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Jack Daniels, Mickey Mouse, and Andy Warhol Walk Into a Bar...
In this month’s episode, we’re talking about Jack Daniels, Mickey Mouse, Andy Warhol, Jason Voorhees, Winnie-the-Pooh, Lizzo, and WallStreetBets. What do they have to do with patents you might fairly be wondering? Honestly, not much.
Patents are our focus in our business and in this podcast, so we devote a lot of air time to talking about protecting ideas and inventions, but in the realm of intellectual property, patents have some pretty close cousins. In thinking more broadly about creating the largest possible moat with your IP, you also need to be considering what our guest, Mallory King, refers to as “brand protection” – or the copyrights, trademarks, and contracts necessary to protect your brand’s rights and assets.
Copyrights and trademarks in particular have seen a lot of limelight this year involving some of the biggest brands and pop culture icons. At the same time, major IP rights questions are erupting around the use of generative AI systems like ChatGPT. In addition to covering the basics necessary to help get you booted up, we’re going to use these high profile topics and Supreme Court cases as a vehicle to get a deeper understanding of copyrights and trademarks and some of the sharpest corners you should be aware of when managing your own brand protection.
Come for the SCOTUS potty humor; stay for the brand protection learnings. The past year has been a target-rich environment for comedic relief in the land of IP law. We cover a lot of ground in this episode and went to great lengths to ensure research accuracy, including attending the one-day theatrical release of Winnie-the-Pooh: Blood and Honey, back in February. After Mallory briefly coaches us up on the fundamentals of brand protection, we tackle the following:
Our Guest: Mallory King
Mossoff Minute: Patent Eligibility Restoration Act
In this month's Mossoff Minute, we discuss the introduction of the 2023 Patent Eligibility Restoration Act, its biggest criticisms, and what it solves. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
Given the importance of PERA and the ongoing debate, we’re releasing the full-length interview on YouTube. The full-length version includes:
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.
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.
By: Kristen Hansen
Illustration: Declan Wrede
When does a U.S. patent expire?
In general, a utility patent expires 20 years from the filing date of the patent application. This 20-year patent term begins at the filing date of the first U.S. non-provisional patent application, which would include the filing date of an international PCT application if that was the first non-provisional filing.
How long do provisional patents last?
Provisional patents, which function as a placeholder for a utility patent application, expire 12 months from the filing date of the provisional patent application. These applications are not examined; they truly sit as a placeholder awaiting to be converted to a non-provisional patent application, but function to the applicant’s advantage in securing the earliest possible filing date in the U.S.-based first-to-file system.
Possible exception. When a non-provisional application is filed more than 12 months after the filing date of the provisional application, but within 14 months after the filing date of the provisional application, an applicant may restore the benefit of the provisional application by filing a petition that includes a fee and a statement that the delay in filing the non-provisional application was unintentional.
Impact on 20-year term. Domestic priority benefit to one or more U.S. provisional applications is not considered in the calculation of the 20-year term of a patent. In other words, the one-year window given by the provisional is not deducted from the possible 20-year term (21 years from the filing date of the provisional application, as opposed to 19).
How long do utility patents last?
Utility patents, which protect the way an article is used and works (e.g., systems, methods, computer-readable mediums, etc.), typically expire 20 years from the date of patent application filing. However, If the application claims priority to any earlier filed applications (e.g., a related provisional application(s) or related U.S. non-provisional application(s)), the application will expire 20 years from the filing date of the earliest of such applications.
How long do plant patents last?
Plant patents, which protect newly discovered asexually reproduced plants, expire 20 years from the date of filing of the patent application. However, If the application claims priority to any earlier filed U.S. provisional or U.S. non-provisional applications, the application will expire 20 years from the filing date of the earliest of such applications.
How long do design patents last?
Design patents, which protect the way an article looks (i.e., ornamental appearance), filed before May 13, 2015 expire 14 years from the date of the patent grant. Design patents filed on or after May 13, 2015 have an expiration of 15 years from the date of the patent grant. Note that design patents are aged from a patent grant date, while plant and utility patents age from a patent application filing date.
