For decades, conventional wisdom had most of us believing that automation and the inevitable rise of the machines would upend blue-collar industries first. But then AI had something to say about all of that. From passing medical licensing exams to writing code to even acing the Uniform Bar Examination, AI has become society’s latest (and perhaps most capable!) change agent in the professional workplace. At an astonishing pace, it’s erasing all assumptions as to what industries will be most impacted. With the most recent advancements centering around the understanding and generation of text and images – the core ingredients to patents – it’s becoming abundantly clear that patent practitioners and inventors are far from immune to AI’s effects and reach.

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What would you have been without a role model? What would you have done had you not known your career path was even an option? The answers to these career and life-defining questions often come down to exposure, access, and whether or not we could picture ourselves doing something in the first place. I doubt there are many readers on here who are not regularly awe-inspired by the incredible work of the inventors we’re fortunate to know and serve. There are few nobler or more important professions. While we already know this and possibly take that knowledge for granted, our future depends on as many kids as possible – from as many backgrounds as possible – being inspired by, and personally identifying with, this world-shaping path. Our special guest in this month’s episode, James Howard, is taking on that challenge.

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Claim construction is a process in which courts attempt to interpret the meaning and scope of the claims of a patent. It’s effectively 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 de-risk 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.

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The global video game market topped $183 billion in 2022 and is projected to exceed $300 billion by 2026. To put those numbers into perspective, this makes gaming bigger than the film and music industries combined – and dwarfs the combined revenue of the NFL, NBA, MLB, and NHL! Worldwide board game sales, while significantly less, still account for over $2 billion. That’s a whole lotta IP in need of protection, so in this month’s episode of Patently Strategic, we’re talking games.

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Claims are the fundamental building blocks of a patent. There simply is not a more important concept to grasp in all of patent strategy. As former Chief Justice of the Federal Circuit, Giles Rich, 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.

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Non-diluting capital can be an essential source of funding when trying to get your innovation off the ground. Investor money comes with the loss of equity and/or control. Family and friends’ money may come with the risk of strained relationships. In comparison, essentially free money by way of government grants can seem like an obvious choice, right? And it is for many. The Small Business Technology Transfer (or STTR) and Small Business Innovation Research (or SBIR) grants are the largest source of early-stage capital for life science startups in the United States, combining to provide over $2 billion annually in support from federal agencies like the National Institutes of Health (NIH). But like money from investors, friends, and family, these grants do still come with some serious strings attached and potential ramifications you need to be aware of.

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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 this month’s episode of Patently Strategic, we take a fast-paced tour through some of the highest-profile copyright and trademark disputes – both recently settled and freshly on the horizon – involving the likes of Jack Daniels, Mickey Mouse, Andy Warhol, Jason Voorhees, Winnie-the-Pooh, Lizzo, and WallStreetBets. Fortunately for us, sometimes life can be more entertaining than art. In addition to covering the IP fundamentals necessary to help get you booted up, we’re going to use big brand IP current events and Supreme Court cases as a vehicle to gain a deeper understanding of copyrights and trademarks and some of the sharpest corners you should be aware of when managing your own brand protection.

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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 and the critical role they’ve played as the primary driver in society for encouraging innovation, promoting public disclosure, facilitating technology transfer, and stimulating economic growth.

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Patents have many audiences, and folks from our industry tend to focus most on the patent office and the courts. But for inventors, they often care more, initially anyway, about investors. And investors are going to look at patents in very different ways than an examiner or a judge would. That’s the perspective we’re hoping to offer in this episode of Patently Strategic. 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?

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Use of free open-source code can be a massive accelerant 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. For some licenses, if open-source is included and combined with other proprietary software, the combination of that software becomes bound by the open-source license terms. This viral, infectious attribute can have profound implications for code intended to be proprietary and protected. Consequences can include being required to release your code to the public domain as open source, automatic patent licenses for other users of the open source, and an inability to assert patent rights against infringers of your invention.

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Over the course of the past couple of months, Dr. Ashley Sloat and I 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.

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The United States Supreme Court is set to hear opening arguments in Amgen Inc. v. Sanofi on March 27. This is a case that could have profound impacts both on the invention enablement issues that have been plaguing life science patenting, but also more broadly on defining the contemporary role that the patent system will play in our innovation economy going forward. Specifically at issue will be the question of what genus claims require from an enablement perspective. Will the enablement standard be governed by the black and white, codified Section 112 statutory requirement that the specification must only teach those skilled in the art how to “make and use” the claimed invention? Or will the Supreme Court lean on lower court-based additions to the standard that the specification must enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation?

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Foreign filing licenses – they’re surprisingly sneaky and easy to overlook, but can come with significant consequences if you do. Many countries, including the United States, 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.

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The patent world is full of trap doors that lie waiting for unsuspecting inventors. Without a good map and an intentional path, mistakes and missteps can be plentiful and costly. Some of these mistakes are reversible with limitations. Others have no undo button. When is it safe to talk about your idea or sell your invention? How do you hedge against invalidation and rejection from blind spots with competitor IP and prior art? How do you ensure you actually own your invention when working with employees and contractors? The answers to these questions – and even knowing to ask them in the first place – goes a long way toward keeping inventors on solid ground. Long term success will depend on the steps taken – or not – very early in the journey. This timing is unfortunate for many inventors, however, since it’s also when they know the least about the process.

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Think your invention is sufficiently enabled? If it’s a biological, chemical, or emerging technology invention then you might want to think again. Einstein famously predicted that gravity travels in a wave in his general theory of relativity, and 100 years later, the first gravitational waves were experimentally observed.  Some technologies, like those rooted in physics and mechanics, are considered “predictable” by the U.S. Patent and Trademark Office (USPTO), 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, of Patently Strategic, Dr. David Jackrel, President of Jackrel Consulting, along with our all-star patent panel, discusses some peculiarities of patenting unpredictable art and emerging technologies. 

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