Audioconference available on CD, as MP3 download, or PDF Transcript
Originally presented October 14th, 2008
Price: $197

Precedent-setting legal cases from the Federal Circuit and Supreme Court have been coming fast and furious over the past 12 months, changing not only the patent landscape but also the licensing and contracting strategies TTOs and attorneys must use to best protect the long-term value of university technologies.
Understanding the impact of the latest rulings, the potential for more changes in pending cases, and the latest rule changes and proposals from the USPTO — as well as international patent bodies — is more critical than ever, with huge financial and legal implications for inventors and universities alike.

That’s why Technology Transfer Tactics’ Distance Learning Division has lined up two of the country’s top attorney-tech transfer experts for special presentation:

Patent Law Update for Tech Transfer Professionals:
What’s Now, What’s Next and What You Need to Do

Lee Heiman, JD, of The Nath Law Group and Robert MacWright, JD, PhD, Executive Director of the University of Virginia Patent Foundation, will provide you with a well-marked roadmap to navigate the shifting rules and minefields represented by recent decisions, pending cases, and coming rule changes. You’ll learn how these rulings and legislative initiatives affect the licensing deals and contracts you’re working on now.

• Key clauses for improving your agreements
• The current status of USPTO rules packages and related litigation
• The current status of “Patent Reform” legislation and future prospects
• Impact and strategic considerations posed by USPTO appeals rules
• The latest on injunctive relief based on 6 post-eBay cases
• License drafting strategies to address MedImmune: royalty escalators and other patent contest-prevention clauses

Plus, we’ll highlight key cases both recently decided and on the docket, and tell you what they mean for your tech transfer office. Here are the cases we’ll cover with major implications for your day-to-day licensing activity:

• Micron Technology, Inc. v. MOSAID Technologies, Inc. — impact on subject matter jurisdiction and declaratory judgment actions
• SanDisk Corp. v. ST Microelectronics, Inc. – impact on CDAs and declaratory judgment actions
• Caraco Pharm. Lab. v. Forest Lab., Inc. — a telling post-MedImmune decision
• Perricone v. Medicis — a new decision affecting court definition of prior art
• Proveris v Innovasystems and Merck v. Integra — addressing limitations of FDA approval-related safe harbor from infringement action under 35 U.S.C §271(e)
• In re Comiskey and In re Bilsky — Redefining patentable subject matter
• Quanta Computer, Inc. v. LG Electronics — How the concept of patent exhaustion impacts licensing strategy
• Takeda v. Alphapharm and Ortho-McNeil v. Mylan Lab: post-KSR obviousness cases clarify impact of Supreme Court ruling

Meet Your Faculty:

Lee C. Heiman, JD, is Of Counsel in the Chemical, Pharmaceutical and Biotechnology Departments of The Nath Law Group. His practice areas include the procurement, development, and transfer of patents and other intellectual property; providing legal opinions; and managing intellectual property portfolios for a variety of clients. Before specializing in intellectual property, Mr. Heiman gained extensive trial experience, as well as experience in the formation of corporate entities and in commercial transactions, enabling him to fully advise clients on integrating IP into a comprehensive business strategy. Mr. Heiman’s practice covers the following areas: patent and trademark strategy and prosecution for the biotechnological and chemical therapeutic, pharmaceutical, academic, and systems management communities; providing legal opinions on patentability, infringement, validity, freedom to operate, and enforcement; and licensing, joint ventures, technology transfer, sponsored research, and due diligence. Mr. Heiman is currently serving as the Vice President for Industry Relations and as a member of the Board of Trustees of the Association of University Managers (AUTM). Mr. Heiman also serves as a member of the Steering Committee of the Licensing Executive Society (LES) Maryland Chapter, and as a Committee Chair for joint AUTM/LES conferences and task forces.

Robert S. MacWright, JD, PhD, is Executive Director of the University of Virginia Patent Foundation. Prior to assuming that position, he was a biotechnology patent attorney in private practice in New York City. Most recently, he was an associate attorney in the intellectual property department of the firm Skadden, Arps, Slate, Meagher & Flom LLP, where he represented several large stock underwriters and on their behalf carried out intellectual property “due diligence” analysis of the patent portfolios of biotechnology companies contemplating initial public stock offerings. He also drafted and negotiated patent license agreements for corporate clients, several of which involved hundreds of millions of dollars in up-front licensing fees. In addition, he was involved in patent litigation and in preparing and prosecuting patent applications for corporate and university clients. Most notably, he served as part of the legal team defending the patents of Johns Hopkins University in the case Johns Hopkins, Beckon Dickinson and Baxter Healthcare v. Cellpro. Dr. MacWright joined the licensing profession in 1985 when he became the assistant director of the fledgling Rutgers University Office of Corporate and Industrial Research Services. When that office was reorganized in 1987 to form the Office of Corporate Liaison and Technology Transfer (OCLTT), he was named its director. During his tenure in that position, the Rutgers invention disclosure rate went from seven inventions per year to more than 50. MacWright is a frequent speaker on topics related to intellectual property, biotechnology and licensing. He is an active member of the LES and AUTM.

Who Should Listen

Technology transfer managers and professionals, patent attorneys, university counsel, administrators and deans, research commercialization directors, licensing specialists, start-up managers, researchers and entrepreneurs, university research VPs, IP consultants, and others with an interest in the impact of patent law changes on licensing university innovations.

PROGRAM MATERIALS

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