|
By: Josh Sloat
A Lifeline to Future Self
There’s not a more important concept that’s more widely misunderstood by those newer to patenting than continuations. So we’re dedicating Part 3 of our series on quality patents to everything you need to know about this essential step for future proofing and increasing the value of your portfolio.
Void of pursuing continuations, the language of your patent is frozen in time at issuance. The specifics of the enforceable boundaries of your protection are forever fixed to the claims you chose to pursue with your initial application – but not necessarily with the full breadth of your invention as conceived. For many reasons, practitioners and inventors will often choose to limit how much of an invention is claimed in an initial application. But then the future happens. Case law changes. New competitors arise. New prior art surfaces. And challenges may come in the form of litigation or IPRs as we discussed in our last episode. With a closed family, all you can do is hope you had the right foresight to predict this future with your static document. Continuations, on the other hand, allow patent owners to keep patent families open – in other words, not textually frozen in time at issuance. When done right and timely, the patent family becomes a series of living documents, allowing a patent owner to claim and capture the full scope and breadth of the conceived innovation, but with the benefit of hindsight, known R&D outcomes, and changing market conditions. More Robust and Valuable Patents
Keeping a patent family open comes with significant long term strategic benefits that can make your patents considerably more robust and consequently, considerably more valuable given the ongoing strengthening options they provide in terms of defensibility and assertability. As the panel will discuss in depth today, continuations keep options open for proactively and defensively helping to hedge against case law changes, working as prior art backstops with the PTAB, and in opening opportunities for drafting new claims to square more directly on infringers in a dynamic, competitive landscape. As an added bonus, especially for startups, continuations can also make patents more budget friendly up-front if done correctly.
We frame things a lot on this podcast in terms of doing kind by future self, but continuations are the closest equivalent of past self grabbing a life line to toss out to future self in a time of need! Episode Overview: Quality Patents Part 3
Ty Davis, Patent Strategy Associate at Aurora, and co-host Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, lead today's discussion with our all-star patent panel delving deeply into continuation practice. Along the way, Ty, Ashley, and the panel discuss:
Ashley and Ty are joined today by our always exceptional group of IP experts, including:
Mossoff Minute: RESTORE Act
In this month's Mossoff Minute, Adam discusses the introduction of the RESTORE Act. This is an exciting new piece of legislation aimed at restoring patent owners’ abilities to obtain injunctions to stop infringers from continuing to steal innovations after being found guilty of doing so. 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
Related Reading 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.
0 Comments
By: Josh Sloat
Illustration: Declan Wrede
The Importance of Injunctions in Property Rights
Some significant new research has been released on the patent system and how it's currently functioning. This research focuses on the ability of patent owners to stop people from infringing on their patents. In legal terms, this is known as an injunction. The concept is straightforward: just as you can obtain an injunction to prevent someone from trespassing in your home or stealing your bicycle, patent owners should be able to get an injunction to stop someone from using their invention or technology without permission.
An injunction is a court order that can compel the intruder to vacate the premises, return the property, or stop using it without permission. This legal mechanism is vital as it serves as a backstop to the ability of individuals to negotiate in the marketplace. Essentially, your ability to say "no" to someone using your property without permission enables you to demand fair compensation for its use, be it the sale of your home, your bicycle, or new technology protected by a patent. Supreme Court's 2006 Decision on Patent Injunctions
Unfortunately, a Supreme Court decision in 2006, known as the eBay decision, introduced a new test for receiving injunctions. Prior to eBay, injunctions were rightfully and practically a given if infringement was found. This new four-factor test has since had a significantly negative impact on the ability of patent owners to enforce their property rights. This claim has been hotly debated by those looking to further weaken the patent system, but new research has proven the devastating effects.
The Impact on Patent Owners: Statistical Evidence
Recent research by Dr. Kristina M.L. Acri née Lybecker of Colorado College offers concrete statistical evidence of this impact. According to her rigorous statistical analysis, since the eBay decision, patent owners who license their patents — such as universities, inventors, and small startups – have seen a 91.2% reduction in their ability to obtain injunctions. Even manufacturing companies have experienced a 66.7% reduction in their ability to receive injunctions when others use their patents without permission.
