Patently Strategic - Patent Strategy for Startups
Patently Strategic - Patent Strategy for Startups
Top 3 Inventor Mistakes: Disclosure, Search, and Ownership
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 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
** Aurora is Hiring! **
Join us in the trenches and on this podcast! Aurora is looking for a part-time Biotech Patent Agent to help with patent portfolio management, application drafting, prosecution, and strategy. This is a salaried, fully remote position with a flexible work week and benefits. Work where you want, when you want, with a great team, on engaging subject matter, and even get the opportunity to be heard on this Podcast and featured on IPWatchdog! Learn more and apply at https://www.aurorapatents.com/careers.html.
** Resources **
⦿ Show Notes: https://www.aurorapatents.com/blog/top-3-inventor-mistakes
⦿ Slides: https://www.aurorapatents.com/uploads/9/8/1/1/98119826/topinventormistakes.pdf
⦿ Apply: https://www.aurorapatents.com/careers.html
** Follow Aurora Consulting **
⦿ 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/
And as always, thanks for listening!
---
Note: The contents of this podcast do not constitute legal advice.
WEBVTT
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Good day, and welcome to the Patently Strategic Podcast, where we discuss all
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things at the intersection of business, technology, and patents.
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This podcast is a monthly discussion amongst experts in the field of
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patenting. It is for inventors, founders and IP professionals alike,
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established or aspiring. And in today's episode, from the
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Home Office in Suicide, Iowa, we bring you the top top three inventor mistakes
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list. The wise person once said that life is too short to make all of
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your own mistakes. In the talks we give at events
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and the content we create for our website, and especially in this podcast,
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we spend a lot of time talking about the sharp corners and trap doors that
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lie waiting for unsuspecting inventors. We do this because
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we've seen these costly mistakes made far too many times and far
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too often by folks before they come to us. Some of these mistakes are
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reversible with limitations. Others have no undo button.
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So we've truly made it part of our mission to educate around these dangers
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so that they can be avoided in the first place, saving you time,
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money, opportunity, cost, and a lot of frustration.
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If there was a guidebook we could hand to inventors on the first day following
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the conception of their idea, this episode would be it. In this month's
01:13.214 --> 01:16.298
episode, Dr. Ashley Sloat, President and Director of Patent
01:16.334 --> 01:19.862
Strategy here at Aurora, leads a discussion, along with our all star
01:19.916 --> 01:23.382
patent panel, exploring the most common patenting missteps taken
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by inventors and startups. The focus largely centers
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around three key areas one, publicly disclosing your invention
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before you filed a patent application. Two, not searching
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to see if your invention or something similar already exists commercially or in
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publicly available resources. And three, not carefully
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contracting with outside vendors and employees to make sure you own
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your invention. The group highlights best practices for not making
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these mistakes in the first place and explores available and remedial options should
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you already be in need of a rescue line. Ashley is also joined
01:57.838 --> 02:01.806
today by our always exceptional group of IP experts, including Kristen
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Hansen, patent strategist at Aurora Ty Davis, patent strategy
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Associate at Aurora, and David Jackrel, president of Jacob
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Consulting. Before handing it off to the panel, I have some exciting news to share.
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Aurora is now hiring for a part time biotech patent agent.
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This is a salaried, fully remote position with a flexible work week and
02:20.492 --> 02:23.962
benefits work where you want, when you want, with a great team
02:24.016 --> 02:27.754
on engaging subject matter, and even get the opportunity to join us on this
02:27.792 --> 02:31.190
podcast. Learn more and apply at aurorapatents.com/careers
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We'll also include that link in the show.
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Notes all right, take it away, Ashley. All right,
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so I have what I think are the top three traps for inventors,
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which are public disclosure, not searching and then not
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taking care of ownership issues, but also kind of wanted to open it up to
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everybody on what they think
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are big inventor issues. Any other thoughts or any other
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inventor mistakes? Maybe else? My thought goes along with disclosure.
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And it isn't just disclosure to everyone, it's disclosure even
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to your patent attorney or your patent agent, to where you don't think
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through as an inventor sometimes what the nugget or
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the crux of most interest is in your invention.
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And so sometimes that's very difficult to
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get out of an inventor in a call, because that's our job.
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But they haven't thought down that far
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very often. And it's because the overarching
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idea sounds great and interesting, but the actual way the problem was
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solved is not 100% complete.
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So I would say one of the biggest problems
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is understanding disclosure and who you should or shouldn't
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disclose to. But also when you have someone you will
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disclose to, like your patent attorney or your patent agent,
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knowing how far you can go, which is basically all the way
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deep down into the guts of your code if you need to,
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or into how you solve the problem. Those are things that
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I think even some inventors hold back in calls with their attorneys
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because they're not 100% sure that attorney wouldn't take it
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or that attorney wouldn't do something different with it.
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It's hard to get that trust occasionally just
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because it's lack of inventor know how, right. Lack of knowledge.
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It's new to them. Yeah,
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that's really interesting, Kristen. I think you're right. And it's like figuring
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out it's not easy, right all the time. You might have this
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amazing invention which has lots of different innovations in it, but which
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one is going to really be
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patentable but also block competitors and
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things like that. I had a really interesting story from somebody at Rambus.
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Rambus developed this new type of memory. I think
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it was the Nintendo,
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the first 3D Nintendo back in the 90s was made with their technology
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and it blew everybody away and then everyone stole
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it and then grandpa had to sue everybody and there was lots of litigation.
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One of the most important patents they had, even though they
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invented phase lock loop memory, which is really complicated way
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to do memory bus transitions, rambus.
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But what it was, was a connector.
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They had their phase lock loop, memory chip
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system, whatever, with a very specific type of connector that was a
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standard in the industry. And you basically couldn't design around
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it because you needed to interface your memory
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with all the chips that were out there. There was a standard connector and that
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one connector ended up being a really valuable pattern for them.
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So it's like thinking through things like you said, Kristen,
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it's so key and it's hard. It seems like it'd be straightforward.
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I know what my invention is, but it's not always there's a lot
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of different angles right. To think about on a lot of these inventions.
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Yeah, and we've all been there as practitioners inventing on
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the fly, on the back end because we don't have that information
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or asking the questions right. Could it work this way? Could it work that way?
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Could it do this? I think
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sometimes the difficulty too well. One, I think from a clinical perspective,
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sometimes you don't really know what's going to drive that demand until you know what
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the clinical efficacy is. And then so here's the clinical efficacy.
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What part of the product drove the efficacy?
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Because that's going to be the thing everyone wants
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to copy, right, is the fact that it does
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X. And now you can treat people 50
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times better than competitors or something, right? And then I think for some
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other industries, maybe still in medical device,
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but also maybe in like therapy and stuff, like it's a feel
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of the product or it's kind
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of like a feeling about the product or a feel of the product. And so
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helping inventors think, okay, I get it that it's a feel, but what
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are the attributes of the product that give that feel?
