Join us for a webinar series on Investing in University Startup Companies.

July 13  |  Intellectual Property Due Diligence: A Critical Prerequisite to Funding Startup Companies

Speakers: Lekha Gopalakrishnan, Ph.D.Frank Amini, Ph.D., and Jonathan Van

Topics discussed include  intellectual property due diligence for venture capital transactions. We are grateful for our guest panelists Technium.

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Join us for a webinar series on Investing in University Startup Companies.

June 22  |  Overview of Venture Capital Deals: What Founders Need to Know
Speakers: Alex AllemannKristin Naidysh, and Andrew Steele

Topics discussed include legal issues, financial structures and implications. We are grateful for our guest panelists from Activant.

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Join us for a webinar series on Investing in University Startup Companies.
June 8  |  Legal and Financial Due Diligence: Looking Under the Hood
Topics discussed include legal issues, financial structures and implications, and intellectual property due diligence for venture capital transactions. We are grateful for our guest panelists from Baker Tilly.

Winstead PC is collaborating with Texas Health Catalyst at Dell Medical School at The University of Texas at Austin to support entrepreneurs who are in the early stages of developing their healthcare technology products.

Spearheaded by Dr. Nishi Viswanathan, Texas Health Catalyst is based on a unique model focused on the development of early-stage ideas and discoveries that have the potential for profound impact on the healthcare industry. Beginning in spring 2021, Texas Health Catalyst will launch its application process and will select 10 of the most promising candidates to join the program. Winstead attorneys will provide tailored consultations for each applicant to address current or potential legal issues.

Winstead will provide startup entrepreneurs with resources and support on legal matters such as entity formation, licensing from universities, IP strategy, funding, lease agreements, OSHA, privacy/global agreements, and more. The firm will also offer educational programming and opportunities to meet and network with other professionals in the startup community.

“Winstead is committed to moving healthcare technology and the latest innovations in the life sciences industry forward,” said Winstead Shareholder Lekha Gopalakrishnan. “Our collaboration with Texas Health Catalyst is intended to advance their mission of addressing unmet needs in healthcare through technology innovation.”

Winstead’s Emerging-Growth Companies & Venture Capital team works with a broad spectrum of individuals who are looking to take their business to the next level. The group’s experienced attorneys work with founders, entrepreneurs, startups, and emerging-growth companies, providing tailored legal counsel designed to help them meet their specific goals. Winstead’s Intellectual Property team provides inventors and startup companies with strategic counsel on all aspects of intellectual property, including trademarks, IP protection, and due diligence to support commercialization goals. Additionally, Winstead attorneys also work with angel investors, venture capitalists, and private equity funds, as well as other institutional investors, to help them find and fund the next great company.

Carbon capture technologies generally pertain to the capture of carbon dioxide (CO2) by certain materials or systems.  Such materials or systems can then process the captured CO2 in various manners, such as through storage at a remote site, chemical conversion, or secondary uses.

In view of global efforts to reduce CO2 emissions, carbon capture technologies have found numerous commercial applications.  Patent protection can help facilitate and incentivize such commercialization efforts by providing exclusivity.

In the United States, utility patents provide protection for any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” [1]  During the term of a patent, patent holders can exclude others from making, using, offering to sell, or selling any patented invention in the United States, and importing any patented invention into the United States[2].

A proper patent protection strategy can help maximize the commercialization potential of a carbon capture technology.  In devising such a patent protection strategy, patent applicants should at least consider the following guidelines:

  • Conduct prior art searches before seeking patent protection;
  • File a patent application before any sales or public disclosures;
  • Start patent protection early by filing a provisional patent application;
  • Continue patent protection by filing an international patent application;
  • Claim different aspects of the carbon capture technology;
  • Emphasize the unpredictable aspects of the carbon capture technology; and
  • Consider modes of protection other than utility patents.

