Digital health is all around us and the health tech sector has been taking off like a rocket. Spurred by advancements in AI, ML, and mobile device tech combined with challenges brought on by everything from the needs of daily health monitoring to the challenges that came along with the pandemic. These worlds are colliding, innovation in the sector is exploding, and disruptive change to healthcare will only accelerate.
Amidst all of this massive growth, startups need to maximize their use of funding and protect their IP from being copied. Patents are the strongest form of protection against this and one of the best possible returns on investment.
At the most basic level, if your innovations drive your product and your business, it’s essential to develop a patent strategy that protects these innovations, increases your valuation, and extends your company’s longevity.
So, growth is incredible. Patents provide great protection and can yield incredible ROI. So what’s the problem?
Patent law and court rulings have been working in direct opposition to this growth, but there are some key strategies you can leverage to make the most of your funds while securing vital intellectual property.
IoT 7 Critical Musts
Making an IoT device or platform decision involves many issues to consider. This paper discusses the seven (7) critical musts that need to be considered when deciding on your IoT solution or service offering.
On Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, Deputy General Counsel and Solicitor at the USPTO. Following a short Q&A session with Mr. Chen, Knobbe Martens attorney Andrew H. Simpson presented on "What You Need to Know About Patent Filing and Litigation in Europe", one of three presentations given during the seminar.
The America Invents Act (AIA), enacted in September 2011, made significant changes to patent law that go into effect September 2012 and March 2013. The U.S. Patent and Trademark Office recently published over a thousand pages of rules dealing with the AIA . View this presentation to learn what hightech companies need to know about the AIA and what you should be doing to implement the right IP strategy at your company.
IoT 7 Critical Musts
Making an IoT device or platform decision involves many issues to consider. This paper discusses the seven (7) critical musts that need to be considered when deciding on your IoT solution or service offering.
On Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, Deputy General Counsel and Solicitor at the USPTO. Following a short Q&A session with Mr. Chen, Knobbe Martens attorney Andrew H. Simpson presented on "What You Need to Know About Patent Filing and Litigation in Europe", one of three presentations given during the seminar.
The America Invents Act (AIA), enacted in September 2011, made significant changes to patent law that go into effect September 2012 and March 2013. The U.S. Patent and Trademark Office recently published over a thousand pages of rules dealing with the AIA . View this presentation to learn what hightech companies need to know about the AIA and what you should be doing to implement the right IP strategy at your company.
Knobbe Martens co-hosted a 2-hour seminar in Silicon Valley on Protecting Your Intellectual Property with a distinguished panel of global practitioners.
Your SR&ED and Intellectual Property PrimerBoast Capital
IP ownership is an important topic that comes up frequently when companies claim SR&ED. During this webinar, Boast Capital asked PCK to share more info about getting into the patent system, IP protection and how it impacts companies.
How To Protect Your Company's Intellectual PropertySecureDocs
This presentation covers cost-effective patent protection for inventions worldwide and protection tactics for unpatented trade secrets. It also gives a compelling argument for why companies should go against the status quo when filing for patents which can help save money and speed up the total patenting process.
With the rise of entrepreneurship, intellectual property is booming. This creates a wealth of opportunities for attorneys to start or grow their IP practice. But, like with any area of law, IP requires specialized knowledge to succeed and comply with best practices. Technology is an essential element to minimizing risk in any practice, but particularly, in the deadline-driven world of IP.
Intellectual Property Serrvices Outsourcing- India Company OverviewEPatents IP Services
EPatents is a IP Services firm which provides Patent and Trademark services to students,individual inventors, entrepreneurs, SMEs and other law firms in India and US.
This presentation is the overview of services offered by EPatents
Patenting in Mobile Application and TechnologyIndicThreads
Presented By Komal Shah Bhukhanwala at the 2nd IndicThreads.com Conference On Mobile Application Development, August 2011 http://Mobile.IndicThreads.com
Bill Hulsey Patent Lawyer - Intellectual Property - Reasons for ProtectionBill Hulsey Lawyer
Bill Hulsey Patent Lawyer outlines reasons for and benefits from identifying and protecting intellectual property with patents, trade secrets, trade marks, and company policies.
This workshop, led by intellectual property attorney and founder of Smartup, Yuri Eliezer, will help you understand what options are available to secure your work and how you can cover all your bases at a reasonable cost. Attendees will leave with an understanding of the difference between patents, trademarks, and copyrights, how to protect their software, how to preserve their rights, and who owns their contributions.
Many emerging companies make the mistake of putting all of their resources into immediate needs, and often neglect longterm regulatory strategy concerns when it comes to submissions and approvals. Don’t neglect the strategy piece in your planning! This lunch will provide a deep-dive foundation of how to develop a regulatory strategy. Topics to be addressed include:
What are different types of regulatory submissions for devices?
What are current trends in regulatory agencies?
What regulations around devices affect your organization?
Attendees will have the opportunity to ask questions with their company’s needs in mind.
Join us and Halloran Consulting at M2D2 for this expert lunch. Food will be served.
Freedom to Operate in the Pharmaceutical SectorAdrian Bradley
This presentation covers the essential aspects of planning and executing a freedom to operate or patent clearance exercise in the pharmaceutical sector. It deals with the search phase, the analysis phase and the follow-up phase. It is relevant for in-house IP attorneys and development managers.
variety of industries and private practitioners attend this event for worthwhile benchmarking and networking with the “who’s who” of the 337 bar, including senior decision-makers from the ITC, companies and practitioners involved in some of the most high profile cases to date.
CAFC Chronicles: Costly Tales of Claim Construction FailsAurora Consulting
The difference between getting claim construction right and getting it wrong is the difference between a valid patent and an invalid patent – and the difference between millions of dollars awarded from infringement decisions vs. ending up with a worthless piece of paper.
In this month’s episode, Dr. David Jackrel, President of Jackrel Consulting, leads a discussion into three real-world applications for patent claim construction, as tested and decided upon by the United States Court of Appeals for the Federal Circuit. This is the highest court in the land under the Supreme Court for handling intellectual property disputes – and establishes much of the legal precedent the patent world has to go on … for better and for worse. The panel dissects the claims for each case, discusses the court’s analysis, and provides tips and strategies for more effective claim drafting in light of the strengths and weaknesses of the litigated patents.
Dave is joined today by our always exceptional group, including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategy Specialist at Aurora
⦿ Ty Davis, Patent Strategy Associate at Aurora
Listen here: https://patentlystrategic.buzzsprout.com/1734511/14991984-cafc-chronicles-costly-tales-of-claim-construction-fails
We’re talking about AI and its impact on the patent system.
