Patently Strategic - Patent Strategy for Startups

The Biotech Bargain: How Patents Help Turn Risk Into Medicine

Fri, 03 Jul 2026 19:00:00 -0400

Do patents make drugs more expensive? And what role does intellectual property play in getting new medicines from the lab bench to patients?

The questions have never been more timely. Biopharmaceutical innovation sits at the center of some of our biggest public policy debates. Drug pricing, access, generic competition, university research, venture funding, AI-driven discovery, follow-on research, and the future of biotech startups. And in the middle of those debates, patents are often reduced to slogans like patent monopolies and ever-greening and are assigned the political blame for high drug prices and limited patient access to medical breakthroughs.

But the real system is much more complicated. Modern drug development is extraordinarily expensive, uncertain, regulated, and risky. A promising discovery may begin in a university lab, move through a startup, require venture financing, depend on partnerships with larger pharmaceutical companies, survive years of clinical testing, and then still face manufacturing approval, reimbursement, safety monitoring, and market adoption hurdles.

Along that path, intellectual property is not just a prize at the end. It can be the asset that allows investment, collaboration, disclosure, licensing, specialization, and commercialization to happen in the first place. At the same time, the public has a legitimate interest in access, affordability, competition, and generic entry. So the policy challenge is understanding how the system works, what incentives are actually doing, and what can go wrong when lawmakers, courts, and pundits oversimplify the trade-offs.

This is a big conversation, but the through line is simple. If we want more medicines, better medicines, and broader access to medicines, we need to understand the innovation system clearly before we start rewriting the rules.

** Special Guest: Dr. Bo Heiden **

To help us truly understand the critical role of patent protections in the biopharmaceutical ecosystem and what prevailing narratives mean for investors, startups, and biotech R&D, we’re sitting down with Dr. Bo Heiden, one of the leading thinkers working at the intersection of intellectual property, innovation strategy, and life sciences policy. Dr. Heiden is the co-director of the Eira Initiative, a project out of the Berkeley Policy Institute, the Executive Director for the Tusher Strategic Initiative for Technology Leadership at Berkeley’s Haas School of Business, the Co-Director of the Center for Intellectual Property (CIP) at University of Gothenburg, and the Co-Chair of the Technology, Innovation, and Intellectual Property program at the Classical Liberal Institute at the NYU School of Law.

** Episode Overview **

⦿ Drug price and access concerns, as they pertain to patents.
⦿ The economic realities that make drug development a uniquely risky investment problem.
⦿ The CliffsNotes history of why the modern biotech system emerged so strongly in the United States.
⦿ What policymakers often miss in narratives around evergreening and patent monopolies, and how those narratives may now be pushing policy in directions that could undermine the very startup and R&D ecosystem we all depend on for advancements in medicine.
⦿ The Supreme Court’s recent Hikma decision and what it means for skinny labels, induced infringement, and generic competition.
⦿ Practical takeaways on two of the hottest areas in the market: AI-driven drug discovery and the evolving GLP-1 regulatory and generic landscape.

** Mossoff Minute: America's 250th and the Democratization of Invention **

In this month's Mossoff Minute, Professor Adam Mossoff discusses the democratization of invention sparked by American independence.

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Let us know what you think about this episode!

Design Patents: Building Better Moats

Mon, 27 Apr 2026 14:00:00 -0400

When most people think or speak generally about patents, they’re really talking about utility patents – or patents that are primarily concerned with how an invention is used and how it works. But as it turns out, this is just one specific type of patent on the complete menu of options available for protecting your innovations. Another option, called a design patent, exists to – additionally or alternatively – protect the appearance of your invention.

And whether you find yourself in an either/or or a both situation, it’s important to consider all tools at your disposal in covering every uniquely protectable functional and visual aspect of your inventions. This is often referred to as building a moat around your business. In this month’s IP Market Insights Newsletter, former guest of the podcast, Louis Carbonneau, wrote that:

"Morningstar’s research has consistently shown that companies with wide economic moats — those with defensible advantages expected to last 20 years or more — dramatically outperform those without. When Buffett said he looks for 'economic castles protected by unbreachable moats,' he wasn’t being quaint".

** Episode Overview **

Design patents play a critical role in your broader portfolio and in making your moat as wide and unbreachable as possible. This is why we’ve enlisted the help of our very own Dr. Tiffany Miller to guide us through all of the do’s and don’ts. As you’ll hear today, Tiffany has some very unique and practical insights into how even the most nuanced aspects of design patents can significantly impact infringement cases.

⦿ The definition, term, and features of design patents.
⦿ How design patents compare with utility patents.
⦿ Obviousness implications for the patent office and the courts – including what to possibly make of the courts wiping the case law slate clean on design patent obviousness back in 2025.
⦿ And some really great interactive panel discussions around real-world design patent examples and how courts have weighed in on patentability.

** Mossoff Minute: Loss of American Leadership **

In this month's Mossoff Minute, Professor Adam Mossoff discusses the unfortunate loss of American leadership on the international stage in terms of defending the fundamental rights and rules for how we protect patents.

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Let us know what you think about this episode!

Willful Infringement: When Patent Piracy Turns Egregious

Fri, 27 Feb 2026 14:00:00 -0500

Willful infringement is a patent law concept that applies when someone infringes a patent knowingly or with reckless disregard for the patent holder’s rights. It goes beyond accidental infringement, often involving a deliberate choice to use protected work despite awareness of the rights holder. With unintentional infringement, the infringer can still be required to pay damages, negotiate a license, or face an injunction to halt the infringing activities. If the infringement is deemed willful, however, this can lead to significantly increased damages, sometimes up to three times the original amount.

This is something that patent holders need to be keenly aware of – both offensively and defensively. If found for infringement, is simply knowing about the competitor’s patent enough? What if it turned up in search results when examining prior art for your own invention? On the other side, if you’ve discovered that a competitor is infringing on you, what steps should you take to ensure that they’ve been clearly put on notice? The answers to these questions could mean millions.

** Guest Host **

Tamany Vinson Bentz is our guest co-host today. Tamany is the founder of California IP Law, where she currently focuses on developing customized IP portfolios for businesses of all sizes. Prior to managing her own firm, she spent 20 years as a litigator in big law as a partner at both Venable and DLA Piper.

** Episode Overview **

Tamany and Dave lead today's discussion with our all-star patent panel, delving deeply into all things willful infringement. Along the way, they discuss:

⦿ Willful infringement prior to two 2016 SCOTUS cases.
⦿ How the SCOTUS cases shaped assessment of willful infringement.
⦿ How this has been playing out in more recent cases, and what has and has not been viewed as willful or egregious.
⦿ And some practical tips on how and where to communicate notices if you feel like your patent rights are being infringed.

Let us know what you think about this episode!

Patent Abandonment and Revival

Wed, 28 Jan 2026 10:00:00 -0500

Patent abandonment is the premature relinquishment of patent rights for an invention. Abandonment can happen voluntarily for various strategic and cost reasons, but can also happen silently and unintentionally. It can happen before the right is even granted in the case of public disclosure. But it can also happen after the patent has been granted at many key points in its otherwise useful life and window of exclusivity. Like with other property rights, securing your patent isn’t the end of the line in maintaining that property right. Like property taxes for land and annual registration for automobiles, patents have deadlines and fees that, if not properly managed, can lead to loss of that right. And in all cases – whether abandoned intentionally or by accident - the invention becomes part of the public domain, and the rights holder's exclusivity window to prevent others from using, making, and selling the invention is terminated short of the otherwise expected 20–year term.

** Episode Overview **

Fortunately, with careful management, the problem can be avoided entirely. And for many unintentional cases, if caught quickly enough, there are remedies for reviving your rights. To help unpack all of this and conquer your fears of abandonment, Albert Du, Patent Strategist and Chief Mindfulness Counselor at Aurora, leads today's discussion with our all-star patent panel, delving deeply into all things patent abandonment and revival. Along the way, Al and the panel:

⦿ Provide a general overview of the utility patent lifecycle to help better frame key points at which abandonment can occur
⦿ Discuss the types of abandonment and the statutes governing each
⦿ Break down when and how to revive an abandoned patent
⦿ And as always, offer countless practical pointers to keep in mind before, during, and after patent prosecution to help avoid what can at best be a costly legal process – and at worst, a complete loss of patent rights.

** Related Past Episodes **

⦿ Public disclosure and the on-sale bar
⦿ International patents
⦿ Software patents
⦿ Patent Prosecution Highway
⦿ Continuation practice

Let us know what you think about this episode!

European Patent Practice

Fri, 07 Nov 2025 14:00:00 -0500

What are your options for protecting inventions across Europe? In this month’s episode, we’re taking a journey across the pond with a discussion on European Patent Practice. This episode is part two of a series we’re doing on International Patenting and follows Ashley’s exceptional Travel Guide to Foreign Protection from earlier this season.

Even in a globalized economy, patents are still nationalized documents. For example, a U.S. patent only grants the right to exclude others from making, using, selling, and importing the claimed invention within the United States. It has no bearing on activities in Europe, Canada, Mexico, China, or anywhere else in the world. To restrict activities there, you will typically need a patent granted in each relevant country. This can boil down to filing and prosecution on a per-country basis. However, those seeking protection in Europe do have some additional options for a single application granting protection in multiple nations.

** Guest Host: Dr. Will Doherty **

To help navigate the very complicated European landscape, we reached out to a good friend of Aurora’s—Dr. Will Doherty of Albright IP. And we’re so glad we did. In this episode, Will puts on an absolute masterclass on European patent practice.

Beyond being a great teacher with a sharp sense of classic British humor, Will is an experienced Chartered British Patent Attorney, European Patent Attorney, and IP Litigator. As a Patents Director at Albright, he prepares, files, and prosecutes patents with great success in a wide range of technical sectors globally, in addition to handling patent infringement matters. Will is a member of and regulated by IPReg, the independent professional regulatory body in the UK for Patent and Trademark Attorneys. He is also a long-standing member of the Chartered Institute of Patent Attorneys in the UK and the European Patent Institute. Will’s academic background is in Chemistry, with a doctorate in Physical and Theoretical Chemistry.

** Episode Overview **

⦿ European patent process, EPO participating countries, key players in the system, and how it all compares to USPTO and PCT processes.
⦿ Strategic considerations around filing in individual countries vs. using EPO, translation implications, cost considerations, fee timelines, filing timeline implications, market alignment, and rights enforcement.
⦿ Interplay with newer Unitary Patents and the Unitary Patent Court.
⦿ Key practitioner takeaways, including some insightful claim drafting tips for medical-type applications, which are viewed very differently in Europe than in the U.S.

** Mossoff Minute: Price Controls on Standardized Technologies **

In this month's Mossoff Minute, Professor Adam Mossoff is discussing an issue that could cause huge problems in Europe and for the global innovation economy, more broadly.

Let us know what you think about this episode!

Patent Marking: No Mark, No Money

Tue, 23 Sep 2025 13:00:00 -0400

In this month’s episode, we’re talking about patent marking – and its massive implications on your ability to collect on infringement damages.

We’ve all seen patent numbers on physical products. Much like their copyright and trademark cousins, these designations are far from cosmetic. And instead serve a statutory requirement to provide public notice about your protected intellectual property. In the case of patent marking, not only does it reduce the risk of infringement because you are informing potential infringers of the patent's existence, but the notice also marks the point in time from which you can go back to for collecting on awarded damages. As the panel will discuss today, American patent law operates on a simple principle: mark your products with patent numbers, or watch your damages disappear.

** Episode Overview **

Kristen Hansen, Patent Strategy Specialist at Aurora, leads today's discussion with our all-star patent panel, delving deeply into the Do’s and Don’ts for patent marking – both physical and virtual, for US and abroad. Along the way, Kristen and the panel discuss:

⦿ Patent Marking basics
⦿ Legal requirements for patent marking
⦿ Benefits and best practices for marking
⦿ A real-life case cautionary tale
⦿ Implications for worldwide marking

** Mossoff Minute: Coke Morgan Stewart's Patent Reforms **

In this month’s minute, Professor Adam Mossoff celebrates the accomplishments of Acting USPTO Director Coke Morgan Stewart. Her tireless efforts over the past months are helping to light the path back toward reliable and effective patent rights for innovators across the country and in the global economy.

Let us know what you think about this episode!

Startup Capital: Strategic Fundraising and Patent Value

Fri, 11 Jul 2025 09:00:00 -0400

Whether you’re a founder looking to take the next fundraising steps beyond bootstrapping, an aspiring angel investor looking to understand the risks of seed investing, or even a practitioner hoping to get a better grasp of how this all works hand-in-hand with patent strategy, today’s topic provides an incredible springboard into the high risk, high reward world of strategic fundraising for early-stage startups.

