BoneChat #119 - De-Risking Innovation: Strategic IP for Ortho Founders

Okay, uh, this is Bone Chat discussion number 119. Uh, we're lucky to have Andrea Davis today. Uh, Andrea specializes in de-risking innovations through strategic patent intelligence, and I think of Andrea as kind of a secret weapon for startups that want to navigate and build out their early IP strategy and portfolio. So today she's going to demystify the IP world for us and then open it up for real-world questions. So while she's presenting, think of, think of any patent-specific patent questions you have and we can do it live. Handing the mic over to Andrea.

Awesome. Yeah, absolutely. Ask away. You can ask while I'm talking, and then we will have some time afterwards for any questions or trying to work through some examples. So keep that in mind. We of course don't want to— you don't want to divulge any inventions, anything that is not going to be public, but just sort of talking in general terms, it should be fine. So a little bit about myself. I have— I am an engineer by training, engineering physics, and I have about 25 years experience doing patent searching, and it's sort of evenly divided between search firms, patent search firms, and then I worked at a big medical device company, and as of 8 years now, I've had my own little consulting firm. And I do a lot of speaking engagements and volunteering within the patent information community. So there is a big secret, and a lot of people in IP know this, but outsiders not so much, is that about 80% of all the scientific information can actually only be found in patents. So this is why when someone who has been in a specific field sometimes for decades and they come to us and say, I know this is not here, this is not out there, I know because I've worked in this field for decades and I would know about it. And a lot of times there is still a pretty big chance that that particular idea, someone else has had it before, has tried to patent it, whether they succeeded or not, it's— the information might be out in the public domain in this vast amount of patents and applications that is, that is out there. And so that leads to all these scenarios that, that are, you know, not, not fun for someone who is spending a lot of time, a lot of energy either developing something, launching a product, filing a patent application, to then find out that someone else has already disclosed something extremely similar, and they have wasted a lot of money, a lot of energy, a lot of time. The, the other terrible scenario is you've done all this work, you're looking for investors, You are saving money on doing the due diligence on your own, thinking that, you know, the investor will do that, but then they find some blocking patents and you've, you've missed your chance. So what I would like to do today is show you how patent information can work to your advantage, and it can avoids you making mistakes. It can protect what actually is patentable and is truly novel about your idea or your product, and how to understand what others are doing in the field and how to make sure that investors are, are going to be happy with you. So when it comes to patent information, there's different type of— you, you can have It can be used to answer a bunch of questions, but usually there's certain types of, of searches, and they all answer sort of typical questions that someone who wants to, to bring a product to market might have. The first one usually, usually is whether your idea is new or not, right? So you want to ask this question and have that answered by a patentability search. And this will again save you time and money, figure out what exactly is new compared to what's already out there, and will help your patent attorney or patent agent partner in focusing the application, focusing the claims around what's out there. And it will save you money by shortening this— it's called prosecution with the Patent Office. It's a back and forth dance where you apply, they say no, this This is what we found, rejected, and then you have to change your claims and then go back to them, and all of this costs Patent Office fees, and of course it costs patent attorney fees. So if you can streamline that from the beginning, it should be much cheaper and your patent will be much stronger. So here's an example. Let's say you want to come out with a new pedicle screw. And you have this initial idea and you think about how can I make a pedicle screw that is better than what's out there? And you have ideas about certain pivoting angles. The threading has a specific feature that is invented by you, and then you have a, a coating. But after doing some patent searching, it turns out that a lot of those concepts were already known. And instead of filing a patent on everything, instead of going out with the design as you had envisioned it, you can now focus on what is actually novel. In this case, it could be the geometric relationship between the pitch thread and its angle. So you can think of your search as sort of the patentability search as the basis of your patent. And if it's not proper enough, if it's not well done, it's kind of like a house of cards. So your patent can crumble at any moment. Another question to be answered is if you can actually sell the product or the service that you're envisioning. So the, the freedom to operate search, also known as the infringement search, looks only at active patents in your target markets where you're going to sell the product, maybe where you're going to manufacture the product, and it identifies the specific patents and their claims that are— that your product would infringe. Again, it's essential for, for investors, and one thing that a lot of people don't think about is that you, you don't have to clear just the particular novel idea that you came up with. You actually have to clear the entire product. And so it can get expensive if, if you have to do it over and over again because you, because you figure out that some things are infringing. So an example could be a spinal cage where the company wants to have a new anchor and also wants to have a specific surface texture, texture to the implant. And so the first FTO covers both of them, so they're basically two separate FTOs, and it turns out that while the anchor is indeed not, is not infringing on, on anyone else's IP. The surface texture has a high risk. There are some big players in that area. They have some claims. You, you're at high risk of being sued by them. So instead of taking on that risk, you decide to sort of design around it and come up with a new novel surface pattern. A second FTO is done on that, and then you know you're ready to launch. In this case, you might also want to look at the locking mechanism, which is a very litigious area. That's right, Eric, Eric is nodding. It's a litigious area in spine, so that, that's always something you have to keep in mind. So this is a peer of mine, has taught me about this, this way of thinking about infringement to kind of wrap your head around what that means, and it's called the three-legged stool trap. So if you think about someone who has patents, has a patent on a three-legged stool, if you come up with one that has four legs because it's, you know, got better stability, of course it's better. Yes, you get a patent on it because it's novel. No one else has thought about adding another leg to a stool. So you get your patent, but you're still infringing on the applicant who has a patent on the three-legged stool. So you're asking about your product, "Does my product have three legs?" And the answer is yes, it does. Now if you reverse it, does their product, the three-legged stool, have four legs? 'cause you got claims on four legs, and the answer is no. So you're infringing their patent. They're not infringing yours.

