Jonah Probell

How much weight should be placed on intellectual property protection for Medtech startups? While patents often serve as a cornerstone for many startups, David Beylik’s perspective might surprise you. In this clip, David Beylik says that IP isn't always the primary focus for them. Regulatory approval, clinical data, and manufacturing expertise often carry more weight in terms of a company’s defensibility and long-term success. So, does that mean IP isn’t important? Not exactly. While IP might not always be a deal-breaker or maker, there are times when it’s critical and can halt an investment in its tracks. In other words, while IP might not always be at the forefront of an investment decision, when it matters, it really matters. For innovators, this means that building a strong IP portfolio should be part of a broader strategy that includes securing regulatory approvals and developing robust operational capabilities. Tune into the full LSI USA ‘24 panel, “IP: Friend or Foe in Building Medtech Ventures?” to hear more from the panelists on this nuanced discussion. Hear from: • Irfan Lateef (Moderator) — Knobbe Martens • Leah Brownlee — Lazurite • Sabing Lee — Knobbe Martens • David Beylik — Ajax Health

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The justification for the withdrawal of these patents is definitely worth a read. Have a look at section B of the following document https://lnkd.in/egG-BaY4 filed by UC Berkeley’s representatives. In short, UC Berkeley’s representatives cite the inconsistent approach of this Board of Appeal in T2229/19 towards accepting claim amendments deleting dependent claims on appeal as justification for these withdrawals. The Board’s decision in T2229/19 is subject to a Petition for review, pending as R14/24. However, if the four-and-a-half year wait for a decision in R1/20 is anything to go by, a resolution of R14/24 is not to be expected soon. In the meantime, the repercussions of this potentially flawed decision are clearly having a broader impact on the European patent system.

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Please join me at the American Intellectual Property Law Association (AIPLA) Emerging Technologies Committee this Friday 9/6 @ 12pm EDT for a discussion with Gene Quinn re: "AI and IP - Emerging Issues, Pitfalls, and Opportunities." Details provided below. It promises to be a lively conversation. #ML #AI #IP #GenAI #legatech #patents #trademarks #copyrights #tradesecrets

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Our CEO, Evan Zimmerman, is showing Edge at Martin Schweiger's Robot Patent Drafting seminar! Come learn more about litigation-grade US patents. Here's Edge working on a short patent. Want to see a little more juice? Come see what else we demonstrate. #patents #innovation #ai #patentlaw #patentlawyer #ip #iplaw #intellectualproperty

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Grog Talk About Patent Value 🪓 Grog think much about shiny paper called "patent." Many ways to say how much shiny paper worth—big words like NPV, Real Options, Monte Carlo. But Grog not sure they tell full story. 🤨 Grog try something new! NPV good for counting rocks, but what about how smart the shiny paper is? Grog look at other things too—how old shiny paper is, how many other smart people talk about it, how many times it fight in court. Grog put all these things together. 🧠 Grog see that when he adds all this, shiny paper worth more than just using old ways. Grog wonder, maybe we not see true value of shiny paper with old methods. Grog like to try more! Want to know how shiny papers really worth, not just what old rocks say. #GrogToks #PatentShinyPaper #Valuation #shalinionpatents

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AI and Med Tech in Focus   AI System Developed to Identify Pathology in Tissues Engineers at Washington State University have developed an AI tool that uses images of human and animal tissue to detect abnormalities faster and more accurately than people. The AI algorithm was trained using images from past studies that involved kidney, testes, ovarian, prostate, breast and lymph node abnormalities. The new model detected disease in minutes—current processes take humans several hours and require specialized teams to check each other’s work. It was also found to be more accurate, sometimes detecting instances that humans had missed. The engineers designed the system to handle the processing load of the high-resolution gigapixel images by breaking them down into smaller tiles but still retaining the overall context of the tissue sample—akin to the zoom feature on a microscope or phone camera. Aside from getting diagnostic results more accurately and quickly, the new system also shows promise in epigenetics (the study of molecular processes that change gene behavior without changing underlying DNA). Epigenetic researchers can perform analyses and get results that used to take a year or more in just a couple of weeks. VC Investors are always adjusting their "Play Book" with a variety of options for investing. Mikal Ventures is one of those alternatives, offering curated solutions to real world problems. Reach out if you have questions on how we can be of assistance and bookmark https://mikalventures.com/ for additional insights and information.

