Transcript
Top 3 Inventor Mistakes: Disclosure, Search, and Ownership.
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 Patently Strategic Podcast, where we discuss all
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things at the intersection of business, technology, and patents.
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This podcast is a monthly discussion amongst experts in the field of
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patenting. It is for inventors, founders and IP professionals alike,
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established or aspiring. And in today's episode, from the
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Home Office in Suicide, Iowa, we bring you the top top three inventor mistakes
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list. The wise person once said that life is too short to make all of
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your own mistakes. In the talks we give at events
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and the content we create for our website, and especially in this podcast,
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we spend a lot of time talking about the sharp corners and trap doors that
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lie waiting for unsuspecting inventors. We do this because
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we've seen these costly mistakes made far too many times and far
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too often by folks before they come to us. Some of these mistakes are
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reversible with limitations. Others have no undo button.
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So we've truly made it part of our mission to educate around these dangers
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so that they can be avoided in the first place, saving you time,
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money, opportunity, cost, and a lot of frustration.
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If there was a guidebook we could hand to inventors on the first day following
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the conception of their idea, this episode would be it. In this month's
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episode, Dr. Ashley Sloat, President and Director of Patent
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Strategy here at Aurora, leads a discussion, along with our all star
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patent panel, exploring the most common patenting missteps taken
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by inventors and startups. The focus largely centers
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around three key areas one, publicly disclosing your invention
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before you filed a patent application. Two, not searching
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to see if your invention or something similar already exists commercially or in
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publicly available resources. And three, not carefully
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contracting with outside vendors and employees to make sure you own
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your invention. The group highlights best practices for not making
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these mistakes in the first place and explores available and remedial options should
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you already be in need of a rescue line. Ashley is also joined
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today by our always exceptional group of IP experts, including Kristen
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Hansen, patent strategist at Aurora Ty Davis, patent strategy
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Associate at Aurora, and David Jackrel, president of Jacob
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Consulting. Before handing it off to the panel, I have some exciting news to share.
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Aurora is now hiring for a part time biotech patent agent.
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This is a salaried, fully remote position with a flexible work week and
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benefits work where you want, when you want, with a great team
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on engaging subject matter, and even get the opportunity to join us on this
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podcast. Learn more and apply at aurorapatents.com/careers
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We'll also include that link in the show.
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Notes all right, take it away, Ashley. All right,
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so I have what I think are the top three traps for inventors,
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which are public disclosure, not searching and then not
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taking care of ownership issues, but also kind of wanted to open it up to
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everybody on what they think
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are big inventor issues. Any other thoughts or any other
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inventor mistakes? Maybe else? My thought goes along with disclosure.
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And it isn't just disclosure to everyone, it's disclosure even
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to your patent attorney or your patent agent, to where you don't think
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through as an inventor sometimes what the nugget or
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the crux of most interest is in your invention.
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And so sometimes that's very difficult to
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get out of an inventor in a call, because that's our job.
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But they haven't thought down that far
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very often. And it's because the overarching
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idea sounds great and interesting, but the actual way the problem was
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solved is not 100% complete.
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So I would say one of the biggest problems
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is understanding disclosure and who you should or shouldn't
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disclose to. But also when you have someone you will
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disclose to, like your patent attorney or your patent agent,
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knowing how far you can go, which is basically all the way
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deep down into the guts of your code if you need to,
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or into how you solve the problem. Those are things that
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I think even some inventors hold back in calls with their attorneys
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because they're not 100% sure that attorney wouldn't take it
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or that attorney wouldn't do something different with it.
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It's hard to get that trust occasionally just
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because it's lack of inventor know how, right. Lack of knowledge.
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It's new to them. Yeah,
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that's really interesting, Kristen. I think you're right. And it's like figuring
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out it's not easy, right all the time. You might have this
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amazing invention which has lots of different innovations in it, but which
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one is going to really be
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patentable but also block competitors and
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things like that. I had a really interesting story from somebody at Rambus.
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Rambus developed this new type of memory. I think
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it was the Nintendo,
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the first 3D Nintendo back in the 90s was made with their technology
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and it blew everybody away and then everyone stole
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it and then grandpa had to sue everybody and there was lots of litigation.
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One of the most important patents they had, even though they
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invented phase lock loop memory, which is really complicated way
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to do memory bus transitions, rambus.
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But what it was, was a connector.
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They had their phase lock loop, memory chip
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system, whatever, with a very specific type of connector that was a
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standard in the industry. And you basically couldn't design around
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it because you needed to interface your memory
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with all the chips that were out there. There was a standard connector and that
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one connector ended up being a really valuable pattern for them.
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So it's like thinking through things like you said, Kristen,
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it's so key and it's hard. It seems like it'd be straightforward.
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I know what my invention is, but it's not always there's a lot
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of different angles right. To think about on a lot of these inventions.
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Yeah, and we've all been there as practitioners inventing on
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the fly, on the back end because we don't have that information
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or asking the questions right. Could it work this way? Could it work that way?
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Could it do this? I think
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sometimes the difficulty too well. One, I think from a clinical perspective,
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sometimes you don't really know what's going to drive that demand until you know what
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the clinical efficacy is. And then so here's the clinical efficacy.
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What part of the product drove the efficacy?
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Because that's going to be the thing everyone wants
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to copy, right, is the fact that it does
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X. And now you can treat people 50
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times better than competitors or something, right? And then I think for some
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other industries, maybe still in medical device,
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but also maybe in like therapy and stuff, like it's a feel
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of the product or it's kind
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of like a feeling about the product or a feel of the product. And so
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helping inventors think, okay, I get it that it's a feel, but what
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are the attributes of the product that give that feel?
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Right? There has to be physical things that make
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it super easy to use or super
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intuitive or frictionless.
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I agree it's a problem, but I think it
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comes with a lot of research on the clients part and sometimes they just don't
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have the time, bandwidth, budget or willingness to do it.
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I've seen a couple of times, and I think it kind of ties into what
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Kristen was saying. But having the
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inventor really focus on what the invention is,
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I've seen several times where it's like almost being
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too aggressive with all these far
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reaching ideas and it almost cheapens
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what they're going for because they're focusing too much on
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it. Could do this with that, blah, blah, blah, blah, instead of really
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focusing in and describing exactly what the meat and
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potatoes is. Right?
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Yeah, actually, that was going to be another great
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segue, sort of to a different topic, but very similar
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in a way, is that I feel like
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there's always a balance, but sometimes I think it's a mistake to go
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for too many patent applications, too much quantity and
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not enough quality. Trying to patent
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really broad ideas and file patents in all kinds of areas,
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very high level, not a lot of examples,
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not a lot of support, not a lot of enablement just throwing a
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bunch of stuff against the wall to try to see what fits rather than
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really thinking about each application. And what is the theory of
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patentability? How are we going to get this through?
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Where's our support or data if it's
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unpredictable, art, all of that stuff? And I think that,
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yes, there's a balance, there's value in having numbers
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of patents, but I think when you go too far on that pendulum,
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you end up spending lots of filing fees and things don't
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get allowed. You end up much more longer prosecutions,
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RCE, arguing about claims. Whereas if
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you file something like type of thing, focused, maybe even
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relatively narrow claims for a first application. Get something through,
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see how the patent examiner is going to be thinking about it, then file your
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cons with broader claims and things like that.
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So, yeah, I think there's good
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reasons to do both have numbers of patents,
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but I think there's a mistake there if you focus too much on
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quantity and not enough on quality.
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Sometimes in those interviews when I do have
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inventors kind of going off the rails with ideas, I do try
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to pull that back. And with any specific
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implementation, I'll say something like, okay, have you seen
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this done out there in the field? What's your closest competitor doing in
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this area, and how are they solving this problem? And try to get them
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to think in those areas because sure,
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we could do this widget that has five
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interesting pieces to it, but if nobody's going to copy it
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and it doesn't work as well as the one the three pieces in it,
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why are we talking about it? Let's write
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it in as an embodiment, but not claim it.
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Right. You know, so sometimes you can you can hone them in a
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little bit more by focusing them on what their
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competitors are doing without having them have to look through prior
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art, without having to make them search.
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They will honestly just know a little bit about what's going
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on just by virtue of what they do in the field and
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who their competitors are. Right. They will have seen something just naturally
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without you having to send them searching. I agree. The searching can
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really help. We always recommend doing
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at least some searching before filing something and
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then yeah, I think, like everyone's been saying,
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inventors oftentimes are
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very knowledgeable about their field, but don't always know everything that's out there
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and have these thoughts in their mind about, like, wow, this is so new.
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No one's ever thought about X, Y, or Z. You put a bunch of
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excerpts from references onto the screen and talk through, it can be
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really helpful to really know what really is inventive
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here. The only thing I would say to that, Dave, is be
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very careful because some clients actually do have kind of rules
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to say, don't be showing my inventors prior art.
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They tend to be larger, but there are some that are
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patent savvy enough. Right, yeah. You know, that's a great point.
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I think we always, anytime by
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default, I'll say it this way, by default,
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even when someone asked me to do a search, I don't expose them to patent
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numbers, application numbers, publication numbers, anything, but send
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excerpts from publications if possible. Sometimes it's not sometimes
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only a patent, but patent publication, send excerpts.
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And at least my thought about it is that
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if the search is clear or clear
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enough that they decide to go ahead with the patent, all those are going to
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end up in an IDs. So the client,
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the owner, the assignee is going to be aware of those references. And if
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they don't, okay. That is
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where, I guess, you can have problems being
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exposed to patents for willfulness
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and infringement, but if you don't actually know of a claim or
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know of a patent number with an actual claim, you see an
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excerpt from a publication. Are they really
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aware of that claimed
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claim that they may be infringing on? I think technically not.
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There may be an argument that they're somewhat aware or
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something, or they should have been aware.
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I don't know if it has to do with Rule 156 or not. I mean,
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I would say if you're just sending excerpts and they aren't really
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detailed about exactly what the invention is and they're just features,
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I would say I don't think you're going to get caught on any kind of
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willful or neglect. But I would
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say to not expose your inventors to extra
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prior art because it does water down what they're doing for
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your company and what they're doing to create.
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You don't want that sneaking in because it's in the back, the only thing they
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can think of. I know what you mean. There's the whole exposure
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thing and yeah, that's a lot of, like, sort of medium
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or larger companies I work with, they end up segregating. There's the patent
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team, which are maybe more
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experienced people who can sort of keep track of
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that in their minds and segregate and things.
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Actually, I don't know what you're going to say about number two, but I have
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a feeling that searching is really valuable and someone who
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understands the technology and the product roadmap and
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the sales strategy and all of that. It's really valuable, I think,
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for them to understand the landscape.
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Yeah. You end up with a higher value
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IP portfolio at the end of the day.
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Yeah, I think definitely we have clients that don't want their inventors,
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their brains being muddied right. With stuff. But I also think there's a point in
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time where that artificial barrier
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has to be taken down when you get into potential freedom to operate issues,
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because now you do have to involve the engineer, because you got to say,
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this part of our product, and it's a problem
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because it's sure,
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but you don't have to say who it is. You don't have to expose the
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company. You can say there's prior art out there. This is what they're doing
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without the full exposure.
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That's what I would have to do. If I had
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a concern with some art that came up on a search and I
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had to talk to the inventor to see if
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they were different enough or if they had any other features that would be different
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enough than that, I would basically have to describe the prior
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art without giving away the company or the claim itself or
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that right. Yeah, definitely. Talking about
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companies that have more than two people. Yes.
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That's funny. Cool. Those are all awesome and they have any
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other traps or any other things. Otherwise I can think
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these are going to be shocking. But move through these.
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I had a quick one just because I really don't have an
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answer. So one thing that I've
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seen and it's kind of recent, that's why it's on my mind. But is
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there any like, advice for startups
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as far as like, balancing a budget
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and trying to get the broadest claims possible
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here? Recently, actually, a startup I've been involved with
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past few years, we just went to allowance on some claims
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and now kind of looking back on it, I can see how
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budgetarily we kind of rushed it a little bit, run out
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of money, didn't want to keep doing continuations.
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How do you balance that? How can
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you be aggressive enough while
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keeping your budget in mind? I think
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from like a searching perspective, I always think there's
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immense value in people who are really good at searching. But that said,
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there are so many search tools out there that allow
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for keyword plug and play to
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help hone in on inventive
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features. And so I think actually inventors
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can do a lot of if you're a small company trying to extend
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budget runway, so much searching could be
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done using actually I have some of the tools that I found
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and actually some other things I just learned yesterday, but to
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kind of help figure that out more quickly.
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But that's what I would say. But if anybody else has
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any other thoughts, I have two thoughts on that.
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The first one, to save some money on basically not
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extending your prosecution, it would be better to
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pay for a search up front than to write an additional office action on the
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back end. So if you can do that search up front, you might be
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able to have your patent attorney or agent hone those claims a little
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better, which should reduce office actions on the back end.
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And searches are generally cheap,
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but if you still need to refine budget
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even more than that, 1015 minutes with your patent agent
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or your patent attorney on the phone showing you how they
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perform searches by sharing a screen and saying, this is
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what I would do. And they would charge you your 1015 minutes of
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time or whatever the meeting time was, which is way cheaper than
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an office action and way cheaper than them doing the full search. But that
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should give you the tools for you to dig in as an inventor
18:41.590 --> 18:45.346
and do your own search and come up with your own kind of thought.
18:45.528 --> 18:48.566
Another 1015 minutes with your patent attorney or
18:48.588 --> 18:51.510
agent later just for a quick discussion.
18:52.170 --> 18:55.746
Still cheaper than a full search on its own or extra office action
18:55.778 --> 18:59.526
on the back end. That's good too, if you have the interest.
18:59.628 --> 19:03.002
I mean, this is Tedious work, right?
19:03.056 --> 19:06.506
This is not something where you can just throw three searches at it and be
19:06.528 --> 19:07.580
done usually.
19:09.970 --> 19:13.278
So you have to kind of have the drive to do that,
19:13.444 --> 19:17.434
and not everybody does. Some people find that very unpleasant
19:17.482 --> 19:21.374
work. It's just
19:21.412 --> 19:24.770
tedious. Right. I like it. I would do that all day,
19:24.840 --> 19:28.894
but I'd probably get a little bit bored. I wouldn't
19:28.942 --> 19:34.130
hate it to just be bored. Another thing, which we sometimes
19:34.200 --> 19:37.986
forget about these options is to extend the tendency, especially like if
19:38.008 --> 19:42.230
you already have something allowed and you're in a con, you can delay prosecution.
