​​Patently Strategic - Patent Strategy for Startups

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There’s not a more important concept that’s more widely misunderstood by those newer to patenting than continuations. So we’re dedicating Part 3 of our series on quality patents to everything you need to know about this essential step for future proofing and increasing the value of your portfolio.

Void of pursuing continuations, the language of your patent is frozen in time at issuance. The specifics of the enforceable boundaries of your protection are forever fixed to the claims you chose to pursue with your initial application – but not necessarily with the full breadth of your invention as conceived. For many reasons, practitioners and inventors will often choose to limit how much of an invention is claimed in an initial application. But then the future happens. Case law changes. New competitors arise. New prior art surfaces. And challenges may come in the form of litigation or IPRs as we discussed in our last episode. With a closed family, all you can do is hope you had the right foresight to predict this future with your static document.

Continuations, on the other hand, allow patent owners to keep patent families open – in other words, not textually frozen in time at issuance. When done right and timely, the patent family becomes a series of living documents, allowing a patent owner to claim and capture the full scope and breadth of the conceived innovation, but with the benefit of hindsight, known R&D outcomes, and changing market conditions.

** Episode Overview  **

⦿ The basics of continuation practice and its strategic benefits
⦿ Types of continuation applications and how and when each applies
⦿ The close cousin concepts of terminal disclaimers and prosecution latches
⦿ The potential unfortunate consequences of the recent Sonos v. Google decision regarding a very common use of continuation practice

** Mossoff Minute  **

In this month's Mossoff Minute, Adam discusses the introduction of the RESTORE Act. This is an exciting new piece of legislation aimed at restoring patent owners’ abilities to obtain injunctions to stop infringers from continuing to steal innovations after being found guilty of doing so.

** Discussed Links **

⦿ Quality Patents Part 1: https://www.aurorapatents.com/blog/quality-patents
⦿ Quality Patents Part 2: https://www.aurorapatents.com/blog/ptab-survival-guide
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Patent Wars: https://www.aurorapatents.com/blog/patent-wars-innovators-revolutionaries-and-the-race-to-reform
⦿ RESTORE Act: https://www.aurorapatents.com/blog/restoring-injunctive-relief

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
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The most terrifying thing that can happen to a patent owner is receiving what’s called an IPR or Inter Partes Review petition. This is a tool that accused infringers can use to invalidate patents. And they have … to alarming effect. As we’ve discussed, the kill rate at the PTAB is staggering. The Patent Trial and Appeal Board – or as regular listeners of this audience more commonly know it as, the "Patent Death Squad" – has racked up a claim execution rate north of 84% and the death of thousands of valid patents at the hands of infringers looking to profit from innovations they didn’t invest in to create. This is an institution that is clearly out of balance and screaming for reform.

And while we continue to diligently work toward those necessary reform solutions, we also have to deal with the world as it is and craft the highest quality, most future-proof patents possible. So we’re dedicating Part 2 of our series on Patent Quality to creating a guide for how to help IPR proof your patent – things you can do when you write and prosecute patent applications before an examiner to maximize the likelihood that the resulting patent will survive the IPR that it will eventually experience if it’s a valuable patent.

** Guest Host: Matt Phillips **

Your expert author of this guide is someone who’s spent considerable time in the belly of the beast, successfully representing both petitioners and patent owners. Matt Phillips is a clear thinker, a great speaker, and draws from a deep well of real world expertise built from both sides of the IPR table.  His practice focuses on post grant proceedings including review proceedings at the PTAB, reexaminations, and reissues. According to Matt, post-grant proceedings are about 80% of what he’s done for the past 10-15 years. He also created and taught the “Post-Grant Patent Practice” course for the Patent Resources Group for eleven years and is a co-author of a two-volume treatise of the same name. Matt has taught as an adjunct law school professor. He has published over 40 articles on post-grant patent topics and been an invited speaker around the country and internationally on post-grant topics.

