Copyright © 20076/21/2016UC Berkeley IPIRA Page 1 Berkeley Tech Transfer AIA & on-line Invention Disclosure Form.

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Copyright © 20076/21/2016UC Berkeley IPIRA Page 1 Berkeley Tech Transfer AIA & on-line Invention Disclosure Form

Copyright © 2007 Berkeley Success in Corporate partnerships UC Berkeley's BP Deal $500 Million Research 6/21/2016UC Berkeley IPIRA Page 2

Copyright © 2007 Silicon Valley Startup Ecosystem 6/21/2016UC Berkeley IPIRA Page 3

Copyright © 2007 US Patent Law Evolution-1980 Judicial Chakrabarty decision: Supreme court establishes patenting of living organisms-software follows Legislative Court of Appeals of the Federal Circuit established to support patents Bayh Dole Act Gives University right to own patents Executive USPTO customer fees support the agency 6/21/2016UC Berkeley IPIRA Page 4

Copyright © years on- Judicial: CAFC loves every patent it sees 3X patent damage awards, auto injunctions = IP gridlock & business uncertainty Supremes fall silent on IP Legislative: 1995, US joins PCT, other efforts at international harmonization. Lemelson vanquished Executive: PTO issues lots of incremental patents. 6/21/2016UC Berkeley IPIRA Page 5

Copyright © 20076/21/2016UC Berkeley IPIRA Page 6 Pre US patent law reform IP Litigation

Copyright © 20076/21/2016UC Berkeley IPIRA Page 7 Pre US patent law reform IP Litigation

Copyright © 2007 Patent Tolls invade Silicon Valley organize as Intellectual Ventures, et al. 6/21/2016UC Berkeley IPIRA Page 8

Copyright © /21/2016 UC Berkeley IPIRA Page : Supreme Court KSR decision US PTO reacts: Judicial/Exec 1-2 punch

Copyright © 2007 Legislative Reform- America Invents Act 1 year on- harmonizes US with the World First to File Post-Grant Review Fee Collection Overhaul Patent Lawsuit Reform 6/21/2016UC Berkeley IPIRA Page 10

Copyright © 2007 Good news for you: Invention Disclosure Form online, streamlined Now Archaic- Signed notebooks, 3 rd party signatures on pages for IP eliminates: 1.questions on when conceived, reduced to practice (corporate sponsor exception) 2.non-inventor “read and understood” signature 3.wet signatures 4. dump hard copy- go all on line 6/21/2016UC Berkeley IPIRA Page 11

Copyright © 2007 Less good news: First to File provisions file patent before publication or rely on 1 year publication grace period Regent IP Counsel Marty Simpson concerned about predictability of grace period. Private firms very wary. Stanford OTL hard line to researchers- “if publish, no patent filing” 6/21/2016UC Berkeley IPIRA Page 12

Copyright © 2007 Publication Grace Period limits vs. race to the Courthouse 3 rd party publication after yours, but before UCB files patent (not just new mix of your team) Feb. Cal Bar meeting clarification by Janet Gongola, PTO official for AIA regulations If you publish on species: intervening publication on genus no limit on later UCB filing If you publish on genus: intervening publication species claims have species carved out (PCT proviso) 6/21/2016UC Berkeley IPIRA Page 13

Copyright © 2007 Just in! Troll repellent act passes Dec 5th disclose who the owner of the patent is why they are suing a company award attorneys' fees reduce the costs of discovery decide if valid or invalid early in case 6/21/2016UC Berkeley IPIRA Page 14