This month's episode evaluates where we presently are and considers where it could all be heading. Dr. David Jackrel, President of Jackrel consulting and Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, lead a two-part discussion with our all-star panel that begins with a deep dive on the present state of AI patent tools for searching, proofreading, drafting, and prosecution – and then moves on to an exploration of how these tools could eventually provide solutions for many problems plaguing the industry including PTAB invalidation rates, hindsight bias, prior art search quality, and the unsustainable bar. Discussion highlights include:
⦿ ChatGPT 4.0 vs. professionals on core competencies
⦿ Why AI is evolving so rapidly
⦿ AI problems and hallucinations
⦿ AI and public disclosure risk
⦿ AI implications for inventorship
⦿ Current state of AI-assisted patent searching, proofreading, drafting (rule and LLM-based), and prosecution tools
⦿ AI's potential future role in the patent system for fixing issues with the PTAB, search quality, and the unsustainable bar
Episode: https://www.buzzsprout.com/1734511/14678900
More Related Content
Similar to Global & U.S. Patents for Digital Health Startups
Knobbe Martens co-hosted a 2-hour seminar in Silicon Valley on Protecting Your Intellectual Property with a distinguished panel of global practitioners.
Your SR&ED and Intellectual Property PrimerBoast Capital
IP ownership is an important topic that comes up frequently when companies claim SR&ED. During this webinar, Boast Capital asked PCK to share more info about getting into the patent system, IP protection and how it impacts companies.
How To Protect Your Company's Intellectual PropertySecureDocs
This presentation covers cost-effective patent protection for inventions worldwide and protection tactics for unpatented trade secrets. It also gives a compelling argument for why companies should go against the status quo when filing for patents which can help save money and speed up the total patenting process.
With the rise of entrepreneurship, intellectual property is booming. This creates a wealth of opportunities for attorneys to start or grow their IP practice. But, like with any area of law, IP requires specialized knowledge to succeed and comply with best practices. Technology is an essential element to minimizing risk in any practice, but particularly, in the deadline-driven world of IP.
Intellectual Property Serrvices Outsourcing- India Company OverviewEPatents IP Services
EPatents is a IP Services firm which provides Patent and Trademark services to students,individual inventors, entrepreneurs, SMEs and other law firms in India and US.
This presentation is the overview of services offered by EPatents
Patenting in Mobile Application and TechnologyIndicThreads
Presented By Komal Shah Bhukhanwala at the 2nd IndicThreads.com Conference On Mobile Application Development, August 2011 http://Mobile.IndicThreads.com
Bill Hulsey Patent Lawyer - Intellectual Property - Reasons for ProtectionBill Hulsey Lawyer
Bill Hulsey Patent Lawyer outlines reasons for and benefits from identifying and protecting intellectual property with patents, trade secrets, trade marks, and company policies.
This workshop, led by intellectual property attorney and founder of Smartup, Yuri Eliezer, will help you understand what options are available to secure your work and how you can cover all your bases at a reasonable cost. Attendees will leave with an understanding of the difference between patents, trademarks, and copyrights, how to protect their software, how to preserve their rights, and who owns their contributions.
Many emerging companies make the mistake of putting all of their resources into immediate needs, and often neglect longterm regulatory strategy concerns when it comes to submissions and approvals. Don’t neglect the strategy piece in your planning! This lunch will provide a deep-dive foundation of how to develop a regulatory strategy. Topics to be addressed include:
What are different types of regulatory submissions for devices?
What are current trends in regulatory agencies?
What regulations around devices affect your organization?
Attendees will have the opportunity to ask questions with their company’s needs in mind.
Join us and Halloran Consulting at M2D2 for this expert lunch. Food will be served.
Freedom to Operate in the Pharmaceutical SectorAdrian Bradley
This presentation covers the essential aspects of planning and executing a freedom to operate or patent clearance exercise in the pharmaceutical sector. It deals with the search phase, the analysis phase and the follow-up phase. It is relevant for in-house IP attorneys and development managers.
variety of industries and private practitioners attend this event for worthwhile benchmarking and networking with the “who’s who” of the 337 bar, including senior decision-makers from the ITC, companies and practitioners involved in some of the most high profile cases to date.
CAFC Chronicles: Costly Tales of Claim Construction FailsAurora Consulting
The difference between getting claim construction right and getting it wrong is the difference between a valid patent and an invalid patent – and the difference between millions of dollars awarded from infringement decisions vs. ending up with a worthless piece of paper.
In this month’s episode, Dr. David Jackrel, President of Jackrel Consulting, leads a discussion into three real-world applications for patent claim construction, as tested and decided upon by the United States Court of Appeals for the Federal Circuit. This is the highest court in the land under the Supreme Court for handling intellectual property disputes – and establishes much of the legal precedent the patent world has to go on … for better and for worse. The panel dissects the claims for each case, discusses the court’s analysis, and provides tips and strategies for more effective claim drafting in light of the strengths and weaknesses of the litigated patents.
Dave is joined today by our always exceptional group, including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategy Specialist at Aurora
⦿ Ty Davis, Patent Strategy Associate at Aurora
Listen here: https://patentlystrategic.buzzsprout.com/1734511/14991984-cafc-chronicles-costly-tales-of-claim-construction-fails
We’re talking about AI and its impact on the patent system.
This month's episode evaluates where we presently are and considers where it could all be heading. Dr. David Jackrel, President of Jackrel consulting and Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, lead a two-part discussion with our all-star panel that begins with a deep dive on the present state of AI patent tools for searching, proofreading, drafting, and prosecution – and then moves on to an exploration of how these tools could eventually provide solutions for many problems plaguing the industry including PTAB invalidation rates, hindsight bias, prior art search quality, and the unsustainable bar. Discussion highlights include:
⦿ ChatGPT 4.0 vs. professionals on core competencies
⦿ Why AI is evolving so rapidly
⦿ AI problems and hallucinations
⦿ AI and public disclosure risk
⦿ AI implications for inventorship
⦿ Current state of AI-assisted patent searching, proofreading, drafting (rule and LLM-based), and prosecution tools
⦿ AI's potential future role in the patent system for fixing issues with the PTAB, search quality, and the unsustainable bar
Episode: https://www.buzzsprout.com/1734511/14678900
Claim Construction: Building Strong Patent FoundationsAurora Consulting
Claim construction is a process in which courts attempt to interpret the meaning and scope of the claims of a patent. It’s sort of like reverse engineering – or maybe more accurately reconstructing – what an inventor and their practitioner meant back when they drafted the patent application. While your patent might not be tested in a court for many years, understanding the sometimes surprising language specifics and context traps while drafting now can help set you up for success later when defending your patent or attempting to stop an infringer. The words you choose now and the support you provide when drafting are your opportunity to help derisk the process of courts and juries later interpreting what you meant. And oftentimes, claim construction can be the KEY FACTOR in resolving disputes even before litigation, with the facts that come out of claim construction deciding the monetary value and payouts in settlements.
In breaking this all down, Kristen and the panel discuss:
* The evolution of claim terms
* Claim construction basics and a historical look at what are called Markman hearings
* Intrinsic evidence vs. extrinsic evidence
* Claim construction in prosecution vs. litigation
The global video game market topped $182 billion in 2022 and is projected to exceed $300 billion by 2026. To put those numbers into perspective, this makes gaming bigger than the film and music industries combined – and dwarfs the combined revenue of the NFL, NBA, MLB and NHL! Worldwide boardgame sales, while significantly less, still account for over $2 billion. That’s a whole lotta IP in need of protection, so in this month’s episode, we’re talking games. From patenting classic boardgames like Monopoly and Battleship back in the 1930s to challenges with protecting modern innovations in areas like game development and VR, our experts are breaking down everything you need to know about patenting games so you don’t end up just rolling the dice when investing in protections for your entertaining innovations.
