AUTM Journal Volume XIX No. 1 2007

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Table of Contents

  • Who Has Standing to Sue Third-Party Patent Infringers and the Factors Affecting Standing that Every Technology Manager Should Know
  • A New Technology Transfer Paradigm: How State Universities Can Collaborate with Industry
  • The Use of In-House Patent Management Professionals at Academic Institutions
  • Innovative Collaborations: A Focus on Legal Issues Surrounding Academic Collaborations with For-Profit and Government Entities

Editor’s Preface

Welcome to the 2007 edition of the AUTM Journal. We have four outstanding articles in this issue, and while the topics may be diverse, they are all relevant to the university technology transfer profession.

This issue opens with the Legalink submission, aptly named with the descriptive title, “Who Has Standing to Sue Third-Party Patent Infringers and the Factors Affecting Standing that Every Technology Manager Should Know.” In this piece, Russell E. Levine, PC, Christopher R. Liro, and Breana Smith review when a licensing company has standing to sue on its own and suggest types of contract language to enable standing by a licensing company. The authors also review case law in support of their conclusions.

The next article, “A New Technology Transfer Paradigm: How State Universities Can Collaborate with Industry,” focuses on new metrics for state universities to measure their success in technology transfer. Authors Catherine S. Renault, PhD, Jeff Cope, MSM, Molly Dix, MIP, and Karen Hersey, JD, list potential changes both within and outside of universities to develop better relationships between state universities and industry.

Michael B. Dilling, PhD, Lisa C. Beveridge, and Mercy S. Chen, PhD, contributed the third article, “The Use of In-House Patent Management Professionals at Academic Institutions.” Reporting on a survey conducted by the Baylor Licensing Group at the 2006 AUTM Annual MeetingSM, the authors observed increased productivity of the licensing staff when an office retained an in-house patent management professional. The data also suggest these professionals may lower the costs of provisional and nonprovisional filings.

The issue concludes with “Innovative Collaborations: A Focus on Legal Issues Surrounding Academic Collaborations with For-Profit and Government Entities.” Adapted from a talk and manuscript from the 2005 AUTM Western Region meeting, Jeffrey A. Bojar, JD, and Jon Kappes, JD, discuss multiparty collaborations and consortia. In this concise article, the authors address antitrust, patent pooling, and issues relating to negotiating and executing consortium agreements.

Finally, please note that this edition of the AUTM Journal is the last in its present form. During the coming year, the AUTM Communications Task Force and AUTM headquarters will revise many of AUTM’s communication tools to provide AUTM members and external audiences more proactive, succinct and technologically advanced communications. The changes will roll out over the next year. Therefore, AUTM will not publish a second edition of the AUTM Journal in 2007.

If you are interested in working with the communications group at AUTM, please do not hesitate to contact me at kirsten.leute@stanford.edu. We will have some exciting volunteer opportunities arising in the near future!