By: Josh Sloat

Please join us June 5th online with our good friends at MichBio for an essential talk on prenuptial patenting! ​You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. Like many others, you may turn to the aid of an engineering firm or dev shop. This relationship is a marriage of sorts. But it’s a marriage that is designed to inevitably end in divorce. How cleanly, smoothly, and successfully this separation goes depends on the steps that you take before it officially begins. 

In this talk, Dr. Ashley Sloat will lead an exploration into responsible engagement with engineering firms, or what we affectionately refer to here as “Prenuptial Patenting”. Ashley will walk you down the aisle and explore everything you need to know to experience marital bliss and an amicable divorce with your engineering partners. This talk covers the full life cycle from vetting partners to post development concerns and everything in between – with particular focus on relationship complexities like IP ownership, assignment from engineering firm inventors back to you, and how to avoid the traps of viral IP.
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Since 1993, MichBio has been driving bio-industry growth in Michigan by providing access to resources and information critical to success, advocating for policy decisions that support the long-term viability of the life sciences, and connecting the people, companies, and ideas necessary to create the next generation of bio-innovation. Ashley is a proud member of MichBio’s IP & Legal Committee, where she helps shape the legal frameworks supporting innovation.

By: Josh Sloat

In today’s global economy, the importance of international patent protection cannot be overstated. Your invention could be conceived of with a workforce distributed across several continents. Your manufacturing could happen in Asia or India, while your products are shipped into and distributed from ports in the target markets of the largest economies across the globe. Would be competitors and infringers could be next door neighbors or perhaps across the pond. But as you’ll learn today, there is no such thing as an International Patent – no one global patent that protects you everywhere. Instead, patents are jurisdictional property rights. For example, a U.S. patent only grants the right to exclude others from making, using, selling, and importing the claimed invention within the United States. It has no bearing on activities performed in Canada, Mexico, China, or anywhere else in the world. To restrict activities there, you will need a patent granted in each of those countries.
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​So, how do you choose where to file? How long do you have to decide? What pathways exist for filing internationally? How do you pursue international protection in an intentional, strategic, cost-effective manner that won’t break the bank? And what should you be thinking about now, while drafting your patent to set yourself up for the greatest odds of success once on the international stage?
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Dr. Ashley Sloat, Aurora’s very own international patenting tour guide, leads today's discussion with our all-star patent panel, traveling from the U.S. to Europe, Africa, India, East Asia, Australia, and everywhere in between, exploring the intricacies and nuances of ensuring your patent rights are protected everywhere it matters. Along the way, Ashley and the panel discuss:

• Reasons for pursuing international protection.
• How to choose locations with a cost-effective international strategy.
• Foreign filing deadline and strategy pointers.
• The most common pathways for foreign protection including, the Patent Cooperation Treaty, the Paris Convention, the European Patent Convention, Unitary Patents, and the African Regional Intellectual Property Organization.
• Things you need to be thinking about well in advance, in terms of drafting your patent and the international dangers of public disclosure.
• And even some considerations for how political happenings like tariffs, trade wars, and Brexit can impact your patent strategy.

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Ashley is joined today by our always exceptional group of international IP experts, including:

• Dr. David Jackrel, President of Jackrel Consulting
• Kristen Hansen, Patent Strategy Specialist at Aurora
• Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP
• And making their Patently Strategic debut, Albert Du and Dr. Tiffany Miller – the two newest additions to the Aurora family.

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In this month’s minute, Professor Adam Mossoff discusses Secretary of Commerce Howard Lutnick's remarks at the National Inventors Hall of Fame Induction Ceremony, and what this positively signals for the near future of innovation policy.
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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.
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To further explore the topics discussed, see the following past episodes and resources:

Related Episodes

• ITC Proofing Patents
• Foreign Filing License Risks and Strategies
  
• Continuation Practice
  
• Public Disclosure Risk

Related Reading

• Patent Anatomy
• PCT Timeline
• Foreign Filing License Requirements, by Country

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

We're excited to announce that we're welcoming Albert "Al" Du to the growing Aurora family! Al joins us this Spring, starting his role as ​a Patent Strategist. Al is a USPTO-registered patent attorney with over 10 years of experience, serving as a patent attorney/agent at a number of law firms across a wide variety of technology areas. Al is one of the kindest spirits you'll meet and enjoys working with inventors to address the disconnect between the law and the process of innovation. Al brings incredible breath of insight, having worked on both sides of the prosecution table – now as a patent attorney and previously as an examiner at the USPTO.

Digital and Mechanical Expertise. Al holds a Bachelor of Science in Mechanical Engineering from Carnegie Mellon University and a Juris Doctorate from The Catholic University of America: Columbus School of Law. Al has drafted and prosecuted hundreds of patent applications for clients in the areas of software, blockchain, IoT, artificial intelligence, cloud computing, drone applications, vehicle automation, and medical devices.

In his spare time, Al enjoys time with his family (wife and two girls), hiking, and is always learning something new. Lately, Al has largely been focused on Brazilian jiu-jitsu and acoustic guitar!
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By: Josh Sloat

We're excited to announce that we're welcoming Dr. Tiffany C. Miller to the growing Aurora family! Tiffany joins us this Spring, starting her role as ​a Patent Strategist. Tiffany has been a proud member of the Patent Bar since 2008. She is skilled in drafting patent applications that are focused on withstanding litigation and patent proceedings, which makes all the difference when it comes to enforcing your patents and overcoming patent validity challenges during patent enforcement proceedings. During her time running her own practice, Tiffany gained invaluable insights from managing portfolios ranging all the way from small solo inventors to Big Tech giants. 

Digital, Electrical, and Mechanical Expertise. Tiffany holds a Bachelor of Science in Biomedical Sciences, a Master of Science in Engineering Science, and a Ph.D. in Electrical Engineering from USF. She has expertly crafted and prosecuted patents across many innovation fields, including mechanical, life sciences, biotechnology, electrical engineering, biomedical, formulations, automotive, aviation, and semiconductors.

In her spare time, Tiffany enjoys spending time with family and flying a Cessna-172 as a solo pilot. 
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By: Josh Sloat

In this month’s episode, we’re getting high on innovation with a deep dive into cannabis patents.  As more and more states relax restrictions on both medical and recreational uses of marijuana and hemp, the U.S. cannabis industry is projected to reach $50 billion in sales this year and over $74.6 billion by 2032! This rapid growth is happening despite immense challenges brought on by a complex and conflicting web of legal disparities between federal and state laws. These legal challenges include limited access to financial institutions and the inability to transport products across state lines, but what about patents? THC - the primary psychoactive compound in cannabis – was deemed a Schedule One drug under the Controlled Substances Act of 1970. This is the most restrictive category for drugs in the eyes of the federal government. And unlike most other property rights, patents fall squarely within federal jurisdiction. So what does this mean for inventors in the space hoping to protect their cannabis-related innovations?
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For the answer, we turned to the expert in the space. There have only been five or so cannabis patent infringement cases ever filed in the United States, and our guest host today has worked on two of them. James Gourley is a partner at Carstens, Allen & Gourley, LLP, and a registered patent attorney with the United States Patent and Trademark Office. James served on the Dallas Bar Association's Intellectual Property Section Board before moving to Denver. He is a member of the State Bar of Texas and Colorado and is admitted to practice in the U.S. District Courts for the Northern, Southern, Eastern, and Western Districts of Texas, the District of Colorado, the Fifth Circuit Court of Appeals, and the United States Supreme Court. James has been a pioneer in the budding space of cannabis IP law and brings incredible depth of expertise, based on first-hand experience, to our conversation.
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To help make sense of all of this and so that your IP rights don’t just go up in smoke, James and the panel discuss:

• Cannabis at the molecular level, specifically THC and CBD, and how the subtle differences underscore the complexity of cannabis legality.
• The present legal framework around cannabis and the challenges that come via a patchwork of conflicting state and federal laws.
• Cannabis IP issues surrounding obtaining and asserting both patents and trademarks, including insights from the cases James has personally litigated. 
• And patent prosecution strategies to help ensure your rights are enforceable in a federal court.