19:42.970 --> 19:46.646
When examiners call and say, hey, can you do an election by phone and say,
19:46.668 --> 19:50.486
no, thank you, please send an office action, and just delay
19:50.518 --> 19:54.406
the prosecution. Because it pushes out issue fees, it pushes out filing
19:54.438 --> 19:58.460
fees for the next con. It pushes out everything. And a lot of really,
19:58.910 --> 20:02.698
like, the one two person companies, I think, are often in
20:02.704 --> 20:06.254
the situation. They have very limited budgets and will file like
20:06.292 --> 20:09.886
an omnibus, like a patent that shows all the ideas that
20:09.908 --> 20:12.398
they have. But they get it in one patent so that they save on a
20:12.404 --> 20:15.666
little bit of filing fees. And then in the first set of
20:15.688 --> 20:19.442
claims, relatively narrow, cover the product or whatever
20:19.496 --> 20:23.474
they're marketing, whatever they think they might have in the next year and
20:23.512 --> 20:27.298
then file that con. But delay Pendency and hopefully they're
20:27.314 --> 20:30.920
getting a series B or C by the time the next
20:31.290 --> 20:35.270
fees come up. And then the whole situation
20:35.340 --> 20:38.966
has changed. The budget is different now. They've got this omnibus patent they can file
20:38.998 --> 20:42.778
lots of different cons off of, but you push those fees out until
20:42.864 --> 20:46.954
hopefully the next investment comes in. And then
20:47.152 --> 20:50.858
justifies honestly, the expense of filing a
20:50.864 --> 20:54.640
half a dozen cons off of this seminal application.
20:55.570 --> 20:59.006
Sure. And you can take one and two month extensions without a
20:59.028 --> 21:02.494
terrible pain in your budget. It's a few hundred
21:02.532 --> 21:06.210
dollars here and there, but it's cheaper than quickly
21:06.280 --> 21:09.602
getting something allowed and having to pay all the con fees right away
21:09.656 --> 21:13.134
within the first year. I normally
21:13.182 --> 21:17.006
wouldn't condone delaying responses because you do lose
21:17.038 --> 21:20.722
PTA and there are some other issues with that. But if you're talking about software,
21:20.786 --> 21:24.022
you're talking about a medical device, you know, after 20 years,
21:24.076 --> 21:27.302
it's it's highly likely that will be outdated, gone, it doesn't matter.
21:27.356 --> 21:30.406
You're not worried about PTA, but,
21:30.428 --> 21:33.706
you know, like David, you do a lot of materials, don't you? And a lot
21:33.728 --> 21:37.306
of things that would maybe be PTA might
21:37.328 --> 21:40.800
be very important. So those delays can add up.
21:43.010 --> 21:46.494
Yeah, cool. Good stuff.
21:46.612 --> 21:48.800
So many different levers to pull.
21:50.290 --> 21:53.858
All right, obviously the first thing we've already kind
21:53.864 --> 21:57.346
of talked about is public disclosure. But I think the
21:57.368 --> 22:01.154
confusion sometimes comes from with
22:01.192 --> 22:04.874
inventors is this whole idea that you're not supposed to publicly
22:04.942 --> 22:08.646
disclose at one point, but then you have to
22:08.668 --> 22:11.746
publicly disclose to get patent protection.
22:11.938 --> 22:15.202
Right? And so it's this kind of balance
22:15.266 --> 22:18.454
of when to do what and
22:18.492 --> 22:22.010
why. Right, but there's also the opportunity cost problem
22:22.080 --> 22:25.322
that like you're saying you don't want to do a patent too soon,
22:25.376 --> 22:28.700
you don't want to be too unfocused. But for a lot of small companies,
22:29.230 --> 22:32.794
you not sharing that idea, not seeking investment,
22:32.842 --> 22:36.000
not pitching comes at a cost too. Right.
22:37.090 --> 22:40.606
You have to do things in the right order. But if you're not
22:40.708 --> 22:44.670
kind of seeking feedback and seeking investment, you're kind of running out of runaway.
22:45.330 --> 22:48.802
That's kind of what some of the public disclosure section is. So we're all obviously
22:48.856 --> 22:52.638
familiar with the whole idea that you get a limited monopoly
22:52.654 --> 22:56.174
of 20 years in exchange for your publication of your invention.
22:56.302 --> 22:59.026
And the whole idea is that so that people can read it and build upon
22:59.058 --> 23:03.094
it. Then you do get that monopoly, which kind of goes towards you really
23:03.132 --> 23:06.646
want to find that perfect inventive piece to
23:06.668 --> 23:10.582
build your monopoly on like the connector for the Rambus
23:10.646 --> 23:13.818
company because that's kind of what the
23:13.824 --> 23:16.620
company is going to be built on and where you really get the most value.
23:18.350 --> 23:21.654
But there is a rejection risk, right, where if you don't
23:21.702 --> 23:25.066
do these things in the right order, then if you're selling
23:25.098 --> 23:28.430
it or offering for sale or making it available to the public, you're going to
23:28.500 --> 23:31.422
potentially inhibit your ability to later patent it.
23:31.556 --> 23:35.026
And so there's several different things that
23:35.048 --> 23:38.734
constitute public disclosure. Obviously presenting or publishing your patent
23:38.782 --> 23:41.966
ready invention and responding to a request
23:41.998 --> 23:45.486
for proposal when the technology is clearly patent ready or selling or offering for cellular
23:45.518 --> 23:49.238
technology. I think some of that's where some of the inventors though too, get a
23:49.244 --> 23:52.482
little the nuances of it, I think kind of get lost
23:52.546 --> 23:56.630
is that if those patentable features haven't been invented yet,
23:56.700 --> 23:59.834
then their public disclosure might not be a public disclosure. Right.
23:59.872 --> 24:02.454
If it's just this pie in the sky, like I want to make a wearable
24:02.502 --> 24:06.170
that detects
24:07.150 --> 24:10.758
heart arrhythmia, but I have no idea how it's going to work. Well, clearly I'm
24:10.774 --> 24:13.886
going to need some kind of sensor and blah, blah, blah, other than I have
24:13.908 --> 24:17.902
no idea. Is that really a public disclosure event? Maybe not,
24:17.956 --> 24:21.182
because how you actually achieve the technical problems
24:21.236 --> 24:23.440
you're actually solving are not known at that time.
24:25.250 --> 24:28.686
Right. And going back to the international question on all of
24:28.708 --> 24:32.462
that, the US. Is very kind and has this one year grace period,
24:32.526 --> 24:35.778
but that's not the case for a lot of places around the world. So that's
24:35.874 --> 24:39.218
a pitfall that I've seen, unfortunately.
24:39.314 --> 24:42.294
Yeah, and a big one that inventors miss,
24:42.492 --> 24:46.390
they hear, okay, I can't sell my invention, but even
24:46.460 --> 24:49.926
offering for sale is a bar
24:50.028 --> 24:53.574
and you just can't do that. And it includes
24:53.622 --> 24:57.734
which I think it's still even taking that one step further, even canceled or unaccepted
24:57.782 --> 25:01.718
orders, right. Even if somebody says, well, no, thanks for the offer, but no
25:01.744 --> 25:05.642
thanks. And then I think the other one that's been catching
25:05.706 --> 25:09.310
people in the software space is they sell things
25:09.380 --> 25:12.746
related to the software, but don't actually sell the software.
25:12.938 --> 25:16.766
But that still counts because the software was used as
25:16.788 --> 25:19.874
part of the process. So if you're selling a report,
25:20.072 --> 25:23.518
even if you're not selling the software, that report still counts
25:23.534 --> 25:27.458
as a public offer for sale for the software that made the report. So I
25:27.464 --> 25:30.518
think that catches people, too. It's like, well, nobody knows how the software works.
25:30.684 --> 25:34.726
It's like, well, we, I think, learned from was it Helson with
25:34.828 --> 25:38.698
the drug companies for secret sales. Nobody knew what the product,
25:38.784 --> 25:42.266
the composition was or something. Secret sales are a
25:42.288 --> 25:44.860
no go under AIA either.
25:46.990 --> 25:50.298
But manufacturing agreements are okay, clear experimental use where
25:50.304 --> 25:54.446
it's clearly trying to figure out the invention, you maintain control of
25:54.468 --> 25:57.626
it. Advertising stuff that's yet to be developed.
25:57.658 --> 26:00.766
Right. You don't know what the inventive feature is going to be. Those are
26:00.868 --> 26:04.638
likely not an offer for sale. But then licensing agreements
26:04.734 --> 26:08.302
and providing technical drawings when it's clearly
26:08.366 --> 26:12.530
fully baked, all kind of are likely an offer for sale.
26:14.550 --> 26:18.322
That's a great point, too. Even like, it doesn't have to be detectable
26:18.466 --> 26:21.990
a method. You use a method to make something,
26:22.060 --> 26:25.746
and then you sell that product, but the method won't be reverse
26:25.778 --> 26:28.038
engineerable from the product. Doesn't matter.
26:28.204 --> 26:32.040
Still disclosed, right?
26:32.810 --> 26:36.074
Yeah, sticky point for sure. But obviously
26:36.192 --> 26:39.418
you avoid the rejection risk by the patent Office by getting your
26:39.424 --> 26:43.006
invention on file before you do the disclosure or the offering for
26:43.028 --> 26:46.670
sale. Right. So you file and then you publicly disclose.
26:47.810 --> 26:51.150
But this, I think, kind of solves
26:51.810 --> 26:55.202
again, the opportunity cost problem is that if you share
26:55.256 --> 26:58.658
too soon, obviously it has detrimental effects on your ability to
26:58.664 --> 27:01.810
protect your idea. But not sharing also, especially for small companies,
27:01.880 --> 27:05.038
comes at a tremendous opportunity cost. Right? Because they're
27:05.054 --> 27:08.454
not getting those insights. They're not getting traction, they're not getting feedback, they're not getting
27:08.492 --> 27:10.710
refinements, they're not getting people recruitment.
27:12.490 --> 27:16.406
A nondisclosure agreement kind of can help with
27:16.428 --> 27:19.766
that in some situations, but as we all know, investors don't
27:19.798 --> 27:23.014
necessarily sign those, and it's not necessarily
27:23.062 --> 27:25.180
a bulletproof thing. So obviously,
27:25.870 --> 27:30.086
provisionals are the answer for that placeholder.
27:30.118 --> 27:33.926
Gives you your future filing date pens for one year. And speaking to David J's
27:33.958 --> 27:38.030
point, there are many countries that do have a grace period,
27:38.370 --> 27:42.478
but there's plenty that don't. So if you do mess this up, there are some
27:42.644 --> 27:46.094
remedial options in some countries, but other key countries like China
27:46.142 --> 27:48.740
and Europe, where a lot of companies filing today,
27:49.350 --> 27:52.574
there is no grace. And I think some inventors had a conversation
27:52.622 --> 27:56.134
earlier this morning where it wasn't clear
27:56.172 --> 28:00.870
to me that she realized that converting
28:01.450 --> 28:06.166
tomorrow to just her US to
28:06.188 --> 28:09.766
just us forfeited all of her foreign rights from a provisional
28:09.798 --> 28:13.066
right, that just going
28:13.088 --> 28:16.934
into the US at the one year forfeits all the other countries for what's disclosed
28:16.982 --> 28:21.226
there. Right. So I think sometimes inventors kind
28:21.248 --> 28:25.406
of go along with whatever because it's a recommendation but don't always truly understand
28:25.508 --> 28:29.146
the implications of the recommendation. I think that's
28:29.178 --> 28:33.354
just sometimes a byproduct of practitioners
28:33.402 --> 28:37.346
being too busy and not taking the time to
28:37.448 --> 28:41.218
describe or to make sure they understand what decision they're making when
28:41.224 --> 28:44.420
they're making a decision. Right. And to be clear,
28:44.810 --> 28:48.422
since we might have inventors listening at that one
28:48.476 --> 28:52.790
year from your provisional filing, you will want to either
28:52.940 --> 28:55.800
decide US. Only and file in the US.
28:56.250 --> 29:00.170
Or decide Pct so that you can file later
29:00.240 --> 29:02.970
in the US. And in several other Pct countries,
29:03.310 --> 29:07.110
or file both US and Pct
29:07.270 --> 29:11.018
and you just begin the US. Faster. Right. And you
29:11.024 --> 29:14.558
can go directly into other foreign countries as well at the
29:14.564 --> 29:18.160
one year mark. You don't have to, but most everybody does.
29:20.690 --> 29:23.760
Absolutely, yes. Again,
29:24.130 --> 29:27.546
US and most of the countries are first inventor to file,
29:27.738 --> 29:30.978
while other countries are not first inventor to file. But we're first inventor to
29:30.984 --> 29:34.286
file and everybody else is first to file. It just means you have to beat
29:34.398 --> 29:37.714
people to the patent office, right. If somebody else is inventing, in the same
29:37.752 --> 29:41.160
space you are, you need to get to the patent office before they do.
29:41.610 --> 29:45.014
Otherwise the other person's stuff will be prior art
29:45.052 --> 29:48.006
to your stuff. And if they're sufficiently similar, that's going to block your ability to
29:48.028 --> 29:51.306
get a patent. But again, shouldn't be
29:51.328 --> 29:55.066
too early because if you're too early, you're not going to have enough meat there
29:55.248 --> 29:58.538
to overcome the art that is almost invariably going to be
29:58.544 --> 29:59.100
found.
30:02.190 --> 30:05.454
So moving on to searching. So I think
30:05.492 --> 30:09.806
searching obviously has short and long term interests and
30:09.828 --> 30:12.814
then we're going to talk about prior art a little bit and the differences between
30:12.852 --> 30:16.094
patentability for him to operate in validity and how that relates to
30:16.132 --> 30:19.378
different parts of a patent. And then instead of I have a
30:19.384 --> 30:21.918
few tools I'm going to show you, but there's also something I learned yesterday that's
30:21.934 --> 30:24.020
not in here, but I'm going to share that with everybody too.
