IP Trends for Emerging Penn Engineering Technologies: Webinar Recording

IP Trends for Emerging Penn Engineering Technologies: Webinar Recording

Show Video

Welcome everyone. I'm Laurie Actman with PCI. Our guest speaker is Aaron Rabinowitz, a partner with   BakerHostetler, is a long time expert at the nexus, I would say of   business and intellectual property, and a close partner with PCI working with our tech   portfolio. And always provides a lot of great insights and strategic advice. So welcome Aaron.   Terry Bray is part of our program. He has joined us for the program today and he's   just joined PCI as the leader of our technology marketing and licensing efforts across Penn   Engineering and many other schools here at Penn. So welcome to Rerry who joins us from Georgia Tech.   With that, Aaron I'll turn it over to you. [Aaron Rabinowitz] Okay, well thank you very much. Thanks for the   kind introduction. I've had the pleasure of working with Laurie and  

others at PCI, I see Vivian is on the call as well. So it's great to see everyone   and yeah, just happy to be here and looking forward to discussing IP and patenting   especially as it relates to engineers. So yeah, thanks again for for inviting me. I know   the last time we we did this, it was November 2020 and I remember saying at the time that I hope   the next time we did it we could all be in person and I guess I wasn't quite right. But anyway,   I think things are certainly improved since then, so it's good to see everyone again.   So today, I'd like to talk about IP and patenting, especially as it relates to engineers   and particularly to how it relates to activities at hand and through PCI.  

So just as kind of a road map for today's discussion, I'll kind of   introduce myself and we'll talk about what I like to call the the flavors of IP then we'll   talk about patents in particular. Certainly we'll go through some of the highlights from  Penn's activities this past year which has been a really good one for Penn.   Talk a little bit about good record keeping and sort of how that relates to   the patenting process and why the good records that researchers keep just in   the course of their everyday research, why those are really important not just in the research but   also for for the patenting side of things. And then I'll go through a couple interesting  

recent patenting trends and wrap  up and take questions. So anyways,   as Laurie said just by introduction. I'm  Aaron Rabinowitz. I'm a partner at BakerHostetler.  I've had the pleasure of working with  Penn for well over a decade now and   have had the privilege of working with inventors in different departments   and on a great variety of technologies for a number of years.

So getting started since it's lunch time, I thought I'd kind of pitch this, it's sort of flavors and   I found this good image of the Philadelphia four major food groups, right? So we've got water ice or   wooter ice, cheesesteaks, pretzels and hoagies. So hopefully everybody's   eating lunch or soon after because I was pretty hungry when I put this together. So   the four basic flavors of IP which I think everyone's probably heard of are: copyrights,   patents, trademarks and trade secrets. And just sort of briefly, we're going  

to focus on on patents today, but just briefly, copyrights is a flavor of IP   protection that that relates to things that are expressed or   sort of really memorialized in a tangible medium. So those are things where you see the copyright   notice on a book or on a cd or a compact disc or an audio tape. Things   where you have something that's been recorded or otherwise, what they say is fixed   in a tangible medium. That's copyrights and that really just covers kind   of the embodiment of what's in that medium, the words on the page in the book.   Patents which we'll focus on and I'll talk about in a second. Trademarks I think   people have heard of. They're sort of logos, words, things that are used to describe  

the origin of a product. So you think of  corporate logos like the Nike swoosh,   the Apple apple, things like that. That let you know at a   glance or a with a very quick inspection the source of a good. So that you know who   made it. You see a pair of shoes they  look snazzy, you see a swoosh on the side, you know  

they're Nikes and maybe you try to find them online because you like them that much. And trade secrets, which I think people have heard of often times in the context of   the Coca-Cola formula, it's a type of IP that covers something that is secret.   Could be the formulation for Coke, it  could be the way that Starbucks or or Trader Joe's   decides how to locate their next store.  It's not an accident where Trader   Joe's places its stores. It is not an accident where Starbucks places their stores as well.   But there's probably I think, there's going to be some sophistication behind   the selection of those locations and that's a trade secret. Starbucks is not   going to tell Dunkin Donuts how Starbucks locates their stores and vice versa,   but that's something that's kept secret. Patents is a flavor of IP that can cover a lot of  

different things and you can use those  patents, as we do, to protect and sort of cover   just about any form of technology. It could be a composition of matter, pharmaceutical,   something like that a fuel, a biofuel, things like that.   It could be a medical device, things  like a bone screw, implants, those   sorts of things. Could be coatings, could be devices or systems, x-ray machines,  

