Tech Transfer Central

Patent “Trolls” Under Fire: Strategies, Tactics and Legislation Impacting University Patents & Licensing

Format: On-Demand Video/Transcript, or DVD
Originally presented: Tuesday, October 22, 2013
Price: $197
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Patent assertion entities — or “trolls” as they are better known — are in the crosshairs of state and federal legislators in response to a growing chorus of negative publicity and complaints from start-up companies and huge multinational technology conglomerates alike. These entities are typically characterized as innovation and job killers who abuse the court system to essentially extort money and block competition.

The concern starts at the very top, with the Obama Administration issuing executive orders regarding these companies’ practices. In addition, at least six pieces of proposed legislation are circulating in Congress that would address patent troll activity, and two states have already taken specific action to curb lawsuits brought by these non-practicing assertion entities.

Although most university TTOs welcome this potential relief from threats to their IP and associated licensing activity, exactly how this avalanche of legislative and regulatory activity will impact university commercialization efforts remains unclear. And universities will need to address these coming changes wearing two hats — as patent holders who may need to assert their own patent rights, and as licensors and start-up founders whose innovations may be threatened by patent trolls, or who may be approached by NPEs to participate in a “defensive” patent aggregation strategy.  

This complex landscape is in a state of flux, and expert guidance is needed to navigate the uncertainty as well as to adopt strategies that protect your university’s valuable IP. That’s why we’ve recruited two national experts for this timely and tactical program:

Patent “Trolls” Under Fire:
Strategies, Tactics and Legislation Impacting
University Patents & Licensing

When you attend this information-packed program, you’ll learn how the latest developments in patent troll legislation and regulation will impact your university’s IP, what your best legal options are when trolls attack your patents, and how your own patent assertion activities could be affected. Our duo of expert attorneys from Oblon Spivak will shed discuss:

  • The latest on anti-troll initiatives, including executive orders, proposed legislation, and USPTO actions
  • AIA’S impact on patent assertion and patent valuation
  • How anti-troll initiatives will affect licensing activity
  • Why and how software-related patents may need rethinking and careful claim drafting
  • How Vermont’s passage of an anti-troll bill may resonate nationwide
  • Dealing with new post-grant challenges to your patents
  • How Nebraska’s warning on patent assertion affected frivolous infringement claims
  • The optimal response to a troll’s demand letter
  • How your own patent assertion decisions and strategies may be impacted
  • Initial assessment of troll infringement claims
  • Counterclaiming based on Unfair Trade Practices
  • Changing standards for functional claims
  • Assessing other options for counterattack
  • When does a university cross the line into patent assertion territory
  • And much more!

Meet Your Team of Experts:

SCOTT A. McKEOWN is a member of the firm’s Management Committee, and co-chairs the Post Grant Patent practice group focusing on post-grant counseling, litigation and related prosecution issues. He leads the Post Grant Patent team responsible for electronics, wireless communications, software and computer-related inventions and business methods.

KEVIN B.LAURENCE is a partner and practices in the firm’s Chemical Patent Prosecution and Post-Grant Patent Proceedings groups. Mr. Laurence has a broad range of experience with patent matters and focuses on adversarial post-grant patent proceedings at the U.S. Patent and Trademark Office. He acts as lead counsel in reexaminations and is experienced with the issues involved in concurrent litigation.

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