By: Josh Sloat
Illustration: Declan Wrede
Join us November 16th!
Dr. Ashley Sloat has been invited to deliver this year's Patsnap Frontier Conference Keynote. This incredible online conference connects innovators and industry leaders from across a diverse array of technology sectors to share key insights and dive deeply into current trends. With thousands of online attendees each year, this annual event has evolved into a thriving hub for conversations about the future of innovation. This year, expert speakers will be discussing topics ranging from optimizing the integration of artificial intelligence and overcoming technical obstacles, to strategically leveraging intellectual property to drive innovation and pave the way for the future. Our keynote will explore the ongoing and impending impacts of AI in the IP world and the possible futures it could create, looking at both dystopian and utopian outcomes for the patent system.
Will AI Terminate or Save the Patent System?
Our news feeds are overrun with stories of how AI is profoundly reshaping the world at a breakneck pace and achieving results that were only recently the mere dreams (or perhaps threats!) of science fiction. But how will this now inevitable rise of the machines reshape our IP legal industry and the very property rights systems that undergird science, technology, and the modern innovation economy? Beyond fears of a dystopian employment outlook for agents, attorneys, and searchers, could AI actually invalidate the entire patent system once it’s no longer able to deliver on its constitutionally expressed goals? Or could super intelligence actually be just the kind of cybernetic hero from the future that the breaking system needs to save so many patents (and an unsustainable bar) from an unfortunate judgment day?
Learn more and register
The conference takes place online on November 16, 2023. Our keynote will start around 9:20 am ET. Registration is free! Learn more and sign up below.
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By: Josh Sloat
In this month's podcast episode, 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:
Ty is joined by our always exceptional group of IP experts, including:
Mossoff Minute: Advancing America's Interests Act
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. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
Availability
Patently Strategic is available on all major podcasting directories, including Apple Podcasts, Spotify, and Google Podcasts. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
ResourcesRelated Episodes
Related Reading Transcripts We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities. Slides For the visual learners out there, we also like to make our presenter slides available for your reference.
By: Josh Sloat
Illustration: Declan Wrede
20Fathoms Know Your Worth: Intellectual Property
Join us for lunch at 20Fathoms on October 11th when we'll explore how to leverage patents as one of your startup's earliest and most important assets. When you're first starting out, you don’t have customers, you don’t have revenue, and you probably don’t have physical assets. What you do have are your intellectual assets. These fruits and labors of the mind are not just defensive tools for protection, but chips you can leverage on that glorious path to investment, physical assets, customers, and revenue. Constitutionally enshrined property rights like patents and copyrights allow you to define ownership boundaries around your inventions and creative works, much like the title for your home defines the boundaries of your physical property. And just like your physical property, your intellectual property can be used as leverage, transferred, sold, and leased. And at the earliest stages, these IP assets can get you access to the venture capital you need to scale or to build the bridge from intellectual to real capital and from the garage to the marketplace.
You'll learn about how to protect these key business assets while avoiding common mistakes in the context of an overall IP strategy in this lunch-and-learn presented by intellectual property expert, Dr. Ashley Sloat. We'll be covering intellectual property like trade secrets, trademarks, copyrights, and patents, as well as how open-source IP should be treated. We'll also touch on responsible engagement with employees and vendors, especially around contracting, and typical mistakes made with IP. This event is hosted by 20Fathoms in partnership with Aurora Patents. This is an in-person event, and there is no charge to attend. Lunch will be provided. Date and Time: Wednesday, October 11 · 11:30am - 1pm EDT Location: 20Fathoms | 10850 East Traverse Highway #Ste, 4400 Traverse City, MI 49684
By: Josh Sloat
It's impossible to overstate the importance of protecting our most important natural resource. And that's why we couldn't be more excited to announce that we're joining forces with AquaAction to provide patenting assistance for their vital mission to restore freshwater health in North America! Aqua's programs, like its Hacking Challenge, present incredible opportunities to help accelerate technologies that will both improve and protect our precious water ecosystems, as well as boost the local innovation economies they touch. Aurora will be providing patent coaching to all participants, as well as service-based awards for the top three finalists in the annual, bi-national AquaHacking Great Lakes Challenge. We are thrilled about this partnership, eager to see where our collective energies take this, and confident it will mean great things for the region and the sustainability of its most important natural resource. AquaAction
AquaAction is a Canadian and US registered charity established by the Fondation de Gaspé Beaubien in 2015, created to disrupt the status quo with innovative ideas and engage youth in the fight against the water-related climate crisis. AquaAction has developed three programs focused on water innovation and technology: the AquaHacking Challenge, AquaEntrepreneur and the AquaAction Alumni Community. Since its establishment, 28 innovative start-ups have been created across Canada.