** Discussed Links **

⦿ Quality Patents Part 1: https://www.aurorapatents.com/blog/quality-patents
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Patent Wars: https://www.aurorapatents.com/blog/patent-wars-innovators-revolutionaries-and-the-race-to-reform
⦿ American Inventor Horror Story: https://www.aurorapatents.com/blog/new-podcast-american-inventor-horror-story

** Follow Aurora Patents **

⦿ 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/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

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Is your patent a vanity piece of paper for your office wall? Or is it a reliable, defendable, assertable, property right? The difference is often quality.

Is your patent simply a transactional cost and a large pile of legal bills for your startup? Or is it a leverageable asset worthy of attracting precious investment dollars, worth its cost in multiples of valuation? The difference is often quality.

Is your patent application only good enough to get through the examination process? Or has it been crafted to stand the tests of time and varied audiences if you later need to assert that document against an infringer, find yourself litigating with it in an Article 3 Court at the hands of a judge and jury, God forbid, end up having to defend its validity at the PTAB, or even needing to use it to block pirated imports at the International Trade Commission? The difference is often quality.

Quality will be our focus for a good chunk of the remainder of this season. What goes into a quality patent, and where possible, how do you get it without breaking the bank?

** Episode Overview **

In this first episode of our quality series, Kristen Hansen and the panel discuss:

⦿ What do we mean when we say patent quality?
⦿ Why is patent quality important?
⦿ How to balance quality and budget
⦿ The importance of searching, continuations, and draftsperson domain expertise
⦿ Very practical tips, tricks, examples, and Kristen’s Musts for drafting quality applications

** Mossoff Minute **

In this month's Mossoff Minute, in honor of celebrating America’s independence, we’re flashing back to our conversation with Professor Adam Mossoff about why patents exist, how the US system differed from all predecessors, and how the Founders’ notions of the core principles of democracy are inextricably linked with the societal good that comes from innovation and intellectual property protection.

** Discussed Links **

⦿ Patent Anatomy: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Claim Construction: https://www.aurorapatents.com/blog/claim-construction
⦿ Patent Wars: https://www.aurorapatents.com/blog/patent-wars-innovators-revolutionaries-and-the-race-to-reform
⦿ American Inventor Horror Story: https://www.aurorapatents.com/blog/new-podcast-american-inventor-horror-story

** Follow Aurora Patents **

⦿ 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/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening! 

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Note: The contents of this podcast do not constitute legal advice.

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We’ve seen few entrepreneurial success stories that haven’t involved heavy doses of perseverance, grit, observation, and creative problem-solving. Today’s guest possesses these qualities in spades. And while I can’t necessarily recommend some of the more death-defying specifics of his approach … at least not without a lot of “don’t try this at home” fine print :)  … I do think that most inventors and aspiring entrepreneurs will benefit immensely from studying our guest's thoughtfully crafted, time-tested, and wildly inventive approaches to innovation and business.

Robert Cameron is the Owner and CEO of Multi Wedge – as well as the inventor of some brilliant products sold under the same name. Multi Wedge non-marring pry tools are designed to pry delicate materials without damage. These are excellent tools for woodworking, electrical wiring, delicate mechanical work, and so much more. Robert’s wedges were recently tested by SpaceEx and used in the manufacturing process of Jet Engines at G.E Aviation. And of slightly less significance, but much closer to home, found under the Christmas trees of several of my closest relatives this past December. Robert has molded 1.3 million 3-piece sets, 3.3 million single wedges, and has been selling Multi Wedge in over 18,000 stores since 2010.

I met Robert back in October at the US Inventor Conference in DC. I was lucky enough to bump into him over dinner when he shared his incredible story with me. It's one of the funniest and most inspiring success stories you’ll hear.

** Mossoff Minute **

In this month's Mossoff Minute, Professor Adam Mossoff discusses findings from the recently published World IP Day Patent Litigation Study. This study clearly shows problems with the patent system but not the problems you typically hear from the companies that have been dominating the patent policy discussions for the past decade. Adam also highlights the importance of injunctions and damages – something we'll be discussing a lot more in segments to come.

