License to File: Foreign Filing License Risks and Strategies

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 and Design History that explores the impact of design on society.  As an accomplished Industrial Design educator and entrepreneur, Howard has lectured on the experience of Black American inventors. Howard himself is an extraordinary inventor with 20 patents, several of which we discuss, cover innovations that save people's lives daily.

James' life work is now culminating in his mission of bringing a broad and detailed awareness to the important work of African American inventors, artists, and innovators who have inspired and forged ahead against tremendous odds and adversity. In creating the Black Inventors Hall of Fame, James hopes to have a place where kids of all ages and persuasions can go and be inspired to become the next generation of scientists, engineers, doctors, and inventors. Because like the great inventor Lonnie Johnson says, “What they see, they will be.” 

** Mossoff Minute **

In this month's Mossoff Minute, Professor Adam Mossoff discusses how there’s a pirate living in your Apple Watch and why the media’s coverage of Apple’s predatory infringement of Masimo's patents is missing the mark.

** Discussed Links **

⦿ Black Inventors Hall of Fame
⦿ BIGG documentary: The Gathering
⦿ Tech Boy Book
⦿ Why Patents Exist
⦿ Inventor Stories Vol. 1

** Follow Aurora Patents **

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Thanks for listening! 

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Note: The contents of this podcast do not constitute legal advice.

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 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.

Kristen Hansen, Patent Strategy Specialist at Aurora, leads the discussion along with our all-star patent panel, exploring:

⦿ 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

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
⦿ Dr. David Cohen, Principal at Cohen Sciences
⦿ Steve Stupp, Partner at Stupp Associates, LLC
⦿ Ty Davis, Patent Strategy Associate at Aurora
⦿ Arman Khosraviani, Patent Agent and Former US Patent Examiner

** Mossoff Minute **

This month's Mossoff Minute, Professor Adam Mossoff discusses recently proposed regulations that would misapply Bayh-Dole provisions to impose march-in rights on patent-protected innovations and create price controls via compulsory licensing. This amounts to government seizure of private property and will do tremendous harm – especially to the life sciences – if implemented.

** Going Deeper **

⦿ Patent Claim Basics and Strategies
⦿ Patent Anatomy Guide

** Follow Aurora Patents **

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Thanks for listening! 

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Note: The contents of this podcast do not constitute legal advice.

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. 

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 and Kristen are joined by our always exceptional group of IP experts. Two exceptional gamers who would never be regarded as NPCs:

• Dr. Ashley Sloat, expert hotel builder and securer of rights on properties of all colors, but especially the green ones.
• Ty Davis, who’s always playing chess when it comes to claims.

** Mossoff Minute **

Professor Adam Mossoff recently attended the annual Inventor’s Hall of Fame induction ceremony and discusses two sets of inductees and their groundbreaking inventions of the mRNA platform and CRISPR gene editing technology.

** RISE Award Winners **

To learn more about this year's RISE award winners including Dustin Webb (Absolute Concept Designs), Rebel Cultures (Della Fetzer), Sand Baggage (Michael Wahlstrom),  and Chefshare  (Dr. Erin Eatough), please visit https://www.aurorapatents.com/rise-up-with-aurora.html.
 
** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
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Thanks for listening! 

---
Note: The contents of this podcast do not constitute legal advice.

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 most 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.

** Resources **

⦿ Patent Anatomy Episode: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Patent Anatomy Guide: https://www.aurorapatents.com/blog/patent-anatomy-whats-in-a-patent 

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
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Thanks for listening! 

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Note: The contents of this podcast do not constitute legal advice.

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/
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Thanks for listening! 

---
Note: The contents of this podcast do not constitute legal advice.

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 about protecting ideas and inventions, but in the realm of intellectual property, patents have some pretty close cousins. In thinking more broadly about creating the largest possible moat with your IP, you also need to be considering what our guest, Mallory King, refers to as “brand protection” – or the copyrights, trademarks, and contracts necessary to protect your brand’s rights and assets.

Copyrights and trademarks in particular have seen a lot of limelight this year involving some of the biggest brands and pop culture icons. At the same time, major IP rights questions are erupting around the use of generative AI systems like ChatGPT. In addition to covering the basics necessary to help get you booted up, we’re going to use these high profile topics and Supreme Court cases as a vehicle to get a deeper understanding of copyrights and trademarks and some of the sharpest corners you should be aware of when managing your own brand protection.

** Topics Highlights **'

⦿ Copyright and Trademark Basics
⦿ Work made-for-hire and Friday the 13th
⦿ Jack Daniels Properties v. VIP Products
⦿ Brand protection expiration, Winnie-the-Pooh: Blood and Honey, and Steamboat Willie
⦿ Lizzo's "100% That Bitch" trademark appeal
⦿ r/WallStreetBets trademark dispute with Reddit
⦿ Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith
⦿ Generative AI: Humans as authors and fair use implications

** Mossoff Minute **

This month's Mossoff Minute, featuring Professor Adam Mossoff, looks at the introduction of the 2023 Patent Eligibility Restoration Act, its biggest criticisms, and why it needs to be passed. 

