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

Coronavirus update: Orders for all live programs will include up to five additional lines at no additional charge for staff within your organization who can attend remotely, and all live programs will include our digital package. Click here for more details.

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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.

Coronavirus update

In response to the spread of the COVID-19 virus and our customers’ efforts to minimize exposure through travel restrictions, at-home work, and reductions in internal gatherings for training and education, we are temporarily expanding our distance learning offerings to make all programs more accessible. Orders for all live programs will include up to five additional lines at no additional charge for staff within your organization who can attend remotely, and all live programs will include our digital package – the on-demand video and print transcript. These will be delivered soon after the live program with no extra fee. In the current climate resulting from pandemic control efforts, we hope these additional access options will help your organization continue to receive important professional education and training safely and regardless of travel and social distancing restrictions.

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Registration is $197 and allows access to one web connection and phone line for an unlimited number of people to listen in your organization. Gather your entire staff for maximum benefit.

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The on-demand digital package of this program includes the online video and digital transcript from the live program as well as the original program materials. Just choose your preferred format at checkout. A DVD copy of the program is also available as a $50 add-on.

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CLP and CLE Credits Available

Many state bars require written certification of attendance from the program sponsor. When you receive the access instructions for a live webinar, you will be directed to a webpage to download program materials. Included in these materials is an attendance form which should be completed and returned to us immediately following the presentation.

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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