By: Josh Sloat

Who should be listed as an inventor for a patent?
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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 

​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.

​If you’re an agent or attorney and would like to be part of the discussion or an inventor with a topic you’d like to hear discussed, please reach out.

For the visual learners out there, we also like to make our presenter slides available for your reference. This particular deck includes great visuals for the guided invalidity search walkthrough.
​
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities. 

By: Josh Sloat

Illustration: Declan Wrede

Aurora is partnering with Ann Arbor SPARK to deliver a three part SPARK.ed series. You've had questions around patenting and the SPARK team has been listening! We've put this series together to address the most common questions that arise from startups within the SPARK ecosystem. ​Our very own Ashley Sloat, Ph.D. will be the instructor for all three talks.

Part 1: Patenting in the Early Years: A coming-of-age story
Part 2: Decrypting Software Patents: Key Insights for IP Success

Responsible Engagement with Engineering Firms

You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. In this talk, we discuss everything you need to know before and during the course of engaging with an engineering firm. We’ll cover IP ownership, assignment from engineering firm inventors back to you, and how to avoid the traps of viral IP. 

​Time and Location: Thursday, December 9, 2021 at 11:30am - 12:30pm | Free Online Event

​To help reduce the IP barrier of entry for early stage founders and startups, we regularly make our talented staff available for speaking engagements at conferences, competitions, accelerators,​ and incubators. We also partner with groups like Ann Arbor SPARK, XLerateHealth, and InnovatorMD to host live webinars. Please reach out if you'd like to schedule a talk or workshop for your group, and see our Events page for a sampling of past and upcoming talks. 

By: Josh Sloat

Illustration: Declan Wrede

10 Years of AIA and the PTAB
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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

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.

If you’re an agent or attorney and would like to be part of the discussion or an inventor with a topic you’d like to hear discussed, please reach out.

If you haven’t listened to our episodes on patent searching or patent monetization, we highly recommend you also give them some ears. In this episode, we talk a fair amount about importance of searching prior art and how it’ll help if you ever find yourself facing the PTAB. It tees in wonderfully with the context and strategy bits Shelley and Louis cover in the prior episodes. Be sure to check 'em out. 

We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities. 

By: Josh Sloat

We could not be more thrilled to be welcoming Kristen Hansen to the Aurora family! Kristen joins us this month, starting her role as ​a Patent Strategy Specialist. Kristen is the perfect blend of wicked patent strategy smarts, deep technical expertise, startup-focused business acumen, and all-around great human. She exudes all of the essentials that have come to define the Aurora DNA. We love working with her and know that she will be a tremendous asset to both Aurora and our clients. 

Patent Strategy. Kristen is a USPTO-registered patent practitioner with over 15 years of experience focusing on developing U.S. and international patent portfolio strategies for individual, university, and corporate clients. Many of these clients include THE tech giants and Fortune 100s in the areas of software, IoT, machine learning, consumer electronics, electronic circuits, optics, medical devices, wearable devices, virtual and augmented reality technologies, telecommunications, semiconductor devices, and business methods.

Software Expertise. In a world where software is dominating the technology landscape, it's essential to have someone with deep software patenting experience in your corner, ensuring protection for your most central and valuable IP. In a prior role, Kristen focused the majority of her time managing portfolios for companies like Google, Apple, SAP and Twitter, where she drafted and prosecuted mission critical patents in the areas of AR/VR implementations, browser inventions, operating system interaction, IoT, machine learning, search algorithms and techniques, mobile and desktop app implementation, business methods, and web store algorithms.

Business-driven IP. Kristen understands complex technologies, knows what moves business, and is a world class communicator. As a result, she can comfortably communicate with inventors at a detailed level and can disseminate technical details of such communications to non-technical audiences. Kristen uses her technical knowledge and legal training to develop patent portfolio strategies that are closely aligned with each client’s business objectives.

By: Josh Sloat

Buying and Selling, with special guest host Louis Carbonneau
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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. 

Expert Panel
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

Topics Covered

• Historical context and present state of the market for transacting patents
• Who's buying and who's selling?
• The value of meaningful, quality patents and what potential buyers want to see in commercial-grade patents
• The vital role that patent searching plays in value, enforceability, and mitigation against future invalidation – and the BIG problem with relying on examiners for prior art searches
• Drafting and prosecution tips for future-proofing patents against case law changes
• Potential impact of newly proposed legislation: Pride in Patent Ownership Act and Unleashing American Innovators Act
• Patent sales vs. licensing vs. technology transfer
• How NPEs are monetizing through litigation
• How to use patents as strategic weapons on the international stage

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.

If you’re an agent or attorney and would like to be part of the discussion or an inventor with a topic you’d like to hear discussed, please reach out.

If you haven’t listened to our episode on patent searching, we highly recommend you also give it some ears. In this episode, Louis talks a lot about the importance of searching as it pertains to drafting valuable patents, how it’ll help if you get IPR’d, and also help against infringers. It tees in wonderfully with the context and strategy bits Shelley covers in the prior episode. Be sure to check it out. 

We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities. ​

By: Ashley Sloat

Please help our client, Starlight Cardiovascular, win a financial prize to further their development of devices for babies that are born with an extra connection in their heart and need lifesaving surgery. 

Please like, share, and watch their one minute video until the end. See below and original link here.

Starlight Cardiovascular is focused on the essential mission of creating devices to treat babies born with congenital heart defects. Approximately 1.3 million babies are born each year with a CHD. Most of the tools used to treat these children were designed for adult conditions and anatomy, limiting their utility for pediatric patients. Starlight Cardiovascular is developing a portfolio of devices designed and tested specifically for pediatric CHD with the goals of improving morbidity, mortality, and access to care.

