Track E

E8 IPR Immunity for Public Universities: Leveraging in Licensing Negotiations - CLE Eligible

Track: Licensing Successful Practices

Target Audience: Intermediate

Alfonso Chan, Shore Chan DePumpo

Gerald Hrycyszyn, Wolf Greenfield & Sacks, PC
Jim O'Connell, University of Florida
Teri Schultz, The University of Texas at Arlington

The Patent Trial and Appeal Board recently held that state universities are immune from inter partes review (IPR) proceedings (and presumably other patent office proceedings) due to sovereign immunity. This means that the validity patents owned by state institutions cannot be challenged at the patent office after issuance. This holding could increase the value of intellectual property from state institutions and be used as leverage in licensing negotiations. The session will include case studies of how this IPR immunity for public universities affects licensing negotiations or aids marketing efforts.

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