Yeah, it's a great example.

Yeah, Andrea, this hits on something that I've done previously in the past. I'd be curious what you think of the utility of this, because it's kind of mean-spirited, but improvements on someone else's patented idea such that when they think of it, it's too late, you already invented it, and now you can do some sort of licensing or something like that.

I mean, there's nothing evil about it. I think that's how innovation happens. You're improving things, right? You're improving ideas, improving products. And so that's great. You get a— you, you know, theoretically you get a patent on the improvement only, right? So what happens is you still, in order for you, if they have, if they have an active patent on the main, main concept, right, and then you add the improvement over it, you can only bring, you know, a product to the market if you have a license to their initial patent, right? Otherwise you're infringing. I mean, you can still bring it to market, but you would be infringing on their patent. At the same time, they cannot use that same improvement theoretically, and they would have to pay a licensing fee to you should they wish to do that, or they have to design around it. So that's where good patent attorneys come into play so that when they write those claims, they cover as much as possible of, you know, the— so that you create a moat so that other people can't easily design around.

Claims.

But yeah, I think that that is sort of the nature of how we have set up the patent system and that that's how it works. So I think it's fair, fair game, fair play. So there are some, some myths. A lot of times people will say, well, I have a patent, I am safe. In fact, patents don't give you a right to do anything. The only thing you can do with, with patent rights once they're granted is that you can stop others from, you know, either coming out to the market with something. Really, that's what you stop them doing. So people think that the Patent Office gives out IP rights, if you think about them as sort of plots, right, like property plots, and that, you know, I have my yard and my neighbor's yard is right next to mine, and there is a fence in between them, and I know that he cannot cross into my yard because that is mine. But the reality is quite different. These lots are often overlapping. And the reality is that both of those could be granted patents. So we, we both have, we both have sort of negative rights when it comes to that corner that is overlapping. The other myth is that, well, I found expired art, so I am clear. I can do whatever this expired art says, this expired patent, because it's expired, it's not active, so I can do it. And like you said, Eric, improvements may still be patented, but it is possible because of these overlapping plots that while one of the plots is expired and so they cannot sue you for infringement, the other plot that's out there is not expired. And so for that particular corner, there is an active patent out there that your product might, might infringe.

Yeah, I found it fascinating that patent attorneys can grant two patents that overlap. And they don't— and I've heard people say they're lazy nowadays. They don't really— they can't— the world's so big, they can't see everything. And so they basically just say, if there's any overlap, we'll just let the competitors duke it out in court.

