Transcript
On-sale Bar: Patentability and Selling Your Invention.
The following is a computer-generated transcript from the Patently Strategic Podcast. The results aren't always perfect, but we will continue working on improving the quality of the automation.
WEBVTT
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Good day. And welcome to the very first episode of Patently
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Strategic, where we discuss all things at the intersection of business,
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technology and patents. This podcast is a monthly discussion amongst
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experts in the field of patenting is for inventors,
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founders and IP professionals alike. Today we have an exceptionally
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great group to kick things off. If my math is correct, there are at least
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four PhDs in 56 years combined patenting experience represented
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here. That's a whole lot of College debt and a ton of insight packed into
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the next hour. In this inaugural episode, Ashley Slope,
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President and director of patent strategy here at Aurora, leads a
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deep dive into the on sale bar and the trap door esque implications of selling
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your innovation before filing. I assure you, future self will.
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Thank you for listening, and this will be a recurring theme as we progress through
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the series. But before we get into the heavy stuff, we also like to
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start with some lightweight but relevant topics. Today, the group chats about
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prospective shaping professional development books, takes an interesting
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trip down the patent prosecution highway into some fun and a potentially
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controversial strategy tidbits, and then gets really interrupted by
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Hawaiian jungle fowl. Ashley is joined today by
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David Jack Roll, President of Jack Ro Consulting, David Cohen,
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principal at Cohen Sciences, Catherine Corette, senior director
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of intellectual property at Perfect Day. Katherine, please forgive
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me if I didn't completely nail that. And Daniel Right, partnership manager and
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patent strategist here at Aurora. All right, take it away, Ashley.
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David Cohen already said he doesn't have any professional books in mind,
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but does anybody else have any professional books in mind that they'd like to
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share? One that kind of revolutionized the way you think about things,
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or one of the ones that was one of your more favorite ones I could
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start. I mean, I'm not a big I'm kind of in the same boat as
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David. I'm not a big reader of management
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books, and I actually would love to hear other people's
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recommendations, if there's any that are like IP specific.
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The management books that I read was more when I was kind of
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in the third of engineering that manufacturing world.
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And so there are two that I could recommend, although it may not be
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relevant for people, maybe more for our clients.
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But Good Degree is a very famous one, but it's
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really good because the same author wrote Built to Last and then Good Degree
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is really cool. It's about culture.
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Corporate culture, in a nutshell. So I had a CEO who was really into culture,
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had everyone on our team read good to grade, and it was
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kind of like know your DNA as a company.
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One of the examples that really stuck out to me is Philip Morris to
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Phillip Morris. If you work for Phillip Morris, you get your bonuses
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in cartons of cigarettes like
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this. Maybe not anymore. This is maybe in the 80s or 90s. Or nothing.
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Boy, that was the culture that company. They were
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like it. He loved it. If you didn't love tobacco and love their
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products, like, don't work here. You know,
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Sony. Sony is obviously, but he missed
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whatever. But one of the things Sony did was way different from a
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lot of other people, culture wise. They've always thought about a
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hundred year plan. They're like were only going to be in
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100 years. And they just a really interesting
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kind of like perspective again, could be all different. No, this is like a
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plus years ago, but stuff like that just culture.
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What is it and all that stuff. And then that was kind of the main
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one. I'll just give a plug for if anyone who's in manufacturing,
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because I feel like if you're new to it,
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there's a really great book that's a really easy read.
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And it's a very story called The Goal. And it's a management
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oriented novels about a fictitious
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manager who's running a company of a manufacturing
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plant. I'm trying to save it, but it's very, very famous.
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It's like a seminal book on manufacturing and operations,
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management and Kanban and just like
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all that manufacturing operational flow. And did you have any any you
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want to share? Yeah. I don't
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believe I've ever read Bizdev management book.
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Closest thing I could recommend would be John
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Cogs that's with two as hiking with Niche.
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I studied philosophy in addition to chemistry and
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College with my fairly
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niche kind of response towards freedom. I actually found
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that that book was a nice introduction to
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get started, really looking into kind of what Niches
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call towards what is our relationship towards the world,
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how are we to respond and interact
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with what is given? And those
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lessons quite powerful and relevant. And so I
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don't know how much this is going to be helpful for improving your
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manufacturing processes, but it's a
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good book. It's an easy read and getting
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a great introduction into Indonesias works,
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which I found have been quite personally valuable.
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Enlightening, very cool.
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Nice, awesome. The one I was
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going to share that I thought was just kind of
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central to even just human interaction, but also business interaction was
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radical candor by Kim Scott. And the reason I think
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it's so hard to have tough conversations with people. Right.
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And so this one really goes towards the core of that. Kim Scott has kind
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of been in a lot of the big Giants in the check field, but has
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done a lot of the startup world and kind of found that there's this
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delicate way that you need to approach interacting
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with people. And it's kind of a personal involvement,
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like personal understanding and personal interest in people,
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but then also being not afraid to basically give them really
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crucial feedback that may be hard to hear, but in a non attacking
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way. And the way you get that is by not by understanding
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them personally and by taking an interest in them personally and then going
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after more of, like, their attributes and their behavior
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and less about personal attacks. And it seems like really kind
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of like a dog thing. But there's a lot of good tidbits in there about
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how just to to balance those worlds and kind of
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what happens when you are too nice or you're
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too critical. Right. It kind of can go
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either way or when both ways or two, you just two week
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on them. What kind of what can happen in her personal experiences. So really,
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I thought it was really good book. I think they have a whole company around
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Radical Candor. I think she has some other books now, too. But anyway,
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that's why one of my more favorite ones I could kind of identify with.
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Alright. So I
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just talked on Google and I Typed in, you know,
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I was going to look for Radical Candor. So I Typed
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in Radical and the number one thing that came up was Radical Candor.
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They must be in good marketing,
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someone's working there. The thing on Candor
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is that this involves
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power. Right. The distribution of power as
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a consultant, you know, I have certain critiques.
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Right. You know, but,
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you know, as a consultant,
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you know, your position is different. You really I mean,
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maybe you can, but in general, there's sort of a barrier there
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to weigh in and and, you know,
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try to tell someone that they're messing up. Right.
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I mean, especially if they're an officer. Like if
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you think one of the problems of the company
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is that the chief scientific officer isn't really providing
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scientific leadership, directing people. I mean,
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what am I going to say about that? Right.
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Yeah. It definitely goes towards a relationship and also the culture kind of
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game to David Jackers point, it's a little bit about the
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culture that's built, too. Right. I mean, you have to have a culture
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of feedback and that may be different from a consultant viewpoint versus a person who's
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in house. Right.
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And of course, not going
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in. I mean, not being in person, everything is through Zoom.
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It's another level of complication,
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like messaging and stuff like that complicates it,
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too, because tone and by language are left out.
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Right. Yeah. That does sound
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like an interesting book. Yeah, I agree. Thank you.
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Ashley. Does anybody have I added this one because
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I thought the other fun thing for us to talk about is any fun strategy
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tidbits that somebody learned? Because I think there's just so many nuts and crannies of
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fat loss. I figured there might be some fun things to share or any issues
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or the one thing that's pretty interesting.
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I heard some pretty well known patent
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people kind of recommend this, and I brought it up in a different patent group
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that I'm part of. And there were various opinions. So I
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think it's kind of an interesting one. And just let
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me just preface this by saying you could probably talk about
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this for a while, so we might want to just say set
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it up and then couch it or something. Actually, I'll let you finish
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that. But the idea is that since
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the Track one fees
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are so expensive and the Pct filing
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fees are also expensive. But there's been some changes, I believe I
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forget one of them. I think the Pct filing fee just recently went
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down. Is that right? Or track one of they all went up. I think the
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Track one went up. Maybe that was it. But the point was
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that if a client wants to go Track one, but they're also thinking
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that international protection is something that they're
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interested in, then if you file a Pct with certain receiving
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offices and now the US is one of those receiving offices,
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they end up getting a preliminary
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search and opinion of patentability very quickly,
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like within a year, generally within eight months. And so now
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if you have a positive Is, you can
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then do the PPA through the patent prosecution highway in the
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US, which fast tracks the application. And so
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the time it's probably a little bit slower than Track one,
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maybe on the order of six months or something like that. If you get
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a positive, Is fees end up being about
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the same, and the benefit is, then you get but you
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have a you have international protection, whereas if you
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just go with the Track one, you're guaranteed examination
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very quickly, a disposition one way or the other within a year.
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But it's expensive and you don't get the international
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protection. There's kind of pros and cons of both approaches. And kind
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of my takeaway was that if clients are talking
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about speed and they're talking about Track one, just bring up
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the idea of a Pct. And the biggest
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risk is if you don't get a positive is, you're kind of back to square
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one and you don't have the PPA option anymore.
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But you could still file in the US with the Track one at that point,
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and you've lost half a year or a year, so it's
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risk their risks. But anyway, but that was a interesting
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new thing I had heard of recently. So could you only do
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the PPH from the Pct if you like the ISR had
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found one or more claims novel and non obvious. Is that the only
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way that that would make sense? Got you? Exactly. And they put business applicability,
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which is almost always. But yes,
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if at least one claim has positive positive
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pattability, yes. What you said you
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can do the PH and the only kind of like hurdle
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or additional things. And the claim in the US really doesn't need to
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be have all the limitations, doesn't need to be word for word, but it needs
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to be co expensive, exactly the same as the one in the
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international and the Pct. Interesting. I haven't done much.
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I know we had looked into the PPA for Europe before, but, for instance,
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it had heavily advised
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against it can be if it was for cost and for other kind of
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procedural reasons. And so I do know that
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this would be a doubling up of costs and not exactly what you would want.
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But we have had clients that have done expedited,
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and then they end up getting an Issuance kind of right around the time of
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filing their PCP or right at the beginning. Then it makes prosecution
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really, really easy off of the PCP just because you kind of have that,
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and then you'll have to do, like, another continuation right away because you have
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the Pct. But that's interesting. Yeah.
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Honestly, if you were operated or somebody, I would love to like
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for us to do more about the PPA, because it's kind of one of those
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things that I feel like not a lot of people do for
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various reasons. I know that we personally
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have not done it, so we've looked into it for various countries,
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but then for various reasons, kind of were encouraged
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not to do it. And I'd have to look up. I'd have
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to remember which client was and why they said I
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know who which foreign associate told me about it. I know I could look up
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the email maybe, and find it, but be curious
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that I have heard that about Europe. Specifically, the EP examiners
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don't really follow the treaty as well as they're
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supposed to. I go and sort of take the
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other partner patent offices examination
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put a lot of weight to it. We have had very
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good results. Filing PPHS for US
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applications based on positive is, so maybe
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a dozen times even or more. We do that as a standard.
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If you have a PC, if you have a positive is and a
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US A pending, if you have to do it before the
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first substantive examination, I'm pretty sure. But yeah,
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we do that all time. And I haven't the
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information from another attorney that I work for you now, but we recommend
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or we inform our clients back position
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a PPH based on a positive is in the US, you have
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a chance of issued patent within a year.
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Wow, that's huge for these
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cases. I presume you're using the US as the searching authority.
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No, we usually use Korea. Korea. Okay,
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but I think that a cost perspective, or that was
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a cost thing. I think it's Korea. That's what I have. In my mind.
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I can double it, but I think that doesn't matter.
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Yeah. Well, because I'll say my previous role,
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we did a fair amount with PPH, and it's
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a bit hit or miss because it's not just Europe
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that may or may not respect the
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PPH. It certainly the process kind of
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kick things up into queue a bit if you file file PPH
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request and it gets accepted. However, I have found that pretty much
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every major player patent office. So US,
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Europe, China, Japan,
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to some extent, if you file a PPH and the
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claims don't look like their normal practice,
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they're still going to make you make it look like their claims.
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If you get an Issuance in
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the US and you go to China with the PPH request.
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Technically, technically, the US and China participate in the PPH,
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and theoretically you're supposed to be able to say, hey, China, look, I've got these
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issued claims in the US. Please give me this claims.
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They're not going to give you those claims. Then again,
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it will get bumped up in the queue because now they've got an official PPH
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request to look at it and say, That's nice, but please be
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way more specific as we normally do for
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China. So the PH I have found to be valuable in
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some of the smaller jurisdictions that
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are a bit less, say, rigorous with their own prosecution.
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So places like Mexico, I found it to be helpful
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of Europe or US.
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Australia has been helpful off Europe state,
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occasionally US, New Zealand similarly.
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And those can be valuable jurisdictions
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to have a patent in, but they tend to those offices
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aren't so much defining policy as much as US,
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Europe, and China are. So that's kind
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of my take on PPH.
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So, you know, I was going to mention another thing. There's always
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the internal debate about whether to have
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your independent claim be broad or narrow.
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Right. Queen. And so
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if you consider if you are looking to get if
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you want a clean review from the
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Pct, then you're better off filing
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a more narrow claim. Right.
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It's just that sort of enters into
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the the conversation.
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In a lot of times, I feel like when people are doing whenever
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someone talks about speed and track one, we recommend going a
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little bit more narrow. Making these claims make
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them high probability of allowance. You're spending all this money to get it quickly.
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But I haven't done a lot of the international stuff
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with these PPHS, so that's a great point. I mean, mostly what
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we're doing is drafting the claims, filing a provisional
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or not nonprovisional US filing it as a Pct and then getting
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a positive search. I did look it up, and we do typically,
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uh, Korea, I think that is for cost, but also quality.
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Maybe that the the US trust them,
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I guess, or that search. But we've had really
18:48.860 --> 18:52.240
good luck with what we've done. But thank you for your
18:52.250 --> 18:55.660
perspective that I could totally see how going between different
18:56.080 --> 18:58.320
countries could be could be problematic.
18:59.750 --> 19:02.370
First thing. Go ahead. No,
19:02.610 --> 19:06.180
I was just going to reiterate. Yeah, it depends. If you're
19:06.190 --> 19:09.210
playing with similar
19:09.900 --> 19:13.230
offices, then. Yeah, it works well, but in other places
19:13.320 --> 19:16.620
it doesn't. It maybe speed things
19:16.630 --> 19:19.380
up by a few months, but you're still going to have to go through the
19:19.390 --> 19:23.340
office actions. I think the other interesting
19:23.350 --> 19:26.760
thing you kind of brought up, though, too. Is the whole Isa shopping,
19:26.770 --> 19:30.600
right? Because I think we kind of get used to just doing to
19:31.290 --> 19:34.860
the US is when you file in the US receiving office. But there is some
19:35.070 --> 19:39.060
financial advantage shopping around a little bit and seeing, which is might
19:39.070 --> 19:42.420
be a little bit more in Amenable, and arguably some of them do
19:42.430 --> 19:46.140
a better job searching than others. I would say the US is
19:46.150 --> 19:49.410
a decent job, but my experience,
19:49.440 --> 19:53.080
it seems like, you know, Europe, Japan tend to
19:53.090 --> 19:55.330
find even a little bit better art sometimes,
19:57.060 --> 19:58.620
so it's interesting.
20:00.240 --> 20:03.750
Cool. Thanks for sharing, but yeah, like I said,
20:03.760 --> 20:07.290
if anybody wants to do a presentation on that, I would love
20:07.320 --> 20:11.070
to kind of, you know, be honest, will probably be doing my own download on
20:11.080 --> 20:14.220
that actually after this. Now, after it kind of being brought
20:14.230 --> 20:16.290
up to the top of my mind now.
20:17.380 --> 20:21.220
And so any fun tidbits or problems
20:21.720 --> 20:23.800
or anything of an anchor,
20:25.410 --> 20:29.020
can I ask you a question about the speed discussion
20:29.030 --> 20:32.410
we just had? Is there an argument to be made for actually
20:32.420 --> 20:34.090
going slow internationally?
20:37.440 --> 20:41.040
As I'm observing some of our cases just go really
20:41.540 --> 20:47.220
slowly through the machinery abroad, we are accumulating
20:47.750 --> 20:50.460
cloud claims here in the United States,
20:51.000 --> 20:54.990
and by going slow internationally, I'm wondering whether at
20:55.000 --> 20:58.650
some point I can just bundle all these, I can make
20:58.660 --> 21:01.560
an amendment internationally where I bundle all these.
21:01.920 --> 21:05.580
So basically go Rreally broad internationally,
21:05.590 --> 21:08.280
so that really comes things up slow.
21:09.030 --> 21:12.210
And then I'm observing what kind of
21:12.220 --> 21:16.560
claims we're getting in the United States, and I wonder whether at some point in
21:16.680 --> 21:20.310
that international application is basically draft a claim
21:20.430 --> 21:24.070
that encompasses all those claim sets that we are
21:24.400 --> 21:27.540
getting allowed in the United States, and then
21:27.550 --> 21:31.560
basically just have one case internationally
21:31.570 --> 21:35.420
that then can rely on the allowed claims
21:35.430 --> 21:38.170
in the United States for,
21:38.700 --> 21:42.430
since they do look at the United States packet office as to what's
21:42.440 --> 21:46.390
happening there and basically prosecute everything that I've got to throw in the United
21:46.400 --> 21:49.060
States with just that one international application,
21:49.740 --> 21:54.150
we've had mixed results on that alluding
21:54.160 --> 21:57.510
to Dan's point about different countries having different
21:57.960 --> 22:01.260
claim structures are different disclosure requirements.
22:01.290 --> 22:04.590
We have some clients have sizable portfolios
22:04.620 --> 22:08.610
where it's pretty clear what the technical advantage
22:08.620 --> 22:12.540
is, but yet protecting the exact
22:13.040 --> 22:17.010
same claim set. And let's say Europe, US and Japan,
22:17.490 --> 22:20.640
for example, we were able to get one aloud in Japan in the US,
22:20.670 --> 22:24.000
but Europe wanted even more experimental data that they just did have
22:24.180 --> 22:27.360
because it was kind of like an ancillary product that they weren't super
22:27.370 --> 22:30.770
pursuing. And China like we
22:30.780 --> 22:34.460
were able to get certain claim set through in other countries, but for whatever reason,
22:34.490 --> 22:37.760
China was just unconvinced. So I think it kind of depends on
22:37.940 --> 22:41.990
the degree to which the technology is really stands
22:42.000 --> 22:45.950
above the prior art or what. There is some close competing
22:45.960 --> 22:49.610
art, that human element, right. And one human
22:49.700 --> 22:52.850
in China versus a human in Europe versus a human in
22:52.860 --> 22:56.260
the US, they're going to take a different look at it. I think in
22:56.760 --> 22:59.920
general, I think that's a safe bet. And I think that slow processes is an
22:59.930 --> 23:03.070
advantage. But I think in some cases where it's a little bit tighter,
23:03.080 --> 23:06.040
the arts a little bit tighter. It can. You know,
23:06.190 --> 23:10.420
there's not as much of an advantage. I agree.
23:10.450 --> 23:14.560
Europe is definitely standing out. They will have a request.
23:17.730 --> 23:21.130
They're tough cookies, that's for sure. Although I will say there was
23:21.140 --> 23:25.060
this and I can share with anybody. You would have to use my email address.
23:25.600 --> 23:30.550
We do some work with J Camp, and they just did this fantastic webinar
23:30.640 --> 23:34.260
on priority chain between
23:34.350 --> 23:37.740
like a US provisional and a Pct and the European Patent Office
23:37.750 --> 23:40.970
and how I was called the crisper stuff, basically. Right.
23:40.980 --> 23:44.510
How that pricing can be broken and what it means. And I was
23:44.520 --> 23:47.300
probably one of the better webinars that I've heard in a really long time.
23:47.310 --> 23:50.930
I'm just really clear and concise and really well done. So somebody wants
23:51.040 --> 23:54.130
a link to that. Let me know, and I can share my so you might
23:54.140 --> 23:57.210
use my email address to get into any, frankly,
23:57.220 --> 24:00.510
don't care. So just let me know. But speaking
24:00.520 --> 24:04.400
of Europe. Yeah, that'd be interesting. I'll email
24:04.410 --> 24:07.790
you about that. Yeah, absolutely. They used
24:07.800 --> 24:11.470
your Rooster it's morning somewhere.
