Day 2, Panel 3 (Prosecution): Building Valuable Patent Portfolios
December 5, 2025
B-CLE Recording (CLE: $100) | Agenda | Event Resources | Speaker Biographies |
Download Panel Transcript Here
Moderator
David Sanker, Sanker IP
Speakers
Joy Nemirow, Sheppard Mullin
Jeff Schox, Schox Patent Group
Mike Schwartz, Adeia
Panel Summary
David Sanker opened by emphasizing that the quality of a patent portfolio is directly tied to both the process used and the people involved in prosecution — drawing on his experience seeing companies accumulate large portfolios of low-quality, unassertable patents by relentlessly minimizing costs. Jeff Schox described his firm’s top-down strategic approach, illustrating how client Joby Aviation’s entire portfolio was filtered through three core value propositions — speed, safety, and sound — to select the most strategically aligned inventions from hundreds of engineer-generated disclosures. Joy Nemirow highlighted that life sciences portfolios require a distinctly different approach due to the long research, development, and regulatory approval timelines, which demand simultaneous attention to patent term adjustment, supplemental protection certificates, and a steady pipeline of provisional filings to preserve priority dates as science evolves. Mike Schwartz stressed that for mature technology companies with large portfolios, every prosecution decision must be weighed against finite budgets and clearly defined business objectives — whether the goal is defensive protection, revenue generation, or blocking competitors. The panel agreed that timing is a critically underappreciated element of portfolio strategy, with Jeff Schox noting that hardware companies generally need to slow down their filing instincts while software companies need to be pushed to file faster, given their much shorter development cycles.
The panel then addressed the impact of recent legal and policy developments, global filing strategy, and the growing role of AI in patent prosecution. Joy Nemirow noted that new USPTO fee structures for continuation applications and large IDSs have prompted life sciences clients to more carefully evaluate which pending cases are truly worth maintaining, while the Federal Circuit’s recent written description and enablement decisions are pushing practitioners toward narrower claim scopes and more structurally grounded disclosures. Mike Schwartz cautioned that invalidity standards and claim drafting norms differ significantly across jurisdictions — particularly between the U.S. and Europe — and that a US-centric drafting approach can create real vulnerabilities when patents are later filed internationally, urging practitioners to plan for global prosecution from day one. David Sanker raised the specific challenge of drafting AI patent claims, warning that claiming both the training and use of an AI model within a single claim invites divided infringement problems, and that merely applying AI generically — like applying a computer generically 25 years ago — will not satisfy patentability requirements. Jeff Schox provocatively asked whether the better strategy for AI-era prosecution might be to file ten $2,000 AI-drafted applications rather than one $20,000 attorney-drafted application, prompting the panel to acknowledge the question as genuinely unresolved but noting that human oversight remains essential for quality at this stage.
Key Learning Points:
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Start Portfolio Strategy from the C-Suite Down: Rather than filing patents on whatever engineers generate, practitioners should align filing decisions with the company’s core business objectives and value propositions — filtering inventions through strategic criteria such as competitor blocking, defensive protection, or revenue generation — ensuring every dollar spent serves a measurable business purpose (Jeff Schox; Mike Schwartz).
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Patent Term Is the North Star in Life Sciences: For biotech and pharmaceutical companies, where R&D and regulatory timelines can span decades, every prosecution decision — from provisional timing to IDS filing strategy to obviousness-type double patenting avoidance — must be evaluated through the lens of maximizing patent term, including leveraging patent term adjustment, patent term extension, and supplemental protection certificates in ex-US jurisdictions (Joy Nemirow).
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Draft for the World, Not Just the U.S.: US-centric claim drafting and specification strategies frequently create avoidable problems in European and other international filings, where literal written description support, prohibition on synonyms, and stricter enablement standards require practitioners to build broader and more explicit disclosure into applications from the outset — rather than retrofitting claims for foreign prosecution years later (Mike Schwartz; David Sanker).
Program Transcript
Key Terms: Patent Portfolio Strategy, Core Value Proposition, Top-Down Strategy, Business Objectives, Defensive Portfolio, Revenue Generation, Competitor Blocking, Return on Investment, Portfolio Quality, C-Suite Alignment, Finite Prosecution Budget, Portfolio Management, Assertable Patents, Commodity Patents,Patent Term Adjustment (PTA), Patent Term Extension (PTE), Supplemental Protection Certificate (SPC), Obviousness-Type Double Patenting (ODP), Terminal Disclaimer, Research and Development Timeline, Regulatory Approval Timeline, Provisional Application, Non-Provisional Application, Follow-On Provisional, Priority Date, GLP-1 Inhibitors, Clinical Trials, Life Sciences Portfolio, Continuation Application, Continuation in Part (CIP), Divisional Application, PCT Application, Claim Scope, Written Description, Enablement, Functional Language, Prophetic Examples, Varying Claim Scope, Sub-Genus Claims, Claim Hierarchy, Method Claims, System Claims, Functional Claims, AI Patent Claims, Divided Infringement, AI Model Training, AI Model Deployment, Generative AI, Off-the-Shelf AI Model, AI-Assisted Drafting, Generic AI Application, Section 101, Patentable Subject Matter, Software Patents, AI Prosecution Tools, International Filing Strategy, European Patent Office (EPO), Unitary Patent, Unified Patent Court (UPC), Opt-In Opt-Out Decision, PCT Filing, National Stage Entry, Foreign Filing License, Multi-Dependency Claims, Literal Support Requirement, Cross-Jurisdictional Drafting, Ex-US Portfolio, Information Disclosure Statement (IDS), IDS Size Fees, Continuation Fees, Restriction Requirement, Office Action Response, Examiner Interview, Inequitable Conduct, Prosecution History, Allergan v. MSN, Patent Prosecution Highway, First Action Pendency, Schox Patent Group, Sheppard Mullin, Audio, Joby Aviation, Twilio, Coinbase, Cruise, USPTO, Federal Circuit, European Patent Office, Big Pharma, Stanford, UC Berkeley
This panel, Building Valuable Patent Portfolios, was the third prosecution panel of the second day for the event, 26th Annual Berkeley-Stanford Advanced Patent Law Institute. This event was hosted by Berkeley Center for Law & Technology, UC Berkeley School of Law, and Stanford Law.
