Patently Strategic - Patent Strategy for Startups
35 episodes - English - Latest episode: about 1 month ago - ★★★★★ - 5 ratingsA 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.
Homepage Apple Podcasts Google Podcasts Overcast Castro Pocket Casts RSS feed
Episodes
Patents and AI: Current Tools, Future Solutions
March 20, 2024 14:00 - 1 hour - 46.5 MBWe’re talking about AI and its impact on the patent system. This month's episode evaluates where we presently are and considers where it could all be heading. Dr. David Jackrel and Dr. Ashley Sloat lead a two-part discussion with our all-star panel that begins with a deep dive on the present state of AI patent tools for searching, proofreading, drafting, and prosecution – and then moves on to an exploration of how these tools could eventually provide solutions for many problems plaguing the...
James Howard and the Black Inventors Hall of Fame
February 22, 2024 18:00 - 1 hour - 44.8 MBOur 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 e...
Claim Construction: Building Strong Patent Foundations
January 31, 2024 20:00 - 1 hour - 48.9 MBClaim 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....
Patenting Games: From Pieces to Pixels
November 24, 2023 14:00 - 57 minutes - 39.4 MBFrom 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...
Patent Claims: The Name of the Game
October 06, 2023 17:00 - 1 hour - 46.7 MBWe’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 mos...
Government Grants and Patent Rights: SBIR, STTR, and Your IP
September 06, 2023 18:00 - 1 hour - 43.7 MBIn 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. ...
Jack Daniels, Mickey Mouse, and Andy Warhol Walk Into a Bar
July 27, 2023 06:00 - 1 hour - 76.8 MBIn 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 creat...
Why Patents Exist with Professor Adam Mossoff
June 27, 2023 13:00 - 2 hours - 86.9 MBWhy 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...
What Investors Want in Patents with Sridhar Iyengar
May 30, 2023 13:00 - 54 minutes - 37.7 MBWhat 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...
What Investors Want in Patents wsg Sridhar Iyengar
May 30, 2023 13:00 - 54 minutes - 37.7 MBWhat 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...
Open Source and Patent Rights: Collaboration with Consequences
April 27, 2023 13:00 - 52 minutes - 35.8 MBHow 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 f...
Patent Wars: Innovators, Revolutionaries, and the Race to Reform
March 28, 2023 11:00 - 2 hours - 106 MBIn 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 ...
SCOTUS in Focus: Amgen v. Sanofi and the Future of Pharma Patents
February 28, 2023 02:00 - 1 hour - 58.6 MBWe’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 es...
License to File: Foreign Filing License Risks and Strategies
January 26, 2023 13:00 - 42 minutes - 29.3 MBForeign 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 ramifica...
Top 3 Inventor Mistakes: Disclosure, Search, and Ownership
December 29, 2022 02:00 - 48 minutes - 33.7 MBIf 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 p...
Unpredictable Arts: Patenting Bio, Chem, and Emerging Technologies
November 29, 2022 18:00 - 1 hour - 44.1 MBThink 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 conside...
Into the Patentverse Vol. 2: AR, VR, and Virtual Infringement
October 27, 2022 18:00 - 1 hour - 42.4 MBWe’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...
Means-Plus-Function: The Risk of Losing Your Way
September 27, 2022 22:00 - 50 minutes - 34.8 MBWord 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 co...
From Alice to Axle: IP Uncertainty for the Innovation Economy
August 30, 2022 03:00 - 1 hour - 41.3 MBIn 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 offere...
Prenuptial Patenting: Responsible Engagement with Engineering Firms
July 28, 2022 12:00 - 54 minutes - 37.6 MBYou 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, s...
Fortifying Life Science Patents: Eligibility and Enablement
June 30, 2022 02:00 - 1 hour - 47.5 MBThe 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 s...
Into the Patentverse: Web 3.0, Blockchain, Cryptocurrency, and NFTs
May 29, 2022 13:00 - 54 minutes - 37.5 MB“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 ne...
Common Ownership: Whose prior art is it anyway?
May 24, 2022 01:00 - 1 hour - 41.5 MBIn 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’...
Inventor Stories: RISEing with Patents
March 30, 2022 19:00 - 1 hour - 41.5 MBIn this month’s special episode, we’re sharing a great sit down with three very innovative, up-and-coming inventors – as we also launch the next installment of our RISE award. We are joined today by: ⦿ Keith Phillips, CEO & Founder of realLINGUA ⦿ Theresa Smith, CTO of the Ola Filter Corporation ⦿ Brendan Wang, Founder of CAPNOS These inventors share their stories and provide invaluable tips and advice, much learned the hard way. Along the way, we explore: ⦿ Challenges in bootstrapping –...
