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Technology Transfer Services for Colleges and Universities

Saul Ewing Arnstein & Lehr’s Intellectual Property attorneys regularly provide seasoned, client-focused intellectual property advice and counsel to universities and colleges in all aspects of securing and protecting their rights in commercially valuable intellectual property throughout the U.S. (as well as developing patent strategies on a global scale) and via international trademarks and copyrights, domain names, patent portfolio management and licensing. Additionally, members of our Intellectual Property team also counsel clients on licensing, joint ventures, and research and development collaborations, including complex licensing transactions that frequently involve sponsored research, software, business method patents and other intellectual property.

As a result of our extensive experience, our IP professionals are acutely aware of the many distinct nuances of higher education intellectual property representation, such as the strict financial restrictions under which higher education institutions operate, the “art” of working collaboratively and effectively with inventors involved in academics, and the importance of having the proper patent policies, invention disclosure forms, material transfer agreements, non-disclosure agreements and joint research agreements to best protect the patent rights of the university. Saul Ewing Arnstein & Lehr recognizes that these IP operating issues are absolutely critical to successfully working in an ever-evolving IP environment.

Attorneys in our IP Practice provide our university clients with a 360-degree perspective given their comprehensive knowledge and experience in four key IP service areas:

  • Invention Assessment – We work hand-in-hand with our university clients in conducting invention assessments to determine whether new inventions are patent-eligible. We use the latest technology to search prior art and determine whether the invention is new and non-obvious to warrant patent protection.
  • Patent Strategy – Once we determine that an invention is patent-eligible, we develop a comprehensive patent strategy to avoid potential interferences or derivation proceedings that would put the patent at risk.
  • Patent Prosecution – After the strategy is agreed upon, our team of patent professionals handles all required actions and documentation relating to the negotiation, drafting, review and approval requirements associated with university-related patent, trademark and copyright applications. We have handled applications in technical disciplines, including biotechnology, pharmaceutical, chemical, medical devices, nanotechnology, electrical, telecommunications, software and mechanical engineering, and facilitated international applications where appropriate.
  • Litigation – When necessary, our Intellectual Property Litigation team is experienced in pursuing and defending patent, copyright and trademark infringement (including anticybersquatting) cases, misappropriation of trade secrets and domain name dispute proceedings before the World Intellectual Property Organization (WIPO).

Experience

Saul Ewing Arnstein & Lehr attorneys have represented colleges and universities in these select intellectual property matters:

  • Serving as lead patent counsel for the University of Pennsylvania 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. On August 30, 2017, the FDA approved, for the first time, the use of CAR gene therapy for treatment of acute lymphoblastic leukemia (ALL) in the United States. The approval of Kymriah ushers in a new approach for treating certain children and young adults with B-cell acute lymphoblastic leukemia.
  • Experienced in stem cells, having performed patentability assessments and developed multiple patent portfolios around embryonic, hematopoietic, mesenchymal and spermatogonial stem cells for many different clients.
  • Developed and prosecuted patent applications directed to whole organism vaccines, subunit vaccines, recombinant vaccines and vaccine delivery systems, including delivery systems utilizing nanotechnology.
  • Experienced in the pharmaceutical and biopharmaceutical arenas, having developed and prosecuted patent portfolios for a number of university and company clients.

Recognition

The group includes attorneys who have received the following recognition:

Trade Groups & Associations