MRI machines, advancements of those things that maybe relate to medical imaging,   just as some examples. So they can also protect processes, methods of   improving something. Methods of baking something. All sorts of technologies.   And what they do, patents is they provide the owner with the right to exclude others from making or   using or selling the technology. That's in the patent and that's a pretty powerful business   tool because that's something you can do to exclude your competition if you've got   a patent on something that's very foundational, you can imagine whatever company has   the patent on the touch screen, that's a pretty powerful patent because someone who comes along   and wants to make a new smartphone, if they want a touchscreen on that smartphone, they need   to come to the touchscreen patent owner. And patents can be licensed. They can be   used which is basically like renting them to others who need   access to a particular technology. You may have a patent to touch screens, but you're not in the  

business of making touch screens, so you're happy to license that patent to someone who does   make touch screens for safer smartphones and you would charge a licensing fee. Five dollars per touch screen or something like that. You can also sell the   patent, like any other piece of property or other business assets.   So patents are certainly very useful, especially in the context of a research institution where there's   all kinds of great research going on that's of commercial and really societal value,   but certainly of commercial value as well. And that can be licensed to help recruit costs  

related to developing the technology and to generate revenue for the   university and the owner. So as I said switching gears a bit, but still staying   on the topic of patents, this past year was a really successful one for Penn. I don't have to   tell those of you on the call about this,  but just to kind of summarize some of the things   that happened in this past year, I think we'd all seen John Swartley's terrific   recap message from a few weeks ago. But first of all, in this past year, more than $815   million dollars raised by Penn-affiliated startups. The most ever which is pretty terrific in   any year, certainly in a challenging year like this past one. So great year for   startups that are Penn-affiliated. Startups that may be using Penn developed technologies which  

really speaks to the value of the technology being developed at Penn.   This past year, 142 patents were issued to Penn and its faculty inventors,   and that's a record. Most patents issued to Penn's faculty in in one year   and that happened in fiscal year 2021. 142 patents that's like better than a  

patent every three days which is pretty  great. So a really great year in terms of   patent issuances. I think we all   read the news every day, we know the mRNA vaccines. Well Penn's patent-protected  

mRNA technology was included in the first FDA approved COVID vaccines and it would really   be all impossible I think to overstate  what an impact that's had. So these are   things that happen in 2021 and on top of these other things, 740 executed commercial agreements   in FY 2021. That's like two a day, which is pretty terrific. So I think by   all accounts and from really every direction, it's been a really great year for Penn and Penn IP.  

Again in a really challenging year. So kind of switching gears again,   where do engineers fit in right? We know engineers, we love them, where do they   fit in to the patenting process. And the truth is engineers and  other researchers they really fit in at every step of the patent process. We'll talk about this a  

little bit more but certainly at the beginning engineers are developing technology, researching,   testing it, refining it, and getting that technology to a mature stage   and then the engineers, the researchers, they advise the Penn Center for Innovation (PCI) on their   progress. Are there plans to commercialize? Are there commercial partners who   are approaching? Are there plans to disclose the technology? What conference?   That's where PCI gets looped in. Engineers assist PCI and legal counsel   with patent strategy, help with drafting the patent application, discussing the details of the   technology, making sure that the details are described just right in the patent   application and also the researchers and engineers are extremely helpful during the patent   prosecution process where you're going back and forth with a patent examiner   explaining to them what the technology is, how that technology is different than what's   come before, and why that technology is worthy of a patent. And who better to do that than the  

engineers themselves who develop the technology that's in that patent application. And   I can speak from experience and hopefully some of the inventors can as well that   having an inventor available to speak with a patent examiner to answer   the examiner's technical questions is invaluable and I find that anytime you can get an examiner   connected with an inventor and have them talk the talk and get into the details it   really is very productive. So engineers are valuable at that stage as well   and certainly the commercialization stage. Engineers can help support   the commercialization of the technology, discuss it with potential partners, discuss with inventors,   get investors and so on. And really, engineers fit in at every step of the process,  at all stages and also in a very important way. And the patent process,   one of the things that's crucial, and  we we saw this in a slide here, where we talked   about keeping PCI in the loop, is timing. Certainly at academic institutions  

