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By: Josh Sloat
For the final episode of our 2024 season, we’re bringing it all together with a review of recent patent case law and how these decisions could impact your strategy going forward. The state of patent law – and its implications for the success of your business – is an ever-evolving landscape that combines the perspectives of the patent office, the judicial interpretations of the courts, and the legislative inputs of Congress. Broader situational awareness of movements on all three fronts will help not only with getting your IP right granted now but also in formulating a patent in a way that will maximize its odds of assertability and overall value when you later need it. Section 103: Nonobvious Inventions
Kristen Hansen, Patent Strategy Specialist at Aurora, and Dr. David Jackrel, President of Jackrel Consulting, lead today’s two-part discussion with our all-star panel, dissecting recent court decisions impacting the core patenting issue of obviousness. Section 103 of U.S. Code, Title 35 governs how this concept applies to patentability. It essentially states that an invention cannot be patented if the differences between your claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was conceived. So determining obviousness is more than simply establishing that the invention doesn’t already exist and that it isn’t documented elsewhere. Its conception must also not have otherwise been obvious to those in the field at the time.
If you’re thinking that sounds awfully subjective in the present and highly susceptible to hindsight bias in the future, you’d be right. Beyond being one of the four main drivers for patent application rejection at examination time, obviousness is also one of the primary vectors used by the Patent Trial and Appeal Board for invalidating patents via Inter Partes Review, so it’s essential to get this right so as to limit your patent’s potential invalidation surface area. Episode Overview
In breaking this all down in terms of how obviousness has been playing out in the courts, Dave, Kristen, and the panel discuss:
Kristen and Dave are joined by our always exceptional group of IP experts, including:
Mossoff Minute: PREVAIL Advances
In this month's Mossoff Minute, Professor Adam Mossoff discusses some incredibly exciting news about the PREVAIL Act, which is designed to bring much overdue reform to the Patent Trial and Appeal Board. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
How to Listen
Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. 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.
To further explore the topics discussed, see the following past episodes and 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.
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By: Josh Sloat
Correcting PTO Errors With Your Patent
Patent examiners can make mistakes. Patent office clerks can misfile paperwork and cause procedural errors. The software tools, document formats like DOCX, and the IT systems your application passes through can have bugs. What recourse do you have when quality issues creep in at this stage? This is where petition practice, fortunately, comes to the rescue.
Patent petition practice is the process of filing formal requests, referred to as “petitions,” with the USPTO or other relevant patent offices to address procedural and administrative issues that can arise during the patent application process. Filing petitions can be an essential step to correct course when rules are misapplied, procedural errors occur, administrative actions need to be reversed, or deadlines are missed. Guest Hosts: Julie Burke and Michael Spector
To help us navigate this potentially patent-saving topic, we’ve enlisted the help of a guest host who’s spent considerable time in the belly of the beast. Julie Burke is a registered patent agent and former USPTO employee with 20 years of experience at the patent office. Julie rose up at the PTO to become a Quality Assurance Specialist – the type of manager you’d call when your case got off track. During this time, she handled more than 900 petitions at the patent office! After leaving the PTO, she founded her own consulting company, IP Quality Pro LLC, where she helps patent attorneys navigate complex situations in the patent system to protect their inventor’s ideas. This experience from both sides of the petition practice table has given Julie a level of access, experience, and insights shared by few in the industry, so we’re very fortunate to have her joining us today.
Julie also leverages this expertise as an expert witness in court on patent office procedures and practices – and her highly read investigatory articles are regularly published on sites including IPWatchdog, LAW360, and The Hill. Prior to her extensive career in IP, Julie earned a PhD in Biochemistry from the University of London College of Science, Technology and Medicine and a BA in Cellular and Molecular Biology from Johns Hopkins University. Julie is also presently an advisor for Petition.ai, the first searchable database of US patent prosecution petitions and associated documents. Julie is joined by the co-founder of Petition.ai, Michael Spector. Episode Overview: Quality Patents Part 5
This is our final episode in a multi-part series focused on quality patents. The prior four episodes have all been about managing quality for everything in your immediate control. Steps you and your practitioner should be taking before and after your patent is granted. But what about the last mile, where you’re turning your carefully crafted patent application over to the patent office for examination and prosecution? In today’s deep dive on petition practice, Julie, Michael, and our all-star patent panel discuss:
Patent Petition Types
While this episode largely focuses on after final petition practice, we did want to point out that there are many other flavors of petitioning. Below are detailed descriptions of some of the most common and useful types of petitions. Some are more conventional and are used during normal prosecution. Others are used to move through the prosecution process faster.
