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

AuthorKandace Watson - Shane Killeen
PositionKandace Watson is a partner in Sheppard Mullin's San Diegooffice. She has extensive experience representing U.S. and globalcompanies in patent and technology licenses with U.S. and ex-U.S.universities and U.S. governmental agencies. She can be reached Shane Killeen is a law clerk inSheppard Mullin's Del Mar office...
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
in Light of
Ericsson Inc. v.
Regents of the University
of Minnesota
Image: Anthony Nuccio

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