Tech Transfer and Patents: Observations at AUTM

My name is Cathi Kennedy and I am the program coordinator for the MSc in Patent Law. This week I’m attending the Association of University Technology Managers’ (AUTM) Central Regional Meeting in Indianapolis. Representatives from universities, law firms, and industry are here to exchange ideas, network, and learn about new trends and practices in the field.

Having neither a technical nor legal background, I am here to observe and absorb information and meet nice, very smart people who are interested in hearing about the MSc in Patent Law program.

Today’s first session was about the America Invents Act, which went into effect on March 16th. Two people on the panel were from the USPTO. They spoke to the new procedures and requirements surrounding the new act, and also about the AIA training and resources available for both new and seasoned patent examiners.

The other presenters were from law firms and a tech transfer office. They spoke about how the new act is changing the way patent applications are being written and prosecuted and took questions from the audience.

I also attended an interactive session on “Negotiating the Basics.” In this session, we broke out into groups in which half the took the side of the university and the other half played the role of the industry. Each side then had to go through the terms of negotiation on the technology for the Horseless Carriage from their perspective. The terms that were considered were scope, term, joint development, reps and warranties, consideration (payments), improvements, and enforcement of patent rights.

My half of the group represented the company side of the negotiation (although all the members of the group work for tech transfer departments). Panel representatives from a university tech transfer office and from a large biotech company then talked through each of the terms of negotiation from their viewpoint. It was interesting to see how each side ranked the terms’ importance and which areas were more contentious (consideration and reps and warranties for instance).

Tomorrow’s agenda: licensing opportunities from non-traditional sources, and trends and strategies for working with academia from the industry leader perspective.

Comments are closed.