it is very much about publications and  getting technology out there and getting it   out to the field, but there's a danger with that, because if you cannot   patent, with some exceptions, something that's already been publicly disclosed. So   timing is everything. So you can imagine a situation where a very well-meaning researcher,   they publish an article on their new DNA sequencing technology, or something like   that, chemical production technology, publish their article first, then file their patent application.   Seems like a good idea? Seems like the natural course of things? But if you do that, then you can   only obtain a patent in the United States, because in the United States you're allowed to publish   or disclose your technology before you file your patent application. That's not the case  

in jurisdictions like Europe and China, Japan, that are outside of the United States. And if that   happens, if you publish before you file your Penn application, you cannot get a patent in those other   jurisdictions. So the best practice and something that we've worked on with PCI and   others is to file your patent application first then publish the article. By doing it that way,   you preserve and protect your ability to  obtain patent rights in that technology worldwide,   not just in the US. But outside the US, in other countries, in jurisdictions that may be   commercially important. So again, keeping PCI in the loop as far as plans to publish, plans to  

present at a conference, those sorts  of things, is very important to do. So PCI   can review, analyze, and make decisions about when to file, whether to file a patent application,   especially if there's an upcoming opportunity to publish or otherwise disclose the technology.   We talked about that so again, advise PCI if we don't remember anything else from today's   presentation, hopefully remember a couple things, but maybe the most important thing   is to advise PCI. Let Penn know before there's going to be a public disclosure of the technology   and again public disclosure can take many forms, right? They're sort of the traditional   journal publication. It used to be that journals   were published on paper, but now there's an early online publication before the official print takes place. That online publication counts. So you want to get out in  

front of that and beware an early online publication. So as you're speaking to journals,   submitting manuscripts, it's important  to find out from that journal what is their   policy and practice on early online publication, because that that online publication can count   as as a public disclosure. Thesis archiving - you think of a dusty old thesis on a dusty   old shelf in a dusty library. That's a  public disclosure because someone could go to that   library and find it. So even though the thesis is archived, and could be found   that's considered a public disclosure. So something to think about.   If you're working with grad students,  others who are preparing theses and   similar things that can be considered a public disclosure.  

Conference presentations in person or virtual, those can also count of course as public   disclosures. A lot of times, conferences will be published, a book of abstracts or condensed   versions of talks or posters, all of those things can count as public disclosure. So again,   keeping PCI in the loop before there's any sort of public disclosure is critical. Online   only publications, things like archive and med-archive, those are great ways to get technology and   research out there. There are also great ways to perhaps inadvertently have a public disclosure.  

So again, even if you're planning to submit to maybe an online only publication,   something that's sort of non-traditional like archive or med archive or others, those   count. So certainly advise PCI before there's any public disclosure of the work.   We talked about record keeping and I  know that researchers are terrific record   keepers, everyone keeps an immaculate notebook, so they could find anything they did at any time. That   record keeping is important for the research but also very important for the patenting process   we mentioned a few minutes ago. So here's a couple things to consider when it comes to record keeping.   When was the technology first developed? These dates can be important. Who's in   the cast of characters, so to speak? That worked on the technology? You've got perhaps a   PI (principal investigator). They've got their lab, maybe some post-docs, grad students,   maybe an undergraduate summer researcher, who worked on it. Do they have a collaboration with  

another institution? Do they have a collaboration with maybe another school within the university?   Perhaps a collaboration between the engineering school and the biology department? Things like that.   Where are these other characters located? Are they at another academic institution? Are they   at a corporation that's collaborating? Are they at a federal research lab? These are   important things to track and to let  PCI know because these things can all impact the   patenting process. Of this cast of characters, who conceived of the technology. Was it the PI?   Was it the the postdoc who followed directions? There was a summer intern who worked on   the technology, but did they conceive anything or did the summer intern just kind of carry   out instructions or follow directions.  Because that that's very important. Because   you want to make sure that you know who the inventors are on a patent application. Inventors   are those who conceive the technology, not just those who just sort of followed directions.   What funding was used? Was there federal funding? Was there some other form of funding used   to support the technology? A very important piece of information that the PCI team will need to know.  

