Keep an Eye on the Issue of Sovereign Immunity When Licensing State University-Based Patent Rights in Light of Ericsson Inc. v. Regents of the University of Minnesota

• Date: 01 May 2019

34 ©2019. Published in Landslide®, Vol. 11, No. 5, May/June 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or

disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

For 2019 and the foreseeable future, product development collaborations between univer-

sities and private industry are expected to continue;1 the number of university licenses

executed—exclusive, options, or nonexclusive—remained consistent from 2015 to 2017.2

However, in light of a recent decision by the Patent Trial and Appeal Board (PTAB), par-

ties may want to consider the issue of sovereign immunity that may arise when licensing

patent rights from a state university.

Keep an Eye on the Issue of

When Licensing

BY KANDACE WATSON AND SHANE KILLEEN

in Light of

Ericsson Inc. v.

Regents of the University

of Minnesota

SOVEREIGN IMMUNITYSOVEREIGN IMMUNITY

Image: Anthony Nuccio