By: Josh Sloat
Illustration: Declan Wrede
SPARK.ed Patenting Series
Aurora is partnering with Ann Arbor SPARK to deliver a three part SPARK.ed series. You've had questions around patenting and the SPARK team has been listening! We've put this series together to address the most common questions that arise from startups within the SPARK ecosystem. Our very own Ashley Sloat, Ph.D. will be the instructor for all three talks.
Part 1: Patenting in the Early Years: A coming-of-age story Part 2: Decrypting Software Patents: Key Insights for IP Success Part 3: 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. In this talk, we discuss everything you need to know before and during the course of engaging with an engineering firm. We’ll cover IP ownership, assignment from engineering firm inventors back to you, and how to avoid the traps of viral IP. Time and Location: Thursday, December 9, 2021 at 11:30am - 12:30pm | Free Online Event Patent Education for You!
To help reduce the IP barrier of entry for early stage founders and startups, we regularly make our talented staff available for speaking engagements at conferences, competitions, accelerators, and incubators. We also partner with groups like Ann Arbor SPARK, XLerateHealth, and InnovatorMD to host live webinars. Please reach out if you'd like to schedule a talk or workshop for your group, and see our Events page for a sampling of past and upcoming talks.
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By: Josh Sloat
Illustration: Declan Wrede
Episode 7: American Inventor Horror Story
10 Years of AIA and the PTAB
Listen in as we discuss the impact of the AIA and the PTAB with inventors gathered as part of the "Decade of Stolen Dreams" rallies, happening in front of regional USPTO offices all across the country, marking the 10 year anniversary of the passage of the America Invents Act – an event described by advocacy groups as the worst event in U.S. patent history. The inventors and entrepreneurs at the rally we attended, all from diverse backgrounds with very different stories, have one thing in common and that is their shared belief that the AIA and the PTAB – with its eye-popping 84% invalidation rate – have crippled innovators and created a Decade of Stolen Dreams, ruining the lives of countless inventors and shutting down numerous start-ups, in favor of Big Tech and multinational corporations. In this episode, we break down the AIA and PTAB through a wide array of personal perspectives from inventors, patent practitioners, and even a former USPTO patent examiner. We explore its origins, core problems, and proposed solutions. We also provide some very practical tips that inventors should consider now to help future-proof their patents, should they ever find themselves on the receiving end of an IPR. Inventors are not only the real engine of our economy, but they’re also the reason we do what we do here at Aurora. This is a complex issue, with high stakes, involving the people who matter most to our business and what the world will look like for our kids, so we can’t think of a better use of a podcast episode than to lend a voice and hopefully shine a light on the key issues and some potential solutions. I am joined today by an exceptional group of industry experts, founders, and inventors including:
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.
Resources
If you haven’t listened to our episodes on patent searching or patent monetization, we highly recommend you also give them some ears. In this episode, we talk a fair amount about importance of searching prior art and how it’ll help if you ever find yourself facing the PTAB. It tees in wonderfully with the context and strategy bits Shelley and Louis cover in the prior episodes. Be sure to check 'em out.
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.
By: Josh Sloat
Welcome Aboard
We could not be more thrilled to be welcoming Kristen Hansen to the Aurora family! Kristen joins us this month, starting her role as a Patent Strategy Specialist. Kristen is the perfect blend of wicked patent strategy smarts, deep technical expertise, startup-focused business acumen, and all-around great human. She exudes all of the essentials that have come to define the Aurora DNA. We love working with her and know that she will be a tremendous asset to both Aurora and our clients.
Patent Strategy. Kristen is a USPTO-registered patent practitioner with over 15 years of experience focusing on developing U.S. and international patent portfolio strategies for individual, university, and corporate clients. Many of these clients include THE tech giants and Fortune 100s in the areas of software, IoT, machine learning, consumer electronics, electronic circuits, optics, medical devices, wearable devices, virtual and augmented reality technologies, telecommunications, semiconductor devices, and business methods. Software Expertise. In a world where software is dominating the technology landscape, it's essential to have someone with deep software patenting experience in your corner, ensuring protection for your most central and valuable IP. In a prior role, Kristen focused the majority of her time managing portfolios for companies like Google, Apple, SAP and Twitter, where she drafted and prosecuted mission critical patents in the areas of AR/VR implementations, browser inventions, operating system interaction, IoT, machine learning, search algorithms and techniques, mobile and desktop app implementation, business methods, and web store algorithms. Business-driven IP. Kristen understands complex technologies, knows what moves business, and is a world class communicator. As a result, she can comfortably communicate with inventors at a detailed level and can disseminate technical details of such communications to non-technical audiences. Kristen uses her technical knowledge and legal training to develop patent portfolio strategies that are closely aligned with each client’s business objectives.