How long do continuing patent applications last?
Continuing patent applications, which include continuations, divisional, or continuation-in-part applications (e.g., child applications) that claim priority to an earlier patent (e.g., parent, grandparent application) expire 20 years from the filing date of the earliest U.S. patent application in which benefit is claimed.
How long do international patents last?
International patent applications that are granted as national stage entry filings of the international application expire 20 years from the filing date of the international application. A continuation or continuation-in-part application claiming benefit to the international application and designating the U.S. expires 20 years from the filing date of the parent international application.
Foreign priority is not considered in determining patent term/expiration. A U.S. non-provisional application that claims priority to a foreign patent application or patent expires 20 years from the U.S. non-provisional application filing date.
Can you extend a patent?
You may only extend the concept of a patent by inventing and patenting an improvement to the originally patented invention (which is a new invention).
Patent Term Extensions (PTE) or Patent Term Adjustments (PTA), however, can extend portions of the patent term (by days, months, or years) based on adjusting for delays by the Patent Office and delays by the Applicant during prosecution. This amount of PTE/PTA is typically listed on the face of the patent.
Terminal disclaimers can further disclaim part of a patent term and typically come into play in continuation or continuation-in-part filings. A terminal disclaimer is a type of time limit on a patent. A terminal disclaimer typically comes into play when an inventor’s first patent application and a later filed patent application include claimed content that is too similar to one another. If the patent office awards a patent to the later filed patent application, then the patent office may require that the inventor file a terminal disclaimer that effectively forces the later filed patent to expire when the first patent expires.
What happens after a patent expires?
The patented invention becomes freely usable by others and is considered public domain. At this time, others may freely make and use the invention without paying royalties to the inventor(s). Note that improvements to an invention in the public domain can be covered by separate patents that may have been obtained later than the original patent. The improvements patent(s) may still remain in effect and can block others from making or using the improved invention.
Why do patents last for so long?
Many innovations require billions of dollars in R&D. The road to every success is paved with countless iterations of failures. The 20-year term gives innovators an opportunity to recapture losses and profit from their discoveries without the threat of competitors pirating and profiting from innovations they didn’t invest in to create. Since the inventions are published, competitors still have the ability to learn from the advancements, design around them, or even build upon them with improvements. The fundamental ability to license a patent, as a transferable property right, provides a bridge from intellectual to real capital and prevents this 20-year term from being a blockade to innovation.
Why do patents expire?
Patents expire to prevent the possibility of unlimited monopolies. Large entities could swallow up entire industries and prevent progress in particular technologies. The 20-year term satisfies the quid pro quo grand bargain of an exclusive, but limited, property right to inventors in exchange for an enabling (and lasting!) public disclosure.
When do drug patents expire?
Drug patents are utility patents and thus expire 20 years from the date of patent application filing. Drug patents do, however, provide some unique opportunities to extend exclusivity, not found in other patent domains. We’ve outlined some highlights below, but for a more detailed discussion of options, please see: Drug Patents and the FDA: Timelines, Exclusivity, and Extensions.
The PTE/PTA calculation may apply here to extend the application if delays occurred during prosecution of the patent.
When do medical patents expire?
Medical patents (e.g., systems, methods, computer software for medical methods, methods of treatment, etc.) are utility patents and thus expire 20 years from the filing date of the patent application.
Is there a patent term expiration calculator?
Yes. The USPTO provides a downloadable patent term expiration calculator.
Need help determining your patent term?
This can all get a little convoluted with concepts like continuations, terminal disclaimers, regulatory-based extensions, etc. If you could use some help sorting through this and maximizing your patent’s lifespan, please reach out!
Updates on the Patent Wars Saga
We're excited to introduce the Mossoff Minute: a monthly Patently Strategic Podcast segment designed to keep you informed on significant events in the patent world – particularly those events relating to the battle that rages on between the ragtag group of rebels fighting to restore our patent system to its former Gold Standard against the all too powerful forces spending billions to destroy the ladder they once climbed up on. This segment builds on our Patent Wars episode, and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements in patent reform, significant court rulings, innovation policy happenings, and occasional Star Wars references. We also publish 60 second videos from these segments to TikTok, Instagram Reels, and YouTube Shorts.