** Guest Host: Charlie Pascal **

To help us with the specifics, we’ve enlisted the assistance of Charlie Pascal. Charlie is the founder and principal attorney at Pascal Advisory LLC, where he’s spent the last decade focused primarily on working with early-stage tech and life science companies to navigate the legal complexities of everything from the pre-incorporation cocktail napkin stage to helping founders pick teams and build a board, on through our focus today, which is advising on all of the funding rounds from friends and family on through venture capital. Much like Aurora does with many of our early-stage clients, Charlie functions as what you can essentially think of as fractional general counsel for companies that aren't yet ready or able to engage full-time in-house legal counsel.

** Episode Overview **

Charlie and the panel discuss:

⦿ The various routes and rounds of fundraising available to early-stage companies.
⦿ How patents can play into each and how differences in business models can significantly impact patent strategy.
⦿ As a founder, what goes initially into projecting a budget for fundraising needs, and later, how to think about valuation.
⦿ How to get the most out of your patents when it comes to valuation and approaching investors.
⦿ And great pro tips on some surprising sharp corners related to things like preferred stock, down rounds, the investor payout waterfall, and the very commonly used and freely downloadable SAFE equity agreement created by Y-Combinator.

** Related Content **

⦿ What Investors Want in Patents: https://www.aurorapatents.com/blog/what-investors-want-in-patents-with-sridhar-iyengar
⦿ Government Grants and Patent Rights: https://www.aurorapatents.com/blog/government-grants-and-patent-rights
⦿ Key Considerations for IP Diligence: https://www.youtube.com/watch?v=oeeAmgAMtQA

Let us know what you think about this episode!

International Patents: Your Travel Guide to Foreign Protection

Tue, 27 May 2025 09:00:00 -0400

In today’s global economy, the importance of international patent protection cannot be overstated. Your invention could be conceived of with a workforce distributed across several continents. Your manufacturing could happen in Asia or India, while your products are shipped into and distributed from ports in the target markets of the largest economies across the globe. Would be competitors and infringers could be next door neighbors or perhaps across the pond. But as you’ll learn today, there is no such thing as an International Patent – no one global patent that protects you everywhere. Instead, patents are jurisdictional property rights. For example, a U.S. patent only grants the right to exclude others from making, using, selling, and importing the claimed invention within the United States. It has no bearing on activities performed in Canada, Mexico, China, or anywhere else in the world. To restrict activities there, you will need a patent granted in each of those countries.

So, how do you choose where to file? How long do you have to decide? What pathways exist for filing internationally? How do you pursue international protection in an intentional, strategic, cost-effective manner that won’t break the bank? And what should you be thinking about now, while drafting your patent to set yourself up for the greatest odds of success once on the international stage?

** Episode Overview **

Dr. Ashley Sloat, Aurora’s very own international patenting tour guide, leads today's discussion with our all-star patent panel, traveling from the U.S. to Europe, Africa, India, East Asia, Australia, and everywhere in between, exploring the intricacies and nuances of ensuring your patent rights are protected everywhere it matters. Along the way, Ashley and the panel discuss:

⦿ Reasons for pursuing international protection.
⦿ How to choose locations with a cost-effective international strategy.
⦿ Foreign filing deadline and strategy pointers.
⦿ The most common pathways for foreign protection including, the Patent Cooperation Treaty, the Paris Convention, the European Patent Convention, Unitary Patents, and the African Regional Intellectual Property Organization.
⦿ Things you need to be thinking about well in advance, in terms of drafting your patent and the international dangers of public disclosure.
⦿ And even some considerations for how political happenings like tariffs, trade wars, and Brexit can impact your patent strategy.

** Mossoff Minute: A Friend to Inventors **

In this month’s minute, Professor Adam Mossoff discusses Secretary of Commerce Howard Lutnick's remarks at the National Inventors Hall of Fame Induction Ceremony, and what this positively signals for the near future of innovation policy.

Let us know what you think about this episode!

Cannabis Patents: Cutting Through the Haze of the IP Landscape

Mon, 21 Apr 2025 13:00:00 -0400

In this month’s episode, we’re getting high on innovation with a deep dive into cannabis patents!

As more and more states relax restrictions on both medical and recreational uses of marijuana and hemp, the U.S. cannabis industry is projected to reach $50 billion in sales this year and over $74.6 billion by 2032! This rapid growth is happening despite immense challenges brought on by a complex and conflicting web of legal disparities between federal and state laws. These legal challenges include limited access to financial institutions and the inability to transport products across state lines, but what about patents? THC – the primary psychoactive compound in cannabis – was deemed a Schedule One drug under the Controlled Substances Act of 1970. This is the most restrictive category for drugs in the eyes of the federal government. And unlike most other property rights, patents fall squarely within federal jurisdiction. So what does this mean for inventors in the space hoping to protect their cannabis-related innovations?

** Guest Host: James Gourley **

For the answer, we turned to *the* expert in this space. There have only been five or so cannabis patent infringement cases ever filed in the United States, and our guest host today has worked on two of them. James Gourley is a partner at Carstens, Allen & Gourley, LLP, and a registered patent attorney with the United States Patent and Trademark Office. James served on the Dallas Bar Association's Intellectual Property Section Board before moving to Denver. He is a member of the State Bar of Texas and Colorado and is admitted to practice in the U.S. District Courts for the Northern, Southern, Eastern, and Western Districts of Texas, the District of Colorado, the Fifth Circuit Court of Appeals, and the United States Supreme Court. James has been a pioneer cannabis IP law and brings incredible depth of expertise, based on first-hand experience, to our conversation.

** Episode Overview **

⦿ Cannabis at the molecular level, specifically THC and CBD, and how the subtle differences underscore the complexity of cannabis legality.
⦿ The present legal framework around cannabis and the challenges that come via a patchwork of conflicting state and federal laws.
⦿ Cannabis IP issues surrounding obtaining and asserting both patents and trademarks, including insights from the cases James has personally litigated.
⦿ Patent prosecution strategies to help ensure your rights are enforceable in a federal court.

Let us know what you think about this episode!

ParkerVision v. Rule 36: The Battle for Dignity and Due Process

Mon, 17 Mar 2025 09:00:00 -0400

If a court stripped away your property rights, wouldn’t you at least want an explanation? The answer is obvious, but the reality is appalling. The practice of revoking patent rights on appeal without explanation has been happening to inventors at the Federal Circuit Court of Appeals (CAFC) at an alarming rate. In over 43% of PTAB cases on appeal at the CAFC, inventors receive a single-word response – “AFFIRMED” – rather than an opinion. This practice is referred to as the application of Rule 36 and, in cases involving the PTAB, amounts to the seizure of property from an administrative agency without any reasoning provided by a constitutionally created Article III court.

Based on the findings of our guests today, who are taking this very issue up with the Supreme Court, Rule 36 violates clear statutory requirements, raises Constitutional questions, and defies a rich history of court precedent. Gene Quinn has said that this Federal Circuit Court practice is “placing America’s inventors under siege,” and friend of the podcast and former Chief Justice of the Federal Circuit, Paul Michel, has called this practice a “dereliction of duty” that “warrants immediate Supreme Court scrutiny.” Our guests this month – Jeff Parker, Amit Vora, and Juliette Fassett – are fighting hard to make that happen.

** Our Guests **

ParkerVision has filed a petition for a writ of certiorari with the Supreme Court and recently submitted a reply brief in an attempt to get the Supreme Court to take up this innovation-crippling practice. In the coming days, the justices are scheduled to discuss the petition in private conference, where they will vote on whether to take the case.

To help us unpack Rule 36 practice and what ParkerVision is hoping to do about it, Dr. Ashley Sloat and I have enlisted the assistance of the three people closest to this case and its implications:

⦿ Jeffrey Parker, CEO of ParkerVision – an absolute pioneer in wireless technology.
⦿ Amit Vora, appellate litigator at Kasowitz Benson Torres, representing ParkerVision in its petition for cert with the Supreme Court.
⦿ Juliette Fassett from the Fair Inventing Fund, advocating for inventors’ rights. Juliette is an inventor herself, with over 30 years of experience building consumer product companies.

** Referenced Links **

⦿ ParkerVision's Cert: https://www.supremecourt.gov/DocketPDF/24/24-518/331105/20241104163210189_No.%2024-_____%20Petition.pdf
⦿ Why Patents Exist w/ Professor Mossoff: https://www.aurorapatents.com/blog/why-patents-exist-with-adam-mossoff

Let us know what you think about this episode!

Dealing with Rejection: Overcoming 101, 102, 103, and 112

Thu, 06 Feb 2025 13:00:00 -0500

So, your patent application got rejected. Now what?

In this month’s episode, we’re talking about rejection. Specifically, the type that comes from the patent office in the form of an intimidating sounding three-digit number when your application gets denied by an examiner.

Some time after submitting your application, it goes into a process with the patent office called examination. This is the part of your patent’s prosecution journey where an examiner reviews your application for conformance to technical and legal requirements. If – and usually when – the examiner finds a problem, they will issue an office action that contains specific reasons for the rejection. You then have the opportunity to respond to and overcome the rejection, using various strategies we’ll explore today.

Reasons for rejection fall under four sections of U.S. Statute, Title 35. Sections 101, 102, 103, and 112 dictate that patents must be eligible, useful, novel, nonobvious, and enabled (or properly described). Patents can be rejected or later invalidated if one or more of the claims are determined to be otherwise.

Rejection on the basis of these four statutes is fortunately just the beginning of the delicate process of negotiating this important exchange that has promoted and enabled our innovation economy since the dawn of our country. Patent application rejection is common, expected, and can be used very strategically – but perhaps counterintuitively – to end up with the broadest possible protection, while also making sure there’s something in it for the public!

** Episode Overview **

In today’s episode, Patent Office Relationship Guru Daniel Wright leads a discussion with our all-star patent panel, delving deeply into defining, coping with, and then dealing with patent application rejection. Along the way, Dan and the panel discuss:

⦿ Why patent applications are rejected.
⦿ The specific types of rejection.
⦿ Strategies for how to overcome each, including some wonderful insider insights specifically on how to work with examiners on the human level to overcome rejection.

** Mossoff Minute: Patents Aren't Monopolies **

In this month’s minute, Professor Adam Mossoff debunks the myth that patents in the United States are monopolies that impede innovation and block economic growth.

** Referenced Links **

⦿ Apply to work at Aurora: https://www.aurorapatents.com/careers-patent-agent.html
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/patent-anatomy-whats-in-a-patent

Let us know what you think about this episode!

Patent Case Law Review: Obviousness

Fri, 06 Dec 2024 12:00:00 -0500

An invention cannot be patented if the differences between your claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was conceived. Determining obviousness – and the validity of your patent – is more than simply establishing that the invention doesn’t already exist and that it isn’t documented elsewhere. Its conception must also not have otherwise been obvious to those in the field at the time.

If you’re thinking that sounds awfully subjective in the present and highly susceptible to hindsight bias in the future, you’d be right. Beyond being one of the four main drivers for patent application rejection at examination time, obviousness is also one of the primary vectors used by the Patent Trial and Appeal Board for invalidating patents via Inter Partes Review, so it’s essential to get this right so as to limit your patent’s potential invalidation surface area.

** Episode Overview **

Kristen Hansen, Patent Strategy Specialist at Aurora, and Dr. David Jackrel, President of Jackrel Consulting, lead today’s two-part discussion with our all-star panel, dissecting recent court decisions impacting the core patenting issue of obviousness. In breaking this all down in terms of how obviousness has been playing out in the courts, Dave, Kristen, and the panel discuss:

⦿ Inter Partes Review and how some PTAB strategy deviates from conventional patenting wisdom when it comes to obviousness.
⦿ Recent obviousness case law decisions.
⦿ Practice tips related to obviousness including analysis of how previously invalidated claims impact future claims, the dangers of being your own lexicographer, and the strategic importance of drafting backup positions in your specification.

** Mossoff Minute: PREVAIL Advances **

In this month's Mossoff Minute, Professor Adam Mossoff discusses some incredibly exciting news about the PREVAIL Act, which is designed to bring much overdue reform to the Patent Trial and Appeal Board.

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Let us know what you think about this episode!

Petition Practice: Correcting PTO Errors With Your Patent

Tue, 05 Nov 2024 15:00:00 -0500

Patent examiners can make mistakes. Patent office clerks can misfile paperwork and cause procedural errors. The software tools, document formats like DOCX, and the IT systems your application passes through can have bugs. What recourse do you have when quality issues creep in at this stage? This is where petition practice, fortunately, comes to the rescue.