Moderator
Sara Patak, Wilson Sonsini
Speakers
Rachel Herder, Mammoth Biosciences
Alex Nie, Sheppard Mullin
Manita Rawat, Morgan Lewis
[WAYNE]
Okay, welcome back. So you heard from the lectures yesterday that the price of entry for a valuable patent portfolio is 100 million. That can’t be right for every portfolio, though if you’re questioning it, it is probably right for the big litigated portfolios.
That really is the price that people are looking for. So, what does it mean to build a valuable patent portfolio?
That can’t be the number. That can’t be the only goal.
But in that room, that’s what they’re focused on, is that kind of value. What does this room need to be focused on?
So with that, I wanna turn it over to David Sanker, who’s taught at Berkeley with us, been a long-term Berkeley supporter. So Stanford won’t hold it against him today. So, thank you, David.
[DAVID SANKER]
Thank you, Wade. So let’s start off by just introducing all of us. So my name is David Sanker. I actually have been connected with Berkeley for a long time because I got my PhD in mathematics Oh, many years ago.
And then, I taught mathematics and then I did software development for 12 years as well before I ever considered going into law. And then I’ve been working in big law for most of my career, and then just started my own law firm about two years ago and doing patent prosecution work.
So let’s continue with Joy.
[JOY NEMIROW]
Sure. So hi, everyone. I’m Joy Nemirow. I’m a partner at Sheppard Mullin. I have a PhD in medicinal chemistry, so my practice focuses mostly in the small molecule and large molecule space in the biotech.
[DAVID SANKER]
Yep, Schox.
[JEFF SCHOX]
I’m Jeffrey Schox. I founded Shocks Patent Group about 20 years ago. Background in mechanical, electrical, and computer science. We’re a boutique firm and we work with iconic startups venture-backed here in the Bay Area, Twilio, Coinbase, Cruise, Joby those types of clients.
[DAVID SANKER]
Great. Mike.
[MIKE SCHWARTZ]
Hi, my name is Mike Schwartz. I am currently with Audio, which was the result of several different mergers and acquisitions over the past several years.
I’ve been in this role for about 11 years where I’ve run patent litigation for the company. We are a technology and R&D company who does primarily handle a lot of patent licensing. We have two very distinct parts of the business, one in the semiconductor field and one in the media, video, streaming video just broadly. It’s much more specific than that fields.
Before that, I spent 16 years at a large global law firm running all kinds of patent litigation on both sides of the V, so I have a lot of experience looking at this from multiple different angles.
[DAVID SANKER]
Terrific. So our topic, unlike some of the other topics that’s like, you know, 101, it’s very narrow and it’s very specific you know, building a valuable patent portfolio could be addressed in lots of different ways and so we’ll try to address in various ways today. And the first one I wanted to talk about is actually the relevance of both the process and the people because that can have a huge impact on the quality of your patent portfolio.
Some years ago when I was in, in Big Law, I had colleagues in litigation and they had a very big tech company from from the Bay Area, and they wanted to sue a competitor. And so they looked at their portfolio of patents, and they found virtually nothing that they would be able to assert in litigation. And the reason was because their process for patent prosecution was to basically minimize cost to the extreme and just like so they had a bunch of commodity patents that were not, of very, very low quality.
And so they had trouble trying to find anything within this large portfolio that was assertable. So, the process you use can have a very a big impact in terms of, you know, building your portfolio. The second one I think is sort of also important and sort of a process related is the people that you hire. So not everybody is going to have the– produce similar quality work.
And I actually have a good example of this from my prior work in software development because I worked with lots of other software developers and one of the questions you might have thought is “Well, what’s the difference in productivity between one software developer and another?” You know, what’s your intuition on what the difference might be? You know, 10%, 20%, 30%? I saw a 10x difference between some developers versus other.
In fact, there are some, there’s were actually negative contributions, so it’s even worse. And so the point I want to make is that who you have to help you it can make a difference. So make sure you identify the right people. And one of the ways, things is, well, how do you identify the people who can help you?
And related to that is I wrote a chapter in this book on patents for assessing patent quality because there are some things that you can look at. And so you can look at the work that people have created to see is what they’re producing good?
And so I think that’s important. Um, so Geoff, what, what, what’s your view in terms of in terms of the processes and the pe– and the people?
[JEFF SCHOX]
Yeah. One of the things that we work exclusively with startups, and so venture-backed startups that have raised somewhere on the order of 10 to a billion dollars, 10 million to a billion dollars whether that’s in fusion or life science or software or robotics or autonomous vehicles. One of the things that I find really important for the process is to actually start from the C-suite.
So, what is it that this particular company is trying to do? And how is this particular company actually going to win in the market? And to start from there. And so, what I call that is kind of like some core value proposition.
