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
Board games are games that are played on a flat surface or board, usually made of cardboard or wood, and often have pieces or tokens that are moved around the board to represent game elements such as players, resources, or territory. Board games can be played by two or more players and often involve strategy, skill, luck, or a combination of these elements. Some examples of popular board games include Monopoly, Chess, Risk, Scrabble, and Settlers of Catan. Board games can be played for fun, as a hobby, or even competitively at a professional level.
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
Board games are games that are played on a flat surface or board, usually made of cardboard or wood, and often have pieces or tokens that are moved around the board to represent game elements such as players, resources, or territory. Board games can be played by two or more players and often involve strategy, skill, luck, or a combination of these elements. Some examples of popular board games include Monopoly, Chess, Risk, Scrabble, and Settlers of Catan. Board games can be played for fun, as a hobby, or even competitively at a professional level.
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
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.
** Follow Aurora Patents **
⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/
⦿ Listen https://www.aurorapatents.com/patently-strategic-podcast.html:
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
Decrypting Software Patents: Key Insights for IP SuccessAurora Consulting
Software is eating the world. It’s central to so much of today’s innovation, but in terms of patenting, it’s socially controversial and legally unsettled. We’ll discuss the dynamics at the core of both and what you need to know about the options for protecting your software-based innovation. We’ll take an international look at how the "world" views AI/ML innovations and also hit on particulars for SaaS and open source software considerations. From an implementation perspective, we’ll look at managing code ownership when outsourcing and how iterative agile methodology can impact your patent strategy.
Patent Searching: Sleuthing Your Way to Stronger PatentsAurora Consulting
You have an idea and you’d like to protect it. But can you? Is it novel? Non-obvious? Would you eventually be able to license or enforce your patent down the road? Who else is competing in this area and where’s the whitespace? If you get the patent, can you freely produce and sell the idea, without the costly risk of infringement litigation?
These questions and the quest for their answers unfold like a detective mystery. The sheer magnitude of source material to sift through is overwhelming. 172 countries with patent systems, over 11 million active patents across the globe, millions more published, but not granted, topped off with endless volumes of non-patent literature. A multitude of keywords, synonyms, and domain specific languages. Countless databases. A cacophony of clues, mixed with an abundance of superficially convincing evidence that could ultimately prove irrelevant. An overly litigious villain competitor lurking around the corner. And the greater powers of observation and the superior mind of a detective to cut through it all and make plain the answers to our untrained eyes!
Shelley Couturier, Patent Strategist, Search Specialist, and Chief Sleuth here at Aurora, leads an exploration into the low cost, high return world of patent searching. The domain is complex, but the efforts have one of the highest possible ROIs of anything you can do, especially in the early stages of your patent journey. With some practical guidance and a little help, patent searching will save you significant time, money, and effort in the long run, all while yielding a much stronger patent overall. I assure you, listening in will be a gift to future self.
Shelley shares:
* Why inventors and companies should have a professional search conducted
* Offensive and defensive search strategies for companies both big and small
* Patent search types and when they apply
* Strategies and tips learned over a decade of searching
* A guided sample invalidity search walkthrough
This presentation explores the types of prior art patent searches including:
* novelty and non-obviousness
* patentability
* freedom-to-operate
* landscape
* validity and invalidity
* state of the art
Podcast: https://patentlystrategic.buzzsprout.com/1734511/9086121-patent-searching-sleuthing-your-way-to-stronger-patents
Blog post: https://www.aurorapatents.com/blog/new-podcast-patent-searching
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.
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.
** Follow Aurora Patents **
⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/
⦿ Listen https://www.aurorapatents.com/patently-strategic-podcast.html:
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
Decrypting Software Patents: Key Insights for IP SuccessAurora Consulting
Software is eating the world. It’s central to so much of today’s innovation, but in terms of patenting, it’s socially controversial and legally unsettled. We’ll discuss the dynamics at the core of both and what you need to know about the options for protecting your software-based innovation. We’ll take an international look at how the "world" views AI/ML innovations and also hit on particulars for SaaS and open source software considerations. From an implementation perspective, we’ll look at managing code ownership when outsourcing and how iterative agile methodology can impact your patent strategy.
Patent Searching: Sleuthing Your Way to Stronger PatentsAurora Consulting
You have an idea and you’d like to protect it. But can you? Is it novel? Non-obvious? Would you eventually be able to license or enforce your patent down the road? Who else is competing in this area and where’s the whitespace? If you get the patent, can you freely produce and sell the idea, without the costly risk of infringement litigation?