** Quality Patents Part 5 **

This is our final episode in a multi-part series focused on quality patents. The prior four episodes have all been about managing quality for everything in your immediate control. Steps you and your practitioner should be taking before and after your patent is granted. But what about the last mile, where you’re turning your carefully crafted patent application over to the patent office for examination and prosecution?

Patent petition practice is the process of filing formal requests, referred to as “petitions,” with the USPTO or other relevant patent offices to address procedural and administrative issues that can arise during the patent application process. Filing petitions can be an essential step to correct course when rules are misapplied, procedural errors occur, administrative actions need to be reversed, or deadlines are missed.

** Guest Hosts: Julie Burke and Michael Spector **

Julie Burke is a registered patent agent and former USPTO employee with 20 years of experience at the patent office. Julie rose up at the PTO to become a Quality Assurance Specialist – the type of manager you’d call when your case got off track. During this time, she handled more than 900 petitions at the patent office! After leaving the PTO, she founded her own consulting company, IP Quality Pro LLC, where she helps patent attorneys navigate complex situations in the patent system to protect their inventor’s ideas. This experience from both sides of the petition practice table has given Julie a level of access, experience, and insights shared by few in the industry. Julie is also presently an advisor for Petition.ai, the first searchable database of US patent prosecution petitions and associated documents. Julie is joined by the co-founder of Petition.ai, Michael Spector.

** Discussed Links **

⦿ Quality Patents Part 1: https://www.aurorapatents.com/blog/quality-patents
⦿ Quality Patents Part 2: https://www.aurorapatents.com/blog/ptab-survival-guide
⦿ Quality Patents Part 3: https://www.aurorapatents.com/blog/continuation-practice
⦿ Quality Patents Part 4: https://www.aurorapatents.com/blog/itc-proofing-patents
⦿ After Final Practice: https://www.aurorapatents.com/blog/new-podcast-after-final-practice

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Let us know what you think about this episode!

Keeping Patent Pirates at Bay: ITC Portfolio Proofing Strategies

Tue, 01 Oct 2024 12:00:00 -0400

For inventors, the promise of the patent system is the right to exclude others from making, using, importing, and selling their patented innovations for a limited period. But how do patent holders actually enforce those rights, particularly when the copycat product is being manufactured outside of domestic jurisdiction? In an otherwise challenging time for rights assertion, the ITC – or International Trade Commission – can be one of the most impactful long-range weapons an inventor has in their arsenal for stopping patent pirates.

The ITC has the authority to grant exclusion orders, which are enforced by U.S. Customs and Border Protection to block the importation of infringing products at U.S. ports of entry.

But how can you access the ITC, what are its requirements, how can you afford it, and what should you be thinking about now to help future proof your patent portfolio for the most effective use later at the ITC? We’re answering all of these questions in an episode that is part of our ongoing series on patent quality – aimed at not just getting a granted patent but in having one that will hopefully be valuable and stand the test of time.

** Guest Host: Evan Langdon **

Because experience is the best teacher, we’ve enlisted the help of Evan Langdon to guest host this month’s episode. Evan is a partner at Fabricant LLP and the Chair of its ITC practice. Evan has been focused on ITC litigation for the past 15 years, both offensively and defensively, having represented clients in more than thirty Section 337 cases at the ITC. Evan is recognized among the nation’s top ITC practitioners by Chambers USA and Chambers Global.

** Episode Overview **

⦿ What is the ITC and what are its advantages over court-based litigation to stop infringers?
⦿ Requirements for filing an ITC Action
⦿ Litigation financing options for the ITC
⦿ Offensive and defensive strategies at the ITC
⦿ Patent drafting and portfolio strategy tips for increasing your odds at the ITC
⦿ Masimo v. Apple and the ITC's import ban of the Apple Watch
⦿ The recent Lashify case and what it means for the domestic industry requirement

** Discussed Links **

⦿ Quality Patents Part 1: https://www.aurorapatents.com/blog/quality-patents
⦿ Quality Patents Part 2: https://www.aurorapatents.com/blog/ptab-survival-guide
⦿ Quality Patents Part 3: https://www.aurorapatents.com/blog/continuation-practice
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ RESTORE Act: https://www.aurorapatents.com/blog/restoring-injunctive-relief

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Continuation Practice: Quality Patents Part 3

Fri, 06 Sep 2024 10:00:00 -0400

There’s not a more important concept that’s more widely misunderstood by those newer to patenting than continuations. So we’re dedicating Part 3 of our series on quality patents to everything you need to know about this essential step for future proofing and increasing the value of your portfolio.

Void of pursuing continuations, the language of your patent is frozen in time at issuance. The specifics of the enforceable boundaries of your protection are forever fixed to the claims you chose to pursue with your initial application – but not necessarily with the full breadth of your invention as conceived. For many reasons, practitioners and inventors will often choose to limit how much of an invention is claimed in an initial application. But then the future happens. Case law changes. New competitors arise. New prior art surfaces. And challenges may come in the form of litigation or IPRs as we discussed in our last episode. With a closed family, all you can do is hope you had the right foresight to predict this future with your static document.

Continuations, on the other hand, allow patent owners to keep patent families open – in other words, not textually frozen in time at issuance. When done right and timely, the patent family becomes a series of living documents, allowing a patent owner to claim and capture the full scope and breadth of the conceived innovation, but with the benefit of hindsight, known R&D outcomes, and changing market conditions.

** Episode Overview **

⦿ The basics of continuation practice and its strategic benefits
⦿ Types of continuation applications and how and when each applies
⦿ The close cousin concepts of terminal disclaimers and prosecution latches
⦿ The potential unfortunate consequences of the recent Sonos v. Google decision regarding a very common use of continuation practice

** Mossoff Minute **

In this month's Mossoff Minute, Adam discusses the introduction of the RESTORE Act. This is an exciting new piece of legislation aimed at restoring patent owners’ abilities to obtain injunctions to stop infringers from continuing to steal innovations after being found guilty of doing so.

** Discussed Links **

⦿ Quality Patents Part 1: https://www.aurorapatents.com/blog/quality-patents
⦿ Quality Patents Part 2: https://www.aurorapatents.com/blog/ptab-survival-guide
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

PTAB Survival Guide: Quality Patents Part 2

Thu, 01 Aug 2024 13:00:00 -0400

The most terrifying thing that can happen to a patent owner is receiving what’s called an IPR or Inter Partes Review petition. This is a tool that accused infringers can use to invalidate patents. And they have … to alarming effect. As we’ve discussed, the kill rate at the PTAB is staggering. The Patent Trial and Appeal Board – or as regular listeners of this audience more commonly know it as, the "Patent Death Squad" – has racked up a claim execution rate north of 84% and the death of thousands of valid patents at the hands of infringers looking to profit from innovations they didn’t invest in to create. This is an institution that is clearly out of balance and screaming for reform.

And while we continue to diligently work toward those necessary reform solutions, we also have to deal with the world as it is and craft the highest quality, most future-proof patents possible. So we’re dedicating Part 2 of our series on Patent Quality to creating a guide for how to help IPR proof your patent – things you can do when you write and prosecute patent applications before an examiner to maximize the likelihood that the resulting patent will survive the IPR that it will eventually experience if it’s a valuable patent.

** Guest Host: Matt Phillips **

Your expert author of this guide is someone who’s spent considerable time in the belly of the beast, successfully representing both petitioners and patent owners. Matt Phillips is a clear thinker, a great speaker, and draws from a deep well of real world expertise built from both sides of the IPR table. His practice focuses on post grant proceedings including review proceedings at the PTAB, reexaminations, and reissues. According to Matt, post-grant proceedings are about 80% of what he’s done for the past 10-15 years. He also created and taught the “Post-Grant Patent Practice” course for the Patent Resources Group for eleven years and is a co-author of a two-volume treatise of the same name. Matt has taught as an adjunct law school professor. He has published over 40 articles on post-grant patent topics and been an invited speaker around the country and internationally on post-grant topics.

** Discussed Links **

⦿ Quality Patents Part 1: https://www.aurorapatents.com/blog/quality-patents
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Patent Wars: https://www.aurorapatents.com/blog/patent-wars-innovators-revolutionaries-and-the-race-to-reform
⦿ American Inventor Horror Story: https://www.aurorapatents.com/blog/new-podcast-american-inventor-horror-story

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Quality Patents

Tue, 02 Jul 2024 10:00:00 -0400

Is your patent a vanity piece of paper for your office wall? Or is it a reliable, defendable, assertable, property right? The difference is often quality.

Is your patent simply a transactional cost and a large pile of legal bills for your startup? Or is it a leverageable asset worthy of attracting precious investment dollars, worth its cost in multiples of valuation? The difference is often quality.

Is your patent application only good enough to get through the examination process? Or has it been crafted to stand the tests of time and varied audiences if you later need to assert that document against an infringer, find yourself litigating with it in an Article 3 Court at the hands of a judge and jury, God forbid, end up having to defend its validity at the PTAB, or even needing to use it to block pirated imports at the International Trade Commission? The difference is often quality.

Quality will be our focus for a good chunk of the remainder of this season. What goes into a quality patent, and where possible, how do you get it without breaking the bank?

** Episode Overview **

In this first episode of our quality series, Kristen Hansen and the panel discuss:

⦿ What do we mean when we say patent quality?
⦿ Why is patent quality important?
⦿ How to balance quality and budget
⦿ The importance of searching, continuations, and draftsperson domain expertise
⦿ Very practical tips, tricks, examples, and Kristen’s Musts for drafting quality applications

** Mossoff Minute **

In this month's Mossoff Minute, in honor of celebrating America’s independence, we’re flashing back to our conversation with Professor Adam Mossoff about why patents exist, how the US system differed from all predecessors, and how the Founders’ notions of the core principles of democracy are inextricably linked with the societal good that comes from innovation and intellectual property protection.

** Discussed Links **

⦿ Patent Anatomy: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Claim Construction: https://www.aurorapatents.com/blog/claim-construction
⦿ Patent Wars: https://www.aurorapatents.com/blog/patent-wars-innovators-revolutionaries-and-the-race-to-reform
⦿ American Inventor Horror Story: https://www.aurorapatents.com/blog/new-podcast-american-inventor-horror-story

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Inventor Stories: Robert Cameron and the Power of Perseverance

Mon, 03 Jun 2024 12:00:00 -0400

We’ve seen few entrepreneurial success stories that haven’t involved heavy doses of perseverance, grit, observation, and creative problem-solving. Today’s guest possesses these qualities in spades. And while I can’t necessarily recommend some of the more death-defying specifics of his approach … at least not without a lot of “don’t try this at home” fine print :) … I do think that most inventors and aspiring entrepreneurs will benefit immensely from studying our guest's thoughtfully crafted, time-tested, and wildly inventive approaches to innovation and business.

Robert Cameron is the Owner and CEO of Multi Wedge – as well as the inventor of some brilliant products sold under the same name. Multi Wedge non-marring pry tools are designed to pry delicate materials without damage. These are excellent tools for woodworking, electrical wiring, delicate mechanical work, and so much more. Robert’s wedges were recently tested by SpaceEx and used in the manufacturing process of Jet Engines at G.E Aviation. And of slightly less significance, but much closer to home, found under the Christmas trees of several of my closest relatives this past December. Robert has molded 1.3 million 3-piece sets, 3.3 million single wedges, and has been selling Multi Wedge in over 18,000 stores since 2010.

I met Robert back in October at the US Inventor Conference in DC. I was lucky enough to bump into him over dinner when he shared his incredible story with me. It's one of the funniest and most inspiring success stories you’ll hear.

** Mossoff Minute **

In this month's Mossoff Minute, Professor Adam Mossoff discusses findings from the recently published World IP Day Patent Litigation Study. This study clearly shows problems with the patent system but not the problems you typically hear from the companies that have been dominating the patent policy discussions for the past decade. Adam also highlights the importance of injunctions and damages – something we'll be discussing a lot more in segments to come.

** Discussed Links **

⦿ Multi Wedge: https://multiwedge.com/

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

CAFC Chronicles: Costly Tales of Claim Construction Fails

Wed, 01 May 2024 14:00:00 -0400

The difference between getting claim construction right and getting it wrong is the difference between a valid patent and an invalid patent – and the difference between millions of dollars awarded from infringement decisions vs. ending up with a worthless piece of paper.

In this month’s episode, Dr. David Jackrel, President of Jackrel Consulting, leads a discussion into three real-world applications for patent claim construction, as tested and decided upon by the United States Court of Appeals for the Federal Circuit. This is the highest court in the land under the Supreme Court for handling intellectual property disputes – and establishes much of the legal precedent the patent world has to go on … for better and for worse. The panel dissects the claims for each case, discusses the court’s analysis, and provides tips and strategies for more effective claim drafting in light of the strengths and weaknesses of the litigated patents.

