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​​Patently Strategic Musings

Claim Construction

1/30/2024

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By: Josh Sloat
Claim Construction
The Patently Strategic Podcast is back in action for the start of Season Four and we're leading off today with a very important conversation on Claim Construction! This is part two of an important three-part series and picks up from our Season 3 episode on Claim Strategies – which goes from claim basics all the way to effectively leveraging claim strategies. If you haven’t listened to that one yet or if any of this gets a little thick, we highly recommend you go back and give it a listen. There is not a more important concept to grasp in all of patenting. Claims define the boundaries of your intellectual property. The highly nuanced process that goes into crafting them is all the difference between a defensible, assertable, valuable property right – and an expensive vanity piece for your wall. 
​

Valuable Lessons in Claim Construction

​​In this month’s episode, Kristen Hansen, Patent Strategy Specialist and creative claim construction worker here at Aurora leads a discussion, along with our all-star patent panel, delving into the world of claim construction. Claim construction is a process in which courts attempt to interpret the meaning and scope of the claims of a patent. It’s sort of like reverse engineering – or maybe more accurately reconstructing – what an inventor and their practitioner meant back when they drafted the patent application.

​While your patent might not be tested in a court for many years, understanding the sometimes surprising language specifics and context traps while drafting now can help set you up for success later when defending your patent or attempting to stop an infringer. The words you choose now and the support you provide when drafting are your opportunity to help derisk the process of courts and juries later interpreting what you meant. And oftentimes, claim construction can be the KEY FACTOR in resolving disputes even before litigation, with the facts that come out of claim construction deciding the monetary value and payouts in settlements.  In breaking this all down, Kristen and the panel discuss:
  • The evolution of claim terms
  • Claim construction basics and a historical look at what are called Markman hearings
  • Intrinsic evidence vs. extrinsic evidence
  • Claim construction in prosecution vs. litigation
​Kristen is joined today by our always exceptional group of IP experts including:
  • Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora
  • Dr. David Jackrel, President of Jackrel Consulting 
  • Dr. David Cohen, Principal at Cohen Sciences
  • Steve Stupp, Partner at Stupp Associates, LLC
  • Ty Davis, Patent Strategy Associate at Aurora
  • Arman Khosraviani, Patent Agent and Former US Patent Examiner 

Mossoff Minute: Drug Price Controls

In this month’s minute, Professor Adam Mossoff discusses recently proposed regulations that would misapply Bayh-Dole provisions to impose march-in rights on patent-protected innovations and create price controls via compulsory licensing. This amounts to government seizure of private property and will do tremendous harm – especially to the life sciences – if implemented. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
​

Season Four Preview

​It’s going to be another big year for patents and we couldn’t be more excited about the lineup we’re bringing you, including:
  • ​More great and inspiring inventor stories – starting in February, with an interview with James Howard, Executive Director of the Black Inventors Hall of Fame, and later in the year MultiWedge Founder, Robert Cameron, who will talk about his incredibly wild self-bootstrapped success story.
  • Since no industry is immune to its reach, including ours, we’ll also be taking an in-depth look at AI implications for patenting and whether or not AI might terminate – or even save the patent system.
  • In continuing with the roots of this podcast, we’ll be doing further exploration on the nuts and bolts of patenting including deeper dives on claim strategies, an exploration of the fundamentals of dealing with rejection during prosecution, and why continuations are one of the most important things future self will thank you for doing. 
  • We’ve also started recording for a series we’re very excited about that will explore strategies for future-proofing patents. This multi-part series will detail strategies for crafting quality patents that will increase your odds of success if faced with the PTAB or should you need to leverage the ITC to block the import of infringing inventions. 
  • And of course, we will continue to bring you expert interviews with key players in patent reform and cover any significant legislative movements around bills like PERA and PREVAIL.

How to listen

​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
  • Patent Claims: The Name of the Game. A primer on what claims are, why they're the most important building block of a patent, and how you can leverage them to get maximum value from your patent.
  • Patent Anatomy: What's in a patent? A guided walkthrough of what all you can find in a patent and how to read patents. Helpful for distinguishing differences on things like claims vs. the specification. We also have an excellent blog version.

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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Michigan Tech Innovation Week

1/19/2024

3 Comments

 
By: Josh Sloat
Michigan Tech Innovation Week

Join Us in Houghton!

We're heading north to join our friends at Michigan Tech for their 2024 Innovation Week! Dr. Ashley Sloat will be delivering an important talk on Careful Contracting. 

Husky Innovate hosts Innovation Week each year, which includes innovation and entrepreneurship presentations and panel talks that are open to Michigan Tech students, faculty, alumni, and the larger community. Hear from entrepreneurs and innovators from a variety of backgrounds. Innovation Week aims to educate, inspire, and encourage those leading innovations.
​

Careful Contracting Talk

Learn strategies for careful contracting as you work with development and investment partners, and hear how investors evaluate your startup’s risk exposure. We'll discuss everything you need to know, from engaging with an engineering firm to ultimately pitching to an investment group. Topics include IP ownership, assignment from engineering firm inventors back to you, how to avoid the traps of viral IP, and what investors want to see in your pitch deck.

When: Thursday, Jan. 25, 12-1:30 p.m
​Where: ​MUB Ballroom B
​
Learn more and register
3 Comments

    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.

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