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​​Patently Strategic - Patent Strategy for Startups
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​​Patently Strategic - Patent Strategy for Startups

Author: Aurora Patent Consulting | Ashley Sloat, Ph.D.

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A 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.
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In 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, failure to include the right people can be a death sentence for a patent and grounds for invalidity.In this episode, Daniel Wright, Partnership Manager and Patent Strategist here​​ at Aurora, will lead a deep dive into the origins of inventorship, break down who is and isn’t eligible for inclusion as an inventor, and explain how improper inventorship could result in revoked patent rights.Daniel is joined today by: * David Jackrel, President of Jackrel Consulting  * David Cohen, Principal at Cohen Sciences. ***** Resources *** Show notes: https://www.aurorapatents.com/blog/new-podcast-inventorship** 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.
Listen 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 common and that is their shared belief that the AIA and the PTAB – with its eye-popping 84% invalidation rate – have crippled innovators and created a Decade of Stolen Dreams, ruining the lives of countless inventors and shutting down numerous start-ups, in favor of Big Tech and multinational corporations.In this episode, we break down the AIA and PTAB through a wide array of personal perspectives from inventors, patent practitioners, and even a former USPTO patent examiner. We explore its origins, core problems, and proposed solutions. We also provide some very practical tips that inventors should consider now to help future-proof their patents, should they ever find themselves on the receiving end of an IPR.Inventors are not only the real engine of our economy, but they’re also the reason we do what we do here at Aurora. This is a complex issue, with high stakes, involving the people who matter most to our business and what the world will look like for our kids, so we can’t think of a better use of a podcast episode than to lend a voice and hopefully shine a light on the key issues and some potential solutions. I am joined today by an exceptional group of industry experts, founders, and inventors including:* Ashley Sloat: President & Director of Patent Strategy at Aurora Consulting* Dan Brown: Professor at Northwestern, owner of 40 utility patents, elected to the National Academy of Inventors, and serves as the inventor rep on the Patent Public Advisory Committee.* Bob Schmidt: Founder, Chairman and CEO of 5 companies including Great Lakes NeuroTechnologies and Cleveland Medical Devices, Co-Chair of the Small Business Technology Council, and has 40 patents to his name* Louis Carbonneau: Founder & CEO of Tangible IP, one of the largest patent brokers in the world* Kip Azzoni Doyle: Inventor of the CardShark WalletSkin and the author of the upcoming book, “Blood in the Water, America’s Assault on Innovation”* Tariq Najee-ullah: 10 year patent examiner, former NASA engineer, and current Principal at Patent Insider***Learn more: https://www.aurorapatents.com/blog/new-podcast-american-inventor-horror-story** 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.Attributions:Music: They Come At
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.
You 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. 172 countries with patent systems, over 11 million active patents across the globe, millions more published, but not granted, topped off with endless volumes of non-patent literature. A multitude of keywords, synonyms, and domain specific languages. Countless databases. A cacophony of clues, mixed with an abundance of superficially convincing evidence that could ultimately prove irrelevant. An overly litigious villain competitor lurking around the corner. And the greater powers of observation and the superior mind of a detective to cut through it all and make plain the answers to our untrained eyes! Shelley Couturier, Patent Strategist, Search Specialist, and Chief Sleuth here at Aurora, leads a discussion along with our all star patent panel into the low cost, high return world of patent searching. The domain is complex, but the efforts have one of the highest possible ROIs of anything you can do, especially in the early stages of your patent journey. With some practical guidance and a little help, ​​patent searching will save you significant time, money, and effort in the long run, all while yielding a much stronger patent overall. I assure you, listening in will be a gift to future self. Shelley is joined today by an exceptional group of IP experts including:* Ashley Sloat – President & Director of Patent Strategy at Aurora Consulting* David Cohen – Principal at Cohen Sciences * Amy Fiene – Patent attorney at Vancott and adjunct professor at BYUOh – and back by popular demand, the group kicks off with another gripping ice breaker, which turns into an instant classic. ***** Resources *** Show notes: https://www.aurorapatents.com/blog/new-podcast-patent-searching* Slides: https://www.slideshare.net/JoshSloat1/patent-searching-sleuthing-your-way-to-stronger-patents** 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.Music: Signs To Nowhere by Shane Ivers - https://www.silvermansound.com
Getting 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 Strategy here at Aurora, leads a discussion along with our all star patent panel, exploring one of these options – the Patent Prosecution Highway (PPH) and how it can significantly speed up prosecution between international jurisdictions with similar policies. Ashley is joined today by an exceptional group of IP experts including:* Steve Stupp, Partner at Stupp Associates, LLC. * David Jackrel, President of Jackrel Consulting * Daniel Wright, Partnership Manager and Patent Strategist at Aurora Consulting* Dominic Filice, Patent Expert at Parola Analytics, Inc.As was the case with the last episode, our discussion panel really jumps right into the thick of the material and in retrospect we thought it might be helpful for the not yet IP experts out there to set the table a bit. I sat down again with Ashley for a brief conversation to help set the stage for what the patent prosecution highway is, how it fits into the patenting process, and when it might make sense for you. We discussed:* Real numbers on how long it takes to get a patent under normal circumstances without an expedited path. * Options for skipping in line and fast tracking your application when you need to move more quickly (U.S. and International options).* Benefits, risks, costs, and relative time implications for PPH, Track One Prioritized Examination, and Accelerated Examination.***** Resources *** Show Notes: https://www.aurorapatents.com/blog/new-podcast-patent-prosecution-highway* Slides: https://www.slideshare.net/JoshSloat1/patent-prosecution-highway-fast-tracking-your-application** 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.