24:11.530 --> 24:15.100
I don't have
24:15.110 --> 24:17.620
a Rooster, but they run around the wild here.
24:20.310 --> 24:23.950
A little strange. It brought me
24:23.960 --> 24:29.290
back. That reminded me of that's,
24:29.300 --> 24:32.800
actually, I'm on Maui right now, and they just run around
24:32.830 --> 24:37.510
everywhere. These Roosters, they just I don't know where so
24:38.010 --> 24:41.260
jealous. I wish I would share that. Sorry about
24:41.530 --> 24:44.440
that story is there was a Hurricane in the Eighties and before the Hurricane,
24:44.450 --> 24:48.740
they were, like, wearing very many about. The Hurricane blew over bunches of these chicken
24:48.750 --> 24:51.740
coops and Roosters and stuff, and now they're just everywhere. Jungle fowl.
24:52.430 --> 24:55.880
Okay. I love it.
24:57.250 --> 25:00.320
There's a couple of things that I'm wondering about. Obviously,
25:00.330 --> 25:04.430
everything somehow have to arrive here from somewhere because being
25:04.440 --> 25:07.610
an island, they have to come by
25:07.620 --> 25:10.790
ship. I don't know. There's certain animals that there's many
25:10.800 --> 25:14.330
of, and there's others that are very few. I never see snakes. There's very few
25:14.830 --> 25:18.440
snakes. But there's all these wild pigs. Right. I need to read
25:18.450 --> 25:21.560
up where the wild pigs came from. It right.
25:21.570 --> 25:25.220
I think some of those were, I want to see brought
25:25.230 --> 25:29.240
over on ship way back when some of the first colonizers
25:29.740 --> 25:33.170
not Indigenous. Right. But some of the first colonizers came to the
25:33.180 --> 25:36.350
area. But yeah, the snake thing is interesting. So I think you're right, because they
25:36.360 --> 25:40.080
were molten volcanic Islands. I think
25:40.090 --> 25:43.260
somebody would have had to bring a snake over, essentially for them to propagate,
25:43.760 --> 25:45.570
which is another process about Hawaii.
25:49.730 --> 25:53.130
All right. That's all awesome. Thanks for sharing.
25:53.140 --> 25:55.730
Everybody does. Mary and Lightning. I love it.
25:57.020 --> 26:00.350
So we kind of getting to the meat here today. What I want to talk
26:00.360 --> 26:03.840
about is the on sale bar, because I feel like there's been
26:03.850 --> 26:07.440
a little bit of activity in the court systems around the on sale bar and
26:07.450 --> 26:10.860
kind of what it means. So you all probably know pre AIA,
26:10.870 --> 26:14.550
the America events at a person the one and
26:14.560 --> 26:18.300
two the on sale provision of one and two basically stated that
26:18.310 --> 26:21.960
the person should be entitled to a patent unless the invention was in public use
26:21.970 --> 26:25.530
or on sale in this country. More than one year pride of the date of
26:25.540 --> 26:29.170
the application for patent in the US and then post
26:29.230 --> 26:32.680
AIA around. I think 2013 is when that
26:32.690 --> 26:35.950
took effect March 16, 2013. I think a person shall be
26:35.960 --> 26:39.910
invited to a patent unless the plane dimension was on sale or otherwise available
26:39.970 --> 26:43.480
to the public. So some of the court cases I'm going to walk through today,
26:43.490 --> 26:46.720
some are old, so I definitely would have been pre AIA, but then some of
26:46.730 --> 26:51.370
them are post AAA. And I think the biggest question that people were wondering was
26:51.380 --> 26:55.000
whether how much, obviously, how much did that change between
26:55.300 --> 26:58.930
PREA and after AI, but then also, what does otherwise available
26:58.940 --> 27:02.620
to the public mean? How does that impact secret sales?
27:03.280 --> 27:06.490
And so we'll kind of go through some of these to try to find some
27:06.500 --> 27:10.000
various different case lot kind of different tidbits. So this
27:10.500 --> 27:14.120
was Fast versus well, electric Pat
27:14.130 --> 27:17.900
had basically been working on a socket, and Texas Instrument asked
27:17.910 --> 27:21.920
him to develop a new device for mounting and removing semiconductor chip
27:22.010 --> 27:25.340
carriers. And so in response to Texas Instruments request,
27:25.400 --> 27:29.470
Path actually developed engineering drawing specifications,
27:29.480 --> 27:33.310
detailed measurements, and then provided it two types of instruments,
27:33.340 --> 27:37.120
and then later went to file a patent. And so then obviously later
27:37.130 --> 27:41.020
on, well, Electronics started selling a computing socket, and Fast brought
27:41.030 --> 27:45.110
suit against Wells. And what they found was that although
27:45.120 --> 27:49.050
Fat actually had not actually reduced the
27:49.550 --> 27:52.800
technology to practice that he gave to Texas Instruments that he sold
27:52.810 --> 27:56.130
the Texas Instruments, he had constructively reduced it to practice because
27:56.140 --> 28:00.150
he did provide all the detailed drawings, the specifications, the calculations and
28:00.160 --> 28:03.720
all that. And so basically it was ready
28:03.730 --> 28:07.620
for patenting, even though it wasn't a full reduction to practice. And obviously
28:07.630 --> 28:10.650
it was an offer for sale commercial for for sale because he did sell it
28:10.660 --> 28:14.350
to Texas Instruments. And so this two prong
28:14.530 --> 28:17.680
test, I guess, if you will, kind of forms the basis of a lot of
28:17.690 --> 28:20.350
the on sale bar. The whole idea that it has to be the subject of
28:20.360 --> 28:23.440
a commercial offer for sale and that the invention must be ready
28:23.450 --> 28:27.100
for patenting to trigger the bar are kind of to the underpinning.
28:27.110 --> 28:30.950
So now if somebody kind of just said,
28:30.960 --> 28:34.880
oh, yeah, ten decisions, I can develop something for you. It's going to cost
28:34.890 --> 28:38.240
you $5,000, but then didn't have anything to show for it.
28:38.250 --> 28:41.270
I'm not sure that you would actually trigger the on sale bar because you didn't
28:41.280 --> 28:43.160
actually have anything open at that time.
28:43.900 --> 28:47.780
Similarly, kind of based on the Meds Co versus Hospira
28:47.790 --> 28:51.500
decision in 2016, if Path would have paid Texas
28:51.510 --> 28:55.280
Instruments to manufacture the devices, I don't believe that would
28:55.290 --> 28:58.820
have triggered the on sale bar from commercial offer for sale perspective,
28:58.830 --> 29:02.420
because it would have just been paying for manufacturing services as opposed to selling
29:02.430 --> 29:05.750
them the actual invention. I think there's some nuances there,
29:07.040 --> 29:10.340
but kind of an interesting like the combination to prong test, if you will.
29:11.880 --> 29:15.880
The next one I wanted to discuss was this Group one versus Hallmark
29:15.890 --> 29:19.180
cards back in the Federal Circuit 2001. So again,
29:19.680 --> 29:23.980
Praia, basically group home one had developed a curling
29:23.990 --> 29:27.580
and shredding ribbon machine and had contacted Hallmark and basically
29:27.590 --> 29:30.250
said, we can give this to you and we can do some kind of license
29:30.260 --> 29:34.270
or a royalty basis agreement. And Hallmark cards basically kind of
29:34.280 --> 29:37.510
entertained it a little bit, but then decided to develop their own machine.
29:38.020 --> 29:41.920
And so they rejected Group ones offer, develops their own machine. And then
29:41.930 --> 29:45.910
later, Group one went to Sue Hallmark cards for patent infringement
29:45.920 --> 29:49.180
and lost because they had triggered the on sale bar.
29:49.640 --> 29:53.120
So even though the offer for sale was rejected,
29:53.130 --> 29:56.420
it still triggered the on sale bar. And it was obviously clear
29:56.920 --> 30:00.230
that it was ready for patenting because they were able to provide
30:00.240 --> 30:04.340
homework a bag of curled and shredded ribbon that was used in their machine.
30:04.350 --> 30:08.060
So it was clear that they had again set aside that two prong ready for
30:08.070 --> 30:11.630
patenting and commercial offer for sale. And so the other kind of interesting
30:11.640 --> 30:14.960
thing about this one was that even, like an offer for a
30:15.460 --> 30:18.950
license or a lease also triggers the on sale bar. So it's not necessarily like
30:18.960 --> 30:22.490
a an offer for sale, right? Because you're going to maintain control to some
30:22.500 --> 30:26.140
degree, but still going to trigger the on sale bar. And even,
30:26.150 --> 30:29.950
like rejected offers can trigger the on sale bar.
30:30.450 --> 30:33.370
Just like you said, Homework rejected the offer, but it still triggered the bar.
30:34.890 --> 30:38.890
And then there's another one, too, that lacks versus my catch
30:38.900 --> 30:42.040
ne vehicle component is another kind of decision that kind of revolve
30:42.050 --> 30:42.610
around this, too.
30:47.930 --> 30:51.720
Yeah. So interesting stuff. This is
30:51.730 --> 30:55.500
conflating a little bit experimental use an on sale. I think you could almost
30:55.510 --> 30:58.890
do a whole another presentation on experimental use because there's lots of kind
30:58.900 --> 31:02.970
of Gray areas there. But Clara
31:02.980 --> 31:06.510
Engineering versus Cancel company. And it was kind of a question
31:06.520 --> 31:09.900
of whether the on sale bar was triggered versus whether it was deemed
31:09.910 --> 31:13.950
experimental use. And some of the underpinnings of
31:14.190 --> 31:18.120
the experimental use provision actually dates way back to the 18
31:18.130 --> 31:21.900
hundreds to a court case that was the city of Elizabeth versus
31:21.910 --> 31:25.475
American Nicholson Pavement. It was a decision 118 78 and the
31:25.492 --> 31:29.310
three criteria of that for experimental use,
31:29.400 --> 31:33.090
where the inventor must maintain control of the invention,
31:33.100 --> 31:36.630
the inventor must not sell the and the inventor
31:36.640 --> 31:39.720
must not voluntarily allow others to use the invention.
31:40.080 --> 31:43.440
And this court case kind of relies on those three things
31:43.940 --> 31:47.390
to show that Paler actually didn't trigger the on sale bar,
31:47.890 --> 31:50.930
but they actually were in a state of experimental use. So they didn't
31:50.940 --> 31:54.740
have a confidentiality agreement. But Paler, the own employees
31:54.770 --> 31:58.040
installed maintained an uninstalled devices that did or did
31:58.050 --> 32:01.660
not work to figure out what was working. A little bit more background
32:01.670 --> 32:05.230
to Polar with a manufacturer of accessible pedestrian signal systems
32:05.240 --> 32:08.890
and pedestrian push buttons. So you can imagine that it's really important that
32:08.900 --> 32:12.010
they get it right, because somebody if it doesn't work,
32:12.040 --> 32:14.850
right. Obviously, that's dangerous for pedestrians.
32:14.860 --> 32:18.330
And so to them, it was they needed to experimentally
32:18.340 --> 32:21.570
test the system to make sure it worked as it was supposed
32:21.580 --> 32:25.080
to. So it on employees install these devices. I think
32:25.090 --> 32:28.530
the city of Fullerton and maintain those devices, removed them
32:28.540 --> 32:32.130
when they didn't work or needed to look at them. And they never explained
32:32.140 --> 32:36.040
to anybody how they worked. It wasn't really apparent
32:36.050 --> 32:40.000
how the devices work when they were installed. And so for all kinds of purposes,
32:40.390 --> 32:43.630
the Polar actually maintained control of
32:43.640 --> 32:47.290
their mention at all times and never explained to anyone how it worked.
32:47.500 --> 32:51.550
And even witnesses Popolare had indicated that it
32:51.610 --> 32:55.030
wasn't apparent how it would work on its face, that it would have needed to
32:55.040 --> 32:58.300
be explained, almost like a secret. Right. But the fact that they maintained
32:58.310 --> 33:02.380
control and it was clear that they needed it, I think the jury said
33:02.390 --> 33:06.280
that was clear that they needed it to prove whether it would work
33:06.290 --> 33:10.090
for its intended use, basically made it so that it
33:10.100 --> 33:13.700
was seemed to be experimental use and not not
33:13.710 --> 33:16.730
triggering the on sale bar. And so I think this is kind of a pretty
33:16.740 --> 33:18.980
pivotal decision for the excremental use.
33:19.190 --> 33:22.670
Those criteria for maintaining
33:22.680 --> 33:26.540
control, not voluntarily selling it, not allowing other people to use it kind
33:26.550 --> 33:29.840
of all are some of the meat of experimental use.
33:29.850 --> 33:32.930
So definitely you could do a whole presentation on that one alone.
33:33.240 --> 33:36.870
So another interesting one. The reason this
33:36.880 --> 33:39.120
has a green star is because it kind of gave me a little bit of
33:39.130 --> 33:42.240
a head scratcher for a minute. And so actually, Dan and I were talking about
33:42.250 --> 33:46.020
a little bit. So this is interesting because we have a lot of clients that
33:46.030 --> 33:49.410
do SBIR grants and things of that nature.
33:49.420 --> 33:52.950
And so in general, we do try to get something on file before they
33:52.960 --> 33:56.640
submit that. But usually in those cases, they are still very much in
33:56.650 --> 33:59.940
the experimental stage. They're still kind of figuring out what, if anything, is going
33:59.950 --> 34:03.490
to come out of their investigations. And so
34:03.500 --> 34:07.120
in here. So more than one year before
34:07.130 --> 34:11.170
the filing, RCA, which had already developed character generation
34:11.180 --> 34:14.560
equipment, submitted the proposal in response to a
34:15.060 --> 34:18.490
request for a proposal to the FAA, the Federal Aviation Administration
34:18.500 --> 34:22.120
for character generation equipment for us in air traffic
34:22.130 --> 34:25.990
control centers, and the question was, did submission of this
34:26.000 --> 34:30.250
proposal in response to the RFP,
34:31.240 --> 34:35.110
did that trigger the on sale bar? And here they actually
34:35.120 --> 34:38.350
found that it did. And partly is because if you go back to those
34:38.360 --> 34:41.440
kind of that two rule, it's commercial offer
34:41.450 --> 34:45.010
for sale and whether the invention was ready
34:45.020 --> 34:48.660
for patenting. And the invention was very clearly
34:48.670 --> 34:52.320
ready for patenting because it already reduced it to practice. So they was just basically
34:52.330 --> 34:56.130
them submitting it to the SFA FAA in hopes that they would pick
34:56.140 --> 34:59.670
it up and use it and then obviously give them reimbursement or pay them for
35:00.060 --> 35:03.930
their device. So they satisfy that Tupon test, whereas I think where
35:03.940 --> 35:07.170
the Gray area and this one comes in. But I would love to
35:07.180 --> 35:10.620
hear anybody else's depending on this is I think if it
35:10.630 --> 35:14.610
were like an SBIR grant or something. Again, you don't really have an invention
35:14.670 --> 35:18.160
quite yet. You have some hypotheses, you have some
35:18.170 --> 35:21.640
guesses, and you're hoping that the money can be used to figure out
35:21.650 --> 35:25.450
and find an invention. So I think that's kind of the difference between
35:25.480 --> 35:29.380
responding to a proposal like this versus some kind of grant or other kind of
35:29.390 --> 35:32.860
proposal is whether you fully have something or whether you're kind of waiting
35:32.870 --> 35:36.470
to have something. That was
35:36.480 --> 35:40.130
my thought, too. That makes sense. I think that in this case you said that
35:40.140 --> 35:43.910
the fact was that they had invention had been reduced to practice prior
35:43.920 --> 35:47.590
to this proposal, so that it was they were
35:47.600 --> 35:51.190
in possession of it. But actually a few of
35:51.200 --> 35:55.330
these cases and this as well, that other
35:55.340 --> 35:58.910
one is surprising to me that that
35:58.920 --> 36:02.180
applying for a grant is equivalent to an
36:02.190 --> 36:05.570
offer of sales, and then the same with licensing,
36:05.660 --> 36:09.590
because I thought I was actually trying to look for some things because I thought
36:09.600 --> 36:13.370
I had heard the opposite. But that case looks pretty solid.
36:13.380 --> 36:17.030
I'm wondering if maybe it's changed or something, or if I just had
36:17.040 --> 36:21.200
it wrong in my mind about about what triggers
36:21.210 --> 36:25.010
these. What types of sales trigger these on sale as
36:25.020 --> 36:28.280
well? I think that's where the great areas coming. So I do think it's a
36:28.290 --> 36:32.040
lot of to what degree is the invention reduced to practice? I think
36:32.050 --> 36:36.570
anything like proposal license,
36:36.810 --> 36:41.010
a royalty thing, some kind of the Hello
36:41.510 --> 36:43.440
one at the end here, too, is a little bit kind of gets into the
36:43.450 --> 36:46.440
most secret sale thing a little bit. So I think it's like I think all
36:46.450 --> 36:50.350
those could be viewed at viewed as on sale. But if it
36:50.380 --> 36:53.500
weren't ready for patenting, which I think is a little bit,
36:53.510 --> 36:58.120
you know, that's kind of a what are
36:58.130 --> 37:01.720
the meets and bounds of that right? When is something truly ready for
37:01.730 --> 37:04.930
patenting versus maybe need a little bit more work? I think that's
37:04.940 --> 37:08.680
where the Gray area is right. Where are you on that scale? And then somewhere
37:08.690 --> 37:11.860
at that scale, it's going to trigger the on sale bar. But at what point?
37:13.110 --> 37:16.540
Right. And at
37:16.550 --> 37:20.410
the risk of derailing your presentation a little bit,
37:20.420 --> 37:24.250
actually. Sorry. I think that there's some controversy
37:24.280 --> 37:30.730
about whether licensing triggers and on sale bar or not that
37:30.740 --> 37:33.640
somehow just stuck out in my brain. I don't know why I'm in. I was
37:33.650 --> 37:37.030
looking at an article that said in the early two thousands, Minton verse,
37:37.040 --> 37:40.420
Nasdaq, etc, etc, Hallmark cards found
37:40.430 --> 37:43.760
that a license maybe tantamount to a sale.
37:43.970 --> 37:47.210
But then there's another case that says the licensing of a patent
37:47.220 --> 37:50.060
does not trigger the on sale bar. This is caller,
37:50.480 --> 37:53.570
wait, which case is that? Caller,
37:53.760 --> 37:56.730
Is that the licensing of the patent, though, or the technology?
37:57.140 --> 38:00.050
Oh, that's the Quest licensing of a pattern.
38:00.240 --> 38:03.240
Right. We're just talking about future technology.
38:03.540 --> 38:05.640
Right. Because it's like, because in theory,
38:06.180 --> 38:09.600
because I think there's a different case later on. I can or if I discuss
38:09.610 --> 38:12.860
it here and not where it's like a
38:12.890 --> 38:16.790
future promise to grant a license under a patent
38:17.200 --> 38:21.160
doesn't trigger the on sale bar because you're not technically selling the
38:21.250 --> 38:25.120
invention. I promise you're, like licensing or granting rights
38:25.130 --> 38:27.100
to a future patent or something.
38:27.600 --> 38:31.140
Got that. I did not appreciate that distinction.
38:31.640 --> 38:33.150
Okay. It's freezing, buddy.
38:34.600 --> 38:37.930
Yeah. Okay. I was
38:37.940 --> 38:41.820
going through this. I didn't think there was going to be as much nuance
38:41.830 --> 38:45.690
as there was, because even there was another case. I am if I describe it
38:45.700 --> 38:49.300
here or not. We're like selling just if you technically
38:49.310 --> 38:52.260
sell technical insight to,
38:53.670 --> 38:57.450
like, an invention or process that doesn't trigger the on sale bar because it
38:57.460 --> 39:00.990
requires the receiving party to still reduce it to practice and figure
39:01.490 --> 39:04.740
it out. So you can sell, like, technical knowledge about something.
