By: Ashley Sloat, Ph.D.
Examiners at the USPTO have now been directed to make all information sent to them of record (attached to an interview summary) even if you explicitly indicate that the information is for discussion purposes only, for example in an interview. What this cautionary tale should teach us is that now more than ever any communication with Examiners should be strictly oral when possible.
My concern with this new policy is how will the court system treat "proposed claim amendments?" Will these proposed claim amendments also be viewed under prosecution estoppel? In other words, is this ground that will be deemed as relinquished to the public since the amendments were proposed and subsequently made of record? If so, I fear that interview practice at the USPTO will significantly suffer. It is much more difficult to discuss possible claim amendments with an Examiner if sharing documents in advance creates a record.
Proceed with caution folks - and hope that what I stated above will not be the case.
By: PhD over easy
Where are they now post. Check out Ashley’s previous post here
Describe your job and what you do on a day-to-day basis.
I, along with my colleagues at Aurora, develop intellectual property strategy for early stage startups and then execute the patent portion of that strategy. This may include performing patentability or landscape searches on the technology, drafting patent applications (design or utility), drafting responses during prosecution, and/or handling annuities for the portfolio. Aurora Consulting also has docketing and file management services for clients that do not also retain a law firm. My day-to-day includes client work, business development, some accounting, and social media based marketing. If you are more curious about Aurora Consulting LLC and the changing patent landscape, we have a blog that you can follow: Patently Strategic Musings.
How did you transition from your previous job to this one?
I worked with Hudak Consulting Group LLC over three years, and at this point, the owner, Jessica Hudak, had decided that she was going to pursue another aspect of her career. This presented an amazing opportunity for me to buy the company from Jessica. Thus, most of 2016 was spent learning additional backend pieces of the business, rebranding the company, and assuming any client accounts for which I was not previously responsible. 2016 culminated in my signing a purchase agreement and assuming ownership of then Hudak Consulting Group LLC, now Aurora Consulting LLC, January 1, 2017.
Tell us about your academic background
I studied microbiology (bacteria) in my undergraduate career and immunology (immune system) in graduate school. I studied the immune-mediated disorders, Multiple Sclerosis (immune cells attacking nervous system) and Graft-versus-Host Disease (immune cells attacking healthy tissue after bone marrow transplantation). We found that inhibiting Notch signaling significantly reduced the severity of both diseases.
What is one piece of advice you would give to someone looking for a job now?
Network, network, network! I more firmly believe in this mantra than I ever have before. The path I took to where I am involved significant connections from networking. New clients that come to Aurora are typically through connections; previous clients that liked working with us or someone who knows someone who knows someone. Also, don’t be afraid to continue to try to better yourself. There are many excellent networking books, communication skills books, etc. that you can use to enrich your interactions with people and get to know the people that can help you get where you want to be.
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.