30:25.910 --> 30:29.446
So obviously the short term interest of searching is obviously you can get a
30:29.468 --> 30:33.026
patent and you can practice it ideally without infringing
30:33.058 --> 30:36.566
other people's patent. The longer term interest is that you
30:36.588 --> 30:40.134
can keep your patent. Hopefully it's
30:40.182 --> 30:43.946
more invalidation proof, right. And maybe even
30:44.048 --> 30:47.340
longer term if you keep it, you can enforce it.
30:47.870 --> 30:51.286
And so I think that it really spans the entire lifetime.
30:51.318 --> 30:54.686
So I think there's a huge amount of importance. I think for a while it
30:54.708 --> 30:59.886
was undervalued, but I feel like there's a surge in
30:59.908 --> 31:03.150
the industry to be more proactive around searching.
31:03.590 --> 31:08.094
So prior art of course, is any evidence that your invention was already publicly known
31:08.222 --> 31:11.778
before the effective filing date of the application. This can be
31:11.944 --> 31:15.826
available products or sales of a technology or
31:15.848 --> 31:19.026
offers for sale confidential sales, articles, populations, websites,
31:19.058 --> 31:22.946
trade shows, presentations, demonstrations, previously filed patent applications
31:22.978 --> 31:26.578
or patents. And I think some inventors I think, are. Having a misconception
31:26.594 --> 31:30.466
about this too, that if a prior patent isn't issued,
31:30.498 --> 31:35.306
that doesn't count as prior art. So again, there's just some I
31:35.328 --> 31:38.602
looked at all the products out there and there's no products for what I do
31:38.656 --> 31:42.166
and it's like, well, that's great and that's good from a market demand
31:42.278 --> 31:45.710
potentially perspective, but not from necessarily from my patentability.
31:46.210 --> 31:48.922
And I kind of look at this as almost like the recycle,
31:48.986 --> 31:52.702
reuse, renew bangles that is kind of this evolving thing,
31:52.756 --> 31:55.966
right, that as you're first developing a product, you're looking at patentability.
31:56.158 --> 32:00.190
As your product becomes more cemented, you look at freedom to Operate.
32:00.350 --> 32:04.066
As you potentially identify patents that may be problematic, you kind of look
32:04.088 --> 32:08.806
at invalidity of those issued patents to see
32:08.988 --> 32:12.118
how strong they are. And then that cycle repeats kind of throughout your R and
32:12.124 --> 32:16.022
D life cycle. But patenting, your invention and
32:16.076 --> 32:19.690
your right to practice the invention are really two sides of the same coin.
32:20.030 --> 32:24.134
So again, patentability being your ability to get a patent
32:24.182 --> 32:27.830
and then right to practice is your freedom to operate. So patentability
32:27.910 --> 32:31.638
others are excluded from making, using, offering for sale, or selling, or importing
32:31.654 --> 32:34.906
your invention to the US. And then freedom to operate as you are not excluded.
32:34.938 --> 32:38.366
And again, I think a lot of inventors confuse this, but I like looking at
32:38.388 --> 32:42.250
it. The example I always give is like the age old Edison
32:42.330 --> 32:45.806
and Pipkin. Edison had the clear glass light bulb.
32:45.998 --> 32:49.570
He got a really nice broad patent. Pipkin had an inventive
32:50.070 --> 32:53.554
improvement to Edison's light bulb, which was the frosted glass light
32:53.592 --> 32:56.740
bulb, which was softer, nicer, not so hot,
32:57.270 --> 33:01.218
whatever, but it was a more narrow patent than Edison. And Pipkin
33:01.234 --> 33:04.678
cannot practice his invention without Edison's. So you kind of
33:04.684 --> 33:08.600
get into that pipkin has to pass through Edison's property
33:08.970 --> 33:12.106
to get to his own invention, and then you do that through
33:12.128 --> 33:16.138
royalties or licensing. So that's kind of how you balance those. And I think
33:16.304 --> 33:19.866
some inventors are more I think
33:19.888 --> 33:23.214
the tide is changing a little bit, but this idea that it's okay
33:23.252 --> 33:26.638
if there's a problematic patent because there might be an opportunity
33:26.724 --> 33:30.910
for licensing. We have clients that license from universities
33:31.250 --> 33:35.150
and it's a great partnership. You get the know how from the professor
33:35.490 --> 33:38.882
or maybe it's somebody who it's some random person
33:38.936 --> 33:41.758
who developed it in their garage. And they don't want to be a millionaire,
33:41.774 --> 33:44.962
they just want some recognition for the fact that they had
33:45.016 --> 33:48.758
this idea and they made a product. And so a simple small royalty would
33:48.764 --> 33:53.714
be enough for them. If you ever do make it BS
33:53.762 --> 33:57.960
art or references used, again, patentability invalidity is really anything.
33:58.330 --> 34:01.926
Freedom to Operate is just issued patents that are not expired and their maintenance fees
34:01.958 --> 34:05.542
are paid. So, as we all know, the Natty move a patent.
34:05.686 --> 34:09.020
So it has the front cover, which has all the bibliographic data,
34:09.470 --> 34:13.594
there's the drawings, which should embody anything that's shown in the claims
34:13.642 --> 34:17.102
in theory, specification and the claims. So from
34:17.156 --> 34:21.166
a patentability, you're looking at everything in
34:21.188 --> 34:24.786
a patent, right? Front page drawing, specification, claims for
34:24.808 --> 34:28.882
FTO, it's just the claims. So some search
34:28.936 --> 34:33.774
tools I think are valuable for inventors, even practitioners,
34:33.902 --> 34:37.026
kind of low hanging fruit. Of course, our Google patents, a space net,
34:37.128 --> 34:40.866
USPTO, has an amazing database right now they just revamped
34:40.898 --> 34:44.374
their whole system. Super easy to use, really nice.
34:44.572 --> 34:47.930
There's also Lens, which is a nice tool as well.
34:48.000 --> 34:50.038
And then some non patent literature databases.
34:50.134 --> 34:53.962
NCBI has a lot of literature from
34:54.016 --> 34:57.546
professors and universities. Google Scholar lens also looks
34:57.568 --> 35:01.142
for those. And then AI databases
35:01.206 --> 35:04.974
is PQ AI, if anybody's used that one before. But it's an AI based
35:05.012 --> 35:08.366
search engine where you can literally drop in a paragraph if you
35:08.388 --> 35:11.966
wanted to and run it. It does also do
35:12.068 --> 35:15.578
obviousness, so it should show you novelty
35:15.674 --> 35:19.506
and obviousness so combinations. I'm not as convinced about the
35:19.528 --> 35:23.374
obviousness ones. I haven't used it much at all. But the little bit of testing
35:23.422 --> 35:26.918
I did for this use case, I wasn't as convinced that the
35:26.924 --> 35:29.974
obviousness one was decent, but again, barely played with it,
35:30.012 --> 35:34.198
but the novelty seemed reasonable. So kind
35:34.204 --> 35:38.200
of interesting one, the other thing I learned just yesterday was that
35:38.810 --> 35:42.186
they also very actually in the last few years, but this is
35:42.208 --> 35:45.686
Drew Hirschfield. One of his big initiatives with the Patent
35:45.718 --> 35:49.178
Office was in part changing or at least embracing more
35:49.184 --> 35:52.880
of the CPC code system for
35:53.490 --> 35:57.658
how things are classified and then how applications are tracked into different examiners
35:57.674 --> 36:01.214
and different art units. His recommendation, which I thought was really
36:01.252 --> 36:04.842
interesting, is once you this is more important in software,
36:04.986 --> 36:08.034
I think, when you're trying to avoid certain art units and things like that,
36:08.072 --> 36:11.442
is taking your preamble of your claims, for example,
36:11.496 --> 36:16.054
or taking some of your claim language and doing a CPC search to
36:16.092 --> 36:19.414
see what classifications it's going to come
36:19.452 --> 36:23.382
back as. And if you think that that's an appropriate not
36:23.436 --> 36:26.440
in an attempt to game the system,
36:26.970 --> 36:30.294
but more in attempt to make sure that it's actually in an
36:30.332 --> 36:33.882
appropriate art unit, right? Because you want an examiner that's familiar with
36:33.936 --> 36:36.986
the technology, you want them to be a subject matter expert as much as they
36:37.008 --> 36:40.138
can be. So the way you're drafting an application,
36:40.224 --> 36:42.490
if it's ridiculously broad,
36:43.550 --> 36:47.202
then maybe puts you into a wholly wrong art unit.
36:47.286 --> 36:51.246
That's not going to be a good mix. And so I
36:51.268 --> 36:54.798
thought that was really interesting because I think it's in the
36:54.804 --> 36:58.626
best interest of everybody for it to be in the right art unit and to
36:58.648 --> 37:01.874
be with the right examiner. So if you can kind of preemptively, at least
37:01.912 --> 37:05.540
kind of see where it might go, it can give you a better idea about
37:06.150 --> 37:08.962
whether it's an appropriate place for that or not.
37:09.096 --> 37:12.866
So I thought that was really interesting. I don't do that in my current practice,
37:12.898 --> 37:15.398
but I actually might start doing it a little bit because I think it's kind
37:15.404 --> 37:20.474
of an interesting full circle right opportunity,
37:20.592 --> 37:24.806
I noticed, to tweak terms too, if you don't feel that you're falling
37:24.838 --> 37:28.774
in the right. These guys use Title
37:28.822 --> 37:32.302
too, so not just claim language, but Title will pull you into
37:32.356 --> 37:35.310
a certain Art unit or a certain classification.
37:35.650 --> 37:39.182
Right, but they are actually I was impressed. Their new
37:39.236 --> 37:43.154
initiative, actually they used algorithms now to use the entire
37:43.272 --> 37:46.914
document to track it into an
37:46.952 --> 37:50.814
Art unit. And examiners
37:50.862 --> 37:54.546
and fees can basically kind
37:54.568 --> 37:58.274
of help the system get smarter. If it's not getting to the right,
37:58.472 --> 38:00.838
if they feel like it's not a good fit for their examiners or it's not
38:00.844 --> 38:04.326
a good fit for they can actually feed that back into the system to make
38:04.348 --> 38:07.160
it smarter. And so it's actually now,
38:08.890 --> 38:12.362
in theory, this system should be much better because I said they're taking the entire
38:12.416 --> 38:16.282
document and actually running it through some kind of algorithm that's not publicly available
38:16.416 --> 38:19.738
right now, but maybe eventually would be where you
38:19.744 --> 38:22.938
could see where it's going to be you could kind of see where it's
38:22.944 --> 38:26.014
going to be tracked longer term. But it sounds like they're getting better from that
38:26.052 --> 38:29.786
perspective. So it would hopefully reduce examination time because an examiner
38:29.818 --> 38:33.438
would already be familiar with the art. It would actually make sure a good subject
38:33.454 --> 38:35.860
matter expert were reviewing it.
38:36.710 --> 38:40.478
So that's cool. So software practitioners about a decade
38:40.494 --> 38:43.746
ago were playing with this heavily just to
38:43.768 --> 38:48.360
try to get out of the 101 heavy, difficult Art units, the 3600,
38:49.290 --> 38:52.806
just to keep their application somewhere else, except for where
38:52.828 --> 38:56.406
they're getting rejected under 101 to their
38:56.428 --> 38:59.926
death. It is interesting
39:00.108 --> 39:03.930
also just to understand the system and how it works.
39:04.000 --> 39:07.670
I think when you're crafting claims,
39:07.830 --> 39:10.954
because I think we all get set
39:10.992 --> 39:14.510
on certain terminology and we keep going and maybe
39:14.580 --> 39:18.046
you're drafting claims in something. You don't work in regularly in,
39:18.068 --> 39:21.790
like, a field or an area. You don't work in regularly and you're doing something
39:21.940 --> 39:24.500
that isn't quite right for that field.
39:25.430 --> 39:29.006
This sort of a search might help you hone
39:29.038 --> 39:32.706
that skill and say it's not what
39:32.728 --> 39:35.774
they call it in medical device. This isn't
39:35.822 --> 39:39.346
what they call it. I don't know. I've done some fluidic
39:39.378 --> 39:42.630
things lately, and that's not my
39:42.700 --> 39:46.006
forte. It's just because I haven't done a lot of it. And so some
39:46.028 --> 39:49.666
of the words I would initially come up with weren't
39:49.698 --> 39:53.098
necessarily jiving with how I thought they should. And so I
39:53.104 --> 39:56.266
end up doing a lot of research like this to make sure
39:56.288 --> 39:59.434
I'm getting those correct. Yeah, and actually that was
39:59.472 --> 40:02.966
the whole impetus for that. The webinar was the idea around software
40:02.998 --> 40:06.378
in particular, again, not in the interest of gaming the system, but if you're
40:06.394 --> 40:10.426
drafting software claims, for example, in such a way that they're
40:10.458 --> 40:13.630
not a business method, but they're being viewed as a business
40:13.700 --> 40:16.814
method because you're using kind of interesting
40:16.932 --> 40:20.206
terminology obviously you don't want to. If it's a business method,
40:20.238 --> 40:23.666
it should be in the business method unit. But if it's not, you need to
40:23.688 --> 40:27.094
be drafting it by the more accurate language to get it.
40:27.212 --> 40:31.074
If it's like some kind of machine learning for something, it should be drafted
40:31.122 --> 40:34.706
differently. All right, the last one is just ownership.
40:34.818 --> 40:38.166
Not just ownership. I can't tell
40:38.188 --> 40:42.906
you how many conversations I have about this every year where
40:43.008 --> 40:46.666
somebody owns a company, because they own the company, they think that they should
40:46.688 --> 40:49.786
be listed as an inventor, even though they
40:49.808 --> 40:53.674
are six people removed from the actual inventive activity.
40:53.722 --> 40:57.674
And you're like, yeah, but that's
40:57.802 --> 41:01.680
not quite right. So I'm just really making sure this is
41:02.610 --> 41:06.514
clear. Obviously the US.