Dave is joined today by our always exceptional group, including:

⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategy Specialist at Aurora
⦿ Ty Davis, Patent Strategy Associate at Aurora

** Mossoff Minute **

In this month's Mossoff Minute, Professor Adam Mossoff discusses the ill-advised price control mania presently sweeping the globe and its predictable impacts on free markets and innovation if we continue down the current path we’re precariously walking.

** Discussed Links **

⦿ Aurora hiring links: https://www.aurorapatents.com/careers.html
⦿ Claim Strategies Episode (Part 1): https://www.aurorapatents.com/blog/patent-claims-the-name-of-the-game
⦿ Claim Construction Episode (Part 2): https://www.aurorapatents.com/blog/claim-construction
⦿ Patent Anatomy Episode: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Patent Anatomy Blog Post: https://www.aurorapatents.com/blog/patent-anatomy-whats-in-a-patent

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Patents and AI: Current Tools, Future Solutions

Wed, 20 Mar 2024 10:00:00 -0400

We’re talking about AI and its impact on the patent system.

This month's episode evaluates where we presently are and considers where it could all be heading. Dr. David Jackrel and Dr. Ashley Sloat lead a two-part discussion with our all-star panel that begins with a deep dive on the present state of AI patent tools for searching, proofreading, drafting, and prosecution – and then moves on to an exploration of how these tools could eventually provide solutions for many problems plaguing the industry including PTAB invalidation rates, hindsight bias, prior art search quality, and the unsustainable bar. Discussion highlights include:

⦿ ChatGPT 4.0 vs. professionals on core competencies
⦿ Why AI is evolving so rapidly
⦿ AI problems and hallucinations
⦿ AI and public disclosure risk
⦿ AI implications for inventorship
⦿ Current state of AI-assisted patent searching, proofreading, drafting (rule and LLM-based), and prosecution tools
⦿ AI's potential future role in the patent system for fixing issues with the PTAB, search quality, and the unsustainable bar

David and Ashley are also joined today by our always exceptional group of experts including:

⦿ Kristen Hansen, Patent Strategy Specialist at Aurora
⦿ Ty Davis, Patent Strategy Associate at Aurora
⦿ Josh Sloat, Chief Everything Else Officer at Aurora

** Mossoff Minute **

In this month's Mossoff Minute, Professor Adam Mossoff discusses the patentability of AI-generated works and inventions.

** Discussed Links **

⦿ USPTO Inventorship Guidance for AI-Assisted Inventions

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

James Howard and the Black Inventors Hall of Fame

Thu, 22 Feb 2024 13:00:00 -0500

Our interview with James Howard, Founder and Executive Director of the Black Inventors Hall of Fame.

James Howard is a college professor, design historian, entrepreneur, industrial designer, inventor, filmmaker, and restauranteur. He brings over 25 years of experience as a design professor and has authored a course on Design Thinking and Design History that explores the impact of design on society. As an accomplished Industrial Design educator and entrepreneur, Howard has lectured on the experience of Black American inventors. Howard himself is an extraordinary inventor with 20 patents, several of which we discuss, cover innovations that save people's lives daily.

James' life work is now culminating in his mission of bringing a broad and detailed awareness to the important work of African American inventors, artists, and innovators who have inspired and forged ahead against tremendous odds and adversity. In creating the Black Inventors Hall of Fame, James hopes to have a place where kids of all ages and persuasions can go and be inspired to become the next generation of scientists, engineers, doctors, and inventors. Because like the great inventor Lonnie Johnson says, “What they see, they will be.”

** Mossoff Minute **

In this month's Mossoff Minute, Professor Adam Mossoff discusses how there’s a pirate living in your Apple Watch and why the media’s coverage of Apple’s predatory infringement of Masimo's patents is missing the mark.

** Discussed Links **

⦿ Black Inventors Hall of Fame
⦿ BIGG documentary: The Gathering
⦿ Tech Boy Book
⦿ Why Patents Exist
⦿ Inventor Stories Vol. 1

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Claim Construction: Building Strong Patent Foundations

Wed, 31 Jan 2024 15:00:00 -0500

Claim construction is a process in which courts attempt to interpret the meaning and scope of the claims of a patent. It’s like reconstructing what an inventor and their practitioner meant back when they drafted the patent application. While your patent might not be tested in a court for many years, understanding the sometimes surprising language specifics and context traps while drafting now can help set you up for success later when defending your patent or attempting to stop an infringer. The words you choose now and the support you provide when drafting are your opportunity to help derisk the process of courts and juries later interpreting what you meant. And oftentimes, claim construction can be the KEY FACTOR in resolving disputes even before litigation, with the facts that come out of claim construction deciding the monetary value and payouts in settlements.

Kristen Hansen, Patent Strategy Specialist at Aurora, leads the discussion along with our all-star patent panel, exploring:

⦿ The evolution of claim terms
⦿ Claim construction basics and a historical look at what are called Markman hearings
⦿ Intrinsic evidence vs. extrinsic evidence
⦿ Claim construction in prosecution vs. litigation

Kristen is also joined today by our always exceptional group of IP experts including:

⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Dr. David Cohen, Principal at Cohen Sciences
⦿ Steve Stupp, Partner at Stupp Associates, LLC
⦿ Ty Davis, Patent Strategy Associate at Aurora
⦿ Arman Khosraviani, Patent Agent and Former US Patent Examiner

** Mossoff Minute **

This month's Mossoff Minute, Professor Adam Mossoff discusses recently proposed regulations that would misapply Bayh-Dole provisions to impose march-in rights on patent-protected innovations and create price controls via compulsory licensing. This amounts to government seizure of private property and will do tremendous harm – especially to the life sciences – if implemented.

** Going Deeper **

⦿ Patent Claim Basics and Strategies
⦿ Patent Anatomy Guide

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Patenting Games: From Pieces to Pixels

Fri, 24 Nov 2023 09:00:00 -0500

From patenting classic boardgames like Monopoly and Battleship back in the 1930s to challenges with protecting modern innovations in areas like game development and VR, our experts are breaking down everything you need to know about patenting games so you don’t end up just rolling the dice when investing in protections for your entertaining innovations.

As a bonus, in this month’s episode, we’re bringing you two dealers: Dr. David Jackrel, President of Jackrel Consulting, will be covering the physical realm of board games and toys. Kristen Hansen, Patent Strategist and software guru here at Aurora, will be covering all things computer and video games in the second half.

David and Kristen are joined by our always exceptional group of IP experts. Two exceptional gamers who would never be regarded as NPCs:

Dr. Ashley Sloat, expert hotel builder and securer of rights on properties of all colors, but especially the green ones.
Ty Davis, who’s always playing chess when it comes to claims.

** Mossoff Minute **

Professor Adam Mossoff recently attended the annual Inventor’s Hall of Fame induction ceremony and discusses two sets of inductees and their groundbreaking inventions of the mRNA platform and CRISPR gene editing technology.

** RISE Award Winners **

To learn more about this year's RISE award winners including Dustin Webb (Absolute Concept Designs), Rebel Cultures (Della Fetzer), Sand Baggage (Michael Wahlstrom), and Chefshare (Dr. Erin Eatough), please visit https://www.aurorapatents.com/rise-up-with-aurora.html.

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Patent Claims: The Name of the Game

Fri, 06 Oct 2023 13:00:00 -0400

We’re talking about claims – the fundamental building blocks of a patent. There simply is not a more important concept to grasp in all of patenting. As a former chief justice of the Federal Circuit once famously said, “The name of the game is the claim.” And in terms of what game you’re playing, the claims are where you separate the patents playing checkers from the patents playing chess.

This is where your patent practitioner earns their money and as you’ll learn today, also where the most costly mistakes can be born. As David Cohen, a Patently Strategic regular, has said in the past, "Ninety percent of the mental exercise in drafting patents is in the strategy of looking around corners, anticipating the future, and trying to capture as many would-be infringers as possible.” How your claims are crafted is literally the difference between a patent being an intellectual asset and a worthless stack of paper.

In this month’s episode, Ty Davis, Patent Strategy Associate here at Aurora, leads a discussion, along with our all star patent panel, delving deeply into:

⦿ Claim fundamentals
⦿ Claim drafting strategies
⦿ How to think about claims in the context of infringement
⦿ And in the game of patenting, how to move like a queen, so you’re not treated like a pawn.

Ty is joined by our always exceptional group of IP experts, including:

⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Marie Smyth, Patent Agent, formerly with Greenberg Traurig and Meta
⦿ Porter Thames, J.D. and Patent Agent at SMU Science and Technology Law Review

** Mossoff Minute **

This month's Mossoff Minute, featuring Professor Adam Mossoff, looks at the poorly named Advancing America's Interests Act and its potential impact on the ITC being able to block import of products that infringe on American patents.

** Resources **

⦿ Patent Anatomy Episode: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Patent Anatomy Guide: https://www.aurorapatents.com/blog/patent-anatomy-whats-in-a-patent

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Government Grants and Patent Rights: SBIR, STTR, and Your IP

Wed, 06 Sep 2023 14:00:00 -0400

In this month's episode, we’re talking about the use of government grants and the strings that can come attached to your IP! We’re exploring the various types of small business research grants, how the Bayh-Dole Act regulates inventions generated under government grants, licensing and ownership implications for your patent when using federal dollars, and the sticky webs that you may find yourself in if you are not carefully tracking IP and adhering to the numerous provisions and timelines.

Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads the discussion along with our all-star patent panel, exploring:

⦿ How the Bye-Dole Act of 1980 regulates inventions under government grants
⦿ As a small business, what types of grants are available to you and whether or not they can cover IP-related costs
⦿ The rights of the federal government to your Invention when you use grant money
⦿ Implications for using subcontractors to perform the work under the grant
⦿ And of course, some of the biggest gotcha’s and practical tips for avoiding them

Ashley is also joined today by our always exceptional group of IP experts including:

⦿ Kristen Hansen, Patent Strategy Specialist at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Ty Davis, Patent Strategy Associate at Aurora

** Mossoff Minute **

This month's Mossoff Minute, featuring Professor Adam Mossoff, looks at the introduction of a very important piece of patent reform legislation called the PREVAIL Act.

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Jack Daniels, Mickey Mouse, and Andy Warhol Walk Into a Bar

Thu, 27 Jul 2023 02:00:00 -0400

In this month’s episode, we’re talking about Jack Daniels, Mickey Mouse, Andy Warhol, Jason Voorhees, Winnie-the-Pooh, Lizzo, and WallStreetBets … What do they have to do with patents you might fairly be wondering? Honestly, not much.

Patents are our focus in our business and in this podcast, so we devote a lot of air time to talking about protecting ideas and inventions, but in the realm of intellectual property, patents have some pretty close cousins. In thinking more broadly about creating the largest possible moat with your IP, you also need to be considering what our guest, Mallory King, refers to as “brand protection” – or the copyrights, trademarks, and contracts necessary to protect your brand’s rights and assets.

Copyrights and trademarks in particular have seen a lot of limelight this year involving some of the biggest brands and pop culture icons. At the same time, major IP rights questions are erupting around the use of generative AI systems like ChatGPT. In addition to covering the basics necessary to help get you booted up, we’re going to use these high profile topics and Supreme Court cases as a vehicle to get a deeper understanding of copyrights and trademarks and some of the sharpest corners you should be aware of when managing your own brand protection.

** Topics Highlights **'

⦿ Copyright and Trademark Basics
⦿ Work made-for-hire and Friday the 13th
⦿ Jack Daniels Properties v. VIP Products
⦿ Brand protection expiration, Winnie-the-Pooh: Blood and Honey, and Steamboat Willie
⦿ Lizzo's "100% That Bitch" trademark appeal
⦿ r/WallStreetBets trademark dispute with Reddit
⦿ Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith
⦿ Generative AI: Humans as authors and fair use implications

** Mossoff Minute **

This month's Mossoff Minute, featuring Professor Adam Mossoff, looks at the introduction of the 2023 Patent Eligibility Restoration Act, its biggest criticisms, and why it needs to be passed.

** Connect With Our Guest **

Mallory King is the owner and attorney at Breathe Brand Protection, PLLC, a boutique law firm specializing in all things brand protection. Based in Traverse City, Michigan, Mallory is passionate about helping entrepreneurs and small businesses protect their most valuable brand assets, both locally and nationwide. You can learn more about Mallory and Breathe Brand Protection at https://www.breathe.law/

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Why Patents Exist with Professor Adam Mossoff

Tue, 27 Jun 2023 09:00:00 -0400

Why do patents exist in the first place? What function do they serve in society? And what is their historic origin story? In this month’s episode, with the help of Professor Adam Mossoff, we zoom way out, turn the time dial back a bit, and focus on the genesis of patents.

