Tech Transfer Central

What Patent Trolls Can Teach TTOs About Extracting Value From IP

Format: On-Demand Audio/Transcript, or DVD
Originally presented: April 16, 2009

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Price: $197
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We’ve all heard the horror stories of patent trolls invading market sectors and gobbling up every patent they could find – only to turn around and charge exorbitant licensing fees or threatening legal action against those that don’t pay up. But did you also know that there are countless valid and ethical NPEs (non-practicing entities) that have been wrongly accused of troll behavior? And that’s done a great disservice to all patent aggregators that are pooling patents for the right reasons.

Despite all the negativity surrounding NPEs, in fact TTOs are NPEs themselves. The mission and philosophy behind your efforts are certainly honorable — and the results you seek clearly aim to move innovations into the marketplace for societal good — but in most cases it takes a third party to take your technology forward. And the strategies used by aggregators and other NPEs can provide critical lessons in how to advance and protect your IP.

Threats, opportunities, legal strategies, deal-making, faculty and political pressure, misperceptions, Bayh-Dole rules … it all adds up to a huge question mark for TTOs in finding the right approach to this fast-growing set of players in the innovation marketplace.

That’s why Technology Transfer Tactics’ Distance Learning Division has asked two experts to dissect the pros and cons of this highly controversial issue, and leave you empowered to draw from “troll” strengths, as well as identify the strategies that will protect you in the event of a patent troll “attack.” Listen to this audioconference that will put you in the driver’s seat and clarify your position — and your best options and tactics when trolls, NPEs and aggregators come huffing and puffing and knocking on your door:

What Patent Trolls Can Teach TTOs
About Extracting Value From IP

This program will go beyond the headlines and deliver a balanced, insightful discussion along with concrete strategies you can use to fortify your IP and position your TTO to benefit from new revenue opportunities — without sacrificing your mission or undermining your technology development efforts. We’ll cover:

  • What — and who — is a troll, really?
  • The critical differences between NPEs, trolls and patent aggregators
  • The pros and cons of patent trolls as they pertain to university IP
  • What the “troll” model can teach TTOs about strengthening their IP portfolio
  • How to protect your IP from troll “attacks”
  • The troll stigma: balancing the intangible costs with potential benefits
  • Using patent landscape analysis to identify threats
  • Contracting to assure your technology isn’t “held hostage”
  • Detailed look at Intellectual Ventures
  • When to take the money and run
  • Successfully dealing with faculty and administration concerns
  • Adapting troll “blocking” strategies for your own strategic needs

Your Expert Presenters

Mary Anthony Merchant, PhD is a partner in the Intellectual Property Department of Atlanta-based Ballard Spahr Andrews & Ingersoll, LLP. She is leader of the Biotechnology Patent Practice Team and a member of the group’s Chemical, Pharmaceutical, and Medical Technology teams, as well as the Life Sciences/Technology Group. Her experience encompasses patent prosecution, litigation, reexaminations, licensing, due diligence, and opinions. She provides intellectual property counsel to a variety of clients, including multinational corporations and start-up biotech and medical-device companies. Dr. Merchant also provides counsel related to issues involving the U.S. Food and Drug Administration. She has been involved in emerging growth companies, both domestically and internationally, and has handled financial transactions involving initial public offerings, sales and procurements of assets, and mergers and acquisitions. Dr. Merchant is registered to practice before the U.S. Patent and Trademark Office and is a member of the State Bar of Georgia and the State Bar of Florida. She is active in the Licensing Executive Society, the American Intellectual Property Law Association, and the American Chemical Society. She has been named to Georgia Trend magazine’s Legal Elite in intellectual property (2004-2008).

Lawrence K. Nodine is a partner in the Needle & Rosenberg Intellectual Property Practice of Ballard Spahr. He is partner-in-charge of the IP Litigation Group and a member of the Trademark and Copyright Group. Since 1983, Mr. Nodine has served as lead counsel, including first chair trial counsel, on a wide variety of cases involving trademarks, copyrights and patents, including the Cabbage Patch Kids trademark case and many complex patent cases including diverse technologies (biotechnology, electronics, programming guides, vehicular telematics, pharmaceuticals, antimicrobial agents, hand-held electronic devices, commercial carpet and flooring systems, and avionics). Mr. Nodine has appeared before the Federal Circuit Court of Appeals and the Eleventh Circuit Court of Appeals. He is a member of the Atlanta and American Bar Associations, the State Bar of Georgia (serving as President of the Intellectual Property Law Section from 1998-1999), and he is admitted to all state and federal courts in Georgia, the Fifth Circuit U.S. Court of Appeals and the Eleventh Circuit Court of Appeals, as well as the Court of Appeals for the Federal Circuit. Since 1987, Mr. Nodine has served as an adjunct professor at Emory University Law School, where he has taught a variety of intellectual property courses, including copyright, trademark and computer law. For more than ten years, The Best Lawyers in America has named Mr. Nodine as one of the top IP lawyers in Atlanta. He has also received the highest ranking from Chambers USA: America’s Leading Lawyers for Business, a directory built primarily on client interviews, as a first-tier intellectual property attorney in the state of Georgia.

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