39:05.160 --> 39:08.770
And that doesn't trigger the on sale bar. So it's just, you know, it's one
39:08.780 --> 39:11.890
of those things where, like, you have to be super careful because I think
39:11.900 --> 39:15.340
it's really easy to step in something without really knowing that you're stepping in
39:15.350 --> 39:20.920
something. Yeah. So thank
39:20.930 --> 39:24.610
you for that point, though. Feel free to share those other I'd like to
39:24.620 --> 39:27.100
look at those other cases that you found too curious.
39:28.670 --> 39:31.950
Yeah. I see around this article. Sure.
39:31.960 --> 39:35.160
Awesome. Thank you. Yeah. And another one that
39:35.170 --> 39:39.720
was interesting was whether you are. So this
39:39.730 --> 39:42.570
is Quest integrity versus Coke Busters from 2019.
39:42.580 --> 39:46.950
So Quest had developed a method for kind
39:46.960 --> 39:50.100
of collecting, displaying inspection data for furnaces.
39:50.670 --> 39:53.280
And so prior to the critical patenting date,
39:53.500 --> 39:57.100
they had not sold the
39:57.110 --> 40:00.580
device or sold the method. But they performed the
40:00.590 --> 40:03.970
method for clients and then gave them the final report to, like,
40:03.980 --> 40:07.280
think of, like, going to some commercial building and
40:07.290 --> 40:11.180
basically doing a furnace inspection and then giving the client these Chroma
40:11.190 --> 40:15.440
reports. That's what they did. And it was found that because
40:15.740 --> 40:19.810
the later file patent covered the
40:19.840 --> 40:23.790
display method because they had to have a unique way of displaying
40:23.800 --> 40:27.570
it. And it covered the process through which the furnace
40:27.580 --> 40:31.440
data was collected, that they're performing
40:31.450 --> 40:34.620
the service and providing those reports did trigger the on sale bar.
40:35.240 --> 40:38.750
So even though they never sold the physical product or even any of the
40:38.760 --> 40:43.070
software, the fact that they provided the reports trigger
40:43.080 --> 40:46.820
the on sale bar. So I think that's really interesting from, like, a software software
40:46.830 --> 40:50.420
client perspective, because it's like, well, we just, you know,
40:50.820 --> 40:54.480
just on our website, we give clients
40:54.540 --> 40:58.290
this output about their health or something,
40:58.300 --> 41:02.040
and we don't ever sell them the actual software or
41:02.050 --> 41:05.370
some wearable or something, but really can still trigger the on
41:05.380 --> 41:08.580
sale bar, especially if it tracks to some later claims that they're protecting.
41:09.320 --> 41:11.360
I think that's a really interesting one.
41:12.260 --> 41:15.290
Yeah. I mean, it's a nice reminder to some extent,
41:15.300 --> 41:19.070
that when you patent a method or trying to patent a method, you are
41:19.080 --> 41:20.270
indeed patenting a method.
41:21.170 --> 41:26.390
You know, however time when
41:26.400 --> 41:29.090
you're patenting a method, you're indeed patenting a method,
41:29.360 --> 41:33.050
sort of, regardless of how depends on exactly on the claim,
41:33.550 --> 41:37.220
how it's tied to a machine. So here they never sold any machine.
41:37.250 --> 41:42.590
They never handed out any specific physical or
41:42.680 --> 41:46.420
otherwise item. But what they were after
41:46.430 --> 41:50.050
was a method, and they were commercially benefiting from the performance.
41:50.060 --> 41:53.990
I method. And so its subjects
41:54.020 --> 41:57.290
just as much to the on sale bar, although it
41:57.300 --> 42:00.560
looks like that you're keeping the invention to your sulfur,
42:00.570 --> 42:04.490
keeping the secrets in. But no, you are commercially
42:05.480 --> 42:08.720
utilizing the method that you are now seeking
42:08.730 --> 42:12.020
to patent. And the method. Yeah, it is a
42:12.030 --> 42:15.470
method. It is not necessarily tied to a specific machine unless
42:15.970 --> 42:19.030
the claim does. That surprising,
42:19.040 --> 42:23.650
but makes total sense. Those can
42:23.660 --> 42:28.870
I ask, just as a practical matter, I think
42:30.340 --> 42:34.180
various startups that I've worked at various stages of commercialization
42:34.190 --> 42:38.960
have based this problem where they're like, well, a manufacturing
42:38.970 --> 42:42.320
process, for instance, is being used to create a product,
42:42.820 --> 42:46.010
but it's invisible. It is not reverse
42:46.040 --> 42:49.520
engineer able at all. Right. So technically,
42:49.850 --> 42:53.570
the product is using that method, just like Dan said, and it triggers the
42:53.580 --> 42:57.780
on sale bar. And I mean, in practice, do companies
42:58.500 --> 43:02.490
follow those rules and like, how how
43:02.520 --> 43:06.690
do you advise
43:06.900 --> 43:10.260
clients in those situations? I mean,
43:10.290 --> 43:13.650
the trigger on sale by I think if you're keeping some of
43:13.660 --> 43:17.030
you're keeping the manufacturing method trade
43:17.040 --> 43:20.510
secrets, so it's not going to be found in a layered or patent in the
43:20.520 --> 43:23.320
claims, then that would trigger the on sale bar,
43:23.330 --> 43:26.680
because whatever is triggering down, so they have to be tied to
43:26.690 --> 43:30.010
the claim. I think that's actually in this next case, the subject now
43:30.020 --> 43:32.470
that was on sale has to tie to a patent claim,
43:33.550 --> 43:37.360
but the whole getting data, getting information.
43:38.080 --> 43:41.890
I think that line is hard,
43:41.900 --> 43:45.220
especially from the software world, because it pretty much has to be maybe I'm
43:45.230 --> 43:48.880
not getting to my understanding question right here. You know,
43:48.940 --> 43:52.540
I kind of put it is like, let's say a company is
43:52.550 --> 43:56.010
using a manufacturing process to make a product. They start selling
43:56.020 --> 43:58.740
that product. And then a year or two years later, they say, oh, we want
43:58.750 --> 44:01.860
to patent this process, but we've been using it to
44:01.870 --> 44:04.860
make products for two years, so technically, beyond sale,
44:04.870 --> 44:08.190
bar prevents them from getting that product. But. And I mean,
44:08.310 --> 44:12.060
I guess the answer is the risk to the company is that if
44:12.070 --> 44:15.370
they did ignore that, then and they could get a
44:15.380 --> 44:18.460
patent to the patent Office isn't going to know that they've been using it in
44:18.470 --> 44:22.120
a product. But down the road, if they ever tried to enforce that
44:22.130 --> 44:25.540
patent and ever goes to discovery, the patent could be invalidated
44:25.550 --> 44:29.300
because technically did break that rule. Is that
44:29.310 --> 44:32.360
kind of like, right? Yeah. I mean, that's my understanding,
44:32.370 --> 44:35.720
right. I think there is some public facing part of it.
44:35.730 --> 44:41.180
But, yes, selling the product that was built by this manufacturing process, I think it's
44:41.190 --> 44:45.080
better to file multiple
44:45.090 --> 44:48.960
Provisionals that you can allow to disappear into the ether
44:48.970 --> 44:51.990
should you decide not to convert them then to,
44:52.820 --> 44:55.790
you know, later, be like, oh, shit. I wish she would have done something,
44:55.800 --> 44:59.700
but it's tough because, you know, it's easy to
44:59.710 --> 45:03.360
say, well, that's not that valuable right now, but then change your mind
45:03.860 --> 45:07.240
later and budget and everything. You know, I've been to a
45:07.300 --> 45:10.750
few different companies in the IP side where product is
45:10.760 --> 45:13.450
about to be sold, and there's a big review. Okay.
45:14.130 --> 45:17.170
There's hundreds and hundreds of processes
45:17.180 --> 45:20.710
going into making this product, what you're covered, which aren't what do we want a
45:20.720 --> 45:24.400
patent now? And there's always constraints. And then
45:24.410 --> 45:27.730
down the road, people change their mind for various
45:27.740 --> 45:31.090
reasons. So. Yeah, it's a tricky one. I think
45:31.100 --> 45:34.540
a lot of companies face this. And I was just curious to see how you
45:34.600 --> 45:37.510
all advise companies in those situations.
45:38.340 --> 45:41.890
Yeah. I I feel like I'm trying to think
45:41.900 --> 45:45.430
of a case where I think our biggest
45:45.550 --> 45:49.180
issue has been software people where they just well,
45:49.190 --> 45:52.620
nobody knows how it or nobody knows
45:53.120 --> 45:56.820
how it does. Like, yeah, but it's still a problem. The fact that you had
45:56.830 --> 45:59.550
it out there, the fact that you were doing things with it, that it was
45:59.560 --> 46:03.180
available is still a problem. And a
46:03.190 --> 46:06.810
lot of companies trying to reconcile this, nobody knows how to
46:07.180 --> 46:10.930
do what we're doing from a software perspective. So it doesn't really matter that it
46:10.940 --> 46:14.500
was out there. And it's like, well, you know, I get your
46:14.510 --> 46:18.460
point. But all of us, we shouldn't forget
46:18.470 --> 46:21.970
all of us, as passant agents, have the ethical requirements
46:22.470 --> 46:24.530
to disclose what we know to the patent Office. Right.
46:24.880 --> 46:28.520
It's been used to make a product we technically
46:28.530 --> 46:32.330
have to disclose that. Right. So then it actually wouldn't get through the patent
46:32.340 --> 46:36.440
Office. Yeah. I mean, you'd have to find the I
46:36.500 --> 46:40.340
don't know. I suppose, like, the websites and stuff from the selling aspect
46:40.370 --> 46:42.830
of it. Right.
46:43.100 --> 46:46.670
Nobody ever had to submit, like, from, like, an IDs perspective,
46:46.680 --> 46:50.020
has anyone ever had to submit, like, purchase order or anything.
46:50.030 --> 46:51.340
Has anybody ever had to do that?
46:53.100 --> 46:56.860
You know what I mean? I'm, like, presumably we
46:56.980 --> 47:00.040
haven't had that issue before, but like, if somebody had been selling it,
47:00.350 --> 47:04.020
you know, have you had to submit,
47:04.050 --> 47:07.350
like, a purchase order and an IDs before? You know what I mean?
47:07.920 --> 47:10.410
To prove that it wasn't?
47:12.800 --> 47:16.260
Well, I do need to disclose right up. Your client
47:16.270 --> 47:19.860
says you look, this was on sale six months before
47:19.870 --> 47:22.020
we filed. You know,
47:22.710 --> 47:27.150
there's the purchase order or because it's seen in the Grace period on
47:27.160 --> 47:29.760
it matters. It doesn't matter as much. Okay.
47:30.600 --> 47:34.710
So it's interesting. So many
47:34.720 --> 47:38.070
combines related.
47:38.100 --> 47:41.790
I'm sorry I lost connectivity briefly, but maybe you talked about this,
47:42.290 --> 47:45.960
but the but in this scenario,
47:46.020 --> 47:49.500
you have a method that you decided to keep as a trade
47:49.510 --> 47:52.800
secret. Right. And you're producing your product for a while,
47:53.970 --> 47:57.600
and now somebody else comes along and happens your
47:57.630 --> 48:01.350
method. Right. Right. You do have since you have
48:01.850 --> 48:08.450
been using it. Right. You are there's
48:08.460 --> 48:12.290
a notion that you're protected from any subsequent in
48:13.190 --> 48:15.990
that scenario? Is that a publication? Right.
48:16.050 --> 48:18.000
Is your method.
48:18.380 --> 48:21.800
If you miss it out there, can somebody else get a patent on
48:21.810 --> 48:26.120
your method? I mean,
48:26.130 --> 48:29.270
it's first to file up. So they're filing first, but you have had it in
48:29.280 --> 48:33.020
use, and you've had the product, even though your method was not obvious on
48:33.030 --> 48:36.430
the market. Yeah. My understanding of that is that
48:36.440 --> 48:39.640
if anybody independently comes up with your same
48:39.970 --> 48:43.900
process, they can use it and patent it in theory. But obviously
48:43.910 --> 48:47.020
you've been using it before, so presumably the path would be held in
48:47.030 --> 48:50.340
valid. But then they also couldn't back get you
48:50.350 --> 48:53.250
for infringement because you could show in theory because you could show,
48:53.500 --> 48:56.920
you know, pre dating. Right. That you could show that
48:56.930 --> 49:00.100
you have been using it well before their patent ever was filed.
49:01.420 --> 49:05.150
I'm not an expert on this, but that was my understanding also that if
49:05.160 --> 49:08.210
you kept it as a trade secret and it was never published anywhere, that is
49:08.220 --> 49:11.810
a risk anybody can pass and get a valid patent
49:11.820 --> 49:15.140
on that. But you have some protection. This is where I'm
49:15.150 --> 49:18.710
not totally clear. I thought Sedan unmuted. Maybe he knows more
49:18.720 --> 49:22.040
about it because some protection if you've been using it against
49:22.070 --> 49:28.250
being sued. But I don't know exactly what that is. Yeah. I perhaps
49:28.260 --> 49:31.880
betrayed a greater confidence in this answer than I
49:31.910 --> 49:35.600
actually have. But I would suspect
49:35.610 --> 49:39.200
that you'd end up in a situation where it's probably going to
49:39.210 --> 49:42.470
be long, painful court case.
49:43.070 --> 49:47.940
But I would think that in the end, nobody gets a patent and
49:47.950 --> 49:51.540
nobody's infringing. Probably nobody gets a patent. So therefore,
49:51.550 --> 49:55.260
nobody's infringing. But that's probably going to be a protracted case.
49:55.650 --> 49:58.890
They trade secrets are wonky. And I am by
49:58.900 --> 50:04.110
no means an expert. And I think maybe a little bit of additional
50:05.610 --> 50:08.940
advice that I've gotten is the problem also with that is
50:09.300 --> 50:12.270
you might not be found to be infringing,
50:13.020 --> 50:16.740
and the patent may be found to be Invalid since it
50:16.750 --> 50:20.310
was used, although there could very well be a follow
50:20.320 --> 50:23.910
up happen. That could very well be some dependent
50:24.410 --> 50:27.870
claims, some details in there that as you
50:27.880 --> 50:33.630
improve your method, you may be precluded from getting into your
50:33.690 --> 50:37.230
right to use is limited to exactly the way you were doing it.
50:37.500 --> 50:41.550
They have any alterations, any improvements
50:41.560 --> 50:45.300
that you then also want to implement, you just cannot go there anymore.
50:45.800 --> 50:49.100
No, that's very fair. And that's a great strategy, too. From like,
50:49.110 --> 50:51.560
we're actually just talking about this in a client meeting the other day.
50:51.840 --> 50:54.600
But if you want to kind of get a laying up on your competitors,
50:54.690 --> 50:58.630
taking their products, having our engineering team
50:58.870 --> 51:02.350
look at them and devise ways that they would improve
51:02.850 --> 51:06.280
them and file on those to kind of put stops on your competitor from
51:06.290 --> 51:09.910
improving their own products and kind of getting some Arsenal in case
51:09.920 --> 51:13.960
they ever wanted to come after you. You also have some some things
51:13.970 --> 51:16.840
in your back pocket, too. Right.
51:18.090 --> 51:22.230
That's true. That would be a tricky that would be a mean mean
51:22.730 --> 51:27.810
trick, but I'm sure it's happened. So my
51:27.820 --> 51:31.500
advice generally is to also file in methods. Is that what
51:32.000 --> 51:35.280
practice you guys, or what strategy you propose to your clients,
51:35.740 --> 51:38.980
do you message and devices?
51:39.320 --> 51:42.230
Yeah. I was generally try to find a method,
51:42.240 --> 51:45.530
slip it in there. I mean, sometimes the methods end up being
51:45.650 --> 51:49.740
kind of week, but if you've got the
51:49.750 --> 51:52.380
space and the claim set for them and clients on the pay,
51:53.200 --> 51:57.550
it's certainly just having options. Having a different
51:57.560 --> 52:01.390
perspective on the same thing can be valuable because you can't
52:01.890 --> 52:05.080
always predict what the future has in store
52:05.090 --> 52:08.620
for development of the tech, what your competitors, how your competitors are going to
52:08.630 --> 52:10.630
phrase things. So generally,
52:12.020 --> 52:15.920
I've historically always tried to find methods
52:16.130 --> 52:19.250
relevant to the device, regardless of what the device is.
52:20.690 --> 52:23.850
One thing I started thinking about a lot more on that
52:23.860 --> 52:27.560
note is who's infringing, you know, and so in some
52:27.570 --> 52:30.500
cases, you might have a system and you might have a method and then someone
52:30.530 --> 52:33.890
or an apparatus, someone's manufacturing the apparatus,
52:33.900 --> 52:37.600
but different people are using. So the method is actually going after different
52:37.610 --> 52:41.980
in printers. And in some cases, those in printers might be customers
52:42.480 --> 52:47.620
in the living room. And that's probably not a valuable claim. But if you're a
52:47.630 --> 52:50.950
service or rather selling
52:50.960 --> 52:55.210
a lot of equipment to companies, a applied materials
52:55.220 --> 52:58.960
to sells manage the processing equipment to intel, a method of using
52:58.970 --> 53:02.290
that piece Boomi's going to be infringed by intel,
53:02.300 --> 53:05.260
but the equipment itself would be infringed by applied materials.
53:05.740 --> 53:09.550
I think about that a lot more. I'm doing a lot of
53:09.560 --> 53:13.000
analysts, more analyst work now, analyzing claims and for
53:13.010 --> 53:16.570
buying and selling and claim charts and stuff. And it's all about who's infringing.
53:20.040 --> 53:20.970
Good point.
53:23.160 --> 53:26.640
Awesome. Great discussion. I'm going to jump ahead
53:26.650 --> 53:29.040
here. I think we kind of talked,
53:29.220 --> 53:32.940
but yeah, I mean, it's just for this one,
53:32.950 --> 53:35.370
we talked about this on the fact that the on sale,
53:35.960 --> 53:39.500
the subject matter for that on sale bar must meet
53:40.000 --> 53:43.580
a claim limitation, even inherently in this case with the scale Tech versus
53:43.910 --> 53:47.600
Retach or Tetra 2001, it inherently
53:47.610 --> 53:51.280
satisfied certain limitations. So that's
53:51.290 --> 53:54.910
required. And then the last, a long awaited one, which I think was the biggest
53:54.920 --> 53:58.900
unknown for Pre AI. Ai was just the secret sale
53:58.910 --> 54:02.800
because or otherwise available public to the public provision
54:02.810 --> 54:06.150
of AI seemed like maybe secret sales were okay.
54:06.160 --> 54:09.870
And that's what I think, what everybody was hoping. But what they found in Helson
54:09.880 --> 54:13.800
versus Teba Pharmaceuticals was that House
54:13.810 --> 54:17.640
had executed a license. The House was basically a drug company.
54:17.650 --> 54:21.180
They had executed a license and a supply and purchase agreement
54:21.190 --> 54:25.180
with Mga Pharma. And this agreement required confidentiality,
54:25.190 --> 54:28.600
but was also publicly announced the agreement had two different dosages in
54:28.610 --> 54:31.810
it. And then later, he on file the Pent,
54:32.160 --> 54:35.430
two years later, recovering the two different dosages
54:35.440 --> 54:39.660
in that agreement. And it was found that the the
54:40.050 --> 54:43.230
agreement with Mga Pharma, although it required confidentiality,
54:44.010 --> 54:47.850
still did trigger the on sale bar. It did have two dosages in
54:47.860 --> 54:51.180
it. And even though those dosages were not made public, the agreement
54:51.190 --> 54:54.150
was made public, and it was offered for sale, and it was clearly ready for
54:54.160 --> 54:57.720
patenting because they had executed this agreement with them. And so
54:57.730 --> 55:00.900
that's one of those things were now basically in this case.