41:06.552 --> 41:09.922
Constitution in article one, section eight,
41:09.976 --> 41:13.714
clause eight, when they talk about inventor rights, that's the only place that
41:13.752 --> 41:17.074
right is actually used in the actual constitution. Now, of course, there's a whole bill
41:17.112 --> 41:20.646
of rights in the actual constitution, and vendor rights is the only place where right
41:20.748 --> 41:24.198
is used. And so we really put an emphasis in
41:24.204 --> 41:27.606
the US on inventor rights. And that's why there's a lot
41:27.628 --> 41:30.986
of you have to make sure those rights are conveyed to the
41:31.008 --> 41:34.474
right entity if something goes
41:34.512 --> 41:38.538
awry, or making sure you actually own your invention. And so
41:38.624 --> 41:42.294
in the world where you're not doing everything, as in you're not a solo inventor,
41:42.342 --> 41:45.706
you really do need to make sure it's clear and cleaned
41:45.738 --> 41:49.406
up. So if you have an entity, the entity can have
41:49.428 --> 41:53.486
the authority to file the patent application, enjoys all the rights and benefits, but only
41:53.668 --> 41:56.670
if the patent is assigned to that entity.
41:57.010 --> 42:00.206
And that inventorship is the person who contributed to the conception
42:00.238 --> 42:03.346
of the invention to the point that their idea is clear enough to reduce the
42:03.368 --> 42:07.394
practice. We've seen it where you have deceased
42:07.442 --> 42:11.234
inventors. We've seen it where you have maybe hostile
42:11.282 --> 42:15.126
inventors or just things that go right.
42:15.148 --> 42:18.754
But that's why I think you have multiple redundancies in the system. You have employment
42:18.802 --> 42:22.186
contracts with assignment clauses, and then you have assignments at the time
42:22.208 --> 42:25.626
of filing to make sure those
42:25.648 --> 42:29.306
rights are conveyed. And then if you can't get those assignments at the time of
42:29.328 --> 42:33.246
filings and you have the employment contract that goes back and has assignment clauses in
42:33.268 --> 42:36.942
it, but ideally you have all these so that when something goes wrong,
42:36.996 --> 42:40.906
which almost always does, especially if you don't have these lined
42:40.938 --> 42:44.174
up, then you have these different actions to take to
42:44.212 --> 42:48.638
clean it up. And I know some firms combine declarations
42:48.734 --> 42:52.482
and assignments, and I don't know if I quite feel like that muddies the water
42:52.536 --> 42:56.606
and kind of makes it is anybody else seen the combined assignment
42:56.638 --> 43:00.226
declaration? I don't love it because I feel like it conflates
43:00.418 --> 43:03.558
the two and could potentially weaken one or the
43:03.564 --> 43:06.454
other if they were challenged. But I'm kind of curious if anybody else has seen
43:06.492 --> 43:10.042
that and or if you have any opinions on it. Yeah,
43:10.096 --> 43:13.642
I've seen it. I don't think there's anything wrong with it.
43:13.696 --> 43:16.860
If it's very clear that all of your employees have
43:17.550 --> 43:21.962
the same agreement to assign their rights, it's the same larger
43:22.026 --> 43:25.070
entity who is doing this on a regular basis,
43:26.130 --> 43:29.166
then it becomes just a piece of paperwork that covers everyone,
43:29.348 --> 43:33.618
and it's likely never going to be an issue.
43:33.784 --> 43:38.734
People aren't going to argue because the backup is their employee
43:38.862 --> 43:42.610
contract and that those are pretty ironclad in most
43:42.680 --> 43:44.020
states, not all.
43:46.570 --> 43:49.654
I don't see a problem there. I do see a problem if you've got
43:49.692 --> 43:53.270
a lot of selling going on.
43:53.340 --> 43:56.726
So whether that's patents or the company itself,
43:56.908 --> 44:00.074
I think then you have an opportunity to
44:00.112 --> 44:02.220
muddy the waters a little bit too much.
44:04.670 --> 44:07.660
Which document will prevail, right?
44:08.030 --> 44:11.518
And which company required you to sign it, which company
44:11.604 --> 44:15.454
did without. If there isn't a clear train,
44:15.652 --> 44:19.566
there are all kinds of issues where if
44:19.588 --> 44:23.086
you're a little larger, it's likely you're not going to be
44:23.108 --> 44:25.906
purchased. And if you are,
44:26.088 --> 44:30.100
everything has been done one way for how many years? It's very clear.
44:30.470 --> 44:34.194
And they only have to do one process to change it over
44:34.232 --> 44:37.526
to the new company. But when that happens three,
44:37.548 --> 44:42.760
four, or five times over the length of your company life,
44:43.370 --> 44:47.426
it can be dicey to have them combined and not clear
44:47.548 --> 44:50.140
because most people don't update these things later.
44:51.390 --> 44:55.430
Unfortunately, they should. One that's
44:55.510 --> 44:58.410
the other. We've had clients.
45:01.070 --> 45:04.442
There's a difference between dissolving an entity and spending up a new entity.
45:04.506 --> 45:08.046
And there's a difference in changing a name of an entity. Right.
45:08.228 --> 45:11.950
Because the rights are you convey them differently.
45:12.610 --> 45:16.398
So, yeah, I think it's just a lot of awareness that you
45:16.404 --> 45:19.438
need to keep on top of it and you need to make sure it's buttoned
45:19.454 --> 45:23.474
up from the beginning because there's, I think, tons of case law.
45:23.512 --> 45:29.794
Several. That I can think of off the top of my head where an
45:29.832 --> 45:34.006
employee didn't fully assign their rights. So then they were
45:34.028 --> 45:37.446
able to still benefit from the invention. But none of that profit went to
45:37.468 --> 45:39.850
the company that actually sponsored the innovation.
45:40.430 --> 45:43.082
Or company thought they owned something, but they didn't own it.
45:43.136 --> 45:46.810
Or an inventor invented something for a different company
45:46.880 --> 45:50.810
under a different company. And so, yeah, all sorts of crazy things,
45:50.880 --> 45:54.830
but it needs to be cleaned up and then
45:54.900 --> 45:58.286
made for hire for Creative Works, a work made
45:58.308 --> 46:01.978
for hire provision, suffices, which is awesome. So if you have that, then you're
46:01.994 --> 46:04.766
good to go. I think a lot of the goal of all of this with
46:04.788 --> 46:08.626
the ownership piece is just you want to ensure a successful separation between you
46:08.648 --> 46:12.066
and the company or between you and the engineering firm at
46:12.088 --> 46:15.266
the end of it, you know? And so whatever that means, you got to,
46:15.288 --> 46:17.586
you know, you want to make sure that you have all those contracts lined up,
46:17.608 --> 46:21.106
including ownership and assignment agreements. Yeah. And then
46:21.128 --> 46:24.806
again, you know, nondisclosure agreements do not define ownership lines. I think
46:24.828 --> 46:28.294
a lot of people put too much stock in NDAs. Yeah.
46:28.332 --> 46:31.260
So that's kind of it. That was good. I like that.
46:32.430 --> 46:36.102
There's so many subtleties in ownership. There's so many subtleties
46:36.166 --> 46:40.278
in what an inventor does or doesn't have to do. And it's
46:40.294 --> 46:44.140
not easy. They have real jobs, too. They have to help us.
46:45.710 --> 46:49.374
Right? I think that's where I get this feedback a lot. I think people are
46:49.412 --> 46:52.602
surprised sometimes how nonlinear
46:52.666 --> 46:55.658
the pathway is. I think sometimes they're led to believe it's, like, oh,
46:55.684 --> 46:59.346
I have an idea. I thought a patent application, and then I get
46:59.368 --> 47:02.610
the patent, and it's like, well, yeah, kind of, sort of.
47:02.680 --> 47:06.482
But then there's all these variations in the normal process that
47:06.536 --> 47:09.714
you can take part in, even, like, the foreign filings you were mentioning.
47:09.762 --> 47:12.390
There's different ways you can do that. And then there's,
47:12.810 --> 47:15.880
well, what if my inventor is not a US. Inventor? Or what if
47:16.890 --> 47:19.720
I said something I shouldn't have said? Or what if,
47:20.410 --> 47:23.770
whatever, I'm disgruntled and don't want to sign it to my company?
47:23.840 --> 47:27.098
I don't know. What if I have
47:27.104 --> 47:30.302
to file in Russia and I have to look up what the patronymic name is,
47:30.356 --> 47:34.426
what that even means? There are some crazy rules
47:34.458 --> 47:37.566
out there. I add Russia to
47:37.588 --> 47:42.094
your list. You'll laugh because
47:42.132 --> 47:44.286
I don't think you can get a form file. I think you have to file
47:44.318 --> 47:48.050
in Russia first. If you have a Russian national
47:49.590 --> 47:52.786
inventor. And then there's just all
47:52.808 --> 47:56.086
kinds of weird. You think you have everything, and all of a sudden you
47:56.108 --> 47:59.350
need these odd requests to your inventor.
48:00.170 --> 48:03.670
I need a blood sample, please. Excuse me. Yeah,
48:03.820 --> 48:07.190
it's just different rules, different jurisdictions.
48:09.790 --> 48:13.386
Well, awesome. Any other questions? Comments, feedback? No? Yeah.
48:13.408 --> 48:15.850
Thanks, Ashley. That was a good conversation.
48:16.670 --> 48:19.194
Awesome. Thank you.
48:19.392 --> 48:22.474
Thanks, everybody. Have a good rest of the week. Thank you.
48:22.512 --> 48:25.502
Bye bye. Bye. All right, that's all for today,
48:25.556 --> 48:29.134
folks. Thanks for listening. And remember to check us out@aurorapatants.com
48:29.172 --> 48:32.666
for more great podcasts, blogs, and videos covering all things patent
48:32.698 --> 48:35.758
strategy. And if you're an agent or attorney and would like to be part of
48:35.764 --> 48:38.858
the discussion or an inventor with a topic you'd like to hear discussed,
48:38.954 --> 48:41.822
email us at podcast@aurorapatants.com.
48:41.956 --> 48:45.174
Do remember that this podcast does not constitute legal advice. And until
48:45.212 --> 48:46.980
next time, keep calm and patent on.
00:05.130 --> 00:08.334
Good day, and welcome to the Patently Strategic Podcast, where we discuss all
00:08.372 --> 00:11.562
things at the intersection of business, technology, and patents.
00:11.706 --> 00:14.958
This podcast is a monthly discussion amongst experts in the field of
00:14.964 --> 00:18.682
patenting. It is for inventors, founders and IP professionals alike,
00:18.746 --> 00:22.126
established or aspiring. And in today's episode, from the
00:22.148 --> 00:26.386
Home Office in Suicide, Iowa, we bring you the top top three inventor mistakes
00:26.418 --> 00:30.198
list. The wise person once said that life is too short to make all of
00:30.204 --> 00:33.298
your own mistakes. In the talks we give at events
00:33.394 --> 00:37.298
and the content we create for our website, and especially in this podcast,
00:37.394 --> 00:40.986
we spend a lot of time talking about the sharp corners and trap doors that
00:41.008 --> 00:44.394
lie waiting for unsuspecting inventors. We do this because
00:44.432 --> 00:48.074
we've seen these costly mistakes made far too many times and far
00:48.112 --> 00:51.994
too often by folks before they come to us. Some of these mistakes are
00:52.032 --> 00:55.534
reversible with limitations. Others have no undo button.
00:55.652 --> 00:59.642
So we've truly made it part of our mission to educate around these dangers
00:59.706 --> 01:02.926
so that they can be avoided in the first place, saving you time,
01:03.028 --> 01:06.042
money, opportunity, cost, and a lot of frustration.
01:06.186 --> 01:09.486
If there was a guidebook we could hand to inventors on the first day following
01:09.518 --> 01:13.198
the conception of their idea, this episode would be it. In this month's
01:13.214 --> 01:16.298
episode, Dr. Ashley Sloat, President and Director of Patent
01:16.334 --> 01:19.862
Strategy here at Aurora, leads a discussion, along with our all star
01:19.916 --> 01:23.382
patent panel, exploring the most common patenting missteps taken
01:23.436 --> 01:27.186
by inventors and startups. The focus largely centers
01:27.218 --> 01:31.542
around three key areas one, publicly disclosing your invention
01:31.606 --> 01:35.574
before you filed a patent application. Two, not searching
01:35.622 --> 01:39.466
to see if your invention or something similar already exists commercially or in
01:39.488 --> 01:43.162
publicly available resources. And three, not carefully
01:43.226 --> 01:46.830
contracting with outside vendors and employees to make sure you own
01:46.900 --> 01:50.382
your invention. The group highlights best practices for not making
01:50.436 --> 01:54.366
these mistakes in the first place and explores available and remedial options should
01:54.388 --> 01:57.806
you already be in need of a rescue line. Ashley is also joined
01:57.838 --> 02:01.806
today by our always exceptional group of IP experts, including Kristen
02:01.838 --> 02:05.726
Hansen, patent strategist at Aurora Ty Davis, patent strategy
02:05.758 --> 02:09.086
Associate at Aurora, and David Jackrel, president of Jacob
02:09.118 --> 02:13.062
Consulting. Before handing it off to the panel, I have some exciting news to share.
02:13.196 --> 02:16.534
Aurora is now hiring for a part time biotech patent agent.
02:16.652 --> 02:20.454
This is a salaried, fully remote position with a flexible work week and
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benefits work where you want, when you want, with a great team
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on engaging subject matter, and even get the opportunity to join us on this
02:27.792 --> 02:31.190
podcast. Learn more and apply at aurorapatents.com/careers
02:31.270 --> 02:34.846
We'll also include that link in the show.
02:34.868 --> 02:38.958
Notes all right, take it away, Ashley. All right,
02:39.124 --> 02:42.970
so I have what I think are the top three traps for inventors,
02:43.050 --> 02:46.286
which are public disclosure, not searching and then not
02:46.308 --> 02:48.898
taking care of ownership issues, but also kind of wanted to open it up to
02:48.904 --> 02:52.754
everybody on what they think
02:52.872 --> 02:56.226
are big inventor issues. Any other thoughts or any other
02:56.248 --> 03:00.082
inventor mistakes? Maybe else? My thought goes along with disclosure.
03:00.146 --> 03:04.454
And it isn't just disclosure to everyone, it's disclosure even
03:04.492 --> 03:08.618
to your patent attorney or your patent agent, to where you don't think
03:08.704 --> 03:12.586
through as an inventor sometimes what the nugget or
03:12.608 --> 03:16.262
the crux of most interest is in your invention.
03:16.326 --> 03:20.038
And so sometimes that's very difficult to
03:20.064 --> 03:23.582
get out of an inventor in a call, because that's our job.