Um, one of the examples is our client Joby, that we built a patent portfolio for. And so from a group of 200 engineers, if you had a bottom up approach, you’re going to have probably 4 to 600 inventions a year. They had the budget for about 10 to 20, and so how do you pick across that?
And worked very closely with Joe, then the CEO, and understood that for this particular aircraft, it’s an electric VTOL, the speed in which it could get from point A to point B is incredibly important, because that is the operation. That’s how they were going to make money, the throughput. They needed something that was gonna be incredibly quiet, ’cause they were gonna fly this over urban areas.
And of course, this needed to be safe, safer than a helicopter. And so we used those three core value propositions, speed, safety and sound, to actually help filter what we were going to look for when we spoke to the engineers. And so starting from the top down is one of the thing, key pieces of the approach that we take.
[DAVID SANKER]
Okay. Thank you. Um, and Joy, do you have any thoughts on that? And specifically applying that in the life sciences?
[JOY WILDES]
Yeah.
[JOY NEMIROW]
It’s, you know, the life sciences has a little bit of a different perspective in as compared to the high tech, because the research and development timeline for life sciences companies are just so much longer. And on top of that, you have the regulatory approval timeline and by then, who knows, maybe your initial patents are already expired. And so the process for the life sciences perspective is a little bit different, ’cause you’re thinking about all the different innovations that are coming out during a research and development timeline.
So that does include, like, reaching out to the C-suite level, but also when the company is growing, being in touch with the folks that are in regulatory or with the patent folks as well. So a little bit more breadth there.
[DAVID SANKER]
Okay. And talking about what are some of the specific things that you have to do differently? I mean, and talking about people is like, one of the things I know is there’s a lot of people in technology where, you know, having a bachelor’s degree may be completely fine. Whereas, it seems like all the good life sciences people I know, they have PhDs from top universities to do their job well.
[JOY NEMIROW]
Yeah. I think a lot of scientists in the life sciences space, you know, expect you to be able to speak their language And I think that’s why you have that perspective as well. It does come in helpful because it is such a particular language, so to speak.
In terms of, you know, what does that do for your patent filing strategies, one other point I wanted to make is something that life sciences companies are always thinking about is, you know, the size of the company actually matters as well. So if you are big pharma, oftentimes you’re filing applications in 30, 40 plus countries.
But if you’re a smaller size company or a midsize company, you just don’t have the resources to do that. And thinking about more strategically business wise, where’s the patient population that you’re targeting? Maybe we had a client who their patient population had a significant group in Middle East, and so we were filing a lot of patent applications in the Middle East countries where a lot of folks are like, “I never need an application in Saudi Arabia,” for example.
So the life sciences space is definitely a little bit unique in that way too.
[DAVID SANKER]
Yeah. One also thing I thought was interesting is like the usage of provisional applications. And it seems like in technology, you know, if I do something in software, it’s like, it’s probably gonna be obsolete long before In 20 years.
But it seems like in the life sciences, people are using provisionals basically to buy them an extra year. So.
[JOY NEMIROW]
Right. So for life sciences companies, as I mentioned earlier, you know that research and development and regulatory approval timeline is so much longer when you finally get your product out on the market. And so in addition to mining the I for new IP while you’re in research and development, also thinking about patent term adjustment strategies and maybe thinking about being more mindful of how your prosecution might impact that.
So I think the USPTO had a data point recently where less than a quarter of their cases reached a first action within 14 months. So quite a lot of cases getting PTA right now. We’ve also recently heard anecdotally from someone at a patent office that it might be more than, might be closer to 30 months before you see an application getting picked up.
So PTA is alive and well. And then we had of course that Allergan versus MSN case come out last year where we can keep on, keep that PTA in a case with subsequent cons. So PTA alive and well.
Be mindful of, you know, making sure you’re not dinging yourself, so if you’re filing a response, looking at whether you need to file an IDS along with this response or not. Also in the regulatory space, thinking about how your timelines map out to take advantage of patent term extensions. Review those portfolios, review the strength of your patents, think of what’s eligible for some patent term extension applications. We’ve run a lot of scenarios and different calculations for what makes sense in getting the C-suite comfortable with the risk and reward for various PTE applications there.
And also keeping in touch with your regulatory folks for ex-US cases, so maybe you’re seeking approval in Europe and you want to take advantage of the SPC situation there, and working closely with your European counsel to make sure you can file those SPCs and meet all the requirements as well.
[DAVID SANKER]
All right. Thank you.
And it seems like there’s also a big difference between the size of their portfolio. I mean, if you’re filing one patent application then probably you’re like, okay, I want to make sure that’s really good. But it’s, as it expands and if you’ve got 10,000 patent applications, you know, what’s the marginal value of one? So Mike, I wanted to get your take on that in terms of how does it vary depending on the size?
In particular if it’s really big, I mean, how do you deal with that?
[MIKE SCHWARTZ]
Sure. So first of all, nobody sets out to have a weak or poorly drafted patent regardless of the size of the company or the size of the portfolio. But to echo what some of my other panelists have said, but from a more mature technology company side of the equation. You have to look at your portfolio and the steps you’re gonna take with that portfolio from a perspective of the business objectives of your company at any given time. And there are a number of factors that can play into that, and if you assume you have a finite annual prosecution budget, you need to figure out what are the most effective and efficient parts of the patent prosecution and portfolio management and development process that achieve those business objectives.
So you look at the geographical scope of your business and your customer base. You look at the, where enforcement, if you need to enforce, may be the most cost-effective or best return on your investment if you have to enforce. And you also have to consider are you inventing for the here and now, or are you inventing for the future?