Mossoff Minute: Amgen v. Sanofi
Below is the first ever Mossoff Minute, covering the Supreme Court's recent ruling in Amgen v Sanofi and its impact on patents and innovation in the life sciences, pharma, and biotech industries.
About Professor Adam Mossoff
You might remember Adam from his involvement and exceptional insights shared in our Patent Wars episode where we discuss both the biggest problems facing patenting, as well as the best possible solutions for reform:
Or from an even more recent interview, where we discuss the history and purpose of patents in society. We couldn’t have asked for a better historical tour guide or contemporary ambassador for this important topic. Adam is a wellspring of knowledge in this domain and makes the history come to life – and connects it with modern times – in ways we could only wish our history professors had.
Short-Form Patent Videos
We are now officially on Instagram Reels, YouTube Shorts, and TikTok! We'll regularly be publishing short-form videos about all things patents, including:
We are more deeply committed than ever to our great long-form written, video, and audio-based inventor education, but we also appreciate that life is busy and sometimes 60 seconds is all it takes to get the essence of a topic. Plus, the future of the Internet has to be about more than just cats.
How to Read and Understand Patents
What’s actually in a patent? How do you read a patent? What can you learn from reading one? And where do you even find them in the first place?
Patenting can be such an essential part of early startup years, but it’s a very complex domain, with loads of special vocabulary, and all of that can make it seem less accessible than it was really designed to be. The following is a guided tour, taken through the anatomical lens of the most intrinsic and tangible piece of the process – the patent application. Our goal in sharing this is to reduce the barrier of entry, unlock for you one of the greatest libraries in the world, and help set you up with clear eyes going into your own patent journey.
It’s through the understanding of a patent's structure and parts, that you’ll quickly begin to see more clearly how the broader world of patenting works! We will break down the key anatomy, cut through the arcane terminology, and provide tips on how you can use that information for your competitive advantage. By the end of this article you’ll know where to find patents, how to read patents, and what you can – and cannot – learn from patents.
What is a patent?
A patent is a Constitutionally created property right granted for an invention and is one of several ways to protect intellectual property. A patent is essentially a deal between the applicant and the United States government, in which if the patent is issued, the patent owners are granted a limited monopoly of 20 years, with the exclusive right to prevent others from making, using, offering for sale, or selling the patented invention. The other half of the bargain is that this government-granted window of exclusivity is traded in exchange for an enabling public disclosure that teaches the public how to make and use the invention. This disclosure happens through the publication of a patent application. The purpose of this deal is to advance the welfare of the country by promoting the long term progress of science and the useful arts.
What is a patent application?
A patent application is basically a specially structured letter to the patent office that describes an invention and recites some claims that the inventor believes she's entitled to. It facilitates the public disclosure and is the basis of a protracted conversation between the patent office and examiner and the patent office and the applicant – a process that is called patent prosecution. Inventors can draft, file, and prosecute on their own or work with the assistance of a registered agent who can do these things on their behalf. Once you submit your patent application, you will have the right to claim patent pending status.
Why get a patent?
A granted patent confers upon its owner exclusive rights to exploit the invention commercially, including the monopoly to manufacture, use, and sell the invention. The recognition of a legally-binding monopoly position allows inventors to monetize their invention, while simultaneously preventing others from doing so. The decision to obtain a patent can be influenced by a range of factors, such as the nature of the invention and the specific industry. In sectors such as biotechnology, a patent can serve as a key attractor of investment and a catalyst for licensing opportunities. It could be the deciding factor for the success or failure of a startup. On the other hand, such as in consumer goods industries, a patent can be leveraged as a marketing tool, and can facilitate more favorable negotiations with suppliers, customers, and partners.
A patent is also an important tool for protecting your idea before talking with others. This is definitely something you want to consider doing before marketing an invention or attempting to pitch your product or company to investors. Public disclosure or offer for sale without filing a patent application puts you at a tremendous risk for idea theft. In fact, public disclosure before filing a patent application, is one of the top mistakes we see among inventors, that can make later patentability much more difficult, if not impossible.