There’s a special kind of magic that happens when individual incentives align with societal good. Abraham Lincoln, who believed that the creation of the patent system was only surpassed by the discovery of America and the invention of the printing press in terms of the three greatest advancements in human history, once said, “The Patent System added the fuel of interest to the fire of genius.” The recognition and protection of mental labor and the fruits of the mind as natural property rights enabled any inventor – big or small – to profit from their discoveries and partner with those possessing the resources necessary to scale and bring new products and services to the marketplace. The exchange of this protection for an enabling public disclosure enhanced society and accelerated the pace of innovation by facilitating the open exchange of information and created the greatest free library of science and technological information in the world. And because the economy grows and society flourishes when innovation is encouraged, society was transformed in the 19th and 20th centuries as demonstrated by the scientific and technological revolutions that define our modern society and by virtue, created the greatest hockey stick graph in history.

But somewhere along the way, we lost sight of this. Patents became a victim of their own success. Their impact on society, the economy, and innovation became both ubiquitous and too often unseen at the same time. This episode is the start of our effort to help undo this collective societal amnesia about the significance of patents.

** Episode Overview **

CliffsNotes Patent History, from conceptual origins in Ancient Greece through the pre-revolutionary English system and the origin of the word "patent", itself.
The U.S. Patent System, its democratization of invention, and its significant break from its predecessors, championed and breathed into existence by the collective wisdom of the likes of George Washington, James Madison, and Thomas Jefferson.
Embedded in Democracy. The prominent role patents played in the Federalist Papers, the Constitution, the first ever State of the Union Address, and as the third ever act of the first Congress.
Innovation Bridge or Blockade? How the differences in the U.S. system played out internationally across the Industrial, chemical, pharma, biotech, computer, and mobile revolutions.
Trolling the Founders. How the fundamental virtues that made the U.S. system unique and proved successful over its history have now tragically become the primary attack vectors used by its opponents.

** Connect With Our Guest **

You can follow Adam on Twitter at @AdamMossoff, where he posts regularly on patent and innovation policy, including his excellent “this Day in Innovation History” tweets.

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/

Thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

What Investors Want in Patents with Sridhar Iyengar

Tue, 30 May 2023 09:00:00 -0400

What do investors want to see in patents? What do patents tell a potential investor about a founder? And what do investors wish inventors knew before coming to them?

To answer these questions and more, we're joined this month by Dr. Sridhar Iyengar, an angel investor and accomplished serial entrepreneur in the medical devices and wearables space. Having been on both sides of the table, Dr. Iyengar's unique insights provide a comprehensive understanding of the essential role that patents can play in securing funding and in your company's long term success.

Sridhar and I are also joined today by:

⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Dr. Sophia Li, Patent Strategy Fellow at Aurora

** RISE Award **
We’re now accepting applications for the 4th Annual RISE Award! For the selected applicant, we will work closely with you and your team of inventors to provide one of the following:
⦿ A free provisional U.S. patent application or
⦿ $5,000 towards a non-provisional U.S. patent application.

Apply now: https://www.aurorapatents.com/rise-up-with-aurora.html

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/what-investors-want-in-patents-with-sridhar-iyengar

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Open Source and Patent Rights: Collaboration with Consequences

Thu, 27 Apr 2023 09:00:00 -0400

How does the use of or contribution to open-source software impact your intellectual property rights?

In this month's episode, we’re talking about software and the convoluted risk/reward interplay between patents, copyrights, and open source. Use of free open-source code can be an invaluable tool when building complex software applications. Why reinvent wheels? And depending on resources and budget, sometimes it’s the only practical way. But like with most things, free often isn’t really free. The cost is just transferred somewhere else. When it comes to open source, these short term savings can have significant long term consequences for your intellectual property rights.

⦿ Can you mix open source with commercial software and still keep your code private?
⦿ Can you patent your own software that uses open-source software? Could you ever actually assert those rights?
⦿ Can you patent open-source software you author and why would you?

We'll discuss answers to these questions and more. Kristen Hansen, Patent Strategist and software patent guru here at Aurora, leads a discussion along with our all-star patent panel, exploring:

⦿ The fundamentals of open-source licensing and how certain viral license types can require you to publicly make available your company’s source code.
⦿ How copyrights, patents, and open-source licenses differ in terms of software protection strategies.
⦿ Whether or not – and why you might – patent open-source software and the often proprietary code that leverages it, as well as the associated patent right assertion risks that can come with doing so.

We look at concerns through the eyes of both users and authors of open source. And pragmatically as we can, highlight how it’s possible to construct a strategy where open-source innovation is encouraged without forgoing all future earning power and without blocking others from using it.

Kristen is joined today by our always exceptional group of IP experts including:

⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Ty Davis, Patent Strategy Associate at Aurora

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/open-source-and-patent-rights
⦿ Slides: https://www.aurorapatents.com/uploads/9/8/1/1/98119826/opensourceandpatents.pdf

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Patent Wars: Innovators, Revolutionaries, and the Race to Reform

Tue, 28 Mar 2023 07:00:00 -0400

In this month's episode, we're talking patent reform solutions with Judge Paul Michel, Professor Adam Mossoff, and Randy Landreneau!

Nearly two decades worth of Federal Circuit and Supreme Court rulings have thrown the patent system into disarray and weakened patent rights for inventors. Subject matter eligibility is a confused, chaotic mess – leaving even the Federal Circuit Chief Justice at a loss on how to determine eligibility. The muddied state of invention enablement puts at risk the software innovations fueling economic growth and the key life science innovations that can save lives. Court interventions on injunctions have made it all but impossible for patent owners to stop others from using their property rights without permission, turning predatory infringement into an efficient business model. This already perfect storm was compounded by an act of Congress a decade ago that inadvertently created a patent killing machine that has weaponized the patent office against inventors. This has all been bolstered domestically by the deep pocketed marketing and lobbying campaigns of a big tech industry that is now destroying the ladder it once climbed up on. And is being exploited internationally in an undeclared cold war that has led to the greatest wealth transfer in human history – and begs the existential question of who is going to develop the technologies of tomorrow.

Over the course of the past couple of months, we've had the opportunity and honor to host conversations with thought leaders across the patent world. Working from their insights, this episode explores the biggest problems plaguing patenting and how those problems impact the innovation economy that so very tightly depends on strong, predictable, and reliable patents. Building on that understanding, we work toward getting a more complete view of the legislative, judicial, and educational solutions needed to get back to the gold standard patent system. In doing so, we not only talk with our guests about their support for the proposed solutions on the table, but we also explore the strongest criticisms.

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/patent-wars-innovators-revolutionaries-and-the-race-to-reform
⦿ Judge Paul Michel and C4IP: https://c4ip.org/
⦿ Adam Mossoff on Twitter: https://twitter.com/AdamMossoff
⦿ Randy Landreneau and US Inventor: https://usinventor.org/
⦿ Innovation Race Movie: https://www.innovationracemovie.com/
⦿ Apply: https://www.aurorapatents.com/careers.html

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

SCOTUS in Focus: Amgen v. Sanofi and the Future of Pharma Patents

Mon, 27 Feb 2023 21:00:00 -0500

We’re leading off Season 3 with a close look at a Supreme Court patent case that could have profound impacts on the invention enablement problems we covered heavily in Season 2. SCOTUS is set to hear opening arguments in Amgen v. Sanofi on March 27th. For the first time in over 75 years, the Supreme Court is evaluating the meaning and scope of the enablement requirement. For those who’ve been following along, you’ll know that this has become one of the bigger issues plaguing patenting and especially so in the life sciences.

Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, leads our discussion today along with our all star patent panel, exploring the scientific background around antibodies necessary to understand the claims, a brief case history of Amgen v. Sanofi, an overview of the enablement factors and tests that have been historically applied in courts and how they might apply to this case, and a discussion around open questions and the potential unintended consequences of the Supreme Court only taking up one-half of the two-sided enablement coin. This ends up being a really great, spirited conversation with panel members coming down strongly on both sides of the case with very compelling arguments – really highlighting the complexities and fundamental issues the court will have to face.

Ashley is joined today by our always exceptional group of IP experts including:

⦿ David Cohen, Principal at Cohen Sciences
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ David Jackrel, President of Jackrel Consulting
⦿ Ty Davis, Patent Strategy Associate at Aurora

** Aurora is Hiring! **

Join us in the trenches and on this podcast! Aurora is looking for a part-time Biomedical Sciences Patent Agent to help with patent portfolio management, application drafting, prosecution, and strategy. This is a salaried, fully remote position with a flexible work week and benefits. Work where you want, when you want, with a great team, on engaging subject matter, and even get the opportunity to be heard on this Podcast and featured on IPWatchdog! Learn more and apply at https://www.aurorapatents.com/careers.html.

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/scotus-in-focus-amgen-v-sanofi
⦿ Slides: https://www.aurorapatents.com/uploads/9/8/1/1/98119826/amgenvsanofi.pdf
⦿ Apply: https://www.aurorapatents.com/careers.html

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

License to File: Foreign Filing License Risks and Strategies

Thu, 26 Jan 2023 08:00:00 -0500

Foreign filing licenses – surprisingly sneaky and easy to overlook, but can come with significant consequences if you do. Many countries, including the US, require inventors to receive special permission to file with patent offices outside of the inventor’s …or invention’s… country. A foreign filing license is a government issued document that represents this permission for inventors and companies to file in foreign countries. Failing to receive this permission can come with serious ramifications including fines, patent revocation, and even imprisonment!

Why so serious? Well, like with most matters of foreign export compliance, it comes down to each nation’s strong desire to protect its own security and economic interests. Allowing ideas to cross borders comes with the risk of the unauthorized exportation of technologies and sensitive information that could have implications for military applications, national security, and state secrets.

In this month’s episode, we're bringing you along for a tale of international mystery and intrigue and into the clandestine world of foreign filing licenses. Ty Davis, Patent Strategy Associate at Aurora, along with our all star patent panel, discusses:

⦿ The three main categories of filing license requirements
⦿ Strategies for data collection and how to navigate potential conflicts
⦿ And some example walkthroughs of international filing conflicts and their resolutions

Ty is joined by our always exceptional group of IP experts, including:

⦿ Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ David Jackrel, President of Jackrel Consulting

** Aurora is Hiring! **

Join us in the trenches and on this podcast! Aurora is looking for a part-time Biotech Patent Agent to help with patent portfolio management, application drafting, prosecution, and strategy. This is a salaried, fully remote position with a flexible work week and benefits. Work where you want, when you want, with a great team, on engaging subject matter, and even get the opportunity to be heard on this Podcast and featured on IPWatchdog! Learn more and apply at https://www.aurorapatents.com/careers.html.

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/license-to-file
⦿ Slides: https://www.aurorapatents.com/uploads/9/8/1/1/98119826/foreignfilinglicenses.pdf
⦿ FFL Table: https://www.aurorapatents.com/foreign-filing-license-requirements.html
⦿ Apply: https://www.aurorapatents.com/careers.html

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Top 3 Inventor Mistakes: Disclosure, Search, and Ownership

Wed, 28 Dec 2022 21:00:00 -0500

If there were a guidebook we could hand to inventors on the first day following the conception of their idea, this episode would be it.

When is it safe to talk about or sell your invention? How do you hedge against invalidation and rejection from competitor IP? How do you ensure you actually own your invention?

In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, leads a discussion along with our all star patent panel, exploring the most common patenting missteps taken by inventors and startups. The focus largely centers around three key areas:

1) Publicly disclosing your invention before you have filed a patent application.
2) Not searching to see if your invention or something similar already exists commercially or in publicly available resources.
3) Not carefully contracting with outside vendors and employees to make sure you own your invention.

The group highlights best practices for not making the mistakes in the first place and explores available remedial options should you already be in need of a rescue line.

Ashley is also joined today by our always exceptional group of IP experts including:
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Ty Davis, Patent Strategy Associate at Aurora
⦿ David Jackrel, President of Jackrel Consulting

** Aurora is Hiring! **

Join us in the trenches and on this podcast! Aurora is looking for a part-time Biotech Patent Agent to help with patent portfolio management, application drafting, prosecution, and strategy. This is a salaried, fully remote position with a flexible work week and benefits. Work where you want, when you want, with a great team, on engaging subject matter, and even get the opportunity to be heard on this Podcast and featured on IPWatchdog! Learn more and apply at https://www.aurorapatents.com/careers.html.

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/top-3-inventor-mistakes
⦿ Slides: https://www.aurorapatents.com/uploads/9/8/1/1/98119826/topinventormistakes.pdf
⦿ Apply: https://www.aurorapatents.com/careers.html

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Unpredictable Arts: Patenting Bio, Chem, and Emerging Technologies

Tue, 29 Nov 2022 13:00:00 -0500

Think your innovation is sufficiently enabled to secure, defend, and assert your patent rights? If it’s a biological, chemical, or emerging technology invention then you might want to think again. In today’s episode we’re looking into how to get more predictable results from the unpredictable arts.