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Right? There has to be physical things that make
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it super easy to use or super
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intuitive or frictionless.
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I agree it's a problem, but I think it
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comes with a lot of research on the clients part and sometimes they just don't
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have the time, bandwidth, budget or willingness to do it.
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I've seen a couple of times, and I think it kind of ties into what
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Kristen was saying. But having the
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inventor really focus on what the invention is,
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I've seen several times where it's like almost being
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too aggressive with all these far
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reaching ideas and it almost cheapens
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what they're going for because they're focusing too much on
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it. Could do this with that, blah, blah, blah, blah, instead of really
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focusing in and describing exactly what the meat and
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potatoes is. Right?
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Yeah, actually, that was going to be another great
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segue, sort of to a different topic, but very similar
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in a way, is that I feel like
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there's always a balance, but sometimes I think it's a mistake to go
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for too many patent applications, too much quantity and
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not enough quality. Trying to patent
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really broad ideas and file patents in all kinds of areas,
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very high level, not a lot of examples,
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not a lot of support, not a lot of enablement just throwing a
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bunch of stuff against the wall to try to see what fits rather than
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really thinking about each application. And what is the theory of
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patentability? How are we going to get this through?
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Where's our support or data if it's
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unpredictable, art, all of that stuff? And I think that,
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yes, there's a balance, there's value in having numbers
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of patents, but I think when you go too far on that pendulum,
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you end up spending lots of filing fees and things don't
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get allowed. You end up much more longer prosecutions,
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RCE, arguing about claims. Whereas if
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you file something like type of thing, focused, maybe even
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relatively narrow claims for a first application. Get something through,
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see how the patent examiner is going to be thinking about it, then file your
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cons with broader claims and things like that.
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So, yeah, I think there's good
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reasons to do both have numbers of patents,
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but I think there's a mistake there if you focus too much on
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quantity and not enough on quality.
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Sometimes in those interviews when I do have
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inventors kind of going off the rails with ideas, I do try
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to pull that back. And with any specific
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implementation, I'll say something like, okay, have you seen
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this done out there in the field? What's your closest competitor doing in
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this area, and how are they solving this problem? And try to get them
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to think in those areas because sure,
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we could do this widget that has five
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interesting pieces to it, but if nobody's going to copy it
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and it doesn't work as well as the one the three pieces in it,
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why are we talking about it? Let's write
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it in as an embodiment, but not claim it.
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Right. You know, so sometimes you can you can hone them in a
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little bit more by focusing them on what their
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competitors are doing without having them have to look through prior
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art, without having to make them search.
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They will honestly just know a little bit about what's going
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on just by virtue of what they do in the field and
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who their competitors are. Right. They will have seen something just naturally
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without you having to send them searching. I agree. The searching can
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really help. We always recommend doing
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at least some searching before filing something and
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then yeah, I think, like everyone's been saying,
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inventors oftentimes are
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very knowledgeable about their field, but don't always know everything that's out there
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and have these thoughts in their mind about, like, wow, this is so new.
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No one's ever thought about X, Y, or Z. You put a bunch of
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excerpts from references onto the screen and talk through, it can be
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really helpful to really know what really is inventive
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here. The only thing I would say to that, Dave, is be
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very careful because some clients actually do have kind of rules
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to say, don't be showing my inventors prior art.
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They tend to be larger, but there are some that are
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patent savvy enough. Right, yeah. You know, that's a great point.
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I think we always, anytime by
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default, I'll say it this way, by default,
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even when someone asked me to do a search, I don't expose them to patent
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numbers, application numbers, publication numbers, anything, but send
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excerpts from publications if possible. Sometimes it's not sometimes
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only a patent, but patent publication, send excerpts.
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And at least my thought about it is that
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if the search is clear or clear
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enough that they decide to go ahead with the patent, all those are going to
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end up in an IDs. So the client,
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the owner, the assignee is going to be aware of those references. And if
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they don't, okay. That is
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where, I guess, you can have problems being
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exposed to patents for willfulness
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and infringement, but if you don't actually know of a claim or
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know of a patent number with an actual claim, you see an
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excerpt from a publication. Are they really
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aware of that claimed
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claim that they may be infringing on? I think technically not.
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There may be an argument that they're somewhat aware or
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something, or they should have been aware.
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I don't know if it has to do with Rule 156 or not. I mean,
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I would say if you're just sending excerpts and they aren't really
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detailed about exactly what the invention is and they're just features,
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I would say I don't think you're going to get caught on any kind of
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willful or neglect. But I would
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say to not expose your inventors to extra
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prior art because it does water down what they're doing for
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your company and what they're doing to create.
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You don't want that sneaking in because it's in the back, the only thing they
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can think of. I know what you mean. There's the whole exposure
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thing and yeah, that's a lot of, like, sort of medium
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or larger companies I work with, they end up segregating. There's the patent
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team, which are maybe more
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experienced people who can sort of keep track of
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that in their minds and segregate and things.
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Actually, I don't know what you're going to say about number two, but I have
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a feeling that searching is really valuable and someone who
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understands the technology and the product roadmap and
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the sales strategy and all of that. It's really valuable, I think,
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for them to understand the landscape.
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Yeah. You end up with a higher value
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IP portfolio at the end of the day.
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Yeah, I think definitely we have clients that don't want their inventors,
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their brains being muddied right. With stuff. But I also think there's a point in
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time where that artificial barrier
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has to be taken down when you get into potential freedom to operate issues,
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because now you do have to involve the engineer, because you got to say,
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this part of our product, and it's a problem
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because it's sure,
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but you don't have to say who it is. You don't have to expose the
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company. You can say there's prior art out there. This is what they're doing
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without the full exposure.
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That's what I would have to do. If I had
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a concern with some art that came up on a search and I
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had to talk to the inventor to see if
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they were different enough or if they had any other features that would be different
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enough than that, I would basically have to describe the prior
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art without giving away the company or the claim itself or
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that right. Yeah, definitely. Talking about
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companies that have more than two people. Yes.
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That's funny. Cool. Those are all awesome and they have any
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other traps or any other things. Otherwise I can think
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these are going to be shocking. But move through these.
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I had a quick one just because I really don't have an
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answer. So one thing that I've
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seen and it's kind of recent, that's why it's on my mind. But is
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there any like, advice for startups
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as far as like, balancing a budget
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and trying to get the broadest claims possible
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here? Recently, actually, a startup I've been involved with
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past few years, we just went to allowance on some claims
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and now kind of looking back on it, I can see how
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budgetarily we kind of rushed it a little bit, run out
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of money, didn't want to keep doing continuations.
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How do you balance that? How can
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you be aggressive enough while
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keeping your budget in mind? I think
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from like a searching perspective, I always think there's
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immense value in people who are really good at searching. But that said,
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there are so many search tools out there that allow
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for keyword plug and play to
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help hone in on inventive
17:16.322 --> 17:19.890
features. And so I think actually inventors
17:19.970 --> 17:23.270
can do a lot of if you're a small company trying to extend
17:23.350 --> 17:26.874
budget runway, so much searching could be
17:26.912 --> 17:30.460
done using actually I have some of the tools that I found
17:31.390 --> 17:34.766
and actually some other things I just learned yesterday, but to
17:34.788 --> 17:38.480
kind of help figure that out more quickly.