03:23.716 --> 03:27.166
But they haven't thought down that far
03:27.348 --> 03:31.466
very often. And it's because the overarching
03:31.498 --> 03:35.074
idea sounds great and interesting, but the actual way the problem was
03:35.112 --> 03:38.420
solved is not 100% complete.
03:39.430 --> 03:43.394
So I would say one of the biggest problems
03:43.512 --> 03:47.326
is understanding disclosure and who you should or shouldn't
03:47.358 --> 03:50.614
disclose to. But also when you have someone you will
03:50.652 --> 03:53.720
disclose to, like your patent attorney or your patent agent,
03:54.170 --> 03:57.478
knowing how far you can go, which is basically all the way
03:57.564 --> 04:01.240
deep down into the guts of your code if you need to,
04:01.930 --> 04:06.106
or into how you solve the problem. Those are things that
04:06.128 --> 04:10.054
I think even some inventors hold back in calls with their attorneys
04:10.102 --> 04:13.566
because they're not 100% sure that attorney wouldn't take it
04:13.588 --> 04:16.240
or that attorney wouldn't do something different with it.
04:17.890 --> 04:21.774
It's hard to get that trust occasionally just
04:21.812 --> 04:25.490
because it's lack of inventor know how, right. Lack of knowledge.
04:26.790 --> 04:30.386
It's new to them. Yeah,
04:30.408 --> 04:35.630
that's really interesting, Kristen. I think you're right. And it's like figuring
04:35.710 --> 04:39.094
out it's not easy, right all the time. You might have this
04:39.132 --> 04:43.222
amazing invention which has lots of different innovations in it, but which
04:43.276 --> 04:46.646
one is going to really be
04:46.668 --> 04:50.186
patentable but also block competitors and
04:50.208 --> 04:54.330
things like that. I had a really interesting story from somebody at Rambus.
04:55.310 --> 04:58.714
Rambus developed this new type of memory. I think
04:58.752 --> 05:01.130
it was the Nintendo,
05:02.670 --> 05:06.798
the first 3D Nintendo back in the 90s was made with their technology
05:06.884 --> 05:10.746
and it blew everybody away and then everyone stole
05:10.778 --> 05:14.382
it and then grandpa had to sue everybody and there was lots of litigation.
05:14.526 --> 05:18.274
One of the most important patents they had, even though they
05:18.312 --> 05:22.194
invented phase lock loop memory, which is really complicated way
05:22.232 --> 05:25.650
to do memory bus transitions, rambus.
05:27.690 --> 05:30.466
But what it was, was a connector.
05:30.658 --> 05:34.050
They had their phase lock loop, memory chip
05:34.130 --> 05:37.558
system, whatever, with a very specific type of connector that was a
05:37.564 --> 05:41.442
standard in the industry. And you basically couldn't design around
05:41.516 --> 05:44.742
it because you needed to interface your memory
05:44.806 --> 05:48.234
with all the chips that were out there. There was a standard connector and that
05:48.272 --> 05:51.580
one connector ended up being a really valuable pattern for them.
05:52.110 --> 05:55.546
So it's like thinking through things like you said, Kristen,
05:55.578 --> 05:59.870
it's so key and it's hard. It seems like it'd be straightforward.
06:00.210 --> 06:03.374
I know what my invention is, but it's not always there's a lot
06:03.412 --> 06:07.150
of different angles right. To think about on a lot of these inventions.
06:07.230 --> 06:10.738
Yeah, and we've all been there as practitioners inventing on
06:10.744 --> 06:14.594
the fly, on the back end because we don't have that information
06:14.792 --> 06:18.066
or asking the questions right. Could it work this way? Could it work that way?
06:18.088 --> 06:21.350
Could it do this? I think
06:21.420 --> 06:24.950
sometimes the difficulty too well. One, I think from a clinical perspective,
06:25.370 --> 06:28.658
sometimes you don't really know what's going to drive that demand until you know what
06:28.684 --> 06:32.214
the clinical efficacy is. And then so here's the clinical efficacy.
06:32.262 --> 06:35.142
What part of the product drove the efficacy?
06:35.206 --> 06:38.682
Because that's going to be the thing everyone wants
06:38.736 --> 06:42.142
to copy, right, is the fact that it does
06:42.196 --> 06:46.542
X. And now you can treat people 50
06:46.596 --> 06:49.966
times better than competitors or something, right? And then I think for some
06:49.988 --> 06:52.986
other industries, maybe still in medical device,
06:53.018 --> 06:56.500
but also maybe in like therapy and stuff, like it's a feel
06:56.950 --> 07:01.058
of the product or it's kind
07:01.064 --> 07:04.146
of like a feeling about the product or a feel of the product. And so
07:04.328 --> 07:08.294
helping inventors think, okay, I get it that it's a feel, but what
07:08.332 --> 07:11.846
are the attributes of the product that give that feel?
07:11.948 --> 07:15.974
Right? There has to be physical things that make
07:16.012 --> 07:20.410
it super easy to use or super
07:20.480 --> 07:24.730
intuitive or frictionless.
07:27.390 --> 07:30.970
I agree it's a problem, but I think it
07:31.040 --> 07:34.538
comes with a lot of research on the clients part and sometimes they just don't
07:34.554 --> 07:38.480
have the time, bandwidth, budget or willingness to do it.
07:39.010 --> 07:42.142
I've seen a couple of times, and I think it kind of ties into what
07:42.196 --> 07:46.114
Kristen was saying. But having the
07:46.152 --> 07:49.954
inventor really focus on what the invention is,
07:50.152 --> 07:53.666
I've seen several times where it's like almost being
07:53.848 --> 07:58.310
too aggressive with all these far
07:58.380 --> 08:02.194
reaching ideas and it almost cheapens
08:02.322 --> 08:06.134
what they're going for because they're focusing too much on
08:06.332 --> 08:09.610
it. Could do this with that, blah, blah, blah, blah, instead of really
08:09.760 --> 08:13.914
focusing in and describing exactly what the meat and
08:13.952 --> 08:17.500
potatoes is. Right?
08:17.870 --> 08:21.562
Yeah, actually, that was going to be another great
08:21.616 --> 08:24.990
segue, sort of to a different topic, but very similar
08:25.060 --> 08:28.638
in a way, is that I feel like
08:28.724 --> 08:32.586
there's always a balance, but sometimes I think it's a mistake to go
08:32.628 --> 08:36.674
for too many patent applications, too much quantity and
08:36.712 --> 08:40.270
not enough quality. Trying to patent
08:40.350 --> 08:43.918
really broad ideas and file patents in all kinds of areas,
08:44.014 --> 08:47.246
very high level, not a lot of examples,
08:47.358 --> 08:50.838
not a lot of support, not a lot of enablement just throwing a
08:50.844 --> 08:54.502
bunch of stuff against the wall to try to see what fits rather than
08:54.636 --> 08:57.938
really thinking about each application. And what is the theory of
08:57.964 --> 09:00.858
patentability? How are we going to get this through?
09:01.024 --> 09:05.030
Where's our support or data if it's
09:05.190 --> 09:09.242
unpredictable, art, all of that stuff? And I think that,
09:09.376 --> 09:12.458
yes, there's a balance, there's value in having numbers
09:12.544 --> 09:16.362
of patents, but I think when you go too far on that pendulum,
09:16.506 --> 09:19.898
you end up spending lots of filing fees and things don't
09:19.914 --> 09:23.342
get allowed. You end up much more longer prosecutions,
09:23.406 --> 09:27.106
RCE, arguing about claims. Whereas if
09:27.128 --> 09:31.042
you file something like type of thing, focused, maybe even
09:31.096 --> 09:35.060
relatively narrow claims for a first application. Get something through,
09:35.450 --> 09:38.854
see how the patent examiner is going to be thinking about it, then file your
09:38.892 --> 09:42.600
cons with broader claims and things like that.
09:42.970 --> 09:46.614
So, yeah, I think there's good
09:46.652 --> 09:50.086
reasons to do both have numbers of patents,
09:50.198 --> 09:53.946
but I think there's a mistake there if you focus too much on
09:53.968 --> 09:55.660
quantity and not enough on quality.
09:57.070 --> 10:00.234
Sometimes in those interviews when I do have
10:00.272 --> 10:03.806
inventors kind of going off the rails with ideas, I do try
10:03.828 --> 10:07.198
to pull that back. And with any specific
10:07.364 --> 10:11.294
implementation, I'll say something like, okay, have you seen
10:11.332 --> 10:14.946
this done out there in the field? What's your closest competitor doing in
10:14.968 --> 10:18.306
this area, and how are they solving this problem? And try to get them
10:18.328 --> 10:22.322
to think in those areas because sure,
10:22.376 --> 10:26.498
we could do this widget that has five
10:26.584 --> 10:29.974
interesting pieces to it, but if nobody's going to copy it
10:30.012 --> 10:32.838
and it doesn't work as well as the one the three pieces in it,
10:32.844 --> 10:36.214
why are we talking about it? Let's write
10:36.252 --> 10:38.680
it in as an embodiment, but not claim it.
10:39.450 --> 10:43.306
Right. You know, so sometimes you can you can hone them in a
10:43.328 --> 10:46.554
little bit more by focusing them on what their
10:46.592 --> 10:50.406
competitors are doing without having them have to look through prior
10:50.438 --> 10:53.600
art, without having to make them search.
10:54.610 --> 10:57.774
They will honestly just know a little bit about what's going
10:57.812 --> 11:02.030
on just by virtue of what they do in the field and
11:02.100 --> 11:05.982
who their competitors are. Right. They will have seen something just naturally
11:06.046 --> 11:09.474
without you having to send them searching. I agree. The searching can
11:09.512 --> 11:12.930
really help. We always recommend doing
11:13.000 --> 11:16.806
at least some searching before filing something and
11:16.828 --> 11:19.750
then yeah, I think, like everyone's been saying,
11:19.820 --> 11:23.654
inventors oftentimes are
11:23.692 --> 11:27.560
very knowledgeable about their field, but don't always know everything that's out there
11:27.930 --> 11:31.206
and have these thoughts in their mind about, like, wow, this is so new.
11:31.308 --> 11:34.620
No one's ever thought about X, Y, or Z. You put a bunch of
11:34.990 --> 11:38.234
excerpts from references onto the screen and talk through, it can be
11:38.272 --> 11:41.606
really helpful to really know what really is inventive
11:41.638 --> 11:45.214
here. The only thing I would say to that, Dave, is be
11:45.252 --> 11:49.114
very careful because some clients actually do have kind of rules
11:49.162 --> 11:52.240
to say, don't be showing my inventors prior art.
11:53.030 --> 11:56.690
They tend to be larger, but there are some that are
11:56.760 --> 12:00.498
patent savvy enough. Right, yeah. You know, that's a great point.
12:00.584 --> 12:04.354
I think we always, anytime by
12:04.392 --> 12:06.870
default, I'll say it this way, by default,
12:08.090 --> 12:11.154
even when someone asked me to do a search, I don't expose them to patent
12:11.202 --> 12:15.590
numbers, application numbers, publication numbers, anything, but send
12:15.660 --> 12:19.670
excerpts from publications if possible. Sometimes it's not sometimes
12:19.740 --> 12:23.302
only a patent, but patent publication, send excerpts.
12:23.446 --> 12:27.420
And at least my thought about it is that
12:28.270 --> 12:31.450
if the search is clear or clear
12:31.520 --> 12:34.318
enough that they decide to go ahead with the patent, all those are going to
12:34.324 --> 12:38.410
end up in an IDs. So the client,
12:38.490 --> 12:42.286
the owner, the assignee is going to be aware of those references. And if
12:42.308 --> 12:46.178
they don't, okay. That is
12:46.264 --> 12:49.730
where, I guess, you can have problems being
12:49.800 --> 12:53.502
exposed to patents for willfulness
12:53.646 --> 12:57.206
and infringement, but if you don't actually know of a claim or
12:57.228 --> 13:00.326
know of a patent number with an actual claim, you see an
13:00.348 --> 13:04.390
excerpt from a publication. Are they really
13:04.460 --> 13:08.194
aware of that claimed
13:08.242 --> 13:11.526
claim that they may be infringing on? I think technically not.
13:11.628 --> 13:15.226
There may be an argument that they're somewhat aware or
13:15.248 --> 13:17.050
something, or they should have been aware.
13:18.110 --> 13:21.466
I don't know if it has to do with Rule 156 or not. I mean,
13:21.568 --> 13:25.390
I would say if you're just sending excerpts and they aren't really
13:25.460 --> 13:29.818
detailed about exactly what the invention is and they're just features,
13:29.914 --> 13:32.366
I would say I don't think you're going to get caught on any kind of
13:32.388 --> 13:35.774
willful or neglect. But I would
13:35.812 --> 13:40.050
say to not expose your inventors to extra
13:40.120 --> 13:44.546
prior art because it does water down what they're doing for
13:44.568 --> 13:47.380
your company and what they're doing to create.
13:48.650 --> 13:52.326
You don't want that sneaking in because it's in the back, the only thing they
13:52.348 --> 13:55.874
can think of. I know what you mean. There's the whole exposure
13:55.922 --> 13:59.126
thing and yeah, that's a lot of, like, sort of medium
13:59.158 --> 14:02.694
or larger companies I work with, they end up segregating. There's the patent
14:02.742 --> 14:06.362
team, which are maybe more
14:06.416 --> 14:09.866
experienced people who can sort of keep track of
14:09.888 --> 14:13.340
that in their minds and segregate and things.
14:15.330 --> 14:17.838
Actually, I don't know what you're going to say about number two, but I have
14:17.844 --> 14:21.694
a feeling that searching is really valuable and someone who
14:21.732 --> 14:25.714
understands the technology and the product roadmap and
14:25.752 --> 14:29.346
the sales strategy and all of that. It's really valuable, I think,
14:29.368 --> 14:32.130
for them to understand the landscape.
14:32.630 --> 14:36.146
Yeah. You end up with a higher value
14:36.248 --> 14:38.520
IP portfolio at the end of the day.