By: Ashley Sloat

You’ve had your stroke of genius. Your next inclination is to immediately do one of two things: 1) Yell it from the rooftops and share it with anyone who will listen or 2) keep it close to the vest, not tell anyone, and guard your idea like it’s the One Ring. Both instincts are usually wrong. At least in their absolute forms. 

Knowing when to share your idea and when to shush is a vital distinction on the journey to innovative success.

​As we’ll discuss more, sharing too much and too soon can have detrimental effects on your ability to later protect your idea. But not sharing at all can come with tremendous opportunity cost. Sharing an idea provides valuable insights and traction, from feedback to refinements to people recruitment. 

Reid Hoffman, founder of LinkedIn, venture capitalist, and renowned “Oracle of Silicon Valley” has said:

AKA: Can I share my idea before filing a patent?
Keeping your idea a secret may also not be an option depending on your funding goals. As an inventor approaching potential investors, you’re going to want to protect your idea from being stolen. You might be inclined to think a nondisclosure agreement (NDA) is the answer. Many investors, however, are unwilling to sign confidentiality agreements, given their handcuff potential on future deals. 

So how do you strike the balance? How do you share enough to get the invaluable gift of feedback and give investors the details they need to evaluate deals, while protecting your idea from being stolen, but do so in a way that is economically practical pre-investment and pre-revenue? The simple answer is: file a provisional patent application before you publicly share, sell, or disclose any details. Provisional patents in particular are a cost-effective, low fidelity (you don’t have it all figured out yet) approach to protecting your idea, while securing the earliest possible filing date. Let’s explore why this matters.

The United States, similar to the rest of the world, is a first inventor to file system, which means...you need to file a patent on your technology before you publicly disclose it. If someone invents the idea after you but files with the patent office before you, that someone wins the patent and you lose. 

Publicly disclosing your invention before you file a patent application can cause you to lose your patent filing rights. For example, in the U.S., the following activities could bar your idea from later patenting:

• Presenting or publishing your idea (websites, journals, trade shows, etc.) 
• Responding to a request for proposal if the technology is already largely developed
• Selling or offering to sell your invention (even if the offer is rescinded or declined)
• Secret sales or disclosures (where the details of the invention are not made known)

There is lots of gray area between patenting and sharing. For example, advertising a product not yet developed, pre-announcing a product that is not yet developed, or experimental use are all public events when your idea is not “patent ready” so such activities may not prevent you from later patenting your idea. Some jurisdictions, including the U.S. also offer grace periods, so if you accidentally shared too much before reading this, you may still be able to get a patent.

​Share your idea – and do so with great gusto – but only after your patent application is filed. Patents have the long term added value of maximizing startup funding and growth, while protecting your valuable technologies as early as possible so you can go out and start safely getting that valuable feedback. You will learn great things about the technology and yourself when you share it. 

By: Josh Sloat

Sleuthing Your Way to Stronger Patents
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​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?

So many big questions, with so much influence on business outcomes. The quest for the answers is far from elementary, but with the right detective, these aren't mysteries that have to remain unsolved until it's too late. In this month's episode, 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. 

Expert Panel
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 BYU

Topics
In this episode, Shelley shares: 

• Why inventors and companies should have a professional search conducted 
• Offensive and defensive search strategies for companies both big and small 
• Patent search types and when they apply 
• Strategies and tips learned over a decade of searching 
• A guided sample invalidity search walkthrough 

This presentation explores the types of prior art patent searches including: 

• novelty and non-obviousness 
• patentability 
• freedom-to-operate 
• landscape 
• validity and invalidity 
• state of the art 

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.

If you’re an agent or attorney and would like to be part of the discussion or an inventor with a topic you’d like to hear discussed, please reach out.

If you'd like to learn more about our patent search, analysis, and competitor monitoring services, please drop us a line. 

For the visual learners out there, we also like to make our presenter slides available for your reference. This particular deck includes great visuals for the guided invalidity search walkthrough.

​We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities. 

By: Josh Sloat

Fast Tracking Your Application
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​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. 
 
Expert Panel
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.

Breaking Down Expedited Options
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).
• Benefits, risks, costs, and relative time implications for PPH, Track One Prioritized Examination, and Accelerated Examination.

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.

If you’re an agent or attorney and would like to be part of the discussion or an inventor with a topic you’d like to hear discussed, please reach out.

For the visual learners out there, we also like to make our presenter slides available for your reference. This particular deck includes great visuals for PPH participating countries and a breakdown of the actual form for participation in the Global IP5 Patent Prosecution Highway (PPH) Pilot Program.

​The Stanford Byers Center for Biodesign is seeking innovators with backgrounds in healthcare, engineering, computer science, or business to apply for this hands-on, full-time program (August – June). As part of a multidisciplinary team, you’ll learn how to identify important unmet medical needs, invent technologies to address them, and bring those products into patient care. Applications for the 2022-23 Innovation Fellowship are now open through August 13, 2021.

​The fellowship begins with an in-hospital immersion where fellows identify at least 200 needs. Teams:

• Select the most promising needs
• Prototype and test solutions
• Explore patent, regulatory, and reimbursement issues
• Develop operational and business plans to advance the project. Fellows work with the medicine, engineering, and business faculty at Stanford as well as prominent Silicon Valley inventors, CEOs, venture capitalists, and advisors.

 
Following interviews at Stanford University, 12 successful candidates will be awarded fellowships, including tuition and salary support. Stanford believes that personal and professional diversity inspires creativity in its teams and helps them innovate effectively for different patient populations. The Stanford Byers Center for Biodesign values the unique path of each applicant and encourages people of historically underrepresented groups to apply.

Announcement courtesy of ​MedtechWomen.