AquaHacking Challenge for the Great Lakes
The AquaHacking Challenge is a tech innovation program focused on developing solutions to pressing freshwater issues within the Great Lakes watershed region. The program is open to American and Canadian post-secondary students and young professionals looking for a hands-on way to apply their talent and fight the freshwater crisis. The solutions developed today will help save our freshwater systems for generations to come.
The 2023 Challenge started in September and will run for 9 months. Participants will receive mentoring and expert coaching, have access to on demand content in innovation, entrepreneurship, leadership and be eligible for micro-credits and digital badging. The 2023 AquaHacking Challenge is the first of three that will run sequentially from 2023 to 2026. Michigan's Blue Economy
We're personally and professionally very excited about the potential for initiatives like Aqua's Hacking Challenge, the Fresh Coast Maritime Challenge, and related water-focused technology efforts around things like electric boating. When you combine the access to our natural assets, a strong desire to protect them, the collective background expertise of so many who've grown up around freshwater, and the startup support given by groups like 20Fathoms and institutions like NMC, there's no reason why Northern Michigan shouldn't establish itself as a leading innovator in the blue economy.
The AquaHacking Great Lakes Challenge is co-hosted by Northwestern Michigan College (NMC) and AquaAction. We are very proud to have been invited by NMC to collaborate on this bi-national program for the Great Lakes. This immense watershed region is home to 27% of the population of Canada and the US, accounts for 28% of our combined economic activity, and holds 21% of the world’s freshwater. The business case for solutions is clear and we welcome a new generation of innovators to lead the way towards a clean and healthy freshwater future for us all and future generations – thanks to their innovative ideas.
By: Josh Sloat
Inventors are the lifeblood of innovation and the backbone of our economy! Join us in October as we celebrate this country's greatest asset with some of its strongest defenders! US Inventor is hosting its first annual conference to celebrate its 10-year anniversary. This conference offers an incredibly unique chance to connect with industry experts, gain valuable insights, and expand your network. The in-person event will take place Thursday, October 19, 2023, through Saturday, October 21st, and will feature industry experts and speakers including:
You'll also have the opportunity to meet industry champions like Paul Morinville, Randy Landreneau, and Josh Malone of US Inventor.
Podcast Road Show
We'll also be taking our Patently Strategic Podcast on the road to conduct interviews from the Madison building at USPTO Headquarters! Regular listeners might recall that one of our first episodes, American Inventor Horror Story, was recorded at US Inventor's Decade of Stolen Dreams Rally in Detroit, marking (commiserating) the 10-year anniversary of the passage of the devastating America Invents Act. We've also interviewed several of the conference's distinguished guests including, Professor Adam Mossoff, Randy Landreneau, and Judge Paul Michel, for our Patent Wars episode, which focuses on the largest problems plaguing patenting and some of the most promising solutions.
Proud Sponsors
We love inventors and inventors love coffee, so we'll be sponsoring the coffee bar at the event. Be sure to drop by, say hello, and have a cup on us!
The Details
You can view the full agenda here.
Dates: Thursday, October 19, 2023, through Saturday October 21st Locations: Capitol Hill, DC | USPTO in Alexandria, VA Cost: $150
By: Josh Sloat
Join us in Lansing!
Next week, we'll be attending, sponsoring, and speaking at MichBio's Life Sciences Showcase, held in-person in Lansing, MI. We'll have a table set up, so be sure to stop by and say hello.
