Tech Transfer Central

Patent Reform: Impact and Strategy for University Research and Tech Transfer

Format: On-Demand Video/Transcript, or DVD
Originally presented: October 14, 2011

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Price: $297
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Like it or not, patent reform is finally here. After six years of wrangling and false starts, this week when President Obama signs the America Invents Act into law, for better or for worse, the most significant changes to U.S. patent practice in our lifetime will become reality. After many months of debate among IP and tech transfer professionals, it’s now time to focus on exactly what the new law says, what it means for your organization and its IP portfolio, and what you must do to adapt to its provisions while ensuring your valuable innovations continue to be optimally managed and protected.

Legal, licensing and tech transfer professionals have a huge stake in quickly getting up to speed on the new law’s complex new rules, as well as the equally complex implications those rules have for patent strategy and practice.

That’s why Technology Transfer Tactics’ Distance Learning Division has created this two-part webinar, focusing first on the specifics of the new law, and then on the strategies needed to apply it successfully.

In case you haven’t yet read the America Invents Act, click here to download the entire text. We urge you to read it and digest its contents prior to the program, and we urge you to attend both sessions of the two-part webinar series.

Please see below for details on the two-part webinar.

Session 1
Legal Analysis and Impact

Detailed review of all key provisions and their likely effects

  • First-inventor-to-file, including:
    • new definitions of prior art
    • new grace period provisions
    • replacement of interferences with derivation proceedings
  • Third Party Submissions
  • Post-grant Challenges
    • impact on Ex Parte Reexaminations
    • new Inter Partes Review
    • supplemental examination
    • Transitional Program
  • Elimination and Creation of defenses
    • Prior user rights
    • “Best mode” defense
    • “Advice of counsel”
    • “Tax Strategies”
    • “Human organism” claims
  • Changes in venue and jurisdiction for patent cases
  • New standard for false marking
  • New expedited proceedings
  • New oath and declaration procedures
  • Changes in PTO operations and fees
    • new fees and fee setting authority
    • new satellite offices
  • Timing of implementation — immediate and phase-in
  • Q&A with the experts

Session 2
Practical Strategies for Adapting to the New Reality

Expert guidance on key changes in operations, procedures, and decision-making

  • Documentation and disclosure
  • Researcher education
  • Provisionals and post-provisional period
  • Patent decision-making and filing
  • New challenges for securing investment funding
  • Assessing threats of post-grant opposition
  • Cost impact projections
  • Impact on patent drafting
  • Q&A with the experts

Your Expert Team of Presenters:

Charles R. Macedo is a Partner with the intellectual property law firm Amster, Rothstein and Ebenstein, LLP of New York. Mr. Macedo advises and litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation. He also assists clients in obtaining, maintaining and enforcing patent and trademark portfolios. Mr. Macedo is the author of The Corporate Insider’s Guide to U.S. Patent Practice, being published by Oxford University Press, and received the prestigious AIPLA Robert C. Watson Award for his analysis of the First to File System vs. First to Invent System.

Kevin E. Noonan, PhD, is a Partner with McDonnell Boehnen Hulbert & Berghoff LLP and has extensive experience in biotechnology and the chemical arts. Dr. Noonan brings more than 10 years of experience as a molecular biologist working on high-technology problems to his legal work. He has wide experience in all aspects of patent prosecution, interferences, litigation, and client counseling on validity, infringement, and patenting strategy matters. Dr. Noonan represents pharmaceutical and biotechnology companies both large and small, and he is particularly experienced in representing university clients in both patent prosecution and licensing.

Randi Isaacs is In-House Patent Counsel for Emory University’s Office of Technology Transfer. She is a registered patent attorney with the US Patent and Trademark Office and a member of the Virginia State Bar. Prior to joining Emory, she spent six years working with Intellectual Property boutique firms in the Washington DC metro area. During her years at Oliff & Berridge, PLC, and Plumsea Law Group, LLC, Randi focused on patent prosecution and intellectual property counseling.

Brad Brockbank is a Principal of Segue Consulting, a health care strategy, policy, and management consulting firm. He has also served as a Director, Commercialization Practice, for Foresight Science and Technology since 2009. Mr. Brockbank has more than 25 years’ experience in biomedical and environmental technology commercialization, business and economic development, and public policy. >From 1996 to 2008, he built and directed the Intellectual Property and Technology Commercialization Program at National Jewish Medical and Research Center (now National Jewish Health). Previously, he developed and implemented environmental technology commercialization and stakeholder involvement strategies for the Departments of Energy and Defense, and the Western Governors Association, as an employee of Battelle Memorial Institute and the Pacific Northwest National Laboratory.

Wesley D. Blakeslee, BS, JD, CLP, is executive director of Johns Hopkins Technology Transfer. He was formerly an associate general counsel at The Johns Hopkins University, where he practiced intellectual property and complex business law. Wes holds an engineering degree from Penn State University, and a law degree from the University of Maryland School of Law and is a Certified Licensing Professional. He began his professional career as an engineer and systems analyst with NASA, was later a partner in a small regional firm, and in 1983 formed his own practice in Westminster, Maryland, USA. From 1983 to 1989, while in private practice, Wes also served as director of computer development at the University of Maryland Law School, where he also taught computer law. He is frequently a featured speaker at national, state and local conferences and has been cited as a national authority on intellectual property issues in the Chronicle of Higher Education, and other publications.

Charles Goodwin, Ph.D., Director of Technology Licensing and Registered U.S. Patent Agent for University of Connecticut. Charlie received his Ph.D. in biochemistry from Johns Hopkins University School of Medicine in 1975. Following post-doctoral work at the University of Washington, he joined the faculty at Johns Hopkins. He then worked for Rhone-Poulenc becoming Manager of Regulatory Affairs and Quality Control. In 1987, Charlie joined the University of Connecticut as Director of Technology Transfer. Having passed the Patent Bar Exam, Charlie oversees the patent filing and prosecution for the University’s inventions. Charlie also handles inventions in the life sciences as well as extensions and amendments to licenses he negotiated earlier in his career at UConn.

Hannah Dvorak-Carbone, PhD, is an Assistant Director in the Office of Technology Transfer at the California Institute of Technology (Caltech) and a registered US Patent Agent. Her responsibilities include reviewing invention disclosures; making patent filing decisions and monitoring ongoing patent prosecution; overseeing the office’s financial operations; and negotiating options, licenses, and other agreements related to Caltech intellectual property. Prior to joining OTT, Hannah spent several years as a management consultant with the Toronto office of McKinsey & Company.

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