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Licensing Executives Society - Seattle Chapter Speaker Series

Sean O’Connor
"Explaining and Exploiting the Research Use Exemption in Patent Law"

November 15, 2006
11:30 am - 1:30 pm
(presentation 12:15-1:15)

University of Washington School of Law
William H. Gates Hall
Intersection of 15th and 43rd Avenue
Seattle, Washington 98195
206-543-9974

After the Federal Circuit’s 2002 decision in Madey v. Duke, the U.S. has very limited formal research use exemptions – that is limitations on patent infringement liability for research activities.  Researchers are now quite limited in whether they can use patented inventions in their research without permission.  This presentation will show that under properly structured federal or state public-private research partnerships, researchers can enjoy the protection of sovereign rights-based exemptions to patent infringement. 

In particular, this lecture will cover: i) the limitation of the common law exemption in Madey v. Duke; ii) the possible expansion of the Hatch-Waxman regulatory review exemption (35 U.S.C. 271(e)) in last year’s Supreme Court decision in Merck v. Integra; iii) the non-exclusive government license granted under Bayh-Dole (35 U.S.C. 202(c)(4)); iv) the doctrine of 11th Amendment sovereign immunity as it applies to state government use of intellectual property; and v) the so-called “IP Takings Clause” (28 U.S.C. 1498) that was recently considered by the Federal Circuit in Zoltek Corp. v. United States. 

Sean O’Connor is an Associate Professor of Law at the University of Washington School of Law where he also directs the Entrepreneurial Law Clinic and is an Associate Director of the IP LL.M. Program and the Center for Advanced Study and Research on Intellectual Property (CASRIP).  Professor O’Connor recently returned from Geneva, Switzerland where he presented a lecture on the Research Use Exemption at the invitation of the World Intellectual Property Organization.

Thank you to CASRIP, which will sponsor parking and a box lunch from Madres for this event.

One CLE Credit is pending approval for this program, sponsored by the Washington Law School Foundation, University of Washington School of Law. 

Registration: $20 – LES Members
                         $30 – Non-LES Members
                         $15 – Students

Please pre-register to secure your place for this lecture and luncheon. 

LES Members, click here to register online with your credit card;

Non-Members, click here to register with your credit card;

Students, click here to register with your credit card;

Contact Signe H. Brunstad at bruns@u.washington.edu if you have any questions.