The Showcase brings together industry professionals, thought leaders, and change-makers from all Life Sciences sectors with patients and patient advocates, higher education and research professionals, services providers, students, and economic development and non-profit partners to promote industry connectivity, share best practices and emerging trends insights, explore the changing healthcare landscape, and drive industry growth. This event will include four of MichBio's signature events – Drug Discovery Symposium, Medical Device Summit, Digital Health Forum, and Patient Advocacy Forum - with dedicated tracks for each event, as well as an exhibit floor featuring suppliers and vendors serving the life sciences, research and technology presentations, and networking opportunities. When: Monday, September 18th from 7:30a-7:00p ET. Location: Lansing Center in Downtown Lansing // 333 E. Michigan Ave, Lansing, MI 48933 Stronger Life Science Patents Talk
We'll be doing a talk in the afternoon on crafting stronger life science patents. Life science patents have grown increasingly vulnerable to rejection and invalidation due to subject matter eligibility and enablement interpretations. The implications are staggering with over 80% of abandoned life science applications having a final rejection stating that the innovation did not include patentable subject matter. In this talk, we’ll explore how to avoid these rejections, understand the implications for new drugs, and provide practical tips for creating robust life science patents. We'll also briefly touch on expanding your exclusivity window in light of FDA delays and what strings to be aware of when pursuing government funding from sources like SBIR and STTR grants.
For a complete list of topics and speakers, see the full agenda. Protect Before You Pitch / Patent Expert AMA
We'll also be doing a 15 minute talk about the dangers of public disclosure and the critical steps to take to protect your idea before pitching or approaching investors. At this time, Ashley will also be available for a patent expert AMA, so come armed with your intellectual property questions!
Proud Sponsors
Aurora is a proud supporter of MichBio, a member of the MichBio IP committee, and a sponsor of this event. Life science innovations are essential for human health and must be a vibrant component of Michigan's economy. For decades, MichBio has been important in driving bio-industry growth in Michigan and connecting the people, companies, and ideas necessary to create the next generation of bio-innovation. They are great partners, and we're happy to support their important mission in any way we can!
By: Josh Sloat
SBIR, STTR, and Your IP
In 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.
Largest Source of Early-stage Capital for Life Science Startups
The use of government grants for research and development is one of the most common areas of concern we get questions about from our clients. And for good reason! Non-diluting capital can be an essential source of funding when trying to get your innovation off the ground. Investor money comes with loss of equity and/or control. Family and friends’ money may come with the risk of strained relationships. So, essentially free money by way of government grants can seem like an obvious choice, right? And it is for many. The Small Business Technology Transfer (or STTR) and Small Business Innovation Research (or SBIR) grants are the largest source of early-stage capital for life science startups in the United States, combining to provide over $2B annually in support from federal agencies like the NIH.
With Strings Attached...
But like money from investors, friends, and family, these grants do still come with some serious strings attached and potential ramifications you need to be aware of. For instance, use of these funds grants the government a royalty-free license to practice your invention worldwide. To the surprise of many, and as we’ll discuss, this can include royalty-free use of patents obtained before even applying for the grant. This is potentially a big problem, especially if the federal government could be one of your primary customers. Other provisions can result in lost ownership rights if you fail to commercialize or neglect to file the correct paperwork on time. Most of these things are manageable, but when considering government grants, you need to be aware of these gotchas so you’re going in with clear eyes and can manage the hooks in a way that doesn’t jeopardize your patent rights.
That awareness is our focus today. Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads the discussion along with our all-star patent panel, exploring:
Mossoff Minute: PREVAIL Act
In this month's Mossoff Minute, we discuss the introduction of a very important piece of patent reform legislation called the Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL). We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
Availability
Patently Strategic is available on all major podcasting directories, including Apple Podcasts, Spotify, and Google Podcasts. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
Resources
Related Episodes
Transcripts We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities. Slides For the visual learners out there, we also like to make our presenter slides available for your reference.
By: Josh Sloat
Aurora is teaming up with Northwestern Michigan College (NMC) in Traverse City to help provide aspiring entrepreneurs with an Innovation Mindset Credential. This is a brand new curriculum, highly-tailored toward startup bootstrapping and turning ideas into real-world solutions. Getting off the corporate hamster wheel or finding the motivation to kick start your side hustle is just the beginning. The path to becoming a successful startup is one that comes with MANY hats. You know your domain like the back of your hand, but you'll have a massive oh-no second once you start running into all of the other things necessary to bring your idea to the marketplace. You'll be a technologist, a designer, a marketer, an accountant, an HR wizard, a salesperson, an attorney, and a professional people person. You don't have time to become all of these things and you don't have the money to pay to have them all done for you. This course is everything you need to know, presented in digestible bits, meant to get you off to the races on building the next great thing, while doing so from a foundation built to last. Program Summary
The Innovation Mindset Credential is a skills-development program designed to give participants the knowledge needed to think like an entrepreneur, act like an innovator, and turn ideas into tangible innovations.