** Discussed Links **

⦿ Multi Wedge: https://multiwedge.com/

** Follow Aurora Patents **

⦿ 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/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening! 

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Note: The contents of this podcast do not constitute legal advice.

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The difference between getting claim construction right and getting it wrong is the difference between a valid patent and an invalid patent – and the difference between millions of dollars awarded from infringement decisions vs. ending up with a worthless piece of paper.

In this month’s episode, Dr. David Jackrel, President of Jackrel Consulting, leads a discussion into three real-world applications for patent claim construction, as tested and decided upon by the United States Court of Appeals for the Federal Circuit. This is the highest court in the land under the Supreme Court for handling intellectual property disputes – and establishes much of the legal precedent the patent world has to go on … for better and for worse. The panel dissects the claims for each case, discusses the court’s analysis, and provides tips and strategies for more effective claim drafting in light of the strengths and weaknesses of the litigated patents.

Dave is joined today by our always exceptional group, including:

⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategy Specialist at Aurora
⦿ Ty Davis, Patent Strategy Associate at Aurora

** Mossoff Minute **

In this month's Mossoff Minute, Professor Adam Mossoff discusses the ill-advised price control mania presently sweeping the globe and its predictable impacts on free markets and innovation if we continue down the current path we’re precariously walking.

** Discussed Links **

⦿ Aurora hiring links: https://www.aurorapatents.com/careers.html
⦿ Claim Strategies Episode (Part 1): https://www.aurorapatents.com/blog/patent-claims-the-name-of-the-game
⦿ Claim Construction Episode (Part 2): https://www.aurorapatents.com/blog/claim-construction
⦿ Patent Anatomy Episode: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Patent Anatomy Blog Post: https://www.aurorapatents.com/blog/patent-anatomy-whats-in-a-patent

** Follow Aurora Patents **

⦿ 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/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening! 

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Note: The contents of this podcast do not constitute legal advice.

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We’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 industry including PTAB invalidation rates, hindsight bias, prior art search quality, and the unsustainable bar.  Discussion highlights include:

⦿ ChatGPT 4.0 vs. professionals on core competencies
⦿ Why AI is evolving so rapidly
⦿ AI problems and hallucinations
⦿ AI and public disclosure risk
⦿ AI implications for inventorship
⦿ Current state of AI-assisted patent searching, proofreading, drafting (rule and LLM-based), and prosecution tools
⦿ AI's potential future role in the patent system for fixing issues with the PTAB, search quality, and the unsustainable bar

David and Ashley are also joined today by our always exceptional group of experts including:

⦿ Kristen Hansen, Patent Strategy Specialist at Aurora
⦿ Ty Davis, Patent Strategy Associate at Aurora
⦿ Josh Sloat, Chief Everything Else Officer at Aurora

** Mossoff Minute **

In this month's Mossoff Minute, Professor Adam Mossoff discusses the patentability of AI-generated works and inventions.

** Discussed Links **

⦿ USPTO Inventorship Guidance for AI-Assisted Inventions

** Follow Aurora Patents **

⦿ 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/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

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Our 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 experience of Black American inventors. Howard himself is an extraordinary inventor with 20 patents, several of which we discuss, cover innovations that save people's lives daily.

James' life work is now culminating in his mission of bringing a broad and detailed awareness to the important work of African American inventors, artists, and innovators who have inspired and forged ahead against tremendous odds and adversity. In creating the Black Inventors Hall of Fame, James hopes to have a place where kids of all ages and persuasions can go and be inspired to become the next generation of scientists, engineers, doctors, and inventors. Because like the great inventor Lonnie Johnson says, “What they see, they will be.” 

** Mossoff Minute **

In this month's Mossoff Minute, Professor Adam Mossoff discusses how there’s a pirate living in your Apple Watch and why the media’s coverage of Apple’s predatory infringement of Masimo's patents is missing the mark.

** Discussed Links **

⦿ Black Inventors Hall of Fame
⦿ BIGG documentary: The Gathering
⦿ Tech Boy Book
⦿ Why Patents Exist
⦿ Inventor Stories Vol. 1

** Follow Aurora Patents **

⦿ 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/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening! 