No Fee Petitions
Fee-Based Petitions
How to Listen
Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. 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.
To further explore the topics discussed, see the following past episodes and resources:
Related Episodes
Transcripts We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.
By: Josh Sloat
Using the ITC to Block Import of Infringing Products
For inventors, the promise of the patent system is the right to exclude others from making, using, importing, and selling their patented innovations for a limited period. But how do patent holders actually enforce those rights, particularly when the infringing product is being manufactured outside of the United States? In an otherwise challenging time for rights assertion, the ITC – or International Trade Commission – can be one of the most impactful long-range weapons an inventor has in their arsenal for stopping patent pirates.
The ITC has the authority to grant exclusion orders, which are enforced by U.S. Customs and Border Protection to block the importation of infringing products at U.S. ports of entry. But how can you access the ITC, what are its requirements, how can you afford it, and what should you be thinking about now to help future proof your patent portfolio for the most effective use later at the ITC? We’re answering all of these questions in an episode that is part of our ongoing series on patent quality – aimed at not just getting a granted patent but in having one that will hopefully be valuable and stand the test of time. Guest Host: Evan Langdon
Because experience is the best teacher, we’ve enlisted the help of Evan Langdon to guest host this month’s episode. Evan is a partner at Fabricant LLP and the Chair of its ITC practice. Evan has been focused on ITC litigation for the past 15 years, both offensively and defensively, having represented clients in more than forty Section 337 investigations at the ITC. Evan is recognized among the nation’s top ITC practitioners by Chambers USA and Chambers Global.
Episode Overview: Quality Patents Part 4
Along the way, Evan and the panel discuss:
Evan is joined today by our always exceptional group of IP experts, including:
How to Listen
Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. 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.
To further explore the topics discussed, see the following past episodes and resources:
Related Episodes
Related Reading Transcripts We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.
By: Josh Sloat
Julia Yan and Sarah Beth Gleeson, founders of Baleena
A RISE'ing Tide With AquaAction
For our 2024 RISE Awards, we partnered with our good friends at AquaAction in recognizing the winners of this year's Great Lakes AquaHacking Challenge. It's impossible to overstate the importance of protecting our most important natural resource, and Aqua's HackingChallenge presents a huge opportunity to help accelerate technologies that will both improve and protect our precious water ecosystems, as well as boost the local innovation economies they touch. Given the program's focus on bolstering post-secondary students and young professionals looking for a hands-on way to apply their talents and fight the freshwater crisis, we felt like the RISE Award was a natural fit in continuing its purpose of giving Aurora a way to do our part in helping to support innovative startups in their incredible, diligent efforts toward vital missions.
Read on to learn more about AquaAction, the Great Lakes Challenge, and the three winners of the 2024 RISE Award: Baleena, Wave Lumina, and Amphoral Solutions! AquaHacking Great Lakes Challenge
AquaAction is a charity that was 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, including the AquaHacking Challenge.
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. This year's competition was the 13th installment and the first binational. The competition began with 170 participants across 40 teams. After months of intense preparation, the 10 finalists presented their groundbreaking solutions to compete for $35,000 in cash prizes in addition to this year's RISE Awards. The Challenge was hosted by Northwestern Michigan College (NMC) in Traverse City, Michigan and marks a very important step toward Traverse City becoming a blue-tech innovation hub. RISE Impact: Protecting Freshwater Innovation
The winners of this year's RISE Award and the AquaHacking Challenge are pioneering necessary solutions for microplastics, PFAS, and lead contamination. It's hard to imagine a more impactful area of technology development to focus on promoting and investing in when you consider the following:
Water runs through our health, our environment, and our economy. As the US elevates water security as a foreign policy priority, the need for AquaAction’s programs has never been more urgent. But the challenge is only the beginning of the journey for these entrepreneurs and that's why the RISE award can be so important to their long term success stories. We focus the output of the award on provisional applications and patent searching, whenever possible, to help these young innovators avoid two of the most common mistakes we see around public disclosure and competitive IP landscape awareness – making sure we're helping to establish the strongest possible intellectual asset foundation upon which to build their companies. As with prior years, we awarded a free provisional application or $5,000 towards a non-provisional U.S. patent application to the first place team and two other $2,500 service-based awards to the runners-up, customized based on need, for patent-related services such as application drafting, patent searching, and competitive landscape analysis. We can't say it enough, but the recipients are a truly gifted collection of entrepreneurs who will surely do great things. We couldn’t be more thrilled about the potential to be a part of their journey! 1st Place: Baleena (Microplastics)
Baleena won first place at the AquaHacking Challenge, taking home the grand seed funding prize of $20,000 from AquaAction and a $5,000 patent service-based RISE Award from Aurora. Cofounders Julia Yan and Sarah Beth Gleeson have designed microfiber-trapping filters for household washing machines, tackling microplastic pollution at its source! They are aiming to reduce microplastic pollution from synthetic clothing by empowering consumers to contribute to environmental protection with each load of laundry.