Continue Reading Clearing the Air: Patent Protection Strategies for Carbon Capture Technologies

Join Winstead’s Higher Education Team at the 2021 Rice Business Plan Competition on April 6-9, 2021. For the second time, the event will be virtual. This year, Winstead is again a Bronze Underwriter’s Sponsor. The four-day competition, entering its 21st year, gives collegiate entrepreneurs real-world experience to pitch their startups, enhance their business strategy and learn what it takes to launch a successful company. Learn more.

Date: Tuesday, April 6 – Friday, April 9

Join Winstead’s IP and Higher Education Team at the 2021 AUTM Annual Meeting on March 15-18, 2021. This year the event will be virtual. The four-day virtual meeting provides educational and partnering opportunities for approximately 2,000 technology transfer professionals, researchers and intellectual property experts from around the world. Learn more.

Date: Monday, March 15 – Thursday, March 18

Time: 12:00 p.m. – 6:00 p.m. (EST)

Cost: $695 AUTM Member; $995 AUTM Non-Member

Winstead Attendees: Frank Amini, Ph.D., Lekha Gopalakrishnan, Ph.D., Robert ShaddoxSam Udovich

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Winstead attorneys Frank Amini, Ph.D. and Lekha Gopalakrishnan, Ph.D.  will present a webinar on the topic of protecting trade secrets.

Watch On-Demand Webinar

Trade secrets can be an institution’s most valuable and prolonged assets. However, maintaining trade secrets in an institution can be challenging because trade secret protection requires the implementation of proactive and consistent safeguarding measures. The implementation of such safeguarding measures can be particularly challenging if an institution has multiple employees, departments, offices, or collaborators. Additionally, the rise of remote working environments during the COVID-19 pandemic has further escalated these challenges. Furthermore, determining whether or not trade secret protection is appropriate for a particular invention can be complex, especially if various aspects of the invention must be published or disclosed to regulatory agencies.

Continue Reading ON-DEMAND WEBINAR | Protecting Your Valuable Assets: How To Effectively Identify, Select And Maintain Your Institution’s Trade Secrets

In an effort to support ongoing research and development efforts related to treatments and diagnostic tools for COVID-19, the United States Patent and Trademark Office (“USPTO”) has announced a prioritized examination pilot program (“the Pilot Program”) directed specifically to patent applications claiming products or processes related to COVID-19.[1]  Under the Pilot Program, the USPTO will advance out of turn certain patent applications relating to COVID-19.[2]  Additionally, certain fees normally associated with prioritized examination, will be waived.[3]  Table 1 provides a summary of the requirements to participate in the Pilot Program.

Continue Reading USPTO Introduces Prioritized Examination Pilot Program for Patent Applications Related to COVID-19

In view of the COVID-19 pandemic, the United States Patent and Trademark Office (USPTO) recently announced that its offices will be closed to the public “until further notice.”[1] However, the USPTO also assured the public that USPTO “operations will continue without interruption.”[2] Accordingly, applicants can continue to file related documents with the USPTO (e.g., patent applications, trademark applications, and responses to USPTO communications). Applicants can also hold interviews and oral hearings with the USPTO by video or telephone.[3]

Additionally, the USPTO has provided numerous accommodations for applicants that have been affected by the COVID-19 pandemic. As explained in more detail below, such accommodations for affected applicants include:

(I) a 30-day extension of certain patent-related and trademark-related filing deadlines that fall between March 27 and April 30;

(II) waiver of revival fees for (a) abandoned patent applications, (b) terminated or limited re-examination proceedings, (c) abandoned trademark applications, and (d) cancelled/expired trademark registrations; and

(III) waiver of original handwritten signature requirements for (a) registration to practice before the USPTO in patent cases, (b) enrollment and disciplinary investigations, (c) disciplinary proceedings, and (d) non-electronic payments by credit card.[4]

Continue Reading The United States Patent and Trademark Office Remains Operational and Flexible During the COVID-19 Pandemic