17:38.930 --> 17:42.334
But that's what I would say. But if anybody else has
17:42.372 --> 17:46.100
any other thoughts, I have two thoughts on that.
17:46.630 --> 17:50.402
The first one, to save some money on basically not
17:50.536 --> 17:54.114
extending your prosecution, it would be better to
17:54.152 --> 17:57.666
pay for a search up front than to write an additional office action on the
17:57.688 --> 18:00.758
back end. So if you can do that search up front, you might be
18:00.764 --> 18:04.214
able to have your patent attorney or agent hone those claims a little
18:04.252 --> 18:08.282
better, which should reduce office actions on the back end.
18:08.336 --> 18:10.330
And searches are generally cheap,
18:12.110 --> 18:15.814
but if you still need to refine budget
18:15.862 --> 18:19.770
even more than that, 1015 minutes with your patent agent
18:19.840 --> 18:23.526
or your patent attorney on the phone showing you how they
18:23.568 --> 18:26.766
perform searches by sharing a screen and saying, this is
18:26.788 --> 18:30.206
what I would do. And they would charge you your 1015 minutes of
18:30.228 --> 18:33.566
time or whatever the meeting time was, which is way cheaper than
18:33.588 --> 18:37.266
an office action and way cheaper than them doing the full search. But that
18:37.288 --> 18:40.930
should give you the tools for you to dig in as an inventor
18:41.590 --> 18:45.346
and do your own search and come up with your own kind of thought.
18:45.528 --> 18:48.566
Another 1015 minutes with your patent attorney or
18:48.588 --> 18:51.510
agent later just for a quick discussion.
18:52.170 --> 18:55.746
Still cheaper than a full search on its own or extra office action
18:55.778 --> 18:59.526
on the back end. That's good too, if you have the interest.
18:59.628 --> 19:03.002
I mean, this is Tedious work, right?
19:03.056 --> 19:06.506
This is not something where you can just throw three searches at it and be
19:06.528 --> 19:07.580
done usually.
19:09.970 --> 19:13.278
So you have to kind of have the drive to do that,
19:13.444 --> 19:17.434
and not everybody does. Some people find that very unpleasant
19:17.482 --> 19:21.374
work. It's just
19:21.412 --> 19:24.770
tedious. Right. I like it. I would do that all day,
19:24.840 --> 19:28.894
but I'd probably get a little bit bored. I wouldn't
19:28.942 --> 19:34.130
hate it to just be bored. Another thing, which we sometimes
19:34.200 --> 19:37.986
forget about these options is to extend the tendency, especially like if
19:38.008 --> 19:42.230
you already have something allowed and you're in a con, you can delay prosecution.
19:42.970 --> 19:46.646
When examiners call and say, hey, can you do an election by phone and say,
19:46.668 --> 19:50.486
no, thank you, please send an office action, and just delay
19:50.518 --> 19:54.406
the prosecution. Because it pushes out issue fees, it pushes out filing
19:54.438 --> 19:58.460
fees for the next con. It pushes out everything. And a lot of really,
19:58.910 --> 20:02.698
like, the one two person companies, I think, are often in
20:02.704 --> 20:06.254
the situation. They have very limited budgets and will file like
20:06.292 --> 20:09.886
an omnibus, like a patent that shows all the ideas that
20:09.908 --> 20:12.398
they have. But they get it in one patent so that they save on a
20:12.404 --> 20:15.666
little bit of filing fees. And then in the first set of
20:15.688 --> 20:19.442
claims, relatively narrow, cover the product or whatever
20:19.496 --> 20:23.474
they're marketing, whatever they think they might have in the next year and
20:23.512 --> 20:27.298
then file that con. But delay Pendency and hopefully they're
20:27.314 --> 20:30.920
getting a series B or C by the time the next
20:31.290 --> 20:35.270
fees come up. And then the whole situation
20:35.340 --> 20:38.966
has changed. The budget is different now. They've got this omnibus patent they can file
20:38.998 --> 20:42.778
lots of different cons off of, but you push those fees out until
20:42.864 --> 20:46.954
hopefully the next investment comes in. And then
20:47.152 --> 20:50.858
justifies honestly, the expense of filing a
20:50.864 --> 20:54.640
half a dozen cons off of this seminal application.
20:55.570 --> 20:59.006
Sure. And you can take one and two month extensions without a
20:59.028 --> 21:02.494
terrible pain in your budget. It's a few hundred
21:02.532 --> 21:06.210
dollars here and there, but it's cheaper than quickly
21:06.280 --> 21:09.602
getting something allowed and having to pay all the con fees right away
21:09.656 --> 21:13.134
within the first year. I normally
21:13.182 --> 21:17.006
wouldn't condone delaying responses because you do lose
21:17.038 --> 21:20.722
PTA and there are some other issues with that. But if you're talking about software,
21:20.786 --> 21:24.022
you're talking about a medical device, you know, after 20 years,
21:24.076 --> 21:27.302
it's it's highly likely that will be outdated, gone, it doesn't matter.
21:27.356 --> 21:30.406
You're not worried about PTA, but,
21:30.428 --> 21:33.706
you know, like David, you do a lot of materials, don't you? And a lot
21:33.728 --> 21:37.306
of things that would maybe be PTA might
21:37.328 --> 21:40.800
be very important. So those delays can add up.
21:43.010 --> 21:46.494
Yeah, cool. Good stuff.
21:46.612 --> 21:48.800
So many different levers to pull.
21:50.290 --> 21:53.858
All right, obviously the first thing we've already kind
21:53.864 --> 21:57.346
of talked about is public disclosure. But I think the
21:57.368 --> 22:01.154
confusion sometimes comes from with
22:01.192 --> 22:04.874
inventors is this whole idea that you're not supposed to publicly
22:04.942 --> 22:08.646
disclose at one point, but then you have to
22:08.668 --> 22:11.746
publicly disclose to get patent protection.
22:11.938 --> 22:15.202
Right? And so it's this kind of balance
22:15.266 --> 22:18.454
of when to do what and
22:18.492 --> 22:22.010
why. Right, but there's also the opportunity cost problem
22:22.080 --> 22:25.322
that like you're saying you don't want to do a patent too soon,
22:25.376 --> 22:28.700
you don't want to be too unfocused. But for a lot of small companies,
22:29.230 --> 22:32.794
you not sharing that idea, not seeking investment,
22:32.842 --> 22:36.000
not pitching comes at a cost too. Right.
22:37.090 --> 22:40.606
You have to do things in the right order. But if you're not
22:40.708 --> 22:44.670
kind of seeking feedback and seeking investment, you're kind of running out of runaway.
22:45.330 --> 22:48.802
That's kind of what some of the public disclosure section is. So we're all obviously
22:48.856 --> 22:52.638
familiar with the whole idea that you get a limited monopoly
22:52.654 --> 22:56.174
of 20 years in exchange for your publication of your invention.
22:56.302 --> 22:59.026
And the whole idea is that so that people can read it and build upon
22:59.058 --> 23:03.094
it. Then you do get that monopoly, which kind of goes towards you really
23:03.132 --> 23:06.646
want to find that perfect inventive piece to
23:06.668 --> 23:10.582
build your monopoly on like the connector for the Rambus
23:10.646 --> 23:13.818
company because that's kind of what the
23:13.824 --> 23:16.620
company is going to be built on and where you really get the most value.
23:18.350 --> 23:21.654
But there is a rejection risk, right, where if you don't
23:21.702 --> 23:25.066
do these things in the right order, then if you're selling
23:25.098 --> 23:28.430
it or offering for sale or making it available to the public, you're going to
23:28.500 --> 23:31.422
potentially inhibit your ability to later patent it.
23:31.556 --> 23:35.026
And so there's several different things that
23:35.048 --> 23:38.734
constitute public disclosure. Obviously presenting or publishing your patent
23:38.782 --> 23:41.966
ready invention and responding to a request
23:41.998 --> 23:45.486
for proposal when the technology is clearly patent ready or selling or offering for cellular
23:45.518 --> 23:49.238
technology. I think some of that's where some of the inventors though too, get a
23:49.244 --> 23:52.482
little the nuances of it, I think kind of get lost
23:52.546 --> 23:56.630
is that if those patentable features haven't been invented yet,
23:56.700 --> 23:59.834
then their public disclosure might not be a public disclosure. Right.
23:59.872 --> 24:02.454
If it's just this pie in the sky, like I want to make a wearable
24:02.502 --> 24:06.170
that detects
24:07.150 --> 24:10.758
heart arrhythmia, but I have no idea how it's going to work. Well, clearly I'm
24:10.774 --> 24:13.886
going to need some kind of sensor and blah, blah, blah, other than I have
24:13.908 --> 24:17.902
no idea. Is that really a public disclosure event? Maybe not,
24:17.956 --> 24:21.182
because how you actually achieve the technical problems
24:21.236 --> 24:23.440
you're actually solving are not known at that time.
24:25.250 --> 24:28.686
Right. And going back to the international question on all of
24:28.708 --> 24:32.462
that, the US. Is very kind and has this one year grace period,
24:32.526 --> 24:35.778
but that's not the case for a lot of places around the world. So that's
24:35.874 --> 24:39.218
a pitfall that I've seen, unfortunately.
24:39.314 --> 24:42.294
Yeah, and a big one that inventors miss,
24:42.492 --> 24:46.390
they hear, okay, I can't sell my invention, but even
24:46.460 --> 24:49.926
offering for sale is a bar
24:50.028 --> 24:53.574
and you just can't do that. And it includes
24:53.622 --> 24:57.734
which I think it's still even taking that one step further, even canceled or unaccepted
24:57.782 --> 25:01.718
orders, right. Even if somebody says, well, no, thanks for the offer, but no
25:01.744 --> 25:05.642
thanks. And then I think the other one that's been catching
25:05.706 --> 25:09.310
people in the software space is they sell things
25:09.380 --> 25:12.746
related to the software, but don't actually sell the software.
25:12.938 --> 25:16.766
But that still counts because the software was used as
25:16.788 --> 25:19.874
part of the process. So if you're selling a report,
25:20.072 --> 25:23.518
even if you're not selling the software, that report still counts
25:23.534 --> 25:27.458
as a public offer for sale for the software that made the report. So I
25:27.464 --> 25:30.518
think that catches people, too. It's like, well, nobody knows how the software works.
25:30.684 --> 25:34.726
It's like, well, we, I think, learned from was it Helson with
25:34.828 --> 25:38.698
the drug companies for secret sales. Nobody knew what the product,
25:38.784 --> 25:42.266
the composition was or something. Secret sales are a
25:42.288 --> 25:44.860
no go under AIA either.
25:46.990 --> 25:50.298
But manufacturing agreements are okay, clear experimental use where
25:50.304 --> 25:54.446
it's clearly trying to figure out the invention, you maintain control of
25:54.468 --> 25:57.626
it. Advertising stuff that's yet to be developed.
25:57.658 --> 26:00.766
Right. You don't know what the inventive feature is going to be. Those are
26:00.868 --> 26:04.638
likely not an offer for sale. But then licensing agreements
26:04.734 --> 26:08.302
and providing technical drawings when it's clearly
26:08.366 --> 26:12.530
fully baked, all kind of are likely an offer for sale.
26:14.550 --> 26:18.322
That's a great point, too. Even like, it doesn't have to be detectable
26:18.466 --> 26:21.990
a method. You use a method to make something,
26:22.060 --> 26:25.746
and then you sell that product, but the method won't be reverse
26:25.778 --> 26:28.038
engineerable from the product. Doesn't matter.
26:28.204 --> 26:32.040
Still disclosed, right?
26:32.810 --> 26:36.074
Yeah, sticky point for sure. But obviously
26:36.192 --> 26:39.418
you avoid the rejection risk by the patent Office by getting your
26:39.424 --> 26:43.006
invention on file before you do the disclosure or the offering for
26:43.028 --> 26:46.670
sale. Right. So you file and then you publicly disclose.
26:47.810 --> 26:51.150
But this, I think, kind of solves
26:51.810 --> 26:55.202
again, the opportunity cost problem is that if you share
26:55.256 --> 26:58.658
too soon, obviously it has detrimental effects on your ability to
26:58.664 --> 27:01.810
protect your idea. But not sharing also, especially for small companies,
27:01.880 --> 27:05.038
comes at a tremendous opportunity cost. Right? Because they're
27:05.054 --> 27:08.454
not getting those insights. They're not getting traction, they're not getting feedback, they're not getting
27:08.492 --> 27:10.710
refinements, they're not getting people recruitment.
27:12.490 --> 27:16.406
A nondisclosure agreement kind of can help with
27:16.428 --> 27:19.766
that in some situations, but as we all know, investors don't
27:19.798 --> 27:23.014
necessarily sign those, and it's not necessarily
27:23.062 --> 27:25.180
a bulletproof thing. So obviously,
27:25.870 --> 27:30.086
provisionals are the answer for that placeholder.
27:30.118 --> 27:33.926
Gives you your future filing date pens for one year. And speaking to David J's
27:33.958 --> 27:38.030
point, there are many countries that do have a grace period,
27:38.370 --> 27:42.478
but there's plenty that don't. So if you do mess this up, there are some
27:42.644 --> 27:46.094
remedial options in some countries, but other key countries like China
27:46.142 --> 27:48.740
and Europe, where a lot of companies filing today,
27:49.350 --> 27:52.574
there is no grace. And I think some inventors had a conversation
27:52.622 --> 27:56.134
earlier this morning where it wasn't clear
27:56.172 --> 28:00.870
to me that she realized that converting
28:01.450 --> 28:06.166
tomorrow to just her US to
28:06.188 --> 28:09.766
just us forfeited all of her foreign rights from a provisional
28:09.798 --> 28:13.066
right, that just going
28:13.088 --> 28:16.934
into the US at the one year forfeits all the other countries for what's disclosed
28:16.982 --> 28:21.226
there. Right. So I think sometimes inventors kind
28:21.248 --> 28:25.406
of go along with whatever because it's a recommendation but don't always truly understand
28:25.508 --> 28:29.146
the implications of the recommendation. I think that's
28:29.178 --> 28:33.354
just sometimes a byproduct of practitioners
28:33.402 --> 28:37.346
being too busy and not taking the time to
28:37.448 --> 28:41.218
describe or to make sure they understand what decision they're making when
28:41.224 --> 28:44.420
they're making a decision. Right. And to be clear,
28:44.810 --> 28:48.422
since we might have inventors listening at that one
28:48.476 --> 28:52.790
year from your provisional filing, you will want to either
28:52.940 --> 28:55.800
decide US. Only and file in the US.
28:56.250 --> 29:00.170
Or decide Pct so that you can file later
29:00.240 --> 29:02.970
in the US. And in several other Pct countries,
29:03.310 --> 29:07.110
or file both US and Pct
29:07.270 --> 29:11.018
and you just begin the US. Faster. Right. And you
29:11.024 --> 29:14.558
can go directly into other foreign countries as well at the
29:14.564 --> 29:18.160
one year mark. You don't have to, but most everybody does.
29:20.690 --> 29:23.760
Absolutely, yes. Again,
29:24.130 --> 29:27.546
US and most of the countries are first inventor to file,
29:27.738 --> 29:30.978
while other countries are not first inventor to file. But we're first inventor to
29:30.984 --> 29:34.286
file and everybody else is first to file. It just means you have to beat
29:34.398 --> 29:37.714
people to the patent office, right. If somebody else is inventing, in the same
29:37.752 --> 29:41.160
space you are, you need to get to the patent office before they do.
29:41.610 --> 29:45.014
Otherwise the other person's stuff will be prior art
29:45.052 --> 29:48.006
to your stuff. And if they're sufficiently similar, that's going to block your ability to
29:48.028 --> 29:51.306
get a patent. But again, shouldn't be
29:51.328 --> 29:55.066
too early because if you're too early, you're not going to have enough meat there
29:55.248 --> 29:58.538
to overcome the art that is almost invariably going to be
29:58.544 --> 29:59.100
found.
30:02.190 --> 30:05.454
So moving on to searching. So I think
30:05.492 --> 30:09.806
searching obviously has short and long term interests and
30:09.828 --> 30:12.814
then we're going to talk about prior art a little bit and the differences between
30:12.852 --> 30:16.094
patentability for him to operate in validity and how that relates to
30:16.132 --> 30:19.378
different parts of a patent. And then instead of I have a
30:19.384 --> 30:21.918
few tools I'm going to show you, but there's also something I learned yesterday that's
30:21.934 --> 30:24.020
not in here, but I'm going to share that with everybody too.
30:25.910 --> 30:29.446
So obviously the short term interest of searching is obviously you can get a
30:29.468 --> 30:33.026
patent and you can practice it ideally without infringing
30:33.058 --> 30:36.566
other people's patent. The longer term interest is that you
30:36.588 --> 30:40.134
can keep your patent. Hopefully it's
30:40.182 --> 30:43.946
more invalidation proof, right. And maybe even
30:44.048 --> 30:47.340
longer term if you keep it, you can enforce it.
30:47.870 --> 30:51.286
And so I think that it really spans the entire lifetime.
30:51.318 --> 30:54.686
So I think there's a huge amount of importance. I think for a while it
30:54.708 --> 30:59.886
was undervalued, but I feel like there's a surge in
30:59.908 --> 31:03.150
the industry to be more proactive around searching.
31:03.590 --> 31:08.094
So prior art of course, is any evidence that your invention was already publicly known
31:08.222 --> 31:11.778
before the effective filing date of the application. This can be
31:11.944 --> 31:15.826
available products or sales of a technology or
31:15.848 --> 31:19.026
offers for sale confidential sales, articles, populations, websites,
31:19.058 --> 31:22.946
trade shows, presentations, demonstrations, previously filed patent applications
31:22.978 --> 31:26.578
or patents. And I think some inventors I think, are. Having a misconception
31:26.594 --> 31:30.466
about this too, that if a prior patent isn't issued,
31:30.498 --> 31:35.306
that doesn't count as prior art. So again, there's just some I
31:35.328 --> 31:38.602
looked at all the products out there and there's no products for what I do
31:38.656 --> 31:42.166
and it's like, well, that's great and that's good from a market demand
31:42.278 --> 31:45.710
potentially perspective, but not from necessarily from my patentability.
31:46.210 --> 31:48.922
And I kind of look at this as almost like the recycle,
31:48.986 --> 31:52.702
reuse, renew bangles that is kind of this evolving thing,
31:52.756 --> 31:55.966
right, that as you're first developing a product, you're looking at patentability.
31:56.158 --> 32:00.190
As your product becomes more cemented, you look at freedom to Operate.
32:00.350 --> 32:04.066
As you potentially identify patents that may be problematic, you kind of look
32:04.088 --> 32:08.806
at invalidity of those issued patents to see
32:08.988 --> 32:12.118
how strong they are. And then that cycle repeats kind of throughout your R and
32:12.124 --> 32:16.022
D life cycle. But patenting, your invention and
32:16.076 --> 32:19.690
your right to practice the invention are really two sides of the same coin.
32:20.030 --> 32:24.134
So again, patentability being your ability to get a patent
32:24.182 --> 32:27.830
and then right to practice is your freedom to operate. So patentability
32:27.910 --> 32:31.638
others are excluded from making, using, offering for sale, or selling, or importing
32:31.654 --> 32:34.906
your invention to the US. And then freedom to operate as you are not excluded.
32:34.938 --> 32:38.366
And again, I think a lot of inventors confuse this, but I like looking at
32:38.388 --> 32:42.250
it. The example I always give is like the age old Edison
32:42.330 --> 32:45.806
and Pipkin. Edison had the clear glass light bulb.
32:45.998 --> 32:49.570
He got a really nice broad patent. Pipkin had an inventive
32:50.070 --> 32:53.554
improvement to Edison's light bulb, which was the frosted glass light
32:53.592 --> 32:56.740
bulb, which was softer, nicer, not so hot,
32:57.270 --> 33:01.218
whatever, but it was a more narrow patent than Edison. And Pipkin
33:01.234 --> 33:04.678
cannot practice his invention without Edison's. So you kind of
33:04.684 --> 33:08.600
get into that pipkin has to pass through Edison's property
33:08.970 --> 33:12.106
to get to his own invention, and then you do that through
33:12.128 --> 33:16.138
royalties or licensing. So that's kind of how you balance those. And I think
33:16.304 --> 33:19.866
some inventors are more I think
33:19.888 --> 33:23.214
the tide is changing a little bit, but this idea that it's okay
33:23.252 --> 33:26.638
if there's a problematic patent because there might be an opportunity
33:26.724 --> 33:30.910
for licensing. We have clients that license from universities
33:31.250 --> 33:35.150
and it's a great partnership. You get the know how from the professor
33:35.490 --> 33:38.882
or maybe it's somebody who it's some random person
33:38.936 --> 33:41.758
who developed it in their garage. And they don't want to be a millionaire,
33:41.774 --> 33:44.962
they just want some recognition for the fact that they had
33:45.016 --> 33:48.758
this idea and they made a product. And so a simple small royalty would
33:48.764 --> 33:53.714
be enough for them. If you ever do make it BS
33:53.762 --> 33:57.960
art or references used, again, patentability invalidity is really anything.
33:58.330 --> 34:01.926
Freedom to Operate is just issued patents that are not expired and their maintenance fees
34:01.958 --> 34:05.542
are paid. So, as we all know, the Natty move a patent.
34:05.686 --> 34:09.020
So it has the front cover, which has all the bibliographic data,
34:09.470 --> 34:13.594
there's the drawings, which should embody anything that's shown in the claims
34:13.642 --> 34:17.102
in theory, specification and the claims. So from
34:17.156 --> 34:21.166
a patentability, you're looking at everything in
34:21.188 --> 34:24.786
a patent, right? Front page drawing, specification, claims for
34:24.808 --> 34:28.882
FTO, it's just the claims. So some search
34:28.936 --> 34:33.774
tools I think are valuable for inventors, even practitioners,
34:33.902 --> 34:37.026
kind of low hanging fruit. Of course, our Google patents, a space net,
34:37.128 --> 34:40.866
USPTO, has an amazing database right now they just revamped
34:40.898 --> 34:44.374
their whole system. Super easy to use, really nice.
34:44.572 --> 34:47.930
There's also Lens, which is a nice tool as well.
34:48.000 --> 34:50.038
And then some non patent literature databases.
34:50.134 --> 34:53.962
NCBI has a lot of literature from
34:54.016 --> 34:57.546
professors and universities. Google Scholar lens also looks
34:57.568 --> 35:01.142
for those. And then AI databases
35:01.206 --> 35:04.974
is PQ AI, if anybody's used that one before. But it's an AI based
35:05.012 --> 35:08.366
search engine where you can literally drop in a paragraph if you
35:08.388 --> 35:11.966
wanted to and run it. It does also do
35:12.068 --> 35:15.578
obviousness, so it should show you novelty
35:15.674 --> 35:19.506
and obviousness so combinations. I'm not as convinced about the
35:19.528 --> 35:23.374
obviousness ones. I haven't used it much at all. But the little bit of testing
35:23.422 --> 35:26.918
I did for this use case, I wasn't as convinced that the
35:26.924 --> 35:29.974
obviousness one was decent, but again, barely played with it,
35:30.012 --> 35:34.198
but the novelty seemed reasonable. So kind
35:34.204 --> 35:38.200
of interesting one, the other thing I learned just yesterday was that
35:38.810 --> 35:42.186
they also very actually in the last few years, but this is
35:42.208 --> 35:45.686
Drew Hirschfield. One of his big initiatives with the Patent
35:45.718 --> 35:49.178
Office was in part changing or at least embracing more
35:49.184 --> 35:52.880
of the CPC code system for
35:53.490 --> 35:57.658
how things are classified and then how applications are tracked into different examiners
35:57.674 --> 36:01.214
and different art units. His recommendation, which I thought was really
36:01.252 --> 36:04.842
interesting, is once you this is more important in software,
36:04.986 --> 36:08.034
I think, when you're trying to avoid certain art units and things like that,
36:08.072 --> 36:11.442
is taking your preamble of your claims, for example,
36:11.496 --> 36:16.054
or taking some of your claim language and doing a CPC search to
36:16.092 --> 36:19.414
see what classifications it's going to come
36:19.452 --> 36:23.382
back as. And if you think that that's an appropriate not
36:23.436 --> 36:26.440
in an attempt to game the system,
36:26.970 --> 36:30.294
but more in attempt to make sure that it's actually in an
36:30.332 --> 36:33.882
appropriate art unit, right? Because you want an examiner that's familiar with
36:33.936 --> 36:36.986
the technology, you want them to be a subject matter expert as much as they
36:37.008 --> 36:40.138
can be. So the way you're drafting an application,
36:40.224 --> 36:42.490
if it's ridiculously broad,
36:43.550 --> 36:47.202
then maybe puts you into a wholly wrong art unit.
36:47.286 --> 36:51.246
That's not going to be a good mix. And so I
36:51.268 --> 36:54.798
thought that was really interesting because I think it's in the
36:54.804 --> 36:58.626
best interest of everybody for it to be in the right art unit and to
36:58.648 --> 37:01.874
be with the right examiner. So if you can kind of preemptively, at least
37:01.912 --> 37:05.540
kind of see where it might go, it can give you a better idea about
37:06.150 --> 37:08.962
whether it's an appropriate place for that or not.
37:09.096 --> 37:12.866
So I thought that was really interesting. I don't do that in my current practice,
37:12.898 --> 37:15.398
but I actually might start doing it a little bit because I think it's kind
37:15.404 --> 37:20.474
of an interesting full circle right opportunity,
37:20.592 --> 37:24.806
I noticed, to tweak terms too, if you don't feel that you're falling
37:24.838 --> 37:28.774
in the right. These guys use Title
37:28.822 --> 37:32.302
too, so not just claim language, but Title will pull you into
37:32.356 --> 37:35.310
a certain Art unit or a certain classification.
37:35.650 --> 37:39.182
Right, but they are actually I was impressed. Their new
37:39.236 --> 37:43.154
initiative, actually they used algorithms now to use the entire
37:43.272 --> 37:46.914
document to track it into an
37:46.952 --> 37:50.814
Art unit. And examiners
37:50.862 --> 37:54.546
and fees can basically kind
37:54.568 --> 37:58.274
of help the system get smarter. If it's not getting to the right,
37:58.472 --> 38:00.838
if they feel like it's not a good fit for their examiners or it's not
38:00.844 --> 38:04.326
a good fit for they can actually feed that back into the system to make
38:04.348 --> 38:07.160
it smarter. And so it's actually now,
38:08.890 --> 38:12.362
in theory, this system should be much better because I said they're taking the entire
38:12.416 --> 38:16.282
document and actually running it through some kind of algorithm that's not publicly available
38:16.416 --> 38:19.738
right now, but maybe eventually would be where you
38:19.744 --> 38:22.938
could see where it's going to be you could kind of see where it's
38:22.944 --> 38:26.014
going to be tracked longer term. But it sounds like they're getting better from that
38:26.052 --> 38:29.786
perspective. So it would hopefully reduce examination time because an examiner
38:29.818 --> 38:33.438
would already be familiar with the art. It would actually make sure a good subject
38:33.454 --> 38:35.860
matter expert were reviewing it.
