​​Patently Strategic - Patent Strategy for Startups

In this episode, we take a deep dive into the war games filled world of patent buying and selling. We are joined today by special guest host, Louis Carbonneau, Founder & CEO of Tangible IP. Mr. Carbonneau is a recognized expert in intellectual property with close to 30 years of professional US, Canadian, and international experience in all facets of intellectual property law and business. His firm is the largest brokerage firm in the world and has transacted over 4,500 patents in the past decade.When we sat down with Louis, we hoped to be able to provide our listeners with a 101 style talk on the ins and outs of patent monetization. What we got was so much more and so very consistent with our mission of helping our audience see around corners and help their future selves. Louis begins with some excellent historical perspective and an overview of the state of the market, but really drives it all home with a plethora of forward-thinking strategies that make for more robust, defendable, assertable patents. Patents are a long game. The little things you do now can have tremendous impact over the next 15 or more years of your business journey and it’s vital that inventors and practitioners start keeping these strategies in mind, if they have any hope of crafting battle ready, commercial-grade patents. Louis is joined today by our always exceptional group of IP experts including:* Ashley Sloat – President & Director of Patent Strategy at Aurora Consulting* Shelley Couturier – Patent Strategist and Search Specialist here at Aurora* David Jackrel – President of Jackrel Consulting* David Cohen – Principal at Cohen Sciences * Amy Fiene – Patent attorney at Vancott and adjunct professor at BYU* Neil Thompson – Patent agent at Torrey Pines Law Group***** Resources *** Show notes: https://www.aurorapatents.com/blog/new-podcast-patent-monetization** Follow Aurora Consulting *** Home: https://www.aurorapatents.com/* Twitter: https://twitter.com/AuroraPatents* LinkedIn: https://www.linkedin.com/company/aurora-cg/* Facebook: https://www.facebook.com/aurorapatents/ * Instagram: https://www.instagram.com/aurorapatents/ And as always, thanks for listening! ---Note: The contents of this podcast do not constitute legal advice.Let us know what you think about this episode!

The podcast discusses the challenges of patent searching and the importance of conducting thorough searches. It emphasizes the value of manual analysis and the limitations of automated platforms. The chapter explores offensive and defensive patent strategies for startups and provides tips for effective searching. They also analyze the power transmission of a mobile device and discuss modifications made by Apple to overcome a similar reference. The process of conducting a comprehensive patent search is explored, including examining examiner's reasons for allowance, forward and backward searching, and finding multiple references to support claims.

Learn about the benefits and options for expediting the patenting process, including the Patent Prosecution Highway (PPH). Discover strategies for fast-tracking applications and the advantages of a focused approach. Understand the concept of PPH, its agreements, and forms for specific countries. Explore the process of filing patents internationally and the differences between the PCT pathway and direct filing.

David Jackrel, President of Jackrel Consulting, along with a panel of IP experts, discusses After Final Practice (AFCP 2.0) as an option for resuscitating rejected patent applications. They share best practices for working with examiners during this process and highlight the benefits of AFCP, including its lesser-known status and low effort and expense requirements. The podcast explores the concept of final rejections, different options after final rejection, success rates of various pathways, and the process of applying for examiner interviews. They also provide guidance on suitable amendments for AFCP 2.0.

Experts discuss the Google v. Oracle case, exploring the copyright aspect, Supreme Court's view on intellectual property, contrasting perspectives on the case's implications for software developers, concerns about Google's power and behavior, and the potential consequences of a ruling against Google.

Dr. Ashley Sloat and a panel of experts discuss the on-sale bar and its implications for patentability. They cover topics such as remote business communication, challenges of patentability in Europe, method as trade secrets, filing provisional patents, and managing patent filing budgets.