Since the eBay decision, patent owners who license their patents – such as universities, inventors, and small startups – have seen a 91.2% reduction in their ability to obtain injunctions to stop others use their patents without permission. Professor Adam Mossoff discussed this critical research in a recent Mossoff Minute: The Broader Implications: Devaluation of Property Rights
This data is significant as it confirms a fundamental issue in the patent system today: patents are not being secured by courts as property rights. The inability to prevent others from stealing your property undermines and devalues that property.
Think of it this way: if someone started living in your bedroom and you couldn't kick them out, the value of your home would undoubtedly decrease. Similarly, in patent law, the fact that you cannot enforce your exclusive right against others leads to a devaluation of your patent in the marketplace. SCOTUS Got eBay Wrong: Statistical Evidence
The Supreme Court justified its eBay Inc. v. MercExchange, L.L.C. decision by claiming it was applying a long-standing historical test for granting injunctions to patent owners. However, Professor Mossoff conducted an extensive review of all 19th-century patent cases – amounting to approximately 899 cases – and discovered that courts applied this so-called historical test exactly zero times. Yes, zero out of 899 cases.
The zero instances of test application highlight a critical point: despite the Supreme Court's justification, there was no historical precedent for their four-factor test. This discovery confirms that the Supreme Court changed the law on injunctions in 2006 and did so based on a historically inaccurate premise. I took a look at all of the patent cases in the 19th century, approximately 899 of them. And I found that the number of times that the courts applied this test that the Supreme Court said in 2006 is a long-standing historical test, is zero. The Road Ahead: Reform Needed
This issue has destabilized and undermined the role of patents as property rights in our modern innovation economy. This research underscores the urgent necessity for evidence-based policymaking in rectifying this important system that has driven innovation for over 200 years. As Congress considers patent system reforms, or if the Supreme Court decides to revisit its 2006 ruling, this data will be crucial. The need for robust and fair protections for patent holders cannot be overstated. Ensuring that inventors can reliably protect their property rights is vital for encouraging ongoing innovation and maintaining the health of our innovation economy.
The RESTORE Act
The RESTORE Act was recently introduced in Congress, with the stated goal of restoring the presumption that courts will issue an injunction to stop patent infringers. The Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive (RESTORE) Patent Rights Act of 2024 has been sponsored by Senator Christopher Coons, Senator Tom Cotton, Representative Nate Moran, and Representative Madeleine Dean.
We unpacked this exciting news with Professor Mossoff and also tackled some of the bigger questions and criticisms surrounding the bill.
You can read the very brief bill language, it's findings, and one-pager using the buttons below.
Going Deeper on Injunctive Relief
To learn more about injunctions and the damage that's been caused by the inability to get them, listen to our Patent Wars podcast episode where we discuss the biggest problems plaguing the patent industry (injunctions are among the big three), with the reformers looking to fix it.
The Mossoff Minute: Patent Shorts
This blog post is a summary created from several installments of the Mossoff Minute, where we explore crucial developments in the world of patent law and its broader implications for innovation. Stay tuned for more insights, updates, and short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
By: Josh Sloat
Prosecution Pointers to Survive an IPR
The most terrifying thing that can happen to a patent owner is receiving what’s called an IPR – or Inter Partes Review – petition. This is a tool that accused infringers can use to invalidate patents. And they have … to alarming effect. As we’ve discussed, the kill rate at the PTAB is staggering. The Patent Trial and Appeal Board – or as regular listeners of this audience more commonly know it as, the "Patent Death Squad" – has racked up a claim execution rate north of 84% and the death of thousands of valid patents at the hands of infringers looking to profit from innovations they didn’t invest in to create. This is an institution that is clearly out of balance and screaming for reform.
