Tech Transfer eNews Blog

Foreign courts may offer cheaper, faster alternative in patent infringement litigation


By Jesse Schwartz
Published: February 19th, 2020

As anyone who has experienced it knows, engaging in a patent infringement fight in the U.S. is a serious undertaking. It’s expensive, time consuming, and can distract an organization from its core business. But when a valuable invention is being challenged, there are only a few routes a university can take. Litigation is one of the roughest, but there are ways to reduce the pain and even gain leverage over more well-heeled adversaries — and it may involve foreign jurisdictions.

According to the American Intellectual Property Law Association’s 2019 economic survey, infringement litigation seeking between $10 million and $25 million in damages can cost nearly $1.4 million and an additional $2.7 million if the case goes to trial and is appealed. For cases where more than $25 million in damages are at issue, litigation costs start at $2.6 million with trial and appeal costs at $4 million. For most universities, that’s a bitter pill to swallow with no guarantee of success.

However, thanks to our global economy and patent infringement remedies available in other countries, as well as some creative lawyering, you may have an alternative and/or complementary path to expensive, slow-paced U.S. litigation.

Intellectual property attorney M. Andrew “Drew” Woodmansee, with Hooper, Lundy & Bookman, P.C. in San Diego, says that taking your case to a foreign court can offer some significant advantages, but the tactic is not entirely without risk. He has used the approach with success, but Woodmansee says you want to be sure you’re on firm ground before you start drafting complaints for foreign courts. Here are four questions to ask first, he said:

  1. Do you know what you’re trying to achieve and will this get you there? First, you want to understand your university’s objectives in bringing litigation. For example, are you trying to weaken a competitor? Has a company challenged your patent in the U.S. and you want to subject them to a multi-front battle? Or, as is the case for most TTOs, are you looking for a less expensive and more patent-friendly venue that can serve to bring your adversary to the negotiating table?
  2. How strong is your patent portfolio? You want to be confident in the strength of your portfolio because a weak collection will “serve you poorly in other jurisdictions,” he noted.
  3. What can you learn from U.S. discovery that will guide you overseas? You may want to use the discovery process in the U.S. to give you information that will direct you to the most appropriate foreign jurisdiction, Woodmansee said. As examples, you can learn where products are produced, where materials come from, and where most of their products are sold. “This helps you determine where your opponent is most vulnerable,” he said, “and where you can get the biggest bang for the buck.”
  4. Consult the right attorney. Woodmansee underscored the importance of having qualified counsel who is experienced and intimately familiar with the IP law of foreign jurisdictions.

A detailed article on the pros and cons of filing an infringement action in a foreign jurisdiction appears in the February issue of Technology Transfer Tactics. For subscription information, click here.

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Genprex licenses potential diabetes cure from U of Pittsburgh


By Jesse Schwartz
Published: February 19th, 2020

Clinical-stage gene therapy company Genprex has entered into a licensing agreement with the University of Pittsburgh to advance a potential cure for Type 1 and Type 2 diabetes. continue reading »

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Webinar tomorrow — IP Litigation Financing: Risks and Benefits for Universities


By Jesse Schwartz
Published: February 19th, 2020

When it comes to fighting against patent infringement, most schools cannot afford to go the distance to protect their IP in court. Infringers are well aware of this unlevel playing field, and they make a strategic calculation that the risk of a legal challenge is less than the cost of a license. In most cases, they’re right: Universities do not have the financial resources to defend their valuable patent rights and obtain fair value for the use of the technology they worked so hard to develop.

But it doesn’t have to be that way. With the advent and growth of litigation financing options, universities can level the playing field and fight back. The results can be not only huge dollar awards, but also a stronger firewall against infringers.

To help university TTOs and administrators understand and evaluate this strategy, Tech Transfer Central’s Distance Learning Division has teamed up with litigation financing expert Russell J. Genet of Longford Capital to bring you this critical webinar: IP Litigation Financing: Risks and Benefits for Universities. You’ll learn how to monetize your university’s IP rights through a financed litigation approach, creating a level playing field against deep-pocketed infringers without risking a big hit to university coffers.

For complete details or to register, click here.

