What is the actual value of patents? Inventors and companies invest millions in obtaining patents, believing they are valuable assets. Yet, their true worth is rarely quantified.

For this episode of Clause 8, Eli Mazour brings together three of the most insightful experts in the patent valuation space: Michal Malkovich, Vice President at Charles River Associates; Alejandra Loaiza Delgado, Co-Founder and Managing Director at Econ Edge; and Mike Pellegrino, President and Founder of Pellegrino & Associates.

Throughout this discussion, you’ll notice that despite their different experiences and perspectives, they share one goal: getting to the truth about patent valuation.

Host Eli Mazour talks with Heath Hoglund, President of Via LA, to break down the role of patent pools in today’s innovation landscape.

Tune in as they discuss:

*The balance between licensors and licensees—and how Via LA acts as a bridge between them

*Merger of Via Licensing and MPEG LA in 2003 to form Via LA

*How Dolby’s strong brand helped it succeed with technology licensing

*The challenges of starting a new patent pool program and what makes one successful

*Future of patent pools

*Heath’s story of founding Puerto Rico’s first IP boutique before becoming head of IP & standards at Dolby

Kathy Duda is the President of The Patent Office Professional Association (POPA), which is the union representing USPTO patent examiners. On this episode, she discusses why she remains hopeful amidst current uncertainty around new return to office policies.

In the episode, she also discusses:

*Positive collaboration with Acting Director Coke Morgan Stewart

Getting first involved with POPA after it helped her during her pregnancy

Negotiating the first collective bargaining agreement (CBA) with the USPTO in 40 years

Why she’s not getting a whole lot of sleep recently

Examiners waiting for finality regarding decisions about being able to continue to work remotely

Record backlog reached at the USPTO during last administration & work to bring it down

Impact of AI & what examination might look like in 30 years

Disclaimer

Join Eli Mazour as he explores the vital role of the U.S. patent system in fostering innovation. Entrepreneur Patrick Murray shares his journey from ideation to patent acquisition with Radium Payments, emphasizing the importance of intellectual property in business validation. Lisa Mueller, host of the AUTM on the Air podcast, delves into tech transfer, revealing how universities push innovations from labs to marketplaces. This episode underscores patents as essential drivers of American entrepreneurship and academic innovation, providing a nuanced look at their ongoing impact on business and technology.

In this special episode of Clause 8, Eli shares why Coke Morgan Stewart is the perfect person to lead the USPTO. Eli discusses why her selection excites him and the broader implications for the intellectual property field. Reflecting on past directorships and the challenges faced by the USPTO, Eli explores issues such as patent backlogs, Section 101 rejections, and PTAB policies. Highlighting Stewart's experiences and skills, Eli shares his optimism for positive changes under her leadership.

What better way to wrap up 2024 than a conversation around the future of the USPTO with David Boundy.

David is one of the sharpest minds at the intersection of administrative law and intellectual property. Plus, during his tenure at Cantor Fitzgerald, David worked closely with its visionary CEO, Howard Lutnick, who is leading Trump’s transition team and Trump’s pick for Commerce Secretary.

This episode includes David’s thoughts on:

* Why the next USPTO Director should prioritize examination quality, efficiency, and public interest-driven rule-making.

* Advocating for administrative practices that serve innovators better rather than prioritizing bureaucratic processes.

* His time at Cantor Fitzgerald and what it’s like to work with Howard Lutnick.

* Where he gets his personal passion for justice and belief in the patent system as a crucial engine for innovation and economic success.

Earlier this year, Eli had the opportunity to spend a day in Israel with Ariel Dubinsky, the founder and owner of Ariel Dubinsky Law Firm. While there, Eli learned that Ariel is at the heart of Israel’s dynamic intellectual property ecosystem. Ariel mainly focuses on trademarks and copyright, which is increasingly important for the so-called “Startup Nation” which saw a record breaking $10.5 billion in startup acquisitions just this year.

In this special episode of Clause 8, host Eli Mazour takes us behind the scenes of the Consero IP Forum, where he spoke with IP leaders about common pain points and solutions. Guests include:

* Dimitri Kirimis, Lead Counsel at Cruise

* Scott Miller, Chief IP Counsel at Zoetis

* Joel Meyer, VP of IP and Innovation Strategy at Digimarc

* Praveer Gupta, Director of Patents and Innovation Strategy at Uniphore

This week’s Clause 8 episode features Bridget Smith, Assistant General Counsel and Director, Intellectual Property at Relativity Space—the first company to successfully create and launch a 3D-printed rocket. 🚀

Bridget, who previously made waves as a top PTAB practitioner, is now at the helm of IP strategy at Relativity Space, where she’s implementing an innovative approach to IP by using a trade secrets registry. In an industry that moves at light speed, Bridget’s focus on tracking and protecting proprietary know-how is as critical as her work with patents.

In this episode:

* How Bridget established a trade secrets registry that captures and protects a vast amount of innovation efficiently.

* How the specific needs and exposure of the space industry affects Relativity Space’s balance of trade secrets and patents.

* Why Bridget thinks of IP management as understanding what keeps business leaders up at night.

* How she maintains adaptability and foresight when working with groundbreaking tech.

Disclaimer

Jerry Ma, Director of Emerging Technologies and Chief AI Officer, and Charles Kim, Deputy Commissioner for the USPTO tell story of co-chairing USPTO's AI working group - sharing insights on USPTO's AI tools guidance, applying §101 for AI-related inventions, and leveraging AI for examination.

Together, the two co-lead a group working on AI efforts and according to Jerry are focused on “a human first vision for AI at the agency.”

In the episode, host Eli Mazour explores how Jerry and Charles led USPTO’s efforts to deal with AI advancements on the policy front & leverage AI technology to improve USPTO’s own operations before ChatGPT was even a thing. The two leaders come from diverse backgrounds—Jerry with deep experience in Silicon Valley’s tech sector, and Charles with decades of IP and regulatory expertise at the USPTO.

Selected Topics

Start of USPTO’s AI working group, originally co-chaired by Charles Kim and Deputy Director Coke Morgan Stewart, to tackle §101/patent eligibility issues related to AI

Expansion of AI working group to coordinate AI related activities across the USPTO, including exploring leveraging AI technology for patent examination

Jerry Ma’s story of joining the USPTO from Silicon Valley to be Director of Emerging Technologies and taking on role as co-chair of working group

How AI implementation at the USPTO relies on cross-disciplinary teams drawing expertise from law, technology, and policy

Working groups’ efforts to engage with outside stakeholders through the AI/ET Partnership Series to create informed policies around AI and patent eligibility

USPTO’s guidance on (1) use of AI-based tools, (2) AI-assisted inventions, and (3) AI subject matter eligibility and responses to related push-back

USPTO’s current use of AI technology & future plans to further leverage AI technology to empower examiners

Role of AI working group as AI becomes widely used within USPTO

Advice for other organizations exploring implementation of AI