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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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.
Pitfalls to be Aware of When Working with Inventions Funded Through Governmen...Workman Nydegger
Sometimes a client’s technology is funded by a government grant, e.g., through a federal agency. Complex provisions governing ownership, disclosure, election, patent filing, and other requirements for such technology are governed by the Bayh-Dole act of 1980 (35 U.S.C. §200-212). Some of the “strings” imposed and governed by Bayh-Dole that are particularly relevant to patent practitioners include:
• disclosure of developed inventions;
• election of ownership to the technology by the contractor;
• compulsory government license that attaches to developed technology;
• possibility of U.S. Government exercise of “March-In Rights”;
• requirements for U.S. manufacture;
• issues relative to protecting trade secrets of the contractor.
In addition to the need to comply with the many provisions of Bayh-Dole, where government funded inventions are developed, export provisions under ITAR/EAR may also be applicable. Such ITAR and EAR export control regulations cover not only articles, software, and services that may be listed on either the US Munitions List (for ITAR) or the Commerce Control List (for EAR), but also cover technical data, such as that used by patent practitioners in conducting a patentability search or preparing a patent application for the contractor.
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.
Five major differences between IPRs and invalidation proceedingsAlexandraPuYang
Alexandra Yang of Fangda Partners examines the differences and similarities between IPRs in the U.S. and invalidation proceedings before the CNIPA to give U.S. practitioners and clients a clear picture of the patent invalidation proceedings in China.
What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an in
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.
Pitfalls to be Aware of When Working with Inventions Funded Through Governmen...Workman Nydegger
Sometimes a client’s technology is funded by a government grant, e.g., through a federal agency. Complex provisions governing ownership, disclosure, election, patent filing, and other requirements for such technology are governed by the Bayh-Dole act of 1980 (35 U.S.C. §200-212). Some of the “strings” imposed and governed by Bayh-Dole that are particularly relevant to patent practitioners include:
• disclosure of developed inventions;
• election of ownership to the technology by the contractor;
• compulsory government license that attaches to developed technology;
• possibility of U.S. Government exercise of “March-In Rights”;
• requirements for U.S. manufacture;
• issues relative to protecting trade secrets of the contractor.
In addition to the need to comply with the many provisions of Bayh-Dole, where government funded inventions are developed, export provisions under ITAR/EAR may also be applicable. Such ITAR and EAR export control regulations cover not only articles, software, and services that may be listed on either the US Munitions List (for ITAR) or the Commerce Control List (for EAR), but also cover technical data, such as that used by patent practitioners in conducting a patentability search or preparing a patent application for the contractor.
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.
Five major differences between IPRs and invalidation proceedingsAlexandraPuYang
Alexandra Yang of Fangda Partners examines the differences and similarities between IPRs in the U.S. and invalidation proceedings before the CNIPA to give U.S. practitioners and clients a clear picture of the patent invalidation proceedings in China.
What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a What is a patent? A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problemWhat is a patent? A patent is an exclusive right granted for an in
PGRT Basics (Series: IP 301 Post-Grant Review Trials 2020)Financial Poise
This segment will discuss the statutory and procedural background of post-grant review proceedings. It will discuss the types of proceedings available and provide a high-level discussion of how the proceedings are conducted.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/pgrt-basics-2020/
Intellectual Property for Accountants. This deck is the launch presentation for the Nicholas Weston White Paper, “Definitive Guide to Intellectual Property for Accountants” (2015 Edition) held at William Buck in Melbourne on 25 November 2014. The presentation deck is not intended as a substitute for the White Paper which contains sections on Protecting intangible assets, Patents, Trade Marks, Domain Names, Registered Designs, Copyright, Licensing and royalty rates, Valuing IP rights, Tax implications and benefits (including Capital gains tax (CGT) and Income tax, Trade mark taxation, Tax deductions, Withholding taxes, GST treatment, the R&D Tax Incentive, Stamp Duty in each State and Territory), the Personal Properties Securities Act 2009 (PPSA), using the Freedom of Information Act 1982 (FOI) in the context of IP, Details Oppositions, Appeals and Injunctions, and has some handy ATO References. It also contains a Test of your IP awareness and a summary with Four things to remember about IP for Accountants.
The event was attended by Directors, Associates and Senior Managers from all William Buck divisions - Audit, Business Advisory, Tax, Corporate Advisory, Wealth Advisory.
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Discovery District
Discover why intellectual property is a critical asset to your company. Within the context of current economic uncertainty, this series covers cost-effective strategies for securing IP and patent rights to enhance the market value and competitive position of your life sciences or ICE company.