Program Overview and Outcome
26 hours of interactive training focused on developing the skills to turn an idea into a viable business solution. The program focuses on the following areas:
Legal Issues
Dr. Ashley Sloat will be the instructor for the Legal Issues Course. She'll be covering many of the i's and t's you need to consider when getting started. From her position of domain expertise, she'll help you understand what you need to make sure you're protecting your intellectual assets like patents, copyrights, and trademarks. From her background as a business owner educated in the school of hard knocks, she'll share lessons learned about business formation, essential contracts, entity-based tax considerations, and what to think about before bringing on employees or contractors to help. Program Outcomes A Business Canvas and a disclosure-proofed Pitch Deck supporting your idea. Schedule and Cost
Courses start soon!
Enrollment is now open for classes starting in September. Hope to see you soon! And if you have any questions you'd like to make sure we address in our course, drop us a line!
By: Josh Sloat
Generated using OpenAI’s DALL·E 2.
Jack Daniels, Mickey Mouse, and Andy Warhol Walk Into a Bar...
In 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 creating the largest possible moat with your IP, you also need to be considering what our guest, Mallory King, refers to as “brand protection” – or the copyrights, trademarks, and contracts necessary to protect your brand’s rights and assets. Copyrights and trademarks in particular have seen a lot of limelight this year involving some of the biggest brands and pop culture icons. At the same time, major IP rights questions are erupting around the use of generative AI systems like ChatGPT. In addition to covering the basics necessary to help get you booted up, we’re going to use these high profile topics and Supreme Court cases as a vehicle to get a deeper understanding of copyrights and trademarks and some of the sharpest corners you should be aware of when managing your own brand protection. Episode Overview
Come for the SCOTUS potty humor; stay for the brand protection learnings. The past year has been a target-rich environment for comedic relief in the land of IP law. We cover a lot of ground in this episode and went to great lengths to ensure research accuracy, including attending the one-day theatrical release of Winnie-the-Pooh: Blood and Honey, back in February. After Mallory briefly coaches us up on the fundamentals of brand protection, we tackle the following:
Our Guest: Mallory King
Mossoff Minute: Patent Eligibility Restoration Act
In this month's Mossoff Minute, we discuss the introduction of the 2023 Patent Eligibility Restoration Act, its biggest criticisms, and what it solves. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
Given the importance of PERA and the ongoing debate, we’re releasing the full-length interview on YouTube. The full-length version includes:
Availability
Patently Strategic is available on all major podcasting directories, including Apple Podcasts, Spotify, and Google Podcasts. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
Resources
Related Episodes
Transcripts We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.
By: Kristen Hansen
Illustration: Declan Wrede
When does a U.S. patent expire?
In general, a utility patent expires 20 years from the filing date of the patent application. This 20-year patent term begins at the filing date of the first U.S. non-provisional patent application, which would include the filing date of an international PCT application if that was the first non-provisional filing.
How long do provisional patents last?
Provisional patents, which function as a placeholder for a utility patent application, expire 12 months from the filing date of the provisional patent application. These applications are not examined; they truly sit as a placeholder awaiting to be converted to a non-provisional patent application, but function to the applicant’s advantage in securing the earliest possible filing date in the U.S.-based first-to-file system.
Possible exception. When a non-provisional application is filed more than 12 months after the filing date of the provisional application, but within 14 months after the filing date of the provisional application, an applicant may restore the benefit of the provisional application by filing a petition that includes a fee and a statement that the delay in filing the non-provisional application was unintentional. Impact on 20-year term. Domestic priority benefit to one or more U.S. provisional applications is not considered in the calculation of the 20-year term of a patent. In other words, the one-year window given by the provisional is not deducted from the possible 20-year term (21 years from the filing date of the provisional application, as opposed to 19). How long do utility patents last?
Utility patents, which protect the way an article is used and works (e.g., systems, methods, computer-readable mediums, etc.), typically expire 20 years from the date of patent application filing. However, If the application claims priority to any earlier filed applications (e.g., a related provisional application(s) or related U.S. non-provisional application(s)), the application will expire 20 years from the filing date of the earliest of such applications.
How long do plant patents last?