Some technologies, like those rooted in physics and mechanics, are considered “predictable” by the US Patent Office, while others, like biological and chemical technologies, are generally considered “unpredictable.” It follows that the amount of disclosure required to enable an invention is related to the predictability of the technology, and so-called unpredictable arts require more description to teach a reader how to “make and use” the technology. Similarly, emerging technologies, being less well known, also require more disclosure to be fully enabled.

In this month’s episode, David Jackrel, President of Jackrel Consulting, leads a discussion along with our all star patent panel, exploring enablement for the unpredictable arts and emerging technologies. The panel discusses peculiarities of patenting unpredictable art and emerging technologies, with a focus on modern case law and statutes to arrive at a set of best practices for getting more predictable results when patenting these technologies.

Dave is also joined today by our always exceptional group of IP experts including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Shelley Couturier, Patent Strategist and Search Specialist

Before joining the group, as we often do, we’d like to provide a short primer on some key concepts in this episode for those newer to the world of patenting. This primer covers:

⦿ Section 112
⦿ What is the MPEP?
⦿ Specification vs. Claims
⦿ Genus vs. Species Claims
⦿ Markush Groups

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/predictable-results-from-unpredictable-arts
⦿ Slides: https://www.aurorapatents.com/uploads/9/8/1/1/98119826/unpredictable_art.pdf
⦿ MPEP: https://www.uspto.gov/web/offices/pac/mpep/index.html
⦿ How to Read Chemical and Drug Patents: https://www.aurorapatents.com/blog/how-to-read-chemical-and-drug-patents

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Into the Patentverse Vol. 2: AR, VR, and Virtual Infringement

Thu, 27 Oct 2022 14:00:00 -0400

We’re slipping our headsets on and heading back into the Metaverse! Earlier this year, we began our foray into this world with a deep dive into the building blocks that could very well form the structural and economic underpinnings of the Metaverse by exploring the tech concepts and IP implications surrounding Web 3.0, blockchain, cryptocurrency, and NFTs. Today we build on this, by expanding our conversation into the most likely interfaces for the Metaverse, as well as how patentability and infringement could play out as we meld innovations between the physical and digital realms.

In this month’s episode, Kristen Hansen, Patent Strategist and software patent guru here at Aurora, leads a discussion along with our all star patent panel, exploring questions including:

⦿ What is the Metaverse?
⦿ How do virtual and augmented realities fit in?
⦿ And what does infringement look like in the Metaverse or what might it look like in the future?

Along the way, the group also shares some great tips for drafting claims around the virtual world to get around physical world prior art, as well as some pointers for avoiding divided infringement for processes that are performed in a distributed manner – as will almost always be the case with Metaverse-based innovations.

Kristen worked on VR and AR patents for nearly a decade, including those held by some of the Valley giants looking to define the space. We honestly couldn’t think of a better person to lead this conversation. Kristen is also joined today by our always exceptional group of IP experts including:

⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ David Jackrel, President of Jackrel Consulting
⦿ Ty Davis, Patent Strategy Associate
⦿ Dr. Sophia Li, Patent Strategy Fellow

Before joining the group, as we often do, we’d like to provide a short primer on some key concepts in this episode for those newer to the world of patenting. This primer covers:

⦿ Method vs. Apparatus Claims
⦿ Doctrine of Equivalents

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/into-the-patentverse-vol-2-ar-vr-and-virtual-infringement
⦿ Slides: https://www.aurorapatents.com/uploads/9/8/1/1/98119826/2022_psm_metaverse_ii.pdf

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Means-Plus-Function: The Risk of Losing Your Way

Tue, 27 Sep 2022 18:00:00 -0400

Word choice matters a great deal in the world of patenting. You’re using the English language to draw a picture around highly technical concepts. The precision with which this is done, down to the semantic level, can make all of the difference when it comes to your patent application being rejected or granted – and the future likelihood of your ability to assert your rights or defend against invalidation. Word choice too narrow or overly specific – and you can easily be designed around by competitors. Word choice too broad and only describing what something is vs. what it does and you risk rejection or invalidation for what will be ruled as linguistic tricks to get more coverage than what you actually invented. The tension is real and the case law interpretation is fluid, but it all still comes down to determining if the chosen words will enable a person of ordinary skill in the art to carry out an invention – in the interest of other inventors being able to build on the idea, while also avoiding trespassing with infringement.

One very particular place this tension between breadth of coverage and specificity in enablement arises is with the concept of means-plus-function claim language. In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion, along with our all star patent panel, into the nuanced world of means-plus-function claiming. The group digs into the statute, explores relevant case law in an analysis of the kinds of word choices that have and haven’t caused problems for inventors, and also provides some great drafting tips for de-risking the use of means-plus-function claim language.

Ashley is joined today by our always exceptional group of IP experts including:

⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ David Cohen, Principal at Cohen Sciences
⦿ Shelley Couturier, Patent Strategist and Search Specialist

Before jumping into the deep with the panel, we also provide a quick primer on key concepts including specification vs claims, Section 112 enablement, functional claim language, and nonce words.

** Resources **

⦿ Show Notes
⦿ Slides

** Follow Aurora Consulting **

⦿ Home
⦿ Twitter
⦿ LinkedIn
⦿ Facebook
⦿ Instagram

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

From Alice to Axle: IP Uncertainty for the Innovation Economy

Mon, 29 Aug 2022 23:00:00 -0400

In today’s episode, we’re discussing a recent court decision that judges have said could threaten "most every invention for which a patent has ever been granted", turning the patent system into a "litigation gamble."

Dr. David Jackrel, President of Jackrel Consulting, leads a discussion into American Axle’s recent bid to have the Supreme Court overturn a lower court decision that invalidated the company’s patent in a closely followed legal battle with rival Neapco Holdings. This case offered a much anticipated opportunity to more broadly clarify patent eligibility in a time where many believe that court precedent has undermined the U.S. patent process and, in the words of retired U.S. Court of Appeals Chief Judge Paul Michel, “confused and distorted the law of eligibility”, making it an “illogical, unpredictable, chaotic” mess. Critics of these rulings and the resulting present state of IP law claim that the confusion and inconsistency has led to courts canceling many patents that should be protected. The Solicitor General has stated that problems arising from the application of Section 101 have “made it difficult for inventors, businesses, and other patent stakeholders to reliably and predictably determine what subject matter is patent eligible”.

Despite cries for help and urges to provide clarification from multiple presidential administrations, the Solicitor General, members of Congress, the Federal Circuit Court, IP bar associations, and the Patent Office, the Supreme Court refused to hear this case, leaving many inventors and industries in limbo since as a USPTO spokesperson said after the ruling, innovation "cannot thrive in uncertainty."

David and our all star patent panel discuss the case law, its implications, how present statute is being conflated and taking section 101 well beyond its gatekeeping function, and in their analysis of the American Axle patent, provide some great tips that may have changed American Axle’s present fate – and can hopefully improve your odds of success if approached intentionally at the drafting stage.

David is joined today by our always exceptional group of IP experts including:

⦿ Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ David Cohen, Principal at Cohen Sciences
⦿ Arman Khosraviani, Patent Agent and Former U.S. Patent Examiner
⦿ Ty Davis, Patent Strategy Associate and
⦿ Dr. Sophia Hsin-Jung Li, Patent Strategy Fellow

** Resources **

⦿ Show Notes
⦿ Slides

** Follow Aurora Consulting **

⦿ Home
⦿ Twitter
⦿ LinkedIn
⦿ Facebook
⦿ Instagram

And as always, thanks for listening!

Correction Update: This recording refers to Chief Judge Moore as "he". This is not the correct pronoun for Justice Moore. Our host did look into this pre-recording, but unfortunately misspoke in real time. Apologies to Chief Judge Moore.

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Prenuptial Patenting: Responsible Engagement with Engineering Firms

Thu, 28 Jul 2022 08:00:00 -0400

You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. Like many others, you may turn to the aid of an engineering firm or dev shop. This relationship is a marriage of sorts. But it’s a marriage that is designed to inevitably end in divorce! How cleanly, smoothly, and successfully this separation goes depends on the steps that you take before it officially begins.

Both parties come to the relationship with existing assets – IP, software, prototypes, ideas, documentation, etc. More will be created collaboratively throughout the course of the relationship. But how do you ensure you exclusively get back out what you came with and also get what you contributed and uniquely paid for?

In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion into Responsible Engagement with Engineering Firms, or what we affectionately refer to here as “Prenuptial Patenting”. Ashley and our all star patent panel walk you down the aisle and explore everything you need to know to experience marital bliss and an amicable divorce with your engineering partners. This talk covers the full life cycle from vetting partners to post development concerns and everything in between – with particular focus on relationship complexities like IP ownership, assignment from engineering firm inventors back to you, and how to avoid the traps of viral IP.

Ashley is also joined today by our always exceptional group of IP experts including:

⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ David Jackrel, President of Jackrel Consulting

** Resources **

⦿ Show Notes
⦿ Slides

** Follow Aurora Consulting **

⦿ Home
⦿ Twitter
⦿ LinkedIn
⦿ Facebook
⦿ Instagram

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Fortifying Life Science Patents: Eligibility and Enablement

Wed, 29 Jun 2022 22:00:00 -0400

The life sciences are currently facing at least two major plagues in our patent world. The first is that many life science innovations have been deemed ineligible in terms of patentable subject matter. In other words, the courts and the patent office believe that the patent laws are not meant to protect these innovations. The second plague is that the courts believe that many life sciences patents are not enabled. In other words, they are not described in sufficient detail to enable one of skill in the art to make and use the invention.

These subject matter eligibility and enablement plagues manifest in dreaded Section 101 and 112 rejections. In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, leads a discussion, along with our all star patent panel, delving deeply into these rejections and, in the interest of avoiding a podcast 101 rejection, provides some very practical application tips that will help to fortify your life science patent applications.

Ashley is also joined today by our always exceptional group of IP experts including:

⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Daniel Wright, Patent Strategist
⦿ David Jackrel, President of Jackrel Consulting
⦿ Shelley Couturier, Patent Strategist and Search Specialist
⦿ David Cohen, Principal at Cohen Sciences
⦿ Amy Fiene, Patent attorney at Vancott and adjunct professor at BYU
⦿ Steve Stupp, Partner at Stupp Associates, LLC.

** Resources **

⦿ Show Notes
⦿ Slides
⦿ The Death of the Genus Claim
⦿ Final office action rejection frequency for life science patents
⦿ Examiner statistics (not an endorsement)

** Follow Aurora Consulting **

⦿ Home
⦿ Twitter
⦿ LinkedIn
⦿ Facebook
⦿ Instagram

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Into the Patentverse: Web 3.0, Blockchain, Cryptocurrency, and NFTs

Sun, 29 May 2022 09:00:00 -0400

“Metaverse” is the buzziest of the buzzwords in tech today and will soon be joining the ranks of “AI” and “ML” as requisite keywords in the next generation of pitch decks and patent applications. But what are the core components of the Metaverse? And what are their implications in the world of intellectual property? The Patently Strategic Podcast will be exploring this topic over the course of several upcoming episodes.

We begin our exploration with Web 3.0. While it may prove to be the next great tech revolution, the broad shape and definition of the Metaverse itself is still more firmly baked in science fiction than in commercial tech reality. Many of its core building blocks, however, are likely right in front of our eyes (or headsets, perhaps). History shows that most major technology revolutions are rarely leaps, but instead evolutionary products of incremental steps, composed of many existing building blocks, met with market readiness. The Web 3.0 innovations of blockchain, cryptocurrency, and NFTs that are taking shape in front of us will no doubt be among these essential building blocks.

This third phase of the internet also poses some of the most interesting questions for the world of IP. What will the impact be on digital property rights in a secure marketplace, governed by smart contracts? How will copyrights play in digital worlds with their own art and governance? Is there merit in considering a new type of protection category outside of patents and copyrights?

In our very first IPWatchdog episode, Kristen Hansen, Patent Strategist and software patent guru here at Aurora, leads a discussion along with our all star patent panel, digging into:

⦿ The fundamentals of blockchain, cryptocurrencies, and NFTs – and why the hype
⦿ The state of the technology
⦿ Questions around what web evolution, blockchain, and NFT technology means for IP ownership
⦿ And strategies for protecting blockchain and cryptocurrency innovations

Kristen is also joined today by our always exceptional group of IP experts including:

⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ David Jackrel, President of Jackrel Consulting
⦿ Shelley Couturier, Patent Strategist and Search Specialist
⦿ Daniel Wright, Patent Strategist

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/new-podcast-into-the-patentverse-vol-1
⦿ Apply to come work with us: https://www.aurorapatents.com/careers.html

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Common Ownership: Whose prior art is it anyway?

