Saul Ewing’s Intellectual Property attorneys regularly counsel universities and colleges in all aspects of securing and protecting their rights in commercially valuable intellectual property throughout the U.S. and internationally via patents, trademarks, copyrights, and domain names. Members of our Intellectual Property team also counsel on licensing, joint ventures, and research and development collaborations. Such high-end work includes complex licensing transactions that frequently involve sponsored research, software, business method patents, and other intellectual property.
Working closely with university technology transfer offices, we handle U.S. and international patent applications in technical disciplines, including biotechnology, pharmaceutical chemistry, organic/inorganic/physical chemistry, medical devices, nanotechnology, electrical engineering, telecommunications, software, and mechanical engineering.
As a result of our extensive experience with the commercialization of technologies, our IP professionals are acutely aware of the strict financial restrictions under which higher education institutions operate; the art of working collaboratively and effectively with inventors and researchers involved in academics; and the importance of proper patent policies, invention disclosure forms, material transfer agreements, non-disclosure agreements, and joint research agreements to best protect the rights of the university.
Highly skilled at understanding and analyzing scientific data, many of our IP attorneys hold Ph.D. degrees in fields such as immunology, molecular biology, microbiology, organic chemistry, and biochemistry. In addition, our team has a working knowledge of iEdison reporting of inventions and patents and compliance with the Bayh-Dole Act.
Attorneys in our IP Practice provide our university clients with a 360-degree perspective in these key IP service areas:
Patents
- Invention assessments
- Inventorship determinations: conducting investigations to determine the specific contributions of researchers involved in an invention process
- Derivation proceedings before the USPTO
- Global patent strategy and opinions
- Patent prosecution and enforcement
- Patent portfolio management
- Transactions and licensing
Trademarks
- Trademark strategies
- Trademark portfolios
- Trademark prosecution and enforcement
- Transactions, licensing, and agreements
- Name, Image, and Likeness (NIL) rights
Copyrights
- Copyright strategies
- Copyright registration and enforcement
Advertising & Brand Management
- Advertising review and compliance
- Social media engagement
- Marketing programs, including sweepstakes, promotions and contests
- Content and technology development and ownership
Artificial Intelligence
- Generative AI use and governance policies
- Use, documentation, and disclosure of AI in inventions
Litigation
- Patent, copyright, and trademark infringement cases
- Misappropriation of trade secret claims
View a selection of our intellectual property matters on behalf of colleges and universities.
- The University of Pennsylvania as lead patent counsel in its alliance with Novartis to create the Novartis-Penn Center for Advanced Cellular Therapeutics, which focuses on the development of Chimeric Antigen Receptor (CAR) immunotherapy. This type of partnership between a university and big pharma is a landmark in the field of cell therapy in its breadth and magnitude.
- A Connecticut university in obtaining allowance for key U.S. patents. Prosecution required extensive negotiation with the USPTO Examiner, including the filing of multiple administrative petitions. The patents broadly claim proteolysis targeting chimera compounds.
- A Pennsylvania university in a due diligence review that allowed for our client to sign an exclusive, worldwide licensing agreement with an oncology therapies company to develop and commercialize small molecule compounds that can be used to treat tumors, such as breast cancer.
- Patentability assessments and the development of multiple patent portfolios around embryonic, hematopoietic, mesenchymal, and spermatogonial stem cells.
- Patent applications directed to whole organism vaccines, subunit vaccines, recombinant vaccines and vaccine delivery systems, including delivery systems utilizing nanotechnology.
- Universities in developing and prosecuting patent portfolios in pharmaceutical and biopharmaceutical arenas.
- A university in securing trademarks for its sports teams’ mascot and enforcing the trademarks.
- A university in obtaining a temporary restraining order against vendors who did not have a license to sell merchandise containing the team logo.
- An academic medical center in securing a settlement win in a patent ownership dispute in a California court. A biotechnology company sued the medical center for breach of contract and sought specific performance of ownership for a patented combination therapy for treating a multisystem disease. Our team secured a favorable settlement and litigation dismissal in which our client maintained ownership of the patented therapy and will receive future licensing fees.
- A university in reviewing and providing advice regarding intellectual property issues in agreements relating to the formation of and participation in esports leagues.
