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​​Patently Strategic - Patent Strategy for Startups

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Jan 26, 2023 • 43min

License to File: Foreign Filing License Risks and Strategies

Send us a textForeign 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/aurorapatents/ And as
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Dec 29, 2022 • 49min

Top 3 Inventor Mistakes: Disclosure, Search, and Ownership

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.
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Nov 29, 2022 • 1h 4min

Unpredictable Arts: Patenting Bio, Chem, and Emerging Technologies

Send us a textThink 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 contents of this podcast do not co
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Oct 27, 2022 • 1h 2min

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

Send us a textWe’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 podcast do not constitute legal advi
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Sep 27, 2022 • 51min

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

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.
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Aug 30, 2022 • 1h

From Alice to Axle: IP Uncertainty for the Innovation Economy

Send us a textIn 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. Apologies to Chief Judge Moore.
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Jul 28, 2022 • 55min

Prenuptial Patenting: Responsible Engagement with Engineering Firms

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.
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Jun 30, 2022 • 1h 9min

Fortifying Life Science Patents: Eligibility and Enablement

Send us a textThe 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⦿ InstagramAnd as always, thanks for listening! ---Note: The contents of this podcast do not constitute legal advice.
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May 29, 2022 • 55min

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

Send us a text“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 innovationsKristen 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.
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May 24, 2022 • 1h

Common Ownership: Whose prior art is it anyway?

Send us a textIn 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.

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