Technology Transfer Tactics will be offering a webinar entitled "Sovereign Immunity as Inter Partes Defense: Legal Guidance and Analysis of Impact on Licensing" on September 6, 2017 from 1:00 to 2:00 pm (Eastern). Kerry S. Taylor and Peter Law of Knobbe Martins, and Andrew M. Howard of Shore Chan DePumpo LLP will provide a review of sovereign immunity cases and their implications, as well as important guidance addressing the factors that can work for you or against you when faced with an inter partes challenge. The webinar will cover the following topics:
• Legal background regarding sovereign immunity in administrative proceedings (SCOTUS Federal Maritime Commission case)
• Review of decisions and pending cases including:
-- Covidien LP v. Univ. of Florida Research Found. Inc., IPR2016-01274 decision
-- Neochord, Inc. v. Univ. of Maryland, Baltimore and Harpoon Medical, Inc., IPR2016-00208
-- Reactive Surfaces LTD., LLP, v. Toyota Motor Corp., IPR2016-01914 Decision
-- Are these decisions appealable?
• What actions can create a waiver of sovereign immunity, and how can you ensure your protection is preserved?
• Is dismissal of a petition, or termination of an IPR on sovereign immunity grounds, subject to judicial review? Or is the PTAB acting outside its limits?
• Implications for public universities, research entities, and private companies:
-- Can private companies protect themselves from IPR, PGR, CBM challenges by partnering with universities?
-- Is the structure of IP ownership -- for example, by a separate research foundation -- a potential bar to sovereign immunity?
-- Should state universities avoid joint development projects that result in co-ownership of a patent with a private university or a private company?
• Implications for licensing:
-- Marketing your sovereign immunity advantage – taking IPR risk off the table
-- Can state schools leverage the sovereign immunity defense in license negotiations? How big a factor is this for licensees, and how might you adjust your terms and expectations?
The registration fee for the webinar is $197. Those interested in registering for the webinar, can do so here.
Comments