AUTM CLE Academy

Round out your CLE requirements with topics designed for attorneys focused on excellence in the practice of Intellectual Property law with AUTM’s newly developed custom package of CLE webinars. This webinar package contains 16 webinars, 4 of which are ETHICS credits. 

AUTM has applied for approval in the following States that require prior approval for virtual learning credits, Illinois, Georgia, Ohio, Wyoming, North Carolina and Mississippi. Other States require proof of participation for self-reporting, which AUTM will provide.
All-Access Package for Law Firms: $5,000 
Sole Practitioners: $1,000 AUTM Members/$1,500 Non-Members. Purchase here

To provide unlimited access to these CLE webinars for your law firm, contact Samantha Spiegel at

Recorded Webinars in the CLE Package
Intellectual Property and Bankruptcy: When Worlds Collide – RECORDING
Mark Salzberg – Squire Patton Boggs LLP
Ivan Rothman – Squire Patton Boggs LLP

What It's All About
Join us for an analysis of the many challenges affecting intellectual property when the owner or licensee of intellectual property (IP) files for bankruptcy. We will discuss the treatment of IP under the “Bankruptcy Code” and how not all IP is treated equally. We’ll analyze the rights granted to IP licensors and licensees when their counterparties file for bankruptcy and the options available to them (and the actions that they need to take to protect their interests). We will also discuss how IP can be acquired or sold through bankruptcy, and strategies that parties can use, before bankruptcy, to protect their IP rights. The Supreme Court’s upcoming decision on the treatment of trademarks will be discussed.
Big Data, Big Opportunity: The What, How, Dos and Don’ts of Licensing Data – RECORDING
Angela Kujak, JD – UCLA Technology Development Group
Stephen J. Gardner, JD – Quarles & Brady LLP

What It's All About:
This session will provide an overview of the sources of data generated by a university that can be translated into a valuable asset for licensing, either alone or in conjunction with a patent or copyright license, including ways to assess the value of the data and how that value can be captured in a license agreement. We will cover a wide range of issues to consider when licensing data such as protected health information/personally identifiable information (PHI/PII), ownership, selling data, conflict of interest, confidentiality and exclusivity.
Top 10 Court Decisions of the Year That Affect Licensing – RECORDING
Russell E. Levine, P.C. – Kirkland & Ellis LLP

What It's All About:
In this session, we will identify and discuss the “Top 10” court decisions in the past 12 months that affect licensing. We will discuss each case and its impact on how we draft and negotiate patent license agreements.
Software Licensing: Not Your Traditional University Deal – RECORDING
Robert M. Gerstein, JD – Marshall, Gerstein & Borun LLP

What It's All About:
In this session, we’ll focus on some of the unique terms in licenses for software, particularly in contrast to those found in biotechnology and pharmaceutical transactions, which are common for universities.  We will include a discussion on the intellectual property rights that apply to software and how they can affect the rights granted, among other aspects of the license agreement. We will also highlight how most software is created, including the frequent use of Open Source Software, which impacts due diligence by licensees and the terms they expect to see in a license agreement.   
Fostering Innovation in Underrepresented Groups – ETHICS – RECORDING
Cedric D’Hue, JD, PhD – D’Hue Law LLC
Isabella Ortiz, JD – Northwestern University INVO
Tanya Zion, JD – Tanya Zion Consulting; Benchmarked Coaching

What It's All About:
This webinar will help explain the goals of the USPTO SUCCESS Act, the IDEA Act bill, and other government activities centered around diversity in patents. We will give a history of inventorship by women and minorities, including the USPTO’s SUCCESS Act Report and  Progress and Potential report, WIPO's report on women inventorship, and provide an understanding the year 1899 for African-American inventorship. We will also review the findings of several key reports to better understand the reasons for gender and minority gaps in patent ownership. Finally, we will discuss how the federal government signed the SUCCESS Act into law on October 31, 2018 upon recognizing these significant gaps. Q&A will follow.
Academic Institutions Also Have Secrets: Avenues for Protecting Trade Secrets in Publish-or-Perish Environments – RECORDING
Frank Amini, PhD and Lekha Gopalakrishnan, PhD– Winstead

What It's All About:
Trade secrets can be an institution’s most valuable and prolonged assets.  However, maintaining trade secrets in academic institutions can be challenging because trade secret protection requires secrecy, while academic institutions generally advocate publication and open collaboration.  Furthermore, determining whether trade secret protection is appropriate in academic institutions can be complex. This session will shed light on these challenges by covering the basics of trade secrets, guidelines for choosing between patents, copyrights, trademarks and trade secrets to protect inventions derived from academic institutions, and steps that academic institutions must take to protect trade secrets. 
AI and Precision Medicine: IP and Licensing Opportunities – RECORDING
Mary Lou Wakimura, JD – Hamilton Brook Smith Reynolds
Michael B. Dilling, PhD, CLP – Baylor College of Medicine
Steve Levine, PhD – Dassault Systemes

What It's All About:
Increasingly, artificial intelligence (AI) is being applied in the medical field. From disease-specific diagnostics to patient-precise surgery and therapeutics, the AI architecture employs analytical software and patient-based training data. In this session, we will discuss how universities, especially those affiliated with a medical school or research hospital, may be uniquely suited to license training data separately from analytical software. Collaborating universities and affiliates may pool their training data, resulting in a data collection that is in high demand by industry and new licensing opportunities.
Protecting Trade Secrets Disclosed to the FDA – RECORDING
Sharon M. Sintich, PhD – Marshall, Gerstein & Borun LLP

