Fortifying Life Science Patents: Eligibility and Enablement

06/30/22 • 69 min

Patently Strategic - Patent Strategy for Startups

The life sciences are currently facing at least two major plagues in our patent world. The first is that many life science innovations have been deemed ineligible in terms of patentable subject matter. In other words, the courts and the patent office believe that the patent laws are not meant to protect these innovations. The second plague is that the courts believe that many life sciences patents are not enabled. In other words, they are not described in sufficient detail to enable one of skill in the art to make and use the invention.
These subject matter eligibility and enablement plagues manifest in dreaded Section 101 and 112 rejections. In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, leads a discussion, along with our all star patent panel, delving deeply into these rejections and, in the interest of avoiding a podcast 101 rejection, provides some very practical application tips that will help to fortify your life science patent applications.
Ashley is also joined today by our always exceptional group of IP experts including:
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Daniel Wright, Patent Strategist
⦿ David Jackrel, President of Jackrel Consulting
⦿ Shelley Couturier, Patent Strategist and Search Specialist
⦿ David Cohen, Principal at Cohen Sciences
⦿ Amy Fiene, Patent attorney at Vancott and adjunct professor at BYU
⦿ Steve Stupp, Partner at Stupp Associates, LLC.
** Resources **
⦿ Show Notes⦿ Slides
⦿ The Death of the Genus Claim
⦿ Final office action rejection frequency for life science patents
⦿ Examiner statistics (not an endorsement)
** Follow Aurora Consulting **
⦿ Home
⦿ Twitter
⦿ LinkedIn
⦿ Facebook
⦿ Instagram

And as always, thanks for listening!
---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

And as always, thanks for listening!
---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Previous Episode

Into the Patentverse: Web 3.0, Blockchain, Cryptocurrency, and NFTs

“Metaverse” is the buzziest of the buzzwords in tech today and will soon be joining the ranks of “AI” and “ML” as requisite keywords in the next generation of pitch decks and patent applications. But what are the core components of the Metaverse? And what are their implications in the world of intellectual property? The Patently Strategic Podcast will be exploring this topic over the course of several upcoming episodes.
We begin our exploration with Web 3.0. While it may prove to be the next great tech revolution, the broad shape and definition of the Metaverse itself is still more firmly baked in science fiction than in commercial tech reality. Many of its core building blocks, however, are likely right in front of our eyes (or headsets, perhaps). History shows that most major technology revolutions are rarely leaps, but instead evolutionary products of incremental steps, composed of many existing building blocks, met with market readiness. The Web 3.0 innovations of blockchain, cryptocurrency, and NFTs that are taking shape in front of us will no doubt be among these essential building blocks.
This third phase of the internet also poses some of the most interesting questions for the world of IP. What will the impact be on digital property rights in a secure marketplace, governed by smart contracts? How will copyrights play in digital worlds with their own art and governance? Is there merit in considering a new type of protection category outside of patents and copyrights?
In our very first IPWatchdog episode, Kristen Hansen, Patent Strategist and software patent guru here at Aurora, leads a discussion along with our all star patent panel, digging into:
⦿ The fundamentals of blockchain, cryptocurrencies, and NFTs – and why the hype
⦿ The state of the technology
⦿ Questions around what web evolution, blockchain, and NFT technology means for IP ownership
⦿ And strategies for protecting blockchain and cryptocurrency innovations
Kristen is also joined today by our always exceptional group of IP experts including:
⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ David Jackrel, President of Jackrel Consulting
⦿ Shelley Couturier, Patent Strategist and Search Specialist
⦿ Daniel Wright, Patent Strategist
** Resources **
⦿ Show Notes: https://www.aurorapatents.com/blog/new-podcast-into-the-patentverse-vol-1 ⦿ Apply to come work with us: 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.

Let us know what you think about this episode!

Next Episode

Prenuptial Patenting: Responsible Engagement with Engineering Firms

You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. Like many others, you may turn to the aid of an engineering firm or dev shop. This relationship is a marriage of sorts. But it’s a marriage that is designed to inevitably end in divorce! How cleanly, smoothly, and successfully this separation goes depends on the steps that you take before it officially begins.
Both parties come to the relationship with existing assets – IP, software, prototypes, ideas, documentation, etc. More will be created collaboratively throughout the course of the relationship. But how do you ensure you exclusively get back out what you came with and also get what you contributed and uniquely paid for?
In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion into Responsible Engagement with Engineering Firms, or what we affectionately refer to here as “Prenuptial Patenting”. Ashley and our all star patent panel walk you down the aisle and explore everything you need to know to experience marital bliss and an amicable divorce with your engineering partners. This talk covers the full life cycle from vetting partners to post development concerns and everything in between – with particular focus on relationship complexities like IP ownership, assignment from engineering firm inventors back to you, and how to avoid the traps of viral IP.
Ashley is also joined today by our always exceptional group of IP experts including:
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ David Jackrel, President of Jackrel Consulting
** Resources **
⦿ Show Notes⦿ Slides
** Follow Aurora Consulting **
⦿ Home
⦿ Twitter
⦿ LinkedIn
⦿ Facebook
⦿ Instagram

And as always, thanks for listening!
---
Note: The contents of this podcast do not constitute legal advice.

Let us know what you think about this episode!

Patently Strategic - Patent Strategy for Startups - Fortifying Life Science Patents: Eligibility and Enablement

Transcript

1
00:00:05,350 --> 00:00:08,922
Good day and welcome to the Patently Strategic Podcast, where we discuss all things at
2
00:00:08,936 --> 00:00:12,634
the intersection of business, technology and patents. This podcast
3
00:00:12,682 --> 00:00:16,158
is a monthly discussion amongst experts in the field of patenting. It is
4
00:00:16,184 --> 00:00:20,614
for inventors, founders, founders and IP professionals alike, established or aspiring.
5
00: