July 25, 2018

Harness Dickey Attorneys Take Part in Live Webinar About Protecting & Licensing University Patents

By Douglas A. Robinson, Principal; Tyson B. Benson, Associate

Harness Dickey patent attorneys Doug Robinson and Tyson Benson are scheduled to take part in an upcoming webinar that will discuss the impact of two recent Supreme Court decisions on the patent and licensing strategies of university tech transfer offices. The webinar will take place Wednesday, July 25, from 1:00 – 2:00pm ET and will be hosted by Technology Transfer Tactics.

The Supreme Court’s decisions in Oil States and SAS Institute this April simultaneously affirmed the Constitutionality of Inter Partes Reviews (IPRs) and changed the review process to include all claims of a challenged patent, respectively. The SAS Institute decision is expected to have a broad impact on the U.S. patent system — and on universities in particular — affecting patent filing strategies, licensing strategies, and post-grant litigation.

This webinar will discuss what these rulings mean and how they affect tech transfer offices. Key points will include:

  • Changes to Patent Trial and Appeal Board (PTAB) rules and procedures
    • “Usual and customary meaning” versus “broadest reasonable interpretation”
    • Implications for claim construction
    • Estoppel after PTAB decisions
  • Impact on licensing
  • Impact on IPRs, Post Grant Reviews and covered business method reviews
  • Best practices to ensure patent protection and license-ability

Benson, who will moderate the webinar discussion, is a recognized expert on IP strategies and Bayh-Dole compliance for tech transfer offices. His practice is focused on providing patent protection and portfolio management strategies for his clients’ most important technologies.

Robinson is a patent litigator and Principal in the firm’s St. Louis office. His practice is focused on contested matters in the areas of patents, trade secrets and trademarks. His experience includes all aspects of federal IP litigation, including IPRs and PGRs. He will join a panel with two members of the University of Nebraska’s NUtech Ventures office.

The webinar, titled “Protecting and Licensing University Patents in a Post-Oil States and SAS World,” takes place Wednesday, July 25, 2018 from 1:00 – 2:00 PM ET. It will be hosted by Technology Transfer Tactics’ Distance Learning Division. Interested parties can register for the webinar on the Tech Transfer Central website.