These questions and the quest for their answers unfold like a detective mystery. The sheer magnitude of source material to sift through is overwhelming. 172 countries with patent systems, over 11 million active patents across the globe, millions more published, but not granted, topped off with endless volumes of non-patent literature. A multitude of keywords, synonyms, and domain specific languages. Countless databases. A cacophony of clues, mixed with an abundance of superficially convincing evidence that could ultimately prove irrelevant. An overly litigious villain competitor lurking around the corner. And the greater powers of observation and the superior mind of a detective to cut through it all and make plain the answers to our untrained eyes!
Shelley Couturier, Patent Strategist, Search Specialist, and Chief Sleuth here at Aurora, leads an exploration into the low cost, high return world of patent searching. The domain is complex, but the efforts have one of the highest possible ROIs of anything you can do, especially in the early stages of your patent journey. With some practical guidance and a little help, patent searching will save you significant time, money, and effort in the long run, all while yielding a much stronger patent overall. I assure you, listening in will be a gift to future self.
Shelley shares:
* Why inventors and companies should have a professional search conducted
* Offensive and defensive search strategies for companies both big and small
* Patent search types and when they apply
* Strategies and tips learned over a decade of searching
* A guided sample invalidity search walkthrough
This presentation explores the types of prior art patent searches including:
* novelty and non-obviousness
* patentability
* freedom-to-operate
* landscape
* validity and invalidity
* state of the art
Podcast: https://patentlystrategic.buzzsprout.com/1734511/9086121-patent-searching-sleuthing-your-way-to-stronger-patents
Blog post: https://www.aurorapatents.com/blog/new-podcast-patent-searching
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.
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.
Car Accident Injury Do I Have a Case....Knowyourright
Every year, thousands of Minnesotans are injured in car accidents. These injuries can be severe – even life-changing. Under Minnesota law, you can pursue compensation through a personal injury lawsuit.
How to Obtain Permanent Residency in the NetherlandsBridgeWest.eu
You can rely on our assistance if you are ready to apply for permanent residency. Find out more at: https://immigration-netherlands.com/obtain-a-permanent-residence-permit-in-the-netherlands/.
1. Jackrel Consulting, Inc.
Patent Agent, Expert Witness and
Consulting Services for companies
and individual inventors.
Patenting Games – Part 1
Physical Games
3. Subject Matter Eligibility
• 35 U.S.C. §101
• Machines, articles of manufacture, processes, and compositions of matter (including new chemical
compounds) are patentable inventions.
• Laws of nature, natural phenomena, and abstract ideas are not.
• Abstract Ideas can be grouped: Mathematical Concepts, Mental Processes, & Organizing Human Activity
• Examples
• Planet Bingo v. VKGS (Fed. Cir. 2014) – computer-aided bingo games à rejected
• “directed to the abstract idea of solving a tampering problem and… other security risks during bingo ticket purchases”
• Similar to abstract ideas in ‘Bilski’ and ‘Alice’, and no inventive concept sufficient to transform
• In re Smith (Fed. Cir. 2016) – method of playing a wagering card game à rejected
• Similar to the method of mitigating financial settlement risks in ‘Bilski’ and ‘Alice’
• In re Marco Guldenaar (Fed. Cir. 2018) – a wagering dice game à rejected
• Three dice with different faces marked, and wagering on an outcome
• Method of playing fell within “organizing human activity” and was an abstract idea
• Dice claims – printed matter doctrine. PTAB affirmed the PTO’s rejections.”
5
https://www.theiplawblog.com/2019/04/articles/intellectual-property-litigation/are-rules-for-playing-a-game-patentable/
chrome-extension://efaidnbmnnnibpcajpcglclefindmkaj/https://www.bhfs.com/Templates/media/files/insights/Cudnik_CGi%20Magazine.pdf
4. Examples
Board games / physical games
• Monopoly — Patent issued in 1935
• Battleship — Patented in 1935 under the title
“Game Board”
• Scrabble – Patented in 1956
• Legos – Patented in 1961
• Rock'em Sock'em Robots — Patented in 1966
• Twister — Patented in 1969
• Simon — Patented in 1979
• Rubik's Cube — Patent granted in 1983
• Horse racing game -- 1993
• Construction board game -- 1994
Video Games
• Magnavox Odyssey (early game console) -- 1968
• Atari 2600 joystick -- 1980
• First-person-shooter (FPS) (id Software) -- 1993
• Kinect sensor for Xbox 360 (PrimeSense) -- 2011
• Nemesis game mechanic (Warner Bros) -- 2021
6
5. Apparatus and method of playing a board
game simulating horse racing and
wagering
1. A board game simulating horse racing and betting thereon, said board game including:
a game board having a race course and infield portion thereon;
said race course comprising a plurality of concentric tracks and including a start/finish line thereacross;
said concentric tracks each including equal numbers of playing positions, chance positions, and odds
positions;
said infield portion including win, place and show positions, a plurality of betting spaces equal in number to
said plurality of concentric tracks, and chance card and odds card positions;
a plurality of player position markers equal in number to said plurality of concentric tracks and marked
accordingly;
a plurality of betting chips of different values;
simulated currency comprising a plurality of bills of different denominations;
a plurality of betting tickets corresponding to said win, place and show positions and said plurality of player
position markers;
a plurality of chance cards and a plurality of odds cards; and
chance determination means, whereby
bets are placed by the players of said board game using said chips, tickets and simulated currency and each of
said player position markers is advanced along a corresponding one of said concentric tracks according to said
chance determination means to establish win, place and show positions to determine winning players.
