Tech Transfer Central

Fortifying Inventorship Policies to Avoid Disputes and Ensure Maximum IP Protection

Format: On-Demand Video/Transcript, or DVD
Originally presented: February 25, 2021

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Price: $197
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In the university setting, determining IP inventorship is complex. Steps must be taken to evaluate whether the contribution of each individual in the lab — including students and post-docs — meets the inventive activity requirements according to the Patent Act. Add in researchers from more than one institution or a corporate partner, and things can get very sticky.

Given the stakes, it’s critical that your university fortify its inventorship policies to guide PIs in determining the level of inventorship each individual who contributed to the IP deserves. 

Without clearly defined policy and practices, egos can get bruised, relationships can get damaged, and dollars due to the university and its researchers can be lost. What’s more, incorrectly determining inventorship can lead to patenting delays and costly litigation.

Tech Transfer Central’s Distance Learning Division has teamed up with Paul E. Rauch, PhD, Founding and Managing Partner of Evan Law Group, for this one-hour webinar that will review how inventorship is determined, what information needs to be collected for proper determination, and how well-defined policy can support those imperatives and avert future disputes.  You will also learn about common inventorship problems and practical tips to avoid or solve them. 

Fortifying Inventorship Policies to Avoid Disputes and Ensure Maximum IP Protection

Here is a look at the program agenda:

  • Why inventorship matters
    • Ownership of patents
    • Prior art and obviousness-type double patenting
    • Priority claims
  • How inventorship is determined
    • Conception and reduction to practice
    • Amount of contribution to invention
    • Joint inventors
    • Correction of inventorship
  • Policy considerations and common gaps
  • Common inventorship problems
    • Arriving/departing faculty
    • Collaborations
  • Controlling claims to control inventorship
  • Inventors’ royalties

Meet your presenter:

Paul E RauchPaul E. Rauch, PhD, founded Evan Law Group LLC in 2004. In his practice, Dr. Rauch advises clients on maximizing the value of all aspects of their intellectual property. His expertise includes developing prosecution strategies and patent portfolios, as well as preparing validity and other opinions directed to a variety of technology areas.

Dr. Rauch has represented cases involving the diagnosis and treatment of various disease states, stem cells and related methods, pharmaceuticals, medical devices, and drug delivery systems. He has also developed international patent portfolios in several industries, including pharmaceuticals, cosmetics, device manufacturing, medical devices, and food processing. He has notable experience in the prosecution of patents which include reexamination and appeals to the Board of Appeals and Interferences, often personally presenting cases directly to patent examiners. In addition, Dr. Rauch counsels domestic and foreign companies on freedom to manufacture, import, and market their products in the United States.

Dr. Rauch received his JD, with honors, from George Washington University. He received his PhD and MS in Chemistry from Cornell University.

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