Covers legal aspects of Patenting in India.Explains the difference between Patent, Trademark and Copyright. Differentiates between patentable and non patentable inventions and explains the process of obtaining a patent, with case studies and examples.
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.
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
PGRT Basics (Series: IP 301 Post-Grant Review Trials 2020)Financial Poise
This segment will discuss the statutory and procedural background of post-grant review proceedings. It will discuss the types of proceedings available and provide a high-level discussion of how the proceedings are conducted.
To view the accompanying webinar, go to: https://www.financialpoise.com/financial-poise-webinars/pgrt-basics-2020/
Intellectual Property for Accountants. This deck is the launch presentation for the Nicholas Weston White Paper, “Definitive Guide to Intellectual Property for Accountants” (2015 Edition) held at William Buck in Melbourne on 25 November 2014. The presentation deck is not intended as a substitute for the White Paper which contains sections on Protecting intangible assets, Patents, Trade Marks, Domain Names, Registered Designs, Copyright, Licensing and royalty rates, Valuing IP rights, Tax implications and benefits (including Capital gains tax (CGT) and Income tax, Trade mark taxation, Tax deductions, Withholding taxes, GST treatment, the R&D Tax Incentive, Stamp Duty in each State and Territory), the Personal Properties Securities Act 2009 (PPSA), using the Freedom of Information Act 1982 (FOI) in the context of IP, Details Oppositions, Appeals and Injunctions, and has some handy ATO References. It also contains a Test of your IP awareness and a summary with Four things to remember about IP for Accountants.
The event was attended by Directors, Associates and Senior Managers from all William Buck divisions - Audit, Business Advisory, Tax, Corporate Advisory, Wealth Advisory.
MaRS Best Practices: IP Best Practices for Life Sciences Companies - Victoria...MaRS Discovery District
Discover why intellectual property is a critical asset to your company. Within the context of current economic uncertainty, this series covers cost-effective strategies for securing IP and patent rights to enhance the market value and competitive position of your life sciences or ICE company.
Covers legal aspects of Patenting in India.Explains the difference between Patent, Trademark and Copyright. Differentiates between patentable and non patentable inventions and explains the process of obtaining a patent, with case studies and examples.
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.
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.
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
Inventorship: Who should be listed as an inventor for a patent?Aurora Consulting
In the US especially, patents are granted to inventors. More often than not, that’s more than one person and the ideas themselves are fluid concepts that often evolve through many handoffs from initial conception through implementation and sometimes even throughout patent prosecution, but how do we determine who all should – and is legally required to be – named as an inventor?
In the constitutionally expressed interest of protecting inventors and the conception of their ideas, failure to include the right people can be a death sentence for a patent and grounds for invalidity.
Daniel Wright, Partnership Manager and Patent Strategist here at Aurora, leads a deep dive into the origins of inventorship, breaks down who is and isn’t eligible for inclusion as an inventor, and explains how improper inventorship could result in revoked patent rights.
Podcast: https://patentlystrategic.buzzsprout.com/1734511/9603758-inventorship-who-should-be-listed-as-an-inventor-for-a-patent
Blog post: https://www.aurorapatents.com/blog/new-podcast-inventorship
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When listening about building new Ventures, Marketplaces ideas are something very frequent. On this session we will discuss reasons why you should stay away from it :P , by sharing real stories and misconceptions around them. If you still insist to go for it however, you will at least get an idea of the important and critical strategies to optimize for success like Product, Business Development & Marketing, Operations :)
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Salma Karina Hayat is Conscious Digital Transformation Leader at Kudos | Empowering SMEs via CRM & Digital Automation | Award-Winning Entrepreneur & Philanthropist | Education & Homelessness Advocate
1. Government Grants and
Patent Rights: SBIR, STTR,
and Your IP
ASHLEY SLOAT | July 25, 2023
This presentation is for information purposes only and does not constitute legal advice.
2. Overview
•Bayh-Dole Act of 1980 and its provisions
•Types of grants for companies
•Invention reporting and protection
requirements
3. The Bayh-Dole Act of 1980
Senators Birch
Bayh and Bob Dole
at the U.S. Capitol
on Feb. 21, 1978.
“provides NIH funding recipients incentives to promote the utilization of
inventions conceived or reduced to practice (Subject Invention) in the
performance of federally supported research and development” Bayh-Dole Act
4. Definitions
• Subject Invention. any invention conceived or first actually reduced
to practice in the performance of work under a funding agreement
• Conception. Formation in the mind of inventor of a definite and
permanent idea of complete and operative invention; conception
and means of putting idea into practice
• First Actual Reduction to Practice. Embodiment or a performed
process meets every element of the claimed invention; and the
embodiment or process operated for its intended purpose.