Plant patents, which protect newly discovered asexually reproduced plants, expire 20 years from the date of filing of the patent application. However, If the application claims priority to any earlier filed U.S. provisional or U.S. non-provisional applications, the application will expire 20 years from the filing date of the earliest of such applications.
How long do design patents last?
Design patents, which protect the way an article looks (i.e., ornamental appearance), filed before May 13, 2015 expire 14 years from the date of the patent grant. Design patents filed on or after May 13, 2015 have an expiration of 15 years from the date of the patent grant. Note that design patents are aged from a patent grant date, while plant and utility patents age from a patent application filing date.
How long do continuing patent applications last?
Continuing patent applications, which include continuations, divisional, or continuation-in-part applications (e.g., child applications) that claim priority to an earlier patent (e.g., parent, grandparent application) expire 20 years from the filing date of the earliest U.S. patent application in which benefit is claimed.
How long do international patents last?
International patent applications that are granted as national stage entry filings of the international application expire 20 years from the filing date of the international application. A continuation or continuation-in-part application claiming benefit to the international application and designating the U.S. expires 20 years from the filing date of the parent international application.
Foreign priority is not considered in determining patent term/expiration. A U.S. non-provisional application that claims priority to a foreign patent application or patent expires 20 years from the U.S. non-provisional application filing date. Can you extend a patent?
You may only extend the concept of a patent by inventing and patenting an improvement to the originally patented invention (which is a new invention).
Patent Term Extensions (PTE) or Patent Term Adjustments (PTA), however, can extend portions of the patent term (by days, months, or years) based on adjusting for delays by the Patent Office and delays by the Applicant during prosecution. This amount of PTE/PTA is typically listed on the face of the patent. Terminal disclaimers can further disclaim part of a patent term and typically come into play in continuation or continuation-in-part filings. A terminal disclaimer is a type of time limit on a patent. A terminal disclaimer typically comes into play when an inventor’s first patent application and a later filed patent application include claimed content that is too similar to one another. If the patent office awards a patent to the later filed patent application, then the patent office may require that the inventor file a terminal disclaimer that effectively forces the later filed patent to expire when the first patent expires.
What happens after a patent expires?
The patented invention becomes freely usable by others and is considered public domain. At this time, others may freely make and use the invention without paying royalties to the inventor(s). Note that improvements to an invention in the public domain can be covered by separate patents that may have been obtained later than the original patent. The improvements patent(s) may still remain in effect and can block others from making or using the improved invention.
Why do patents last for so long?
Many innovations require billions of dollars in R&D. The road to every success is paved with countless iterations of failures. The 20-year term gives innovators an opportunity to recapture losses and profit from their discoveries without the threat of competitors pirating and profiting from innovations they didn’t invest in to create. Since the inventions are published, competitors still have the ability to learn from the advancements, design around them, or even build upon them with improvements. The fundamental ability to license a patent, as a transferable property right, provides a bridge from intellectual to real capital and prevents this 20-year term from being a blockade to innovation.
Why do patents expire?
Patents expire to prevent the possibility of unlimited monopolies. Large entities could swallow up entire industries and prevent progress in particular technologies. The 20-year term satisfies the quid pro quo grand bargain of an exclusive, but limited, property right to inventors in exchange for an enabling (and lasting!) public disclosure.
When do drug patents expire?
Drug patents are utility patents and thus expire 20 years from the date of patent application filing. Drug patents do, however, provide some unique opportunities to extend exclusivity, not found in other patent domains. We’ve outlined some highlights below, but for a more detailed discussion of options, please see: Drug Patents and the FDA: Timelines, Exclusivity, and Extensions.
The PTE/PTA calculation may apply here to extend the application if delays occurred during prosecution of the patent.
When do medical patents expire?
Medical patents (e.g., systems, methods, computer software for medical methods, methods of treatment, etc.) are utility patents and thus expire 20 years from the filing date of the patent application.
Is there a patent term expiration calculator?
Yes. The USPTO provides a downloadable patent term expiration calculator.
Need help determining your patent term?
This can all get a little convoluted with concepts like continuations, terminal disclaimers, regulatory-based extensions, etc. If you could use some help sorting through this and maximizing your patent’s lifespan, please reach out!
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Ashley Sloat, Ph.D.Startups have a unique set of patent strategy needs - so let this blog be a resource to you as you embark on your patent strategy journey. Archives
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