Tech Transfer Central

Opportunities and Pitfalls in Joint Development and Patent Licensing under the AIA

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: August 03, 2017

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The America Invents Act created new benefits — but also some unexpected traps — in the patent laws surrounding university-industry collaborations. One key change involves carve-outs for “prior art” that would otherwise invalidate a patent.  For example, the work of a “joint inventor” will be disregarded as prior art in certain circumstances.  Likewise, an earlier-filed application does not count as prior art against a later-filed application if both applications were commonly owned (e.g., through a joint venture or partnership) at the time the second application was filed.  This same prior-art avoidance can be achieved by entering into a “joint research agreement” without formally assigning ownership of the patent.

On the other hand, applicants must be aware of some traps in the law that can jeopardize the validity of patents.  Filing an application in the name of the owner (as opposed to the inventor) may forfeit priority rights to a provisional application.  Also, the Patent Office and the courts disagree whether a secret offer to sell the invention will be treated as prior art against the patent.

There’s much to consider, and this practical webinar will clarify the risks and benefits facing universities and their industry partners seeking to license jointly developed innovations.

Opportunities and Pitfalls in Joint Development and Patent Licensing under the AIA

Technology Transfer Tactics’ Distance Learning Division has secured two patent law and licensing experts to lead this detailed program. Here’s a brief look at the agenda:

  • Understanding how the CREATE act led the way for evolution to the AIA
  • Overcoming Prior Art Based on Joint Inventorship [35 USC 102(b) exceptions]
  • Overcoming Prior Art Based on Joint Ownership/Joint Research Agreement [35 USC 102(c) exceptions]
  • Pitfall regarding assignee-filed applications [35 USC 118]
  • Pitfall regarding secret commercialization as prior art [Helsinn v. Teva]
  • Review real-world case examples
  • How recent inter-partes review decisions regarding sovereign immunity can affect the structure of future joint development agreements

Meet Your Expert Presenters

Andrew BaluchAndrew Baluch
Patent Attorney

Andrew Baluch is a registered patent attorney specializing in global IP strategies, including international patent portfolio management, IP litigation, and post-grant patent revocation proceedings. In 2012-2013, Mr. Baluch served as Resident Managing Attorney of the Shanghai office of the international law firm Foley & Lardner LLP. Mr. Baluch is a former Director of International IP Enforcement in the White House Office of the IP Enforcement Coordinator (IPEC). In this role, he oversaw the implementation of all international IP enforcement initiatives in the U.S. government’s Joint Strategic Plan on IP Enforcement. Prior to his White House appointment, Mr. Baluch served as an expert legal advisor to the Undersecretary and Director of the USPTO during the negotiation and enactment of the Leahy-Smith America Invents Act (AIA). In this role, he worked with the USPTO’s Patent Trial and Appeal Board (PTAB) on implementing the AIA’s new post-grant revocation procedures. 

Mr. Baluch teaches International Comparative Patent Law as an Adjunct Professor at George Washington University Law School.  He has published a book titled Patent Reform 2017: A Comprehensive Guide to Current Patent Reform Developments in Congress, the Executive Branch, the Courts, and the States (Thomson West 2017).

Chris PaschallChris Paschall
Director of Licensing – Life Sciences
Ohio State University

Chris Paschall, Ph.D., is the Director of Licensing in the Technology Commercialization Office at The Ohio State University.  He and his team are responsible for commercialization of the life science portfolio at OSU.  Prior to joining OSU, he was a Licensing Manager for the University of Virginia Licensing & Ventures Group, a Licensing Associate in the Emory University Office of Technology Transfer, and a Licensing Associate at the UVA Patent Foundation. In 2008, he became a registered patent agent with the U.S. Patent and Trademark Office, and in 2010, he became a Certified Licensing Professional.

Paschall received his doctorate in biomedical engineering from the University of Virginia, where his research focused on leukocyte adhesion in inflammatory responses and its application to targeted drug delivery. He has published numerous scientific articles and a book chapter on technology commercialization in the pharmaceutical arena, and is a frequent speaker and teacher on the subject of university tech transfer.

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