And while we continue to diligently work toward those necessary reform solutions, we also have to deal with the world as it is and craft the highest quality, most future-proof patents possible. So we’re dedicating Part 2 of our series on Patent Quality to creating a guide for how to help IPR proof your patent – things you can do when you write and prosecute patent applications before an examiner to maximize the likelihood that the resulting patent will survive the IPR that it could eventually experience if it’s a valuable patent. Guest Host: Matt Phillips
Your expert author of this guide is someone who’s spent considerable time in the belly of the beast, successfully representing both petitioners and patent owners. Our guest host today is Matt Phillips. Matt is a founding partner at Laurence & Phillips IP Law, a firm that has been recognized multiple times by US News & World Reports as one of the top fifty Tier 1 firms nationwide for patent law. Formerly, he was a partner at an AmLaw 200 firm, law clerk for Judge Alan D. Lourie at the U.S. Court of Appeals for the Federal Circuit, patent examiner at the USPTO, and communications systems engineer. Matt has a doctorate degree in electrical engineering.
Matt’s practice focuses on the types of proceedings that can happen with your patent after it’s been granted – including review proceedings at the PTAB, reexaminations, and reissues. According to Matt, post-grant proceedings are about 80% of what he’s done for the past 10-15 years. He also created and taught the “Post-Grant Patent Practice” course for the Patent Resources Group for eleven years and is a co-author of a two-volume treatise of the same name. Matt has taught as an adjunct law school professor. He has published over 40 articles on post-grant patent topics and been an invited speaker around the country and internationally on post-grant topics. We couldn't imagine a better host to help us navigate this topic. Episode Overview: Quality Patents Part 2
Building nicely on so much of the framework established in the prior episode of this series on crafting quality patents, Matt and the panel discuss:
Matt is joined today by our always exceptional group of IP experts, including:
Mossoff Minute: Injunctive Relief Studies
In this month's double-feature Mossoff Minute, Professor Adam Mossoff discusses recent studies featuring significant statistical analysis empirically proving that there are fundamental issues with the patent system when it comes to obtaining injunctions to stop infringers from stealing your IP. 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
Related Reading
Transcripts We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.
By: Josh Sloat
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!
By: Kristen Hansen
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:
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.
Never Use These Terms...
Avoid Using These Terms...
Only Use These Terms Correctly...
Patent Profanity Case Law Lessons
There are numerous case studies highlighting the significance of patent profanity:
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.
By: Josh Sloat
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:
Kristen is joined today by our always exceptional group, including:
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
Related Reading
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.
Guest post by: Neil Thompson
Picture this: a sleek startup event venue with dimmed lights, a stage, and an audience eagerly awaiting the pitch competition. The air is filled with a mix of excitement and nervous energy. You're a technical founder about to give your pitch. You have some misgivings, though.
All important questions! Consider joining a group to help you answer them.
The Teach The Geek Pitching Society is a group of technical founders who meet to hone their pitches, interact with other founders, and learn from experts that they'll need for their businesses. Investment dollars are hard to come by. Making sure that the pitch is airtight is a significant step towards company success! Learn more about the Society and join the waitlist at teachthegeek.com/pitch. Aurora's own Dr. Ashley Sloat was also recently featured on the Teach the Geek Podcast, where we discussed her leap from academia into the patent world, what patent agents do, and public speaking in the space. Listen and learn more below.
By: Josh Sloat
Illustration: Declan Wrede
Inventor Stories Vol. 3
We’ve seen few entrepreneurial success stories that haven’t involved heavy doses of perseverance, grit, observation, and creative problem-solving. Today’s guest possesses these qualities in spades. And while I can’t necessarily recommend some of the more death-defying specifics of his approach … at least not without a lot of “don’t try this at home” fine print :) … I do think that most inventors and aspiring entrepreneurs will benefit immensely from studying our guest's thoughtfully crafted, time-tested, and wildly inventive approaches to innovation and business.