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Note: The contents of this podcast do not constitute legal advice.

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Claim 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. The words you choose now and the support you provide when drafting are your opportunity to help derisk the process of courts and juries later interpreting what you meant. And oftentimes, claim construction can be the KEY FACTOR in resolving disputes even before litigation, with the facts that come out of claim construction deciding the monetary value and payouts in settlements.

Kristen Hansen, Patent Strategy Specialist at Aurora, leads the discussion along with our all-star patent panel, exploring:

⦿ The evolution of claim terms
⦿ Claim construction basics and a historical look at what are called Markman hearings
⦿ Intrinsic evidence vs. extrinsic evidence
⦿ Claim construction in prosecution vs. litigation

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
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Dr. David Cohen, Principal at Cohen Sciences
⦿ Steve Stupp, Partner at Stupp Associates, LLC
⦿ Ty Davis, Patent Strategy Associate at Aurora
⦿ Arman Khosraviani, Patent Agent and Former US Patent Examiner

** Mossoff Minute **

This month's Mossoff Minute, Professor Adam Mossoff discusses recently proposed regulations that would misapply Bayh-Dole provisions to impose march-in rights on patent-protected innovations and create price controls via compulsory licensing. This amounts to government seizure of private property and will do tremendous harm – especially to the life sciences – if implemented.

** Going Deeper **

⦿ Patent Claim Basics and Strategies
⦿ Patent Anatomy Guide

** Follow Aurora Patents **

⦿ 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/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening! 

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From 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 the physical realm of board games and toys. Kristen Hansen, Patent Strategist and software guru here at Aurora, will be covering all things computer and video games in the second half. 

David and Kristen are joined by our always exceptional group of IP experts. Two exceptional gamers who would never be regarded as NPCs:

• Dr. Ashley Sloat, expert hotel builder and securer of rights on properties of all colors, but especially the green ones.
• Ty Davis, who’s always playing chess when it comes to claims.

** Mossoff Minute **

Professor Adam Mossoff recently attended the annual Inventor’s Hall of Fame induction ceremony and discusses two sets of inductees and their groundbreaking inventions of the mRNA platform and CRISPR gene editing technology.

** RISE Award Winners **

To learn more about this year's RISE award winners including Dustin Webb (Absolute Concept Designs), Rebel Cultures (Della Fetzer), Sand Baggage (Michael Wahlstrom),  and Chefshare  (Dr. Erin Eatough), please visit https://www.aurorapatents.com/rise-up-with-aurora.html.
 
** Follow Aurora Patents **

⦿ 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/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening! 

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We’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 most costly mistakes can be born. As David Cohen, a Patently Strategic regular, has said in the past, "Ninety percent of the mental exercise in drafting patents is in the strategy of looking around corners, anticipating the future, and trying to capture as many would-be infringers as possible.” How your claims are crafted is literally the difference between a patent being an intellectual asset and a worthless stack of paper.

In this month’s episode, Ty Davis, Patent Strategy Associate here at Aurora, leads a discussion, along with our all star patent panel, delving deeply into:

⦿ Claim fundamentals
⦿ Claim drafting strategies
⦿ How to think about claims in the context of infringement
⦿ And in the game of patenting, how to move like a queen, so you’re not treated like a pawn.

Ty is joined 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
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Marie Smyth, Patent Agent, formerly with Greenberg Traurig and Meta
⦿ Porter Thames, J.D. and Patent Agent at SMU Science and Technology Law Review

** Mossoff Minute **

This month's Mossoff Minute, featuring Professor Adam Mossoff, looks at the poorly named Advancing America's Interests Act and its potential impact on the ITC being able to block import of products that infringe on American patents.

** Resources **

⦿ Patent Anatomy Episode: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Patent Anatomy Guide: https://www.aurorapatents.com/blog/patent-anatomy-whats-in-a-patent 

** Follow Aurora Patents **

⦿ 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/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening! 

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Note: The contents of this podcast do not constitute legal advice.