​​Patently Strategic - Patent Strategy for Startups-logo

​​Patently Strategic - Patent Strategy for Startups

Technology Podcasts

A patent focused podcast for inventors, founders, and IP professionals, covering the finer points, sharp edges, and nuances of startup patent strategy. Each monthly episode will feature a round-table style discussion amongst experts in the field of patenting. Patently Strategic is brought to you by Aurora Consulting, a patent strategy boutique that specializes in working with early stage life science, medical​ device, digital health, and software companies to develop valuable patent portfolios through highly tailored, comprehensive strategies.

Location:

United States

Description:

A patent focused podcast for inventors, founders, and IP professionals, covering the finer points, sharp edges, and nuances of startup patent strategy. Each monthly episode will feature a round-table style discussion amongst experts in the field of patenting. Patently Strategic is brought to you by Aurora Consulting, a patent strategy boutique that specializes in working with early stage life science, medical​ device, digital health, and software companies to develop valuable patent portfolios through highly tailored, comprehensive strategies.

Language:

English

Contact:

5172622404


Episodes

James Howard and the Black Inventors Hall of Fame

2/22/2024
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.

Duration:01:05:09

Claim Construction: Building Strong Patent Foundations

1/31/2024
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.

Duration:01:11:10

Patenting Games: From Pieces to Pixels

11/24/2023
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 SloatTy Davis** 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.

Duration:00:57:16

Patent Claims: The Name of the Game

10/6/2023
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.

Duration:01:07:54

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

9/6/2023
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.

Duration:01:03:33

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

7/27/2023
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.

Duration:01:51:46

Why Patents Exist with Professor Adam Mossoff

6/27/2023
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 HistoryThe U.S. Patent SystemEmbedded in DemocracyInnovation Bridge or Blockade?Trolling the Founders.** 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.

Duration:02:06:27

What Investors Want in Patents with Sridhar Iyengar

5/30/2023
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.

Duration:00:54:51

Open Source and Patent Rights: Collaboration with Consequences

4/27/2023
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.

Duration:00:52:07

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

3/28/2023
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.

Duration:02:34:42

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

2/27/2023
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.

Duration:01:25:11

License to File: Foreign Filing License Risks and Strategies

1/26/2023
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.

Duration:00:42:33

Top 3 Inventor Mistakes: Disclosure, Search, and Ownership

12/28/2022
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.

Duration:00:48:56

Unpredictable Arts: Patenting Bio, Chem, and Emerging Technologies

11/29/2022
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.

Duration:01:04:13

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

10/27/2022
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.

Duration:01:01:38

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

9/27/2022
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.

Duration:00:50:38

From Alice to Axle: IP Uncertainty for the Innovation Economy

8/29/2022
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.

Duration:01:00:02

Prenuptial Patenting: Responsible Engagement with Engineering Firms

7/28/2022
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.

Duration:00:54:44

Fortifying Life Science Patents: Eligibility and Enablement

6/29/2022
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.

Duration:01:09:10

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

5/29/2022
“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.

Duration:00:54:35