** Connect With Our Guest **

Mallory King is the owner and attorney at Breathe Brand Protection, PLLC, a boutique law firm specializing in all things brand protection. Based in Traverse City, Michigan, Mallory is passionate about helping entrepreneurs and small businesses protect their most valuable brand assets, both locally and nationwide. You can learn more about Mallory and Breathe Brand Protection at https://www.breathe.law/

** Follow Aurora Patents **

⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
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⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Thanks for listening! 

---
Note: The contents of this podcast do not constitute legal advice.

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 incentives align with societal good. Abraham Lincoln, who believed that the creation of the patent system was only surpassed by the discovery of America and the invention of the printing press in terms of the three greatest advancements in human history, once said, “The Patent System added the fuel of interest to the fire of genius.” The recognition and protection of mental labor and the fruits of the mind as natural property rights enabled any inventor – big or small – to profit from their discoveries and partner with those possessing the resources necessary to scale and bring new products and services to the marketplace. The exchange of this protection for an enabling public disclosure enhanced society and accelerated the pace of innovation by facilitating the open exchange of information and created the greatest free library of science and technological information in the world. And because the economy grows and society flourishes when innovation is encouraged, society was transformed in the 19th and 20th centuries as demonstrated by the scientific and technological revolutions that define our modern society and by virtue, created the greatest hockey stick graph in history.

But somewhere along the way, we lost sight of this. Patents became a victim of their own success. Their impact on society, the economy, and innovation became both ubiquitous and too often unseen at the same time. This episode is the start of our effort to help undo this collective societal amnesia about the significance of patents.

** Episode Overview **

• CliffsNotes Patent History, from conceptual origins in Ancient Greece through the pre-revolutionary English system and the origin of the word "patent", itself. 
• The U.S. Patent System, its democratization of invention, and its significant break from its predecessors, championed and breathed into existence by the collective wisdom of the likes of George Washington, James Madison, and Thomas Jefferson. 
• Embedded in Democracy. The prominent role patents played in the Federalist Papers, the Constitution, the first ever State of the Union Address, and as the third ever act of the first Congress. 
• Innovation Bridge or Blockade? How the differences in the U.S. system played out internationally across the Industrial, chemical, pharma, biotech, computer, and mobile revolutions.
• Trolling the Founders. How the fundamental virtues that made the U.S. system unique and proved successful over its history have now tragically become the primary attack vectors used by its opponents.

** Connect With Our Guest **

You can follow Adam on Twitter at @AdamMossoff, where he posts regularly on patent and innovation policy, including his excellent “this Day in Innovation History” tweets.

** 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/

Thanks for listening! 

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Note: The contents of this podcast do not constitute legal advice.

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 wearables space. Having been on both sides of the table, Dr. Iyengar's unique insights provide a comprehensive understanding of the essential role that patents can play in securing funding and in your company's long term success.

Sridhar and I are also joined today by:

⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Dr. Sophia Li, Patent Strategy Fellow at Aurora

** RISE Award **
We’re now accepting applications for the 4th Annual RISE Award! For the selected applicant, we will work closely with you and your team of inventors to provide one of the following:
⦿ A free provisional U.S. patent application or
⦿ $5,000 towards a non-provisional U.S. patent application.

Apply now: https://www.aurorapatents.com/rise-up-with-aurora.html

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/what-investors-want-in-patents-with-sridhar-iyengar

** 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! 

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Note: The contents of this podcast do not constitute legal advice.

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?  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.
⦿  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 is 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

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/open-source-and-patent-rights
⦿ Slides: https://www.aurorapatents.com/uploads/9/8/1/1/98119826/opensourceandpatents.pdf

** 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! 

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Note: The contents of this podcast do not constitute legal advice.

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, chaotic mess – leaving even the Federal Circuit Chief Justice at a loss on how to determine eligibility. The muddied state of invention enablement puts at risk the software innovations fueling economic growth and the key life science innovations that can save lives. Court interventions on injunctions have made it all but impossible for patent owners to stop others from using their property rights without permission, turning predatory infringement into an efficient business model. This already perfect storm was compounded by an act of Congress a decade ago that inadvertently created a patent killing machine that has weaponized the patent office against inventors. This has all been bolstered domestically by the deep pocketed marketing and lobbying campaigns of a big tech industry that is now destroying the ladder it once climbed up on. And is being exploited internationally in an undeclared cold war that has led to the greatest wealth transfer in human history – and begs the existential question of who is going to develop the technologies of tomorrow. 

Over the course of the past couple of months, we've had the opportunity and honor to host conversations with thought leaders across the patent world. Working from their insights, this episode explores the biggest problems plaguing patenting and how those problems impact the innovation economy that so very tightly depends on strong, predictable, and reliable patents. Building on that understanding, we work toward getting a more complete view of the legislative, judicial, and educational solutions needed to get back to the gold standard patent system. In doing so, we not only talk with our guests about their support for the proposed solutions on the table, but we also explore the strongest criticisms. 

** Resources **

⦿ Show Notes: https://www.aurorapatents.com/blog/patent-wars-innovators-revolutionaries-and-the-race-to-reform
⦿ Judge Paul Michel and C4IP: https://c4ip.org/
⦿ Adam Mossoff on Twitter: https://twitter.com/AdamMossoff
⦿ Randy Landreneau and US Inventor: https://usinventor.org/
⦿ Innovation Race Movie: https://www.innovationracemovie.com/
⦿ 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! 

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Note: The contents of this podcast do not constitute legal advice.