​James leads this blunt conversation with our always exceptional group of IP experts, including:

• Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
• Dr. David Jackrel, President of Jackrel Consulting
• Kristen Hansen, Patent Strategy Specialist at Aurora
• Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP

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In this month's Mossoff Minute, Professor Adam Mossoff discusses six new anti-patent bills that the Senate Judiciary Committee recently advanced, despite being backed by bogus data. ​We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
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​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.
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By: Josh Sloat

We're honored to announce that we've been invited to speak next week at the FIRST Robotics Championship in Houston, TX! This massive event is the world championship for elementary to high school-aged youth engaged in competitive robotics. The program and domain are near and dear to us, so we couldn't be more thrilled to be a part of it. Dr. Ashley Sloat worked closely with her son's FIRST team to help their young inventors develop patent rights via a provisional patent application for their State Championship qualifying Innovation Project. We're now looking forward to sharing insights gained with the rest of the FIRST Robotics world!
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Learn about the power of patents and how you can incorporate patenting into your FIRST Robotics programs, from FLL to FRC. For LEGO League Teams, pursuing a provisional patent can be a great addition to your Innovation Project. For all ages, learning about the patent process at a young age is a massive head start for those heading into STEM careers. We'll even be exploring success stories from FIRST teams that used IP to commercialize their innovations! Learn from an IP professional who’s guided everyone from inexperienced elementary teams to seasoned pros through the empowering process of patenting!

Session Number: 134
Date of Session: Wednesday, April 16, 2025
Time of Session: 4:00pm - 4:45pm
Room Location: 350DEF
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Founded in 1989 by inventor Dean Kamen, FIRST (For Inspiration and Recognition of Science and Technology) is a global nonprofit organization that prepares the world's youth for the future through a suite of inclusive, team-based robotics programs for ages 4-18.

Hosted by FIRST, the 2025 FIRST Championship is a culminating, international event for its youth robotics competition season and an annual celebration of science, technology, engineering, and math (STEM) for the FIRST community as we prepare young people for the future.

The 2025 FIRST Championship takes place April 16-19 at the George R. Brown Convention Center in downtown Houston. 
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In addition to our mission of promoting innovation by helping inventors secure high-quality patent rights, we're also proud mentors and sponsors of First LEGO League (FLL) Team #64530 from Traverse City, Michigan. The Bricks (4) Brains team is made up of inspiring young elementary students who've already filed for their first patent and are diligently working their way toward earning a place at this incredible international competition.
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By: Josh Sloat

If a court stripped away your property rights, wouldn’t you at least want an explanation? The answer is obvious, but the reality is appalling. The practice of revoking patent rights on appeal without explanation has been happening to inventors at the Federal Circuit Court of Appeals (CAFC) at an alarming rate. In over 43% of PTAB cases on appeal at the CAFC, inventors receive a single-word response – “AFFIRMED” – rather than an opinion. This practice is referred to as the application of Rule 36 and, in cases involving the PTAB, amounts to the seizure of property from an administrative agency without any reasoning provided by a constitutionally created Article III court. 

ParkerVision has filed a petition for a writ of certiorari with the Supreme Court and recently submitted a reply brief in an attempt to get the Supreme Court to take up this innovation-crippling practice. In the coming days, the justices are scheduled to discuss the petition in private conference, where they will vote on whether to take the case.
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To help us unpack Rule 36 practice and what ParkerVision is hoping to do about it, Dr. Ashley Sloat and I have enlisted the assistance of the three people closest to this case and its implications:

• Jeffrey Parker, CEO of ParkerVision – an absolute pioneer in wireless technology.
• Amit Vora, appellate litigator at Kasowitz Benson Torres, representing ParkerVision in its petition for cert with the Supreme Court.
• Juliette Fassett from the Fair Inventing Fund, advocating for inventors’ rights. Juliette is an inventor herself, with over 30 years of experience building consumer product companies.

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Through an illuminating and sometimes heartbreaking interview, Jeff, Amit, and Juliette walk us through the core issues of what comes down to some very fundamental questions about both due process and inventor dignity. Along the way, we discuss:

• Innovation focus. The significance of ParkerVision’s innovations.
• State of the law. Rule 36, §144, and the PTAB.
• ParkerVision's cert. What sets this cert apart from prior attempts to get the Court to take on Rule 36.
• Dignity. The importance of judicial respect and the dignity of a reasoned explanation for patent holders who’ve had their rights stripped away.
• Due process. Why judicial reasoning is key to what makes a court decision a valid court decision.​
• The chilling effect that application of Rule 36 has on patent law, investment, and innovation.

