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IP Audit Checklist: Best Practices to Identify, Protect, Monetize and Enforce University IP Assets

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: September 26, 2018

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IP audits are essential to properly manage your university’s IP portfolio. To fully understand the commercial potential as well as the risks – in many cases involving hundreds of individual IP assets — a regular and systematic review process is an absolute must.

Without it, you could be losing out on significant revenue opportunities, overlooking litigation risks, and missing critical deadlines and filing requirements that could even cost you the rights to that IP.

That’s why Technology Transfer Tactics’ Distance Learning Division has created this detailed program led by a team of expert attorneys from the law firm Offit Kurman.

IP Audit Checklist: Best Practices to Identify, Protect, Monetize and Enforce University IP Assets

Join us for this practical session that will take you step-by-step through the process and procedures of a general audit, event-driven audit, and limited-purpose IP audit. Here is a sneak peek into the program agenda:

  • Tracking and maintaining regulatory upkeep on your IP assets
  • Understanding where your IP strengths and weaknesses are
  • Identifying IP for potential bundling and packaging for monetization
  • Realizing the value of your portfolio
  • Identifying risk areas that could trigger enforcement actions
  • Assessing risk of PTAB IPR and other challenges to validity
  • Understand what industry and licensees are looking for in high-quality IP assets

PLUS: Receive Offit Kurman’s handy IP Audit Checklist as a FREE BONUS!

Meet Your Presenters:

Jonathan WachsJonathan Wachs
Principal and Chair of the Intellectual Property Practice Group
Offit Kurman

Jonathan Wachs provides strategic counseling and operational advice to clients in the areas of intellectual property, commercial transactions and outsourced legal departments. As head of the firm’s Intellectual Property Group, Mr. Wachs works closely with clients to develop, register, analyze, enforce, and transfer intellectual property assets in a customized, cost-efficient, and highly effective manner. Additionally, he conducts intellectual property audits through which clients learn the nature and value of their intellectual property assets and the steps needed to protect such assets from misappropriation or dilution. He also manages a blog about intellectual property issues, Friday Factoids.

Gregory GrissettGregory Grissett
Principal
Offit Kurman

Gregory Grissett helps businesses navigate complex intellectual property issues related to product development, marketing and capital investment, with experience spanning the apparel, textile, sporting goods, medical device, oil & gas, automotive, furniture, and consumer products industries. Gregory has a rare combination of experience in the international and business aspects of intellectual property (IP). He lived and worked in Paris, France, where he gained experience in U.S. and European patent procurement and enforcement. He also has business experience working with a major global materials corporation in IP management and licensing roles. Gregory’s international perspective and practical experience help companies proactively manage IP development and enforcement issues unique to complex business operations.

Robert KatzRobert Katz
Principal
Offit Kurman

Robert Katz has practiced intellectual property law for over 30 years.  His experience encompasses virtually every aspect of intellectual property law. Robert has been first chair in a large number of patent, trademark, copyright, unfair competition, and trade secret cases including jury trials, and has also handled arbitrations and mediations. He has obtained and opposed preliminary injunctions and briefed and argued appeals in State and Federal Courts throughout the country. Robert has also handled patent interferences, reissues, IPRs and Derivation proceedings, and reexamination proceedings as well as trademark oppositions and cancellations at the USPTO. In addition to his active litigation practice, he has counseled clients on patent and trademark validity and infringement issues, has negotiated and drafted numerous license agreements, and has prepared and prosecuted patent applications in many different areas of technology.

Scott LloydScott Lloyd
Counsel
Offit Kurman

Scott Lloyd is a registered patent attorney who specializes in intellectual property counseling and commercialization work. He has served as a technology commercialization specialist and advisor to companies in a diverse array of markets, including biotechnology, pharmaceuticals, medical devices, food and beverage, specialty chemicals, technology and engineering. In addition, Mr. Lloyd spent ten years as in-house general counsel to small and mid-sized companies, where he managed corporate matters and resolved commercial disputes in addition to intellectual property strategy, and now serves in the same capacity for entrepreneurial clients.

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