7
6. Apparatus and method of playing a board
game simulating horse racing and
wagering
8. A method of playing a board game simulating horse racing and betting thereon, said method comprising the
following steps:
providing a game apparatus including a game board having a race course comprising a plurality of concentric
tracks with the concentric tracks each including an equal number of playing positions, chance positions, odds
positions, and a start/finish line thereacross, an infield portion, a plurality of betting positions, win, place, and
show positions, and chance and odds card positions thereon, a plurality of player position markers
corresponding in number to the plurality of concentric tracks and marked accordingly, a plurality of betting
chips of different values, simulated currency comprising a plurality of bills of different denominations, a
plurality of betting tickets corresponding to the win, place and show positions of the board and the plurality of
player position markers, a plurality of chance cards, a plurality of odds cards and chance determination means;
determining the order of play by the players of the game, selecting a person to act as banker and distributing the simulated currency to the players;
placing the player position markers on their corresponding tracks at the start/finish line and the chance cards and odds cards on the appropriate chance
card position and odds card position;
turning a topmost odds card face up and thereby determining the initial odds for the bets of the game;
placing bets on the player position markers corresponding to the tracks to win, place or show, placing chips corresponding to those bets in the
corresponding betting positions on the board and holding tickets corresponding to the bets placed;
tossing the dice and advancing a player position marker along a first of the plurality of tracks in accordance with the advance indicated by the dice, and
proceeding according to one of the three following steps;
landing upon a chance position, drawing a chance card, turning the chance card face up on the board and acting according to the instructions on the
chance card;
landing upon an odds position, drawing an odds card, turning the odds card face up on the board and adjusting the odds affecting the bets of the game
accordingly;
landing upon a playing position and allowing a subsequent player position marker to be played;
continuing in accordance with the above steps for subsequent players until three player position markers have crossed the start/finish line, thereby
determining win, place and show positions for a single race; and
collecting the tickets from the players and paying each player with the simulated currency in accordance with winning tickets of the players, the final
odds of the game, and the amount bet by each player.
8
7. Construction board game with chance
device
1. A board game to be played by more than one person, the winner of said game
being the first person to fill an identified playing area on a board with a plurality of
playing pieces, said board game comprising:
(a) a board having a playing surface with said identified playing area thereon, said
playing area being sub-divided into a plurality of identical units, each unit being of a
basic geometric shape;
(b) a plurality of playing pieces of different geometric configurations, each of said
geometric configurations being formed of a whole number multiple of said basic
geometric shape and at least some of said different configurations being formed of
different whole number multiples of said basic geometric shape, at least some of said
plurality of playing pieces being receivable on the playing surface for filling said
playing area, each playing piece received on the playing surface overlying a number
of the identical units equal to the whole number multiple of the basic geometric
shape associated with the geometric configuration of said each playing piece; and
(c) at least one die including a plurality of surfaces, each surface of each die including
indicia for identifying a geometric configuration of a playing piece to be placed on the
playing area, said indicia being a whole number multiple of said basic geometric
shape to thereby identify a geometric configuration, the indicia on each surface of
each die identifying a geometric configuration which is different from the geometric
configuration identified by the indicia on every other surface of the same die.