55:00.910 --> 55:04.860
The other interesting statement that was made by the court was that outside
55:04.870 --> 55:09.420
of the in country in this country provision of Pre and
55:10.220 --> 55:13.070
AA did not change the on sale bar,
55:14.190 --> 55:18.280
that anything any of the case law that Predated AI
55:18.400 --> 55:21.910
and now is after a the on sale bar
55:21.920 --> 55:25.870
did not change outside of the in this country provisions. I think
55:26.200 --> 55:29.830
I would wager that that statement in this decision
55:30.330 --> 55:33.520
is going to be echoed in many, many other decisions about the on sale
55:33.530 --> 55:37.090
bar that basically said, look, we've already ruled on the on sale bar PREA.
55:37.100 --> 55:40.630
And as the Supreme Court said, nothing really
55:40.640 --> 55:44.500
changed except the country in this country provision. And so all the other things
55:44.510 --> 55:47.950
that we've already said still apply, including secret sale issues and different
55:47.960 --> 55:51.430
things like that. And so I think this case is pivotal for multiple reasons,
55:51.440 --> 55:54.670
not only the secret sales, but also the fact that they kind of said we've
55:54.680 --> 55:57.520
kind of been there, done that with all of this, and it hasn't really changed.
56:01.480 --> 56:04.630
So the last two things I have I love this
56:04.640 --> 56:08.080
quote, and this came from the fastest decision. But I was
56:08.090 --> 56:11.620
actually quoting another decision, the moralizing engineering versus Kenyon bearing
56:11.630 --> 56:15.340
auto parts. And I think this kind of just clearly shows
56:16.090 --> 56:19.320
the point to the patent system. The quote says it
56:19.330 --> 56:23.070
is a condition upon an inventor's right to a patent that he shall not exploit
56:23.080 --> 56:26.390
to discovery, competitively after it is ready
56:26.400 --> 56:29.930
for patenting, you must content himself with either secrecy or
56:29.940 --> 56:33.800
legal monopoly. And it's this whole idea is that make your
56:33.810 --> 56:37.100
decision and stick with it because you can't have your cake
56:37.110 --> 56:40.430
and eat it too, right? You can't do both. So determine which
56:40.440 --> 56:43.520
one you want to do and stick with it, because there's not a lot of
56:43.530 --> 56:44.330
options to go back.
56:47.500 --> 56:52.130
Very I I just spoke
56:52.140 --> 56:55.600
to me. You can see my green heart anyway,
56:55.610 --> 56:59.230
take kind of my conclusions from it is that advertising
56:59.240 --> 57:02.410
a product not yet developed or hasn't been reduced to practice or pre
57:02.910 --> 57:07.150
announcing a product, like if you were to pre announced on maybe even one
57:07.160 --> 57:10.300
of those crowd source funding things. If you haven't actually made
57:10.310 --> 57:13.300
the product yet, you're probably not going to trigger the on sale bar because it
57:13.310 --> 57:17.500
wasn't ready for patenting. And I kind of alluded to this earlier, just transferring
57:17.510 --> 57:20.620
technical knowledge about a process does not necessarily trigger
57:20.630 --> 57:24.310
the on sale bar. A manufacturing agreement to
57:24.320 --> 57:27.340
kind of provide you with the product is not necessarily
57:27.430 --> 57:31.270
trigger band sale bar. And then if the inventor can maintain
57:31.280 --> 57:34.690
control and argue experimental use, that might also not trigger
57:34.700 --> 57:37.480
the on sale bar, but licensing agreements,
57:37.980 --> 57:41.170
performances of services that are patent protected
57:41.230 --> 57:45.250
can providing detailed technical drawings to a potential license
57:45.260 --> 57:49.000
can even unaccepted or cancelled orders can trigger the on
57:49.010 --> 57:52.900
sale bar. And then secret sales can also trigger the on
57:52.910 --> 57:56.640
sale bar. So definitely not black and white,
57:57.760 --> 58:00.970
but very interesting kind of body of case.
58:00.980 --> 58:07.320
I would say what
58:07.350 --> 58:11.080
provoked you to take this on? Was this something that you was this
58:11.090 --> 58:16.580
initiative that you came across yourself, or was it just you being curious
58:16.590 --> 58:19.740
as you are and pursuing it that's
58:19.750 --> 58:22.830
kind of multiple? I think it's one of those things that comes up all the
58:22.840 --> 58:26.040
time with clients is like, well, I did this or I'm
58:26.050 --> 58:30.180
thinking about doing this to what degree is going to be problematic.
58:30.240 --> 58:34.440
But then we've been trying to from
58:34.940 --> 58:38.030
a since since Josh joined the team,
58:38.150 --> 58:41.240
we've been trying to be more tech
58:41.300 --> 58:44.720
focused, SEO focused, all that kind of stuff.
58:44.730 --> 58:48.620
So it's also trying to find interesting things to blog
58:48.630 --> 58:52.580
about and whatnot. So it's also kind of finding
58:52.590 --> 58:56.020
kind of double dipping, right? If I'm going to, you know, look into
58:56.030 --> 58:59.620
this because I'm personally interested, then I might as well do you work
58:59.630 --> 59:02.920
with you guys on it? Because I'm always interested about your opinions, and I might
59:02.930 --> 59:05.950
as well do some kind of blog on it. You know, me is just kind
59:05.960 --> 59:09.290
of this across the board double dipping as well.
59:09.350 --> 59:12.680
But a lot of things, it's hard for me to devote time to something these
59:12.690 --> 59:16.960
days unless I'm like, personally interested. So I try to find things
59:16.970 --> 59:20.920
that you kind of get my curiosity going, and it causes me
59:20.930 --> 59:25.070
to want to dig in. So in terms
59:25.080 --> 59:28.790
of practical advice, I mean, there's a lot of lessons that you've gone through,
59:28.800 --> 59:30.380
but doesn't it seem like,
59:32.100 --> 59:35.910
you know, extensive, aggressive filing
59:35.920 --> 59:40.320
a provisional patent is sort of the
59:40.820 --> 59:44.010
aspirin for this whole thing, right. I mean, isn't that
59:44.020 --> 59:47.330
the easiest way to take care of this? Yeah.
59:47.340 --> 59:49.880
I mean, I think it's a budget is right. I think for sure.
59:50.480 --> 59:54.620
I I agree with actually filing
59:54.710 --> 59:57.740
many Provisionals is the aspirin for most things,
59:57.750 --> 1:00:01.730
if the client can afford it and
1:00:01.740 --> 1:00:05.270
there's constantly I always like to propose rolling
1:00:05.770 --> 1:00:08.630
divisional. Theoretically, that's a grand idea,
1:00:09.380 --> 1:00:13.130
but your clients want to constantly pay for you to keep updating
1:00:13.140 --> 1:00:16.750
and refiling something. Right. Do you
1:00:18.030 --> 1:00:21.670
go ahead? Just other pieces. I see. I think
1:00:21.680 --> 1:00:25.060
it's also empowering clients, though, because a lot of clients are very gifted
1:00:25.320 --> 1:00:29.550
writers, honestly, because they do have to do technical specifications and
1:00:29.560 --> 1:00:33.780
they do have to they're conversing with their people and manufacturers
1:00:33.790 --> 1:00:37.770
and stuff like that. And so I think sometimes empowering them to to say if
1:00:37.780 --> 1:00:41.380
you have time, of course we're here if you don't have time. But if you
1:00:41.390 --> 1:00:44.440
have time, if you want to take a first pass, you're taking a first pass
1:00:44.450 --> 1:00:48.010
is going to greatly reduce my workload, and it's going
1:00:48.020 --> 1:00:51.430
to obviously impact your budget positively if that happens.
1:00:51.790 --> 1:00:54.940
So I think there's some value there,
1:00:54.950 --> 1:00:58.720
depending on depending on the client and their business, their budget,
1:00:58.730 --> 1:01:04.700
the use case, all that kind of stuff. So this
1:01:04.790 --> 1:01:08.510
probably is another topic. But do you have
1:01:08.520 --> 1:01:11.990
an approach to filing a very slim
1:01:12.110 --> 1:01:12.770
provisional?
1:01:15.040 --> 1:01:18.640
How do you minimize the work of
1:01:18.650 --> 1:01:22.000
a provisional and get credit for the
1:01:22.280 --> 1:01:25.730
concept? I guess maybe that's a topic for another
1:01:25.740 --> 1:01:29.030
day, but it's just something that I face.
1:01:29.750 --> 1:01:33.420
And I'm curious. I mean, we've seen a couple
1:01:33.430 --> 1:01:36.720
of different ways, so we've had some clients to have you a little bit deeper
1:01:36.730 --> 1:01:40.470
portfolio already. So the way to kind of get concepts on file more
1:01:40.480 --> 1:01:44.340
quickly is we harvest stuff from other applications
1:01:44.350 --> 1:01:48.540
that has Marian value, and it's kind of like the underpinning
1:01:48.550 --> 1:01:52.080
of the new technologies. You can take a lot of that from,
1:01:52.090 --> 1:01:56.370
like, a support enablement disclosure perspective. And then you
1:01:56.380 --> 1:01:59.470
spend, like, another four pages on the actual
1:01:59.480 --> 1:02:02.650
invention, draft some claims out and file it.
1:02:02.660 --> 1:02:06.130
And then you have that enabled that supported. There's disclosure,
1:02:06.140 --> 1:02:10.000
you have claims. But yet, you know, it didn't require you to draft
1:02:10.010 --> 1:02:14.260
a whole new 20 page document. And then other ones we
1:02:14.270 --> 1:02:18.070
have had is that they did. There was like some this isn't great,
1:02:18.250 --> 1:02:22.090
but there was some pre publication activity, but they did improve
1:02:22.100 --> 1:02:24.910
upon it. So you take that publication as kind of some of the basis,
1:02:25.410 --> 1:02:28.210
but then again, draft upon it. Right.
1:02:28.220 --> 1:02:31.930
Here's the improvements. But for those technologies, for the
1:02:31.940 --> 1:02:36.010
small companies where it's, like, completely new, it's completely, you know,
1:02:36.020 --> 1:02:37.990
it's a slim provision is hard.
1:02:39.530 --> 1:02:43.230
Right. The other strategy is as
1:02:43.240 --> 1:02:46.770
a consultant, particularly at the beginning of my career, I was
1:02:46.780 --> 1:02:50.220
managed by patent attorneys who took the approach that they would give
1:02:50.230 --> 1:02:53.670
me. Very simply, they would give me a number of hours. And maybe one can
1:02:53.680 --> 1:02:57.030
do that for oneself. To say I have 8 hours and whatever I
1:02:57.040 --> 1:03:00.450
can get into 8 hours is all I'm going to do. Right. Right.
1:03:01.470 --> 1:03:05.520
It was really dissatisfied to me sometimes, but I think from
1:03:05.530 --> 1:03:09.300
the clients perspective that made sense, they added was
1:03:09.310 --> 1:03:12.690
like, most of these things are not going to be worth the paper that it's
1:03:12.700 --> 1:03:15.570
written on it, particularly if you're filing early.
1:03:16.020 --> 1:03:19.380
So we are just going to limit the budget. Right. And we're
1:03:19.390 --> 1:03:22.170
just going to say here, go for it 8 hours. Do as much as you
1:03:22.180 --> 1:03:24.650
can. And that's got to be enough. Right.
1:03:27.700 --> 1:03:31.080
Okay. I mean,
1:03:31.090 --> 1:03:34.560
what about incorporating by reference, right. I mean,
1:03:34.570 --> 1:03:37.790
that would be another way to bulk it up.
1:03:39.400 --> 1:03:42.550
Well, but I don't think Europe and
1:03:42.560 --> 1:03:45.460
other countries like that respect that. I don't know,
1:03:46.200 --> 1:03:50.200
you know, from like, a priority document perspective. I don't know if
1:03:50.210 --> 1:03:53.530
that would hold up. Yeah, that might
1:03:53.540 --> 1:03:57.610
work out if you're planning to just stay in the US. But if this
1:03:57.620 --> 1:04:01.030
is potentially a big case going maybe worldwide,
1:04:01.120 --> 1:04:04.570
that's a large gamble. If you have substantial material,
1:04:04.940 --> 1:04:08.180
critical material in an incorporation
1:04:08.190 --> 1:04:11.580
by reference. Yeah. It's not easy. There's nothing always trade off. I think that's
1:04:11.590 --> 1:04:14.760
the biggest thing to write is articulating those trade offs. That like, yes, we can
1:04:15.000 --> 1:04:18.990
limit the amount of time or we can limit the budget, or we can not
1:04:19.200 --> 1:04:22.350
include claims. Or if you have figures, we can just use those.
1:04:22.360 --> 1:04:24.960
But there's going to be some trade off. And so if you end up,
1:04:24.970 --> 1:04:28.320
it ends up being, like, the pivotal technology to your company.
1:04:28.770 --> 1:04:32.580
Skimping at this stage could cause problems. It's just
1:04:32.590 --> 1:04:35.890
hard to know what those problems are going to be. Awesome.
1:04:35.950 --> 1:04:38.860
Well, thanks for participating, everybody today. I really appreciate that.
1:04:38.870 --> 1:04:43.000
A good, lively discussion on all friends. Maybe. It's like the Reinvigorated
1:04:43.010 --> 1:04:45.680
New Year. Yeah,
1:04:46.960 --> 1:04:50.550
it was a good topic. Thanks. Yeah. Thank you,
1:04:50.560 --> 1:04:54.000
Ashley. Alright. Alright. Thanks. Everybody will have a great rest
1:04:54.010 --> 1:04:57.510
of your Tuesday. Thank you, Ashley. In you
1:04:57.520 --> 1:05:01.350
too. Bye bye. All right. That's all for
1:05:01.360 --> 1:05:04.920
today, folks. Thanks for listening. And remember to check us out at Aurora patents dot
1:05:04.930 --> 1:05:08.070
com for more great podcast, blogs and videos covering all
1:05:08.080 --> 1:05:11.490
things patent strategy. And if you're an agent or attorney, it would like to be
1:05:11.500 --> 1:05:14.700
part of the discussion or an inventor with a topic you'd like to hear.
1:05:14.730 --> 1:05:18.450
Discuss. Email us at podcast and roatans com
1:05:18.900 --> 1:05:21.540
until next time. Keep calm and patent on.
1:05:32.800 --> 1:05:35.720
I'll email you about that. Yeah,
1:05:35.730 --> 1:05:38.120
absolutely. Your Rooster.
1:05:38.630 --> 1:05:39.080
It's more.
00:03.980 --> 00:07.650
Good day. And welcome to the very first episode of Patently
00:07.660 --> 00:10.890
Strategic, where we discuss all things at the intersection of business,
00:10.900 --> 00:14.850
technology and patents. This podcast is a monthly discussion amongst
00:14.860 --> 00:17.640
experts in the field of patenting is for inventors,
00:17.760 --> 00:21.880
founders and IP professionals alike. Today we have an exceptionally
00:21.890 --> 00:25.480
great group to kick things off. If my math is correct, there are at least
00:25.490 --> 00:29.680
four PhDs in 56 years combined patenting experience represented
00:29.690 --> 00:32.920
here. That's a whole lot of College debt and a ton of insight packed into
00:32.930 --> 00:35.860
the next hour. In this inaugural episode, Ashley Slope,
00:35.890 --> 00:38.950
President and director of patent strategy here at Aurora, leads a
00:39.450 --> 00:42.730
deep dive into the on sale bar and the trap door esque implications of selling
00:42.740 --> 00:46.450
your innovation before filing. I assure you, future self will.
00:46.460 --> 00:49.660
Thank you for listening, and this will be a recurring theme as we progress through
00:49.670 --> 00:52.840
the series. But before we get into the heavy stuff, we also like to
00:52.850 --> 00:56.590
start with some lightweight but relevant topics. Today, the group chats about
00:56.600 --> 00:59.980
prospective shaping professional development books, takes an interesting
00:59.990 --> 01:03.280
trip down the patent prosecution highway into some fun and a potentially
01:03.290 --> 01:06.760
controversial strategy tidbits, and then gets really interrupted by
01:06.770 --> 01:10.150
Hawaiian jungle fowl. Ashley is joined today by
01:10.160 --> 01:13.630
David Jack Roll, President of Jack Ro Consulting, David Cohen,
01:13.750 --> 01:17.770
principal at Cohen Sciences, Catherine Corette, senior director
01:17.780 --> 01:21.130
of intellectual property at Perfect Day. Katherine, please forgive
01:21.140 --> 01:24.760
me if I didn't completely nail that. And Daniel Right, partnership manager and
01:24.770 --> 01:28.060
patent strategist here at Aurora. All right, take it away, Ashley.
01:28.280 --> 01:31.910
David Cohen already said he doesn't have any professional books in mind,
01:31.920 --> 01:35.330
but does anybody else have any professional books in mind that they'd like to
01:35.340 --> 01:38.760
share? One that kind of revolutionized the way you think about things,
01:38.770 --> 01:43.240
or one of the ones that was one of your more favorite ones I could
01:43.740 --> 01:46.300
start. I mean, I'm not a big I'm kind of in the same boat as
01:46.310 --> 01:49.760
David. I'm not a big reader of management
01:49.770 --> 01:53.330
books, and I actually would love to hear other people's
01:53.340 --> 01:56.660
recommendations, if there's any that are like IP specific.
01:56.690 --> 02:00.650
The management books that I read was more when I was kind of
02:00.660 --> 02:03.680
in the third of engineering that manufacturing world.
02:03.690 --> 02:07.070
And so there are two that I could recommend, although it may not be
02:07.080 --> 02:09.590
relevant for people, maybe more for our clients.
02:09.600 --> 02:13.130
But Good Degree is a very famous one, but it's
02:13.140 --> 02:16.310
really good because the same author wrote Built to Last and then Good Degree
02:16.320 --> 02:19.660
is really cool. It's about culture.
02:19.990 --> 02:23.680
Corporate culture, in a nutshell. So I had a CEO who was really into culture,
02:23.690 --> 02:27.010
had everyone on our team read good to grade, and it was
02:27.020 --> 02:29.950
kind of like know your DNA as a company.
02:30.070 --> 02:33.610
One of the examples that really stuck out to me is Philip Morris to
02:33.790 --> 02:37.090
Phillip Morris. If you work for Phillip Morris, you get your bonuses
02:37.150 --> 02:40.670
in cartons of cigarettes like
02:40.680 --> 02:44.420
this. Maybe not anymore. This is maybe in the 80s or 90s. Or nothing.
02:44.430 --> 02:47.810
Boy, that was the culture that company. They were
02:47.820 --> 02:51.200
like it. He loved it. If you didn't love tobacco and love their
02:51.210 --> 02:53.210
products, like, don't work here. You know,
02:55.930 --> 02:59.780
Sony. Sony is obviously, but he missed
02:59.790 --> 03:03.140
whatever. But one of the things Sony did was way different from a
03:03.200 --> 03:06.740
lot of other people, culture wise. They've always thought about a
03:06.750 --> 03:10.320
hundred year plan. They're like were only going to be in
03:10.330 --> 03:13.680
100 years. And they just a really interesting
03:13.690 --> 03:16.890
kind of like perspective again, could be all different. No, this is like a
03:16.900 --> 03:20.070
plus years ago, but stuff like that just culture.
03:20.080 --> 03:23.160
What is it and all that stuff. And then that was kind of the main
03:23.170 --> 03:27.030
one. I'll just give a plug for if anyone who's in manufacturing,
03:27.060 --> 03:30.200
because I feel like if you're new to it,
03:30.210 --> 03:33.350
there's a really great book that's a really easy read.