Episode Overview: From Pieces to Pixels
As a bonus, in this month’s episode, we’re bringing you two dealers: Dr. David Jackrel, President of Jackrel Consulting, will be covering the physical realm of board games and toys. Kristen Hansen, Patent Strategist and software guru here at Aurora, will be covering all things computer and video games in the second half. David, Kristen, and the panel discuss:
⦿ Types of IP protection for games including options for patents, trademarks, and copyrights
⦿ Subject matter eligibility concerns for game patents
⦿ Claim analysis examples
⦿ Patentable aspects of video games
⦿ The hierarchy of video game elements
Podcast: https://www.buzzsprout.com/1734511/14028086
In this month's podcast episode, we’re talking about claims – the fundamental building blocks of a patent. There simply is not a more important concept to grasp in all of patenting. As a former chief justice of the Federal Circuit once famously said, “The name of the game is the claim.” And in terms of what game you’re playing, the claims are where you separate the patents playing checkers from the patents playing chess.
This is where your patent practitioner earns their money and as you’ll learn today, also where the mostly costly mistakes can be born. As David Cohen, a Patently Strategic regular, has said in the past, "Ninety percent of the mental exercise in drafting patents is in the strategy of looking around corners, anticipating the future, and trying to capture as many would-be infringers as possible.” How your claims are crafted is literally the difference between a patent being an intellectual asset and a worthless stack of paper.
In this month’s episode, Ty Davis, Patent Strategy Associate here at Aurora, leads a discussion, along with our all star patent panel, delving deeply into:
⦿ Claim fundamentals
⦿ Claim drafting strategies
⦿ How to think about claims in the context of infringement
⦿ And in the game of patenting, how to move like a queen, so you’re not treated like a pawn.
Ty is joined by our always exceptional group of IP experts, including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Marie Smyth, Patent Agent, formerly with Greenberg Traurig and Meta
⦿ Porter Thames, J.D. and Patent Agent at SMU Science and Technology Law Review
** Mossoff Minute **
This month's Mossoff Minute, featuring Professor Adam Mossoff, looks at the poorly named Advancing America's Interests Act and its potential impact on the ITC being able to block import of products that infringe on American patents.
Podcast: https://patentlystrategic.buzzsprout.com/1734511/13729977-patent-claims-the-name-of-the-game
Life science patents have grown increasingly vulnerable to rejection and invalidation due to subject matter eligibility and enablement interpretations. The implications are staggering with over 80% of abandoned life science applications having a final rejection stating that the innovation did not include patentable subject matter. In this talk, we’ll explore how to avoid these rejections, understand the implications for new drugs, and provide practical tips for creating robust life science patents.
In this month's episode, we’re talking about the use of government grants and the strings that can come attached to your IP! We’re exploring the various types of small business research grants, how the Bayh-Dole Act regulates inventions generated under government grants, licensing and ownership implications for your patent when using federal dollars, and the sticky webs that you may find yourself in if you are not carefully tracking IP and adhering to the numerous provisions and timelines.
Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads the discussion along with our all-star patent panel, exploring:
⦿ How the Bye-Dole Act of 1980 regulates inventions under government grants
⦿ As a small business, what types of grants are available to you and whether or not they can cover IP-related costs
⦿ The rights of the federal government to your Invention when you use grant money
⦿ Implications for using subcontractors to perform the work under the grant
⦿ And of course, some of the biggest gotcha’s and practical tips for avoiding them
Ashley is also joined today by our always exceptional group of IP experts including:
⦿ Kristen Hansen, Patent Strategy Specialist at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Ty Davis, Patent Strategy Associate at Aurora
** Mossoff Minute **
This month's Mossoff Minute, featuring Professor Adam Mossoff, looks at the introduction of a very important piece of patent reform legislation called the PREVAIL Act.
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Open Source and Patent Rights: Collaboration with ConsequencesAurora Consulting
How does the use of or contribution to open-source software impact your intellectual property rights?
In this month's episode, we’re talking about software and the convoluted risk/reward interplay between patents, copyrights, and open source. Use of free open-source code can be an invaluable tool when building complex software applications. Why reinvent wheels? And depending on resources and budget, sometimes it’s the only practical way. But like with most things, free often isn’t really free. The cost is just transferred somewhere else. When it comes to open source, these short term savings can have significant long term consequences for your intellectual property rights.
⦿ Can you mix open source with commercial software and still keep your code private?
⦿ Can you patent your own software that uses open-source software? If so, could you ever actually assert those rights?
⦿ Can you patent open-source software you author and why would you?
We'll discuss answers to these questions and more. Kristen Hansen, Patent Strategist and software patent guru here at Aurora, leads a discussion along with our all star patent panel, exploring:
⦿ The fundamentals of open-source licensing and how certain viral license types can require you to publicly make available your company’s source code.
⦿ How copyrights, patents, and open-source licenses differ in terms of software protection strategies.
⦿ And whether or not – and why you might – patent open-source software and the often proprietary code that leverages it, as well as the associated patent right assertion risks that can come with doing so.
We look at concerns through the eyes of both users and authors of open source. And pragmatically as we can, highlight how it’s possible to construct a strategy where open-source innovation is encouraged without forgoing all future earning power and without blocking others from using it.
Kristen has worked both as a Software Engineer and a Software Patent Agent for the last two decades. She has worked closely with software inventors from Big Tech Valley giants looking to utilize open-source software, while still maintaining their assertable patent portfolios. We couldn’t think of a better person to lead this conversation! Kristen is also joined today by our always exceptional group of IP experts including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Ty Davis, Patent Strategy Associate at Aurora
Listen to the podcast:
Learn more: https://www.aurorapatents.com/blog/open-source-and-patent-rights
We’re leading off Season 3 with a close look at a Supreme Court patent case that could have profound impacts on the invention enablement problems we covered heavily in Season 2. SCOTUS is set to hear opening arguments in Amgen v Sanofi on March 27th. For the first time in over 75 years, the Supreme Court is evaluating the meaning and scope of the enablement requirement. For those who’ve been following along, you’ll know that this has become one of the bigger issues plaguing patenting and especially so in the life sciences.
Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, leads our discussion today along with our all star patent panel, exploring the scientific background around antibodies necessary to understand the claims, a brief case history of Amgen v Sanofi, an overview of the enablement factors and tests that have been historically applied in courts and how they might apply to this case, and a discussion around open questions and the potential unintended consequences of the Supreme Court only taking up one-half of the two-sided enablement coin. This ends up being a really great, spirited conversation with panel members coming down strongly on both sides of the case with very compelling arguments – really highlighting the complexities and fundamental issues the court will have to face.