Mon, 23 May 2022 21:00:00 -0400

In this month's episode, our experts help to demystify the concept of Common Ownership and how it can be leveraged to disqualify prior art that might otherwise cause a rejection during prosecution.

Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora leads this discussion along with our all star patent panel, digging into Common Ownership exceptions, joint research exceptions, and terminal disclaimer practice. And if this all sounds like a foreign language or if you’re wondering why you might care, we include a primer that will help you quickly get up-to-speed on key concepts like inventorship, ownership, assignments, prior art, and terminal disclaimers.

One of the recurring themes of this podcast is helping inventors avoid sharp corners and we’ve found that these concepts in particular trip up a lot of newer inventors and the resulting problems that come from misunderstandings around these core concepts can be difficult to untangle.

Ashley is joined today by our always exceptional group of IP experts including:

⦿ David Cohen, Principal at Cohen Sciences
⦿ Shelley Couturier, Patent Strategist and Search Specialist at Aurora
⦿ Amy Fiene, Patent attorney at Vancott and adjunct professor at BYU
⦿ David Jackrel, President of Jackrel Consulting

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/new-podcast-common-ownership

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/

⦿ Twitter: https://twitter.com/AuroraPatents

⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/

⦿ Facebook: https://www.facebook.com/aurorapatents/

⦿ Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Inventor Stories: RISEing with Patents

Wed, 30 Mar 2022 15:00:00 -0400

In this month’s special episode, we’re sharing a great sit down with three very innovative, up-and-coming inventors – as we also launch the next installment of our RISE award.

We are joined today by:
⦿ Keith Phillips, CEO & Founder of realLINGUA
⦿ Theresa Smith, CTO of the Ola Filter Corporation
⦿ Brendan Wang, Founder of CAPNOS

These inventors share their stories and provide invaluable tips and advice, much learned the hard way. Along the way, we explore:
⦿ Challenges in bootstrapping – especially as companies coming up through the pandemic
⦿ The importance of patenting and how the RISE award helped solve critical challenges
⦿ Advice for inventors new to patenting
⦿ The importance of feedback

** Learn more and apply for the RISE award **

The RISE award offers a free provisional U.S. patent application or $5,000 towards a non-provisional U.S. patent application to a selected applicant.
https://www.aurorapatents.com/rise-up-with-aurora.html

** Learn more about our featured inventors **

⦿ Keith Phillips and realLINGUA: https://reallingua.com
⦿ Theresa Smith and the Ola Filter: https://www.olafilter.com
⦿ Brendan Wang and The CAPNOS Zero®: https://mycapnos.com

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/new-podcast-inventor-stories-vol-1

** Follow Aurora Consulting **

⦿ Home: https://www.aurorapatents.com/

⦿ Twitter: https://twitter.com/AuroraPatents

⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/

⦿ Facebook: https://www.facebook.com/aurorapatents/

⦿ Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Software Patents: Protecting Your Digital Innovations

Thu, 17 Feb 2022 11:00:00 -0500

We're officially kicking off our second season and in this month's episode, our experts tackle software patents.

As Silicon Valley engineer and investor Marc Andreessen famously said, “Software is eating the world”. It is central to so much of today’s innovation and the growth potential is off the charts. Five companies, all with software at their core, are worth a quarter of the S&P’s entire market cap. The AI powered market will grow to $180 billion by 2025. By the end of this year, the Global Edge Computing market will reach $6.72 billion and the global AR and VR market will exceed $209 billion. By 2030, there will be 50 billion IoT devices in use worldwide. That’s 6 devices each for every man, woman and child on this planet – and all of them are powered by software.

The stakes are high, the value is soaring, and the importance of quality software patenting has never been more strategically vital. In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora leads a discussion along with our all star patent panel, digging into:

The social and legal issues surrounding software patents
Strategies for how to protect software innovations
A great overview of IP implementation concerns and strategies as they pertain to outsourcing, code ownership, agile methodologies, and open source use
An inside look at how Google manages its IP

The group also concludes with an insightful brainstorming session around two problems that plague this space. The first is around a new patent type that would help overcome many of the current prosecution and court problems faced by software patents. The second, pulling from adjacent IP law, is a mechanism for small inventors to receive compensation for using their patents, similar to how music copyright royalties are handled.

Ashley is joined today by our always exceptional group of IP experts including:

David Cohen, Principal at Cohen Sciences
Shelley Couturier, Patent Strategist and Search Specialist at Aurora
Amy Fiene, Patent attorney at Vancott and adjunct professor at BYU
Kristen Hansen, Patent Strategist at Aurora
David Jackrel, President of Jackrel Consulting
Daniel Wright, Partnership Manager and Patent Strategist at Aurora

** Resources **

* Show Notes: https://www.aurorapatents.com/blog/new-podcast-software-patents

** Follow Aurora Consulting **

* Home: https://www.aurorapatents.com/

* Twitter: https://twitter.com/AuroraPatents

* LinkedIn: https://www.linkedin.com/company/aurora-cg/

* Facebook: https://www.facebook.com/aurorapatents/

* Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Patent Anatomy: What’s in a patent?

Wed, 22 Dec 2021 08:00:00 -0500

What’s actually in a patent? What can you learn from reading one? Where do you even find them? For answers to these critical questions and more, I sat down with Patently Strategic regulars – David Cohen, Principal at Cohen Sciences and Ashley Sloat, President and Director of Patent Strategy here at Aurora. In our discussion, we break down the key anatomy, cut through the terminology, and provide tips on how you can use this information for your competitive advantage.

Patenting can be such an essential part of early startup years, but it’s a very complex domain, with loads of special vocabulary, and all of that can make it seem less accessible than it was really designed to be. In putting the questions together for the Q&A with Ashley and David, I quickly realized that, had I had the answers and this context much sooner in my own journey into this world, a lot of things would have made a lot more sense much earlier.

This is a guided tour, intended to reduce this barrier of entry, unlock for you one of the greatest libraries in the world, and help set you up with clear eyes going into your own patent journey. The tour is done through the anatomical lens of the most intrinsic and tangible piece of the process – the patent application. It’s through the study of a patent's structure and parts, that you’ll quickly begin to see more clearly how the broader world of patenting works!

** Resources **

* Show Notes: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy

* USPTO: https://www.uspto.gov

* Public PAIR: https://portal.uspto.gov/pair/PublicPair

* Google Patents: https://patents.google.com

** Follow Aurora Consulting **

* Home: https://www.aurorapatents.com/

* Twitter: https://twitter.com/AuroraPatents

* LinkedIn: https://www.linkedin.com/company/aurora-cg/

* Facebook: https://www.facebook.com/aurorapatents/

* Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Inventorship: Who should be listed as an inventor for a patent?

Tue, 23 Nov 2021 21:00:00 -0500

In the US especially, patents are granted to inventors. More often than not, that’s more than one person and the ideas themselves are fluid concepts that often evolve through many handoffs from initial conception through implementation and sometimes even throughout patent prosecution, but how do we determine who all should – and is legally required to be – officially named as an inventor?

In the constitutionally expressed interest of protecting inventors and the conception of their ideas, failure to include the right people can be a death sentence for a patent and grounds for invalidity.

In this episode, Daniel Wright, Partnership Manager and Patent Strategist here at Aurora, will lead a deep dive into the origins of inventorship, break down who is and isn’t eligible for inclusion as an inventor, and explain how improper inventorship could result in revoked patent rights.

Daniel is joined today by:
* David Jackrel, President of Jackrel Consulting
* David Cohen, Principal at Cohen Sciences.

***

** Resources **

* Show notes: https://www.aurorapatents.com/blog/new-podcast-inventorship

** Follow Aurora Consulting **

* Home: https://www.aurorapatents.com/

* Twitter: https://twitter.com/AuroraPatents

* LinkedIn: https://www.linkedin.com/company/aurora-cg/

* Facebook: https://www.facebook.com/aurorapatents/

* Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

American Inventor Horror Story: Ten Years of AIA and the PTAB

Wed, 27 Oct 2021 12:00:00 -0400

Listen in as we discuss the impact of the AIA and the PTAB with inventors gathered as part of the "Decade of Stolen Dreams" rallies, happening in front of regional USPTO offices all across the country, marking the 10 year anniversary of the passage of the America Invents Act – an event described by advocacy groups as the worst event in U.S. patent history.

The inventors and entrepreneurs at the rally we attended, all from diverse backgrounds with very different stories, have one thing in common and that is their shared belief that the AIA and the PTAB – with its eye-popping 84% invalidation rate – have crippled innovators and created a Decade of Stolen Dreams, ruining the lives of countless inventors and shutting down numerous start-ups, in favor of Big Tech and multinational corporations.

In this episode, we break down the AIA and PTAB through a wide array of personal perspectives from inventors, patent practitioners, and even a former USPTO patent examiner. We explore its origins, core problems, and proposed solutions. We also provide some very practical tips that inventors should consider now to help future-proof their patents, should they ever find themselves on the receiving end of an IPR.

Inventors are not only the real engine of our economy, but they’re also the reason we do what we do here at Aurora. This is a complex issue, with high stakes, involving the people who matter most to our business and what the world will look like for our kids, so we can’t think of a better use of a podcast episode than to lend a voice and hopefully shine a light on the key issues and some potential solutions.

I am joined today by an exceptional group of industry experts, founders, and inventors including:

* Ashley Sloat: President & Director of Patent Strategy at Aurora Consulting
* Dan Brown: Professor at Northwestern, owner of 40 utility patents, elected to the National Academy of Inventors, and serves as the inventor rep on the Patent Public Advisory Committee.
* Bob Schmidt: Founder, Chairman and CEO of 5 companies including Great Lakes NeuroTechnologies and Cleveland Medical Devices, Co-Chair of the Small Business Technology Council, and has 40 patents to his name
* Louis Carbonneau: Founder & CEO of Tangible IP, one of the largest patent brokers in the world
* Kip Azzoni Doyle: Inventor of the CardShark WalletSkin and the author of the upcoming book, “Blood in the Water, America’s Assault on Innovation”
* Tariq Najee-ullah: 10 year patent examiner, former NASA engineer, and current Principal at Patent Insider

***

Learn more: https://www.aurorapatents.com/blog/new-podcast-american-inventor-horror-story

** Follow Aurora Consulting **

* Home: https://www.aurorapatents.com/

* Twitter: https://twitter.com/AuroraPatents

* LinkedIn: https://www.linkedin.com/company/aurora-cg/

* Facebook: https://www.facebook.com/aurorapatents/

* Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Attributions:
Music: They Come At Night

Let us know what you think about this episode!

Patent Monetization: Buying and Selling

Thu, 30 Sep 2021 09:00:00 -0400

In this episode, we take a deep dive into the war games filled world of patent buying and selling. We are joined today by special guest host, Louis Carbonneau, Founder & CEO of Tangible IP. Mr. Carbonneau is a recognized expert in intellectual property with close to 30 years of professional US, Canadian, and international experience in all facets of intellectual property law and business. His firm is the largest brokerage firm in the world and has transacted over 4,500 patents in the past decade.

When we sat down with Louis, we hoped to be able to provide our listeners with a 101 style talk on the ins and outs of patent monetization. What we got was so much more and so very consistent with our mission of helping our audience see around corners and help their future selves. Louis begins with some excellent historical perspective and an overview of the state of the market, but really drives it all home with a plethora of forward-thinking strategies that make for more robust, defendable, assertable patents. Patents are a long game. The little things you do now can have tremendous impact over the next 15 or more years of your business journey and it’s vital that inventors and practitioners start keeping these strategies in mind, if they have any hope of crafting battle ready, commercial-grade patents.

Louis is joined today by our always exceptional group of IP experts including:
* Ashley Sloat – President & Director of Patent Strategy at Aurora Consulting
* Shelley Couturier – Patent Strategist and Search Specialist here at Aurora
* David Jackrel – President of Jackrel Consulting
* David Cohen – Principal at Cohen Sciences
* Amy Fiene – Patent attorney at Vancott and adjunct professor at BYU
* Neil Thompson – Patent agent at Torrey Pines Law Group

***

** Resources **

* Show notes: https://www.aurorapatents.com/blog/new-podcast-patent-monetization

** Follow Aurora Consulting **

* Home: https://www.aurorapatents.com/

* Twitter: https://twitter.com/AuroraPatents

* LinkedIn: https://www.linkedin.com/company/aurora-cg/

* Facebook: https://www.facebook.com/aurorapatents/

* Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Patent Searching: Sleuthing Your Way to Stronger Patents

Wed, 25 Aug 2021 13:00:00 -0400

You have an idea and you’d like to protect it. But can you? Is it novel? Non-obvious? Would you eventually be able to license or enforce your patent down the road? Who else is competing in this area and where’s the whitespace? If you get the patent, can you freely produce and sell the idea, without the costly risk of infringement litigation?