By: Josh Sloat
Episode 6: Patent Monetization
Buying and Selling, with special guest host Louis Carbonneau
In this episode, we take a deep dive into the war games filled world of patent buying and selling. We are joined today by special guest host, Louis Carbonneau, Founder & CEO of Tangible IP. Mr. Carbonneau is a recognized expert in intellectual property with close to 30 years of professional US, Canadian, and international experience in all facets of intellectual property law and business. His firm is the largest brokerage firm in the world and has transacted over 4,500 patents in the past decade. When we sat down with Louis, we hoped to be able to provide our listeners with a 101 style talk on the ins and outs of patent monetization. What we got was so much more and so very consistent with our mission of helping our audience see around corners and help their future selves. Louis begins with some excellent historical perspective and an overview of the state of the market, but really drives it all home with a plethora of forward-thinking strategies that make for more robust, defendable, assertable patents. Patents are a long game. The little things you do now can have tremendous impact over the next 15 or more years of your business journey and it’s vital that inventors and practitioners start keeping these strategies in mind, if they have any hope of crafting battle ready, commercial-grade patents. Expert Panel Louis is joined today by our always exceptional group of IP experts including:
Topics Covered
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.
Resources
If you haven’t listened to our episode on patent searching, we highly recommend you also give it some ears. In this episode, Louis talks a lot about the importance of searching as it pertains to drafting valuable patents, how it’ll help if you get IPR’d, and also help against infringers. It tees in wonderfully with the context and strategy bits Shelley covers in the prior episode. Be sure to check it out.
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.
By: Ashley Sloat
What you can do!
Please help our client, Starlight Cardiovascular, win a financial prize to further their development of devices for babies that are born with an extra connection in their heart and need lifesaving surgery.
Please like, share, and watch their one minute video until the end. See below and original link here. About Starlight Cardiovascular
Starlight Cardiovascular is focused on the essential mission of creating devices to treat babies born with congenital heart defects. Approximately 1.3 million babies are born each year with a CHD. Most of the tools used to treat these children were designed for adult conditions and anatomy, limiting their utility for pediatric patients. Starlight Cardiovascular is developing a portfolio of devices designed and tested specifically for pediatric CHD with the goals of improving morbidity, mortality, and access to care.
By: Ashley Sloat
To Share or Not to Share...
You’ve had your stroke of genius. Your next inclination is to immediately do one of two things: 1) Yell it from the rooftops and share it with anyone who will listen or 2) keep it close to the vest, not tell anyone, and guard your idea like it’s the One Ring. Both instincts are usually wrong. At least in their absolute forms.
Knowing when to share your idea and when to shush is a vital distinction on the journey to innovative success.
The Opportunity Cost Problem
As we’ll discuss more, sharing too much and too soon can have detrimental effects on your ability to later protect your idea. But not sharing at all can come with tremendous opportunity cost. Sharing an idea provides valuable insights and traction, from feedback to refinements to people recruitment.
Reid Hoffman, founder of LinkedIn, venture capitalist, and renowned “Oracle of Silicon Valley” has said: When you have an idea, a classic entrepreneurial impulse is to hold the idea close to you and not tell people and that’s almost always a mistake … the truth is, your asset is that you were in motion on this idea and you should talk to everyone smart who can give you feedback to try to refine the idea, to try to build it. The Approaching Investors/Pitching Problem
AKA: Can I share my idea before filing a patent?
Keeping your idea a secret may also not be an option depending on your funding goals. As an inventor approaching potential investors, you’re going to want to protect your idea from being stolen. You might be inclined to think a nondisclosure agreement (NDA) is the answer. Many investors, however, are unwilling to sign confidentiality agreements, given their handcuff potential on future deals. Protect Your Idea with a Patent Before Sharing
So how do you strike the balance? How do you share enough to get the invaluable gift of feedback and give investors the details they need to evaluate deals, while protecting your idea from being stolen, but do so in a way that is economically practical pre-investment and pre-revenue? The simple answer is: file a provisional patent application before you publicly share, sell, or disclose any details. Provisional patents in particular are a cost-effective, low fidelity (you don’t have it all figured out yet) approach to protecting your idea, while securing the earliest possible filing date. Let’s explore why this matters.
First Inventor to File
The United States, similar to the rest of the world, is a first inventor to file system, which means...you need to file a patent on your technology before you publicly disclose it. If someone invents the idea after you but files with the patent office before you, that someone wins the patent and you lose.
What constitutes public disclosure?
Publicly disclosing your invention before you file a patent application can cause you to lose your patent filing rights. For example, in the U.S., the following activities could bar your idea from later patenting:
Are there exceptions to when I can share?
There is lots of gray area between patenting and sharing. For example, advertising a product not yet developed, pre-announcing a product that is not yet developed, or experimental use are all public events when your idea is not “patent ready” so such activities may not prevent you from later patenting your idea. Some jurisdictions, including the U.S. also offer grace periods, so if you accidentally shared too much before reading this, you may still be able to get a patent.
Shush => Patent => Share => Succeed
Share your idea – and do so with great gusto – but only after your patent application is filed. Patents have the long term added value of maximizing startup funding and growth, while protecting your valuable technologies as early as possible so you can go out and start safely getting that valuable feedback. You will learn great things about the technology and yourself when you share it.
Go Deeper
If you'd like to learn more about the topics discussed in this post, please check out the following. Or just drop us a line and we'd be happy to help!
