​​Patently Strategic - Patent Strategy for Startups

Do patents make drugs more expensive? And what role does intellectual property play in getting new medicines from the lab bench to patients? The questions have never been more timely. Biopharmaceutical innovation sits at the center of some of our biggest public policy debates. Drug pricing, access, generic competition, university research, venture funding, AI-driven discovery, follow-on research,...

When most people think or speak generally about patents, they’re really talking about utility patents – or patents that are primarily concerned with how an invention is used and how it works. But as it turns out, this is just one specific type of patent on the complete menu of options available for protecting your innovations. Another option, called a design patent, exists to – additionally or alt...

Willful infringement is a patent law concept that applies when someone infringes a patent knowingly or with reckless disregard for the patent holder’s rights. It goes beyond accidental infringement, often involving a deliberate choice to use protected work despite awareness of the rights holder. With unintentional infringement, the infringer can still be required to pay damages, negotiate a licens...

Patent abandonment is the premature relinquishment of patent rights for an invention. Abandonment can happen voluntarily for various strategic and cost reasons, but can also happen silently and unintentionally. It can happen before the right is even granted in the case of public disclosure. But it can also happen after the patent has been granted at many key points in its otherwise useful life and...

What are your options for protecting inventions across Europe? In this month’s episode, we’re taking a journey across the pond with a discussion on European Patent Practice. This episode is part two of a series we’re doing on International Patenting and follows Ashley’s exceptional Travel Guide to Foreign Protection from earlier this season.  Even in a globalized economy, patents are still nationa...

In this month’s episode, we’re talking about patent marking – and its massive implications on your ability to collect on infringement damages.   We’ve all seen patent numbers on physical products. Much like their copyright and trademark cousins, these designations are far from cosmetic. And instead serve a statutory requirement to provide public notice about your protected intellectual property. I...

Whether you’re a founder looking to take the next fundraising steps beyond bootstrapping, an aspiring angel investor looking to understand the risks of seed investing, or even a practitioner hoping to get a better grasp of how this all works hand-in-hand with patent strategy, today’s topic provides an incredible springboard into the high risk, high reward world of strategic fundraising for early-s...

In today’s global economy, the importance of international patent protection cannot be overstated. Your invention could be conceived of with a workforce distributed across several continents. Your manufacturing could happen in Asia or India, while your products are shipped into and distributed from ports in the target markets of the largest economies across the globe. Would be competitors and infr...

In this month’s episode, we’re getting high on innovation with a deep dive into cannabis patents!  As more and more states relax restrictions on both medical and recreational uses of marijuana and hemp, the U.S. cannabis industry is projected to reach $50 billion in sales this year and over $74.6 billion by 2032! This rapid growth is happening despite immense challenges brought on by a complex and...

If a court stripped away your property rights, wouldn’t you at least want an explanation? The answer is obvious, but the reality is appalling. The practice of revoking patent rights on appeal without explanation has been happening to inventors at the Federal Circuit Court of Appeals (CAFC) at an alarming rate. In over 43% of PTAB cases on appeal at the CAFC, inventors receive a single-word respons...

So, your patent application got rejected. Now what?  In this month’s episode, we’re talking about rejection. Specifically, the type that comes from the patent office in the form of an intimidating sounding three-digit number when your application gets denied by an examiner. Some time after submitting your application, it goes into a process with the patent office called examination. This is the pa...

An invention cannot be patented if the differences between your claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was conceived. Determining obviousness – and the validity of your patent – is more than simply establishing that the invention doesn’t already exist and that...

Patent examiners can make mistakes. Patent office clerks can misfile paperwork and cause procedural errors. The software tools, document formats like DOCX, and the IT systems your application passes through can have bugs. What recourse do you have when quality issues creep in at this stage? This is where petition practice, fortunately, comes to the rescue. ** Quality Patents Part 5 ** This is our...

For inventors, the promise of the patent system is the right to exclude others from making, using, importing, and selling their patented innovations for a limited period. But how do patent holders actually enforce those rights, particularly when the copycat product is being manufactured outside of domestic jurisdiction? In an otherwise challenging time for rights assertion, the ITC – or Internatio...

There’s not a more important concept that’s more widely misunderstood by those newer to patenting than continuations. So we’re dedicating Part 3 of our series on quality patents to everything you need to know about this essential step for future proofing and increasing the value of your portfolio. Void of pursuing continuations, the language of your patent is frozen in time at issuance. The specif...

The most terrifying thing that can happen to a patent owner is receiving what’s called an IPR or Inter Partes Review petition. This is a tool that accused infringers can use to invalidate patents. And they have … to alarming effect. As we’ve discussed, the kill rate at the PTAB is staggering. The Patent Trial and Appeal Board – or as regular listeners of this audience more commonly know it as, the...

Is your patent a vanity piece of paper for your office wall? Or is it a reliable, defendable, assertable, property right? The difference is often quality. Is your patent simply a transactional cost and a large pile of legal bills for your startup? Or is it a leverageable asset worthy of attracting precious investment dollars, worth its cost in multiples of valuation? The difference is often qualit...

We’ve seen few entrepreneurial success stories that haven’t involved heavy doses of perseverance, grit, observation, and creative problem-solving. Today’s guest possesses these qualities in spades. And while I can’t necessarily recommend some of the more death-defying specifics of his approach … at least not without a lot of “don’t try this at home” fine print :)  … I do think that most inventors...

The difference between getting claim construction right and getting it wrong is the difference between a valid patent and an invalid patent – and the difference between millions of dollars awarded from infringement decisions vs. ending up with a worthless piece of paper. In this month’s episode, Dr. David Jackrel , President of Jackrel Consulting, leads a discussion into three real-world applicati...

We’re talking about AI and its impact on the patent system. This month's episode evaluates where we presently are and considers where it could all be heading. Dr. David Jackrel and Dr. Ashley Sloat lead a two-part discussion with our all-star panel that begins with a deep dive on the present state of AI patent tools for searching, proofreading, drafting, and prosecution – and then moves on to...

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...

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...

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...

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...

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 your...