Tech Transfer Central
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Protecting and Licensing University Patents in a Post-Oil States and SAS World

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: July 25, 2018

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With its decision in Oil States, the Supreme Court affirmed the Constitutionality of PTAB’s inter partes reviews, but in a simultaneous decision in SAS Institute, it also changed the rulebook for IPR decision-making – changes that have profound ramifications for the entire U.S. patent system – and universities in particular.

And if that’s not enough, the U.S. Patent Office is changing the standard for how PTAB evaluates claims, moving to the “usual and customary meaning” standard in line with federal courts.

There’s a lot to unpack and digest from these rulings and changes, and they bring both good news and bad – along with plenty of uncertainty — for university TTOs. What do these decisions really mean? How should TTOs adjust their filing strategies to protect their patents? How will the changes affect licensing activity? Will PTAB challenges be more or less likely?   

Technology Transfer Tactics’ Distance Learning Division has secured a team of patent attorneys from the law firm Harness, Dickey & Pierce, PLC, who deal with post-grant proceedings on a regular basis, and technology transfer leaders from NUtech Ventures, who will provide the insight you need to react effectively to the changes.  Join us for this critical program:

Our team will discuss:

  • What the Oil States and SAS decisions mean
    • the end of partial institution
    • estoppel after PTAB decisions
    • impact on licensing
  • Changes to PTAB rules and procedures the PTO is implementing
    • ‘usual and customary meaning’ versus ‘broadest reasonable interpretation’
    • implications for claim construction
  • Overall impact on IPRs, PGRs and covered business method reviews
  • Best practices to ensure patent protection and license-ability

Moderated By:

Tyson BensonTyson Benson
Associate 
Harness, Dickey & Pierce, PLC

Tyson’s current practice is focused on providing patent protection and portfolio management strategies for his clients’ most important technologies.  He is also regularly involved in securing trademark protection, negotiating profitable licensing agreements, providing litigation support and conducting freedom to operate analyses.  Tyson takes pride in serving clients that range from start-ups to universities to Fortune 500 companies.  As a patent attorney who began his career as a computer engineer, he understands the importance of innovation and has the technical expertise to serve clients from virtually any industry.  He is highly regarded for being an enthusiastic advocate for his clients’ work and for safeguarding their assets through the approvals process and onto the open market.  Tyson is a frequent speaker and webinar guest on topics that include patent prosecution, legal updates, and intellectual property.

Panelists:

Doug RobinsonDoug Robinson
Principal – St. Louis Metro Office
Harness, Dickey & Pierce, PLC

Doug’s practice is focused on contested matters in the areas of patents, trade secrets and trademarks. His experience includes all aspects of federal IP litigation, in numerous district courts and across the country. A precise advocate and experienced negotiator, Doug’s expertise spans every phase of the dispute resolution process, from pre-suit investigation through appeal. A large portion of Doug’s practice is devoted to Inter Partes Review and other proceedings before the USPTO, where he is admitted as a Patent Attorney. In addition, Doug frequently provides his clients with freedom-to-practice, validity, and infringement opinions.

Chery HorstCheryl Horst, JD
Assistant Director
NUtech Ventures

Cheryl Horst has spent the last 10 years working in technology transfer, with a life-science focus. She started her career as an intern with WARF. Throughout her career, Cheryl has managed a technology portfolio, negotiated and licensed numerous agreements, currently manages a patent portfolio of over 500 active and pending patents, develops IP strategy to protect and commercialize new inventions and interprets policy matters surrounding intellectual property. Cheryl has a B.S. in Medical Microbiology and an M.S. in Bacteriology from the University of Wisconsin- Madison. She is a Registered patent agent with the USPTO and has a J.D. from the University of Nebraska-College of Law. She has previous research experience working in an HIV Vaccine lab.

Zane GernhartZane Gernhart, PhD
Technology Manager
NUtech Ventures

As a technology manager at NUtech Ventures, Zane works to identify the best commercialization strategies for new technologies and to assist inventors at all stages of the disclosure process. Prior to transitioning to this position, Zane was first a Commercialization Analyst Intern and then a Technology Licensing Associate at NUtech, where he gained extensive experience with NUtech’s technology assessment procedures.

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