These questions and the quest for their answers unfold like a detective mystery. The sheer magnitude of source material to sift through is overwhelming. 172 countries with patent systems, over 11 million active patents across the globe, millions more published, but not granted, topped off with endless volumes of non-patent literature. A multitude of keywords, synonyms, and domain specific languages. Countless databases. A cacophony of clues, mixed with an abundance of superficially convincing evidence that could ultimately prove irrelevant. An overly litigious villain competitor lurking around the corner. And the greater powers of observation and the superior mind of a detective to cut through it all and make plain the answers to our untrained eyes!

Shelley Couturier, Patent Strategist, Search Specialist, and Chief Sleuth here at Aurora, leads a discussion along with our all star patent panel into the low cost, high return world of patent searching. The domain is complex, but the efforts have one of the highest possible ROIs of anything you can do, especially in the early stages of your patent journey. With some practical guidance and a little help, patent searching will save you significant time, money, and effort in the long run, all while yielding a much stronger patent overall. I assure you, listening in will be a gift to future self.

Shelley is joined today by an exceptional group of IP experts including:
* Ashley Sloat – President & Director of Patent Strategy at Aurora Consulting
* David Cohen – Principal at Cohen Sciences
* Amy Fiene – Patent attorney at Vancott and adjunct professor at BYU

Oh – and back by popular demand, the group kicks off with another gripping ice breaker, which turns into an instant classic.

***

** Resources **

* Show notes: https://www.aurorapatents.com/blog/new-podcast-patent-searching

* Slides: https://www.slideshare.net/JoshSloat1/patent-searching-sleuthing-your-way-to-stronger-patents

** Follow Aurora Consulting **

* Home: https://www.aurorapatents.com/

* Twitter: https://twitter.com/AuroraPatents

* LinkedIn: https://www.linkedin.com/company/aurora-cg/

* Facebook: https://www.facebook.com/aurorapatents/

* Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.
Music: Signs To Nowhere by Shane Ivers - https://www.silvermansound.com

Let us know what you think about this episode!

Patent Prosecution Highway: Fast Tracking Your Application

Wed, 28 Jul 2021 15:00:00 -0400

Getting a patent is no quick process. In the time between filing and issuance, your application will go through several stages, often from multiple patent offices and with months or years between stages. The total process can take two to five years and sometimes longer. But who has time for that? Sometimes you need a patent, and you need it fast. Luckily, there are some options for fast tracking your application.

In today’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion along with our all star patent panel, exploring one of these options – the Patent Prosecution Highway (PPH) and how it can significantly speed up prosecution between international jurisdictions with similar policies.

Ashley is joined today by an exceptional group of IP experts including:

* Steve Stupp, Partner at Stupp Associates, LLC.
* David Jackrel, President of Jackrel Consulting
* Daniel Wright, Partnership Manager and Patent Strategist at Aurora Consulting
* Dominic Filice, Patent Expert at Parola Analytics, Inc.

As was the case with the last episode, our discussion panel really jumps right into the thick of the material and in retrospect we thought it might be helpful for the not yet IP experts out there to set the table a bit. I sat down again with Ashley for a brief conversation to help set the stage for what the patent prosecution highway is, how it fits into the patenting process, and when it might make sense for you. We discussed:

* Real numbers on how long it takes to get a patent under normal circumstances without an expedited path.
* Options for skipping in line and fast tracking your application when you need to move more quickly (U.S. and International options).
* Benefits, risks, costs, and relative time implications for PPH, Track One Prioritized Examination, and Accelerated Examination.

***

** Resources **

* Show Notes: https://www.aurorapatents.com/blog/new-podcast-patent-prosecution-highway

* Slides: https://www.slideshare.net/JoshSloat1/patent-prosecution-highway-fast-tracking-your-application

** Follow Aurora Consulting **

* Home: https://www.aurorapatents.com/

* Twitter: https://twitter.com/AuroraPatents

* LinkedIn: https://www.linkedin.com/company/aurora-cg/

* Facebook: https://www.facebook.com/aurorapatents/

* Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

After Final Practice: Life After Final Rejection

Mon, 28 Jun 2021 14:00:00 -0400

Your application just received a final rejection notice from the patent office. Now what? How final is final? The office owes you nothing at this point and without further action, your patent is dead. Good news, though – all may not be lost! Options for resuscitation are limited, but the patient isn’t yet a goner.

David Jackrel, President of Jackrel Consulting, leads a discussion along with our all star patent panel, digging into the specifics of After Final Practice (AFCP 2.0). After Final Practice is one of the three primary options for getting a rejected patent application on life support and breathing again. Among the three, it has the unique combination of being lesser known, but also requiring the least effort and expense, making it a wonderful target for a strategy discussion. The insider tips on best practices for working with examiners during this process are worth the listen, alone!

David is joined today by an exceptional group of IP experts including:

* Ashley Sloat, President and Director of Patent Strategy at Aurora Consulting
* Daniel Wright, Partnership Manager and Patent Strategist at Aurora Consulting
* Steve Stupp, Partner at Stupp Associates, LLC
* Dominic Filice, Patent Expert at Parola Analytics, Inc.

For this episode, we break form a bit by front-loading a brief chat with Ashley to help set the stage with some extra up-front context that we hope can be helpful for our broader audience. We discuss the following:

* What is a final rejection?
* Is it common to get one or more rejections from patent offices during prosecution of an application?
* How does AFCP compare with the other post-rejection practices of 1) appealing to the Patent Trial and Appeal Board (PTAB) and 2) submitting a Request for Continued Examination (RCE) ? When does AFCP make the most sense vs. the other two?
* What is the likelihood of getting a post-rejection allowance using one of three options?

***

** Resources **

* Show Notes: https://www.aurorapatents.com/blog/new-podcast-after-final-practice

** Follow Aurora Consulting **

* Home: https://www.aurorapatents.com/

* Twitter: https://twitter.com/AuroraPatents

* LinkedIn: https://www.linkedin.com/company/aurora-cg/

* Facebook: https://www.facebook.com/aurorapatents/

* Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Attributions:
heartmonitor-EKG.wav by FreqMan via freesound.org, under CC BY 3.0 license.

Let us know what you think about this episode!

Google v. Oracle: The Future of Software and Fair Use

Wed, 05 May 2021 22:00:00 -0400

Listen in as our expert panel breaks down Google v Oracle and what it means for the future of software development and fair use. This legal contest has been heralded as the “World Series of IP cases” and the “copyright case of the decade”.

It’s a landmark case, 11 years in the making, between two industry heavyweights – Google, the undisputed king of search and mobile operating system market share, accused of both patent and copyright infringement against Oracle, the owner of the ubiquitous Java API.

At stake is a winner take or keep-all purse of $9 billion in damages and a Supreme Court ruling that will dictate the future of software interface copyright law. Ashley Sloat, President & Director of Patent Strategy here at Aurora, serves as your guide, cutting through 11 years of case law, 3 trials, 2 appeals, and endless technology metaphors, all in an illuminating IP conversation that runs the gamut from patent infringement to copyright violation and ultimately settles on a matter of fair use doctrine.

Ashley is joined today by an exceptional group of IP and tech domain experts including:

* Steve Stupp, Partner at Stupp Associates, LLC
* David Jackrel, President of Jackrel Consulting
* David Cohen, Principal at Cohen Sciences
* Katrin Kareht, Sr. Director of Intellectual Property at Perfect Day
* Daniel Wright, Partnership Manager and Patent Strategist at Aurora Consulting
* Shelley Couturier, Patent Strategist and Search Specialist at Aurora Consulting
* Dominic Filice, Patent Expert at Parola Analytics, Inc.
* Josh Sloat, Executive Technology Advisor at Aurora Consulting

** Resources **

* Slides: https://www.slideshare.net/JoshSloat1/google-v-oracle-the-future-of-software-and-fair-use

* Show notes: https://www.aurorapatents.com/blog/new-podcast-google-v-oracle

* Supreme Court Opinion: https://www.supremecourt.gov/opinions/20pdf/18-956_d18f.pdf

***

** Follow Aurora Consulting **

* Home: https://www.aurorapatents.com/

* Twitter: https://twitter.com/AuroraPatents

* LinkedIn: https://www.linkedin.com/company/aurora-cg/

* Facebook: https://www.facebook.com/aurorapatents/

* Instagram: https://www.instagram.com/aurorapatents/

And as always, thanks for listening!

---
Note: The contents of this podcast do not constitute legal advice.

Attributions:
Fight Arena 2 by SyntaxSeed via

Let us know what you think about this episode!

On-sale Bar: Patentability and Selling Your Invention

Tue, 16 Mar 2021 13:00:00 -0400

In this inaugural episode, Dr. Ashley Sloat, President & Director of Patent Strategy at Aurora Consulting leads a deep dive into the on-sale bar and the trapdoor-esque implications of selling your innovation before filing. Spoiler alert: there are some very sneaky triggers – many types of activities that you might not traditionally think of as sales transactions that can trigger the bar and really jeopardize patentability.

Ashley is joined in this episode by an expert panel with over 56 years combined patenting experience:

David Jackrel, President of Jackrel Consulting
David Cohen, Principal at Cohen Sciences
Katrin Kareht, Sr. Director of Intellectual Property at Perfect Day
Daniel Wright, Partnership Manager and Patent Strategist at Aurora Consulting

Go deeper:

Let us know what you think about this episode!

​​Patently Strategic - Patent Strategy for Startups

The Biotech Bargain: How Patents Help Turn Risk Into Medicine

Design Patents: Building Better Moats

Willful Infringement: When Patent Piracy Turns Egregious

Patent Abandonment and Revival

European Patent Practice

Patent Marking: No Mark, No Money

Startup Capital: Strategic Fundraising and Patent Value

International Patents: Your Travel Guide to Foreign Protection

Cannabis Patents: Cutting Through the Haze of the IP Landscape

ParkerVision v. Rule 36: The Battle for Dignity and Due Process

Dealing with Rejection: Overcoming 101, 102, 103, and 112

Patent Case Law Review: Obviousness

Petition Practice: Correcting PTO Errors With Your Patent

Keeping Patent Pirates at Bay: ITC Portfolio Proofing Strategies

Continuation Practice: Quality Patents Part 3

PTAB Survival Guide: Quality Patents Part 2

Quality Patents

Inventor Stories: Robert Cameron and the Power of Perseverance

CAFC Chronicles: Costly Tales of Claim Construction Fails

Patents and AI: Current Tools, Future Solutions

James Howard and the Black Inventors Hall of Fame

Claim Construction: Building Strong Patent Foundations

Patenting Games: From Pieces to Pixels

Patent Claims: The Name of the Game

Government Grants and Patent Rights: SBIR, STTR, and Your IP

Jack Daniels, Mickey Mouse, and Andy Warhol Walk Into a Bar

Why Patents Exist with Professor Adam Mossoff

What Investors Want in Patents with Sridhar Iyengar

Open Source and Patent Rights: Collaboration with Consequences

Patent Wars: Innovators, Revolutionaries, and the Race to Reform

SCOTUS in Focus: Amgen v. Sanofi and the Future of Pharma Patents

License to File: Foreign Filing License Risks and Strategies

Top 3 Inventor Mistakes: Disclosure, Search, and Ownership

Unpredictable Arts: Patenting Bio, Chem, and Emerging Technologies

Into the Patentverse Vol. 2: AR, VR, and Virtual Infringement

Means-Plus-Function: The Risk of Losing Your Way

From Alice to Axle: IP Uncertainty for the Innovation Economy

Prenuptial Patenting: Responsible Engagement with Engineering Firms

Fortifying Life Science Patents: Eligibility and Enablement

Into the Patentverse: Web 3.0, Blockchain, Cryptocurrency, and NFTs

Common Ownership: Whose prior art is it anyway?

Inventor Stories: RISEing with Patents

Software Patents: Protecting Your Digital Innovations

Patent Anatomy: What’s in a patent?

Inventorship: Who should be listed as an inventor for a patent?

American Inventor Horror Story: Ten Years of AIA and the PTAB

Patent Monetization: Buying and Selling

Patent Searching: Sleuthing Your Way to Stronger Patents

Patent Prosecution Highway: Fast Tracking Your Application

After Final Practice: Life After Final Rejection

Google v. Oracle: The Future of Software and Fair Use

On-sale Bar: Patentability and Selling Your Invention

Patently Strategic - Patent Strategy for Startups