Clause 8

PTO 'whistleblower' Julie Burke and patent prosecution guru Clint Mehall join Eli on the season finale of Clause 8 to break down what’s happening at the USPTO—and what’s still left to be done.

On this episode, they discuss:

*Insights from the Reddit r/patentexaminer thread

*Previous and current plans to reduce the record patent application backlog

*Should the USPTO withdraw patent eligibility example 47 for AI?

*Previous administration’s decision to end AFCP program and ideas for variation of AFCP program to help reduce the backlog

*Misguided priorities and personnel decisions during last administration

*Improving morale and performance of examiners

*Adjusting credit system & improving culture to help examiners identify allowable subject matter

*Choice of Valencia Wallace Smith as Acting Commissioner for Patents

*USPTO’s decision to deprioritize examination of continuation patent applications

*USPTO rescinding memorandum for discretionary denials at PTAB and Director taking over handling of the requests for discretionary denials

*Aligning post-grant proceedings at PTAB with mission of USPTO

*Suggestions about switching to a registration system for patents that does not require examination

And, much more!

What is the actual value of patents? Inventors and companies invest millions in obtaining patents, believing they are valuable assets. Yet, their true worth is rarely quantified.

For this episode of Clause 8, Eli Mazour brings together three of the most insightful experts in the patent valuation space: Michal Malkovich, Vice President at Charles River Associates; Alejandra Loaiza Delgado, Co-Founder and Managing Director at Econ Edge; and Mike Pellegrino, President and Founder of Pellegrino & Associates.

Throughout this discussion, you’ll notice that despite their different experiences and perspectives, they share one goal: getting to the truth about patent valuation.

Host Eli Mazour talks with Heath Hoglund, President of Via LA, to break down the role of patent pools in today’s innovation landscape.

Tune in as they discuss:

*The balance between licensors and licensees—and how Via LA acts as a bridge between them

*Merger of Via Licensing and MPEG LA in 2003 to form Via LA

*How Dolby’s strong brand helped it succeed with technology licensing

*The challenges of starting a new patent pool program and what makes one successful

*Future of patent pools

*Heath’s story of founding Puerto Rico’s first IP boutique before becoming head of IP & standards at Dolby

Kathy Duda is the President of The Patent Office Professional Association (POPA), which is the union representing USPTO patent examiners. On this episode, she discusses why she remains hopeful amidst current uncertainty around new return to office policies.

In the episode, she also discusses:

*Positive collaboration with Acting Director Coke Morgan Stewart

Getting first involved with POPA after it helped her during her pregnancy

Negotiating the first collective bargaining agreement (CBA) with the USPTO in 40 years

Why she’s not getting a whole lot of sleep recently

Examiners waiting for finality regarding decisions about being able to continue to work remotely

Record backlog reached at the USPTO during last administration & work to bring it down

Impact of AI & what examination might look like in 30 years

Disclaimer

Join Eli Mazour as he explores the vital role of the U.S. patent system in fostering innovation. Entrepreneur Patrick Murray shares his journey from ideation to patent acquisition with Radium Payments, emphasizing the importance of intellectual property in business validation. Lisa Mueller, host of the AUTM on the Air podcast, delves into tech transfer, revealing how universities push innovations from labs to marketplaces. This episode underscores patents as essential drivers of American entrepreneurship and academic innovation, providing a nuanced look at their ongoing impact on business and technology.