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The 2018 Bayh Dole Revisions: Practical Compliance Guidance for Technology Transfer Offices

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: July 17, 2018

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Important revisions to the Bayh-Dole Act have now taken effect, and it’s critical for TTOs to ensure their compliance procedures are addressing the new rules. TTO leaders agree the changes will significantly increase the amount of time needed to assure full compliance — and some universities are hiring additional staff to handle the heavier load.

From changes in the abandonment and conversion processes to the impact on internal systems and procedure as well as communications with licensees, the changes represent a significant challenge.  But it’s a challenge that can be met and even bring improvements to TTO operations if handled with a strong training component and a clear, detailed operational plan.

To help TTOs ensure a smooth transition and full compliance, Tech Transfer Central’s Distance Learning Division has secured an expert team from law firm Amster, Rothstein & Ebenstein LLP to lead this one-hour webinar:

The 2018 Bayh Dole Revisions: Practical Compliance Guidance for Technology Transfer Offices

Join attorneys Charles R. Macedo, Dr. Alan Miller and Dr. Brian Amos as they take you through the key changes, their practical impact, and the specifics of implementation with staff, systems, procedures, and licensees. Here’s a brief look at the agenda:

  • The impact of the Bayh-Dole changes on:
    • compliance measures
    • staffing needs
    • case abandonment process
    • annuity fee procedures
    • provisional and non-provisional patent filings
    • invention rights assignments
    • timelines and changes to internal systems
  • Understanding the consequences of noncompliance
  • What potential licensees may ask during due diligence
  • Best practice tips for implementing changes in your office

Meet Your Panel of Experts:

Charles R. Macedo litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work. Companies and individuals from a wide range of industries turn to him to develop offensive and defensive strategies for the development and enforcement of their patent and trademark portfolios.

Mr. Macedo writes prolifically and lectures regularly as he tracks and analyzes in real time the most important developments affecting IP strategy and litigation. As Co-Chair of the Amicus Committee of the New York Intellectual Property Law Association, Mr. Macedo has been principal counsel or additional counsel on amicus briefs in some of the leading patent cases of recent years, including Cuozzo, Highmark and Octane, Kimble v. MarvelMayo v. Prometheus, Association of Molecular Pathology v. Myriad Genetics Inc., CLS Bank Int’l v. Alice, and Akamai. His appellate experience also includes petitions for mandamus, for rehearing before the U.S. Court of Appeals for the Federal Circuit, and for certiorari to the U.S. Supreme Court on behalf of various clients.

He holds bachelors and masters degrees in physics from The Catholic University of America and a law degree from Columbia Law School, all with honors. The recipient of the prestigious AIPLA Robert C. Watson Award, Mr. Macedo also currently serves on the Editorial Board for Journal of Intellectual Property Law and Practice.

Alan D. Miller, PhD, evaluates, prosecutes and protects inventions in biotechnology, biochemistry, life sciences and medical and pharmaceutical arts. With scientific degrees in chemistry, biological sciences and neurophysiology, and background and research experience as a faculty member at the Rockefeller University, Dr. Miller’s breadth and depth of scientific experience serves clients in a wide range of technologies. With 19 years experience in patent prosecution in the U.S. and abroad, Dr. Miller develops patent prosecution strategy to best account for changes in patent law and practice, such as changes in non-obviousness and utility requirements. He advises and obtains patent protection for academic, research and commercial institutions such as Albert Einstein College of Medicine, The Feinstein Institute for Medical Research, Montefiore Medical Center, Mount Sinai Medical Center, Panasonic, and Victoria Link Limited.

For many years, he was a faculty member at The Rockefeller University in New York City where he received funding for research in Neuroscience from NIH, NSF and NASA. Dr. Miller has over 100 scientific publications.

Brian J. Amos, PhD, is a former research neuroscientist who represents academic and research institutions in the preparation and prosecution of patent applications worldwide, predominantly in the fields of biotechnology, medical therapeutics and pharmaceuticals. He works closely with scientists and Technology Transfer Offices to identify and inventory new patentable technologies; protect discoveries through patents; and commercialize intellectual property through licensing and development arrangements with other business entities. He is admitted to the New York State Bar and is registered to practice before the U.S. Patent and Trademark Office.

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