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The Evolving State of Sovereign Immunity Before the Patent Trial and Appeal Board

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: May 03, 2018

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A handful of state universities have used the Sovereign Immunity granted in the U.S. Constitution to shield them from inter partes review challenges at the federal Patent Trial and Appeal Board. While in several cases these universities have been successful with this defense strategy, experts warn not to put too much faith in it for the long run as the law appears to be in flux and in some ways untested.

In one recent case, for example, PTAB ruled that the University of Minnesota had waived its rights by simply filing an earlier infringement action in a district court. In addition, pharma company strategies to sell patents to American Indian tribes in order to avail themselves of 11th Amendment protection are muddying the waters even further. 

It appears that sovereign immunity may add value to state university patents by reducing the risk of an IPR challenge, but at this point it’s not an ironclad defense.  

That’s why Technology Transfer Tactics’ Distance Learning Division has partnered with Tyson Benson, Associate with Harness, Dickey and Pierce, PLC, for this critical webinar update:

The Evolving State of Sovereign Immunity Before the Patent Trial and Appeal Board

Here’s a quick look at the agenda:

  • Recent decisions handed down by the Patent Trial Appeal Board, including decisions that:
    • held a university entity waived its sovereign immunity by filing a patent infringement case in district court;
    • denied trial sovereign immunity for lack of establishment that trial sovereign immunity should be applied in PTAB proceedings  
  • What technology managers should be doing to protect their patent portfolio during this ever-evolving subject
  • Potential impact on licensing and patent value
  • Updates from pending cases, new decisions, and/or arguments
  • Potential impact of the newly introduced Preserving Access to Cost Effective Drugs (PACED) Act

Meet Your Session Leader:

Tyson BensonTyson Benson
Associate 
Harness, Dickey & Pierce, PLC
Troy, Michigan

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.

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