Also, was there use of any sort of material that's subject to a third party obligation. Maybe   a researcher at another institution sent a sample that was then used to help test   the technology or refine the technology. That's important to know. Just to know who are all the cooks in the kitchen when it comes time to file a patent application.   So if you think of it, I guess in may be a visual sense, you're  first universe of people when it comes to patent applications, it's who worked on the technology.  

But then you really want to know again who conceived the technology? Those are the inventors. Who had federal funding? You'd want to know that because again that's something that needs to   be reported and tracked. So these are the universe of information that's   very important to track. Which I think hopefully everyone does. But it's also important information   to convey to PCI during the course of describing and discussing a technology.  

And please, if anyone has questions, please jump in and feel free to interrupt.   So I thought it would be helpful to just  give a couple examples where good record keeping   came to the rescue and really helped out during a particular patent application.   Just to show how valuable it is to have good records. So I had worked on the matter,   I've kind of sanitized the dates and other things to protect the innocent, but imagine   you filed a patent application in 2004. About four years later, U.S. patent office gets around   to looking at it and they reject that patent application. They say this patent application  

is the same as what was described in an article by Smith. And the smith article was from January 2004,   that's before the US patent application was filed. That looks like trouble. It looks like   there was an article describing the technology that was then filed in this patent application and   because the patent application doesn't introduce anything new, it's not patentable. However, this   particular technology was. So we can see that Smith sort of predates the patent application,   however, this technology was supported by a grant and the grant was filed in December 2003   which is before the date of the Smith article. And the good news is, in the United States,  

in certain situations, if you can show that you developed your technology before something   in the literature, that the patent examiner has identified, you can    predate this piece of literature. So in our case, the inventor kept excellent notebooks.   It was able to show that although the patent application was not filed   until May 2004, they had been working on the technology since   December 2003. So they were able to predate the Smith article and then were able   to eventually obtain a patent on the technology, which they would not have been able to do   if they didn't have this good record keeping to show when they first   conceived of the technology that was included in the patent application.  

A total victory here for good record  keeping. Another example of good record keeping   is, and this does not involve University of Pennsylvania but   I've sanitized everything. But you have a professor who moves from one university to another.   Then they file a patent application after they come to their new employer, which I've   said is based on a technology to change lead into gold. That patent application publishes   and the professor's former employer notices and the former employer says, wait a minute,   that technology that you've just filed a patent application on, that's something you developed   while you worked at Alpha University. What's happening here? So there's a bit of a dispute   between Alpha and Beta University about who owns this technology. Beta University would say that they're the owners, because he worked at Beta when he filed his patent application,   but turns out that this faculty member's advisor at Alpha had sent themselves an email back   in 2005 describing the technology and also stated that they had shared it with Professor X.  

So this proves that the advisor, not Professor X was the true inventor and because of that Alpha   University owned the patent. So again, a victory for records, in the sense that,   because of good records, they were able to establish who the true   inventor was of this lead to gold technology. So again, just good record keeping. It's helpful for all kinds of reasons. In particular,  it can be very helpful in the patent process.   So let me pause there and see if there's any questions. Anybody is welcome to unmute and  

ask questions if you have them. Otherwise, I'll just sort of keep going. [Attendee] Hi Aaron. I have a question. Thanks for your presentation. Your first   records to the rescue example. Is that strictly in a pre   AIA example or would that still be  the case? [Aaron] Yeah. That's from some years   ago. So that is a pre-AIA example. So the question just for the the group,

for those who may not be quite as deep into patent law, has to do with a change   in the law around 2013. So that example, I think good recordkeeping, can always help.   I think sometimes there's more of a premium on   first to disclose or first to file now than then what you see in that example. But   there are plenty of pre-AIA applications out there. So good record keeping is still   going to be important. Thank you. Let me switch gears a bit to get off   of record keeping and talk about some recent patent trends. I think with  

what we're seeing now with COVID and  other things in the world, I think it's   always interesting to look at patent trends to see where research   is headed. How events in the world are maybe influencing the directions that   the research is taking. And it's just sort  of interesting and certainly patents,   patent records are a great place to find  this because there are a lot of patents.   And the patent offices around the world, in the U.S and otherwise, do a really nice   job of classifying patent applications into particular technology buckets - medical devices,   computer systems, signal processing, those sorts of things. So you really just get an  

