March-In Rights Imperatives

About the Course:

Has your institution received government funding? Is government funding behind your patents? Are you licensing patents that were developed with government support? If so, you really should listen to this informative webinar. Your rights and economic interests could be dramatically impacted by March-In Rights.

This session discusses the history of March-In Rights as well as current proposals regarding March-In Rights. The following are among the issues discussed during this timely webinar:

• Who can initiate March-In Rights? What are the criteria for initiating March-In Rights?
• To what extent are agencies required to have decision makers on March-In Rights represent different political views or to have been appointed by members of the two main political parties?
• How important are prices and product availability to an agency’s decision to March-In?
• To what extent can the exercise of March-In rights be appealed? How long is the window to file an appeal?
• Are patents that are not marked as having been funded under Bayh Dole at risk of being susceptible to March-In Rights?
• How can patentees (at least partially) inoculate themselves from March-In Rights risks?
• Is the patentee entitled to any compensation when March-In Rights are imposed?
• How are March-In Rights different from eminent domain? From compulsory licensing?
• How difficult is it to obtain a waiver for ‘non-compliance with the domestic manufacturer requirement’?
• What is the process for determining when triggering emergencies expire?

Course Leader: Ryan C. Smith, Ph.D., Partner, Duane Morris LLP

Ryan C. Smith, Ph.D. practices in the area of patent law. Dr. Smith has extensive experience in IP due diligence, and U.S. and international patent prosecution in the areas of biotechnology and chemical arts.  In addition, he has experience in matters directed to non-infringement, invalidity, and freedom-to-operate analyses, as well as experience in intellectual property due diligence associated with mergers/acquisitions, public offerings and private equity investments. Dr. Smith’s patent strategies have protected several innovative multimillion-dollar drugs including Solosec®, a small-molecule drug for women’s health, and Xiflam™, a small-molecule drug for treating various ocular diseases. Dr. Smith works with entrepreneurs, emerging growth companies, university technology transfer offices, and large public U.S. and international companies to identify and develop comprehensive intellectual property portfolios.

Prior to entering the practice of law, Dr. Smith was a research scientist at multiple biotechnology companies, including GE Healthcare and Illumina, where he invented a large number of patents fundamental to modern DNA sequencing methods.  Dr. Smith was a Postdoctoral Fellow at both Stanford University and IBM-Almaden Research Center, where he researched new polymeric materials for use in semiconductor manufacturing.

Dr. Smith is a graduate of the University of San Diego School of Law. He holds a Ph.D. in Chemistry from the University of California at Berkeley and a B.S. in Chemistry from the University of California at San Diego.

Course Length: Approx. 1.0 hours

$175.00 PER USER