Josh Sloat serves as an Executive Technology Advisor with Aurora Consulting and provides consultation for patents in the software, information technology and telecommunications spaces. With over 15 years of engineering experience in mobile, web and desktop software and 20 years in the broader space of information technology, Josh brings a tremendous breadth of knowledge and insight to strategy development.
As CTO and head of product, Josh ran and transformed the entire product and tech arm of Axios. As the Senior Director of Mobile for Axios, Josh led new efforts in developing native reading and contributing tools for iOS and Android devices. Formerly, as a principal engineer with Articulate Global, Josh architected and lead the development of highly immersive, e-learning authoring tools for iOS and macOS. Previously, as a lead engineer with Thomson Reuters, Josh was responsible for the design and development of several award-winning mobile apps and played a significant role in the development of many industry-standard finance, tax and accounting-based Windows desktop applications. As a web developer with Version One and JCS Solutions, Josh helped to create, host and maintain several high-profile e-commerce sites. Prior to his focus on software, Josh held several positions with broadcast, utility and telecommunications companies that allowed him to dive deeply into network design and infrastructure, structured cabling and information technology operations.
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.
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.
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.
Virtual Reality (VR) and Augmented Reality (AR) intellectual property (IP) have been around for some time now, but how do they relate to the Metaverse? And how will VR and AR patent rights change as the Metaverse continues to evolve? The Patently Strategic Podcast will be exploring these topics in our next installment of Into the Patentverse.
Inventors and practitioners alike are continually trying to push the bounds of protection on innovations. Whether it’s describing a telegraph as a means for communication or a lightbulb as a means for lighting an environment, using broad language, like “means for” language, to cover all the possible workarounds might seem more advantageous than disadvantageous, at first glance. In patent law, this broad language or “means for” phraseology is called functional language because it describes the device or system in terms of what it accomplishes rather than the actual structure. However, using functional language has lost favor over time. For example, a blog published by Patently-O in 2011 shows that the use of “means for” language has dropped precipitously from about 1990 to present day. What has turned this seemingly advantageous practice into a disadvantageous one?In this episode of Patently Strategic, the panel walks through several court cases that either: invalidated a patent for failing to define structures in the specification for the all the means-plus-function claim terms or maintained validity of the patent because the specification provided sufficient structure for all the means-plus-function claim terms.
Just when we thought things couldn’t get worse, the state of patent law around eligible subject matter has fallen further into limbo with court decisions that dissenting opinions have said will “lead to insanity,” can only be the product of “result-oriented judicial activism,” have moved the system from its once reliable incentive to innovate “to a litigation gamble”, and could “threaten most every invention for which a patent has ever been granted.” Despite cries for help and urges to provide clarification from multiple presidential administrations, the Solicitor General, members of Congress, the U.S. Court of Appeals for the Federal Circuit, IP bar associations, and the Patent Office, the Supreme Court refused to hear American Axle’s recent bid to overturn a lower court decision that invalidated the company’s patent in a closely followed legal battle with rival Neapco Holdings.
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. The end goals are a great product and clean asset separation. You’ll want your IP and any newly created devices, infrastructure, etc. – and the engineering firm will want to not be inhibited from doing their job with other clients going forward.
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 science 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.