Prenuptial Patenting

By: Josh Sloat

Prenuptial Patenting

Responsible Engagement with Engineering Firms

You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. Like many others, you may turn to the aid of an engineering firm or dev shop. This relationship is a marriage of sorts. But it’s a marriage that is designed to inevitably end in divorce! How cleanly, smoothly, and successfully this separation goes depends on the steps that you take before it officially begins. 

Both parties come to the relationship with existing assets – IP, software, prototypes, ideas, documentation, etc. More will be created collaboratively throughout the course of the relationship. But how do you ensure you exclusively get back out what you came with and also get what you contributed and uniquely paid for? 
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​In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion into Responsible Engagement with Engineering Firms, or what we affectionately refer to here as “Prenuptial Patenting”. Ashley and our all star patent panel walk you down the aisle and explore everything you need to know to experience marital bliss and an amicable divorce with your engineering partners. This talk covers the full life cycle from vetting partners to post development concerns and everything in between – with particular focus on relationship complexities like IP ownership, assignment from engineering firm inventors back to you, and how to avoid the traps of viral IP.

Ashley is also joined today by our always exceptional group of IP experts including:

⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ David Jackrel, President of Jackrel Consulting 

Availability

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.

Topic and guest participant requests

If you’re an agent or attorney and would like to be part of the discussion or an inventor with a topic you’d like to hear discussed, please reach out.​If you’re an agent or attorney and would like to be part of the discussion or an inventor with a topic you’d like to hear discussed, please reach out.

Resources

• Related content. Check out prior episodes if you'd like to learn more about speaker referenced topics including Novelty and Inventiveness, Inventorship, Ownership, and Software Patents. And for a deeper understanding around low cost options for early protection of your idea, give our Provisional Patents post a read.
• 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.