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Semiconductor trade secrets! Getting the right balance of patents and trade secrets is a challenge for any company, but in the semiconductor space, things get complicated. The question, "is it discoverable/reverse engineerable" is typically too blunt. Even if an invention is technically possible to reverse engineer, the limitations on tearing down chips with nanoscale features can make it practically difficult. Further, litigation, especially in the US, can lead to discovery which might enable you to "discover" things that might not be possible from the end product. On top of all of this, while there is plenty of information in the public domain about how and when to patent, there is far less about trade secrets best practise. This can make developing a trade secrets strategy difficult for small businesses. This article from IAM (behind a pay wall but key points noted here) is a really interesting read. It's an interview with TSMC's associate general counsel, Fortune Shieh, on the the trade secret registration system he developed. Key take-aways: - Put in place a systematic and structured mechanism for recording trade secrets. This is key for me. Unless you are capturing and recording trade secrets, like you do with patentable inventions, it's very difficult to know what you have and to make effective decisions about protection. - Self-evaluation metrics. Make sure you have a way to measure how useful and effective your metrics are in supporting the business. - Find super fans! Work with engineers or teams who embrace your approach to trade secrets. Once you've successfully implemented your system with them, you can role our to other parts of the business. - Provide awards for good quality trade secret development, just like you would for patents. This ensures that your engineers understand that trade secrets can be just as valuable and important as patents. These are all issues that we like to think about at Ampliphy, EIP's IP and legal service for semiconductor and electronics companies. Thanks to Maia Edilashvili Biermann at IAM for the article. EIP - Better, different.

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Drip, drip drip. America's Innovation Agency keeps springing leaks. On May 17, 2024, the Director issued a notice of potential erroneous release of patent application titles. "Between February 5, 2024 and March 29, 2024, due to a computer programing error in Assignment Center, the USPTO inadvertently published non-public patent application titles and numbers that could be viewed during the recordation process by unauthorized individuals with access to registered Assignment Center accounts." https://lnkd.in/gbJpnqcX On August 1, 2024, someone informed the USPTO that "certain protected information within Patent Center" was potentially assessable to the public via the Assignment search query. The purportedly protected info included title, full serial number, filing date, inventor(s) and owner for non-published patent applications filed between December 2, 2017 and August 1, 2024. The USPTO shut down the assignments functionality in Patent Center to prevent further potential exposure and is notifying impacted applicants, stakeholders and the public. In both instances, the USPTO takes the position that any improper access is not considered a publication of such applications under 35 U.S.C. 122(b) and that no rights were threatened, and it is unlikely that the title could disclose the invention in a way that would constitute a patent-defeating prior art in any jurisdiction. https://lnkd.in/gF6TFAKx Over on the trademark side of the Office, in March 2023, the USPTO announced it had leaked 61,000 trademark applicant's private home addresses. This reflects 3% of the total trademark applications filed in a three year period. Yet again, between August 2023 and April 2024, the USPTO again leaked thousands of trademark applicant's private domicile addresses. The USPTO takes the position that they have no reason to believe the data has been misused. https://lnkd.in/g6nKr4dF

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This analysis, at least anecdotally makes sense to me. In many situations, infringe and holdout is the least painful option for large infringers. The system enables it. - The plaintiff must allocate the time and $$ to assert, taking time and $$ away from selling and developing products. Even if they engage litigation financiers they are limiting their upside potential. - The infringer continues to infringe while employing stall tactics or simply relying on the painfully slow, overburdened legal system. - The cost benefit analysis for infringers - "infringe and pay lawyers" typically outweighs the cost of design around or license. - Enhanced damages and injunctions are rare. - Litigation insurance products reduce risk all around. "The Marcum report shows that there is indeed something wrong with the patent system in the United States but it’s not excessive litigation or patent trolls. The real problem is the inability of patent owners to enforce their rights against infringers. Given the difficulty of obtaining injunctive relief and the limited enhancement of damages, it is unsurprising that predatory infringement has become a standard business practice when, at worst, all an infringer can be expected to pay is a reasonable royalty and, at best, nothing at all."

