Opportunities and Pitfalls in Joint Development and Patent Licensing Under the AIAAdd to calendar
Thursday, August 3, 2017
1:00 pm – 2:00 pm
*** CLE and CLP CREDIT ELIGIBLE ***
- Understanding how the CREATE act led the way for evolution to the AIA
- Overcoming Prior Art Based on Joint Inventorship [35 USC 102(b) exceptions]
- Overcoming Prior Art Based on Joint Ownership/Joint Research Agreement [35 USC 102(c) exceptions]
- Pitfall regarding assignee-filed applications [35 USC 118]
- Pitfall regarding secret commercialization as prior art [Helsinn v. Teva]
- Review real-world case examples
- How recent inter-partes review decisions regarding sovereign immunity can affect the structure of future joint development agreements
Meet Your Expert Presenters:
Andrew Baluch is a registered patent attorney specializing in global IP strategies, including international patent portfolio management, IP litigation, and post-grant patent revocation proceedings. In 2012-2013, Mr. Baluch served as Resident Managing Attorney of the Shanghai office of the international law firm Foley & Lardner LLP. Mr. Baluch is a former Director of International IP Enforcement in the White House Office of the IP Enforcement Coordinator (IPEC). In this role, he oversaw the implementation of all international IP enforcement initiatives in the U.S. government’s Joint Strategic Plan on IP Enforcement. Prior to his White House appointment, Mr. Baluch served as an expert legal advisor to the Undersecretary and Director of the USPTO during the negotiation and enactment of the Leahy-Smith America Invents Act (AIA). In this role, he worked with the USPTO’s Patent Trial and Appeal Board (PTAB) on implementing the AIA’s new post-grant revocation procedures.
Mr. Baluch teaches International Comparative Patent Law as an Adjunct Professor at George Washington University Law School. He has published a book titled Patent Reform 2017: A Comprehensive Guide to Current Patent Reform Developments in Congress, the Executive Branch, the Courts, and the States (Thomson West 2017).
Chris Paschall Director of Licensing - Life Sciences at Ohio State University