interesting snapshot of what's happening in the world, technology wise   at any given time. So I did a digging before beforehand, and found some  interesting trends that I thought I'd share with the crew.   So one thing that I thought was interesting. So this slide is showing top patenting   trends, I guess. Fields by country, certain countries. This is from 2019.   It's pre-COVID and we'll talk about that in a slide or two.  But before, and it's interesting to see just how different countries have, what they focus on, technology wise. And again, what this is showing is  

patent application. So looking at the US, for example, of patent applications in the   US in 2019. What were the most popular general fields? So in the US in 2019, computer   technology, first, most popular. Medical technology second. Digital communication third.

Think back to 2019, things a little simpler back then.   Those were the commercial priorities  in the US. But things a little bit   different in in some other countries. For example, looking at Germany   transportation was the first, most popular field for patent applications.   Second was electrical machinery for apparatuses and energy and third mechanical   elements. An interesting snapshot of maybe where the German economy was  

pointed in 2019 and again look at Japan, a little bit different there.   Electrical machinery apparatus, energy, that was pretty high up. Transportation pretty high   up also. Computer technology very high also in Japan. So an interesting snapshot of   the world in 2019. I think you could  look at this and come away with a lot of   different kind of ideas. But interesting, you can see again in 2019 at  

least where countries were sort of headed technology and commercial wise. But we're not in 2019 anymore. So I thought it'd be interesting to look at some patenting trends   that are more recent since really 2020  and the world that we live in now.   The coronavirus obviously is on everyone's mind and it's interesting. So I had put together   this slide to track coronavirus related patent documents.  

This would include patent applications, granted patents, basically anything   that's considered a patent document and you can see if you look at the   x-axis what happened by year and you can see a couple bumps, right?   We see a bump in 2003 to 2007 or so and that coincided with   the SARS emergence back then and then   remember the MERS coronavirus that was a couple years later, you see a bump there.   But neither of those are quite the same as what we're confronting now and   unsurprisingly, we see something like this basically starting in, really   late 2019 but into 2020. So just interesting to see again, it's a fairly crude   data set but just searching for a coronavirus this is what you   come up with. No surprises here but interesting to see    the ramp up starting with SARS and I  think that's really put the idea   of coronavirus on the radar and then interestingly,   here's something that slices those data a little more thinly, looking at particular   coronavirus patent families and I know  it's a little fuzzy here, but you can see   through the color coding different flavors I suppose of coronavirus   in patent documents by year. And again you can see "green" SARS , it's there   

MERS, you can see some of that brighter purple   and then you can certainly see the  red taking off, of course, in 2020.   Yeah, no surprise there but, this is quite a spike.   Another thing I thought would be interesting to look at is a more general looking at coronavirus, but just  general technology fields as to what's happened   in the last couple years. So what I have here is looking at patent grants. So this is   a backward looking indicator, because when a patent is granted usually it takes a couple   years for a patent to work its way through the patent office. So if you get a patent in 2021,  

that's probably based on a patent application that was filed in say, maybe 2017 or 2018.   It could take a year, maybe two  or three years. So this is looking at   technology fields, sorry, granted patents of technology in certain technology fields and   how the number of patents for each of those fields changed from 2020 into 2021 which is really saying   what was happening in 2017 and 2018 when those patent applications were filed. So you  

can kind of see in like 2018 or so, patents matured three years later and   at around 2018, the year-to-year growth of patents related to computational models was huge, 35% year   to year. So computers back then, pre-coronavirus, a really big growth area. Recognition of data,   kind of big data processing, that  sort of thing was growing three   percent year to year. And a couple other things were declining a little bit.   What's interesting is, things that were health related, so drug formulations   related patents, related to microorganisms and enzymes, medical devices particularly,   things that are generally categorized as devices for introducing material into the body,   those things were in decline, right? You look at this and those were kind   of in decline, maybe two or three percent declining for drug formulations, decline for   microorganisms, again devices for introducing material into the body. Those were declining  

before coronavirus. This is interesting  to see. So unsurprisingly now, my   next slide here is showing patent applications which is a forward-looking indicator percent   change from 2020 to 2021. So this is looking at which in particular technology fields   by what percentage did patent applications in those fields increase 2020 to 2021. In other words,   how did coronavirus change things? Well we could see it changed it in a pretty big way,   because all those healthcare things that were down in the red years earlier, are now growth.  