14:39.130 --> 14:43.122
Yeah, I think definitely we have clients that don't want their inventors,
14:43.186 --> 14:46.726
their brains being muddied right. With stuff. But I also think there's a point in
14:46.748 --> 14:51.586
time where that artificial barrier
14:51.778 --> 14:54.954
has to be taken down when you get into potential freedom to operate issues,
14:54.992 --> 14:57.740
because now you do have to involve the engineer, because you got to say,
14:58.830 --> 15:02.138
this part of our product, and it's a problem
15:02.304 --> 15:05.534
because it's sure,
15:05.572 --> 15:09.006
but you don't have to say who it is. You don't have to expose the
15:09.028 --> 15:13.234
company. You can say there's prior art out there. This is what they're doing
15:13.432 --> 15:16.210
without the full exposure.
15:17.990 --> 15:21.346
That's what I would have to do. If I had
15:21.368 --> 15:24.514
a concern with some art that came up on a search and I
15:24.552 --> 15:27.634
had to talk to the inventor to see if
15:27.672 --> 15:31.462
they were different enough or if they had any other features that would be different
15:31.516 --> 15:34.834
enough than that, I would basically have to describe the prior
15:34.882 --> 15:39.020
art without giving away the company or the claim itself or
15:39.470 --> 15:43.306
that right. Yeah, definitely. Talking about
15:43.328 --> 15:46.460
companies that have more than two people. Yes.
15:50.990 --> 15:54.894
That's funny. Cool. Those are all awesome and they have any
15:54.932 --> 15:59.022
other traps or any other things. Otherwise I can think
15:59.076 --> 16:02.000
these are going to be shocking. But move through these.
16:02.850 --> 16:06.418
I had a quick one just because I really don't have an
16:06.424 --> 16:09.758
answer. So one thing that I've
16:09.774 --> 16:14.626
seen and it's kind of recent, that's why it's on my mind. But is
16:14.648 --> 16:19.390
there any like, advice for startups
16:19.550 --> 16:22.610
as far as like, balancing a budget
16:22.770 --> 16:26.360
and trying to get the broadest claims possible
16:27.850 --> 16:30.922
here? Recently, actually, a startup I've been involved with
16:30.976 --> 16:34.550
past few years, we just went to allowance on some claims
16:34.630 --> 16:38.300
and now kind of looking back on it, I can see how
16:38.750 --> 16:42.526
budgetarily we kind of rushed it a little bit, run out
16:42.548 --> 16:46.270
of money, didn't want to keep doing continuations.
16:47.010 --> 16:50.238
How do you balance that? How can
16:50.244 --> 16:53.354
you be aggressive enough while
16:53.412 --> 16:57.106
keeping your budget in mind? I think
16:57.128 --> 17:00.382
from like a searching perspective, I always think there's
17:00.446 --> 17:04.194
immense value in people who are really good at searching. But that said,
17:04.392 --> 17:08.438
there are so many search tools out there that allow
17:08.524 --> 17:12.694
for keyword plug and play to
17:12.732 --> 17:16.274
help hone in on inventive
17:16.322 --> 17:19.890
features. And so I think actually inventors
17:19.970 --> 17:23.270
can do a lot of if you're a small company trying to extend
17:23.350 --> 17:26.874
budget runway, so much searching could be
17:26.912 --> 17:30.460
done using actually I have some of the tools that I found
17:31.390 --> 17:34.766
and actually some other things I just learned yesterday, but to
17:34.788 --> 17:38.480
kind of help figure that out more quickly.
17:38.930 --> 17:42.334
But that's what I would say. But if anybody else has
17:42.372 --> 17:46.100
any other thoughts, I have two thoughts on that.
17:46.630 --> 17:50.402
The first one, to save some money on basically not
17:50.536 --> 17:54.114
extending your prosecution, it would be better to
17:54.152 --> 17:57.666
pay for a search up front than to write an additional office action on the
17:57.688 --> 18:00.758
back end. So if you can do that search up front, you might be
18:00.764 --> 18:04.214
able to have your patent attorney or agent hone those claims a little
18:04.252 --> 18:08.282
better, which should reduce office actions on the back end.
18:08.336 --> 18:10.330
And searches are generally cheap,
18:12.110 --> 18:15.814
but if you still need to refine budget
18:15.862 --> 18:19.770
even more than that, 1015 minutes with your patent agent
18:19.840 --> 18:23.526
or your patent attorney on the phone showing you how they
18:23.568 --> 18:26.766
perform searches by sharing a screen and saying, this is
18:26.788 --> 18:30.206
what I would do. And they would charge you your 1015 minutes of
18:30.228 --> 18:33.566
time or whatever the meeting time was, which is way cheaper than
18:33.588 --> 18:37.266
an office action and way cheaper than them doing the full search. But that
18:37.288 --> 18:40.930
should give you the tools for you to dig in as an inventor
18:41.590 --> 18:45.346
and do your own search and come up with your own kind of thought.
18:45.528 --> 18:48.566
Another 1015 minutes with your patent attorney or
18:48.588 --> 18:51.510
agent later just for a quick discussion.
18:52.170 --> 18:55.746
Still cheaper than a full search on its own or extra office action
18:55.778 --> 18:59.526
on the back end. That's good too, if you have the interest.
18:59.628 --> 19:03.002
I mean, this is Tedious work, right?
19:03.056 --> 19:06.506
This is not something where you can just throw three searches at it and be
19:06.528 --> 19:07.580
done usually.
19:09.970 --> 19:13.278
So you have to kind of have the drive to do that,
19:13.444 --> 19:17.434
and not everybody does. Some people find that very unpleasant
19:17.482 --> 19:21.374
work. It's just
19:21.412 --> 19:24.770
tedious. Right. I like it. I would do that all day,
19:24.840 --> 19:28.894
but I'd probably get a little bit bored. I wouldn't
19:28.942 --> 19:34.130
hate it to just be bored. Another thing, which we sometimes
19:34.200 --> 19:37.986
forget about these options is to extend the tendency, especially like if
19:38.008 --> 19:42.230
you already have something allowed and you're in a con, you can delay prosecution.
19:42.970 --> 19:46.646
When examiners call and say, hey, can you do an election by phone and say,
19:46.668 --> 19:50.486
no, thank you, please send an office action, and just delay
19:50.518 --> 19:54.406
the prosecution. Because it pushes out issue fees, it pushes out filing
19:54.438 --> 19:58.460
fees for the next con. It pushes out everything. And a lot of really,
19:58.910 --> 20:02.698
like, the one two person companies, I think, are often in
20:02.704 --> 20:06.254
the situation. They have very limited budgets and will file like
20:06.292 --> 20:09.886
an omnibus, like a patent that shows all the ideas that
20:09.908 --> 20:12.398
they have. But they get it in one patent so that they save on a
20:12.404 --> 20:15.666
little bit of filing fees. And then in the first set of
20:15.688 --> 20:19.442
claims, relatively narrow, cover the product or whatever
20:19.496 --> 20:23.474
they're marketing, whatever they think they might have in the next year and
20:23.512 --> 20:27.298
then file that con. But delay Pendency and hopefully they're
20:27.314 --> 20:30.920
getting a series B or C by the time the next
20:31.290 --> 20:35.270
fees come up. And then the whole situation
20:35.340 --> 20:38.966
has changed. The budget is different now. They've got this omnibus patent they can file
20:38.998 --> 20:42.778
lots of different cons off of, but you push those fees out until
20:42.864 --> 20:46.954
hopefully the next investment comes in. And then
20:47.152 --> 20:50.858
justifies honestly, the expense of filing a
20:50.864 --> 20:54.640
half a dozen cons off of this seminal application.
20:55.570 --> 20:59.006
Sure. And you can take one and two month extensions without a
20:59.028 --> 21:02.494
terrible pain in your budget. It's a few hundred
21:02.532 --> 21:06.210
dollars here and there, but it's cheaper than quickly
21:06.280 --> 21:09.602
getting something allowed and having to pay all the con fees right away
21:09.656 --> 21:13.134
within the first year. I normally
21:13.182 --> 21:17.006
wouldn't condone delaying responses because you do lose
21:17.038 --> 21:20.722
PTA and there are some other issues with that. But if you're talking about software,
21:20.786 --> 21:24.022
you're talking about a medical device, you know, after 20 years,
21:24.076 --> 21:27.302
it's it's highly likely that will be outdated, gone, it doesn't matter.
21:27.356 --> 21:30.406
You're not worried about PTA, but,
21:30.428 --> 21:33.706
you know, like David, you do a lot of materials, don't you? And a lot
21:33.728 --> 21:37.306
of things that would maybe be PTA might
21:37.328 --> 21:40.800
be very important. So those delays can add up.
21:43.010 --> 21:46.494
Yeah, cool. Good stuff.
21:46.612 --> 21:48.800
So many different levers to pull.
21:50.290 --> 21:53.858
All right, obviously the first thing we've already kind
21:53.864 --> 21:57.346
of talked about is public disclosure. But I think the
21:57.368 --> 22:01.154
confusion sometimes comes from with
22:01.192 --> 22:04.874
inventors is this whole idea that you're not supposed to publicly
22:04.942 --> 22:08.646
disclose at one point, but then you have to
22:08.668 --> 22:11.746
publicly disclose to get patent protection.
22:11.938 --> 22:15.202
Right? And so it's this kind of balance
22:15.266 --> 22:18.454
of when to do what and
22:18.492 --> 22:22.010
why. Right, but there's also the opportunity cost problem
22:22.080 --> 22:25.322
that like you're saying you don't want to do a patent too soon,
22:25.376 --> 22:28.700
you don't want to be too unfocused. But for a lot of small companies,
22:29.230 --> 22:32.794
you not sharing that idea, not seeking investment,
22:32.842 --> 22:36.000
not pitching comes at a cost too. Right.
22:37.090 --> 22:40.606
You have to do things in the right order. But if you're not
22:40.708 --> 22:44.670
kind of seeking feedback and seeking investment, you're kind of running out of runaway.
22:45.330 --> 22:48.802
That's kind of what some of the public disclosure section is. So we're all obviously
22:48.856 --> 22:52.638
familiar with the whole idea that you get a limited monopoly
22:52.654 --> 22:56.174
of 20 years in exchange for your publication of your invention.
22:56.302 --> 22:59.026
And the whole idea is that so that people can read it and build upon
22:59.058 --> 23:03.094
it. Then you do get that monopoly, which kind of goes towards you really
23:03.132 --> 23:06.646
want to find that perfect inventive piece to
23:06.668 --> 23:10.582
build your monopoly on like the connector for the Rambus
23:10.646 --> 23:13.818
company because that's kind of what the
23:13.824 --> 23:16.620
company is going to be built on and where you really get the most value.
23:18.350 --> 23:21.654
But there is a rejection risk, right, where if you don't
23:21.702 --> 23:25.066
do these things in the right order, then if you're selling
23:25.098 --> 23:28.430
it or offering for sale or making it available to the public, you're going to
23:28.500 --> 23:31.422
potentially inhibit your ability to later patent it.
23:31.556 --> 23:35.026
And so there's several different things that
23:35.048 --> 23:38.734
constitute public disclosure. Obviously presenting or publishing your patent
23:38.782 --> 23:41.966
ready invention and responding to a request
23:41.998 --> 23:45.486
for proposal when the technology is clearly patent ready or selling or offering for cellular
23:45.518 --> 23:49.238
technology. I think some of that's where some of the inventors though too, get a
23:49.244 --> 23:52.482
little the nuances of it, I think kind of get lost
23:52.546 --> 23:56.630
is that if those patentable features haven't been invented yet,
23:56.700 --> 23:59.834
then their public disclosure might not be a public disclosure. Right.
23:59.872 --> 24:02.454
If it's just this pie in the sky, like I want to make a wearable
24:02.502 --> 24:06.170
that detects
24:07.150 --> 24:10.758
heart arrhythmia, but I have no idea how it's going to work. Well, clearly I'm
24:10.774 --> 24:13.886
going to need some kind of sensor and blah, blah, blah, other than I have
24:13.908 --> 24:17.902
no idea. Is that really a public disclosure event? Maybe not,
24:17.956 --> 24:21.182
because how you actually achieve the technical problems
24:21.236 --> 24:23.440
you're actually solving are not known at that time.
24:25.250 --> 24:28.686
Right. And going back to the international question on all of
24:28.708 --> 24:32.462
that, the US. Is very kind and has this one year grace period,
24:32.526 --> 24:35.778
but that's not the case for a lot of places around the world. So that's
24:35.874 --> 24:39.218
a pitfall that I've seen, unfortunately.
24:39.314 --> 24:42.294
Yeah, and a big one that inventors miss,
24:42.492 --> 24:46.390
they hear, okay, I can't sell my invention, but even
24:46.460 --> 24:49.926
offering for sale is a bar
24:50.028 --> 24:53.574
and you just can't do that. And it includes
24:53.622 --> 24:57.734
which I think it's still even taking that one step further, even canceled or unaccepted
24:57.782 --> 25:01.718
orders, right. Even if somebody says, well, no, thanks for the offer, but no
25:01.744 --> 25:05.642
thanks. And then I think the other one that's been catching
25:05.706 --> 25:09.310
people in the software space is they sell things
25:09.380 --> 25:12.746
related to the software, but don't actually sell the software.
25:12.938 --> 25:16.766
But that still counts because the software was used as
25:16.788 --> 25:19.874
part of the process. So if you're selling a report,
25:20.072 --> 25:23.518
even if you're not selling the software, that report still counts
25:23.534 --> 25:27.458
as a public offer for sale for the software that made the report. So I
25:27.464 --> 25:30.518
think that catches people, too. It's like, well, nobody knows how the software works.
25:30.684 --> 25:34.726
It's like, well, we, I think, learned from was it Helson with
25:34.828 --> 25:38.698
the drug companies for secret sales. Nobody knew what the product,
25:38.784 --> 25:42.266
the composition was or something. Secret sales are a
25:42.288 --> 25:44.860
no go under AIA either.
25:46.990 --> 25:50.298
But manufacturing agreements are okay, clear experimental use where
25:50.304 --> 25:54.446
it's clearly trying to figure out the invention, you maintain control of
25:54.468 --> 25:57.626
it. Advertising stuff that's yet to be developed.
25:57.658 --> 26:00.766
Right. You don't know what the inventive feature is going to be. Those are
26:00.868 --> 26:04.638
likely not an offer for sale. But then licensing agreements
26:04.734 --> 26:08.302
and providing technical drawings when it's clearly
26:08.366 --> 26:12.530
fully baked, all kind of are likely an offer for sale.