A patent can serve as a key attractor of investment and a catalyst for licensing opportunities. It could be the deciding factor for the success or failure of a startup.
Why not get a patent?
Obtaining and maintaining a patent involves a significant investment in both time and monetary resources. While a granted patent offers a legally recognized monopoly and potential protection, it also requires public disclosure of the invention's details. This information becomes a matter of public record and can potentially provide valuable insights to competitors. Enforcing a patent against infringement can be a complex and costly process. In certain circumstances, it may be more advantageous for the inventor to maintain the confidentiality of the invention as a trade secret rather than seeking patent protection.
Who reads a patent?
Beyond understanding what a patent is and why you do or don’t need one, it helps to understand who it’s written for. Over the course of its life, an application can have multiple audiences – all with very different roles to play and goals in consuming and interpreting. Who all might look at an application and why?
Patent Office Examiner. A patent’s first audience is going to be an examiner at the Patent Office. You and your patent practitioner will work with the examiner through the process of prosecution as you move your patent application toward a granted patent. The application will face a very high level of scrutiny from examiners because the office will need to assess it for various metrics (e.g., usefulness, novelty, obviousness, and enablement) based on the Patent Office rules and procedures.
Investors. After getting your patent pending designation (by filing a provisional, nonprovisional, or international patent application), you can now approach investors with a safeguard in place. This will be a much higher level look and will largely be focused on what kind of protections the patent affords, but patent quality still matters a great deal. In an early stage company, funding is critical for survival, so you want the investor to believe in your technology.
Courts/PTAB. Once you have a granted patent, you may either need to assert your rights against infringers or potentially defend against someone trying to invalidate your patent. This could (unfortunately) involve proceedings at the USPTO with the Patent Trial and Appeal Board or within the court system including District Court, Federal Circuit Court, and maybe even the Supreme Court. This audience can include lawyers, judges, and jurors – all with varying degrees of technical and legal expertise.
A person skilled in the art. Going back to the grand bargain mentioned above, the ultimate intended audience (from the government’s perspective anyway) is a person skilled in the art, who is looking to build or build upon the idea – and hopefully with a lucrative license from you! In legal parlance, you will also often see this referred to as "a person having ordinary skill in the art” or PHOSITA, and is the patenting persona of a person who has an average knowledge/skill level in a particular art.
What can I learn from a patent?
We break the parts of an application down in great detail in sections to follow, but it is helpful, at a high level, to understand the kinds of information you will and won’t find in a patent. You will be able to find the following in any published or issued patent application:
What won’t I learn from a patent?
There is also a fair amount of invention and patent associated data that you might expect to find in a patent that you won’t. This is largely due to the static nature of the document once published or issued. The patent is frozen in time and will not tell you what happened later. You will not find the following in a patent:
Some of this information is freely available in other tools like the USPTO’s Patent Center, via other private, paid databases like LexisNexis, and via old school methods like picking up the phone.
What is the difference between a published application and an issued patent?
One point of confusion we often see, especially among inventors newer to patenting, is in the difference between a published application and an issued patent. The difference between a published application and an issued patent lies in the stage of the patent prosecution process we mentioned earlier. Patent prosecution refers to the interaction between the patent applicant and the Patent and Trademark Office (PTO) examiner. The PTO examiner ensures that the claimed invention is useful, novel, and non-obvious. If the claims don't meet the standards, the examiner raises objections and the applicant can modify the claims or argue with the examiner.
A published application is the initial document filed by the applicant, including the claims they want to protect. It’s worth mentioning that the application gets published 18 months after its initial filing date whether or not it results in an issued patent unless there’s a non-publication request.
An issued patent, on the other hand, is a granted patent that has gone through prosecution and has claims that have been approved by the examiner. Everything else about the document will be the same as the published application.
Practical tip: The distinction between the two can be identified by looking at the upper right-hand corner of the document. A published application has a "Pub. No." label, while an issued patent has a "Patent No." label. The published application also has a 7-digit number preceded by the year of publication, while an issued patent has a 6 or 7 digit number.