Our thought bubble. You want to talk about impact? How about being able to improve the water leaving every single washing machine in the world? Microplastics are destroying the environment and poisoning our food supply, and Baleena's incredibly innovative filter is a universal, practical, and low-cost approach to crowd-sourcing a big chunk of the solution. Beyond crafting a great product, Baleena also has two of the most impressive young entrepreneurs we've seen in a RISE class. Having a great product is not enough. You also have to have founders with the DNA to see it through to execution and market success. That is no doubt the case with Baleena. Winning the AquaHacking Challenge and the RISE Award are just two more notches on an increasingly impressive list of accomplishments for Julia and Sarah Beth that already includes this great invention, landing some major pilot partners, raising over $500,000 to-date in mostly non-dilutive funding, and earning their way onto the 2024 Forbes 30 Under 30 list! >> Learn more about Baleena 2nd Place: Wave Lumina (PFAS)
Wave Lumina won second place at the AquaHacking Challenge, taking home $10,000 in seed money from AquaAction and a $2,500 patent service-based RISE Award from Aurora. Wave Lumina founder Vernon LaLone has developed a portable device for swiftly detecting ultra-low levels of PFAS and other contaminants in environmental samples, revolutionizing on-site environmental assessments. Before environmental engineering firms and government response teams can clean up forever chemicals like PFAS, they need to locate them, but lab testing is currently expensive and very time consuming. Wave Lumina's device, which they're calling the Containment Field Screening Device, is a groundbreaking new product that will enable onsite total PFAS testing and screening (including PFOS and PFOA) technology with same-day results! This can save months – or even years – of time for anyone working on contamination site remediation and PFAS destruction processes.
Our thought bubble. While chemical companies and regulators SLOWLY and FINALLY begin to own up to the problem, and we work toward a broader awareness (and hopefully reduced reliance on PFAS) – identification and remediation are next up for solving this massive health crisis. Wave Lumina's device will be instrumental in tackling a problem of incredible scope with an efficient, cost-effective, and truly scalable solution. Beyond impact, we also look to recognize great humans with the RISE Award, and Vernon is simply one of the nicest, smartest, hardest-working people you'll meet. We love to see it when good people do great things! >> Learn more about Wave Lumina 3rd Place: Amphoral Solutions (Lead Contamination)
Amphoral Solutions won third place at the AquaHacking Challenge, taking home $5,000 in seed money from AquaAction and a $2,500 patent service-based RISE Award from Aurora. Amphoral Solutions (previously Proto StLo) is developing an algal filtration technology that reduces lead concentration in industrial wastewater through powered algal extract and pH regulation. Amphoral Solutions was founded by the youngest team in the challenge – Merrick Marshall and Alejandro Poirier Corcuera, both students Champlain College St. Lawrence in Quebec!
Our thought bubble. Innovation knows no age boundaries! Merrick and Alejandro are two inspiring young inventors, well on their way to making a big impact – and that's really a sweet spot for the RISE Award. There's an unfortunate tension when it comes to patenting – and it's that you most need it when you can least afford it. This can be especially true for college students who are trying to balance innovation investment against the essentials of exorbitant tuition costs, books, room, and board. Lead presence in water is a problem domain that unfortunately hits very close to home in Michigan, so we're very happy to be helping Merrick and Alejandro protect their critical invention in any way we can. >> Learn more about Amphoral Solutions Past Winners
To learn more about past recipients and hear stories about their innovation journeys, check out our Patently Strategic Podcast episode where we interviewed winners from the 2021 RISE class.