26:14.550 --> 26:18.322
That's a great point, too. Even like, it doesn't have to be detectable
26:18.466 --> 26:21.990
a method. You use a method to make something,
26:22.060 --> 26:25.746
and then you sell that product, but the method won't be reverse
26:25.778 --> 26:28.038
engineerable from the product. Doesn't matter.
26:28.204 --> 26:32.040
Still disclosed, right?
26:32.810 --> 26:36.074
Yeah, sticky point for sure. But obviously
26:36.192 --> 26:39.418
you avoid the rejection risk by the patent Office by getting your
26:39.424 --> 26:43.006
invention on file before you do the disclosure or the offering for
26:43.028 --> 26:46.670
sale. Right. So you file and then you publicly disclose.
26:47.810 --> 26:51.150
But this, I think, kind of solves
26:51.810 --> 26:55.202
again, the opportunity cost problem is that if you share
26:55.256 --> 26:58.658
too soon, obviously it has detrimental effects on your ability to
26:58.664 --> 27:01.810
protect your idea. But not sharing also, especially for small companies,
27:01.880 --> 27:05.038
comes at a tremendous opportunity cost. Right? Because they're
27:05.054 --> 27:08.454
not getting those insights. They're not getting traction, they're not getting feedback, they're not getting
27:08.492 --> 27:10.710
refinements, they're not getting people recruitment.
27:12.490 --> 27:16.406
A nondisclosure agreement kind of can help with
27:16.428 --> 27:19.766
that in some situations, but as we all know, investors don't
27:19.798 --> 27:23.014
necessarily sign those, and it's not necessarily
27:23.062 --> 27:25.180
a bulletproof thing. So obviously,
27:25.870 --> 27:30.086
provisionals are the answer for that placeholder.
27:30.118 --> 27:33.926
Gives you your future filing date pens for one year. And speaking to David J's
27:33.958 --> 27:38.030
point, there are many countries that do have a grace period,
27:38.370 --> 27:42.478
but there's plenty that don't. So if you do mess this up, there are some
27:42.644 --> 27:46.094
remedial options in some countries, but other key countries like China
27:46.142 --> 27:48.740
and Europe, where a lot of companies filing today,
27:49.350 --> 27:52.574
there is no grace. And I think some inventors had a conversation
27:52.622 --> 27:56.134
earlier this morning where it wasn't clear
27:56.172 --> 28:00.870
to me that she realized that converting
28:01.450 --> 28:06.166
tomorrow to just her US to
28:06.188 --> 28:09.766
just us forfeited all of her foreign rights from a provisional
28:09.798 --> 28:13.066
right, that just going
28:13.088 --> 28:16.934
into the US at the one year forfeits all the other countries for what's disclosed
28:16.982 --> 28:21.226
there. Right. So I think sometimes inventors kind
28:21.248 --> 28:25.406
of go along with whatever because it's a recommendation but don't always truly understand
28:25.508 --> 28:29.146
the implications of the recommendation. I think that's
28:29.178 --> 28:33.354
just sometimes a byproduct of practitioners
28:33.402 --> 28:37.346
being too busy and not taking the time to
28:37.448 --> 28:41.218
describe or to make sure they understand what decision they're making when
28:41.224 --> 28:44.420
they're making a decision. Right. And to be clear,
28:44.810 --> 28:48.422
since we might have inventors listening at that one
28:48.476 --> 28:52.790
year from your provisional filing, you will want to either
28:52.940 --> 28:55.800
decide US. Only and file in the US.
28:56.250 --> 29:00.170
Or decide Pct so that you can file later
29:00.240 --> 29:02.970
in the US. And in several other Pct countries,
29:03.310 --> 29:07.110
or file both US and Pct
29:07.270 --> 29:11.018
and you just begin the US. Faster. Right. And you
29:11.024 --> 29:14.558
can go directly into other foreign countries as well at the
29:14.564 --> 29:18.160
one year mark. You don't have to, but most everybody does.
29:20.690 --> 29:23.760
Absolutely, yes. Again,
29:24.130 --> 29:27.546
US and most of the countries are first inventor to file,
29:27.738 --> 29:30.978
while other countries are not first inventor to file. But we're first inventor to
29:30.984 --> 29:34.286
file and everybody else is first to file. It just means you have to beat
29:34.398 --> 29:37.714
people to the patent office, right. If somebody else is inventing, in the same
29:37.752 --> 29:41.160
space you are, you need to get to the patent office before they do.
29:41.610 --> 29:45.014
Otherwise the other person's stuff will be prior art
29:45.052 --> 29:48.006
to your stuff. And if they're sufficiently similar, that's going to block your ability to
29:48.028 --> 29:51.306
get a patent. But again, shouldn't be
29:51.328 --> 29:55.066
too early because if you're too early, you're not going to have enough meat there
29:55.248 --> 29:58.538
to overcome the art that is almost invariably going to be
29:58.544 --> 29:59.100
found.
30:02.190 --> 30:05.454
So moving on to searching. So I think
30:05.492 --> 30:09.806
searching obviously has short and long term interests and
30:09.828 --> 30:12.814
then we're going to talk about prior art a little bit and the differences between
30:12.852 --> 30:16.094
patentability for him to operate in validity and how that relates to
30:16.132 --> 30:19.378
different parts of a patent. And then instead of I have a
30:19.384 --> 30:21.918
few tools I'm going to show you, but there's also something I learned yesterday that's
30:21.934 --> 30:24.020
not in here, but I'm going to share that with everybody too.
30:25.910 --> 30:29.446
So obviously the short term interest of searching is obviously you can get a
30:29.468 --> 30:33.026
patent and you can practice it ideally without infringing
30:33.058 --> 30:36.566
other people's patent. The longer term interest is that you
30:36.588 --> 30:40.134
can keep your patent. Hopefully it's
30:40.182 --> 30:43.946
more invalidation proof, right. And maybe even
30:44.048 --> 30:47.340
longer term if you keep it, you can enforce it.
30:47.870 --> 30:51.286
And so I think that it really spans the entire lifetime.
30:51.318 --> 30:54.686
So I think there's a huge amount of importance. I think for a while it
30:54.708 --> 30:59.886
was undervalued, but I feel like there's a surge in
30:59.908 --> 31:03.150
the industry to be more proactive around searching.
31:03.590 --> 31:08.094
So prior art of course, is any evidence that your invention was already publicly known
31:08.222 --> 31:11.778
before the effective filing date of the application. This can be
31:11.944 --> 31:15.826
available products or sales of a technology or
31:15.848 --> 31:19.026
offers for sale confidential sales, articles, populations, websites,
31:19.058 --> 31:22.946
trade shows, presentations, demonstrations, previously filed patent applications
31:22.978 --> 31:26.578
or patents. And I think some inventors I think, are. Having a misconception
31:26.594 --> 31:30.466
about this too, that if a prior patent isn't issued,
31:30.498 --> 31:35.306
that doesn't count as prior art. So again, there's just some I
31:35.328 --> 31:38.602
looked at all the products out there and there's no products for what I do
31:38.656 --> 31:42.166
and it's like, well, that's great and that's good from a market demand
31:42.278 --> 31:45.710
potentially perspective, but not from necessarily from my patentability.
31:46.210 --> 31:48.922
And I kind of look at this as almost like the recycle,
31:48.986 --> 31:52.702
reuse, renew bangles that is kind of this evolving thing,
31:52.756 --> 31:55.966
right, that as you're first developing a product, you're looking at patentability.
31:56.158 --> 32:00.190
As your product becomes more cemented, you look at freedom to Operate.
32:00.350 --> 32:04.066
As you potentially identify patents that may be problematic, you kind of look
32:04.088 --> 32:08.806
at invalidity of those issued patents to see
32:08.988 --> 32:12.118
how strong they are. And then that cycle repeats kind of throughout your R and
32:12.124 --> 32:16.022
D life cycle. But patenting, your invention and
32:16.076 --> 32:19.690
your right to practice the invention are really two sides of the same coin.
32:20.030 --> 32:24.134
So again, patentability being your ability to get a patent
32:24.182 --> 32:27.830
and then right to practice is your freedom to operate. So patentability
32:27.910 --> 32:31.638
others are excluded from making, using, offering for sale, or selling, or importing
32:31.654 --> 32:34.906
your invention to the US. And then freedom to operate as you are not excluded.
32:34.938 --> 32:38.366
And again, I think a lot of inventors confuse this, but I like looking at
32:38.388 --> 32:42.250
it. The example I always give is like the age old Edison
32:42.330 --> 32:45.806
and Pipkin. Edison had the clear glass light bulb.
32:45.998 --> 32:49.570
He got a really nice broad patent. Pipkin had an inventive
32:50.070 --> 32:53.554
improvement to Edison's light bulb, which was the frosted glass light
32:53.592 --> 32:56.740
bulb, which was softer, nicer, not so hot,
32:57.270 --> 33:01.218
whatever, but it was a more narrow patent than Edison. And Pipkin
33:01.234 --> 33:04.678
cannot practice his invention without Edison's. So you kind of
33:04.684 --> 33:08.600
get into that pipkin has to pass through Edison's property
33:08.970 --> 33:12.106
to get to his own invention, and then you do that through
33:12.128 --> 33:16.138
royalties or licensing. So that's kind of how you balance those. And I think
33:16.304 --> 33:19.866
some inventors are more I think
33:19.888 --> 33:23.214
the tide is changing a little bit, but this idea that it's okay
33:23.252 --> 33:26.638
if there's a problematic patent because there might be an opportunity
33:26.724 --> 33:30.910
for licensing. We have clients that license from universities
33:31.250 --> 33:35.150
and it's a great partnership. You get the know how from the professor
33:35.490 --> 33:38.882
or maybe it's somebody who it's some random person
33:38.936 --> 33:41.758
who developed it in their garage. And they don't want to be a millionaire,
33:41.774 --> 33:44.962
they just want some recognition for the fact that they had
33:45.016 --> 33:48.758
this idea and they made a product. And so a simple small royalty would
33:48.764 --> 33:53.714
be enough for them. If you ever do make it BS
33:53.762 --> 33:57.960
art or references used, again, patentability invalidity is really anything.
33:58.330 --> 34:01.926
Freedom to Operate is just issued patents that are not expired and their maintenance fees
34:01.958 --> 34:05.542
are paid. So, as we all know, the Natty move a patent.
34:05.686 --> 34:09.020
So it has the front cover, which has all the bibliographic data,
34:09.470 --> 34:13.594
there's the drawings, which should embody anything that's shown in the claims
34:13.642 --> 34:17.102
in theory, specification and the claims. So from
34:17.156 --> 34:21.166
a patentability, you're looking at everything in
34:21.188 --> 34:24.786
a patent, right? Front page drawing, specification, claims for
34:24.808 --> 34:28.882
FTO, it's just the claims. So some search
34:28.936 --> 34:33.774
tools I think are valuable for inventors, even practitioners,
34:33.902 --> 34:37.026
kind of low hanging fruit. Of course, our Google patents, a space net,
34:37.128 --> 34:40.866
USPTO, has an amazing database right now they just revamped
34:40.898 --> 34:44.374
their whole system. Super easy to use, really nice.
34:44.572 --> 34:47.930
There's also Lens, which is a nice tool as well.
34:48.000 --> 34:50.038
And then some non patent literature databases.
34:50.134 --> 34:53.962
NCBI has a lot of literature from
34:54.016 --> 34:57.546
professors and universities. Google Scholar lens also looks
34:57.568 --> 35:01.142
for those. And then AI databases
35:01.206 --> 35:04.974
is PQ AI, if anybody's used that one before. But it's an AI based
35:05.012 --> 35:08.366
search engine where you can literally drop in a paragraph if you
35:08.388 --> 35:11.966
wanted to and run it. It does also do
35:12.068 --> 35:15.578
obviousness, so it should show you novelty
35:15.674 --> 35:19.506
and obviousness so combinations. I'm not as convinced about the
35:19.528 --> 35:23.374
obviousness ones. I haven't used it much at all. But the little bit of testing
35:23.422 --> 35:26.918
I did for this use case, I wasn't as convinced that the
35:26.924 --> 35:29.974
obviousness one was decent, but again, barely played with it,
35:30.012 --> 35:34.198
but the novelty seemed reasonable. So kind
35:34.204 --> 35:38.200
of interesting one, the other thing I learned just yesterday was that
35:38.810 --> 35:42.186
they also very actually in the last few years, but this is
35:42.208 --> 35:45.686
Drew Hirschfield. One of his big initiatives with the Patent
35:45.718 --> 35:49.178
Office was in part changing or at least embracing more
35:49.184 --> 35:52.880
of the CPC code system for
35:53.490 --> 35:57.658
how things are classified and then how applications are tracked into different examiners
35:57.674 --> 36:01.214
and different art units. His recommendation, which I thought was really
36:01.252 --> 36:04.842
interesting, is once you this is more important in software,
36:04.986 --> 36:08.034
I think, when you're trying to avoid certain art units and things like that,
36:08.072 --> 36:11.442
is taking your preamble of your claims, for example,
36:11.496 --> 36:16.054
or taking some of your claim language and doing a CPC search to
36:16.092 --> 36:19.414
see what classifications it's going to come
36:19.452 --> 36:23.382
back as. And if you think that that's an appropriate not
36:23.436 --> 36:26.440
in an attempt to game the system,
36:26.970 --> 36:30.294
but more in attempt to make sure that it's actually in an
36:30.332 --> 36:33.882
appropriate art unit, right? Because you want an examiner that's familiar with
36:33.936 --> 36:36.986
the technology, you want them to be a subject matter expert as much as they
36:37.008 --> 36:40.138
can be. So the way you're drafting an application,
36:40.224 --> 36:42.490
if it's ridiculously broad,
36:43.550 --> 36:47.202
then maybe puts you into a wholly wrong art unit.
36:47.286 --> 36:51.246
That's not going to be a good mix. And so I
36:51.268 --> 36:54.798
thought that was really interesting because I think it's in the
36:54.804 --> 36:58.626
best interest of everybody for it to be in the right art unit and to
36:58.648 --> 37:01.874
be with the right examiner. So if you can kind of preemptively, at least
37:01.912 --> 37:05.540
kind of see where it might go, it can give you a better idea about
37:06.150 --> 37:08.962
whether it's an appropriate place for that or not.