How do you balance those two between having to achieve revenue goals and versus growth, corporate growth? You have to take all of that into account and among many, many other factors.
And you have to decide what’s the best use of that budget in your prosecution portfolio. You want to try and develop certain patents that may be better representative of the overall portfolio than others.
But, and I’ll leave it there.
[DAVID SANKER]
Yeah. Well could you give us any like general things. Do you have any specific examples of how people have say, oh, I mean, how to make those calls in terms.
[MIKE SCHWARTZ]
Sure. You know, let’s take it again into kind of the litigation arena. The UPC came online a couple years ago.
Do you make the decision to opt in or opt out your patents? Do you go, start filing the, sorry, the unitary patents.
And you decide how many countries are really relevant to your overall customer base as to whether to do that. So–
[JOY WILDES]
Okay.
[MIKE SCHWARTZ]
Yeah. I’m not gonna get much more specific.
[JOY WILDES]
Yeah, actually on that particular case– Yeah. What’s your what has been your recommendation at this point in terms of whether to go for the Unitary Patent or not?
[MIKE SCHWARTZ]
Well, I think most companies’ knee-jerk reaction when the UPC went online was to opt everything out and selectively opt things in, but with respect to new patents, again, it’s somewhat is that a higher value patent, one that you may want to utilize in future more versus maybe more localized. Or you’re trying to take into account potential changes in the law and policy. And especially in a nascent organization like that where there’s a lot yet to unfold in the story as to how patents will be interpreted and applied and enforced.
[JOY WILDES]
Okay. Yeah. And, and so Jeff, what’s, why don’t you say a little bit more about how do you, how are you determining what sort of strategy based on any other characteristics of the, of, of the company? So rather than saying, oh, here’s a generic process, what’s, what would you, what are some of the characteristics that you think are important in terms of selecting a strategy and
[JEFF SCHOX]
Yeah, there’s, I mean, there’s obviously plenty of different reasons to build a portfolio, and whether this is, hey, we’re trying to create some value, we’re trying to attract investors, or we’re trying to block a competitor, we’re trying to keep a partner honest. And so there’s plenty of different particular reasons for that. And I think it’s super important to kind of get that piece right.
I think another part of strategy that people don’t really talk too much about is timing. And so you wanna be able to have an early filing for a provisional application and the right timing for the full application so that it captures 80%, 90% of that development of that particular technology. The best way to do that, of course, is to file the patent application and then get a time machine and go back one year and to file the provisional exactly one year earlier.
We can’t do that. We humans kind of travel linearly forward. And so the best way to do that is to kind of understand what does that technology development cycle look like.
In software it’s pretty fast being able to implement things in software is incredibly fast. And in hardware it’s unbelievably slow. And so, in general when clients come to us on the hardware side, they’re really raring to go.
Like, ‘Hey, this is super important as a hardware company, and so let’s go ahead and file.’ And we’re generally telling those folks to slow down. That, hey, this process of development takes years, and if we’re filing provisional applications now, we may not get up the learning curve of that development particularly quickly over the next year. Software, it’s exactly the opposite. They don’t typically come in gung-ho to file a whole bunch of patent applications, but we’re actually pushing them pretty hard because the implementation cycle is really short.
And so I think that cycle of how are you going to get from idea to 80%, 90% baked is actually an unbelievably important part of the patent strategy equation that not a lot of people take into account.
[MIKE SCHWARTZ]
And if I can,
[DAVID SANKER]
Go ahead.
[MIKE SCHWARTZ]
If I jump in. And looking one of the other factors I wanted to talk about, but I think it builds on that, is especially looking at it from a US-centric perspective is again, a lot of us are, I think, alluding back to Andre’s presentation yesterday, but it was alluded to elsewhere. The hardest part of deciding where to invest and how to prosecute these patents sometimes is how do you anticipate changes in the law? Those changes in the law can come from policy changes and policymakers.
They can come from the constitution of the Federal Circuit Bench. They can come from Congress, although I’m slightly less optimistic than Mr. Ioancu is.
But perhaps that is the appropriate way where legal and policy changes can get implemented. So, you sometimes have to think about when you’re looking at a parent application, are there other ways we need to utilize tools like continuations, et cetera.
To try and anticipate potential changes in the interpretation of the law or policy changes that may impact the patent even though you have invented something and you’re clearly claiming that invention, but the way in which you’re drafting that claim may or may not evergreen.
[DAVID SANKER]
Yeah. And, and, and follow, Jeff on following up on your point about the the, the development cycle. I mean, one of the issues that I run into sometimes is should I file a provisional now because it’s maybe not well-enough defined that it might not support the later non-provisional?
On the other hand, it could potentially invalidate my later non-provisional by being prior art.
[DAVID LURIE]
And so, it’s like I’m, I’m alw– uh, ’cause you have sometimes clients who will say, “Oh, well, I’ll just file the provisional now and I’ll fill in the details later.” And it’s like “No, you can’t do that.” But how do you address that point?
[JEFF ELIKAN]
Yeah, I think that goes back to my earlier point around timing. And so, if we’re very confident that we’re gonna get up the learning curve, we may file early anyway.
We may be taking a whole bunch of guesses as to where this particular technology is going to go and then you know, some of the time, we get those guesses right. It could be that six months later we decide that, hey, this is not going to be developed along the curve that we thought. And we’ll expressly abandon that particular provisional application and potentially refile it or file another version a couple of weeks later. And so, those are two different strategies that we’ve used– Okay.