By: Josh Sloat  Advancing Healthcare And Improving Lives Through Medical TechnologyWe hope you'll Join us September 23rd at Michigan's premier Medical Device Summit where regional experts will be exploring cutting-edge technologies, regulations, and industry insights. This is an incredible opportunity to network with top medtech professionals, researchers, investors, and government officials – and to discover Michigan's thriving medtech ecosystem and its impact on innovation and economic growth! The Michigan Medical Device Summit is presented by our good friends at MichBio and the Michigan Economic Development Corporation. Protecting Your Medtech IP Assets: Strategies and UpdatesIntellectual property (IP) strategy plays a pivotal role in the commercialization of innovative medical technologies and products. It encompasses a range of legal, business, and tactical decisions aimed at maximizing the value of intangible assets. Our very own, Dr. Ashley Sloat, has been invited to be a panelist for this important conversation where you'll have the opportunity to hear from legal and IP strategy experts on the latest legal updates and best practices to safeguard your breakthrough advancements, develop a strong market position, and ensure commercialization success.
By: Josh Sloat
We couldn't be more thrilled to announce that Daniel Wright is returning to the Aurora family! After a thrilling and soul-building journey as a naturalist and interpretive guide in the Sierra Nevada of California, Dan is returning to his love of helping inventors secure their innovations with high-quality patent protection. Dan is a brilliant practitioner, a highly respected teammate, and thoroughly loved by all of the clients he's helped over the years. He's one of the brightest minds we've met and so very intentional about his craft. We're incredibly fortunate to have Dan back and know our clients will benefit immensely. Pharmaceutical and Biotech Expertise. Dan holds a Masters of Science in Patent Law from the University of Notre Dame, Indiana, where he specialized in organic synthesis and analytical chemistry. He earned undergraduate degrees in chemistry and philosophy from the University of Notre Dame as part of the Glynn Family Honors program. His original foundation in small molecule drug products and their formulations has since expanded into diagnostic equipment, microscopy, implanted and wearable devices, and even into technologies outside of the medical fields – including batteries, ballistics, and distributed computing systems. Dan has also been a regular host and participant of the Patently Strategic Podcast. Check out one of his episodes below:
By: Josh Sloat
Huge congrats to our very own, Dr. Ashley Sloat for being named to this year's Traverse City Business News 40 Under 40! TCBN refers to members of this year's class as "the region's best and brightest under 40". We couldn't agree more! Not only is she providing excellent patent protection for Aurora's clients across the globe, but she's also killing it on the home-front with time and energy investments into Northern Michigan's growing tech ecosystem with volunteer work and leadership roles with impactful organizations and institutions like 20Fathoms, NMC's Office of Possibilities, and AquaAction. The 40 Most Influential Regional Leaders Under Age 40
This 18th annual list, sponsored by Hagerty, recognizes individuals in Grand Traverse, Leelanau, Benzie and Kalkaska counties under the age of 40 whose professional and community efforts this past year had the most impact on their community, the region and the economy. The 2024 class is comprised of 26 women and 14 men; more than half are new to the list. A panel of six judges reviewed the submissions and chose the 40 influencers out of 100-plus nominations from the community.
To learn more about Ashley's regional economic impact, local inspiration, biggest fan, and next big thing, be sure to check out the article!
By: Josh Sloat
A Lifeline to Future Self
There’s not a more important concept that’s more widely misunderstood by those newer to patenting than continuations. So we’re dedicating Part 3 of our series on quality patents to everything you need to know about this essential step for future proofing and increasing the value of your portfolio.
Void of pursuing continuations, the language of your patent is frozen in time at issuance. The specifics of the enforceable boundaries of your protection are forever fixed to the claims you chose to pursue with your initial application – but not necessarily with the full breadth of your invention as conceived. For many reasons, practitioners and inventors will often choose to limit how much of an invention is claimed in an initial application. But then the future happens. Case law changes. New competitors arise. New prior art surfaces. And challenges may come in the form of litigation or IPRs as we discussed in our last episode. With a closed family, all you can do is hope you had the right foresight to predict this future with your static document. Continuations, on the other hand, allow patent owners to keep patent families open – in other words, not textually frozen in time at issuance. When done right and timely, the patent family becomes a series of living documents, allowing a patent owner to claim and capture the full scope and breadth of the conceived innovation, but with the benefit of hindsight, known R&D outcomes, and changing market conditions. More Robust and Valuable Patents
Keeping a patent family open comes with significant long term strategic benefits that can make your patents considerably more robust and consequently, considerably more valuable given the ongoing strengthening options they provide in terms of defensibility and assertability. As the panel will discuss in depth today, continuations keep options open for proactively and defensively helping to hedge against case law changes, working as prior art backstops with the PTAB, and in opening opportunities for drafting new claims to square more directly on infringers in a dynamic, competitive landscape. As an added bonus, especially for startups, continuations can also make patents more budget friendly up-front if done correctly.
