IP Trends for Emerging Penn Engineering Technologies: Webinar Recording
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.