In the past to deal with that.
[DAVID LURIE]
Right. Yeah. And, and Joy, so– Mm-hmm. I know that, you know, the development cycle in the life sciences is very long Yes. And you had, you know, concerns about, well, how am I going to actually have enough for the written description and enablement?
[JOY NEMIROW]
Mm-hmm. And so, how do you deal with that? Yeah. I, I mean, building on Jeff’s point, we, we certainly do those practices in the life sciences space as well, especially if you’re, you know, 12 months in and the research and development is just still not up to speed and we, we certainly abandon and refile as well there.
In terms of, you know, building that portfolio up with where your research and development is, it is like everyone wishes we had that time machine, right? And you do the best you can at the time you have it, and sometimes your hand is forced and your folks come to you And they say, “Oh, I really wanna go to this I really need to present this data.” Or, “Ooh, we’re, you know, posting on, we have clinical trials kicking off. We’re gonna post it on clinicaltrials.gov,” and there’s nothing you can do to change that date.
There it is, right? And so, you do the best that you can in trying to build out that sandbox And it is a balance with making sure you have not shooting yourself in the foot in terms of enablement or written description issues. Um, you know, in the last month or so there have been two, at least two Federal Circuit decisions in the life sciences space addressing the written description and enablement issues and really focusing on, on basically varying claim scopes in your application.
So certainly a, a more US shift, I think, towards aligning with maybe Europe and Asia. So maybe in practice you’re not really changing much since you’re thinking of Europe and the strict standards there in terms of building varying claim scopes and sub-genres into your application. We’ve also found prophetic examples to be really helpful in the life sciences space even at the provisional stage.
We’ve even found that to be helpful where the field is really crowded and you have other folks playing in your sandbox that are essentially making the same thing, and the prophetic examples being useful to have that priority date before your competitor does. And the last panel talked about how examiner interviews are useful for 101 rejections. We found them really useful for enablement and written description rejections as well using that opportunity to walk the examiner through where in your application you’re addressing both of those issues, and that’s been helpful in addressing those rejections.
[DAVID SANKER]
So how do you determine how much you include in terms of the written description and enablement?
[JOY NEMIROW]
Yeah. I think you include as much as you can.
(laughs)
[DAVID SANKER]
Okay.
[JOY NEMIROW]
I think you ask your inventors, “Hey, like, where do you think you’re going in the next 12 months? Give me your best guess.” Maybe check in with them and see if they have any new developments and maybe you file a follow-on provisional, especially when you’re in a crowded space and you need that early date. And, you know, everyone’s most favorite topic right now is GLP-1 inhibitors and, like, Ozempic, right?
And so, we have folks that are, like, really active there And it’s a really hot field, and so maybe you’re filing two, three, six provisional applications just to get ahead of that. And every time you are doing more in terms of enablement and written description, filing on that as fast as you can.
[DAVID SANKER]
And with those prophetic examples, how do you express those? Because I know that I have sometimes have inventors who will say to express these things it’s like, “Oh, well, I’m considering doing something on this in the future and I might come up with something.
And I try to eliminate that and say ‘In some embodiments, we do this.” So how do you do it?
[JOY NEMIROW]
It’s a little bit different in the life sciences space ’cause mostly you can use it you can express it structurally but that gives up brings up a good point for those of us in the life sciences space where functional language was really useful before and I think now you’re seeing a shift and a pushback from even the Federal Circuit on getting away from that. And so, you know, before, it was like you could get these big broad claims, and now I think we’re seeing a shift where the Federal Circuit is really pushing back on that type of functional language and has been, it seems to me the trend has been going that way for quite some time.
Sometime, so, it’s difficult to answer your question.
[DAVID SANKER]
So you provide the structure but you don’t necessarily know whether it is say, necessarily effective at doing something, but you provide the structure?
[JOY NEMIROW]
Yeah. You ask the scientist, “What’s your best guess on what you think is gonna work?” And then you know, you do the best with what you can. And, the science should always drive the IP, so if your scientists are like, “Oh, I don’t think we would ever do that,” then I think that’s one way to make sure you’re limiting yourself in terms of written description enablement and the scope of your sandbox.
[DAVID SANKER]
Okay, great. There’s also been, of course, talk about within AI and how do we use that. And in terms of that, that’s an issue that I’ve I address quite often because I do a lot of work within AI. And I’ve seen at least a couple of issues there, one of which our litigators will tell us is avoid divided infringement.
And that’s one of the things that I have seen frequently in a lot of AI claims is, for example, within the single claim, claiming both the training of the model and using the model. And it’s like, well, that’s never gonna be one party that does that.
You know, I mean, you’re gonna train it yourself and somebody else is gonna use it. So there are some things that are definitely specific to AI that we wanna make sure that we’re claiming well. So that’s the avoiding divided infringement is an important.
The other thing is that just generally some people say, “Well, I’ve, I’ve used AI, therefore I’ve got an invention,” which is somewhat analogous to, you know, 25 years ago when people said, “I did it on a computer, therefore I’ve got an invention.” It’s like, no, it wasn’t right then, it’s not true now.
You gotta have something other than just applying AI in a generic way. And frequently, it’s like you have to look at, so when a client asks me about that, I say, “Okay, what is the AI doing? What are the inputs?
What are you changing?” And go into a bunch of the other things, rather than just saying, “Oh, yeah, I used an off-the-shelf you know, AI model.” That’s not gonna get it. Jeff, do you or Mike have any thoughts in terms of AI?