5. In re Eddie L. King
• What constitutes first actual reduction to practice?
• Does the subject invention need to be tested to ensure it
functions for its intended purpose?
6. Ideal Innovations, Inc. v. United States, CFC 2021
• Patent apps filed by Ideal Innovations in 2006
• Ideal Innovations tested the material for impact in 2006 –
alleged “first actual reduction to practice”
• Court indicated this was a test of the armor, not of the invention
• Actual test was needed to determine whether prototype worked for
its intended purpose
• Ideal Innovations signed licensing agreement with U.S. in
2007
Reversed and Remanded
7. Bayh-Dole Provisions
1. Disclose each subject invention to the Federal agency within 2
months
2. Make a written election within two years after disclosure to
the Federal agency or within 60 days of any statutory period
3. Agree to file a patent application prior to any statutory bar
date and corresponding patent applications in U.S. within 1 yr.
and other countries within 10 mo. (both are extendable upon
request)
8. Bayh-Dole Provisions
4. For elected inventions, Federal agency shall have a
nonexclusive, nontransferrable, irrevocable, paid-up license to
practice any subject invention throughout the world
5. Federal agency to require periodic reporting on the
utilization of any subject invention
6. Obligation to include, in patent applications, a statement
specifying that the invention was made with Government
support and that the Government has certain rights in the
invention.
9. Subject Invention Reporting Timeline
Electronic Research Administration Communications Office
Report
Inventions
in iEdison
10. Gov’t Retains March-In Rights
Federal agency can require the contractor to an
assignee or exclusive licensee of a subject invention to
grant a nonexclusive, partially exclusive, or
exclusive license in any field of use to a responsible
applicant or applicants, upon terms that are reasonable
under the circumstances
11. March-In Rights
1. Practical Application. Effective steps were not taken to achieve practical
application of the subject invention in such field of use.
2. Health and Safety. Need to alleviate health or safety needs which are
not currently reasonably satisfied.
3. Public Use. Requirements set by agency are not reasonably satisfied.
4. Breach of Agreement. Licensee of the exclusive right to use or sell any
subject invention in the United States is in breach of its agreement
underBayh-Dole.
12. What types of grants are
applicable for our clients?
13. Small Business Technology Transfer (STTR) &
Small Business Innovation Research (SBIR)
STTR
• Stimulate scientific and
technological innovation
between small business
concerns and research
institutions
• 3 Phase structure
1. Feasibility
2. R&D
3. Commercialization (can’t
use STTR funds)
SBIR
• Stimulate technological
innovation in private sector,
for-profit institutions for ideas
that have potential for
commercialization
• 3 Phase structure
1. Feasibility
2. R&D
3. Commercialization (can’t
use SBIR funds)
14. Do SBIR/STTR Grants Cover IP Costs?
• Technical and Business Assistance (TABA) funds. May be
authorized for patent prosecution costs related to obtaining
U.S. patent protection for Subject Inventions of this award.
• $6,500 in Phase I
• $50,000 in Phase II
• Budget Location. Include patent costs in commercialization
assistance budget (“other direct costs”). Patent costs include
practitioner and USPTO fees.
15. Do SBIR/STTR Grants Cover IP Costs?
• Filings. USPTO related to provisional, PCT, non-provisional,
continuation, and continuation-in-part patent applications.
• Search. Freedom to operate, market analysis, competitor IP
landscape and products, searching costs may be allowable.
• Exclusions.
• Foreign related costs (e.g., foreign attorney, foreign patent office, or
translation fees).
• Licenses not allowable since typically not a required cost in
performance of the award.
16. SBIR/STTR Inventions vs. Data
• Patent it. Idea, concept, design or method visible to the
naked eye.
• Keep it Secret. Recorded or written technical information or
data developed under SBIR funding agreements.
Data/Information can be kept secret under a government’s
nondisclosure obligation. Only applies when it has been
written down. Fixed protection period of 20 years.
• Don’t Include privately funded data.
17. Advice for Gov’t Grant Recipients
• Mark your data. Can be marked in a Final Report.
• Report Subject Inventions. Report all inventions through
iEdison, not just patentable ones
• Track statutory bars. Report to your practitioner and agency
through iEdison.
• Understand U.S. Manufacturing requirements. Consult
agency early with questions.
18. Gov’t Grant Gotchyas
1. If hire subcontractor to perform some of the work,
any subject invention from the subcontractor
cannot be assigned to your company –
subcontractor retains ownership.
2. If subject invention is unelected at 2 years, then
gov’t receives title of invention.
3. No exclusive licenses, unless approved by NIH in
advance and is manufactured substantially in the
United States.