Tech Transfer Central

Bilski: The Impact of the Final Decision on University TTOs

Format: On-Demand Audio/Transcript, or DVD
Originally presented: August 17, 2010

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After much anticipation, while the Supreme Court found the particular claims at issue in Bilski v. Kappos to be directed merely to abstract ideas and thus not patent eligible, it nonetheless rejected efforts to eliminate claims directed at business methods as a class, and other rigid categorical rules of exclusion of classes of invention. Unfortunately, the Supreme Court left many critical questions unanswered.

So what does this mean to university technology transfer practitioners and their patenting practices? For example, how will inventions of an “abstract” nature be defined? How with the “machine or transformation” test continue to influence PTO examiners? How should patent prosecution change to help ensure validity? And how does the decision affect plans for appeals/reconsiderations? What about existing method patents, and the impact on both value and infringement?

Technology Transfer Tactics has recruited a top level team of legal experts and TTO professionals to specifically address the implications of the Supreme Court’s decision on university IP and the future patentability of business methods. Listen in as our panel will discuss:

  • The Federal Circuit’s “Machine or Transformation” Test
  • The Supreme Court’s “Affirmance”
  • What Effect Does Bilski v. Kappos Have  on:
    • Patent Prosecution Efforts?
    • Patent Licensing in/out?
    • Impact on Litigation (Current and Future)?
    • Patent Reform?
  • What’s Next?
  • Review of Upcoming Opportunities for Further Guidance from the Federal Circuit

Your Panel of Experts:

Charles R. Macedo is a partner with the intellectual property law firm Amster, Rothstein and Ebenstein, LLP of New York. Mr. Macedo advises and litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation. He also assists clients in obtaining, maintaining and enforcing patent and trademark portfolios. Mr. Macedo is the author of The Corporate Insider’s Guide to U.S. Patent Practice, being published by Oxford University Press, and has been the recipient of the prestigious AIPLA Robert C. Watson Award.

Scott Alter is a partner in Faegre & Benson’s Denver office. He focuses on intellectual property matters concerning software, electronics, Internet, business methods, telecommunications, electronic commerce and semiconductor technologies. Scott’s extensive experience includes developing and implementing IP strategies for protecting and monetizing technology assets; establishing invention disclosure programs; rendering opinions regarding infringement, validity and enforceability of patents; risk assessment and design-around analysis concerning new and current products; IP due diligence and agreement negotiations for corporate transactions; strategic analysis regarding patent litigation; strategic building of world-wide patent portfolios; patentability evaluation of cutting-edge technologies; and managing complex patent prosecution including appeals, reexaminations and reissues.

Ronald M. Kudla, Ph.D., MBA, CLP currently serves as the executive director of intellectual property, technology transfer, and new ventures at Rensselaer Polytechnic Institute. Kudla oversees the strategic development, protection, marketing, and licensing of promising innovations arising from the Institute’s research activities. He has previously held the position as director of academic liaison for North America within the Genetics and Discovery Alliances Group at GlaxoSmithKline, director of the Office of Technology Licensing at the University of Florida, and director of patents and licensing at the Wisconsin Alumni Research Foundation (WARF) in Madison, Wisconsin.

Dr. Kudla also has extensive experience in product development in the pharmaceutical industry. He served as the Director of Licensing and Business Development for G.D. Searle Inc. and Director of Worldwide Product Development at Lederle Laboratories, He served as the Manager of International Medical Product Development.

Dr. Kudla also serves as the CEO of PharmaServe International, Inc., a firm that is currently developing software for tracking and completing contract negotiations over the worldwide web.He received his Ph.D. in Pharmaceutics with a major in Biopharmaceutics from the University of North Carolina, Chapel Hill and an MBA in Pharmaceutical Marketing from Fairleigh Dickinson University, Teaneck, NJ.

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