37:09.096 --> 37:12.866
So I thought that was really interesting. I don't do that in my current practice,
37:12.898 --> 37:15.398
but I actually might start doing it a little bit because I think it's kind
37:15.404 --> 37:20.474
of an interesting full circle right opportunity,
37:20.592 --> 37:24.806
I noticed, to tweak terms too, if you don't feel that you're falling
37:24.838 --> 37:28.774
in the right. These guys use Title
37:28.822 --> 37:32.302
too, so not just claim language, but Title will pull you into
37:32.356 --> 37:35.310
a certain Art unit or a certain classification.
37:35.650 --> 37:39.182
Right, but they are actually I was impressed. Their new
37:39.236 --> 37:43.154
initiative, actually they used algorithms now to use the entire
37:43.272 --> 37:46.914
document to track it into an
37:46.952 --> 37:50.814
Art unit. And examiners
37:50.862 --> 37:54.546
and fees can basically kind
37:54.568 --> 37:58.274
of help the system get smarter. If it's not getting to the right,
37:58.472 --> 38:00.838
if they feel like it's not a good fit for their examiners or it's not
38:00.844 --> 38:04.326
a good fit for they can actually feed that back into the system to make
38:04.348 --> 38:07.160
it smarter. And so it's actually now,
38:08.890 --> 38:12.362
in theory, this system should be much better because I said they're taking the entire
38:12.416 --> 38:16.282
document and actually running it through some kind of algorithm that's not publicly available
38:16.416 --> 38:19.738
right now, but maybe eventually would be where you
38:19.744 --> 38:22.938
could see where it's going to be you could kind of see where it's
38:22.944 --> 38:26.014
going to be tracked longer term. But it sounds like they're getting better from that
38:26.052 --> 38:29.786
perspective. So it would hopefully reduce examination time because an examiner
38:29.818 --> 38:33.438
would already be familiar with the art. It would actually make sure a good subject
38:33.454 --> 38:35.860
matter expert were reviewing it.
38:36.710 --> 38:40.478
So that's cool. So software practitioners about a decade
38:40.494 --> 38:43.746
ago were playing with this heavily just to
38:43.768 --> 38:48.360
try to get out of the 101 heavy, difficult Art units, the 3600,
38:49.290 --> 38:52.806
just to keep their application somewhere else, except for where
38:52.828 --> 38:56.406
they're getting rejected under 101 to their
38:56.428 --> 38:59.926
death. It is interesting
39:00.108 --> 39:03.930
also just to understand the system and how it works.
39:04.000 --> 39:07.670
I think when you're crafting claims,
39:07.830 --> 39:10.954
because I think we all get set
39:10.992 --> 39:14.510
on certain terminology and we keep going and maybe
39:14.580 --> 39:18.046
you're drafting claims in something. You don't work in regularly in,
39:18.068 --> 39:21.790
like, a field or an area. You don't work in regularly and you're doing something
39:21.940 --> 39:24.500
that isn't quite right for that field.
39:25.430 --> 39:29.006
This sort of a search might help you hone
39:29.038 --> 39:32.706
that skill and say it's not what
39:32.728 --> 39:35.774
they call it in medical device. This isn't
39:35.822 --> 39:39.346
what they call it. I don't know. I've done some fluidic
39:39.378 --> 39:42.630
things lately, and that's not my
39:42.700 --> 39:46.006
forte. It's just because I haven't done a lot of it. And so some
39:46.028 --> 39:49.666
of the words I would initially come up with weren't
39:49.698 --> 39:53.098
necessarily jiving with how I thought they should. And so I
39:53.104 --> 39:56.266
end up doing a lot of research like this to make sure
39:56.288 --> 39:59.434
I'm getting those correct. Yeah, and actually that was
39:59.472 --> 40:02.966
the whole impetus for that. The webinar was the idea around software
40:02.998 --> 40:06.378
in particular, again, not in the interest of gaming the system, but if you're
40:06.394 --> 40:10.426
drafting software claims, for example, in such a way that they're
40:10.458 --> 40:13.630
not a business method, but they're being viewed as a business
40:13.700 --> 40:16.814
method because you're using kind of interesting
40:16.932 --> 40:20.206
terminology obviously you don't want to. If it's a business method,
40:20.238 --> 40:23.666
it should be in the business method unit. But if it's not, you need to
40:23.688 --> 40:27.094
be drafting it by the more accurate language to get it.
40:27.212 --> 40:31.074
If it's like some kind of machine learning for something, it should be drafted
40:31.122 --> 40:34.706
differently. All right, the last one is just ownership.
40:34.818 --> 40:38.166
Not just ownership. I can't tell
40:38.188 --> 40:42.906
you how many conversations I have about this every year where
40:43.008 --> 40:46.666
somebody owns a company, because they own the company, they think that they should
40:46.688 --> 40:49.786
be listed as an inventor, even though they
40:49.808 --> 40:53.674
are six people removed from the actual inventive activity.
40:53.722 --> 40:57.674
And you're like, yeah, but that's
40:57.802 --> 41:01.680
not quite right. So I'm just really making sure this is
41:02.610 --> 41:06.514
clear. Obviously the US.
41:06.552 --> 41:09.922
Constitution in article one, section eight,
41:09.976 --> 41:13.714
clause eight, when they talk about inventor rights, that's the only place that
41:13.752 --> 41:17.074
right is actually used in the actual constitution. Now, of course, there's a whole bill
41:17.112 --> 41:20.646
of rights in the actual constitution, and vendor rights is the only place where right
41:20.748 --> 41:24.198
is used. And so we really put an emphasis in
41:24.204 --> 41:27.606
the US on inventor rights. And that's why there's a lot
41:27.628 --> 41:30.986
of you have to make sure those rights are conveyed to the
41:31.008 --> 41:34.474
right entity if something goes
41:34.512 --> 41:38.538
awry, or making sure you actually own your invention. And so
41:38.624 --> 41:42.294
in the world where you're not doing everything, as in you're not a solo inventor,
41:42.342 --> 41:45.706
you really do need to make sure it's clear and cleaned
41:45.738 --> 41:49.406
up. So if you have an entity, the entity can have
41:49.428 --> 41:53.486
the authority to file the patent application, enjoys all the rights and benefits, but only
41:53.668 --> 41:56.670
if the patent is assigned to that entity.
41:57.010 --> 42:00.206
And that inventorship is the person who contributed to the conception
42:00.238 --> 42:03.346
of the invention to the point that their idea is clear enough to reduce the
42:03.368 --> 42:07.394
practice. We've seen it where you have deceased
42:07.442 --> 42:11.234
inventors. We've seen it where you have maybe hostile
42:11.282 --> 42:15.126
inventors or just things that go right.
42:15.148 --> 42:18.754
But that's why I think you have multiple redundancies in the system. You have employment
42:18.802 --> 42:22.186
contracts with assignment clauses, and then you have assignments at the time
42:22.208 --> 42:25.626
of filing to make sure those
42:25.648 --> 42:29.306
rights are conveyed. And then if you can't get those assignments at the time of
42:29.328 --> 42:33.246
filings and you have the employment contract that goes back and has assignment clauses in
42:33.268 --> 42:36.942
it, but ideally you have all these so that when something goes wrong,
42:36.996 --> 42:40.906
which almost always does, especially if you don't have these lined
42:40.938 --> 42:44.174
up, then you have these different actions to take to
42:44.212 --> 42:48.638
clean it up. And I know some firms combine declarations
42:48.734 --> 42:52.482
and assignments, and I don't know if I quite feel like that muddies the water
42:52.536 --> 42:56.606
and kind of makes it is anybody else seen the combined assignment
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declaration? I don't love it because I feel like it conflates
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the two and could potentially weaken one or the
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other if they were challenged. But I'm kind of curious if anybody else has seen
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that and or if you have any opinions on it. Yeah,
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I've seen it. I don't think there's anything wrong with it.
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If it's very clear that all of your employees have
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the same agreement to assign their rights, it's the same larger
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entity who is doing this on a regular basis,
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then it becomes just a piece of paperwork that covers everyone,
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and it's likely never going to be an issue.
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People aren't going to argue because the backup is their employee
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contract and that those are pretty ironclad in most
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states, not all.
43:46.570 --> 43:49.654
I don't see a problem there. I do see a problem if you've got
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a lot of selling going on.
43:53.340 --> 43:56.726
So whether that's patents or the company itself,
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I think then you have an opportunity to
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muddy the waters a little bit too much.
44:04.670 --> 44:07.660
Which document will prevail, right?
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And which company required you to sign it, which company
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did without. If there isn't a clear train,
44:15.652 --> 44:19.566
there are all kinds of issues where if
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you're a little larger, it's likely you're not going to be
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purchased. And if you are,
44:26.088 --> 44:30.100
everything has been done one way for how many years? It's very clear.
44:30.470 --> 44:34.194
And they only have to do one process to change it over
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to the new company. But when that happens three,
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four, or five times over the length of your company life,
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it can be dicey to have them combined and not clear
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because most people don't update these things later.
44:51.390 --> 44:55.430
Unfortunately, they should. One that's
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the other. We've had clients.
45:01.070 --> 45:04.442
There's a difference between dissolving an entity and spending up a new entity.
45:04.506 --> 45:08.046
And there's a difference in changing a name of an entity. Right.
45:08.228 --> 45:11.950
Because the rights are you convey them differently.
45:12.610 --> 45:16.398
So, yeah, I think it's just a lot of awareness that you
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need to keep on top of it and you need to make sure it's buttoned
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up from the beginning because there's, I think, tons of case law.
45:23.512 --> 45:29.794
Several. That I can think of off the top of my head where an
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employee didn't fully assign their rights. So then they were
45:34.028 --> 45:37.446
able to still benefit from the invention. But none of that profit went to
45:37.468 --> 45:39.850
the company that actually sponsored the innovation.
45:40.430 --> 45:43.082
Or company thought they owned something, but they didn't own it.
45:43.136 --> 45:46.810
Or an inventor invented something for a different company
45:46.880 --> 45:50.810
under a different company. And so, yeah, all sorts of crazy things,
45:50.880 --> 45:54.830
but it needs to be cleaned up and then
45:54.900 --> 45:58.286
made for hire for Creative Works, a work made
45:58.308 --> 46:01.978
for hire provision, suffices, which is awesome. So if you have that, then you're
46:01.994 --> 46:04.766
good to go. I think a lot of the goal of all of this with
46:04.788 --> 46:08.626
the ownership piece is just you want to ensure a successful separation between you
46:08.648 --> 46:12.066
and the company or between you and the engineering firm at
46:12.088 --> 46:15.266
the end of it, you know? And so whatever that means, you got to,
46:15.288 --> 46:17.586
you know, you want to make sure that you have all those contracts lined up,
46:17.608 --> 46:21.106
including ownership and assignment agreements. Yeah. And then
46:21.128 --> 46:24.806
again, you know, nondisclosure agreements do not define ownership lines. I think
46:24.828 --> 46:28.294
a lot of people put too much stock in NDAs. Yeah.
46:28.332 --> 46:31.260
So that's kind of it. That was good. I like that.
46:32.430 --> 46:36.102
There's so many subtleties in ownership. There's so many subtleties
46:36.166 --> 46:40.278
in what an inventor does or doesn't have to do. And it's
46:40.294 --> 46:44.140
not easy. They have real jobs, too. They have to help us.
46:45.710 --> 46:49.374
Right? I think that's where I get this feedback a lot. I think people are
46:49.412 --> 46:52.602
surprised sometimes how nonlinear
46:52.666 --> 46:55.658
the pathway is. I think sometimes they're led to believe it's, like, oh,
46:55.684 --> 46:59.346
I have an idea. I thought a patent application, and then I get
46:59.368 --> 47:02.610
the patent, and it's like, well, yeah, kind of, sort of.
47:02.680 --> 47:06.482
But then there's all these variations in the normal process that
47:06.536 --> 47:09.714
you can take part in, even, like, the foreign filings you were mentioning.
47:09.762 --> 47:12.390
There's different ways you can do that. And then there's,
47:12.810 --> 47:15.880
well, what if my inventor is not a US. Inventor? Or what if
47:16.890 --> 47:19.720
I said something I shouldn't have said? Or what if,
47:20.410 --> 47:23.770
whatever, I'm disgruntled and don't want to sign it to my company?
47:23.840 --> 47:27.098
I don't know. What if I have
47:27.104 --> 47:30.302
to file in Russia and I have to look up what the patronymic name is,
47:30.356 --> 47:34.426
what that even means? There are some crazy rules
47:34.458 --> 47:37.566
out there. I add Russia to
47:37.588 --> 47:42.094
your list. You'll laugh because
47:42.132 --> 47:44.286
I don't think you can get a form file. I think you have to file
47:44.318 --> 47:48.050
in Russia first. If you have a Russian national
47:49.590 --> 47:52.786
inventor. And then there's just all
47:52.808 --> 47:56.086
kinds of weird. You think you have everything, and all of a sudden you
47:56.108 --> 47:59.350
need these odd requests to your inventor.
48:00.170 --> 48:03.670
I need a blood sample, please. Excuse me. Yeah,
48:03.820 --> 48:07.190
it's just different rules, different jurisdictions.
48:09.790 --> 48:13.386
Well, awesome. Any other questions? Comments, feedback? No? Yeah.
48:13.408 --> 48:15.850
Thanks, Ashley. That was a good conversation.
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Awesome. Thank you.
48:19.392 --> 48:22.474
Thanks, everybody. Have a good rest of the week. Thank you.
48:22.512 --> 48:25.502
Bye bye. Bye. All right, that's all for today,
48:25.556 --> 48:29.134
folks. Thanks for listening. And remember to check us out@aurorapatants.com
48:29.172 --> 48:32.666
for more great podcasts, blogs, and videos covering all things patent
48:32.698 --> 48:35.758
strategy. And if you're an agent or attorney and would like to be part of
48:35.764 --> 48:38.858
the discussion or an inventor with a topic you'd like to hear discussed,
48:38.954 --> 48:41.822
email us at podcast@aurorapatants.com.
48:41.956 --> 48:45.174
Do remember that this podcast does not constitute legal advice. And until
48:45.212 --> 48:46.980
next time, keep calm and patent on.