Ashley is joined today by our always exceptional group of IP experts including:
⦿ David Cohen, Principal at Cohen Sciences
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ David Jackrel, President of Jackrel Consulting
⦿ Ty Davis, Patent Strategy Associate at Aurora
Foreign filing licenses – surprisingly sneaky and easy to overlook, but can come with significant consequences if you do. Many countries, including the US, require inventors to receive special permission to file with patent offices outside of the inventor’s …or invention’s… country. A foreign filing license is a government issued document that represents this permission for inventors and companies to file in foreign countries. Failing to receive this permission can come with serious ramifications including fines, patent revocation, and even imprisonment!
Why so serious? Well, like with most matters of foreign export compliance, it comes down to each nation’s strong desire to protect its own security and economic interests. Allowing ideas to cross borders comes with the risk of the unauthorized exportation of technologies and sensitive information that could have implications for military applications, national security, and state secrets.
In this month’s episode, we're bringing you along for a tale of international mystery and intrigue and into the clandestine world of foreign filing licenses. Ty Davis, Patent Strategy Associate at Aurora, along with our all star patent panel, discusses:
⦿ The three main categories of filing license requirements
⦿ Strategies for data collection and how to navigate potential conflicts
⦿ And some example walkthroughs of international filing conflicts and their resolutions
Ty is joined by our always exceptional group of IP experts, including:
⦿ Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ David Jackrel, President of Jackrel Consulting
https://www.aurorapatents.com/patently-strategic-podcast.html
If there was a guidebook we could hand to inventors on the first day following the conception of their idea, this episode would be it.
When is it safe to talk about or sell your invention? How do you hedge against invalidation and rejection from competitor IP? How do you ensure you actually own your invention?
In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, leads a discussion along with our all star patent panel, exploring the most common patenting missteps taken by inventors and startups. The focus largely centers around three key areas:
1) Publicly disclosing your invention before you have filed a patent application.
2) Not searching to see if your invention or something similar already exists commercially or in publicly available resources.
3) Not carefully contracting with outside vendors and employees to make sure you own your invention.
The group highlights best practices for not making the mistakes in the first place and explores available remedial options should you already be in need of a rescue line.
Ashley is also joined today by our always exceptional group of IP experts including:
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Ty Davis, Patent Strategy Associate at Aurora
⦿ David Jackrel, President of Jackrel Consulting
Think your innovation is sufficiently enabled to secure, defend, and assert your patent rights? If it’s a biological, chemical, or emerging technology invention then you might want to think again. In today’s episode we’re looking into how to get more predictable results from the unpredictable arts.
Some technologies, like those rooted in physics and mechanics, are considered “predictable” by the US Patent Office, while others, like biological and chemical technologies, are generally considered “unpredictable.” It follows that the amount of disclosure required to enable an invention is related to the predictability of the technology, and so-called unpredictable arts require more description to teach a reader how to “make and use” the technology. Similarly, emerging technologies, being less well known, also require more disclosure to be fully enabled.
In this month’s episode, David Jackrel, President of Jackrel Consulting, leads a discussion along with our all star patent panel, exploring enablement for the unpredictable arts and emerging technologies. The panel discusses peculiarities of patenting unpredictable art and emerging technologies, with a focus on modern case law and statutes to arrive at a set of best practices for getting more predictable results when patenting these technologies.
Dave is also joined today by our always exceptional group of IP experts including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Shelley Couturier, Patent Strategist and Search Specialist
Before joining the group, as we often do, we’d like to provide a short primer on some key concepts in this episode for those newer to the world of patenting. This primer covers:
⦿ Section 112
⦿ What is the MPEP?
⦿ Specification vs. Claims
⦿ Genus vs. Species Claims
⦿ Markush Groups
Into the Patentverse Vol. 2: AR, VR, and Virtual InfringementAurora Consulting
We’re slipping our headsets on and heading back into the metaverse! Earlier this year, we began our foray into this world with a deep dive into the building blocks that could very well form the structural and economic underpinnings of the metaverse by exploring the tech concepts and IP implications surrounding Web 3.0, blockchain, cryptocurrency, and NFTs. Today we build on this, by expanding our conversation into the most likely interfaces for the metaverse, as well as how patentability and infringement could play out as we meld innovations between the physical and digitals realms.
In this month’s episode, Kristen Hansen, Patent Strategist and software patent guru here at Aurora, leads a discussion along with our all star patent panel, exploring questions including:
⦿ What is the metaverse?
⦿ How do virtual and augmented realities fit in?
⦿ And what does infringement look like in the metaverse or what might it look like in the future?
Along the way, the group also shares some great tips for drafting claims around the virtual world to get around physical world prior art, as well as some pointers for avoiding split infringement for processes that are performed in a distributed manner – as will almost always be the case with metaverse-based innovations.
Kristen worked on VR and AR patents for nearly a decade, including those held by some of the Valley giants looking to define the space. We honestly couldn’t think of a better person to lead this conversation. Kristen is also joined today by our always exceptional group of IP experts including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ David Jackrel, President of Jackrel Consulting
⦿ Ty Davis, Patent Strategy Associate
⦿ Dr. Sophia Li, Patent Strategy Fellow
Word choice matters a great deal in the world of patenting. You’re using the English language to draw a picture around highly technical concepts. The precision with which this is done, down to the semantic level, can make all of the difference when it comes to your patent application being rejected or granted – and the future likelihood of your ability to assert your rights or defend against invalidation. Word choice too narrow or overly specific – and you can easily be designed around by competitors. Word choice too broad and only describing what something is vs what it does and you risk rejection or invalidation for what will be ruled as linguistic tricks to get more coverage than what you actually invented. The tension is real and the case law interpretation is fluid, but it all still comes down to determining if the chosen words will enable a person of ordinary skill in the art to carry out an invention – in the interest of other inventors being able to build on the idea, while also avoiding trespassing with infringement.
One very particular place this tension between breadth of coverage and specificity in enablement arises is with the concept of Means-Plus-Function claim language. In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion, along with our all star patent panel, into the nuanced world of Means-Plus-Function claiming. The group digs into the statute, explores relevant case law in an analysis of the kinds of word choices that have and haven’t caused problems for inventors, and also provides some great drafting tips for de-risking the use of Means-Plus-Function claim language.
Ashley is joined today by our always exceptional group of IP experts including:
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ David Cohen, Principal at Cohen Sciences
⦿ Shelley Couturier, Patent Strategist and Search Specialist
Before jumping into the deep with the panel, we also provide a quick primer on key concepts including specification vs claims, Section 112 enablement, functional claim language, and nonce words.
In this month's episode of the Patently Strategic Podcast, we’re discussing a recent court decision that judges have said could threaten "most every invention for which a patent has ever been granted", turning the patent system into a "litigation gamble."
Dr. David Jackrel, President of Jackrel Consulting, leads a discussion into American Axle’s recent bid to have the Supreme Court overturn a lower court decision that invalidated the company’s patent in a closely followed legal battle with rival Neapco Holdings. This case offered a much anticipated opportunity to more broadly clarify patent eligibility in a time where many believe that court precedent has undermined the U.S. patent process and, in the words of retired U.S. Court of Appeals Chief Judge Paul Michel, “confused and distorted the law of eligibility”, making it an “illogical, unpredictable, chaotic” mess. Critics of these rulings and the resulting present state of IP law claim that the confusion and inconsistency has led to courts canceling many patents that should be protected. The Solicitor General has stated that problems arising from the application of Section 101 have “made it difficult for inventors, businesses, and other patent stakeholders to reliably and predictably determine what subject matter is patent eligible”.