We frame things a lot on this podcast in terms of doing kind by future self, but continuations are the closest equivalent of past self grabbing a life line to toss out to future self in a time of need! Episode Overview: Quality Patents Part 3
Ty Davis, Patent Strategy Associate at Aurora, and co-host Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, lead today's discussion with our all-star patent panel delving deeply into continuation practice. Along the way, Ty, Ashley, and the panel discuss:
Ashley and Ty are joined today by our always exceptional group of IP experts, including:
Mossoff Minute: RESTORE Act
In this month's Mossoff Minute, Adam discusses the introduction of the RESTORE Act. This is an exciting new piece of legislation aimed at restoring patent owners’ abilities to obtain injunctions to stop infringers from continuing to steal innovations after being found guilty of doing so. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
How to Listen
Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. 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.
To further explore the topics discussed, see the following past episodes and resources:
Related 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
The Importance of Injunctions in Property Rights
Some significant new research has been released on the patent system and how it's currently functioning. This research focuses on the ability of patent owners to stop people from infringing on their patents. In legal terms, this is known as an injunction. The concept is straightforward: just as you can obtain an injunction to prevent someone from trespassing in your home or stealing your bicycle, patent owners should be able to get an injunction to stop someone from using their invention or technology without permission.
An injunction is a court order that can compel the intruder to vacate the premises, return the property, or stop using it without permission. This legal mechanism is vital as it serves as a backstop to the ability of individuals to negotiate in the marketplace. Essentially, your ability to say "no" to someone using your property without permission enables you to demand fair compensation for its use, be it the sale of your home, your bicycle, or new technology protected by a patent. Supreme Court's 2006 Decision on Patent Injunctions
Unfortunately, a Supreme Court decision in 2006, known as the eBay decision, introduced a new test for receiving injunctions. Prior to eBay, injunctions were rightfully and practically a given if infringement was found. This new four-factor test has since had a significantly negative impact on the ability of patent owners to enforce their property rights. This claim has been hotly debated by those looking to further weaken the patent system, but new research has proven the devastating effects.
The Impact on Patent Owners: Statistical Evidence
Recent research by Dr. Kristina M.L. Acri née Lybecker of Colorado College offers concrete statistical evidence of this impact. According to her rigorous statistical analysis, since the eBay decision, patent owners who license their patents — such as universities, inventors, and small startups – have seen a 91.2% reduction in their ability to obtain injunctions. Even manufacturing companies have experienced a 66.7% reduction in their ability to receive injunctions when others use their patents without permission.
Since the eBay decision, patent owners who license their patents – such as universities, inventors, and small startups – have seen a 91.2% reduction in their ability to obtain injunctions to stop others use their patents without permission. Professor Adam Mossoff discussed this critical research in a recent Mossoff Minute: The Broader Implications: Devaluation of Property Rights
This data is significant as it confirms a fundamental issue in the patent system today: patents are not being secured by courts as property rights. The inability to prevent others from stealing your property undermines and devalues that property.
Think of it this way: if someone started living in your bedroom and you couldn't kick them out, the value of your home would undoubtedly decrease. Similarly, in patent law, the fact that you cannot enforce your exclusive right against others leads to a devaluation of your patent in the marketplace. SCOTUS Got eBay Wrong: Statistical Evidence
The Supreme Court justified its eBay Inc. v. MercExchange, L.L.C. decision by claiming it was applying a long-standing historical test for granting injunctions to patent owners. However, Professor Mossoff conducted an extensive review of all 19th-century patent cases – amounting to approximately 899 cases – and discovered that courts applied this so-called historical test exactly zero times. Yes, zero out of 899 cases.
