implementation of translational research, and facilitating collaboration with industry.  As Executive Director of Business Development he led a team of business development professionals across all technical fields to connect Boston University discoveries with commercial opportunities. 

Teri SchultzTeri Schultz
Director, Office of Technology Management
University of Texas at Arlington

Since June 2013, Ms. Schultz has been the Director of the Office of Technology Management at The University of Texas at Arlington.  At UT Arlington, Ms. Schultz built the technology transfer office virtually from scratch, hiring a team and establishing processes for the evaluation and marketing of technologies created at the University.  She has also worked with faculty and Deans in the Colleges of Engineering and Business, and with the incubator, TechFortWorth, to establish programs and opportunities for entrepreneurship for students and faculty.  Ms. Schultz has worked as a patent attorney for over 20 years and has experience with patent prosecution, patent litigation, due diligence analysis and drafting, and negotiating all types of technology agreements, including license agreements, research collaboration agreements, acquisitions, material transfer agreements and clinical study agreements.  Ms. Schultz spent the first six years of her practice in the Austin office of the law firm of Fulbright & Jaworski (formerly Arnold, White & Durkee); and the next 12 years in the IP legal department of Alcon Laboratories, a pharmaceutical company in Fort Worth. 

Vinit NijhawanVinit Nijhawan

Mr. Nijhawan teaches MBA courses on Entrepreneurship at Boston University’s Questrom School of Business, and he formerly served as Managing Director of BU’s Office of Technology Development. He has over 30 years experience building five start-ups, serving as CEO of three. He was Venture Partner at Key Venture Partners where he sourced more than 200 deals. He is an advisor and board member to several technology start-ups and was a Mass High Tech All-Star in 2005. Mr. Nijhawan has participated in over 240 panel discussions and paper presentations, and is a Board Member of Mass Ventures, an early stage, quasi-public Massachusetts venture capital firm. In addition, he is a co-founder of EdTech Accelerator/Incubator LearnLaunch and is President of the Massachusetts Association of Technology Transfer Offices. Mr. Nijhawan is also on the board of the National Academy of Inventors.

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