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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.
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In addition to everywhere you listen to podcasts, this complete video interview is available on our YouTube channel. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok alongside our monthly Mossoff Minutes where we provide updates and quick takes on movements in patent reform, significant court rulings, and innovation policy happenings, all with the assistance of Professor Adam Mossoff. 
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if you're wondering what you can do to help, you can always write your legislators should the courts let us down here, but in the meantime, you can do what we're doing – and that's sharing these concerns and the very real human stories behind them to help to raise broader public awareness. Please, like, subscribe, and more importantly, share! This matters for us. And it REALLY matters for our kids. 
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To further explore the topics discussed, see the following past episodes and resources:

Related Episodes

• Why Patents Exist with Professor Adam Mossoff
• PTAB Survival Guide
• American Inventor Horror Story
• Patent Wars: Innovators, Revolutionaries, and the Race to Reform

Related Reading

• ParkerVision's Petition for Cert with SCOTUS
• ParkerVision's Rule 36 Reply Brief

Transcripts​
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.
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By: Josh Sloat

So, your patent application got rejected. Now what? 

In this month’s episode, we’re talking about rejection. Specifically, the type that comes from the patent office in the form of an intimidating sounding three-digit number when your application gets denied by an examiner. Some time after submitting your application, it goes into a process with the patent office called examination. This is the part of your patent’s prosecution journey where an examiner reviews your application for conformance to technical and legal requirements. If – and usually when – the examiner finds a problem, they will issue an office action that contains specific reasons for the rejection. You then have the opportunity to respond to and overcome the rejection, using various strategies we’ll explore today.  
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​Reasons for rejection fall under four sections of U.S. Statute, Title 35. Sections 101, 102, 103, and 112 dictate that patents must be eligible, useful, novel, nonobvious, and enabled (or properly described). Patents can be rejected or later invalidated if one or more of the claims are determined to be otherwise. 

Rejection on the basis of these four statutes is fortunately just the beginning of the delicate process of negotiating this important exchange that has promoted and enabled our innovation economy since the dawn of our country. Patent application rejection is common, expected, and can be used very strategically – but perhaps counterintuitively – to end up with the broadest possible protection, while also making sure there’s something in it for the public!
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In today’s episode, Patent Office Relationship Guru Daniel Wright leads a discussion with our all-star patent panel, delving deeply into defining, coping with, and then dealing with patent application rejection. Along the way, Dan and the panel discuss:

• Why patent applications are rejected.
• The specific types of rejection.
  
• Strategies for how to overcome each, including some wonderful insider insights specifically on how to work with examiners on the human level to overcome rejection.

In this month's Mossoff Minute, Professor Adam Mossoff debunks the myth that patents in the United States are monopolies that impeded innovation and block economic growth. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
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We’re excited to announce that we'll be releasing a very special episode next month, in which we’ll be interviewing Jeffrey Parker, the CEO of ParkerVision. ParkerVision is filing a U.S. Supreme Court Cert Petition challenging the Federal Circuit’s practice of issuing one-word affirmations (Rule 36) in cases that hold life-altering implications for inventors. ParkerVision’s petition aims to establish a baseline of judicial respect for patent holders, as judicial reasoning is key to what makes a court decision a valid court decision. 

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.
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By: Josh Sloat

You’ve put too much into your innovation to come up short when its life depends on the measure of your patent. In the eyes of the patent office, judges, juries, PTAB admins, ITC officials, and IP-savvy investors, it doesn’t really matter how great, novel, or universe-denting your invention is if it is not properly defined and protected by your patent. The difference between a good patent and a bad one is the difference between a valuable, assertable, defendable property right – and a worthless vanity plate.

Fundamental Tension. Patents are not inexpensive and startups need patents when they can least afford them. This fundamental tension leads to two kinds of waste:​

So, when they do make sense, being intentional about quality is paramount in maximing your investment and avoiding waste. And the quality that goes in up front is directly proportional to the leverage it will give you later when you need it most. But what goes into a quality patent, and where possible, how do you get it without breaking the bank? Answering these questions will be the focus of our discussion.
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Please join us at 20Fathoms in Traverse City for this free lunch-and-learn presentation. This is an in-person event and space is limited. Please register. Lunch will be provided!

By: Josh Sloat

We're looking for a Medical Device and Software Patent Agent to help with patent portfolio management, application drafting, prosecution, and strategy. This is an exciting and critical step in our incredible growth trajectory – one sparked mainly by client love and referrals! 

This is a fully remote, full-time or part-time role (your choice) with a flexible work week. The position is salaried for a guaranteed 30 hours per week (part-time) or 40 hours per week (full-time) and payable at an equivalent hourly rate for any hours above. Benefits include 401k with match and paid time off. 

Who you are: You have an undying love for people and supporting inventors and team members with the highest level of quality, high-touch service. ​Ideally, you’ll also be a good mix of the following: