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​​Patently Strategic - Patent Strategy for Startups

Aurora Patent Consulting | Ashley Sloat, Ph.D.

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A patent focused podcast for inventors, founders, and IP professionals, covering the finer points, sharp edges, and nuances of startup patent strategy. Each monthly episode will feature a round-table style discussion amongst experts in the field of patenting. Patently Strategic is brought to you by Aurora Consulting, a patent strategy boutique that specializes in working with early stage life science, medical​ device, digital health, and software companies to develop valuable patent portfoli ...
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Send us a text There’s not a more important concept that’s more widely misunderstood by those newer to patenting than continuations. So we’re dedicating Part 3 of our series on quality patents to everything you need to know about this essential step for future proofing and increasing the value of your portfolio. Void of pursuing continuations, the …
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Send us a text The most terrifying thing that can happen to a patent owner is receiving what’s called an IPR or Inter Partes Review petition. This is a tool that accused infringers can use to invalidate patents. And they have … to alarming effect. As we’ve discussed, the kill rate at the PTAB is staggering. The Patent Trial and Appeal Board – or as…
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Send us a text Is your patent a vanity piece of paper for your office wall? Or is it a reliable, defendable, assertable, property right? The difference is often quality. Is your patent simply a transactional cost and a large pile of legal bills for your startup? Or is it a leverageable asset worthy of attracting precious investment dollars, worth i…
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Send us a text We’ve seen few entrepreneurial success stories that haven’t involved heavy doses of perseverance, grit, observation, and creative problem-solving. Today’s guest possesses these qualities in spades. And while I can’t necessarily recommend some of the more death-defying specifics of his approach … at least not without a lot of “don’t t…
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Send us a text 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 Jackre…
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Send us a text 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 and Dr. Ashley Sloat 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, pr…
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Send us a text Our interview with James Howard, Founder and Executive Director of the Black Inventors Hall of Fame. James Howard is a college professor, design historian, entrepreneur, industrial designer, inventor, filmmaker, and restauranteur. He brings over 25 years of experience as a design professor and has authored a course on Design Thinking…
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Send us a text Claim construction is a process in which courts attempt to interpret the meaning and scope of the claims of a patent. It’s like 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 surpri…
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Send us a text 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 enter…
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Send us a text 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 …
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Send us a text 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…
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Send us a text In this month’s episode, we’re talking about Jack Daniels, Mickey Mouse, Andy Warhol, Jason Voorhees, Winnie-the-Pooh, Lizzo, and WallStreetBets … What do they have to do with patents you might fairly be wondering? Honestly, not much. Patents are our focus in our business and in this podcast, so we devote a lot of air time to talking…
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Send us a text Why do patents exist in the first place? What function do they serve in society? And what is their historic origin story? In this month’s episode, with the help of Professor Adam Mossoff, we zoom way out, turn the time dial back a bit, and focus on the genesis of patents. There’s a special kind of magic that happens when individual i…
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Send us a text What do investors want to see in patents? What do patents tell a potential investor about a founder? And what do investors wish inventors knew before coming to them? To answer these questions and more, we're joined this month by Dr. Sridhar Iyengar, an angel investor and accomplished serial entrepreneur in the medical devices and wea…
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Send us a text 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 applic…
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Send us a text In this month's episode, we're talking patent reform solutions with Judge Paul Michel, Professor Adam Mossoff, and Randy Landreneau! Nearly two decades worth of Federal Circuit and Supreme Court rulings have thrown the patent system into disarray and weakened patent rights for inventors. Subject matter eligibility is a confused, chao…
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Send us a text 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 an…
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Send us a text 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 doc…
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Send us a text If there were 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 episod…
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Send us a text 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 roote…
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Send us a text 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, cr…
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Send us a text 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 likelih…
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Send us a text In today’s episode, 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 Sup…
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Send us a text 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 succe…
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Send us a text 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 …
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Send us a text “Metaverse” is the buzziest of the buzzwords in tech today 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 Stra…
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Send us a text In this month's episode, our experts help to demystify 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 here at Aurora leads this discussion along with our all star patent panel, di…
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Send us a text In this month’s special episode, we’re sharing a great sit down with three very innovative, up-and-coming inventors – as we also launch the next installment of our RISE award. We are joined today by: ⦿ Keith Phillips, CEO & Founder of realLINGUA ⦿ Theresa Smith, CTO of the Ola Filter Corporation ⦿ Brendan Wang, Founder of CAPNOS Thes…
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Send us a text We're officially kicking off our second season and in this month's episode, our experts tackle software patents. As Silicon Valley engineer and investor Marc Andreessen famously said, “Software is eating the world”. It is central to so much of today’s innovation and the growth potential is off the charts. Five companies, all with sof…
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Send us a text What’s actually in a patent? What can you learn from reading one? Where do you even find them? For answers to these critical questions and more, I sat down with Patently Strategic regulars – David Cohen, Principal at Cohen Sciences and Ashley Sloat, President and Director of Patent Strategy here at Aurora. In our discussion, we break…
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Send us a text 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 l…
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Send us a text Listen in as we discuss the impact of the AIA and the PTAB with inventors gathered as part of the "Decade of Stolen Dreams" rallies, happening in front of regional USPTO offices all across the country, marking the 10 year anniversary of the passage of the America Invents Act – an event described by advocacy groups as the worst event …
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Send us a text In this episode, we take a deep dive into the war games filled world of patent buying and selling. We are joined today by special guest host, Louis Carbonneau, Founder & CEO of Tangible IP. Mr. Carbonneau is a recognized expert in intellectual property with close to 30 years of professional US, Canadian, and international experience …
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Send us a text 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 lit…
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Send us a text Getting a patent is no quick process. In the time between filing and issuance, your application will go through several stages, often from multiple patent offices and with months or years between stages. The total process can take two to five years and sometimes longer. But who has time for that? Sometimes you need a patent, and you …
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Send us a text Your application just received a final rejection notice from the patent office. Now what? How final is final? The office owes you nothing at this point and without further action, your patent is dead. Good news, though – all may not be lost! Options for resuscitation are limited, but the patient isn’t yet a goner. David Jackrel, Pres…
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Send us a text ​Listen in as our expert panel breaks down Google v Oracle and what it means for the future of software development and fair use. This legal contest has been heralded as the “World Series of IP cases” and the “copyright case of the decade”. It’s a landmark case, 11 years in the making, between two industry heavyweights – Google, the …
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Send us a text In this inaugural episode, Dr. Ashley Sloat, President & Director of Patent Strategy​ at Aurora Consulting leads a deep dive into the on-sale bar and the trapdoor-esque implications of selling your innovation before filing. Spoiler alert: there are some very sneaky triggers – many types of activities that you might not traditionally …
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