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SEP Patent Pools and NDAs   Allegations of misconduct and breach of contract by SEP patent pools and SEP licensors have come to light in a recent case filed by HP against Dolby, Access Advance, Mitsubishi and Philips. The case was filed in Massachusetts (attached) and this time it relates to the HEVC video codec.   HP claims, inter alia, breaches by the SEP holders of their covenants of good faith and fair dealing, treble damages for unfair and deceptive licensing practices against all defendants, breach of contract for refusing to offer licenses on FRAND terms, and against Access Advance damages for breach of the Non Disclosure Agreement (NDA) between HP and Access Advance. It is claimed that HP is already licensed to 70% of the patents in the HEVC Access Advance Pool, and the complaint alleges that Access Advance (co-owned by Dolby) breached the NDA it had signed with HP by sharing confidential information it obtained (as a patent pool administrator) with Dolby, Mitsubishi and Philips, who used that information in the patent infringement litigation they commenced against HP in Germany.  Dolby claim to hold SEP’s for multiple audio and video codec standards, including AAC, Opus, MPEG-4, AVC, VVC and HEVC. Dolby owns Via Licensing, which merged with MPEG LA to create Via Licensing Alliance, the 'pool of pools' for the audio and video codec patent licensing markets.   The allegations that confidential information, provided under an NDA, has been shared by a patent pool administrator with SEP licensors in the pool are serious. Clearly, proper processes and procedures should be in place to protect confidential information and ensure that it is not shared, especially where the administrators have interests in the patents in the pool, and it will certainly be interesting to see how this case develops if it gets to trial. One thing is for sure: there should be greater transparency on what financial interests SEP holders have in their pool administrators, and which companies direct or control (directly or indirectly) the pool administrators. #SEPs #SMEs #FRAND #HEVC

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Great article by Marisa Woutersen at WIPR - World IP Review on Nvidia's rise to be the world's most valuable company. She looks at the relevance of their patent portfolio and compares Nvidia's patent portfolio with other Big Tech companies. The article is behind a paywall but my key takeaways are: - It's very difficult to compare a company like Nvidia that basically has one product (monster graphics cards - yes I know they do a bit more) and tech companies like Samsung who have 100s of products. Inevitably Samsung has way more patents. - AMD is probably their most similar competitor, and Nvidia is ahead here in terms of overall patent filings. - Nvidia is clear playing catch-up with patent filings. They have more pending applications than any other company listed. This suggests there is a realisation that the patent portfolio hasn't kept pace with the company value. Of course, it might also reflect the fact that the suddenly have a lot more cash! - Clearly the value in the portfolio will depend on what and where they invest. The article notes that while AI applications represent core value, where else they invest to diversify beyond AI will be key. The brilliant charts in the article provided by Andrew Samm at Patently. EIP - Better, different.

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⚠️1 𝐷𝐴𝑌 𝐿𝐸𝐹𝑇 𝑇𝑂 𝑅𝐸𝐺𝐼𝑆𝑇𝐸𝑅! Are you a health tech founder trying to develop AI-powered solutions amidst the FDA's ever-changing regulatory landscape? 🚀💡 We hope you'll join us for tomorrow's webinar, where members of Nixon Gwilt's Healthcare AI team will answer your most pressing legal questions about all things FDA & AI. ⚖️🤖 𝐉𝐨𝐢𝐧 𝐮𝐬 𝐟𝐨𝐫 𝐚𝐧 𝐞𝐧𝐥𝐢𝐠𝐡𝐭𝐞𝐧𝐢𝐧𝐠 𝐬𝐞𝐬𝐬𝐢𝐨𝐧 𝐰𝐡𝐞𝐫𝐞 𝐲𝐨𝐮'𝐥𝐥 𝐠𝐚𝐢𝐧 𝐢𝐧𝐯𝐚𝐥𝐮𝐚𝐛𝐥𝐞 𝐢𝐧𝐬𝐢𝐠𝐡𝐭𝐬 𝐢𝐧𝐭𝐨: 1️⃣ Can the FDA regulate your AI-powered digital health tool? 🤔💻 2️⃣ Can you avoid FDA scrutiny? 🛡️📋 3️⃣ What factors does the FDA consider when deciding how to regulate AI-enabled software? 🔍📊 4️⃣ Which software fits into the non-regulated categories of non-device CDS or enforcement discretion? 🗂️📑 5️⃣ Will you have to re-submit your algorithm to the FDA after modifying or updating it? 🔄📈 6️⃣ How does the FDA look at generative AI tools, and how does this differ from algorithmic AI tool regulation? 🤖⚙️ Whether you're a healthcare provider, legal professional, or industry stakeholder, this webinar offers a unique opportunity to help you successfully navigate the FDA's regulatory landscape through strategically planned product development that aligns with FDA expectations. 🌐🛠️ Don't miss out on this exclusive opportunity to learn from Nixon Gwilt attorneys and engage in thought-provoking discussions. Reserve your spot today by registering today! 📝🔗 👉🏼https://bit.ly/4bAXid5 (Registration Link) Sam Pinson Kaitlyn O'Connor Michael Schellhous Reema Taneja Aizaz Chaudhary Stephanie Barnes Michael Pappas #FDA #AI #AIinHealthcare #digitalhealth #healthcareinnovation #SAMD‍‍‍‍‍‍‍‍