38:36.710 --> 38:40.478
So that's cool. So software practitioners about a decade
38:40.494 --> 38:43.746
ago were playing with this heavily just to
38:43.768 --> 38:48.360
try to get out of the 101 heavy, difficult Art units, the 3600,
38:49.290 --> 38:52.806
just to keep their application somewhere else, except for where
38:52.828 --> 38:56.406
they're getting rejected under 101 to their
38:56.428 --> 38:59.926
death. It is interesting
39:00.108 --> 39:03.930
also just to understand the system and how it works.
39:04.000 --> 39:07.670
I think when you're crafting claims,
39:07.830 --> 39:10.954
because I think we all get set
39:10.992 --> 39:14.510
on certain terminology and we keep going and maybe
39:14.580 --> 39:18.046
you're drafting claims in something. You don't work in regularly in,
39:18.068 --> 39:21.790
like, a field or an area. You don't work in regularly and you're doing something
39:21.940 --> 39:24.500
that isn't quite right for that field.
39:25.430 --> 39:29.006
This sort of a search might help you hone
39:29.038 --> 39:32.706
that skill and say it's not what
39:32.728 --> 39:35.774
they call it in medical device. This isn't
39:35.822 --> 39:39.346
what they call it. I don't know. I've done some fluidic
39:39.378 --> 39:42.630
things lately, and that's not my
39:42.700 --> 39:46.006
forte. It's just because I haven't done a lot of it. And so some
39:46.028 --> 39:49.666
of the words I would initially come up with weren't
39:49.698 --> 39:53.098
necessarily jiving with how I thought they should. And so I
39:53.104 --> 39:56.266
end up doing a lot of research like this to make sure
39:56.288 --> 39:59.434
I'm getting those correct. Yeah, and actually that was
39:59.472 --> 40:02.966
the whole impetus for that. The webinar was the idea around software
40:02.998 --> 40:06.378
in particular, again, not in the interest of gaming the system, but if you're
40:06.394 --> 40:10.426
drafting software claims, for example, in such a way that they're
40:10.458 --> 40:13.630
not a business method, but they're being viewed as a business
40:13.700 --> 40:16.814
method because you're using kind of interesting
40:16.932 --> 40:20.206
terminology obviously you don't want to. If it's a business method,
40:20.238 --> 40:23.666
it should be in the business method unit. But if it's not, you need to
40:23.688 --> 40:27.094
be drafting it by the more accurate language to get it.
40:27.212 --> 40:31.074
If it's like some kind of machine learning for something, it should be drafted
40:31.122 --> 40:34.706
differently. All right, the last one is just ownership.
40:34.818 --> 40:38.166
Not just ownership. I can't tell
40:38.188 --> 40:42.906
you how many conversations I have about this every year where
40:43.008 --> 40:46.666
somebody owns a company, because they own the company, they think that they should
40:46.688 --> 40:49.786
be listed as an inventor, even though they
40:49.808 --> 40:53.674
are six people removed from the actual inventive activity.
40:53.722 --> 40:57.674
And you're like, yeah, but that's
40:57.802 --> 41:01.680
not quite right. So I'm just really making sure this is
41:02.610 --> 41:06.514
clear. Obviously the US.
41:06.552 --> 41:09.922
Constitution in article one, section eight,
41:09.976 --> 41:13.714
clause eight, when they talk about inventor rights, that's the only place that
41:13.752 --> 41:17.074
right is actually used in the actual constitution. Now, of course, there's a whole bill
41:17.112 --> 41:20.646
of rights in the actual constitution, and vendor rights is the only place where right
41:20.748 --> 41:24.198
is used. And so we really put an emphasis in
41:24.204 --> 41:27.606
the US on inventor rights. And that's why there's a lot
41:27.628 --> 41:30.986
of you have to make sure those rights are conveyed to the
41:31.008 --> 41:34.474
right entity if something goes
41:34.512 --> 41:38.538
awry, or making sure you actually own your invention. And so
41:38.624 --> 41:42.294
in the world where you're not doing everything, as in you're not a solo inventor,
41:42.342 --> 41:45.706
you really do need to make sure it's clear and cleaned
41:45.738 --> 41:49.406
up. So if you have an entity, the entity can have
41:49.428 --> 41:53.486
the authority to file the patent application, enjoys all the rights and benefits, but only
41:53.668 --> 41:56.670
if the patent is assigned to that entity.
41:57.010 --> 42:00.206
And that inventorship is the person who contributed to the conception
42:00.238 --> 42:03.346
of the invention to the point that their idea is clear enough to reduce the
42:03.368 --> 42:07.394
practice. We've seen it where you have deceased
42:07.442 --> 42:11.234
inventors. We've seen it where you have maybe hostile
42:11.282 --> 42:15.126
inventors or just things that go right.
42:15.148 --> 42:18.754
But that's why I think you have multiple redundancies in the system. You have employment
42:18.802 --> 42:22.186
contracts with assignment clauses, and then you have assignments at the time
42:22.208 --> 42:25.626
of filing to make sure those
42:25.648 --> 42:29.306
rights are conveyed. And then if you can't get those assignments at the time of
42:29.328 --> 42:33.246
filings and you have the employment contract that goes back and has assignment clauses in
42:33.268 --> 42:36.942
it, but ideally you have all these so that when something goes wrong,
42:36.996 --> 42:40.906
which almost always does, especially if you don't have these lined
42:40.938 --> 42:44.174
up, then you have these different actions to take to
42:44.212 --> 42:48.638
clean it up. And I know some firms combine declarations
42:48.734 --> 42:52.482
and assignments, and I don't know if I quite feel like that muddies the water
42:52.536 --> 42:56.606
and kind of makes it is anybody else seen the combined assignment
42:56.638 --> 43:00.226
declaration? I don't love it because I feel like it conflates
43:00.418 --> 43:03.558
the two and could potentially weaken one or the
43:03.564 --> 43:06.454
other if they were challenged. But I'm kind of curious if anybody else has seen
43:06.492 --> 43:10.042
that and or if you have any opinions on it. Yeah,
43:10.096 --> 43:13.642
I've seen it. I don't think there's anything wrong with it.
43:13.696 --> 43:16.860
If it's very clear that all of your employees have
43:17.550 --> 43:21.962
the same agreement to assign their rights, it's the same larger
43:22.026 --> 43:25.070
entity who is doing this on a regular basis,
43:26.130 --> 43:29.166
then it becomes just a piece of paperwork that covers everyone,
43:29.348 --> 43:33.618
and it's likely never going to be an issue.