The on-sale bar topic is SO important that we made it the main focus of our first podcast episode, where we take a deep dive into the trapdoor-esque implications of selling your innovation before filing.
By: Josh Sloat
Episode 5: Patent Searching
Sleuthing Your Way to Stronger Patents
You have an idea and you’d like to protect it. But can you? Is it novel? Non-obvious? Would you eventually be able to license or enforce your patent down the road? Who else is competing in this area and where’s the whitespace? If you get the patent, can you freely produce and sell the idea, without the costly risk of infringement litigation? So many big questions, with so much influence on business outcomes. The quest for the answers is far from elementary, but with the right detective, these aren't mysteries that have to remain unsolved until it's too late. In this month's episode, Shelley Couturier, Patent Strategist, Search Specialist, and Chief Sleuth here at Aurora, leads a discussion along with our all star patent panel into the low cost, high return world of patent searching. The domain is complex, but the efforts have one of the highest possible ROIs of anything you can do, especially in the early stages of your patent journey. With some practical guidance and a little help, patent searching will save you significant time, money, and effort in the long run, all while yielding a much stronger patent overall. Expert Panel Shelley is joined today by an exceptional group of IP experts including:
Topics In this episode, Shelley shares:
This presentation explores the types of prior art patent searches including:
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.
Help with Patent Searching
If you'd like to learn more about our patent search, analysis, and competitor monitoring services, please drop us a line.
Resources
For the visual learners out there, we also like to make our presenter slides available for your reference. This particular deck includes great visuals for the guided invalidity search walkthrough.
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.
By: Josh Sloat
Episode 4: Patent Prosecution Highway
Fast Tracking Your Application
Getting a patent is no quick process. In the time between filing and issuance, your application will go through several stages, often from multiple patent offices and with months or years between stages. The total process can take two to five years and sometimes longer. But who has time for that? Sometimes you need a patent, and you need it fast. Luckily, there are some options for fast tracking your application. In today’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion along with our all star patent panel, exploring one of these options – the Patent Prosecution Highway (PPH) and how it can significantly speed up prosecution between international jurisdictions with similar policies. Expert Panel Ashley is joined today by an exceptional group of IP experts including:
Breaking Down Expedited Options As was the case with the last episode, our discussion panel really jumps right into the thick of the material and in retrospect we thought it might be helpful for the not yet IP experts out there to set the table a bit. I sat down again with Ashley for a brief conversation to help set the stage for what the patent prosecution highway is, how it fits into the patenting process, and when it might make sense for you. We discussed:
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.
Resources
For the visual learners out there, we also like to make our presenter slides available for your reference. This particular deck includes great visuals for PPH participating countries and a breakdown of the actual form for participation in the Global IP5 Patent Prosecution Highway (PPH) Pilot Program.
Applications now open! 2022-23 Fellowship
The Stanford Byers Center for Biodesign is seeking innovators with backgrounds in healthcare, engineering, computer science, or business to apply for this hands-on, full-time program (August – June). As part of a multidisciplinary team, you’ll learn how to identify important unmet medical needs, invent technologies to address them, and bring those products into patient care. Applications for the 2022-23 Innovation Fellowship are now open through August 13, 2021.
Fast-track your health-tech career
The fellowship begins with an in-hospital immersion where fellows identify at least 200 needs. Teams:
Following interviews at Stanford University, 12 successful candidates will be awarded fellowships, including tuition and salary support. Stanford believes that personal and professional diversity inspires creativity in its teams and helps them innovate effectively for different patient populations. The Stanford Byers Center for Biodesign values the unique path of each applicant and encourages people of historically underrepresented groups to apply.
Announcement courtesy of MedtechWomen.
By: Josh Sloat
Digital Health Entrepreneurship Workshop
Please join us at the largest physician innovation event of 2021!
We are extremely excited and honored to be presenting alongside an incredible speaker lineup – delivering a digital health IP workshop at the InnovatorMD World Congress 2021, taking place both virtually and in the Bay Area. About the Workshop
Time & Location: Monday, August 2 | 9:30 AM - 11:00 AM PDT | Live Webinar via Zoom
Digital health technologies are pervasive in every aspect of life and will likely be the future of improving patient outcomes beyond the clinic. Using patents to provide a competitive advantage for companies in this space has never been more paramount, but also never more difficult. We’ll discuss the generalities of the US and international patent systems and the specifics around patenting digital health technologies, including artificial intelligence, wearables, and machine learning innovations. InnovatorMD World Congress 2021
The InnovatorMD World Congress event brings together physicians and health tech startups from across the globe for keynotes, panels, and workshops covering the current state and future of healthcare-related innovation.
Healthcare is going through rapid change. Physician Innovators and others are driving some of this through their innovations. This conference is a curation of the best ideas, experts, startups, and learning.
Time: Aug 02, 8:00 AM PDT – Aug 08, 12:00 PM PDT Locations:
About InnovatorMD
InnovatorMD's mission is to globally advance the work of physician innovators and entrepreneurs delivering solutions that revolutionize patient care. They are 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.
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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. Archives
May 2022
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