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​​Patently Strategic Musings

InnovatorMD World Congress 2024

7/8/2024

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By: Josh Sloat
InnovatorMD World Congress 2024

Government Grants and Patent Rights Talk

Please join us for the largest physician innovation event of 2024! 

We are extremely excited and honored to be presenting alongside an incredible speaker lineup – delivering a talk on Government Grants and IP Rights at the InnovatorMD World Congress 2024, taking place later this week.

About the talk. The enormous expense of R&D can be a massive financial hurdle for startups. Federal grants like SBIR and STTR can be a great solution for many. These grants combine to provide over $4 billion annually in support from federal agencies like the National Institutes of Health!!! Despite being a very attractive source of non-diluting capital, they can come with some serious strings attached, particularly for your IP ownership and licensing rights. In this talk, we'll explore these grants and some of their biggest gotchas.
​

InnovatorMD World Congress 2024

The InnovatorMD World Congress event brings together physicians and health tech startups from across the globe for three action-packed days filled with influential speakers, compelling discussions, and opportunities to redefine your career.

Time: July 11, 2024, 8:00 AM PDT – July 13, 2024, 1:00 PM PDT
Location: Online via Zoom
Discount: Use the code ASHLEY100 to save $100 on your registration.
​

About InnovatorMD

InnovatorMD's mission is to educate clinicians on advances in care delivery models, medical devices, digital health, and pharmaceutical innovation that will help them improve patient care and make their clinical management more efficient, meaningful, and fulfilling. InnovatorMD is composed of a group of physician innovators from various backgrounds with a single vision – to spread physician innovation to the rest of the world and to have a positive impact on patient outcomes and physician wellness while moving the healthcare industry forward. Aurora has been working with this wonderful group on Master Classes, Workshops, and WorldCongress events since 2020!
​
Learn More and Register
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Patent Profanity

7/2/2024

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By: Kristen Hansen
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Like George Carlin's Seven Words You Can't Say on TV, there are certain words you shouldn't use in patent applications. The following is meant as a guideline for avoiding the use of certain “patent profanity” terms.  Some of the terms are okay to use with a specific intent and with specific implications, but are best to avoid if you do not know how to use them in that manner. 
 
“Patent profanity” refers to the use of certain words that arguably limit the scope of a claim or alter the meaning because they use absolute phrasing or terms. Often these words are found in the specification section of a patent as well as in the prosecution history.
 ​

Patent Profanity Do's and Don'ts

Describing an aspect of the invention with an absolute term suggests that the invention is not complete without the aspect. Well drafted patent applications should instead include generic language, variations, alternatives, and examples to identify the broadest possible scope of the invention. In practice, you should:​
  • Avoid patent profanity for some embodiments to create broad claim scope and catch those who attempt to design around a patent
  • Intentionally use patent profanity to define a narrow claim scope position that may be useful for patentability/validity

Example Patent Profanity Terms

​The tables below are not exhaustive, but serve as concrete examples of terms you should never use, terms you should try to avoid, and terms that can only be used with caution if used correctly. We've also made these tables available in a downloadable format on our resources page.

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The use of the following terms without critical thought as to why the terms are necessary can result in narrowly construed claims in claim construction proceedings, litigation proceedings, and other proceedings. These terms characterize the language in an absolute form that is simply not necessary to describe/enable an invention.

Never Use These Terms...

absolute
exactly
irreplaceably
pivotal
absolutely
exclusive
key
pivotally
all
exclusively
mandate
preferred​
always
exemplary
mandated
prior art
best
exhaustive
mandatorily
required
broadest
imperative
mandatory
requirement
certain
imperatively
most
requires
certainly
important
must
requisite
compelling
importantly
necessarily
shall
critical
indispensable
necessary
should
critically
indispensably
necessitate
special
crucial
inescapable
necessitated
superior
crucially
inescapably
necessitates
unavoidable
definitely
inevitable
necessity
unavoidably
definitive
inevitably
need
unique
definitively
inextricable
needed
uniquely
each*
inextricably
needs
unrivaled
entirely
inherent
never
very
entirety
inherently
only
very important
essential
instrumental
optimal
vital
essentially
instrumentally
paramount
 
essentials
integral
perfect
 
everything
invention
perfected
 
everywhere
irreplaceable
perfectly
 

Avoid Using These Terms...

authoritative
farthest
major
poorest
authoritatively
finest
man hours
purest
biggest
foremost
master
shortest
black hat
forever
maximize
simplest
black list
fundamental
maximum
slave
blackhat
furthest
minimize
slightest
blacklist
greatest
minimum
smallest
compel
highest
nearest
ultimate
compelled
intrinsic
newest
ultimately
compulsorily
intrinsically
nothing
urgent
compulsory
invaluable
nowhere
urgently
conclusive
invaluably
obvious
valuable
conclusively
invariably
obviously
white hat
constantly
largest
oldest
white list
decisive
latest
ought
widest
decisively
least
overarching
worst
determinative
littlest
peculiar
 
earliest
longest
perpetual
 
easiest
lowest
perpetually
 

Only Use These Terms Correctly...

embodiment
​embodiments
implementation
implementations
Always use “In some” in front of these terms or make certain the term is plural and covers all of the examples.