43:33.784 --> 43:38.734
People aren't going to argue because the backup is their employee
43:38.862 --> 43:42.610
contract and that those are pretty ironclad in most
43:42.680 --> 43:44.020
states, not all.
43:46.570 --> 43:49.654
I don't see a problem there. I do see a problem if you've got
43:49.692 --> 43:53.270
a lot of selling going on.
43:53.340 --> 43:56.726
So whether that's patents or the company itself,
43:56.908 --> 44:00.074
I think then you have an opportunity to
44:00.112 --> 44:02.220
muddy the waters a little bit too much.
44:04.670 --> 44:07.660
Which document will prevail, right?
44:08.030 --> 44:11.518
And which company required you to sign it, which company
44:11.604 --> 44:15.454
did without. If there isn't a clear train,
44:15.652 --> 44:19.566
there are all kinds of issues where if
44:19.588 --> 44:23.086
you're a little larger, it's likely you're not going to be
44:23.108 --> 44:25.906
purchased. And if you are,
44:26.088 --> 44:30.100
everything has been done one way for how many years? It's very clear.
44:30.470 --> 44:34.194
And they only have to do one process to change it over
44:34.232 --> 44:37.526
to the new company. But when that happens three,
44:37.548 --> 44:42.760
four, or five times over the length of your company life,
44:43.370 --> 44:47.426
it can be dicey to have them combined and not clear
44:47.548 --> 44:50.140
because most people don't update these things later.
44:51.390 --> 44:55.430
Unfortunately, they should. One that's
44:55.510 --> 44:58.410
the other. We've had clients.
45:01.070 --> 45:04.442
There's a difference between dissolving an entity and spending up a new entity.
45:04.506 --> 45:08.046
And there's a difference in changing a name of an entity. Right.
45:08.228 --> 45:11.950
Because the rights are you convey them differently.
45:12.610 --> 45:16.398
So, yeah, I think it's just a lot of awareness that you
45:16.404 --> 45:19.438
need to keep on top of it and you need to make sure it's buttoned
45:19.454 --> 45:23.474
up from the beginning because there's, I think, tons of case law.
45:23.512 --> 45:29.794
Several. That I can think of off the top of my head where an
45:29.832 --> 45:34.006
employee didn't fully assign their rights. So then they were
45:34.028 --> 45:37.446
able to still benefit from the invention. But none of that profit went to
45:37.468 --> 45:39.850
the company that actually sponsored the innovation.
45:40.430 --> 45:43.082
Or company thought they owned something, but they didn't own it.
45:43.136 --> 45:46.810
Or an inventor invented something for a different company
45:46.880 --> 45:50.810
under a different company. And so, yeah, all sorts of crazy things,
45:50.880 --> 45:54.830
but it needs to be cleaned up and then
45:54.900 --> 45:58.286
made for hire for Creative Works, a work made
45:58.308 --> 46:01.978
for hire provision, suffices, which is awesome. So if you have that, then you're
46:01.994 --> 46:04.766
good to go. I think a lot of the goal of all of this with
46:04.788 --> 46:08.626
the ownership piece is just you want to ensure a successful separation between you
46:08.648 --> 46:12.066
and the company or between you and the engineering firm at
46:12.088 --> 46:15.266
the end of it, you know? And so whatever that means, you got to,
46:15.288 --> 46:17.586
you know, you want to make sure that you have all those contracts lined up,
46:17.608 --> 46:21.106
including ownership and assignment agreements. Yeah. And then
46:21.128 --> 46:24.806
again, you know, nondisclosure agreements do not define ownership lines. I think
46:24.828 --> 46:28.294
a lot of people put too much stock in NDAs. Yeah.
46:28.332 --> 46:31.260
So that's kind of it. That was good. I like that.
46:32.430 --> 46:36.102
There's so many subtleties in ownership. There's so many subtleties
46:36.166 --> 46:40.278
in what an inventor does or doesn't have to do. And it's
46:40.294 --> 46:44.140
not easy. They have real jobs, too. They have to help us.
46:45.710 --> 46:49.374
Right? I think that's where I get this feedback a lot. I think people are
46:49.412 --> 46:52.602
surprised sometimes how nonlinear
46:52.666 --> 46:55.658
the pathway is. I think sometimes they're led to believe it's, like, oh,
46:55.684 --> 46:59.346
I have an idea. I thought a patent application, and then I get
46:59.368 --> 47:02.610
the patent, and it's like, well, yeah, kind of, sort of.
47:02.680 --> 47:06.482
But then there's all these variations in the normal process that
47:06.536 --> 47:09.714
you can take part in, even, like, the foreign filings you were mentioning.
47:09.762 --> 47:12.390
There's different ways you can do that. And then there's,
47:12.810 --> 47:15.880
well, what if my inventor is not a US. Inventor? Or what if
47:16.890 --> 47:19.720
I said something I shouldn't have said? Or what if,
47:20.410 --> 47:23.770
whatever, I'm disgruntled and don't want to sign it to my company?
47:23.840 --> 47:27.098
I don't know. What if I have
47:27.104 --> 47:30.302
to file in Russia and I have to look up what the patronymic name is,
47:30.356 --> 47:34.426
what that even means? There are some crazy rules
47:34.458 --> 47:37.566
out there. I add Russia to
47:37.588 --> 47:42.094
your list. You'll laugh because
47:42.132 --> 47:44.286
I don't think you can get a form file. I think you have to file
47:44.318 --> 47:48.050
in Russia first. If you have a Russian national
47:49.590 --> 47:52.786
inventor. And then there's just all
47:52.808 --> 47:56.086
kinds of weird. You think you have everything, and all of a sudden you
47:56.108 --> 47:59.350
need these odd requests to your inventor.
48:00.170 --> 48:03.670
I need a blood sample, please. Excuse me. Yeah,
48:03.820 --> 48:07.190
it's just different rules, different jurisdictions.
48:09.790 --> 48:13.386
Well, awesome. Any other questions? Comments, feedback? No? Yeah.
48:13.408 --> 48:15.850
Thanks, Ashley. That was a good conversation.
48:16.670 --> 48:19.194
Awesome. Thank you.
48:19.392 --> 48:22.474
Thanks, everybody. Have a good rest of the week. Thank you.
48:22.512 --> 48:25.502
Bye bye. Bye. All right, that's all for today,
48:25.556 --> 48:29.134
folks. Thanks for listening. And remember to check us out@aurorapatants.com
48:29.172 --> 48:32.666
for more great podcasts, blogs, and videos covering all things patent
48:32.698 --> 48:35.758
strategy. And if you're an agent or attorney and would like to be part of
48:35.764 --> 48:38.858
the discussion or an inventor with a topic you'd like to hear discussed,
48:38.954 --> 48:41.822
email us at podcast@aurorapatants.com.
48:41.956 --> 48:45.174
Do remember that this podcast does not constitute legal advice. And until
48:45.212 --> 48:46.980
next time, keep calm and patent on.
