​​Patently Strategic - Patent Strategy for Startups

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!

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!

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!

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 resolutionsTy 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/auroLet us know what you think about this episode!

This podcast discusses the top three mistakes made by inventors: disclosing inventions too early, not conducting a proper search, and improper contracting for invention ownership. They also explore the components of a patent and available search tools. Additionally, they cover the importance of targeting patent applications accurately, common drafting mistakes, and the significance of clear ownership and assignment agreements.

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 SpecialistBefore 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 coLet us know what you think about this episode!

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 FellowBefore 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 podcLet us know what you think about this episode!

The podcast explores the importance of word choice in patenting, focusing on means-plus-function claim language. The panel of patent experts discusses the concept of means-plus-function claiming, provides drafting tips, and examines the use of 'configured to' in software claims. They also discuss definiteness of terms in patent applications, prosecution differences, and the value of dependent claims.

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⦿ InstagramAnd 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.Let us know what you think about this episode!

This podcast discusses the importance of prenuptial patenting when engaging with engineering firms. The topics covered include vetting partners, securing intellectual property, managing conflict of interest, the relationship between innovation, technology, and patenting, the importance of commenting code, and crediting engineering firms in patents.