Avoid “In one” and “in another” nomenclature – because if it is indicated for only the one embodiment/implementation, it will not be considered as usable for multiple of your specification embodiments with a literal read of the specification into the claims.
each
Avoid (especially in claims if possible); ask yourself, does it really have to be “each X”?
every
Ask yourself, does it really have to be performed for “every X”?
configured to
Unless this term is in the claims section or is being recited in the specification as exact claim language, it does not belong in the specification UNLESS you use the term purposefully as “X is configured to Y” FOLLOWED BY exactly what structure(s) are performing a function. Multiple examples are best here. Avoid listing things associated with “configured to” language and use separate sentences for each example. If you forget to add the examples, the “configured to” language is useless because you have no actual description for what or how something is configured to do a function.  Further, during prosecution, you will not have 112 support if you have zero examples for how “X is configured to Y.”  i.e., you have no support for actual structure to perform the function.

Patent Profanity Case Law Lessons

​There are numerous case studies highlighting the significance of patent profanity:
  • T-Mobile USA, Inc. avoided penalty by drawing attention to their competitor's use of the phrase “very important feature” in their patent. As T-Mobile did not list the same “very important feature” in their patent, it was decided that there was no violation.
  • Mylan Pharmaceuticals, Inc. won their case against Pharmacia & Upjohn Company due to the latter's use of the terms “key feature” and “critical feature” in their communication with the Patent and Trademark Office (USPTO). This highlights the importance of avoiding patent profanity in all aspects of the patent process.
  • In Biovail Corporation International v. Andrx Pharmaceuticals, Inc., the latter took advantage of the use of “necessarily” in their competitor's communication with the USPTO. This led to a narrowing of the scope of Biovail's patent.
  • Microsoft Corporation won their case against Research Corporation Technologies, Inc., by focusing on their use of the phrases “the present invention” and the “objects of the invention” in their patent, thereby limiting the protection offered.

Go Deeper on Patent Quality

Patent profanity is just one of the many topics pertaining to quality patents that Kristen discussed in her Patently Strategic Podcast episode on quality drafting practices. Check it out below or wherever you listen to podcasts.
​
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Quality Patents

7/2/2024

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By: Josh Sloat
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Crafted to Stand the Test of Time

Is your patent a vanity piece of paper for your office wall? Or is it a reliable, defendable, assertable, property right? The difference is often quality.

Is your patent simply a transactional cost and a large pile of legal bills for your startup? Or is it a leverageable asset worthy of attracting precious investment dollars, worth its cost in multiples of valuation? The difference is often quality.

Is your patent application only good enough to get through the examination process? Or has it been crafted to stand the tests of time and varied audiences if you later need to assert that document against an infringer, find yourself litigating with it in an Article 3 Court at the hands of a judge and jury, God forbid, end up having to defend its validity at the PTAB, or even needing to use it to block pirated imports at the International Trade Commission? The difference is often quality.

As an inventor, you cannot leave this to chance or to blind trust in the wrong professional. 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 is often quality.
​

Quality will be our focus for a good chunk of the remainder of this season. What goes into a quality patent, and where possible, how do you get it without breaking the bank? In this first episode of our quality series, Kristen Hansen and the panel discuss:​
  • What do we mean when we say patent quality?
  • Why is patent quality important?
  • How to balance quality and budget
  • The importance of searching, continuations, and draftsperson domain expertise
  • Very practical tips, tricks, examples, and Kristen’s Musts for drafting quality applications
Kristen is joined today by our always exceptional group, including:
  • Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
  • Dr. David Jackrel, President of Jackrel Consulting
  • Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP
  • Ty Davis, Patent Strategy Associate at Aurora

Mossoff Minute: Patents and the Founders

In this month's Mossoff Minute, in honor of celebrating America’s independence, we’re flashing back to our conversation with Professor Adam Mossoff about why patents exist, how the US system differed from all predecessors, and how the Founders’ notions of the core principles of democracy are inextricably linked with the societal good that comes from innovation and intellectual property protection. ​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
  • CAFC Chronicles: Costly Tales of Claim Construction Fails
  • Patent Claims: The Name of the Game
  • Claim Construction: Building Strong Patent Foundations
  • Patent Anatomy: What's in a patent?​
  • Patent Searching: Sleuthing Your Way to Stronger Patents
  • Why Patents Exist with Professor Adam Mossoff
  • Patent Wars: Innovators, Revolutionaries, and the Race to Reform
  • American Inventor Horror Story: 10 Years of AIA and the PTAB

Related Reading
  • Patent Anatomy: What's in a Patent?
  • Patent Profanity Dictionary
  • Enablement and Written Description: Hindsight Gotchas

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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    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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