Tech Transfer Central

Protecting University IP against PTAB Challenges

Format: On-Demand Video/Transcript, or DVD
Originally presented: May 13, 2015

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Price: $197
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University IP is in the crosshairs for post-grant challenges at the Patent Trial and Appeal Board … and many are coming out on the losing end.

In fact, thus far three out of every four inter partes review petitions are being granted, and new petitions are being filed at an ever accelerating rate – more than 100 per month at last count. And once these cases reach trial, the news doesn’t get much better. The latest data show one third of claims reviewed have been ruled unpatentable by PTAB, and almost as many were voluntarily cancelled by patent owners. All told, more than half of all claims reviewed at trial no longer exist!

Yes, post-grant review appears to be having its intended effect – increasing patent quality and reducing the number of overbroad claims. However, the speed and relatively low cost of inter partes review has also had some serious unintended effects – namely, making it incredibly easy for infringers, trolls and others to challenge your patent and invalidate or weaken it based on prior art.  

TTOs face a real PTAB challenge, and the old ways of drafting claims and conducting prior art research will not cut it anymore. To IPR-proof your patents requires more preparation, more careful and selective drafting, and stronger support for each claim.

To help you meet this challenge, Technology Transfer Tactics has partnered with three world-class experts to provide the guidance you need in effectively preparing your patents for this new and potentially damaging venue for patent challenges.  Please join Kevin E. Noonan, partner with McDonnell Boehnen Hulbert & Berghoff LLP, DJ Nag, President of IP Shakti, and Jessica Morton, VP of Intellectual Property with IP Shakti, for this critical and timely webinar.

Our expert panel will provide you with:

  • A solid understanding of the mechanics of the PTAB
  • Best practices to help avoid PTAB challenges including:
    • Invention disclosure review       
    • Provisional filings
    • Continuation Practices & Preserving Priority Chain
    • Claim Practices
    • Robust patent families
    • Post-grant Reissue Practices
  • Guidance on which technologies in your patent portfolio are most likely to be targeted
  • Numbers and trends: Filings in 2014 and forecast for 2015
  • Cost comparisons of post-grant reviews versus post-grant reissues: using your budget wisely
  • How to keep your TTO’s legal and patent budget in check despite higher hurdles presented by PTAB

Meet Your Program Faculty

Dipanjan "DJ" NagDipanjan “DJ” Nag, CEO and President, IP Shakti LLC. IP Shakti LLC is an early-stage translation fund focused on medical devices. In 2013, IP Shakti launched two successful medical device companies and acted as an advisor for a licensing company, which went public in the U.S. DJ was previously the Executive Director, Office of Technology Commercialization at Rutgers University. Under his leadership Rutgers University ranked among the top 10 universities in 2011 for creating start-ups, according to the AUTM survey.  Previously DJ was a Vice President at ICAP-Ocean Tomo, an intellectual property transaction firm. He concentrated on the private sale of biotechnology and life sciences technologies. Before that he was a Director at Ocean Tomo, an intellectual property merchant bank responsible for private sale, patent auctions, and valuation of intellectual property assets. He has been responsible for creating more than 30 start-up companies and executing more than 300 license agreements from university technology transfer.

Kevin E NoonanKevin E. Noonan is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. An experienced biotechnology patent lawyer, Dr. Noonan brings more than 20 years of extensive work as a molecular biologist studying high-technology problems in serving the unique needs of his clients. His practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing. He has also filed amicus briefs to district courts, the Federal Circuit and the Supreme Court involving patenting issues relevant to biotechnology. Dr. Noonan is a frequent speaker, commentator and author on a variety of intellectual property law topics. He is a founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law.

Program Moderator

Jessica N MortonJessica N. Morton, JD, is the Vice President of Intellectual Property at IP Shakti, LLC. Jessica leads the firm’s activities in intellectual property areas, where she applies her extensive background in patent law. She advises clients on patent issues relating to patent portfolio mining, patent analytics, patent strength, monetization potential, and invalidity. She assists with identifying licensing targets and maximizing the value of infringed patents. She reviews issued patents, patent applications and invention disclosures for strength, breadth and potential pitfalls. Jessica has worked closely with clients ranging from Fortune 500 medical device companies, top universities and start-ups. Jessica has extensive experience in patent drafting and patent prosecution, including life sciences, pharmaceuticals, and medical devices. Additionally, her prior practice included patent litigation, opinion work on patent validity, post-grant proceedings, and due diligence, as well as overall portfolio management and strategy. Jessica is active in the technology transfer community, having previously worked in the technology transfer offices of two different universities.

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