03:33.360 --> 03:37.640
And it's a very story called The Goal. And it's a management
03:37.730 --> 03:41.390
oriented novels about a fictitious
03:41.480 --> 03:44.780
manager who's running a company of a manufacturing
03:44.790 --> 03:48.110
plant. I'm trying to save it, but it's very, very famous.
03:48.200 --> 03:51.350
It's like a seminal book on manufacturing and operations,
03:51.440 --> 03:55.190
management and Kanban and just like
03:55.200 --> 03:58.940
all that manufacturing operational flow. And did you have any any you
03:58.950 --> 04:03.710
want to share? Yeah. I don't
04:03.720 --> 04:08.060
believe I've ever read Bizdev management book.
04:08.720 --> 04:12.680
Closest thing I could recommend would be John
04:12.890 --> 04:17.660
Cogs that's with two as hiking with Niche.
04:17.670 --> 04:21.500
I studied philosophy in addition to chemistry and
04:22.000 --> 04:25.370
College with my fairly
04:25.870 --> 04:29.420
niche kind of response towards freedom. I actually found
04:29.430 --> 04:33.470
that that book was a nice introduction to
04:33.650 --> 04:37.840
get started, really looking into kind of what Niches
04:37.850 --> 04:40.570
call towards what is our relationship towards the world,
04:41.810 --> 04:45.690
how are we to respond and interact
04:45.780 --> 04:49.610
with what is given? And those
04:49.620 --> 04:52.880
lessons quite powerful and relevant. And so I
04:52.890 --> 04:56.990
don't know how much this is going to be helpful for improving your
04:57.490 --> 05:01.280
manufacturing processes, but it's a
05:01.290 --> 05:04.650
good book. It's an easy read and getting
05:04.660 --> 05:08.160
a great introduction into Indonesias works,
05:08.170 --> 05:11.520
which I found have been quite personally valuable.
05:11.840 --> 05:14.740
Enlightening, very cool.
05:14.750 --> 05:18.470
Nice, awesome. The one I was
05:18.480 --> 05:21.800
going to share that I thought was just kind of
05:21.810 --> 05:25.580
central to even just human interaction, but also business interaction was
05:25.590 --> 05:29.240
radical candor by Kim Scott. And the reason I think
05:29.250 --> 05:32.810
it's so hard to have tough conversations with people. Right.
05:33.110 --> 05:36.620
And so this one really goes towards the core of that. Kim Scott has kind
05:36.630 --> 05:39.320
of been in a lot of the big Giants in the check field, but has
05:39.620 --> 05:42.980
done a lot of the startup world and kind of found that there's this
05:42.990 --> 05:47.450
delicate way that you need to approach interacting
05:47.460 --> 05:50.360
with people. And it's kind of a personal involvement,
05:50.690 --> 05:54.290
like personal understanding and personal interest in people,
05:54.740 --> 05:58.280
but then also being not afraid to basically give them really
05:58.290 --> 06:02.330
crucial feedback that may be hard to hear, but in a non attacking
06:02.340 --> 06:06.230
way. And the way you get that is by not by understanding
06:06.240 --> 06:10.220
them personally and by taking an interest in them personally and then going
06:10.230 --> 06:13.920
after more of, like, their attributes and their behavior
06:13.930 --> 06:17.430
and less about personal attacks. And it seems like really kind
06:17.440 --> 06:20.700
of like a dog thing. But there's a lot of good tidbits in there about
06:20.710 --> 06:24.080
how just to to balance those worlds and kind of
06:24.580 --> 06:28.640
what happens when you are too nice or you're
06:28.650 --> 06:32.490
too critical. Right. It kind of can go
06:32.500 --> 06:35.970
either way or when both ways or two, you just two week
06:35.980 --> 06:39.000
on them. What kind of what can happen in her personal experiences. So really,
06:39.010 --> 06:41.790
I thought it was really good book. I think they have a whole company around
06:41.800 --> 06:45.130
Radical Candor. I think she has some other books now, too. But anyway,
06:45.140 --> 06:48.490
that's why one of my more favorite ones I could kind of identify with.
06:50.670 --> 06:55.630
Alright. So I
06:55.750 --> 06:59.200
just talked on Google and I Typed in, you know,
06:59.210 --> 07:02.410
I was going to look for Radical Candor. So I Typed
07:02.420 --> 07:06.610
in Radical and the number one thing that came up was Radical Candor.
07:07.170 --> 07:09.400
They must be in good marketing,
07:10.360 --> 07:14.470
someone's working there. The thing on Candor
07:14.480 --> 07:18.040
is that this involves
07:18.100 --> 07:22.120
power. Right. The distribution of power as
07:22.130 --> 07:25.890
a consultant, you know, I have certain critiques.
07:26.100 --> 07:29.160
Right. You know, but,
07:31.600 --> 07:33.950
you know, as a consultant,
07:34.880 --> 07:39.310
you know, your position is different. You really I mean,
07:39.320 --> 07:43.600
maybe you can, but in general, there's sort of a barrier there
07:43.660 --> 07:46.690
to weigh in and and, you know,
07:47.200 --> 07:51.060
try to tell someone that they're messing up. Right.
07:51.560 --> 07:54.780
I mean, especially if they're an officer. Like if
07:55.260 --> 07:58.800
you think one of the problems of the company
07:58.830 --> 08:05.560
is that the chief scientific officer isn't really providing
08:05.570 --> 08:09.780
scientific leadership, directing people. I mean,
08:10.230 --> 08:13.990
what am I going to say about that? Right.
08:14.440 --> 08:17.710
Yeah. It definitely goes towards a relationship and also the culture kind of
08:17.720 --> 08:21.100
game to David Jackers point, it's a little bit about the
08:21.700 --> 08:25.030
culture that's built, too. Right. I mean, you have to have a culture
08:25.040 --> 08:28.930
of feedback and that may be different from a consultant viewpoint versus a person who's
08:28.940 --> 08:31.920
in house. Right.
08:32.640 --> 08:36.570
And of course, not going
08:37.070 --> 08:39.840
in. I mean, not being in person, everything is through Zoom.
08:39.870 --> 08:43.980
It's another level of complication,
08:45.180 --> 08:48.330
like messaging and stuff like that complicates it,
08:48.340 --> 08:51.390
too, because tone and by language are left out.
08:52.110 --> 08:56.040
Right. Yeah. That does sound
08:56.050 --> 08:59.270
like an interesting book. Yeah, I agree. Thank you.
08:59.280 --> 09:02.870
Ashley. Does anybody have I added this one because
09:02.880 --> 09:06.050
I thought the other fun thing for us to talk about is any fun strategy
09:06.060 --> 09:10.130
tidbits that somebody learned? Because I think there's just so many nuts and crannies of
09:10.140 --> 09:14.150
fat loss. I figured there might be some fun things to share or any issues
09:14.650 --> 09:17.980
or the one thing that's pretty interesting.
09:17.990 --> 09:22.470
I heard some pretty well known patent
09:22.480 --> 09:25.500
people kind of recommend this, and I brought it up in a different patent group
09:25.510 --> 09:28.980
that I'm part of. And there were various opinions. So I
09:28.990 --> 09:32.520
think it's kind of an interesting one. And just let
09:32.530 --> 09:35.760
me just preface this by saying you could probably talk about
09:35.770 --> 09:39.180
this for a while, so we might want to just say set
09:39.190 --> 09:43.050
it up and then couch it or something. Actually, I'll let you finish
09:43.060 --> 09:46.520
that. But the idea is that since
09:46.530 --> 09:50.150
the Track one fees
09:50.240 --> 09:53.660
are so expensive and the Pct filing
09:53.670 --> 09:57.200
fees are also expensive. But there's been some changes, I believe I
09:57.230 --> 10:00.530
forget one of them. I think the Pct filing fee just recently went
10:00.540 --> 10:03.860
down. Is that right? Or track one of they all went up. I think the
10:04.070 --> 10:08.070
Track one went up. Maybe that was it. But the point was
10:08.080 --> 10:11.910
that if a client wants to go Track one, but they're also thinking
10:11.920 --> 10:15.580
that international protection is something that they're
10:15.590 --> 10:19.750
interested in, then if you file a Pct with certain receiving
10:19.760 --> 10:22.600
offices and now the US is one of those receiving offices,
10:23.320 --> 10:27.490
they end up getting a preliminary
10:27.500 --> 10:30.400
search and opinion of patentability very quickly,
10:30.410 --> 10:33.880
like within a year, generally within eight months. And so now
10:34.030 --> 10:37.850
if you have a positive Is, you can
10:37.860 --> 10:41.690
then do the PPA through the patent prosecution highway in the
10:41.700 --> 10:45.230
US, which fast tracks the application. And so
10:45.650 --> 10:48.920
the time it's probably a little bit slower than Track one,
10:48.930 --> 10:52.190
maybe on the order of six months or something like that. If you get
10:52.200 --> 10:55.370
a positive, Is fees end up being about
10:55.380 --> 10:58.460
the same, and the benefit is, then you get but you
10:58.470 --> 11:01.670
have a you have international protection, whereas if you
11:01.680 --> 11:06.290
just go with the Track one, you're guaranteed examination
11:06.320 --> 11:09.710
very quickly, a disposition one way or the other within a year.
11:10.070 --> 11:13.880
But it's expensive and you don't get the international
11:14.380 --> 11:17.630
protection. There's kind of pros and cons of both approaches. And kind
11:17.640 --> 11:21.790
of my takeaway was that if clients are talking
11:21.800 --> 11:24.910
about speed and they're talking about Track one, just bring up
11:24.920 --> 11:29.020
the idea of a Pct. And the biggest
11:29.030 --> 11:32.290
risk is if you don't get a positive is, you're kind of back to square
11:32.300 --> 11:35.470
one and you don't have the PPA option anymore.
11:35.950 --> 11:39.100
But you could still file in the US with the Track one at that point,
11:39.110 --> 11:43.150
and you've lost half a year or a year, so it's
11:43.160 --> 11:47.050
risk their risks. But anyway, but that was a interesting
11:47.060 --> 11:50.440
new thing I had heard of recently. So could you only do
11:50.450 --> 11:54.430
the PPH from the Pct if you like the ISR had
11:54.440 --> 11:58.270
found one or more claims novel and non obvious. Is that the only
11:58.280 --> 12:02.170
way that that would make sense? Got you? Exactly. And they put business applicability,
12:02.180 --> 12:03.580
which is almost always. But yes,
12:05.300 --> 12:10.890
if at least one claim has positive positive
12:11.510 --> 12:15.240
pattability, yes. What you said you
12:15.250 --> 12:19.680
can do the PH and the only kind of like hurdle
12:19.690 --> 12:23.340
or additional things. And the claim in the US really doesn't need to
12:23.350 --> 12:27.250
be have all the limitations, doesn't need to be word for word, but it needs
12:27.260 --> 12:32.020
to be co expensive, exactly the same as the one in the
12:32.520 --> 12:36.220
international and the Pct. Interesting. I haven't done much.
12:36.310 --> 12:40.530
I know we had looked into the PPA for Europe before, but, for instance,
12:40.540 --> 12:44.220
it had heavily advised
12:44.230 --> 12:47.730
against it can be if it was for cost and for other kind of
12:48.630 --> 12:52.500
procedural reasons. And so I do know that
12:52.740 --> 12:56.490
this would be a doubling up of costs and not exactly what you would want.
12:56.520 --> 13:00.240
But we have had clients that have done expedited,
13:00.740 --> 13:03.510
and then they end up getting an Issuance kind of right around the time of
13:03.520 --> 13:07.410
filing their PCP or right at the beginning. Then it makes prosecution
13:07.910 --> 13:11.310
really, really easy off of the PCP just because you kind of have that,
13:12.130 --> 13:15.980
and then you'll have to do, like, another continuation right away because you have
13:15.990 --> 13:18.020
the Pct. But that's interesting. Yeah.
13:18.650 --> 13:22.160
Honestly, if you were operated or somebody, I would love to like
13:22.260 --> 13:25.320
for us to do more about the PPA, because it's kind of one of those
13:25.330 --> 13:28.800
things that I feel like not a lot of people do for
13:28.810 --> 13:32.010
various reasons. I know that we personally
13:32.020 --> 13:35.340
have not done it, so we've looked into it for various countries,
13:35.700 --> 13:39.230
but then for various reasons, kind of were encouraged
13:39.240 --> 13:42.440
not to do it. And I'd have to look up. I'd have
13:42.450 --> 13:45.840
to remember which client was and why they said I
13:45.870 --> 13:49.290
know who which foreign associate told me about it. I know I could look up
13:49.300 --> 13:52.940
the email maybe, and find it, but be curious
13:52.970 --> 13:57.200
that I have heard that about Europe. Specifically, the EP examiners
13:57.260 --> 14:00.800
don't really follow the treaty as well as they're
14:00.810 --> 14:04.220
supposed to. I go and sort of take the
14:04.230 --> 14:08.300
other partner patent offices examination
14:09.110 --> 14:12.950
put a lot of weight to it. We have had very
14:12.980 --> 14:16.460
good results. Filing PPHS for US
14:16.960 --> 14:21.170
applications based on positive is, so maybe
14:21.180 --> 14:24.740
a dozen times even or more. We do that as a standard.
14:25.240 --> 14:28.790
If you have a PC, if you have a positive is and a
14:28.820 --> 14:32.450
US A pending, if you have to do it before the
14:32.460 --> 14:36.770
first substantive examination, I'm pretty sure. But yeah,
14:36.780 --> 14:41.190
we do that all time. And I haven't the
14:41.610 --> 14:46.050
information from another attorney that I work for you now, but we recommend
14:46.110 --> 14:51.750
or we inform our clients back position
14:51.760 --> 14:54.990
a PPH based on a positive is in the US, you have
14:55.000 --> 14:57.960
a chance of issued patent within a year.
14:58.100 --> 15:01.910
Wow, that's huge for these
15:01.920 --> 15:05.450
cases. I presume you're using the US as the searching authority.
15:06.000 --> 15:09.240
No, we usually use Korea. Korea. Okay,
15:09.630 --> 15:13.260
but I think that a cost perspective, or that was
15:13.270 --> 15:16.050
a cost thing. I think it's Korea. That's what I have. In my mind.
15:16.060 --> 15:19.290
I can double it, but I think that doesn't matter.
15:19.320 --> 15:23.790
Yeah. Well, because I'll say my previous role,
15:24.290 --> 15:27.960
we did a fair amount with PPH, and it's
15:27.970 --> 15:31.620
a bit hit or miss because it's not just Europe
15:31.920 --> 15:35.510
that may or may not respect the
15:35.520 --> 15:38.870
PPH. It certainly the process kind of
15:38.880 --> 15:42.320
kick things up into queue a bit if you file file PPH
15:42.330 --> 15:46.160
request and it gets accepted. However, I have found that pretty much
15:46.190 --> 15:50.420
every major player patent office. So US,
15:50.920 --> 15:54.360
Europe, China, Japan,
15:54.420 --> 15:58.020
to some extent, if you file a PPH and the
15:58.030 --> 16:01.670
claims don't look like their normal practice,
16:01.840 --> 16:05.900
they're still going to make you make it look like their claims.
16:05.910 --> 16:09.320
If you get an Issuance in
16:09.330 --> 16:12.110
the US and you go to China with the PPH request.
16:13.030 --> 16:16.700
Technically, technically, the US and China participate in the PPH,
16:17.200 --> 16:20.210
and theoretically you're supposed to be able to say, hey, China, look, I've got these
16:20.220 --> 16:23.030
issued claims in the US. Please give me this claims.
16:23.040 --> 16:26.400
They're not going to give you those claims. Then again,
16:26.410 --> 16:29.670
it will get bumped up in the queue because now they've got an official PPH
16:29.680 --> 16:32.850
request to look at it and say, That's nice, but please be
16:32.860 --> 16:37.120
way more specific as we normally do for
16:37.620 --> 16:41.290
China. So the PH I have found to be valuable in
16:41.300 --> 16:45.340
some of the smaller jurisdictions that
16:45.350 --> 16:49.260
are a bit less, say, rigorous with their own prosecution.
16:49.270 --> 16:52.830
So places like Mexico, I found it to be helpful
16:52.860 --> 16:54.240
of Europe or US.
16:56.010 --> 17:00.430
Australia has been helpful off Europe state,
17:00.440 --> 17:04.340
occasionally US, New Zealand similarly.
17:04.900 --> 17:08.600
And those can be valuable jurisdictions
17:08.610 --> 17:12.770
to have a patent in, but they tend to those offices
17:12.780 --> 17:15.470
aren't so much defining policy as much as US,
17:15.620 --> 17:19.580
Europe, and China are. So that's kind
17:19.590 --> 17:21.680
of my take on PPH.
17:23.480 --> 17:27.230
So, you know, I was going to mention another thing. There's always
17:27.700 --> 17:31.270
the internal debate about whether to have
17:31.280 --> 17:34.630
your independent claim be broad or narrow.
17:35.130 --> 17:38.830
Right. Queen. And so
17:38.840 --> 17:44.430
if you consider if you are looking to get if
17:44.440 --> 17:47.670
you want a clean review from the
17:47.680 --> 17:51.390
Pct, then you're better off filing
17:51.400 --> 17:53.940
a more narrow claim. Right.
17:54.260 --> 17:58.110
It's just that sort of enters into
17:58.120 --> 18:01.210
the the conversation.
18:01.680 --> 18:05.590
In a lot of times, I feel like when people are doing whenever
18:05.680 --> 18:09.190
someone talks about speed and track one, we recommend going a
18:09.200 --> 18:13.450
little bit more narrow. Making these claims make
18:13.460 --> 18:18.040
them high probability of allowance. You're spending all this money to get it quickly.
18:19.000 --> 18:22.330
But I haven't done a lot of the international stuff
18:22.570 --> 18:26.170
with these PPHS, so that's a great point. I mean, mostly what
18:26.180 --> 18:31.220
we're doing is drafting the claims, filing a provisional
18:31.230 --> 18:34.550
or not nonprovisional US filing it as a Pct and then getting
18:34.560 --> 18:38.320
a positive search. I did look it up, and we do typically,
18:38.330 --> 18:41.170
uh, Korea, I think that is for cost, but also quality.
18:41.290 --> 18:45.130
Maybe that the the US trust them,
18:45.250 --> 18:48.850
I guess, or that search. But we've had really
18:48.860 --> 18:52.240
good luck with what we've done. But thank you for your
18:52.250 --> 18:55.660
perspective that I could totally see how going between different
18:56.080 --> 18:58.320
countries could be could be problematic.
18:59.750 --> 19:02.370
First thing. Go ahead. No,
19:02.610 --> 19:06.180
I was just going to reiterate. Yeah, it depends. If you're
19:06.190 --> 19:09.210
playing with similar
19:09.900 --> 19:13.230
offices, then. Yeah, it works well, but in other places
19:13.320 --> 19:16.620
it doesn't. It maybe speed things
19:16.630 --> 19:19.380
up by a few months, but you're still going to have to go through the
19:19.390 --> 19:23.340
office actions. I think the other interesting
19:23.350 --> 19:26.760
thing you kind of brought up, though, too. Is the whole Isa shopping,
19:26.770 --> 19:30.600
right? Because I think we kind of get used to just doing to
19:31.290 --> 19:34.860
the US is when you file in the US receiving office. But there is some
19:35.070 --> 19:39.060
financial advantage shopping around a little bit and seeing, which is might
19:39.070 --> 19:42.420
be a little bit more in Amenable, and arguably some of them do
19:42.430 --> 19:46.140
a better job searching than others. I would say the US is
19:46.150 --> 19:49.410
a decent job, but my experience,
19:49.440 --> 19:53.080
it seems like, you know, Europe, Japan tend to
19:53.090 --> 19:55.330
find even a little bit better art sometimes,
19:57.060 --> 19:58.620
so it's interesting.