Despite cries for help and urges to provide clarification from multiple presidential administrations, the Solicitor General, members of Congress, the Federal Circuit Court, IP bar associations, and the Patent Office, the Supreme Court refused to hear this case, leaving many inventors and industries in limbo since as a USPTO spokesperson said after the ruling, innovation "cannot thrive in uncertainty."
David and our all star patent panel discuss the case law, its implications, how present statute is being conflated and taking section 101 well beyond its gatekeeping function, and in their analysis of the American Axle patent, provide some great tips that may have changed American Axle’s present fate – and can hopefully improve your odds of success if approached intentionally at the drafting stage.
Blog: https://www.aurorapatents.com/blog/american-axle-ip-uncertainty-for-the-innovation-economy
Podcast: https://patentlystrategic.buzzsprout.com/1734511/11226664-from-alice-to-axle-ip-uncertainty-for-the-innovation-economy
Prenuptial Patenting: Responsible Engagement with Engineering FirmsAurora Consulting
You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. Like many others, you may turn to the aid of an engineering firm or dev shop. This relationship is a marriage of sorts. But it’s a marriage that is designed to inevitably end in divorce. How cleanly, smoothly, and successfully this separation goes depends on the steps that you take before it officially begins.
Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, leads a discussion into Responsible Engagement with Engineering Firms, or what we affectionately refer to here as “Prenuptial Patenting”. Ashley and our all star patent panel walk you down the aisle and explore everything you need to know to experience marital bliss and an amicable divorce with your engineering partners. This talk covers the full life cycle from vetting partners to post development concerns and everything in between – with particular focus on relationship complexities like IP ownership, assignment from engineering firm inventors back to you, and how to avoid the traps of viral IP.
Blog post: https://www.aurorapatents.com/blog/prenuptial-patenting
Podcast Episode: https://patentlystrategic.buzzsprout.com
Fortifying Life Science Patents: Eligibility and EnablementAurora Consulting
The life sciences are currently facing at least two major plagues in our patent world. The first is that many life science innovations have been deemed ineligible in terms of patentable subject matter. In other words, the courts and the patent office believe that the patent laws are not meant to protect these innovations. The second plague is that the courts believe that many life sciences patents are not enabled. In other words, they are not described in sufficient detail to enable one of skill in the art to make and use the invention.
These subject matter eligibility and enablement plagues manifest in dreaded Section 101 and 112 rejections. In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, leads a discussion, along with our all star patent panel, delving deeply into these rejections and, in the interest of avoiding a podcast 101 rejection, provides some very practical application tips that will help to fortify your life science patent applications.
Blog post: https://www.aurorapatents.com/blog/fortifying-life-science-patents
Podcast Episode: https://patentlystrategic.buzzsprout.com
Web 3 and IP: Cryptocurrencies, Blockchain, and NFTsAurora Consulting
“Metaverse” is the buzziest of the buzzwords in tech and will soon be joining the ranks of “AI” and “ML” as requisite keywords in the next generation of pitch decks and patent applications. But what are the core components of the Metaverse? And what are their implications in the world of intellectual property? The Patently Strategic Podcast will be exploring this topic over the course of several upcoming episodes.
** Web 3.0: Metaverse Building Block **
We begin our exploration with Web 3.0. While it may prove to be the next great tech revolution, the broad shape and definition of the Metaverse is still more firmly baked in science fiction than in commercial tech reality. Many of its core building blocks, however, are likely right in front of our eyes (or headsets, perhaps). History shows that most major technology revolutions are rarely leaps, but instead evolutionary products of incremental steps, composed of many existing building blocks, met with market readiness. The Web 3.0 innovations of blockchain, cryptocurrency, and NFTs that are taking shape in front of us will no doubt be among these essential building blocks. With an ability to touch both our physical and virtual worlds, cryptocurrencies could form the monetary basis for all economic activity in the Metaverse. NFTs make it possible for unique items to exist and assets to be exclusively owned in the digital realm. The very foundations and infrastructure for the Metaverse and its virtual worlds could be built on blockchain.
Perhaps the Metaverse is simply how we experience the third major phase of the web – or maybe in its purest, most decentralized form, the Metaverse is built entirely on top of it. In any case, it's hard to imagine a future where the two are not inextricably linked.
** IP Implications **
This third phase of the internet also poses some of the most interesting questions for the world of IP. What will the impact be on digital property rights in a secure marketplace, governed by smart contracts? How will copyrights play in digital worlds with their own art and governance? Is there merit in considering a new type of protection category outside of patents and copyrights?
** Episode Overview **
In our inaugural IPWatchdog episode, Kristen Hansen, Patent Strategist and software patent guru, leads a discussion along with our all star patent panel, digging into:
* The fundamentals of blockchain, cryptocurrencies, and NFTs – and why the hype
* The state of the technology
* Questions around what web evolution, blockchain, and NFT technology means for IP ownership
Strategies for protecting blockchain and cryptocurrency innovations
Podcast Link: https://patentlystrategic.buzzsprout.com/1734511/10694308-into-the-patentverse-web-3-0-blockchain-cryptocurrency-and-nfts
Blog post: https://www.aurorapatents.com/blog/new-podcast-into-the-patentverse-vol-1
Demystifying the concept of Common Ownership and how it can be leveraged to disqualify prior art that might otherwise cause a rejection during prosecution.
Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora leads this discussion, digging into Common Ownership exceptions, joint research exceptions, and terminal disclaimer practice.
Podcast: https://patentlystrategic.buzzsprout.com/1734511/10647883-common-ownership-whose-prior-art-is-it-anyway
Blog post: https://www.aurorapatents.com/blog/new-podcast-common-ownership
Responsibilities of the office bearers while registering multi-state cooperat...Finlaw Consultancy Pvt Ltd
Introduction-
The process of register multi-state cooperative society in India is governed by the Multi-State Co-operative Societies Act, 2002. This process requires the office bearers to undertake several crucial responsibilities to ensure compliance with legal and regulatory frameworks. The key office bearers typically include the President, Secretary, and Treasurer, along with other elected members of the managing committee. Their responsibilities encompass administrative, legal, and financial duties essential for the successful registration and operation of the society.
NATURE, ORIGIN AND DEVELOPMENT OF INTERNATIONAL LAW.pptxanvithaav
These slides helps the student of international law to understand what is the nature of international law? and how international law was originated and developed?.
The slides was well structured along with the highlighted points for better understanding .
A "File Trademark" is a legal term referring to the registration of a unique symbol, logo, or name used to identify and distinguish products or services. This process provides legal protection, granting exclusive rights to the trademark owner, and helps prevent unauthorized use by competitors.
