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"U.S. Patent Sales by Universities and Research Institutes.” Love et al. Research Handbook on Intellectual Property and Technology Transfer (August 2019)

In addition to licensing or litigating patent rights, universities have the option to sell their patents outright to third parties. In this chapter, we explore the extent to which universities and other nonprofit research institutes currently participate in the secondary market for patents.

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Publication Publication

“SAS: When the Patent Office Institutes IPR It Must Decide Patentability of All Challenged Claims.” Quinn et. al. IPWatchdog (April 2018)

Yesterday the United States Supreme Court issued decisions in both Oil States v. Green Energy and SAS Institute v. Iancu. In Oil States the Supreme Court upheld the constitutionality of inter partes review (see here, here and here). In SAS Institute, a 5-4 majority ruled that there is no authorization in the statute for the Patent Trial and Appeal Board (PTAB) to partially institute a petition for inter partes review. Thus, the Supreme Court held that when the Patent Office institutes an inter partes review it must decide the patentability of all of the claims the petitioner has challenged.

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Publication Publication

“Industry Reaction to Supreme Court Decision in Oil State v. Green Energy.” Quinn et. al. IPWatchdog (April 2018)

Earlier today the United States Supreme Court issued its decision in Oil States v. Green Energy, finding that inter partes review is constitutional both under Article III and the Seventh Amendment to the United States Constitution. In a 7-2 decision, the Court determined that patents are a government franchise that are subject to review by the Patent Office even after granting, and can be revoked at any time.

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Events Events

“Building a High Value Patent Portfolio: Where Strength Meets Quality.” Quinn et. al. IPWatchdog Webinar (March 2018)

Join Gene Quinn, patent attorney and founder of IPWatchdog.com and Erik Reeves, Founder of AcclaimIP and CTO of Anaqua, and Kent Richardson for a free webinar discussion on building a portfolio versus buying patents, identifying gaps in your patent coverage, and unlocking the secrets of your own patent portfolio to identify needs.

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Events Events

“Start-up Stock Ownership: How to Contribute IP for Equity with Insights and War Stories - Panel Discussion.” AIPLA MWI 2018 (January 2018)

StartCo an exciting new company has successfully brought in investors, brought in IP, and built and great new business. The IP contribution was critical to their success. We’ll look at how the IP was successfully contributed, the impact on the capitalization, the key agreements and clauses, and the business motivation and implication of decisions StartCo had to make.

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