[JEFF SCHOX]
It’s certainly coming. It’s certainly coming for all the patent prosecutors’ jobs out there. That’s no doubt. I think what’s somewhat interesting from a company standpoint is if you have one option to write a $20,000 patent application, and you have another option to write a $2,000 patent application with AI, and you could do that 10 times and file 10 applications on the same day which is the better path?
I would like to say, ’cause I sell $20,000 patent applications that hey, it’s a $20,000 one. But I think it’s an unbelievably important question to be asking. If you could do it significantly cheaper, and then do it many more times, and file it all on the same day, is that a superior or inferior approach?
[DAVID SANKER]
Yeah. I mean, I agree. That is a good question because I’ve actually been spending time also evaluating some of these AI development tools, and I know there’s a panel this afternoon so they’ll be talking about that as well.
And I think at this stage, I mean, some of the tools are getting pretty good But you still need a smart human to make sure you got a really good quality one. At least we wanna think so at this point.
[JEFF SCHOX]
Yes, of course.
[DAVID SANKER]
Mike, do you have any last thoughts?
[MIKE SCHWARTZ]
My thought is really this, it’s such a nascent field as to what will ultimately be patentable in the AI space that people should not abandon hope, and they should not abandon trying to apply for protection in that space, and in fact, try and lead out to guide where the patentable space exists in the AI space. I do wanna address one other comment you made. About divided infringement.
This a good example, if you’ve got a robust ex-US customer base and need for patents, that’s a very US-centric. There are plenty of jurisdictions where that’s not an issue. I can tell you Canada, that’s not an issue, for example.
And so, this is where, again, you have to understand your overall portfolio concerns and how do you account for if you’re gonna prime start by filing an application in the US and then take it international, how do you account for different patentability concerns in those other jurisdictions? And that’s a very specific example.
I heard yesterday a comment, I’m gonna go a little off-topic, but I heard a comment yesterday that said that basically invalidity considerations were converging to be the same throughout a lot of major jurisdictions, and I don’t agree with that. I don’t believe that’s completely true. How courts in different jurisdictions look at it, the evidence they’re willing to rely on in terms of deciding validity issues, the unique European patentability issues, we heard allusion to that in one context can actually warrant very different claim drafting and perhaps warrant different specification drafting, and in some cases, additional investment in disclosure in a specification that even in the current US market, you wouldn’t, would not necessarily consider wanting to put in there in order to be able to tie your claims to the written description, which is much more important, frankly, in Europe than it is here.
[DAVID SANKER]
Yeah, Yeah, I so, so often get the you know, rejections from the European examiners. It’s like, you know, “Where’s the literal support?” Even if you’ve got to say a set of US-based claims that would not be multi-dependency and, and then you know, you’ve got claim two that says one thing, claim three says another thing, and and then the European patent examiner says, “Well, you can’t combine two and three together. You don’t have support for that.”
And it’s like from a US examiner standpoint, it’s like, “Well, of course we do. I put both of them in there. They can all go together.” And so that’s a concern.
So–
[MIKE SCHWARTZ]
It can even be as pedantic as you can’t use a synonym in the claim language to what’s in the specification, an exact synonym, right?
[DAVID SANKER]
Yeah.
[MIKE SCHWARTZ]
Sometimes the words have to literally be identical.
[DAVID SANKER]
Yeah, so let’s, let’s talk a little bit more about you know, the fact is that in the global economy that many of our clients have to be thinking about not just the United States, but other jurisdictions as well which, you know, can be, you know, everywhere. And I know that I had sometimes historically, I’d just say, “I’ll draft US.” And then a year later, I’ll think, “Ah, do I wanna file a PCT on that.”
And then I’ve run into some problems. It’s like, “Oh. Oh, well, that actually didn’t work so well in Europe because I didn’t do what would have been appropriate.”
So how do you handle that? In particular, we know that filing in all these other jurisdictions is expensive.
You know, we’re not gonna be able to other than pharma, we probably can’t afford to file in jurisdictions. We’ve got to be very limited. In many cases, it’s just US and then maybe choose some. How do you, how do you handle that?
[MIKE SCHWARTZ]
From my perspective, and this may be an unsatisfactory answer to some, it’s a very business-driven decision as much as it is a technical decision. Is the return on investment in each incremental dollar and each incremental country or foreign filing you make consistent with your business objectives?
And that really is what it boils down to frequently. Do you think you need those patents?
Whether it’s one of the things I didn’t mention earlier, you may prosecute a portfolio for defensive purposes to protect your product or your business. You may prosecute it for revenue generation.
But again, whatever those business objectives are, when you look at any given country, you weigh your risks and your return on investment, and is it, you know, there’s something I like to say, “Is the juice worth the squeeze?” It really is that simple sometimes. It’s a very complex set of economics and math that may go into it but it really boils down to that.
[DAVID SANKER]
Yeah. So it’s basically choose where to, how to spend your dollars based upon somehow estimating that. Jeff, you got any thoughts on that?
[JEFF JOLLEY]
I don’t have any different ones. I’d love to hear from Joy if she has something.
[DAVID SANKER]
Yeah, I was gonna say, I was gonna ask Joy next in terms of pharma.
[JOY NEMIROW]
Yeah, I mean, I think it’s also the same. I think it really comes down to the business and where it makes sense for you to file and where to not file.
