Tech transfer has long been a critical but often overlooked part of the intellectual property system. For decades, the Bayh-Dole Act has guided how federally funded research moves from university labs into the marketplace. The system has generated hundreds of thousands of inventions and startups — and, as Laura Peter notes, led to nearly $2 trillion in economic growth through tech transfer. While widely regarded as a success, new march-in rights and “patent revenue sharing” proposals from policymakers seek to change that.In this episode of the Clause 8 Podcast, Eli spoke with Laura Peter, former Deputy Director of the USPTO in the first Trump administration and current Executive Director of Research Commercialization and Partnerships at UNC Charlotte. With experience in Silicon Valley, government, and academia, Laura brings a unique perspective to the challenges and opportunities facing tech transfer today.They cover:* How Laura first met Andrei Iancu — and how that led to her appointment as Deputy Director when he was chosen as the Director of the USPTO.* Lessons learned working in the first Trump administration about what to expect on the IP policy front this time around.* The distinct role patents play for startups versus large companies.* The lasting impact of the Bayh-Dole Act and how it reshaped tech transfer.* How funding cuts, private investment pressures, and PTAB swings are affecting university research.* Laura’s observation that proposals from the last administration to seize IP rights to lower drug prices haven’t been rescinded — and what that could mean for future policy.Why it mattersThe Bayh-Dole framework has been a cornerstone of U.S. innovation for more than forty years. Changes to how federally funded research is commercialized — whether through funding cuts, new government claims on patents, or expanded march-in rights — could redefine the balance between universities, startups, and industry. Laura’s perspective highlights not only the risks and opportunities, but also how unresolved policy proposals on government seizure of IP could reshape future debates.🎧 Listen to the full episode on YouTube or wherever you get your podcasts.📌 Sponsored by Tradespace – where ideas take flight.🔔 Subscribe to the Clause 8 Podcast for more conversations on IP and innovation.👉 Should the government play a bigger role in how university research is commercialized? Share your thoughts in the comments. This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
In To Invent Is Divine: Creativity and Ownership, Jim makes the case that creativity and ownership are inseparable—and that weakening intellectual property rights threatens the flourishing that invention enables. He draws connections between faith, history, and policy to explore why protecting intellectual property is about more than law or economics.Highlights from our conversation:* From Genesis to Jefferson: How creation implies ownership, and why even some Founders wrestled with protecting that principle in law.* Cycles of Patent Strength and Weakness: Why America’s “golden age” of inventors gave way to Progressive Era restraints—and how history may be repeating itself.* Policy at the Crossroads: Jim breaks down three bipartisan bills—PARA, PREVAIL, and RESTORE—and what it will take to get them passed.* Leadership at the USPTO: Why Acting Director Coke Morgan Stewart has already made an impact, and Jim perspective on the incoming Director John Squires and the path that he should follow.* Bipartisanship Matters: From his work with Eagle Forum, Jim explains why protecting patents requires coalition-building across party lines.Why it mattersCreativity without ownership can lead to secrecy, stagnation, and scarcity. When the two are combined, society benefits from innovation and progress. Jim’s perspective offers both philosophical and practical insight into the patent debates shaping America’s innovation future.🎧 Listen to the full episode on YouTube or wherever you get your podcasts.📘 Learn more about James’s book “To Invent Is Divine, Creativity and Ownership” here.👉 Do you think America needs stronger patent rights to fuel the next wave of innovation? Share your thoughts in the comments.📢 Giveaway: Everyone who subscribes to the Clause 8 YouTube channel and comments on this episode’s video with the hashtag #Clause8Podcast will be entered into a drawing to win a copy of James Edwards’s book To Invent Is Divine: Creativity and Ownership This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
From Coke Morgan Stewart’s decisive actions at the USPTO, to Commerce Secretary Howard Lutnick’s unexpected “patent tax” trial balloon, to the ongoing Federal Circuit drama — it felt impossible to figure out where to start telling the story. The only way to make sense of it all was to bring in three of our favorite journalists who cover these issues every day:* Eileen McDermott, Editor-in-Chief of IPWatchdog* Dani Kass, Senior Reporter at Law360* Michael Shapiro, Senior Reporter at BloombergTogether, we unpacked the biggest developments, why they matter, and how they’re being covered — with behind-the-scenes stories and candid insights about what it’s like to report on patents and IP.What We CoveredUSPTO’s New Direction* Coke Morgan Stewart’s rapid moves as acting director — especially at the PTAB* How she’s balancing speed, decisiveness, and practical limitsPatent Tax Story* The Wall Street Journal report on a possible tax on patent value* Lutnick’s role and Stewart’s public comments walking a fine lineChoosing a USPTO Director & John Squires* Breaking news about John Squires’ nomination and confirmation process* Early signals of what he’ll