Software Patents: Protecting Your Digital Innovations
February 17, 2022 16:00 - 49 minutes - 34.4 MBWe're officially kicking off our second season and in this month's episode, our experts tackle software patents. As Silicon Valley engineer and investor Marc Andreessen famously said, “Software is eating the world”. It is central to so much of today’s innovation and the growth potential is off the charts. Five companies, all with software at their core, are worth a quarter of the S&P’s entire market cap. The AI powered market will grow to $180 billion by 2025. By the end of this year, the ...
Patent Anatomy: What’s in a patent?
December 22, 2021 13:00 - 1 hour - 48.9 MBWhat’s actually in a patent? What can you learn from reading one? Where do you even find them? For answers to these critical questions and more, I sat down with Patently Strategic regulars – David Cohen, Principal at Cohen Sciences and Ashley Sloat, President and Director of Patent Strategy here at Aurora. In our discussion, we break down the key anatomy, cut through the terminology, and provide tips on how you can use this information for your competitive advantage. Patenting can be such ...
Inventorship: Who should be listed as an inventor for a patent?
November 24, 2021 02:00 - 45 minutes - 31 MBIn the US especially, patents are granted to inventors. More often than not, that’s more than one person and the ideas themselves are fluid concepts that often evolve through many handoffs from initial conception through implementation and sometimes even throughout patent prosecution, but how do we determine who all should – and is legally required to be – officially named as an inventor? In the constitutionally expressed interest of protecting inventors and the conception of their ideas, ...
American Inventor Horror Story: Ten Years of AIA and the PTAB
October 27, 2021 16:00 - 54 minutes - 37.3 MBListen in as we discuss the impact of the AIA and the PTAB with inventors gathered as part of the "Decade of Stolen Dreams" rallies, happening in front of regional USPTO offices all across the country, marking the 10 year anniversary of the passage of the America Invents Act – an event described by advocacy groups as the worst event in U.S. patent history. The inventors and entrepreneurs at the rally we attended, all from diverse backgrounds with very different stories, have one thing in co...
Patent Monetization: Buying and Selling
September 30, 2021 13:00 - 1 hour - 42.2 MBIn 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 de...
Patent Searching: Sleuthing Your Way to Stronger Patents
August 25, 2021 17:00 - 1 hour - 47.7 MBYou have an idea and you’d like to protect it. But can you? Is it novel? Non-obvious? Would you eventually be able to license or enforce your patent down the road? Who else is competing in this area and where’s the whitespace? If you get the patent, can you freely produce and sell the idea, without the costly risk of infringement litigation? These questions and the quest for their answers unfold like a detective mystery. The sheer magnitude of source material to sift through is overwhelming...
Patent Prosecution Highway: Fast Tracking Your Application
July 28, 2021 19:00 - 35 minutes - 24.7 MBGetting a patent is no quick process. In the time between filing and issuance, your application will go through several stages, often from multiple patent offices and with months or years between stages. The total process can take two to five years and sometimes longer. But who has time for that? Sometimes you need a patent, and you need it fast. Luckily, there are some options for fast tracking your application. In today’s episode, Dr. Ashley Sloat, President and Director of Patent Strate...
Patent Prosecution Highway: Fast Tracking your Application
July 28, 2021 19:00 - 35 minutes - 24.7 MBGetting a patent is no quick process. In the time between filing and issuance, your application will go through several stages, often from multiple patent offices and with months or years between stages. The total process can take two to five years and sometimes longer. But who has time for that? Sometimes you need a patent, and you need it fast. Luckily, there are some options for fast tracking your application. In today’s episode, Dr. Ashley Sloat, President and Director of Patent Strate...
After Final Practice: Life After Final Rejection
June 28, 2021 18:00 - 29 minutes - 20.5 MBYour application just received a final rejection notice from the patent office. Now what? How final is final? The office owes you nothing at this point and without further action, your patent is dead. Good news, though – all may not be lost! Options for resuscitation are limited, but the patient isn’t yet a goner. David Jackrel, President of Jackrel Consulting, leads a discussion along with our all star patent panel, digging into the specifics of After Final Practice (AFCP 2.0). After Fin...
Google v. Oracle: The Future of Software and Fair Use
May 06, 2021 02:00 - 1 hour - 42.8 MBListen in as our expert panel breaks down Google v Oracle and what it means for the future of software development and fair use. This legal contest has been heralded as the “World Series of IP cases” and the “copyright case of the decade”. It’s a landmark case, 11 years in the making, between two industry heavyweights – Google, the undisputed king of search and mobile operating system market share, accused of both patent and copyright infringement against Oracle, the owner of the ubiquitou...
On-sale Bar: Patentability and Selling Your Invention
March 16, 2021 17:00 - 1 hour - 45.4 MBIn this inaugural episode, Dr. Ashley Sloat, President & Director of Patent Strategy at Aurora Consulting leads a deep dive into the on-sale bar and the trapdoor-esque implications of selling your innovation before filing. Spoiler alert: there are some very sneaky triggers – many types of activities that you might not traditionally think of as sales transactions that can trigger the bar and really jeopardize patentability. Ashley is joined in this episode by an expert panel with over 56 ye...