Obviously, Big Pharma has different size country lists depending on the product, and that will also look different for a company who’s much smaller, maybe in the startup space. You know, we have some nonprofit organizations that work in the life sciences space and their filing strategies are going to be different than Big Pharma. And so, I think the answer’s still the same. I think the answer’s still return of investment, but it just, you know, sometimes it’s 30, 40 some countries.
[DAVID SANKER]
Yeah. So, I mean, I’ve heard sometimes in big pharma, it’s like, if I’ve got a new drug, I don’t want it manufactured anyways. Like, I might file in like 150 countries. I mean, is that true?
[JOY NEMIROW]
150 is a lot, but maybe not that much.
[DAVID SANKER]
But 30.
[JOY NEMIROW]
But a good amount.
[DAVID SANKER]
That’s substantially more than I’ve ever heard.
[JOY NEMIROW]
Substantially more, yeah
[DAVID SANKER]
Yeah, yeah. Okay. That’s good. So you know, with the changing of, you know, decisions at the Federal Circuit and other things going on within the political environment, let’s talk about what changes we’ve seen you know, recently, I think over the last year or so. Have you seen any examples of it? Start with you, Joy.
[JOY NEMIROW]
I would say not maybe any huge significant shifts, but there were the new fees that came out from the USPTO earlier this year. So for example, the continuation application fees.
That was a little bit of an impact in the life sciences space, so it was pretty typical for us to keep a lot of cases pending for a long time, definitely more than nine years where you’re incurring now that larger size fee. So I think folks starting this year started really thinking about, “Well do we really need this pending?” And they’re like, “Which portfolios are the most important for us to keep pending?” So a little bit of a shift in terms of thinking that way and a scale back in terms of, you know, really prioritizing what you wanna keep pending.
In terms of IDS size fees that were new, in the life sciences space, we often have really large IDSs. I think most folks now landed on, “Well, we’d rather pay, you know, a couple hundred dollars,” which is for a large entity and the biggest size fee seems like a nominal fee in the long run and avoiding any sort of inequitable conduct allegations. So not huge shifts, but a little tweak here and there, I would say.
[DAVID SANKER]
Okay. Yeah, and I don’t know if you’ve run into that with the continuation now for, I mean, I actually just filed one And I had to tell the client. It’s like, “Well, it’s gonna cost you this huge additional fee.” And it’s like he was willing to pay it, but it’s like I wanted to make sure that he was aware of that. Jeff, what about you?
Have you seen, seen any significant changes either in terms of, you know, the law that’s going on or just any other reasons that would cause you to recommend strategies that might be different than they have been in the past?
[JEFF SCHOX]
No, I’ve done this long enough. I’ve been practicing for, you know, 25, 30 years, and that I remember early on in my career, you know, just like every single Federal Circuit case just being like, “All right, how is this gonna change how I write patent applications?” And when you have enough of a perspective things are going to change in the next 5, 10, 15 years that we just can’t predict right now.
[DAVID SANKER]
Okay.
[JEFF SCHOX]
And things are gonna change in ways that we could try our best to be able to insulate our patent applications from that, and what does that mean? Well, we have a beautiful hierarchy there, of here is the broad invention, and here’s all the different layers of, like, the mind map tree. And, you know, that gives us the ability to be able to move around prior art that we haven’t been able to see and find in that 18-month blackout period. This allows us to be able to pivot if our clients pivot their technology, which working with startups, every single one of them pivots multiple times.
And then having competitors come out of left field. And so, the way that I view changes in the law is just write a really good patent application that has enough there and has enough permutations to be able to, you know, talk about it from a method standpoint and a systems standpoint and a functional standpoint. And to be able to have all of those that you could draw from later on regardless of where the law heads.
[DAVID SANKER]
Okay. That makes a lot of sense. It’s like, just be prepared for anything because anything could happen. Yeah, that sounds good. Mike, how about you?
[MIKE SCHWARTZ]
Yeah. I mean, this circles back to one of my earlier comments, was specifically about this very issue, which is, I mean, for those of us who go far enough back, did you know in 2002 that State Street would turn into Alice and its progeny? Probably not. So, you have to strike a balance between the breadth and depth and length of your disclosure compared to is that worth it for that particular patent application, for that particular client, for that particular invention?
Are you anticipating the need to either do divisionals or continuations? Continuations in part because and can you if the law, especially claim language and claiming law, start changes over time, which it has and which it does. Is it worth that extra effort, that extra spend on that on that patent application or not? ‘Cause, you know, all patents like I said, nobody goes and sets out to prosecute and obtain an invalid or bad patent.
But what is considered invalid or bad can change over time as the law evolves over, whether it’s 10, 15, 20, or 30 years, right? So–
[DAVID SANKER]
Yeah. One of the things you just brought up was continuation in part. And there’s always a debate on whether if I’ve actually going to be adding new subject matter, is it useful to file a CIP or should I just file it as a new application?
Because I could just incorporate everything, either literally or by reference. I mean do you have an opinion on that?
[MIKE SCHWARTZ]
Oh, Jeff, I’ll let Jeff–
[DAVID SANKER]
Jeff, go ahead.
[MIKE SCHWARTZ]
I’ll let Jeff address that one.
[JEFF SCHOX]
We use CIPs. I mean, it’s not something that we use extensively, but we’ll use it. It has to be balanced with do we want foreign protection on this particular idea or not? And so, and if we do, it’s now we’re trying to distance ourselves from what we had previously disclosed.
We don’t want foreign protection, great, we’re actually gonna try to close that gap and talk about how this gets tucked underneath the parent application. And so and there’s been times where we’ve tried to thread the needle on both, of filing, a CIP in the United States and filing a PCT application that doesn’t claim priority, of like, “Hey, this is different invention and it’s also the same invention in the same breath”. Or two different patent applications.