Robert Cameron is the Owner and CEO of Multi Wedge – as well as the inventor of some brilliant products sold under the same name. Multi Wedge non-marring pry tools are designed to pry delicate materials without damage. These are excellent tools for woodworking, electrical wiring, delicate mechanical work, and so much more. Robert’s wedges were recently tested by SpaceEx and used in the manufacturing process of Jet Engines at G.E. Aviation. And of slightly less significance, but much closer to home, found under the Christmas trees of several of my closest relatives this past December! Robert has molded 1.3 million 3-piece sets, 3.3 million single wedges, and has been selling Multi Wedge in over 18,000 stores since 2010. I met Robert back in October at the US Inventor Conference in DC. I was lucky enough to bump into him over dinner when he shared his incredible story with me. It's one of the funniest and most inspiring success stories you’ll hear. Along the way, Robert and I discuss:
Mossoff Minute: Patent Litigation Study
In this month's Mossoff Minute, Professor Adam Mossoff discusses findings from the recently published World IP Day Patent Litigation Study. This study clearly shows problems with the patent system but not the problems you typically hear from the companies that have been dominating the patent policy discussions for the past decade. Adam also highlights the importance of injunctions and damages – something we'll be discussing a lot more in segments to come. 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
By: Josh Sloat
Costly Tales of Claim Construction Fails
In this month's podcast episode, we’re talking about costly tales of claim construction fails. This is the final episode in a three-part series focused on the fundamentals of patent claims and claim construction. Part one discussed the basics of claims and claim strategies. Part two laid down the essentials around claim construction. This final episode in the arc is a very practical application of it all, explored through three illustrative Federal Circuit Court of Appeals patent cases that are chock-full of actionable claim drafting insights. As you’ll hear today, the difference between getting this right and getting it wrong is the difference between a valid patent and an invalid patent – and millions of dollars awarded from infringement decisions vs. ending up with a worthless piece of paper. Life is too short, and legal bills are too costly to make all of your own mistakes, so fortunately for us and future selves, we get to learn these legal lessons vicariously.
In this month’s episode, Dr. David Jackrel, President of Jackrel Consulting, leads a discussion into three real-world applications for patent claim construction, as tested and decided upon by the United States Court of Appeals for the Federal Circuit (CAFC for short). This is the highest court in the land under the Supreme Court for handling intellectual property disputes – and establishes much of the legal precedent the patent world has to go on … for better and for worse. The panel dissects the claims for each case, discusses the court’s analysis, and provides tips and strategies for more effective claim drafting in light of the strengths and weaknesses of the litigated patents. Dave is joined today by our always exceptional group of IP experts including:
Patent Quality Series Preview
It’s impossible to overstate the significance of these concepts in terms of crafting valuable, assertable, and defendable intellectual property rights. So much so that while this episode marks the final installment of our focus directly on claims, in the coming months, we will be building on the framework laid down by this arc to go much deeper and wider on what it means to create quality patents and how the decisions you’re making now could play out later not just in Article 3 courts like the CAFC, but also in venues like the PTAB and International Trade Commission when asserting or defending your claimed property rights.
Mossoff Minute: Price Control Mania
In this month's Mossoff Minute, Professor Adam Mossoff discusses the ill-advised price control mania presently sweeping the globe and its predictable impacts on free markets and innovation if we continue down the current path we’re precariously walking. 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
Related Reading
Aurora Hiring Links
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
Join us in New Mexico!
Join us in early May at the 4 Corner's Energy Conference in Farmington, NM. Our very own Ty Davis will be working a booth and available to answer all of your energy-related patent questions. We are also proud sponsors of this great event that has the potential to play a significant role in keeping the San Juan Basin a vital resource in national energy production!
About the Conference: Energy enthusiasts from all around will gather to discuss the latest trends and innovations in the industry. At the conference, you'll have the opportunity to connect with industry experts, participate in engaging panel discussions, and explore cutting-edge technologies. The 4 Corners Energy Conference will be held May 8th and 9th, 2024 at McGee Park near Farmington, New Mexico. The conference will feature presentations by industry and regulatory professionals on new technology, safety, and current regulatory compliance. Formerly the Four Corners Oil & Gas Conference, the Four Corners Energy Conference has expanded its scope to include all energy production industries in the San Juan Basin. |
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. Archives
September 2024
Categories |
RSS Feed