prioritize as directorFederal Circuit & Judge Newman* How practitioner tips shape coverage of the court* Judge Pauline Newman’s saga — and what it’s like getting to know her personallyOn the Hill* Tillis, Coons, and the shifting dynamics in Congress* Prospects for PERA (101), PREVAIL (PTAB), and RESTORE (injunctions)Copyright & AI* The firing of Shira Perlmutter as head of the Copyright Office* Pushback against the office’s AI guidanceBehind the Notebook* How these reporters choose stories and what they wish got more attention* Why they love covering the IP community, despite all the complexities* Impact of judges, public officials, and Bloomberg terminal users following their coverageThe discussion reveals how much these journalists shape — and are shaped by — the IP world itself. They’re not just reporting on it; they’re in constant dialogue with practitioners, policymakers, and innovators who live with these changes every day. Judges read their work, practitioners feed them stories, and policymakers react to their reporting.Chapters00:00 – Welcome & Guest Intros01:23 – What’s your vantage point in the IP world?17:53 – How do you decide what’s worth covering in IP news?22:49 – What’s the mood in the patent community right now?32:33 – The proposed ‘patent tax’: threat or opportunity?38:02 – The politics behind selecting a USPTO Director54:21 – Final thoughts and advice for the IP communitySubscribe & Support on YouTubeClause 8’s new season is recorded from our brand-new studio — and, for the first time, every episode will be available in video. If you’d like to support the show and catch all the new video content, please subscribe for free on YouTube so we can reach even more people interested in the IP story. This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
PTO 'whistleblower' Julie Burke and patent prosecution guru Clint Mehall join Eli on the season finale of Clause 8 to break down what’s happening at the USPTO—and what’s still left to be done.On this episode, they discuss: *Insights from the Reddit r/patentexaminer thread*Previous and current plans to reduce the record patent application backlog*Should the USPTO withdraw patent eligibility example 47 for AI? *Previous administration’s decision to end AFCP program and ideas for variation of AFCP program to help reduce the backlog*Misguided priorities and personnel decisions during last administration *Improving morale and performance of examiners *Adjusting credit system & improving culture to help examiners identify allowable subject matter *Choice of Valencia Wallace Smith as Acting Commissioner for Patents *USPTO’s decision to deprioritize examination of continuation patent applications *USPTO rescinding memorandum for discretionary denials at PTAB and Director taking over handling of the requests for discretionary denials *Aligning post-grant proceedings at PTAB with mission of USPTO*Suggestions about switching to a registration system for patents that does not require examination And, much more! This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
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. This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
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 This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
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 StewartGetting first involved with POPA after it helped her during her pregnancyNegotiating the first collective bargaining agreement (CBA) with the USPTO in 40 yearsWhy she’s not getting a whole lot of sleep recentlyExaminers waiting for finality regarding decisions about being able to continue to work remotelyRecord backlog reached at the USPTO during last administration & work to bring it downImpact of AI & what examination might look like in 30 yearsDisclaimer This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
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. This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
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. This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
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. This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
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. This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
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 is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
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 This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
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 TopicsStart 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 AIExpansion of AI working group to coordinate AI related activities across the USPTO, including exploring leveraging AI technology for patent examinationJerry 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 groupHow AI implementation at the USPTO relies on cross-disciplinary teams drawing expertise from law, technology, and policyWorking groups’ efforts to engage with outside stakeholders through the AI/ET Partnership Series to create informed policies around AI and patent eligibilityUSPTO’s guidance on (1) use of AI-based tools, (2) AI-assisted inventions, and (3) AI subject matter eligibility and responses to related push-backUSPTO’s current use of AI technology & future plans to further leverage AI technology to empower examinersRole of AI working group as AI becomes widely used within USPTOAdvice for other organizations exploring implementation of AI This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