20:00.240 --> 20:03.750
Cool. Thanks for sharing, but yeah, like I said,
20:03.760 --> 20:07.290
if anybody wants to do a presentation on that, I would love
20:07.320 --> 20:11.070
to kind of, you know, be honest, will probably be doing my own download on
20:11.080 --> 20:14.220
that actually after this. Now, after it kind of being brought
20:14.230 --> 20:16.290
up to the top of my mind now.
20:17.380 --> 20:21.220
And so any fun tidbits or problems
20:21.720 --> 20:23.800
or anything of an anchor,
20:25.410 --> 20:29.020
can I ask you a question about the speed discussion
20:29.030 --> 20:32.410
we just had? Is there an argument to be made for actually
20:32.420 --> 20:34.090
going slow internationally?
20:37.440 --> 20:41.040
As I'm observing some of our cases just go really
20:41.540 --> 20:47.220
slowly through the machinery abroad, we are accumulating
20:47.750 --> 20:50.460
cloud claims here in the United States,
20:51.000 --> 20:54.990
and by going slow internationally, I'm wondering whether at
20:55.000 --> 20:58.650
some point I can just bundle all these, I can make
20:58.660 --> 21:01.560
an amendment internationally where I bundle all these.
21:01.920 --> 21:05.580
So basically go Rreally broad internationally,
21:05.590 --> 21:08.280
so that really comes things up slow.
21:09.030 --> 21:12.210
And then I'm observing what kind of
21:12.220 --> 21:16.560
claims we're getting in the United States, and I wonder whether at some point in
21:16.680 --> 21:20.310
that international application is basically draft a claim
21:20.430 --> 21:24.070
that encompasses all those claim sets that we are
21:24.400 --> 21:27.540
getting allowed in the United States, and then
21:27.550 --> 21:31.560
basically just have one case internationally
21:31.570 --> 21:35.420
that then can rely on the allowed claims
21:35.430 --> 21:38.170
in the United States for,
21:38.700 --> 21:42.430
since they do look at the United States packet office as to what's
21:42.440 --> 21:46.390
happening there and basically prosecute everything that I've got to throw in the United
21:46.400 --> 21:49.060
States with just that one international application,
21:49.740 --> 21:54.150
we've had mixed results on that alluding
21:54.160 --> 21:57.510
to Dan's point about different countries having different
21:57.960 --> 22:01.260
claim structures are different disclosure requirements.
22:01.290 --> 22:04.590
We have some clients have sizable portfolios
22:04.620 --> 22:08.610
where it's pretty clear what the technical advantage
22:08.620 --> 22:12.540
is, but yet protecting the exact
22:13.040 --> 22:17.010
same claim set. And let's say Europe, US and Japan,
22:17.490 --> 22:20.640
for example, we were able to get one aloud in Japan in the US,
22:20.670 --> 22:24.000
but Europe wanted even more experimental data that they just did have
22:24.180 --> 22:27.360
because it was kind of like an ancillary product that they weren't super
22:27.370 --> 22:30.770
pursuing. And China like we
22:30.780 --> 22:34.460
were able to get certain claim set through in other countries, but for whatever reason,
22:34.490 --> 22:37.760
China was just unconvinced. So I think it kind of depends on
22:37.940 --> 22:41.990
the degree to which the technology is really stands
22:42.000 --> 22:45.950
above the prior art or what. There is some close competing
22:45.960 --> 22:49.610
art, that human element, right. And one human
22:49.700 --> 22:52.850
in China versus a human in Europe versus a human in
22:52.860 --> 22:56.260
the US, they're going to take a different look at it. I think in
22:56.760 --> 22:59.920
general, I think that's a safe bet. And I think that slow processes is an
22:59.930 --> 23:03.070
advantage. But I think in some cases where it's a little bit tighter,
23:03.080 --> 23:06.040
the arts a little bit tighter. It can. You know,
23:06.190 --> 23:10.420
there's not as much of an advantage. I agree.
23:10.450 --> 23:14.560
Europe is definitely standing out. They will have a request.
23:17.730 --> 23:21.130
They're tough cookies, that's for sure. Although I will say there was
23:21.140 --> 23:25.060
this and I can share with anybody. You would have to use my email address.
23:25.600 --> 23:30.550
We do some work with J Camp, and they just did this fantastic webinar
23:30.640 --> 23:34.260
on priority chain between
23:34.350 --> 23:37.740
like a US provisional and a Pct and the European Patent Office
23:37.750 --> 23:40.970
and how I was called the crisper stuff, basically. Right.
23:40.980 --> 23:44.510
How that pricing can be broken and what it means. And I was
23:44.520 --> 23:47.300
probably one of the better webinars that I've heard in a really long time.
23:47.310 --> 23:50.930
I'm just really clear and concise and really well done. So somebody wants
23:51.040 --> 23:54.130
a link to that. Let me know, and I can share my so you might
23:54.140 --> 23:57.210
use my email address to get into any, frankly,
23:57.220 --> 24:00.510
don't care. So just let me know. But speaking
24:00.520 --> 24:04.400
of Europe. Yeah, that'd be interesting. I'll email
24:04.410 --> 24:07.790
you about that. Yeah, absolutely. They used
24:07.800 --> 24:11.470
your Rooster it's morning somewhere.
24:11.530 --> 24:15.100
I don't have
24:15.110 --> 24:17.620
a Rooster, but they run around the wild here.
24:20.310 --> 24:23.950
A little strange. It brought me
24:23.960 --> 24:29.290
back. That reminded me of that's,
24:29.300 --> 24:32.800
actually, I'm on Maui right now, and they just run around
24:32.830 --> 24:37.510
everywhere. These Roosters, they just I don't know where so
24:38.010 --> 24:41.260
jealous. I wish I would share that. Sorry about
24:41.530 --> 24:44.440
that story is there was a Hurricane in the Eighties and before the Hurricane,
24:44.450 --> 24:48.740
they were, like, wearing very many about. The Hurricane blew over bunches of these chicken
24:48.750 --> 24:51.740
coops and Roosters and stuff, and now they're just everywhere. Jungle fowl.
24:52.430 --> 24:55.880
Okay. I love it.
24:57.250 --> 25:00.320
There's a couple of things that I'm wondering about. Obviously,
25:00.330 --> 25:04.430
everything somehow have to arrive here from somewhere because being
25:04.440 --> 25:07.610
an island, they have to come by
25:07.620 --> 25:10.790
ship. I don't know. There's certain animals that there's many
25:10.800 --> 25:14.330
of, and there's others that are very few. I never see snakes. There's very few
25:14.830 --> 25:18.440
snakes. But there's all these wild pigs. Right. I need to read
25:18.450 --> 25:21.560
up where the wild pigs came from. It right.
25:21.570 --> 25:25.220
I think some of those were, I want to see brought
25:25.230 --> 25:29.240
over on ship way back when some of the first colonizers
25:29.740 --> 25:33.170
not Indigenous. Right. But some of the first colonizers came to the
25:33.180 --> 25:36.350
area. But yeah, the snake thing is interesting. So I think you're right, because they
25:36.360 --> 25:40.080
were molten volcanic Islands. I think
25:40.090 --> 25:43.260
somebody would have had to bring a snake over, essentially for them to propagate,
25:43.760 --> 25:45.570
which is another process about Hawaii.
25:49.730 --> 25:53.130
All right. That's all awesome. Thanks for sharing.
25:53.140 --> 25:55.730
Everybody does. Mary and Lightning. I love it.
25:57.020 --> 26:00.350
So we kind of getting to the meat here today. What I want to talk
26:00.360 --> 26:03.840
about is the on sale bar, because I feel like there's been
26:03.850 --> 26:07.440
a little bit of activity in the court systems around the on sale bar and
26:07.450 --> 26:10.860
kind of what it means. So you all probably know pre AIA,
26:10.870 --> 26:14.550
the America events at a person the one and
26:14.560 --> 26:18.300
two the on sale provision of one and two basically stated that
26:18.310 --> 26:21.960
the person should be entitled to a patent unless the invention was in public use
26:21.970 --> 26:25.530
or on sale in this country. More than one year pride of the date of
26:25.540 --> 26:29.170
the application for patent in the US and then post
26:29.230 --> 26:32.680
AIA around. I think 2013 is when that
26:32.690 --> 26:35.950
took effect March 16, 2013. I think a person shall be
26:35.960 --> 26:39.910
invited to a patent unless the plane dimension was on sale or otherwise available
26:39.970 --> 26:43.480
to the public. So some of the court cases I'm going to walk through today,
26:43.490 --> 26:46.720
some are old, so I definitely would have been pre AIA, but then some of
26:46.730 --> 26:51.370
them are post AAA. And I think the biggest question that people were wondering was
26:51.380 --> 26:55.000
whether how much, obviously, how much did that change between
26:55.300 --> 26:58.930
PREA and after AI, but then also, what does otherwise available
26:58.940 --> 27:02.620
to the public mean? How does that impact secret sales?
27:03.280 --> 27:06.490
And so we'll kind of go through some of these to try to find some
27:06.500 --> 27:10.000
various different case lot kind of different tidbits. So this
27:10.500 --> 27:14.120
was Fast versus well, electric Pat
27:14.130 --> 27:17.900
had basically been working on a socket, and Texas Instrument asked
27:17.910 --> 27:21.920
him to develop a new device for mounting and removing semiconductor chip
27:22.010 --> 27:25.340
carriers. And so in response to Texas Instruments request,
27:25.400 --> 27:29.470
Path actually developed engineering drawing specifications,
27:29.480 --> 27:33.310
detailed measurements, and then provided it two types of instruments,
27:33.340 --> 27:37.120
and then later went to file a patent. And so then obviously later
27:37.130 --> 27:41.020
on, well, Electronics started selling a computing socket, and Fast brought
27:41.030 --> 27:45.110
suit against Wells. And what they found was that although
27:45.120 --> 27:49.050
Fat actually had not actually reduced the
27:49.550 --> 27:52.800
technology to practice that he gave to Texas Instruments that he sold
27:52.810 --> 27:56.130
the Texas Instruments, he had constructively reduced it to practice because
27:56.140 --> 28:00.150
he did provide all the detailed drawings, the specifications, the calculations and
28:00.160 --> 28:03.720
all that. And so basically it was ready
28:03.730 --> 28:07.620
for patenting, even though it wasn't a full reduction to practice. And obviously
28:07.630 --> 28:10.650
it was an offer for sale commercial for for sale because he did sell it
28:10.660 --> 28:14.350
to Texas Instruments. And so this two prong
28:14.530 --> 28:17.680
test, I guess, if you will, kind of forms the basis of a lot of
28:17.690 --> 28:20.350
the on sale bar. The whole idea that it has to be the subject of
28:20.360 --> 28:23.440
a commercial offer for sale and that the invention must be ready
28:23.450 --> 28:27.100
for patenting to trigger the bar are kind of to the underpinning.
28:27.110 --> 28:30.950
So now if somebody kind of just said,
28:30.960 --> 28:34.880
oh, yeah, ten decisions, I can develop something for you. It's going to cost
28:34.890 --> 28:38.240
you $5,000, but then didn't have anything to show for it.
28:38.250 --> 28:41.270
I'm not sure that you would actually trigger the on sale bar because you didn't
28:41.280 --> 28:43.160
actually have anything open at that time.
28:43.900 --> 28:47.780
Similarly, kind of based on the Meds Co versus Hospira
28:47.790 --> 28:51.500
decision in 2016, if Path would have paid Texas
28:51.510 --> 28:55.280
Instruments to manufacture the devices, I don't believe that would
28:55.290 --> 28:58.820
have triggered the on sale bar from commercial offer for sale perspective,
28:58.830 --> 29:02.420
because it would have just been paying for manufacturing services as opposed to selling
29:02.430 --> 29:05.750
them the actual invention. I think there's some nuances there,
29:07.040 --> 29:10.340
but kind of an interesting like the combination to prong test, if you will.
29:11.880 --> 29:15.880
The next one I wanted to discuss was this Group one versus Hallmark
29:15.890 --> 29:19.180
cards back in the Federal Circuit 2001. So again,
29:19.680 --> 29:23.980
Praia, basically group home one had developed a curling
29:23.990 --> 29:27.580
and shredding ribbon machine and had contacted Hallmark and basically
29:27.590 --> 29:30.250
said, we can give this to you and we can do some kind of license
29:30.260 --> 29:34.270
or a royalty basis agreement. And Hallmark cards basically kind of
29:34.280 --> 29:37.510
entertained it a little bit, but then decided to develop their own machine.
29:38.020 --> 29:41.920
And so they rejected Group ones offer, develops their own machine. And then
29:41.930 --> 29:45.910
later, Group one went to Sue Hallmark cards for patent infringement
29:45.920 --> 29:49.180
and lost because they had triggered the on sale bar.
29:49.640 --> 29:53.120
So even though the offer for sale was rejected,
29:53.130 --> 29:56.420
it still triggered the on sale bar. And it was obviously clear
29:56.920 --> 30:00.230
that it was ready for patenting because they were able to provide
30:00.240 --> 30:04.340
homework a bag of curled and shredded ribbon that was used in their machine.
30:04.350 --> 30:08.060
So it was clear that they had again set aside that two prong ready for
30:08.070 --> 30:11.630
patenting and commercial offer for sale. And so the other kind of interesting
30:11.640 --> 30:14.960
thing about this one was that even, like an offer for a
30:15.460 --> 30:18.950
license or a lease also triggers the on sale bar. So it's not necessarily like
30:18.960 --> 30:22.490
a an offer for sale, right? Because you're going to maintain control to some
30:22.500 --> 30:26.140
degree, but still going to trigger the on sale bar. And even,
30:26.150 --> 30:29.950
like rejected offers can trigger the on sale bar.
30:30.450 --> 30:33.370
Just like you said, Homework rejected the offer, but it still triggered the bar.
30:34.890 --> 30:38.890
And then there's another one, too, that lacks versus my catch
30:38.900 --> 30:42.040
ne vehicle component is another kind of decision that kind of revolve
30:42.050 --> 30:42.610
around this, too.
30:47.930 --> 30:51.720
Yeah. So interesting stuff. This is
30:51.730 --> 30:55.500
conflating a little bit experimental use an on sale. I think you could almost
30:55.510 --> 30:58.890
do a whole another presentation on experimental use because there's lots of kind
30:58.900 --> 31:02.970
of Gray areas there. But Clara
31:02.980 --> 31:06.510
Engineering versus Cancel company. And it was kind of a question
31:06.520 --> 31:09.900
of whether the on sale bar was triggered versus whether it was deemed
31:09.910 --> 31:13.950
experimental use. And some of the underpinnings of
31:14.190 --> 31:18.120
the experimental use provision actually dates way back to the 18
31:18.130 --> 31:21.900
hundreds to a court case that was the city of Elizabeth versus
31:21.910 --> 31:25.475
American Nicholson Pavement. It was a decision 118 78 and the
31:25.492 --> 31:29.310
three criteria of that for experimental use,
31:29.400 --> 31:33.090
where the inventor must maintain control of the invention,
31:33.100 --> 31:36.630
the inventor must not sell the and the inventor
31:36.640 --> 31:39.720
must not voluntarily allow others to use the invention.
31:40.080 --> 31:43.440
And this court case kind of relies on those three things
31:43.940 --> 31:47.390
to show that Paler actually didn't trigger the on sale bar,
31:47.890 --> 31:50.930
but they actually were in a state of experimental use. So they didn't
31:50.940 --> 31:54.740
have a confidentiality agreement. But Paler, the own employees
31:54.770 --> 31:58.040
installed maintained an uninstalled devices that did or did
31:58.050 --> 32:01.660
not work to figure out what was working. A little bit more background
32:01.670 --> 32:05.230
to Polar with a manufacturer of accessible pedestrian signal systems
32:05.240 --> 32:08.890
and pedestrian push buttons. So you can imagine that it's really important that
32:08.900 --> 32:12.010
they get it right, because somebody if it doesn't work,
32:12.040 --> 32:14.850
right. Obviously, that's dangerous for pedestrians.
32:14.860 --> 32:18.330
And so to them, it was they needed to experimentally
32:18.340 --> 32:21.570
test the system to make sure it worked as it was supposed
32:21.580 --> 32:25.080
to. So it on employees install these devices. I think
32:25.090 --> 32:28.530
the city of Fullerton and maintain those devices, removed them
32:28.540 --> 32:32.130
when they didn't work or needed to look at them. And they never explained
32:32.140 --> 32:36.040
to anybody how they worked. It wasn't really apparent
32:36.050 --> 32:40.000
how the devices work when they were installed. And so for all kinds of purposes,
32:40.390 --> 32:43.630
the Polar actually maintained control of
32:43.640 --> 32:47.290
their mention at all times and never explained to anyone how it worked.
32:47.500 --> 32:51.550
And even witnesses Popolare had indicated that it
32:51.610 --> 32:55.030
wasn't apparent how it would work on its face, that it would have needed to
32:55.040 --> 32:58.300
be explained, almost like a secret. Right. But the fact that they maintained
32:58.310 --> 33:02.380
control and it was clear that they needed it, I think the jury said
33:02.390 --> 33:06.280
that was clear that they needed it to prove whether it would work
33:06.290 --> 33:10.090
for its intended use, basically made it so that it
33:10.100 --> 33:13.700
was seemed to be experimental use and not not
33:13.710 --> 33:16.730
triggering the on sale bar. And so I think this is kind of a pretty
33:16.740 --> 33:18.980
pivotal decision for the excremental use.
33:19.190 --> 33:22.670
Those criteria for maintaining
33:22.680 --> 33:26.540
control, not voluntarily selling it, not allowing other people to use it kind
33:26.550 --> 33:29.840
of all are some of the meat of experimental use.
33:29.850 --> 33:32.930
So definitely you could do a whole presentation on that one alone.
33:33.240 --> 33:36.870
So another interesting one. The reason this
33:36.880 --> 33:39.120
has a green star is because it kind of gave me a little bit of
33:39.130 --> 33:42.240
a head scratcher for a minute. And so actually, Dan and I were talking about
33:42.250 --> 33:46.020
a little bit. So this is interesting because we have a lot of clients that
33:46.030 --> 33:49.410
do SBIR grants and things of that nature.