So microorganisms, those are growing by maybe three to five percent a year, drug formulations   were up, devices introducing material into the body had a huge growth. Unsurprisingly was   in peptides, that was not on the earlier list and now those are obviously   related to what's going on in the world. Those are growing by maybe six or eight percent and   peptides were not even on the previous list. So kind of an interesting,   perhaps only to me, but interesting to see just how coronavirus has   catalyzed increases in patent  applications in certain fields and certainly   medical and healthcare fields are way up. Computational models   still strong, certainly possible that some of those models now are more healthcare related.  

And likewise, recognition of data also  perhaps healthcare related now as well.   So just kind of an interesting snapshot into the world of where technology is   headed now that we're deep into the coronavirus time.   So anyway, I thought this was interesting trends to see.   So to summarize here, I know we covered a lot of ground,   in a couple different areas, inventors and engineers, they make the technology   commercialization process happen. They're involved in generating the technology, interfacing with PCI,   helping with patent application, working with patent examiners, getting the   patent approved, that's all things that  the engineers and inventors do. We talked about,   if we only remember one thing, protecting patent rights by letting PCI know, advising PCI before   there's any public disclosure of the technology. PCI is great. They are there to help and  

it can greatly reduce everyone's blood pressure to keep PCI in the   loop as early as possible as part of that. Certainly advising PCI of other developments   which may not necessarily be patent-related. They may still have commercial potential, so   tangible materials, software, things  like algorithms, things like that   may not necessarily be patentable, but may still be things that were useful or even very useful   in helping to develop the technology, because those things again, even if they're not patentable,   still have their own value and they may  have commercial potential that   could be realized through some work with PCI.  

And lastly, we talked about record keeping to the rescue. So I'll say it again, record keeping   to the rescue. Maintaining records  of team personnel, who worked on a project,   the personnel's contributions, what did each person do, who conceived   this aspect of the technology, who  conceived another part of the technology,   cast of characters that is very important. Grant support, federal support, other support   collaborators within the institution,  collaborators and other institutions and also   the key dates on which you first conceived the technology. Dates that you plan to   publish the technology, all those things that are part of record keeping are important to track and   just incredibly valuable and useful to PCI and others in the patenting process. So I don't  

want to take up everybody's entire lunch hour, so I'll sort of pause here for questions.   I know we covered a lot of ground, but happy to discuss anything that we saw today.   [Laurie] Aaron, thank you so much for the presentation which we'll share with everyone afterwards.   And I'll just kick it off. I thought your analysis of technologies that saw an increase in patenting  

during COVID, just all of that, was super interesting. Just one question I had for you.   Is it possible that the USPTO told their  staff to prioritize COVID oriented technologies   that they could be reviewing at the expense of other non-related directly or indirectly   technologies to COVID and I'm asking that question because I know especially in the   first year of COVID, we at PCI did that just because we were asked to fast-track anything that   we thought could be a useful tool. Or I guess, even better would be, there was a lot   of innovation anyway and just more came forward in this space. So I just wanted to hear your thoughts  

about that. [Aaron] Yeah, that's a good question. Yeah. Certainly I think there were.  I think the PTO was encouraging inventors and other stakeholders   to prioritize and file IP related to COVID but I think they're, as you   say, there may have been technologies. Look, I don't want to say they were looking   for a home, but perhaps technologies, they were kind of more platform technologies that their inventors   realized could be adapted specifically to COVID applications. You can imagine    something someone might come up  with a technology related to say a small motor and   they realized that that would have application to a miniaturized ventilator or something   like that in the earlier days of COVID. So I think you're right. I   think there may have been some of both where the piece the PTO, whether written or unwritten, may   have prioritized some things. But I think also as you say, I think inventors and other stakeholders  

were either developing new COVID technologies or   kind of realigning technologies they had been working on in general and kind of realigning   those toward COVID related applications. But it is pretty striking to see   the other thing that I thought was interesting was as something's really jumped,   some things also stayed exactly the same. So I make no political adjustments here, but you can   see like reducing greenhouse gases like pretty low both times.