What It's All About:
There are advantages and disadvantages of keeping your research tools and methods for producing biological and pharmaceutical materials a trade secret. Recently, the FDA Commissioner considered a plan for increased transparency, which may destroy the required confidentiality to maintain a trade secret. We will provide a short primer on trade secret law including the Uniform Trade Secrets Act and the Defense of Trade Secrets Act and lead a discussion on policies and procedures to protect the trade secrets disclosed to the FDA. 
Patent Strategy, Litigation & Applicability for Institutions of Higher Ed - RECORDING
Kevin Kercher and Ed Gray – Thompson Coburn LLP

What It's All About:
Thompson Coburn Intellectual Property Partners Kevin Kercher and Ed Gray will walk attendees through the legal considerations surrounding patents including strategy, litigation and applicability. This will be of particular interest to technology transfer offices as universities across the country identify strategies to bring new technologies to market and the risks that accompany this.

Assignments: The Bad and the Ugly – RECORDING
Maura O’Connell, PhD – FR Kelly
Lakita Cavin, JD, PhD – University of Tennessee
Michael Wiwchar, JD, PhD – Faegre Drinker

What It's All About:
Many people in our profession are familiar with the US Supreme Court’s Stanford v. Roche decision in 2011. Not everyone is familiar with the April 2018 revisions to the Bayh-Dole Act regarding the obligation for universities to require employees to assign invention rights to their university, or the divergence of approach on the format and timing of assignments in Europe. This session will provide an overview of assignment requirements in the United States and Europe and provide suggestions for ensuring compliance in both jurisdictions.

A Comparative Analysis of Litigation in the International Trade Commission and District Court - RECORDING
Thomas Duston, JD – Marshall, Gerstein and Borun LLP

What It's All About:
This webinar will compare litigation before the International Trade Commission (ITC) to that in District Courts and will cover some of the strategies, tactical considerations and advantages with respect to litigation in the ITC. This webinar is ideal for university technology transfer associates, directors, counsel, and intellectual property (IP) practitioners at law firms who represents clients in licensing, IP and litigation matters.

The Impact of COVID on Intellectual Property – RECORDING
Charles Vorndran, PhD – Smith, Gambrell & Russell LLP

What It's All About:
This session will explore how Covid-19 has impacted patent law and other areas of intellectual property. We will review changes in United States Patent and Trademark Office practices and the various technologies that were filed using the accelerated examination procedure which was established in response to the pandemic. Some of the technologies we’ll discuss include diagnostic methods for detecting the virus and treatments

Patent Eligibility and Technology Management: Should You Look Outside Your US Comfort Zone for Patenting Diagnostics Inventions? – RECORDING
John S. Sears, JD, PhD, CLP – Innovators Legal (The Sears Group)
Kevin Noonan, JD, PhD – McDonnell Boehnen, Hulbert & Berghoff
Andrew W. Torrance, JD, PhD – Broad Institute
Charlie Shaw, PhD – Moffitt Cancer Center

What It's All About:
Most tech transfer offices, particularly in the US, pursue a US-centric approach to patenting. Patent protection is generally pursued in the US and sought outside the country only when a licensee is willing to subsidize the expense. This approach usually makes sense, because the US represents a very significant market and patenting is relatively affordable and reliable. However, recent Supreme Court decisions on patent eligibility have created an unfriendly environment for diagnostic inventions. In this session, we’ll discuss the merits of using a different patent strategy for diagnostic inventions in which US patent rights are abandoned in favor of foreign patent protection. 

Inequitable Conduct – How to Protect Your Patents from this Unenforceability Trap – ETHICS -  LIVE or RECORDED
Warren D. Woessner, JD, PhD – Schwegman Lundberg & Woessner
David Hricik, JD – Mercer Law School, Northwestern University
William Covey, JD – Office of Enrollment & Discipline, USPTO

What It's All About:
Patent litigants are still pleading and prevailing on the “inequitable conduct” defense to infringement. Following Therasense, may IP attorneys fell into a state of complacency about the acts required and the consequences for them - and for their clients - of pushing beyond advocacy and into the dangerous waters of inequitable conduct or its companion equitable defense, egregious misconduct. However, recent decisions have demonstrated that these equitable remedies can destroy both the value of the implicated patents and the reputations of the individual and their firms. Through a discussion of recent case law, participants will discover how to avoid an inequitable conduct ruling and the consequences should an attorney be found “guilty”.

Between a Rock and a Hard Place? Best Practices for Competitive Patent Analyses and FTOs for University Startups – ETHICS -  RECORDING
Sean D. Solberg, JD – Dentons Davis Brown Law Firm 
John Christie, MBA – Tulane University

What It's All About:
Technology-based startups need a strong patent strategy that includes an analysis of competitive patents. But there is an inherent tension between the need for a competitive patent analysis and the startup’s limited financial resources. This webinar will focus on best practices for pursuing competitive patents, plus freedom to operate analyses that satisfy the obligations to avoid willful infringement, all while staying within the budget constraints of a startup.  

To understand the legal rules as they currently stand, we will discuss the 2016 Halo ruling on willful patent infringement. We will also examine this topic from the point of view of a university technology transfer office (TTO) as a licensor of patent applications. How far should the TTO go with its Freedom to Operate analysis, and what is the TTO’s obligation to the prospective licensee? Lastly, we will suggest best practices for startups and TTOs for Freedom to Operate analyses.
*One additional ETHICS webinar is development and will be included in the package.  Details will be posted when they become available.