What are the types of patents?
There are several different types of patents to consider, depending on the nature of your invention and what aspects you’re looking to protect.
Sections of a Patent Application
A patent application has the following four sections: (1) Front/cover page(s), (2) Drawings, (3) Specification, and (4) Claims
(1) Front/cover page(s)
The front page(s) of a patent typically include the Title, an Abstract, and Drawings. These provide a summary of the invention, but are not the main sources for determining the scope of the patent. The cover sheet is usually prepared and filed by the Patent and Trademark Office (PTO) when the patent is published, based on information provided by the practitioner.
The Drawings (also commonly referred to as figures) in a patent are intended to help the reader understand the invention and typically show all the elements claimed. For many types of applications, the figures can basically function as a storyboard for explaining the invention. Exceptions are rare, such as for chemical compounds, but most US patents include drawings. If a drawing is labeled as "Prior Art", it documents related processes that existed before the invention and is not part of the claimed invention.
The specification, which follows the front page, provides context for interpreting the claims section. It usually includes the following elements:
Practical tip: The background can be the best starting point for a reader, as it provides an understanding of the inventors' perspectives on the current state of the field and any problems or deficiencies they aim to address.
Defining new things sometimes requires new vocabulary. The specification also gives inventors some flexibility in defining terms (usually in the Detailed Description), as they are essentially their own lexicographer. Terminology and definitions can be included in the specification, and the claims are interpreted in part based on these definitions, as well as the general state of the art and the plain meanings of terms at the time of filing.
The Claims section is the heart of a patent application and is located at the end of the document. The Claims are the main focus of an application and are the subject of argument during prosecution. They are reflected in the Summary, Detailed Description, and Abstract sections.
Old West Metaphor. In trying to break down some of this vocabulary, it can be helpful to think of claims in the context of an old west metaphor, where the patent claims are likened to a mining or homestead claim. An old west claim would need a map of the context, the surrounding landscape, and a clear delineation of the exact boundary of the mine being claimed within the surrounding landscape. Everything else in a patent application largely exists to provide context for the invention claims, but the claims themselves point out the exact boundaries of what the inventor believes they are entitled to own.
Claims Define Infringement. The main purpose of claims is to be able exclude others from making or using the invention. An issued claim provides the claim owner with a monopoly for a limited time period (20 years from filing) and can be very valuable. The claim owner can sue for infringement if someone is practicing the invention. The basic question in infringement cases is whether every element of the claim is being practiced by the alleged infringer. If I have claimed A, B, and C – and someone tries to just copy A and B on the path to doing something else, that is not infringement. If someone copies A, B, and C, that is infringement. If someone copies A, B, C, and adds D, that is infringement, but that person could still file to patent D, but would not have freedom to operate D without obtaining a license from you for A, B, C. Ninety percent of the mental exercise in drafting patents is in the strategy of looking around corners, anticipating the future, and trying to capture as many would-be infringers as possible.
Ninety percent of the mental exercise in drafting patents is in the strategy of looking around corners, anticipating the future, and trying to capture as many would-be infringers as possible.
Where can I find patents and their related information?
The universe of patent literature is one of the great libraries of the world – and it's free! The amount of stored knowledge is truly under appreciated. Once you know how to search or you have someone searching for you, you can learn just about anything!
To find and download a patent or patent application, you can use the following free search sites:
If you're looking for professional assistance, you can also reach out to practitioners or search firms who have access to additional databases and can provide deeper analysis. If you're interested in learning more, we encourage you to check out our episode on Patent Searching.
Authors & Contributors.
We're excited to announce that we're welcoming Gabrielle Krakow to the Aurora family this summer! Gabrielle joined us in June, starting her role as our Growth and Tech Intern. She will work alongside me in educational content creation, short-form video development, SEO improvement, and internal workflow optimization.
Gabrielle is an undergraduate at Yale University majoring in Computer Science and Economics. She has experience in the technology industry, including developing two award-winning mobile applications. Gabrielle has also worked in the Yale Strategic Communications Department, live-tweeting and creating Instagram graphics for the Yale women's basketball team.
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.