Also coming soon:

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Five Oregon state universities sign agreements to boost collaboration in research and innovation


By Jesse Schwartz
Published: February 19th, 2020

Five public universities in Oregon have signed a trio of new agreements aimed at advancing research, promoting collaboration, and boosting state funding for research and development. continue reading »

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Purdue start-up develops injectable drug to heal bones in aging patients


By Jesse Schwartz
Published: February 19th, 2020

A Purdue University start-up is developing an injectable drug that is designed to heal broken bones faster and strengthen weak bones in aging patients. continue reading »

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UC-Berkeley start-up monitors tiny eye movements to detect neurological diseases


By Jesse Schwartz
Published: February 19th, 2020

A start-up from the University of California-Berkeley is measuring the tiny movements of the human eye to evaluate a person’s neurological health. continue reading »

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Mtech Ventures wins $50,000 grant to support start-ups in Opportunity Zones


By Jesse Schwartz
Published: February 19th, 2020

Mtech Ventures, a tech start-up incubator at the University of Maryland, has won a $50,000 U.S. Small Business Administration (SBA) Growth Accelerator Fund competition award to support innovation in federal Opportunity Zones in the Baltimore-Washington metropolitan area.

Through the SBA award, Mtech Ventures will partner with the Association of University Research Parks (AURP) and the Center for Accelerating Innovation to organize community-needs roundtables, identify technologies with high commercial potential, and train entrepreneurs.

Mtech will also make efforts to raise awareness of Small Business Innovation Research (SBIR) and Small Business Tech Transfer (STTR) programs in low-income census tracts known as federal Opportunity Zones, which host federal tax incentives for new investments.

“We are truly excited to leverage Mtech’s technology commercialization capabilities and resources to support start-ups in local Opportunity Zones,” says Mtech director Satish Tamboli. “We aspire to make a significant impact in solving some of the most challenging problems in our distressed communities through entrepreneurial leadership and innovation.”

Mtech will initially focus on using the SBA grant to help develop technologies and start-ups in Opportunity Zones, especially around anchor institutions, research parks, innovation districts, new incubators and other places where new ventures can grow and thrive. The funds will not be directly invested in start-ups or technology projects.

The SBA Growth Accelerator Fund has distributed a total of $3 million to start-up incubators across 39 states; 15 of the awards, including the Mtech grant, went to incubators that support ventures in Opportunity Zones.

Source: citybizlist

Now on DVD, online video, and transcript: Qualified Opportunity Zones: A Powerful Program for University Research and Economic Development. Our panelists will share their real-world experience, and help your university assess the benefits and challenges associated with Opportunity Zone initiatives. For complete details, click here.

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Dianomi Therapeutics licenses nucleic acid technologies from WARF


By Jesse Schwartz
Published: February 19th, 2020

Drug developer Dianomi Therapeutics has entered into an exclusive licensing agreement with the Wisconsin Alumni Research Foundation (WARF) to advance a series of nucleic acid-based therapies. continue reading »

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Just released — World Benchmark Report 2019/2020: Data, Insights, and Best Practices from Business Incubators and Accelerators


By Jesse Schwartz
Published: February 19th, 2020

The just-published 5th Edition of the World Benchmark Report features data and best practices from 364 university, private, and corporate incubator and accelerator programs from 82 countries and 509 locations worldwide — the largest sample to date. Programs are benchmarked within their own peer groups based on three categories, seven subcategories, and twenty-one KPIs to reach an overall impact and performance score. And for the first time research has been extended beyond university incubators and accelerators to include public, private and corporate programs.

The World Benchmark Report 2019/20 is the only resource of its kind, presenting key figures and detailed guidance from top performing incubators that readers can compare and adapt to their own situation. No other resource will provide you with the quality or depth of information covered. Priced at just $249 and delivered immediately in PDF, this report is an affordable must-have for every incubator and accelerator. For complete details, click here.

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Mercer U start-up develops safer, more effective ways to treat brain diseases


By Jesse Schwartz
Published: February 19th, 2020

A Mercer University start-up is developing safer, more effective drug delivery systems to treat psychiatric and neurological disorders. continue reading »

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Shell invests in U of Alberta start-up that is turning waste into biofuel


By Jesse Schwartz
Published: February 19th, 2020

A University of Alberta (U of A) start-up has landed a major investment from Shell Ventures to advance its renewable gasoline and diesel technologies. continue reading »

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UC-Irvine celebrates fifth anniversary of innovation hub with new location


By Jesse Schwartz
Published: February 19th, 2020

UCI Beall Applied Innovation, a platform at the University of California-Irvine for tech entrepreneurship, has revamped and relocated, just in time for its fifth anniversary. continue reading »

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