Visit Now: https://www.tumblr.com/trademark-quick/751620857551634432/ensure-legal-protection-file-your-trademark-with?source=share
ALL EYES ON RAFAH BUT WHY Explain more.pdf46adnanshahzad
All eyes on Rafah: But why?. The Rafah border crossing, a crucial point between Egypt and the Gaza Strip, often finds itself at the center of global attention. As we explore the significance of Rafah, we’ll uncover why all eyes are on Rafah and the complexities surrounding this pivotal region.
INTRODUCTION
What makes Rafah so significant that it captures global attention? The phrase ‘All eyes are on Rafah’ resonates not just with those in the region but with people worldwide who recognize its strategic, humanitarian, and political importance. In this guide, we will delve into the factors that make Rafah a focal point for international interest, examining its historical context, humanitarian challenges, and political dimensions.
In 2020, the Ministry of Home Affairs established a committee led by Prof. (Dr.) Ranbir Singh, former Vice Chancellor of National Law University (NLU), Delhi. This committee was tasked with reviewing the three codes of criminal law. The primary objective of the committee was to propose comprehensive reforms to the country’s criminal laws in a manner that is both principled and effective.
The committee’s focus was on ensuring the safety and security of individuals, communities, and the nation as a whole. Throughout its deliberations, the committee aimed to uphold constitutional values such as justice, dignity, and the intrinsic value of each individual. Their goal was to recommend amendments to the criminal laws that align with these values and priorities.
Subsequently, in February, the committee successfully submitted its recommendations regarding amendments to the criminal law. These recommendations are intended to serve as a foundation for enhancing the current legal framework, promoting safety and security, and upholding the constitutional principles of justice, dignity, and the inherent worth of every individual.
Introducing New Government Regulation on Toll Road.pdfAHRP Law Firm
For nearly two decades, Government Regulation Number 15 of 2005 on Toll Roads ("GR No. 15/2005") has served as the cornerstone of toll road legislation. However, with the emergence of various new developments and legal requirements, the Government has enacted Government Regulation Number 23 of 2024 on Toll Roads to replace GR No. 15/2005. This new regulation introduces several provisions impacting toll business entities and toll road users. Find out more out insights about this topic in our Legal Brief publication.
PRECEDENT AS A SOURCE OF LAW (SAIF JAVED).pptxOmGod1
Precedent, or stare decisis, is a cornerstone of common law systems where past judicial decisions guide future cases, ensuring consistency and predictability in the legal system. Binding precedents from higher courts must be followed by lower courts, while persuasive precedents may influence but are not obligatory. This principle promotes fairness and efficiency, allowing for the evolution of the law as higher courts can overrule outdated decisions. Despite criticisms of rigidity and complexity, precedent ensures similar cases are treated alike, balancing stability with flexibility in judicial decision-making.
Car Accident Injury Do I Have a Case....Knowyourright
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transfer of the P.I.L filed by lawyer Ashwini Kumar Upadhyay in Delhi High Court to Supreme Court.
on the issue of UNIFORM MARRIAGE AGE of men and women.
WINDING UP of COMPANY, Modes of DissolutionKHURRAMWALI
Winding up, also known as liquidation, refers to the legal and financial process of dissolving a company. It involves ceasing operations, selling assets, settling debts, and ultimately removing the company from the official business registry.
Here's a breakdown of the key aspects of winding up:
Reasons for Winding Up:
Insolvency: This is the most common reason, where the company cannot pay its debts. Creditors may initiate a compulsory winding up to recover their dues.
Voluntary Closure: The owners may decide to close the company due to reasons like reaching business goals, facing losses, or merging with another company.
Deadlock: If shareholders or directors cannot agree on how to run the company, a court may order a winding up.
Types of Winding Up:
Voluntary Winding Up: This is initiated by the company's shareholders through a resolution passed by a majority vote. There are two main types:
Members' Voluntary Winding Up: The company is solvent (has enough assets to pay off its debts) and shareholders will receive any remaining assets after debts are settled.
Creditors' Voluntary Winding Up: The company is insolvent and creditors will be prioritized in receiving payment from the sale of assets.
Compulsory Winding Up: This is initiated by a court order, typically at the request of creditors, government agencies, or even by the company itself if it's insolvent.
Process of Winding Up:
Appointment of Liquidator: A qualified professional is appointed to oversee the winding-up process. They are responsible for selling assets, paying off debts, and distributing any remaining funds.
Cease Trading: The company stops its regular business operations.
Notification of Creditors: Creditors are informed about the winding up and invited to submit their claims.
Sale of Assets: The company's assets are sold to generate cash to pay off creditors.
Payment of Debts: Creditors are paid according to a set order of priority, with secured creditors receiving payment before unsecured creditors.
Distribution to Shareholders: If there are any remaining funds after all debts are settled, they are distributed to shareholders according to their ownership stake.
Dissolution: Once all claims are settled and distributions made, the company is officially dissolved and removed from the business register.
Impact of Winding Up:
Employees: Employees will likely lose their jobs during the winding-up process.
Creditors: Creditors may not recover their debts in full, especially if the company is insolvent.
Shareholders: Shareholders may not receive any payout if the company's debts exceed its assets.
Winding up is a complex legal and financial process that can have significant consequences for all parties involved. It's important to seek professional legal and financial advice when considering winding up a company.
1. Global &
US Patents
ASHLEY SLOAT, Ph.D.
May 12, 2021
This presentation is for information purposes only and does not
constitute legal advice.
2. $34 bn
AI-powered tools
market will exceed
$34 billion by 2025
20.4%
Wearable medical
device will grow 20.4%
CAGR by 2025
$5.1 bn
Medical virtual
reality will reach
$5.1 billion by 2025
Stats: TechAhead Team 4/10/21 & Rebecca Bellan 11/25/20
3. The value of a patent
• Goal: Maximize use of funding, grow, and protect your IP from
being copied.
• Patents are the strongest form of protection and one of the best
possible returns on investment.
”Are patents signals for the IPO market? An EU–US comparison for the software industry.” 17 September 2012
$338,000
Median portfolio value
with
1 issued
patent
$1.1 MM
Avg valuation
per patent in software
co
IPOs
35X
higher growth for
companies that
apply for patents
4. Digital Health is Fast forwarding while Software is
Legging Behind
Software Patenting
Digital Health
5. ML Patent Families grew by an average of 26% annually
between 2011 and 2016
Machine Learning
WIPO Technology Trends 2019: AI
10. Overview
• U.S. vs. International Filing Strategies
• Protecting Digital Health Innovations
• FDA and Patent Term Adjustment
11. In exchange for a limited monopoly of 20 years, an inventor must disclose her
invention with such particularity as to enable one of skill in the art to make and
use the invention, and therefore build upon the invention, to promote the
progress of the useful arts.
12. Why Startups File Patents
• Stimulate investment or acquisition
• Deter patent infringement lawsuit
• Carve out contribution to partnership
13. First (Inventor) to File
B WINS!
File early and often!
A invents
B invents
B files A files
14. Paths to Filing a Patent
Provisional Nonprovisional International
15. Paths to Filing a Patent
Provisional Nonprovisional * International App
Nonprovisional*
and/or
International App
International App
1 yr.