The zero instances of test application highlight a critical point: despite the Supreme Court's justification, there was no historical precedent for their four-factor test. This discovery confirms that the Supreme Court changed the law on injunctions in 2006 and did so based on a historically inaccurate premise. I took a look at all of the patent cases in the 19th century, approximately 899 of them. And I found that the number of times that the courts applied this test that the Supreme Court said in 2006 is a long-standing historical test, is zero. The Road Ahead: Reform Needed
This issue has destabilized and undermined the role of patents as property rights in our modern innovation economy. This research underscores the urgent necessity for evidence-based policymaking in rectifying this important system that has driven innovation for over 200 years. As Congress considers patent system reforms, or if the Supreme Court decides to revisit its 2006 ruling, this data will be crucial. The need for robust and fair protections for patent holders cannot be overstated. Ensuring that inventors can reliably protect their property rights is vital for encouraging ongoing innovation and maintaining the health of our innovation economy.
The RESTORE Act
The RESTORE Act was recently introduced in Congress, with the stated goal of restoring the presumption that courts will issue an injunction to stop patent infringers. The Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive (RESTORE) Patent Rights Act of 2024 has been sponsored by Senator Christopher Coons, Senator Tom Cotton, Representative Nate Moran, and Representative Madeleine Dean.
We unpacked this exciting news with Professor Mossoff and also tackled some of the bigger questions and criticisms surrounding the bill.
You can read the very brief bill language, it's findings, and one-pager using the buttons below.
Going Deeper on Injunctive Relief
To learn more about injunctions and the damage that's been caused by the inability to get them, listen to our Patent Wars podcast episode where we discuss the biggest problems plaguing the patent industry (injunctions are among the big three), with the reformers looking to fix it.
The Mossoff Minute: Patent Shorts
This blog post is a summary created from several installments of the Mossoff Minute, where we explore crucial developments in the world of patent law and its broader implications for innovation. Stay tuned for more insights, updates, and short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
By: Josh Sloat
Prosecution Pointers to Survive an IPR
The most terrifying thing that can happen to a patent owner is receiving what’s called an IPR – or Inter Partes Review – petition. This is a tool that accused infringers can use to invalidate patents. And they have … to alarming effect. As we’ve discussed, the kill rate at the PTAB is staggering. The Patent Trial and Appeal Board – or as regular listeners of this audience more commonly know it as, the "Patent Death Squad" – has racked up a claim execution rate north of 84% and the death of thousands of valid patents at the hands of infringers looking to profit from innovations they didn’t invest in to create. This is an institution that is clearly out of balance and screaming for reform.
And while we continue to diligently work toward those necessary reform solutions, we also have to deal with the world as it is and craft the highest quality, most future-proof patents possible. So we’re dedicating Part 2 of our series on Patent Quality to creating a guide for how to help IPR proof your patent – things you can do when you write and prosecute patent applications before an examiner to maximize the likelihood that the resulting patent will survive the IPR that it could eventually experience if it’s a valuable patent. Guest Host: Matt Phillips
Your expert author of this guide is someone who’s spent considerable time in the belly of the beast, successfully representing both petitioners and patent owners. Our guest host today is Matt Phillips. Matt is a founding partner at Laurence & Phillips IP Law, a firm that has been recognized multiple times by US News & World Reports as one of the top fifty Tier 1 firms nationwide for patent law. Formerly, he was a partner at an AmLaw 200 firm, law clerk for Judge Alan D. Lourie at the U.S. Court of Appeals for the Federal Circuit, patent examiner at the USPTO, and communications systems engineer. Matt has a doctorate degree in electrical engineering.
Matt’s practice focuses on the types of proceedings that can happen with your patent after it’s been granted – including review proceedings at the PTAB, reexaminations, and reissues. According to Matt, post-grant proceedings are about 80% of what he’s done for the past 10-15 years. He also created and taught the “Post-Grant Patent Practice” course for the Patent Resources Group for eleven years and is a co-author of a two-volume treatise of the same name. Matt has taught as an adjunct law school professor. He has published over 40 articles on post-grant patent topics and been an invited speaker around the country and internationally on post-grant topics. We couldn't imagine a better host to help us navigate this topic. Episode Overview: Quality Patents Part 2
Building nicely on so much of the framework established in the prior episode of this series on crafting quality patents, Matt and the panel discuss:
Matt is joined today by our always exceptional group of IP experts, including:
Mossoff Minute: Injunctive Relief Studies
In this month's double-feature Mossoff Minute, Professor Adam Mossoff discusses recent studies featuring significant statistical analysis empirically proving that there are fundamental issues with the patent system when it comes to obtaining injunctions to stop infringers from stealing your IP. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
How to Listen
Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. 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.
To further explore the topics discussed, see the following past episodes and resources:
Related Episodes
Related Reading
Transcripts We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities. |
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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