Your 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 Final Practice is one of the three primary options for getting a rejected patent application on life support and breathing again. Among the three, it has the unique combination of being lesser known, but also requiring the least effort and expense, making it a wonderful target for a strategy discussion. The insider tips on best practices for working with examiners during this process are worth the listen, alone! David is joined today by an exceptional group of IP experts including:* Ashley Sloat, President and Director of Patent Strategy at Aurora Consulting* Daniel Wright, Partnership Manager and Patent Strategist at Aurora Consulting* Steve Stupp, Partner at Stupp Associates, LLC* Dominic Filice, Patent Expert at Parola Analytics, Inc.For this episode,  we break form a bit by front-loading a brief chat with Ashley to help set the stage with some extra up-front context that we hope can be helpful for our broader audience. We discuss the following:* What is a final rejection?* Is it common to get one or more rejections from patent offices during prosecution of an application?* How does AFCP compare with the other post-rejection practices of 1) appealing to the Patent Trial and Appeal Board (PTAB) and 2) submitting a Request for Continued Examination (RCE) ? When does AFCP make the most sense vs. the other two?* What is the likelihood of getting a post-rejection allowance using one of three options?***** Resources *** Show Notes: https://www.aurorapatents.com/blog/new-podcast-after-final-practice** 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.Attributions:heartmonitor-EKG.wav by FreqMan via freesound.org, under CC BY 3.0 license. 
​Listen 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 ubiquitous Java API.​At stake is a winner take or keep-all purse of $9 billion in damages and a Supreme Court ruling that will dictate the future of software interface copyright law. Ashley Sloat, President & Director of Patent Strategy here​​ at Aurora, serves as your guide, cutting through 11 years of case law, 3 trials, 2 appeals, and endless technology metaphors, all in an illuminating IP conversation that runs the gamut from patent infringement to copyright violation and ultimately settles on a matter of fair use doctrine. Ashley is joined today by an exceptional group of IP and tech domain experts including:* Steve Stupp, Partner at Stupp Associates, LLC* David Jackrel, President of Jackrel Consulting * David Cohen, Principal at Cohen Sciences * Katrin Kareht, Sr. Director of Intellectual Property at Perfect Day* Daniel Wright, Partnership Manager and Patent Strategist at Aurora Consulting* Shelley Couturier, Patent Strategist and Search Specialist at Aurora  Consulting* Dominic Filice, Patent Expert at Parola Analytics, Inc.* Josh Sloat, Executive Technology Advisor at Aurora  Consulting** Resources *** Slides: https://www.slideshare.net/JoshSloat1/google-v-oracle-the-future-of-software-and-fair-use* Show notes: https://www.aurorapatents.com/blog/new-podcast-google-v-oracle* Supreme Court Opinion: https://www.supremecourt.gov/opinions/20pdf/18-956_d18f.pdf***** 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.Attributions:Fight Arena 2 by SyntaxSeed via 
In 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 years combined patenting experience:David Jackrel, President of Jackrel Consulting David Cohen, Principal at Cohen Sciences Katrin Kareht, Sr. Director of Intellectual Property at Perfect DayDaniel Wright, Partnership Manager and Patent Strategist at Aurora ConsultingGo deeper:Show notesSlides
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