1 yr.
Country Selection * Country Selection * Country Selection *
1.5 yr.
1.5 yr.
2.5 yr.
16. Things to do before filing
• Publicly disclose your patent–ready invention
• Sell or offer for sale your technology
• Respond to an RFP if the technology is patent-ready
• But, But, But... if you did:
• The U.S. has a one-year grace period
• Grace period does not necessarily extend to international filings
17. How long does it take to get a U.S. patent?
Accelerated Examination
Typical Prosecution
Patent Prosecution Highway
Prioritized Examination (TrackOne)
• If claim(s) allowed in another patent office,
can fast track in US
• Petition: pre-exam search and report to
argue patentability
• Pay extra for final disposition in one year
18. How long does it take to get a U.S. patent?
Accelerated Examination 0.5-1.25 yrs.
Typical Prosecution 2-5 yrs.
Patent Prosecution Highway 1-1.5 yrs.
Prioritized Examination (TrackOne) 1 yr.
$$$
$$
$
19. What is patentable?
• Four categories: process, machine, manufacture, composition of matter
• However… the courts have long held that there are implicit exceptions:
• Laws of nature
• Natural phenomena
• Abstract ideas
21. Other Requirements for Patentability
• Novelty: no one reference discloses all the claimed features
• Inventive Step: no one or more reference, explicitly or inherently, discloses all the claimed
features
• Sufficiency: does the patent disclosure reasonably convey to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date
• Enablement: is the invention described in such a way that it allows one skilled in the art to
make and use the invention without undue experimentation
24. Method of Treatment
• Article 53(c) EPC: “European patents shall not be granted in respect of …
methods for treatment of the human or animal body by surgery or therapy
and diagnostic methods practised on the human or animal body”.
• Allowed in U.S. and Australia
• Not allowed in most other countries (e.g., Japan, China, Canada)
26. What to do when claiming Software
• Don’t recite what it does
Instead: claim what it is
• Don’t claim the intended goal
Instead: Claim how the goal is achieved
• Don’t claim it in such a way that it could be performed in the mind
Instead: Claim technical solution for technical problem
27. What TO DO when claiming Software
• Claim features that contribute to an identified technological
improvement
• Integrate any abstract ideas into practical application(s) of the
software
• Recite, with particularity, features that perform the intended function
28. For AI/ML Innovations…
• Core vs. Applied ML
• In which feature(s) does the invention actually reside?
• In the training process?
• In the application?
• In the device?
• In the ML/AI structure itself?
• Generic recitation of an ML/AI algorithm is not enough for the invention to
be deemed patentable subject matter
30. Specific device coupled with software…
• Integrates into a practical application
• Takes it “out of the mind” for the judicial exception analysis
• Reduces the likelihood of pre-emption – gives you “something
more”
32. AI as an Inventor?
• 2 European Patent Apps listed “DABUS” as the inventor
• European Patent Convention (EPC) does not explicitly prohibit
protection for autonomous machine inventions
• EPO practice is intended to prevent company inventorship
Lessons from Europe
33. EPC: Designation of Inventor
• Annex: The legal framework of the EPC provides for natural persons, legal persons and
bodies equivalent to legal persons…The EPC does not provide for non-persons…a clear
legislative understanding that the inventor is a natural person.
• Rationale: AI systems or machines have at present no rights because they have no legal
personality comparable to natural or legal persons.
• Holding: application is refused with Article 90(5) EPC since the designation of inventor
does not meet the requirements of Article 81 and Rule 19 EPC
34. IP5 Expert Round Table on AI
• China, Japan, Korea, Europe, and USA
B. Inventorship/ownership
4. All IP5 jurisdictions require that the inventor is a human being.
5. All IP5 Offices acknowledge there may be certain difficulties for patent offices to
determine whether a particular invention has been made by a human or a
machine. Nonetheless, all IP5 jurisdictions require that the inventor be a natural
person…
“Report from the IP5 expert round table on artificial intelligence.” Munich, 31 October 2018.
35. Additional IP Considerations
• Design patents for device ornamentation, GUIs
• Trademarks for slogans, branding
• Trade secret for innovations that are not patent eligible or not
ready for patenting
• Copyright for unique software code expressions
36. FDA Digital Health Software Precertification Program
• Provide data so that FDA can establish regulatory framework
• Currently available for Software as a Medical Device (SaMD)
• “Software intended to be used for one or more medical purposes that perform these
purposes without being part of a hardware medical device”
• Companies like Apple, Fitbit, J&J, Pear Therapeutics, Roche, Samsung,
Tidepool, Verily were selected
• Will eventually extend to Software in a Medical Device (SiMD)
37. Proposed Key Components of a Future Pre-Cert Program
Organization-level
analysis
Product-level
analysis
Go-to-market
Product
Lifecycle
Excellence
Appraisal
Review
Determination
Streamlined
Review (if needed)
verify safety,
effectiveness,
and performance
verify culture of quality
and org excellence
38. Patent Term Extension for Digital Health
• Enables the patent owners of certain human drugs, medical devices, and other
products to restore some patent lost while waiting on government approval
• Currently, PTE only available for Class III Medical Devices
• Most digital health devices are either Class I or Class II
• As digital health becomes more pervasive and intersects more with patient care, more
may become Class III
39. • File before you sell or publicly disclose
• Digital Health Innovations are protectable through various mechanisms –
including the patent office – just be specific
• FDA pre-cert program may provide a regulatory pathway for digital health
eventually
• Currently, no patent term extension for devices that are not Class III
Take-A-Ways
40. Questions or Comments?
Contact us!
ashley@aurorapatents.com
(650) 380-6913
aurorapatents.com
@AuroraPatents
New podcast @ patentlystrategic.buzzsprout.com
43. Patentability vs. Freedom-To-Operate
• Patentability: others are excluded from making, using, offering for sale,
selling, or importing your invention into the United States
• Freedom-To-Operate: you are not excluded from making, using, selling, or
importing your invention into the United States
47. The
On-Sale
Bar
May not constitute offer for
sale
• Advertising a product not yet developed
• Pre-announcing a product
• Transferring technical knowledge about
a process – since requires recipient to
develop the product itself
• Manufacturing agreement
• Inventor maintains control in
“experimental” use
May constitute an offer for sale • Licensing agreements
• Performance of services related to a
product (providing reports)
• Providing detailed technical drawings to
a potential licensee
• Unaccepted or cancelled orders
• Secret sales where the details of the
invention are not made public
48. TRIPS Agreement
• Agreement on Trade-related Aspects of Intellectual Property Rights – 1994
• Compulsory License: In Article 31 allows governments to order domestic
manufacturers to make a patented product without permission from the
patent holder - compulsory licensing
• IP waiver: simply asks that countries be exempt from the provisions of TRIPS
that require countries to protect and enforce patent rights to COVID-19
treatments and vaccines
49. Creating a Vaccine Requires more than a Patent
• Complex Manufacturing facilities and processes
• Complex testing processes
• Packaging requires hundreds of thousands of empty vials to be washed and
sterilized
• Packaging requires high speed visual inspection, e.g., 100 photos of each
vial
• Vials need to maintained at ideal temperature otherwise risk degradation of
mRNA in vaccines
• Distribution and logistics are also come into play
50. Result
• Fed. Cir.: “Weighing these factors together, we conclude that Google’s use of the
declaring code and SSO of the 37 API packages was not fair as a matter of law.”