33:49.420 --> 33:52.950
And so in general, we do try to get something on file before they
33:52.960 --> 33:56.640
submit that. But usually in those cases, they are still very much in
33:56.650 --> 33:59.940
the experimental stage. They're still kind of figuring out what, if anything, is going
33:59.950 --> 34:03.490
to come out of their investigations. And so
34:03.500 --> 34:07.120
in here. So more than one year before
34:07.130 --> 34:11.170
the filing, RCA, which had already developed character generation
34:11.180 --> 34:14.560
equipment, submitted the proposal in response to a
34:15.060 --> 34:18.490
request for a proposal to the FAA, the Federal Aviation Administration
34:18.500 --> 34:22.120
for character generation equipment for us in air traffic
34:22.130 --> 34:25.990
control centers, and the question was, did submission of this
34:26.000 --> 34:30.250
proposal in response to the RFP,
34:31.240 --> 34:35.110
did that trigger the on sale bar? And here they actually
34:35.120 --> 34:38.350
found that it did. And partly is because if you go back to those
34:38.360 --> 34:41.440
kind of that two rule, it's commercial offer
34:41.450 --> 34:45.010
for sale and whether the invention was ready
34:45.020 --> 34:48.660
for patenting. And the invention was very clearly
34:48.670 --> 34:52.320
ready for patenting because it already reduced it to practice. So they was just basically
34:52.330 --> 34:56.130
them submitting it to the SFA FAA in hopes that they would pick
34:56.140 --> 34:59.670
it up and use it and then obviously give them reimbursement or pay them for
35:00.060 --> 35:03.930
their device. So they satisfy that Tupon test, whereas I think where
35:03.940 --> 35:07.170
the Gray area and this one comes in. But I would love to
35:07.180 --> 35:10.620
hear anybody else's depending on this is I think if it
35:10.630 --> 35:14.610
were like an SBIR grant or something. Again, you don't really have an invention
35:14.670 --> 35:18.160
quite yet. You have some hypotheses, you have some
35:18.170 --> 35:21.640
guesses, and you're hoping that the money can be used to figure out
35:21.650 --> 35:25.450
and find an invention. So I think that's kind of the difference between
35:25.480 --> 35:29.380
responding to a proposal like this versus some kind of grant or other kind of
35:29.390 --> 35:32.860
proposal is whether you fully have something or whether you're kind of waiting
35:32.870 --> 35:36.470
to have something. That was
35:36.480 --> 35:40.130
my thought, too. That makes sense. I think that in this case you said that
35:40.140 --> 35:43.910
the fact was that they had invention had been reduced to practice prior
35:43.920 --> 35:47.590
to this proposal, so that it was they were
35:47.600 --> 35:51.190
in possession of it. But actually a few of
35:51.200 --> 35:55.330
these cases and this as well, that other
35:55.340 --> 35:58.910
one is surprising to me that that
35:58.920 --> 36:02.180
applying for a grant is equivalent to an
36:02.190 --> 36:05.570
offer of sales, and then the same with licensing,
36:05.660 --> 36:09.590
because I thought I was actually trying to look for some things because I thought
36:09.600 --> 36:13.370
I had heard the opposite. But that case looks pretty solid.
36:13.380 --> 36:17.030
I'm wondering if maybe it's changed or something, or if I just had
36:17.040 --> 36:21.200
it wrong in my mind about about what triggers
36:21.210 --> 36:25.010
these. What types of sales trigger these on sale as
36:25.020 --> 36:28.280
well? I think that's where the great areas coming. So I do think it's a
36:28.290 --> 36:32.040
lot of to what degree is the invention reduced to practice? I think
36:32.050 --> 36:36.570
anything like proposal license,
36:36.810 --> 36:41.010
a royalty thing, some kind of the Hello
36:41.510 --> 36:43.440
one at the end here, too, is a little bit kind of gets into the
36:43.450 --> 36:46.440
most secret sale thing a little bit. So I think it's like I think all
36:46.450 --> 36:50.350
those could be viewed at viewed as on sale. But if it
36:50.380 --> 36:53.500
weren't ready for patenting, which I think is a little bit,
36:53.510 --> 36:58.120
you know, that's kind of a what are
36:58.130 --> 37:01.720
the meets and bounds of that right? When is something truly ready for
37:01.730 --> 37:04.930
patenting versus maybe need a little bit more work? I think that's
37:04.940 --> 37:08.680
where the Gray area is right. Where are you on that scale? And then somewhere
37:08.690 --> 37:11.860
at that scale, it's going to trigger the on sale bar. But at what point?
37:13.110 --> 37:16.540
Right. And at
37:16.550 --> 37:20.410
the risk of derailing your presentation a little bit,
37:20.420 --> 37:24.250
actually. Sorry. I think that there's some controversy
37:24.280 --> 37:30.730
about whether licensing triggers and on sale bar or not that
37:30.740 --> 37:33.640
somehow just stuck out in my brain. I don't know why I'm in. I was
37:33.650 --> 37:37.030
looking at an article that said in the early two thousands, Minton verse,
37:37.040 --> 37:40.420
Nasdaq, etc, etc, Hallmark cards found
37:40.430 --> 37:43.760
that a license maybe tantamount to a sale.
37:43.970 --> 37:47.210
But then there's another case that says the licensing of a patent
37:47.220 --> 37:50.060
does not trigger the on sale bar. This is caller,
37:50.480 --> 37:53.570
wait, which case is that? Caller,
37:53.760 --> 37:56.730
Is that the licensing of the patent, though, or the technology?
37:57.140 --> 38:00.050
Oh, that's the Quest licensing of a pattern.
38:00.240 --> 38:03.240
Right. We're just talking about future technology.
38:03.540 --> 38:05.640
Right. Because it's like, because in theory,
38:06.180 --> 38:09.600
because I think there's a different case later on. I can or if I discuss
38:09.610 --> 38:12.860
it here and not where it's like a
38:12.890 --> 38:16.790
future promise to grant a license under a patent
38:17.200 --> 38:21.160
doesn't trigger the on sale bar because you're not technically selling the
38:21.250 --> 38:25.120
invention. I promise you're, like licensing or granting rights
38:25.130 --> 38:27.100
to a future patent or something.
38:27.600 --> 38:31.140
Got that. I did not appreciate that distinction.
38:31.640 --> 38:33.150
Okay. It's freezing, buddy.
38:34.600 --> 38:37.930
Yeah. Okay. I was
38:37.940 --> 38:41.820
going through this. I didn't think there was going to be as much nuance
38:41.830 --> 38:45.690
as there was, because even there was another case. I am if I describe it
38:45.700 --> 38:49.300
here or not. We're like selling just if you technically
38:49.310 --> 38:52.260
sell technical insight to,
38:53.670 --> 38:57.450
like, an invention or process that doesn't trigger the on sale bar because it
38:57.460 --> 39:00.990
requires the receiving party to still reduce it to practice and figure
39:01.490 --> 39:04.740
it out. So you can sell, like, technical knowledge about something.
39:05.160 --> 39:08.770
And that doesn't trigger the on sale bar. So it's just, you know, it's one
39:08.780 --> 39:11.890
of those things where, like, you have to be super careful because I think
39:11.900 --> 39:15.340
it's really easy to step in something without really knowing that you're stepping in
39:15.350 --> 39:20.920
something. Yeah. So thank
39:20.930 --> 39:24.610
you for that point, though. Feel free to share those other I'd like to
39:24.620 --> 39:27.100
look at those other cases that you found too curious.
39:28.670 --> 39:31.950
Yeah. I see around this article. Sure.
39:31.960 --> 39:35.160
Awesome. Thank you. Yeah. And another one that
39:35.170 --> 39:39.720
was interesting was whether you are. So this
39:39.730 --> 39:42.570
is Quest integrity versus Coke Busters from 2019.
39:42.580 --> 39:46.950
So Quest had developed a method for kind
39:46.960 --> 39:50.100
of collecting, displaying inspection data for furnaces.
39:50.670 --> 39:53.280
And so prior to the critical patenting date,
39:53.500 --> 39:57.100
they had not sold the
39:57.110 --> 40:00.580
device or sold the method. But they performed the
40:00.590 --> 40:03.970
method for clients and then gave them the final report to, like,
40:03.980 --> 40:07.280
think of, like, going to some commercial building and
40:07.290 --> 40:11.180
basically doing a furnace inspection and then giving the client these Chroma
40:11.190 --> 40:15.440
reports. That's what they did. And it was found that because
40:15.740 --> 40:19.810
the later file patent covered the
40:19.840 --> 40:23.790
display method because they had to have a unique way of displaying
40:23.800 --> 40:27.570
it. And it covered the process through which the furnace
40:27.580 --> 40:31.440
data was collected, that they're performing
40:31.450 --> 40:34.620
the service and providing those reports did trigger the on sale bar.
40:35.240 --> 40:38.750
So even though they never sold the physical product or even any of the
40:38.760 --> 40:43.070
software, the fact that they provided the reports trigger
40:43.080 --> 40:46.820
the on sale bar. So I think that's really interesting from, like, a software software
40:46.830 --> 40:50.420
client perspective, because it's like, well, we just, you know,
40:50.820 --> 40:54.480
just on our website, we give clients
40:54.540 --> 40:58.290
this output about their health or something,
40:58.300 --> 41:02.040
and we don't ever sell them the actual software or
41:02.050 --> 41:05.370
some wearable or something, but really can still trigger the on
41:05.380 --> 41:08.580
sale bar, especially if it tracks to some later claims that they're protecting.
41:09.320 --> 41:11.360
I think that's a really interesting one.
41:12.260 --> 41:15.290
Yeah. I mean, it's a nice reminder to some extent,
41:15.300 --> 41:19.070
that when you patent a method or trying to patent a method, you are
41:19.080 --> 41:20.270
indeed patenting a method.
41:21.170 --> 41:26.390
You know, however time when
41:26.400 --> 41:29.090
you're patenting a method, you're indeed patenting a method,
41:29.360 --> 41:33.050
sort of, regardless of how depends on exactly on the claim,
41:33.550 --> 41:37.220
how it's tied to a machine. So here they never sold any machine.
41:37.250 --> 41:42.590
They never handed out any specific physical or
41:42.680 --> 41:46.420
otherwise item. But what they were after
41:46.430 --> 41:50.050
was a method, and they were commercially benefiting from the performance.
41:50.060 --> 41:53.990
I method. And so its subjects
41:54.020 --> 41:57.290
just as much to the on sale bar, although it
41:57.300 --> 42:00.560
looks like that you're keeping the invention to your sulfur,
42:00.570 --> 42:04.490
keeping the secrets in. But no, you are commercially
42:05.480 --> 42:08.720
utilizing the method that you are now seeking
42:08.730 --> 42:12.020
to patent. And the method. Yeah, it is a
42:12.030 --> 42:15.470
method. It is not necessarily tied to a specific machine unless
42:15.970 --> 42:19.030
the claim does. That surprising,
42:19.040 --> 42:23.650
but makes total sense. Those can
42:23.660 --> 42:28.870
I ask, just as a practical matter, I think
42:30.340 --> 42:34.180
various startups that I've worked at various stages of commercialization
42:34.190 --> 42:38.960
have based this problem where they're like, well, a manufacturing
42:38.970 --> 42:42.320
process, for instance, is being used to create a product,
42:42.820 --> 42:46.010
but it's invisible. It is not reverse
42:46.040 --> 42:49.520
engineer able at all. Right. So technically,
42:49.850 --> 42:53.570
the product is using that method, just like Dan said, and it triggers the
42:53.580 --> 42:57.780
on sale bar. And I mean, in practice, do companies
42:58.500 --> 43:02.490
follow those rules and like, how how
43:02.520 --> 43:06.690
do you advise
43:06.900 --> 43:10.260
clients in those situations? I mean,
43:10.290 --> 43:13.650
the trigger on sale by I think if you're keeping some of
43:13.660 --> 43:17.030
you're keeping the manufacturing method trade
43:17.040 --> 43:20.510
secrets, so it's not going to be found in a layered or patent in the
43:20.520 --> 43:23.320
claims, then that would trigger the on sale bar,
43:23.330 --> 43:26.680
because whatever is triggering down, so they have to be tied to
43:26.690 --> 43:30.010
the claim. I think that's actually in this next case, the subject now
43:30.020 --> 43:32.470
that was on sale has to tie to a patent claim,
43:33.550 --> 43:37.360
but the whole getting data, getting information.
43:38.080 --> 43:41.890
I think that line is hard,
43:41.900 --> 43:45.220
especially from the software world, because it pretty much has to be maybe I'm
43:45.230 --> 43:48.880
not getting to my understanding question right here. You know,
43:48.940 --> 43:52.540
I kind of put it is like, let's say a company is
43:52.550 --> 43:56.010
using a manufacturing process to make a product. They start selling
43:56.020 --> 43:58.740
that product. And then a year or two years later, they say, oh, we want
43:58.750 --> 44:01.860
to patent this process, but we've been using it to
44:01.870 --> 44:04.860
make products for two years, so technically, beyond sale,
44:04.870 --> 44:08.190
bar prevents them from getting that product. But. And I mean,
44:08.310 --> 44:12.060
I guess the answer is the risk to the company is that if
44:12.070 --> 44:15.370
they did ignore that, then and they could get a
44:15.380 --> 44:18.460
patent to the patent Office isn't going to know that they've been using it in
44:18.470 --> 44:22.120
a product. But down the road, if they ever tried to enforce that
44:22.130 --> 44:25.540
patent and ever goes to discovery, the patent could be invalidated
44:25.550 --> 44:29.300
because technically did break that rule. Is that
44:29.310 --> 44:32.360
kind of like, right? Yeah. I mean, that's my understanding,
44:32.370 --> 44:35.720
right. I think there is some public facing part of it.
44:35.730 --> 44:41.180
But, yes, selling the product that was built by this manufacturing process, I think it's
44:41.190 --> 44:45.080
better to file multiple
44:45.090 --> 44:48.960
Provisionals that you can allow to disappear into the ether
44:48.970 --> 44:51.990
should you decide not to convert them then to,
44:52.820 --> 44:55.790
you know, later, be like, oh, shit. I wish she would have done something,
44:55.800 --> 44:59.700
but it's tough because, you know, it's easy to
44:59.710 --> 45:03.360
say, well, that's not that valuable right now, but then change your mind
45:03.860 --> 45:07.240
later and budget and everything. You know, I've been to a
45:07.300 --> 45:10.750
few different companies in the IP side where product is
45:10.760 --> 45:13.450
about to be sold, and there's a big review. Okay.
45:14.130 --> 45:17.170
There's hundreds and hundreds of processes
45:17.180 --> 45:20.710
going into making this product, what you're covered, which aren't what do we want a
45:20.720 --> 45:24.400
patent now? And there's always constraints. And then
45:24.410 --> 45:27.730
down the road, people change their mind for various
45:27.740 --> 45:31.090
reasons. So. Yeah, it's a tricky one. I think
45:31.100 --> 45:34.540
a lot of companies face this. And I was just curious to see how you
45:34.600 --> 45:37.510
all advise companies in those situations.
45:38.340 --> 45:41.890
Yeah. I I feel like I'm trying to think
45:41.900 --> 45:45.430
of a case where I think our biggest
45:45.550 --> 45:49.180
issue has been software people where they just well,
45:49.190 --> 45:52.620
nobody knows how it or nobody knows
45:53.120 --> 45:56.820
how it does. Like, yeah, but it's still a problem. The fact that you had
45:56.830 --> 45:59.550
it out there, the fact that you were doing things with it, that it was
45:59.560 --> 46:03.180
available is still a problem. And a
46:03.190 --> 46:06.810
lot of companies trying to reconcile this, nobody knows how to
46:07.180 --> 46:10.930
do what we're doing from a software perspective. So it doesn't really matter that it
46:10.940 --> 46:14.500
was out there. And it's like, well, you know, I get your
46:14.510 --> 46:18.460
point. But all of us, we shouldn't forget
46:18.470 --> 46:21.970
all of us, as passant agents, have the ethical requirements
46:22.470 --> 46:24.530
to disclose what we know to the patent Office. Right.
46:24.880 --> 46:28.520
It's been used to make a product we technically
46:28.530 --> 46:32.330
have to disclose that. Right. So then it actually wouldn't get through the patent
46:32.340 --> 46:36.440
Office. Yeah. I mean, you'd have to find the I
46:36.500 --> 46:40.340
don't know. I suppose, like, the websites and stuff from the selling aspect
46:40.370 --> 46:42.830
of it. Right.
46:43.100 --> 46:46.670
Nobody ever had to submit, like, from, like, an IDs perspective,
46:46.680 --> 46:50.020
has anyone ever had to submit, like, purchase order or anything.
46:50.030 --> 46:51.340
Has anybody ever had to do that?
46:53.100 --> 46:56.860
You know what I mean? I'm, like, presumably we
46:56.980 --> 47:00.040
haven't had that issue before, but like, if somebody had been selling it,
47:00.350 --> 47:04.020
you know, have you had to submit,
47:04.050 --> 47:07.350
like, a purchase order and an IDs before? You know what I mean?
47:07.920 --> 47:10.410
To prove that it wasn't?
47:12.800 --> 47:16.260
Well, I do need to disclose right up. Your client
47:16.270 --> 47:19.860
says you look, this was on sale six months before
47:19.870 --> 47:22.020
we filed. You know,
47:22.710 --> 47:27.150
there's the purchase order or because it's seen in the Grace period on
47:27.160 --> 47:29.760
it matters. It doesn't matter as much. Okay.
47:30.600 --> 47:34.710
So it's interesting. So many
47:34.720 --> 47:38.070
combines related.
47:38.100 --> 47:41.790
I'm sorry I lost connectivity briefly, but maybe you talked about this,
47:42.290 --> 47:45.960
but the but in this scenario,
47:46.020 --> 47:49.500
you have a method that you decided to keep as a trade
47:49.510 --> 47:52.800
secret. Right. And you're producing your product for a while,
47:53.970 --> 47:57.600
and now somebody else comes along and happens your
47:57.630 --> 48:01.350
method. Right. Right. You do have since you have
48:01.850 --> 48:08.450
been using it. Right. You are there's
48:08.460 --> 48:12.290
a notion that you're protected from any subsequent in
48:13.190 --> 48:15.990
that scenario? Is that a publication? Right.
48:16.050 --> 48:18.000
Is your method.
48:18.380 --> 48:21.800
If you miss it out there, can somebody else get a patent on
48:21.810 --> 48:26.120
your method? I mean,
48:26.130 --> 48:29.270
it's first to file up. So they're filing first, but you have had it in
48:29.280 --> 48:33.020
use, and you've had the product, even though your method was not obvious on
48:33.030 --> 48:36.430
the market. Yeah. My understanding of that is that
48:36.440 --> 48:39.640
if anybody independently comes up with your same
48:39.970 --> 48:43.900
process, they can use it and patent it in theory. But obviously
48:43.910 --> 48:47.020
you've been using it before, so presumably the path would be held in
48:47.030 --> 48:50.340
valid. But then they also couldn't back get you
48:50.350 --> 48:53.250
for infringement because you could show in theory because you could show,
48:53.500 --> 48:56.920
you know, pre dating. Right. That you could show that
48:56.930 --> 49:00.100
you have been using it well before their patent ever was filed.
49:01.420 --> 49:05.150
I'm not an expert on this, but that was my understanding also that if
49:05.160 --> 49:08.210
you kept it as a trade secret and it was never published anywhere, that is
49:08.220 --> 49:11.810
a risk anybody can pass and get a valid patent
49:11.820 --> 49:15.140
on that. But you have some protection. This is where I'm
49:15.150 --> 49:18.710
not totally clear. I thought Sedan unmuted. Maybe he knows more
49:18.720 --> 49:22.040
about it because some protection if you've been using it against
49:22.070 --> 49:28.250
being sued. But I don't know exactly what that is. Yeah. I perhaps
49:28.260 --> 49:31.880
betrayed a greater confidence in this answer than I
49:31.910 --> 49:35.600
actually have. But I would suspect
49:35.610 --> 49:39.200
that you'd end up in a situation where it's probably going to
49:39.210 --> 49:42.470
be long, painful court case.
49:43.070 --> 49:47.940
But I would think that in the end, nobody gets a patent and
49:47.950 --> 49:51.540
nobody's infringing. Probably nobody gets a patent. So therefore,
49:51.550 --> 49:55.260
nobody's infringing. But that's probably going to be a protracted case.
49:55.650 --> 49:58.890
They trade secrets are wonky. And I am by
49:58.900 --> 50:04.110
no means an expert. And I think maybe a little bit of additional
50:05.610 --> 50:08.940
advice that I've gotten is the problem also with that is
50:09.300 --> 50:12.270
you might not be found to be infringing,
50:13.020 --> 50:16.740
and the patent may be found to be Invalid since it
50:16.750 --> 50:20.310
was used, although there could very well be a follow
50:20.320 --> 50:23.910
up happen. That could very well be some dependent
50:24.410 --> 50:27.870
claims, some details in there that as you
50:27.880 --> 50:33.630
improve your method, you may be precluded from getting into your
50:33.690 --> 50:37.230
right to use is limited to exactly the way you were doing it.
50:37.500 --> 50:41.550
They have any alterations, any improvements
50:41.560 --> 50:45.300
that you then also want to implement, you just cannot go there anymore.