9
8. Construction board game with chance
device
40. A method of playing a board game by at least two players, the object of which is
to be the first player to completely fill a playing area on a board with a plurality of
playing pieces, including the steps of:
(a) providing a board having a playing area for each player, each of said playing areas
being adapted to be filled by a plurality of playing pieces;
(b) providing a plurality of playing pieces of different geometric configurations, each
of said configurations being a whole number multiple of a basic geometric shape and
at least some of said different configurations being formed of different whole number
multiples of said basic geometric shape. [sic]
(c) providing at least one indicating means including indicia for identifying each of
said different geometric configurations and being actuatable for randomly identifying
at least one geometric configuration;
the game being played by each player:
actuating said indicating means for randomly identifying one or more geometric
configurations in the form of a specific whole number multiple of said basic
geometric shape; and
placing playing pieces having randomly identified geometric configurations on the
player's playing area until said player's playing area is filled by playing pieces.
10
9. Magnavox Odyssey, Atari, & Intellivision
(Mattel)
1. In combination with a standard television receiver, apparatus for generating signals
representing a symbol to be displayed on the screen of said television receiver, comprising:
means for generating sync signals;
means for generating a first sawtooth wave;
means for generating a second sawtooth wave;
means coupled to said first sawtooth wave generating means for generating first current pulses
proportional to a predetermined slice of said first sawtooth wave;
including a first slicer having first and second diodes connected back-to-back with one junction
thereof coupled to said first sawtooth wave generating means, a capacitor coupled from the
other junction to ground and means for receiving a control signal at said other junction, and first
means for differentiating the output from said first slicer;
means coupled to said second sawtooth wave generating means for generating second current
pulses proportional to a predetermined slice of said second sawtooth wave;
including a second slicer having third and fourth diodes connected back-to-back with one
junction thereof coupled to said second sawtooth wave generating means, a capacitor coupled
from the other junction to ground and means for receiving a control signal at said other junction,
and second means for differentiating the output from said second slicer;
a coincidence gate coupled to said first and second current pulse generating means; means for
summing the output from said coincidence gate and said sync signals;
an RF oscillator;
means for modulating the output of said RF oscillator with said summed signal; and means for
applying said modulated signal to said receiver.
11
11. Jackrel Consulting, Inc.
Patent Agent, Expert Witness and
Consulting Services for companies
and individual inventors.
Patenting Games – Part 2
Video Games
12. 14
Video Games:
• are electronic games that require interaction with
a display device or user interface
• often combine hardware and software innovation
• sometimes function in an undetectable manner
13. 15
Video Games: Patentable Concepts
Hardware
• Controllers
• Viewing devices/headsets
• Video generation devices/set
top box/consoles
• Proximity sensors, sensors
• Optics/Computer vision
Design
• UI/UX
• Animation stills/transitions
Software
• (Video)game mechanics
• Interactive elements/Gameplay
elements
• Multi-player interactions/views
• Graphics/animations
• Methods/Directional aspects
• VR/AR/XR/MR
• Compression Techniques
• Streaming/Broadcasting Architectures
• Hosting Architectures
• Techniques to use game to improve X
and…Interactions amongst devices and software
14. 16
Hierarchy of Game Elements:
https://medium.com/creative-culture-my/game-elements-components-mechanics-and-dynamics-what-are-they-80c0e64d6164
15. 17
Example Game Element: Dialog Wheel
https://patents.google.com/patent/US20070226648A1/en
1. A graphical interface displayed during operation of a
program, enabling a program user to participate in a
simulated conversation with the program, the graphical
interface comprising:
a choice indicator;
the choice indicator having a plurality of selectable
slots, each of the slots providing a class of dialog choice
when selected;
wherein the graphical interface is consistent as to the
position of dialog classes throughout at least a segment of
the program.
2. The graphical interface of claim 1 comprising a radial
choice indicator.
16. 18
Example Game Element: Sanity Meter
https://patents.google.com/patent/US6935954B2/en
1. A method of operating a video game
including a game character controlled by a
player, the method comprising:
(a) setting a sanity level of the game
character;
(b) modifying the sanity level of the game,
character during game play according to
occurrences in the game, wherein a
modifying amount of is determined based
on a character reaction and an amount of
character preparation; and
(c) controlling game play according to the
sanity level of the game character, game
play being controlled at least by varying
game effects according to the game
character sanity level.
17. 19
Example Game Element: Wireless
Controller w/ Sleep function
https://patents.google.com/patent/US6280327B1/en
1. A wireless control unit for converting a video game system having a console with
game controller ports…comprising:
a game controller having a plurality of user operable switches for producing a
plurality of game information signals...and a sleep function for powering down said
game controller in response to detected inactivity of said plurality of user operable
switches for a period of time; and
a console interface connected to the game console via at least one of the game
controller ports and having wireless receiver circuitry for receiving the encoded bit
stream representing the game information…
18. Jackrel Consulting, Inc.
Patent Agent, Expert Witness and
Consulting Services for companies
and individual inventors.
Thank You
20