• SC Majority: “Google reimplemented a user interface, taking only what was
needed to allow users to put their accrued talents to work in a new and
transformative program, Google’s copying…was a fair use of that material as a
matter of law.”
• SC Minority: “three of the four statutory fair-use factors weigh decidedly against
Google. The nature of the copyrighted work—the sole factor possibly favoring
Google—cannot by itself support a determination of fair use”
Limited copying of declaring code so that programmers can create new implementing
code is an act of fair-use as a matter of law
51. Ruling Outcomes
• Things have really been heating up at the intersection of software and IP
law for some time.
• The alternate case outcome had tremendous potential for a devastating
impact on the software industry and its consumers.
• Just a shame that it had to come at the cost of a SCOTUS ruling that
really wasn't the best day for case law. ¯_(ツ)_/¯
52. Pending Legislation
• STRONGER Patents Act. Keeps resurfacing every few years to mixed
reviews.
• Abolishing judicial exceptions. Senators Coons and Tillis proposing to
restore patent eligibility to a broader class of inventions, making
anything that provides a “specific and practical utility in any field of
technology by human intervention” eligible for patent protection.
Editor's Notes
Digital health devices are rapidly becoming a key sector of the medical device space. This revolution begs us to understand IP and licensing issues that are being presented as a result of this newly emerging field. In this webinar, we will explore how digital health looks today and what are some changes we can expect in the near to distant future.
compound annual growth rate
* Bloomberg Law: a patent portfolio with only one issued patent has a median price of $338,000
* 2012 Study: Software companies that IPO raise (on average) an extra $1.1 million in the US per each additional patent application
A 2016 MIT study found that startup growth is 35 times higher for companies that apply for patents.
Another recent study concluded that for digital health startups that eventually IPO, valuation can reach over $1 million per filed software patent application.
So, market growth is red hot. Patents provide great protection, predict startup growth, and can yield incredible ROI. Sounds great, you say. So what’s the problem?
What can you now do given everything
Josh notes: we should figure out how to tweak the colors used in Design Ideas. These would look better with white backgrounds
The labels are also going to be very hard to read
Josh notes: See prior re: background color and label size
Alice vs. CLS Bank – electronic escrow service
Electric Power Group LLC v. Alstom SA found that data gathering, analysis and display is an abstract idea,
US vs. International filing strategies
Patent Prosecution HighwayGrace periods for disclosure (when they do and do not apply)
Patenting of methods of treatment
Difficulties and solutions for those difficulties in patenting "software" innovations (as they relate to digital health and ML/AI)
Defensively – deter competitor
Offensively – stop competitor from ripping off the tech
Attract investment
Bolster reputation
A 2016 MIT study found that startup growth is 35 times higher for companies that apply for patents.
Partnership bullet
As one example, Amazon recently partnered with 37 healthcare startups working on innovations to improve operational and clinical effectiveness.
Even if you are a foreign company, you can file a provisional in the US
This time does away at your 20 year patent term – strategies to get some time back
Korea
PPH offices: Australia, Canada, EPO, China, Japan, Korea, Singapore
Accelerated exam: search claimed invention, search all forms of prior art, provide text-search logic, show support in spec and drawings, claim chart, show how wach claim is patentable over each reference
That all changed in 2012, however, when the U.S. Supreme Court broadened the scope of the law of nature exception regarding patent eligibility. In a case called Mayo Collaborative Services v. Prometheus Laboratories, the Supreme Court looked at an invention related to a method for optimizing treatment of an immune-mediated gastrointestinal disorder.
Assuming novelty and inventive step are already there
Notes – include idea that you can protect incremental improvements to your own technology
In US, Diagnostic method only reciting an indication to change dosage is ineligible for patent protection
The policy behind the prohibition of patenting methods of medical treatment are based, at least in part, on the public interest in physicians having unbridled access to advanced surgical and other medical techniques in a timely manner. Opponents argue that the physician should not fear patent infringement when caring for patents, and the practitioner should also be free from any conflicts of interest that may be associated with licensing a patent directed to one of several potential treatment modalities.
Assuming novelty and inventive step are already there
Josh Notes: I lie this
Josh notes: I feel like this slide and the next might need spoken examples. Too much in the abstract w/o
1-2 examples
As discussed in Part I of this series, the predictive capabilities of a trained model are captured by the statistical weighting values embedded in the model. Even if these numerical weightings are explicitly disclosed in a patent, they are unlikely to support the full scope a claimed invention because such numerical values have little meaning to even experts and cannot be reproduced due to the randomness associated with the optimizations performed by the training algorithm.
a thorough and detailed description of the training data, training procedures, model output results, and system integration of the trained model must serve as the basis for demonstrating that the inventor had possession of the trained model, and for enabling one of ordinary skill in the art to make or use the trained model without undue experimentation.
Assuming novelty and inventive step are already there
Josh Notes: I lie this
Assuming novelty and inventive step are already there
Josh Notes: I lie this
A first artificial neural network, made up of a series of smaller neural networks, that has been trained with general information from various knowledge domains. This first network generates novel ideas in response to self-perturbations of connection weights between neurons and component neural nets therein. A second “critic” artificial neural network monitors the first neural network for new ideas and identifies those ideas that are sufficiently novel compared to the machine’s pre-existing knowledge base. The critic net also generates an effective response that in turn injects/retracts perturbations to selectively form and ripen ideas having the most novelty, utility, or value.
Article 81: The European patent application shall designate the inventor. If the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the European patent.
Rule 19(1): The request for grant of a European patent shall contain the designation of the inventor. However, if the applicant is not the inventor or is not the sole inventor, the designation shall be filed in a separate document. The designation shall state the family name, given names and full address of the inventor…
Copyright – can’t be one of only a few ways of writing the code – will weigh against copyright
Total Product Lifecycle Approach of the Software Precertification Program
CLASS 1
The US FDA defines Class I devices as devices which are "not intended for use in supporting or sustaining life or of substantial importance in preventing impairment to human health, and they may not present a potential unreasonable risk of illness or injury."
CLASS 2
The FDA defines Class II devices as “devices for which general controls are insufficient to provide reasonable assurance of the safety and effectiveness of the device.”
Link between statements in spec and claims
EDISON
PIPKIN
countries to engage in compulsory licensing if there is a “case of a national emergency or other circumstances of extreme urgency,” or in cases of “public non-commercial use.”
The efficacy of both of these proposals turns on a country’s internal technological capabilities to recreate and administer the vaccine.
Many vaccine makers rely on trade secrets
Now, we are told, “transformative” simply means—at least for computer code—a use that will help others “create new products.”
Now, we are told, “transformative” simply means—at least for computer code—a use that will help others “create new products.”