50:45.800 --> 50:49.100
No, that's very fair. And that's a great strategy, too. From like,
50:49.110 --> 50:51.560
we're actually just talking about this in a client meeting the other day.
50:51.840 --> 50:54.600
But if you want to kind of get a laying up on your competitors,
50:54.690 --> 50:58.630
taking their products, having our engineering team
50:58.870 --> 51:02.350
look at them and devise ways that they would improve
51:02.850 --> 51:06.280
them and file on those to kind of put stops on your competitor from
51:06.290 --> 51:09.910
improving their own products and kind of getting some Arsenal in case
51:09.920 --> 51:13.960
they ever wanted to come after you. You also have some some things
51:13.970 --> 51:16.840
in your back pocket, too. Right.
51:18.090 --> 51:22.230
That's true. That would be a tricky that would be a mean mean
51:22.730 --> 51:27.810
trick, but I'm sure it's happened. So my
51:27.820 --> 51:31.500
advice generally is to also file in methods. Is that what
51:32.000 --> 51:35.280
practice you guys, or what strategy you propose to your clients,
51:35.740 --> 51:38.980
do you message and devices?
51:39.320 --> 51:42.230
Yeah. I was generally try to find a method,
51:42.240 --> 51:45.530
slip it in there. I mean, sometimes the methods end up being
51:45.650 --> 51:49.740
kind of week, but if you've got the
51:49.750 --> 51:52.380
space and the claim set for them and clients on the pay,
51:53.200 --> 51:57.550
it's certainly just having options. Having a different
51:57.560 --> 52:01.390
perspective on the same thing can be valuable because you can't
52:01.890 --> 52:05.080
always predict what the future has in store
52:05.090 --> 52:08.620
for development of the tech, what your competitors, how your competitors are going to
52:08.630 --> 52:10.630
phrase things. So generally,
52:12.020 --> 52:15.920
I've historically always tried to find methods
52:16.130 --> 52:19.250
relevant to the device, regardless of what the device is.
52:20.690 --> 52:23.850
One thing I started thinking about a lot more on that
52:23.860 --> 52:27.560
note is who's infringing, you know, and so in some
52:27.570 --> 52:30.500
cases, you might have a system and you might have a method and then someone
52:30.530 --> 52:33.890
or an apparatus, someone's manufacturing the apparatus,
52:33.900 --> 52:37.600
but different people are using. So the method is actually going after different
52:37.610 --> 52:41.980
in printers. And in some cases, those in printers might be customers
52:42.480 --> 52:47.620
in the living room. And that's probably not a valuable claim. But if you're a
52:47.630 --> 52:50.950
service or rather selling
52:50.960 --> 52:55.210
a lot of equipment to companies, a applied materials
52:55.220 --> 52:58.960
to sells manage the processing equipment to intel, a method of using
52:58.970 --> 53:02.290
that piece Boomi's going to be infringed by intel,
53:02.300 --> 53:05.260
but the equipment itself would be infringed by applied materials.
53:05.740 --> 53:09.550
I think about that a lot more. I'm doing a lot of
53:09.560 --> 53:13.000
analysts, more analyst work now, analyzing claims and for
53:13.010 --> 53:16.570
buying and selling and claim charts and stuff. And it's all about who's infringing.
53:20.040 --> 53:20.970
Good point.
53:23.160 --> 53:26.640
Awesome. Great discussion. I'm going to jump ahead
53:26.650 --> 53:29.040
here. I think we kind of talked,
53:29.220 --> 53:32.940
but yeah, I mean, it's just for this one,
53:32.950 --> 53:35.370
we talked about this on the fact that the on sale,
53:35.960 --> 53:39.500
the subject matter for that on sale bar must meet
53:40.000 --> 53:43.580
a claim limitation, even inherently in this case with the scale Tech versus
53:43.910 --> 53:47.600
Retach or Tetra 2001, it inherently
53:47.610 --> 53:51.280
satisfied certain limitations. So that's
53:51.290 --> 53:54.910
required. And then the last, a long awaited one, which I think was the biggest
53:54.920 --> 53:58.900
unknown for Pre AI. Ai was just the secret sale
53:58.910 --> 54:02.800
because or otherwise available public to the public provision
54:02.810 --> 54:06.150
of AI seemed like maybe secret sales were okay.
54:06.160 --> 54:09.870
And that's what I think, what everybody was hoping. But what they found in Helson
54:09.880 --> 54:13.800
versus Teba Pharmaceuticals was that House
54:13.810 --> 54:17.640
had executed a license. The House was basically a drug company.
54:17.650 --> 54:21.180
They had executed a license and a supply and purchase agreement
54:21.190 --> 54:25.180
with Mga Pharma. And this agreement required confidentiality,
54:25.190 --> 54:28.600
but was also publicly announced the agreement had two different dosages in
54:28.610 --> 54:31.810
it. And then later, he on file the Pent,
54:32.160 --> 54:35.430
two years later, recovering the two different dosages
54:35.440 --> 54:39.660
in that agreement. And it was found that the the
54:40.050 --> 54:43.230
agreement with Mga Pharma, although it required confidentiality,
54:44.010 --> 54:47.850
still did trigger the on sale bar. It did have two dosages in
54:47.860 --> 54:51.180
it. And even though those dosages were not made public, the agreement
54:51.190 --> 54:54.150
was made public, and it was offered for sale, and it was clearly ready for
54:54.160 --> 54:57.720
patenting because they had executed this agreement with them. And so
54:57.730 --> 55:00.900
that's one of those things were now basically in this case.
55:00.910 --> 55:04.860
The other interesting statement that was made by the court was that outside
55:04.870 --> 55:09.420
of the in country in this country provision of Pre and
55:10.220 --> 55:13.070
AA did not change the on sale bar,
55:14.190 --> 55:18.280
that anything any of the case law that Predated AI
55:18.400 --> 55:21.910
and now is after a the on sale bar
55:21.920 --> 55:25.870
did not change outside of the in this country provisions. I think
55:26.200 --> 55:29.830
I would wager that that statement in this decision
55:30.330 --> 55:33.520
is going to be echoed in many, many other decisions about the on sale
55:33.530 --> 55:37.090
bar that basically said, look, we've already ruled on the on sale bar PREA.
55:37.100 --> 55:40.630
And as the Supreme Court said, nothing really
55:40.640 --> 55:44.500
changed except the country in this country provision. And so all the other things
55:44.510 --> 55:47.950
that we've already said still apply, including secret sale issues and different
55:47.960 --> 55:51.430
things like that. And so I think this case is pivotal for multiple reasons,
55:51.440 --> 55:54.670
not only the secret sales, but also the fact that they kind of said we've
55:54.680 --> 55:57.520
kind of been there, done that with all of this, and it hasn't really changed.
56:01.480 --> 56:04.630
So the last two things I have I love this
56:04.640 --> 56:08.080
quote, and this came from the fastest decision. But I was
56:08.090 --> 56:11.620
actually quoting another decision, the moralizing engineering versus Kenyon bearing
56:11.630 --> 56:15.340
auto parts. And I think this kind of just clearly shows
56:16.090 --> 56:19.320
the point to the patent system. The quote says it
56:19.330 --> 56:23.070
is a condition upon an inventor's right to a patent that he shall not exploit
56:23.080 --> 56:26.390
to discovery, competitively after it is ready
56:26.400 --> 56:29.930
for patenting, you must content himself with either secrecy or
56:29.940 --> 56:33.800
legal monopoly. And it's this whole idea is that make your
56:33.810 --> 56:37.100
decision and stick with it because you can't have your cake
56:37.110 --> 56:40.430
and eat it too, right? You can't do both. So determine which
56:40.440 --> 56:43.520
one you want to do and stick with it, because there's not a lot of
56:43.530 --> 56:44.330
options to go back.
56:47.500 --> 56:52.130
Very I I just spoke
56:52.140 --> 56:55.600
to me. You can see my green heart anyway,
56:55.610 --> 56:59.230
take kind of my conclusions from it is that advertising
56:59.240 --> 57:02.410
a product not yet developed or hasn't been reduced to practice or pre
57:02.910 --> 57:07.150
announcing a product, like if you were to pre announced on maybe even one
57:07.160 --> 57:10.300
of those crowd source funding things. If you haven't actually made
57:10.310 --> 57:13.300
the product yet, you're probably not going to trigger the on sale bar because it
57:13.310 --> 57:17.500
wasn't ready for patenting. And I kind of alluded to this earlier, just transferring
57:17.510 --> 57:20.620
technical knowledge about a process does not necessarily trigger
57:20.630 --> 57:24.310
the on sale bar. A manufacturing agreement to
57:24.320 --> 57:27.340
kind of provide you with the product is not necessarily
57:27.430 --> 57:31.270
trigger band sale bar. And then if the inventor can maintain
57:31.280 --> 57:34.690
control and argue experimental use, that might also not trigger
57:34.700 --> 57:37.480
the on sale bar, but licensing agreements,
57:37.980 --> 57:41.170
performances of services that are patent protected
57:41.230 --> 57:45.250
can providing detailed technical drawings to a potential license
57:45.260 --> 57:49.000
can even unaccepted or cancelled orders can trigger the on
57:49.010 --> 57:52.900
sale bar. And then secret sales can also trigger the on
57:52.910 --> 57:56.640
sale bar. So definitely not black and white,
57:57.760 --> 58:00.970
but very interesting kind of body of case.
58:00.980 --> 58:07.320
I would say what
58:07.350 --> 58:11.080
provoked you to take this on? Was this something that you was this
58:11.090 --> 58:16.580
initiative that you came across yourself, or was it just you being curious
58:16.590 --> 58:19.740
as you are and pursuing it that's
58:19.750 --> 58:22.830
kind of multiple? I think it's one of those things that comes up all the
58:22.840 --> 58:26.040
time with clients is like, well, I did this or I'm
58:26.050 --> 58:30.180
thinking about doing this to what degree is going to be problematic.
58:30.240 --> 58:34.440
But then we've been trying to from
58:34.940 --> 58:38.030
a since since Josh joined the team,
58:38.150 --> 58:41.240
we've been trying to be more tech
58:41.300 --> 58:44.720
focused, SEO focused, all that kind of stuff.
58:44.730 --> 58:48.620
So it's also trying to find interesting things to blog
58:48.630 --> 58:52.580
about and whatnot. So it's also kind of finding
58:52.590 --> 58:56.020
kind of double dipping, right? If I'm going to, you know, look into
58:56.030 --> 58:59.620
this because I'm personally interested, then I might as well do you work
58:59.630 --> 59:02.920
with you guys on it? Because I'm always interested about your opinions, and I might
59:02.930 --> 59:05.950
as well do some kind of blog on it. You know, me is just kind
59:05.960 --> 59:09.290
of this across the board double dipping as well.
59:09.350 --> 59:12.680
But a lot of things, it's hard for me to devote time to something these
59:12.690 --> 59:16.960
days unless I'm like, personally interested. So I try to find things
59:16.970 --> 59:20.920
that you kind of get my curiosity going, and it causes me
59:20.930 --> 59:25.070
to want to dig in. So in terms
59:25.080 --> 59:28.790
of practical advice, I mean, there's a lot of lessons that you've gone through,
59:28.800 --> 59:30.380
but doesn't it seem like,
59:32.100 --> 59:35.910
you know, extensive, aggressive filing
59:35.920 --> 59:40.320
a provisional patent is sort of the
59:40.820 --> 59:44.010
aspirin for this whole thing, right. I mean, isn't that
59:44.020 --> 59:47.330
the easiest way to take care of this? Yeah.
59:47.340 --> 59:49.880
I mean, I think it's a budget is right. I think for sure.
59:50.480 --> 59:54.620
I I agree with actually filing
59:54.710 --> 59:57.740
many Provisionals is the aspirin for most things,
59:57.750 --> 1:00:01.730
if the client can afford it and
1:00:01.740 --> 1:00:05.270
there's constantly I always like to propose rolling
1:00:05.770 --> 1:00:08.630
divisional. Theoretically, that's a grand idea,
1:00:09.380 --> 1:00:13.130
but your clients want to constantly pay for you to keep updating
1:00:13.140 --> 1:00:16.750
and refiling something. Right. Do you
1:00:18.030 --> 1:00:21.670
go ahead? Just other pieces. I see. I think
1:00:21.680 --> 1:00:25.060
it's also empowering clients, though, because a lot of clients are very gifted
1:00:25.320 --> 1:00:29.550
writers, honestly, because they do have to do technical specifications and
1:00:29.560 --> 1:00:33.780
they do have to they're conversing with their people and manufacturers
1:00:33.790 --> 1:00:37.770
and stuff like that. And so I think sometimes empowering them to to say if
1:00:37.780 --> 1:00:41.380
you have time, of course we're here if you don't have time. But if you
1:00:41.390 --> 1:00:44.440
have time, if you want to take a first pass, you're taking a first pass
1:00:44.450 --> 1:00:48.010
is going to greatly reduce my workload, and it's going
1:00:48.020 --> 1:00:51.430
to obviously impact your budget positively if that happens.
1:00:51.790 --> 1:00:54.940
So I think there's some value there,
1:00:54.950 --> 1:00:58.720
depending on depending on the client and their business, their budget,
1:00:58.730 --> 1:01:04.700
the use case, all that kind of stuff. So this
1:01:04.790 --> 1:01:08.510
probably is another topic. But do you have
1:01:08.520 --> 1:01:11.990
an approach to filing a very slim
1:01:12.110 --> 1:01:12.770
provisional?
1:01:15.040 --> 1:01:18.640
How do you minimize the work of
1:01:18.650 --> 1:01:22.000
a provisional and get credit for the
1:01:22.280 --> 1:01:25.730
concept? I guess maybe that's a topic for another
1:01:25.740 --> 1:01:29.030
day, but it's just something that I face.
1:01:29.750 --> 1:01:33.420
And I'm curious. I mean, we've seen a couple
1:01:33.430 --> 1:01:36.720
of different ways, so we've had some clients to have you a little bit deeper
1:01:36.730 --> 1:01:40.470
portfolio already. So the way to kind of get concepts on file more
1:01:40.480 --> 1:01:44.340
quickly is we harvest stuff from other applications
1:01:44.350 --> 1:01:48.540
that has Marian value, and it's kind of like the underpinning
1:01:48.550 --> 1:01:52.080
of the new technologies. You can take a lot of that from,
1:01:52.090 --> 1:01:56.370
like, a support enablement disclosure perspective. And then you
1:01:56.380 --> 1:01:59.470
spend, like, another four pages on the actual
1:01:59.480 --> 1:02:02.650
invention, draft some claims out and file it.
1:02:02.660 --> 1:02:06.130
And then you have that enabled that supported. There's disclosure,
1:02:06.140 --> 1:02:10.000
you have claims. But yet, you know, it didn't require you to draft
1:02:10.010 --> 1:02:14.260
a whole new 20 page document. And then other ones we
1:02:14.270 --> 1:02:18.070
have had is that they did. There was like some this isn't great,
1:02:18.250 --> 1:02:22.090
but there was some pre publication activity, but they did improve
1:02:22.100 --> 1:02:24.910
upon it. So you take that publication as kind of some of the basis,
1:02:25.410 --> 1:02:28.210
but then again, draft upon it. Right.
1:02:28.220 --> 1:02:31.930
Here's the improvements. But for those technologies, for the
1:02:31.940 --> 1:02:36.010
small companies where it's, like, completely new, it's completely, you know,
1:02:36.020 --> 1:02:37.990
it's a slim provision is hard.
1:02:39.530 --> 1:02:43.230
Right. The other strategy is as
1:02:43.240 --> 1:02:46.770
a consultant, particularly at the beginning of my career, I was
1:02:46.780 --> 1:02:50.220
managed by patent attorneys who took the approach that they would give
1:02:50.230 --> 1:02:53.670
me. Very simply, they would give me a number of hours. And maybe one can
1:02:53.680 --> 1:02:57.030
do that for oneself. To say I have 8 hours and whatever I
1:02:57.040 --> 1:03:00.450
can get into 8 hours is all I'm going to do. Right. Right.
1:03:01.470 --> 1:03:05.520
It was really dissatisfied to me sometimes, but I think from
1:03:05.530 --> 1:03:09.300
the clients perspective that made sense, they added was
1:03:09.310 --> 1:03:12.690
like, most of these things are not going to be worth the paper that it's
1:03:12.700 --> 1:03:15.570
written on it, particularly if you're filing early.
1:03:16.020 --> 1:03:19.380
So we are just going to limit the budget. Right. And we're
1:03:19.390 --> 1:03:22.170
just going to say here, go for it 8 hours. Do as much as you
1:03:22.180 --> 1:03:24.650
can. And that's got to be enough. Right.
1:03:27.700 --> 1:03:31.080
Okay. I mean,
1:03:31.090 --> 1:03:34.560
what about incorporating by reference, right. I mean,
1:03:34.570 --> 1:03:37.790
that would be another way to bulk it up.
1:03:39.400 --> 1:03:42.550
Well, but I don't think Europe and
1:03:42.560 --> 1:03:45.460
other countries like that respect that. I don't know,
1:03:46.200 --> 1:03:50.200
you know, from like, a priority document perspective. I don't know if
1:03:50.210 --> 1:03:53.530
that would hold up. Yeah, that might
1:03:53.540 --> 1:03:57.610
work out if you're planning to just stay in the US. But if this
1:03:57.620 --> 1:04:01.030
is potentially a big case going maybe worldwide,
1:04:01.120 --> 1:04:04.570
that's a large gamble. If you have substantial material,
1:04:04.940 --> 1:04:08.180
critical material in an incorporation
1:04:08.190 --> 1:04:11.580
by reference. Yeah. It's not easy. There's nothing always trade off. I think that's
1:04:11.590 --> 1:04:14.760
the biggest thing to write is articulating those trade offs. That like, yes, we can
1:04:15.000 --> 1:04:18.990
limit the amount of time or we can limit the budget, or we can not
1:04:19.200 --> 1:04:22.350
include claims. Or if you have figures, we can just use those.
1:04:22.360 --> 1:04:24.960
But there's going to be some trade off. And so if you end up,
1:04:24.970 --> 1:04:28.320
it ends up being, like, the pivotal technology to your company.
1:04:28.770 --> 1:04:32.580
Skimping at this stage could cause problems. It's just
1:04:32.590 --> 1:04:35.890
hard to know what those problems are going to be. Awesome.
1:04:35.950 --> 1:04:38.860
Well, thanks for participating, everybody today. I really appreciate that.
1:04:38.870 --> 1:04:43.000
A good, lively discussion on all friends. Maybe. It's like the Reinvigorated
1:04:43.010 --> 1:04:45.680
New Year. Yeah,
1:04:46.960 --> 1:04:50.550
it was a good topic. Thanks. Yeah. Thank you,
1:04:50.560 --> 1:04:54.000
Ashley. Alright. Alright. Thanks. Everybody will have a great rest
1:04:54.010 --> 1:04:57.510
of your Tuesday. Thank you, Ashley. In you
1:04:57.520 --> 1:05:01.350
too. Bye bye. All right. That's all for
1:05:01.360 --> 1:05:04.920
today, folks. Thanks for listening. And remember to check us out at Aurora patents dot
1:05:04.930 --> 1:05:08.070
com for more great podcast, blogs and videos covering all
1:05:08.080 --> 1:05:11.490
things patent strategy. And if you're an agent or attorney, it would like to be
1:05:11.500 --> 1:05:14.700
part of the discussion or an inventor with a topic you'd like to hear.
1:05:14.730 --> 1:05:18.450
Discuss. Email us at podcast and roatans com
1:05:18.900 --> 1:05:21.540
until next time. Keep calm and patent on.
1:05:32.800 --> 1:05:35.720
I'll email you about that. Yeah,
1:05:35.730 --> 1:05:38.120
absolutely. Your Rooster.
1:05:38.630 --> 1:05:39.080
It's more.