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Underwhelming Reality of Using VR The release of Vision Pro and Quest 3 earlier this year temporarily reignited enthusiasm about the potential role of virtual reality. But the tech world is already back to focusing solely on AI. Why? To help answer the question, Voice of IP was able to convince Georgetown Professor Kasra Ferdows - one of the world’s leading tech futurists - to share an anecdote that illustrates his view of the underwhelming reality of using VR and the potential of AI to finally help advance its use. https://lnkd.in/ezDG4WiK

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𝗪𝗿𝗶𝘁𝗶𝗻𝗴 𝗮𝗯𝗼𝘂𝘁 𝗽𝗮𝘁𝗲𝗻𝘁𝘀 𝗳𝗼𝗿 𝗟𝗶𝗻𝗸𝗲𝗱𝗜𝗻 𝗵𝗮𝘀 𝗰𝗵𝗮𝗻𝗴𝗲𝗱 𝗯𝗼𝘁𝗵 𝘄𝗵𝗮𝘁 𝗜 𝗰𝗵𝗼𝗼𝘀𝗲 𝘁𝗼 𝘄𝗿𝗶𝘁𝗲 𝗮𝗯𝗼𝘂𝘁 𝗮𝗻𝗱 𝗵𝗼𝘄 𝗜 𝘄𝗿𝗶𝘁𝗲. I've specialized in a niche field -- obtaining patents for software -- for decades. For most of that time, I chose only to write about 𝗺𝘆 𝗶𝗻𝘀𝗶𝗴𝗵𝘁𝘀 𝘁𝗵𝗮𝘁 𝗜 𝗯𝗲𝗹𝗶𝗲𝘃𝗲𝗱 𝘄𝗲𝗿𝗲 𝘂𝗻𝗶𝗾𝘂𝗲 𝗮𝗻𝗱 𝗶𝗻𝗻𝗼𝘃𝗮𝘁𝗶𝘃𝗲. An example would be an argument for the patentability of software that I thought no one had ever made before. Perhaps my training as a patent lawyer caused me to unconsciously apply the requirements of novelty and nonobviousness to the topics I wrote about. However, what I've learned in more recent years is that people find my posts most helpful when they're: • simple; • clear; • contain real-world examples; and • most importantly, 𝗮𝗿𝗲 𝗱𝗶𝗿𝗲𝗰𝘁𝗹𝘆 𝗿𝗲𝗹𝗲𝘃𝗮𝗻𝘁 𝘁𝗼 𝘁𝗵𝗲 𝗿𝗲𝗮𝗱𝗲𝗿'𝘀 𝗽𝗿𝗼𝗯𝗹𝗲𝗺𝘀. When I say it that way, I know it all sounds obvious -- but that's my point. Writing the obvious can be very helpful to people, when it's stated clearly in a way that provides the reader with 𝘁𝗼𝗼𝗹𝘀 𝗳𝗼𝗿 𝗮𝗱𝗱𝗿𝗲𝘀𝘀𝗶𝗻𝗴 𝗰𝗵𝗮𝗹𝗹𝗲𝗻𝗴𝗲𝘀 𝘁𝗵𝗮𝘁 𝘁𝗵𝗲 𝗿𝗲𝗮𝗱𝗲𝗿 𝗶𝘀 𝗴𝗿𝗮𝗽𝗽𝗹𝗶𝗻𝗴 𝘄𝗶𝘁𝗵. However, I think I speak for many lawyers and other service professionals when I say that we can have a tendency to think something isn't worth posting if it isn't: • clever; • innovative (perhaps even groundbreaking); • loaded with the jargon of our field; • filled with citations to sources; and • ready to overcome every possible objection from our most ardent opponents. Yet I've found that the posts that I've written that have received the most positive responses are those that: • Describe the most common valuable services I provide -- and the benefits my clients obtain from them. • Address the decisions that my clients need to make most frequently -- with guidance on evaluating different options. • Dispel common misconceptions -- and the benefits of not falling prey to them. Nothing groundbreaking. Not clever. Probably won't impress my colleagues. Yet this is what people keep telling me they appreciate, find helpful, and want more of. Thanks to everyone who has provided me with feedback and encouragement. I'll do my best to provide more of the same, and to keep listening. #patents #linkedin #marketing