And so it’s a tricky part of the law. I wish the rest of the world had something similar to, to what we have here in the United States, which creates some complications.
[DAVID SANKER]
Yeah. Okay. Do you ever use CIPs?
[JOY NEMIROW]
Very rarely.
[DAVID SANKER]
Okay.
[JOY NEMIROW]
Yeah.
[DAVID SANKER]
Okay.
[JOY NEMIROW]
Yeah.
[DAVID SANKER]
But so one of the other things was, so obviously with the you know, substantial value for our Patents in the life sciences sometimes people want to or need to sort of try to extend the lifetime, using various techniques. So–
[JOY NEMIROW]
Yeah.
[DAVID SANKER]
Tell us about what you do to try to expand beyond what you’ve gotten on the original patent.
[JOY NEMIROW]
Sure. Obviously, for you know, the life sciences companies with their really long R&D timeline patent term is really important, and one thing I think that’s important to keep in mind when you’re having these big portfolios is trying to avoid any obviousness type double patenting issues. And I think one way to help with that is making sure you have a sort of bird’s eye view of entire portfolio and making sure you understand, like, “Oh, well, this is an invention in this case, whereas this little piece is different over here.” And being able to argue the patentable distinctiveness of your cases. And, you know, sometimes in situations you have collaborators, and maybe you have co-ownership and you’re not able to file any terminal disclaimers, and you want to, and the only thing you can do is really argue against the obviousness-type double patenting rejection.
and obviously if you’re cutting off your patent term, that is not what you want to do in certain cases, especially where you have sort of separate families where you’re hoping to get that longer term. So, I think ownership is important to keep in mind in that situation, and making sure you really are tapping into what the inventiveness piece is.
[DAVID SANKER]
Yeah. Well, any sort of specific pitfalls that you have seen in terms of trying to extend it?
[JOY NEMIROW]
Yeah. Well, in terms of, you know, the obviousness type double patenting issues certainly in, we have seen, like, ownership issues where you can’t terminal disclaim. Or your co-applicant and your other family does not want to assign any rights to you and you’re left with one owner here, two owners there and then you’re like, “Well, what do I do?” And you’re kind of stuck unless you are able to argue, you know, your patentable distinctiveness of your claim. So certainly trying to get out of that situation in the first place is, I think, really important.
[DAVID SANKER]
Okay, and so we got a limited amount of time left, so maybe take one minute just to say what’s your quick thoughts in terms of building a portfolio? What’s the most important thing?
[JOY NEMIROW]
In the life sciences space, patent term.
[DAVID SANKER]
Patent term?
[JOY NEMIROW]
Yeah.
[DAVID SANKER]
Okay. Jeff?
[JEFF SCHOX]
I have a hot take. So when I was early on in my career, I found that I did great work for the clients that I loved, and kind of called it in for the ones I didn’t.
(David Sanker laughing)
And like, I really liked my work, but like I really was drawn to certain clients.
[DAVID SANKER]
Okay.
[JEFF SCHOX]
And so, when I built my firm, and I teach over here at the engineering school and I recruit right from that class. We get clients to match the interests of our attorneys and our agents.
[DAVID SANKER]
Okay.
[JEFF SCHOX]
Not the other way around. And so I hire the smartest people I can, I train them, and it’s like, “Who do you want to work with?” And we have the good fortune of, you know, 300 or 400 companies come to us a year, and we take 30 or 40 of them. And how I pick those is there a champion on our team that’s gonna walk through walls for this particular client?
[DAVID SANKER]
Okay. Wow, that’s pretty interesting. Mike, what’s your take?
[MIKE SCHWARTZ]
Well, first start is work with incredibly brilliant creative inventors and learn how to develop a partnership with those inventors to translate that ingenuity into the artifice of the patent world, so that you do end up with really valuable patents that have commercial applicability and other utility, whether it’s for defensive purposes or revenue generation purposes.
[DAVID SANKER]
Okay, yeah, so that’s, I mean, I guess, to echo what they’ve said, it’s like, you know, I think just making sure that what you’re filing the patents on is consistent with your overall business strategy cause there’s too often that sometimes it’s like, you know, “I love the technology,” and say, “Oh, well, we could file a patent on this. We could file a patent on this.” It’s like, “Well, but it may not make sense. So we do have to focus on, it’s gotta be technologically sound as well as sound from a business issue.
I don’t know if there’s any time for any questions, but oh, well, we sure can talk during the break, yeah.
[AUDIENCE MEMBER]
Yeah. I have one question. Joy, earlier on, you’d mentioned there that there were some potential PTA strategies that you were considered for your clients. I think you mentioned ODP arguing, ODP rejections, if that makes sense. Are there any other strategies that you engage in?
[JOY NEMIROW]
Sure. So one example is filing on a three-month date for like a response to a missing parts or response to a restriction requirement. Obviously trying to avoid any dings, like I think I mentioned earlier, filing your IDSs, for example, with your response.
Sometimes we look at if we’re early on in exam, do we file the IDS now or maybe we wait. Like if we feel comfortable we’re gonna get a restriction requirement, for example, or an office action is the first action, maybe we wait to file that IDS and wait for the examiner first there. So there’s a lot of factors that come into play and I hope that gives you some examples.
[DAVID SANKER]
Okay. And so we’re out of time, so appreciate the panel here. It was great.
[JOY NEMIROW]
Thanks.
(audience applauding)