Top 3 Inventor Mistakes: Disclosure, Search, and Ownership
12/29/22 • 48 min
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.
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.
Previous Episode
Unpredictable Arts: Patenting Bio, Chem, and Emerging Technologies
Think your innovation is sufficiently enabled to secure, defend, and assert your patent rights? If it’s a biological, chemical, or emerging technology invention then you might want to think again. In today’s episode we’re looking into how to get more predictable results from the unpredictable arts.
Some technologies, like those rooted in physics and mechanics, are considered “predictable” by the US Patent Office, while others, like biological and chemical technologies, are generally considered “unpredictable.” It follows that the amount of disclosure required to enable an invention is related to the predictability of the technology, and so-called unpredictable arts require more description to teach a reader how to “make and use” the technology. Similarly, emerging technologies, being less well known, also require more disclosure to be fully enabled.
In this month’s episode, David Jackrel, President of Jackrel Consulting, leads a discussion along with our all star patent panel, exploring enablement for the unpredictable arts and emerging technologies. The panel discusses peculiarities of patenting unpredictable art and emerging technologies, with a focus on modern case law and statutes to arrive at a set of best practices for getting more predictable results when patenting these technologies.
Dave is also joined today 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
⦿ Shelley Couturier, Patent Strategist and Search Specialist
Before joining the group, as we often do, we’d like to provide a short primer on some key concepts in this episode for those newer to the world of patenting. This primer covers:
⦿ Section 112
⦿ What is the MPEP?
⦿ Specification vs. Claims
⦿ Genus vs. Species Claims
⦿ Markush Groups
** Resources **
⦿ Show Notes: https://www.aurorapatents.com/blog/predictable-results-from-unpredictable-arts
⦿ Slides: https://www.aurorapatents.com/uploads/9/8/1/1/98119826/unpredictable_art.pdf
⦿ MPEP: https://www.uspto.gov/web/offices/pac/mpep/index.html
⦿ How to Read Chemical and Drug Patents: https://www.aurorapatents.com/blog/how-to-read-chemical-and-drug-patents
** 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 co
Next Episode
License to File: Foreign Filing License Risks and Strategies
Foreign filing licenses – surprisingly sneaky and easy to overlook, but can come with significant consequences if you do. Many countries, including the US, require inventors to receive special permission to file with patent offices outside of the inventor’s ...or invention’s... country. A foreign filing license is a government issued document that represents this permission for inventors and companies to file in foreign countries. Failing to receive this permission can come with serious ramifications including fines, patent revocation, and even imprisonment!
Why so serious? Well, like with most matters of foreign export compliance, it comes down to each nation’s strong desire to protect its own security and economic interests. Allowing ideas to cross borders comes with the risk of the unauthorized exportation of technologies and sensitive information that could have implications for military applications, national security, and state secrets.
In this month’s episode, we're bringing you along for a tale of international mystery and intrigue and into the clandestine world of foreign filing licenses. Ty Davis, Patent Strategy Associate at Aurora, along with our all star patent panel, discusses:
⦿ The three main categories of filing license requirements
⦿ Strategies for data collection and how to navigate potential conflicts
⦿ And some example walkthroughs of international filing conflicts and their resolutions
Ty is joined by our always exceptional group of IP experts, including:
⦿ Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategist 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/license-to-file
⦿ Slides: https://www.aurorapatents.com/uploads/9/8/1/1/98119826/foreignfilinglicenses.pdf
⦿ FFL Table: https://www.aurorapatents.com/foreign-filing-license-requirements.html
⦿ 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/auro
Patently Strategic - Patent Strategy for Startups - Top 3 Inventor Mistakes: Disclosure, Search, and Ownership
Transcript
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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 episo
If you like this episode you’ll love
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