In the ever-evolving world of retail, where technology and innovation are reshaping the industry, managing intellectual property has never been more important. Sri Atluri, Walmart’s Chief IP Counsel, knows this all too well.In this episode of Clause 8 with host Eli Mazour, Sri emphasizes the critical balance between protecting innovations and fostering strategic growth within Walmart’s technological initiatives. She argues for the necessity of continual IP enforcement, detailing how both protection and litigation play essential roles in maintaining Walmart’s competitive advantage. Sri also discusses the evolving landscape of e-commerce and the challenges posed by Section 101 and patent eligibility.Disclaimer This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
In this special episode of Clause 8, host Eli Mazour speaks with Ann Cathcart Chaplin at the Qualcomm Museum, which is right at the heart of Qualcomm’s headquarters in San Diego. Ann shares her journey from being an IP litigator to in-house counsel and from GM to Qualcomm.As General Counsel of Qualcomm, Ann oversees all legal matters for the world’s leading innovator of connectivity solutions. Before Qualcomm, she served in a variety of deputy general counsel roles at General Motors (GM). Ann spent most of her career prior to that focused on IP litigation, including as litigation practice group leader at one of the world’s biggest IP firms.Her leadership experience at a major auto company before joining Qualcomm provides her with a unique vantage point about the role of standard essential patents (SEPs), the relationship between cellular innovators like Qualcomm and auto companies, and the surrounding debates.From her beginnings in Minnesota, initial aspiration to become a public defender as a Harvard Law student, and eventual transition into IP litigation, Ann shares her unlikely journey. Now at Qualcomm, she touches on the challenges and opportunities of navigating IP issues in one of America's most significant and innovative tech companies, which relies heavily on a functioning IP system that promotes innovation.Ann Chaplin's transition from IP litigation at a law firm to in-house counsel at GM is a significant highlight of this episode. She discusses adapting her IP litigation skills to address GM's pressing legal concerns, including for diverse fields such as product liability, class actions, and corporate governance,. Ann's role at Qualcomm involves overseeing IP and licensing, emphasizing its critical role in driving innovation. Her key concerns include attacks on the patent system and the need for policies that support sustainable R&D investments.Check out the full VIDEO Interview on Voice of IPDisclaimer This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
Laurie Fitzgerald joins Eli to tell the story of how she led Avanci to an 8-year overnight success. Avanci’s pioneering efforts to provide an efficient, simpler option for the automotive industry to license cellular SEPs are now widely heralded as one of the greatest stories of successful innovation in the patent world. Laurie, who has been with Avanci since 2018, shares her journey and the strategic decisions behind the one-stop shop licensing platform that now boasts participation from 70 licensors and 100 automotive brands.The discussion highlights how Avanci navigated the complexities of linking cellular innovators with automotive manufacturers, detailing how they established a uniform licensing fee and why this model works efficiently for both licensors and licensees. They discuss the role of independent patent evaluations, the challenges of negotiating acceptable agreements among varied stakeholders, the process for determining royalty allocations, and what others can learn from Avanci about how the private sector can provide efficient solutions for SEP licensing.Disclaimer This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
What is the value of protecting intellectual property (IP)?That’s the fundamental question that most Chief IP Counsel need time to answer to help their companies succeed. However, they’re often bogged down by the daily demands of leading teams that are doing what’s necessary to make sure that they’re obtaining the necessary IP protection. When they do have a chance to pose and answer that question to business executives, they quickly realize that those business executives are concerned with more pressing issues. When they succeed and those business executives start getting excited about the potential value of protecting IP, in-house counsel has the added responsibility of making sure they can follow-through.In this episode of Clause 8, Eli sits down with the founder & CEO of Tradespace, Alec Sorensen, to discuss potential strategies for in-house counsel facing these challenges. Alec talks about how he first discovered these challenges of in-house IP counsel while being asked to wade through messy IP portfolios of acquired companies as a management consultant. He explains how he was able to facilitate over $250 million in commercialization deals in that role and how that led him to found Tradespace to help in-house counsel set up their companies for similar success.Eli and Alec explore the complexities of IP development and the potential to unlock hidden value in patent portfolios, how and when to communicate with the C-suite about IP, how IP teams can get other parts of the company become champions for its role, the role that commercialization plays for Tradespace tools, and much more!Selected Topics* How lean, efficient IP teams are able to contribute to business success* IP team demands leading to lack of business relationships* Handling analysis paralysis in IP with analytics* Strategic IP questions for a new CEO* Successful IP strategies for universities* Role of AI in empowering IP decision-making* Risk of AI diminishing human judgement* Advice for tech entrepreneurs in the IP space* Customers using Tradespace to create better processesDisclaimer This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
We’re looking forward to sharing new episodes from this season starting next Tuesday, including special video episodes on www.VoiceOfIP.com and a series of interviews with the most significant corporate IP leaders in America. In the meantime, we wanted to share episodes released this summer:Former USPTO Director Andrei Iancu and HTIA’s David Jones found a surprising amount of agreement regarding Section 101 on the first ever Clause 8 debateIancu & Jones Debate Section 101 and Find Common GroundFederal Circuit Judge Timothy Dyk shed light on what’s going on at the court by discussing his memoir, Timothy B. Dyk: The Education of a Federal JudgeJudge Dyk Defends Today's Federal CircuitRNA Law’s cofounders - Rob Rodriguez and Tatiana Alves - discussed everything you need to know about Brazil’s booming patent systemBrazil Becoming the Mecca for Patent Enforcement & Chief IP Counsel Seeking Valuable Patents Erich Spangenberg shared the secrets to his success - "very few people want to start out wearing the black hat. I just embraced it" . . . and his plans for IPweErich Spangenberg on How to Succeed in Patent MonetizationChief IP Counsel at Dana-Farber Cancer Institute and former General Patent Counsel at Eli Lilly - revealed why Eli Lilly slashed its patent filings and talked about how the administration’s march-in proposal is already scaring away pharma companies from pursuing promising treatmentsMoneyball for Pharma Patents with Chief IP Counsel Steve CaltriderFlorian Mueller - currently of IP Fray and formerly of FOSS Patents blog - kicked of this season by sharing his remarkable journey from leading a major fight against pro-software patent legislation in Europe to becoming one of the most influential voices in the IP worldIP Fray's Legendary Publisher on What Will Happen with EU's SEP Regulation & AI’s Impact on Patent Law*Disclaimer: This podcast is provided for general informational purposes only and is intended as a general overview. The podcast does not constitute legal advice nor solicitation to provide legal services. It is not meant to convey a legal position, nor is it intended to convey specific legal advice. The opinions expressed are solely my own and those of any guests and do not express the views or opinions of any organization with which I or the guests are affiliated. In some jurisdictions, the contents of this podcasts may be considered Attorney Advertising. This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
Federal Circuit Judge Timothy Dyk discusses his memoir and provides priceless insights into how the Federal Circuit is operating today - 42 years after it was created in 1982 and 24 years after Dyk was confirmed to serve on it in 2000.This episode explores Dyk's perspectives on judges serving together at the Federal Circuit. His reflections and anecdotes offer a unique glimpse into the workings of the Federal Circuit, the decision-making process of a seasoned appellate judge, and various debates surrounding the Federal Circuit and judges retiring.Dyk was nominated to the Federal Circuit in 1998 by President Bill Clinton after clerking for Earl Warren at the Supreme Court and a distinguished career as an appellate attorney at the law firms of Wilmer Cutler and Jones Day. Selected Topics:* First introduction to patent law: office linoleum floors & yacht named Pat Pending* Role of chief judges setting court dynamics* Collegiality, dissents, and importance of individual personalities & relationships among judges* Judge Dyk's process for considering cases before oral arguments* Dyk’s defense of Rule 36 decisions and insights into other Federal Circuit practices* Panel dependency & skepticism of empirical scholarship related to judicial decisions* Former clerks arguing cases before judges they clerked for* Providing additional jurisdiction to Federal Circuit* Cameras in federal courtrooms & privacy in intra-court deliberations* Judicial retirement decisions and importance of humility* Advice for effective oral and written advocacy before the Federal Circuit, including for amicus briefsNotable, Quotable:Biggest challenge"I think the biggest challenge for any Federal Circuit Judge in patent cases in particular is is dealing with the technology . . . getting the help that you need to understand the technology. It’s really hard. And we need help from the bar, we need help from our clerks, and we need to be willing to spend a lot of time to wade through it."Role of collegiality"Collegiality makes for better decision making, first of all. And second of all, it makes it a nicer place to be. You get along with your colleagues. The job is a lot better."Qualities of best written briefs"A brief that is candid about what's going on, that recognizes that there's another side to it, that's nothing shrill, that's statesman like, that's objective. Those are the qualities that we value most."On Judge Pauline Newman“I always enjoyed sitting with Judge Newman. I enjoyed having Judge Newman as a colleague and occasionally we did panels together. I remember we went to NYU and presented ourselves as being close colleagues even though we disagreed a lot of the time. Judge Newman was a terrific colleague, and I enjoyed being her friend.”Disclaimer This is a public episode. If you would like to discuss this with other subscribers or get access to bonus episodes, visit www.voiceofip.com
Rocky Berndsen
Great podcast!