On the other hand, I think when you have only so many resources and your choices   are coming up with something to fight greenhouse gases or something to fight the pandemic that's   surging, I think you try to adjust the pandemic, but yeah I   think there's probably some of all those things happening in in 2020 and 2021.   [Laurie] Okay great. Thank you. Do other folks have questions? You can certainly put them in the chat or on mute   and while we're waiting to see, I'll just say, Aaron thank you so much for very clear   and consistent messaging for how to work with PCI. It's very obvious that you're a long time partner   and also hopefully it's obvious to everyone what a great asset Aaron is for us in terms   of working with patenting technologies in the tech side of our portfolio. So we didn't pay him to  

say any of those things. He's just a very strong partner of ours. So thank you. [Aaron] My pleasure.   [Laurie] Any other questions? [Vivian Martin] Hey. I have a question regarding software. There's two camps - those who   are all patenting software and those who are like, "it's useless". Could you provide guidance for   our faculty members as to either or what are the criteria that would direct an invention around an algorithm software to filing IP versus just keeping it as a tool.  

[Aaron] Yeah sure. That's a good question. I guess a couple of things come to mind.  I think it's software and algorithms as  you say, in particular, it's a little bit of a   moving target at least in the United States in the sense that the way   the patent examiners will review is a little bit of a work in progress.   The patent office will issue new guidelines to patent examiners every   so often and everybody kind of interprets them differently. But I think in general, what   I've seen is helpful to the extent that there's software or an algorithm as you say that's   it's clearly tied to the improvement of some operation, it could be   the operation of a machine or like an instrument for medical imaging as an example,   it could be related to the improvement of the operation of something, that's maybe a little less   than tangible. Like perhaps an improvement in the way that a database does   what it does. So I think if the premium  on improvement is maybe a good place to   

start as you're evaluating whether to file on a piece of   software or algorithm. Or maybe if it's commercially useful but maybe   isn't quite the right fit for like a patent  application. As an example, I think patent   examiners are comfortable or more comfortable anyway with things where you can describe   a particular improvement that's achieved or realized by the use of the   software or or the algorithm. I think a software module that's   useful but like more for convenience and not necessarily   like improving the operation again of a machine or an instrument or even a database   that might lean a little towards patenting that, so I    think maybe looking through the lens of an improvement that's a   good place to start when you're thinking about algorithms or software. [Vivian] And as a follow-up question,   let's assume it improves the operation of the machine and could be a tremendous improvement,   how do you? I mean the patent  application is going to publish and so   providing a path to potential infringers  or competitors to design around and so   how does one need to strategize in choosing what I'm telling the competition how to do   it and how to go around it, versus well maybe I'm not going to patent it and maybe not publish it either   or publish any portion of it. So that actually I keep the value of the asset. [Aaron] Yeah that's a good  

question. I think it's always certainly, right as you say, with   once you file a patent application,  most of the time, it will become   public and then you really can't control what the public will do with that after.   I think there's a couple of good questions in   there. I think one of them as you say is how do you know, what about infringement?  How do you know? What if you've taught the world how to do what you're doing and   that kind of comes with filing the patent application.   I think one thing to consider is how easy would it be, how easy   would it be to detect someone else  infringing that patent.

out in the world. So if you have an algorithm where it would be apparent or pretty easily detectable   if you're looking at a competitor's  product or say you've got   an algorithm, on well say for example  you've got an algorithm that improves   the way that a cat scan machine operates, that seems like something where   if you could take the competitor's cat scan machine and take it apart and figure out   what algorithm it was running, if that's  easily detectable then that might lean toward   filing that patent application, because you could detect infringement.   On the other hand, if you have something, a patent algorithm that's   very useful but would be very difficult to  detect, that's something to think about because   if you can't detect infringement then  you've kind of taught the world how to   perform your algorithm but you have no way of catching those   who who might do it. So I think one question I guess you could ask   in the analysis just as you said, is you know how detectable is   someone's infringement be and I think at that point it kind of   becomes a business decision and question and also question for the technologists,   the inventors. Which help how would we detect someone infringing this and that's you   I think that could help with the analysis. [Laurie] Okay thank you. Thank you   and thank you Vivian. And I guess with that I wanted to thank everyone for joining us.

2022-02-19 15:01

Show Video

Other news