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🚀 The USPTO has just released its 2024 guidance update on patent eligibility for AI-related inventions, marking a significant step forward in the evolving field of artificial intelligence. This update clarifies the criteria for patenting AI innovations, addressing some of the most pressing questions faced by inventors and patent professionals. As AI continues to reshape industries, understanding these guidelines is essential for anyone involved in the patent process. Whether you're developing AI technologies or advising clients on patent strategy, this update could have a profound impact on your work. 💬 What are your thoughts on the new guidance? How do you think it will influence the future of AI patents? Let’s discuss! #AI #patent #patentlaw #future #patentlawyer #patentprofessional

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What if you had a PhD sidekick for all your patent work? OpenAI just released their new o1 model. Insiders speak of PhD-level reasoning capabilities. Unlike its predecessors, o1 can "think" before responding. This approach is said to allow it to tackle complex, multi-step problems and self-verify its answers. What does this mean for the patent attorney profession? Some thoughts: (1) o1 is said to have unforeseen capabilities to reason about complex mathematical and technical concepts. Could such a model be a human-level sidekick for drafting highly complex patents like for advanced AI algorithms? (2) While previous models would only identify direct similarities in the data, an advanced model like o1 might see more nuanced connections. Could this be a leap forward in AI-assisted patentability, infringement and freedom-to-operate assessments? (3) By simulating human-like reasoning, might the model be able to predict patent examiner objections, allowing patent attorneys to address these proactively in the application? Just my initial ideas. What are your thoughts?

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🎙How do you turn ideas into assets? Unpacking Innovation on "Understanding IP Matters" I recently had a great chat about this with Bruce Berman on his podcast. While Innovation, AI, and Intellectual Property are embedded in my day-to-day, I don’t often get the chance to really dive into these topics. So, when my long-time friend and IP expert, Bruce, invited me to kick off the fourth season of his podcast ‘Understanding IP Matters,’ how could I say anything but yes?! 📖 20+ years ago, I wrote a chapter for his book 'From Ideas to Assets.' This conversation felt like coming full circle—and let me tell you, the podcast was more fun than I could have imagined. We explored some BIG topics in just 40 minutes: 🎓 The art of identifying and training inventors (4:00) ⚙️ Innovation as a repeatable process—beyond the ‘lightning strike’ (10:28) 🔐 Prototypes, commercialization, and protecting ideas (14:24)  🤖 AI as a partner in the creative process (17:18) 🏠 About Science House (30:50) 🌐 Bringing innovation beyond traditional R&D (34:16) We even tackled innovation through the eyes of kids. 👀 (37:16) 💬 How has AI changed your innovation process? What’s the biggest challenge you’re facing with innovation these days? Have any questions about the innovation process? Drop it in the comments—I’d love to hear your thoughts, or follow Science House to stay updated on the latest insights. #AIandInnovation #IPManagement #sciencehouse #ipmatters #TechLeadership #FutureofWork #IDiyas

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