Well, patent examiners, I don't think they're lazy, but it is a lot to do, right, for them. The morale right now is really low at the Patent Office. They made some changes and poor examiners are are truly suffering under the stress and the burden of the workload. And they're not really trained too much on the art of searching. So they really— their, their job is to see if they can find something to reject the patent on. Right. And so as soon as they find something, they write a rejection and then the patent attorney overcomes it, and, and at that point they should do another search. But again, they don't have time. So, so yes, it does happen that they, they don't search very, very thoroughly and just use the first— not the first, but, you know, after a certain amount of time, they're like, okay, I have some patents I can reject, reject this application on. And so they do that without looking for more. And so yes, you do, you do get sometimes these overlapping sort of property lines. So what do you do once, once that happens and someone sends you a cease and desist letter or, or threatens with a lawsuit? Well, that's when invalidity searches come into play. And for those, I would try to find prior art that predates the patent that, that I'm infringing or my client is infringing and try to sort of find ammunition to potentially invalidate, invalidate that, that patent. So those were like sort of the three big patent search types. Now, the fun, fun things that you can do with patent information are these patent landscapes or really any kind of question that you might have that you want to answer. So what are other things that people do out there? So you can start with a collection of patents, and it's really important that that collection of patents is done properly. And then you can sort of play around with that collection and slice and dice the data to come up with some answers. So that could be a company, a big company's portfolio, patent portfolio. It could be a certain technology, It could be a problem, and then we have tools at our disposal to create these cool visuals that would answer some, some questions. So you can see concepts on the right here, and you can sort of drill in on the different concepts that are mentioned in that particular dataset. You can see who has the most patents. So, for example, here on the right, you can tell that Medtronic is, is the big player, but a big part of their patent portfolio is dead. It's the red part. And, and really, once you take that away, they're not that much bigger than everyone else. In addition, Calsmed has sort of half of the— half of their portfolio pending. So that's really good. They can, they can keep innovating on that, whereas Medtronic, Warsaw Orthopedic barely has anything pending. So they're kind of like done and their portfolio is mature, but, but it's not moving along anymore. You can look who the sort of surgeon entrepreneurs are in that dataset. You can see who the startups are. You can answer all kinds of questions from this dataset that you put together. This is called a bubble chart, and so you can see how the different companies, how their innovation in a particular technology slice changes over time. So, you know, University of California started slow, but they're, they're in the midst of it. They're still, still innovating. Bristol-Myers Squibb have tried to get into this niche, but eventually they've sort of teetered out. But here is a giant Chinese company that has just like all of a sudden popped out of nowhere. So these are things that would show up in this kind of visual. This is a different way of looking at concepts. And so I think this one was electrical stimulation. So I just did a dataset that had to do with electrical stimulation. And I want to see what, what diseases can be treated with that. So we, it kind of shows Parkinson's disease, depression. OCD, stroke, epilepsy, pain, and then neurological disorders. So it just kind of pops out. It's an easy way of having a sort of high-level analysis on, on a dataset. So why, why does it matter that you do? The patent searching with, with that you do it in the first place, and then you do it with someone who is knowledgeable. This is sort of my, my definition of patent searching is it's looking for and finding the closest patents and applications to an invention, right? And the finding is fairly easy. You know, anyone can go on Google Patents Anyone can use an AI tool and find stuff, right? But the closest patents, finding the best, the best art is what's really hard. So I'll give you some examples how hard it can be. This is a funny story, actual search that I was doing for a plate screw, bone plate screw retention mechanism. Talking about those, Eric, and how litigious that, that area is. And big company in the space, usually they use, you know, bone plate as their nomenclature. In this patent, they decided to not use plate and use stratum instead, which I guess means layer. And so they use it instead of plate would not, you know, no AI would find that. No, like, plate locking mechanism keyword search would find that. So this was only found because I knew which patent classification to look for, and I knew that it's really important to use that patent classification without any keywords in it. Another funny story, same thing. This came up in a search. I was looking at facet joint implants And I found this one where instead of using the normal words, an oval-shaped or elliptical implant, they use stadium-shaped cross-section. And sometimes it is a corporate strategy to make these patents hard to find. So it's, it's hard to, to sort of, especially with these two examples, it's hard to justify it in or explain it in another way.

So why would a company use Stratum or Stadium shape to sort of hide their patent? What's the benefit of hiding a patent in plain sight?

Well, so competitors could not find it and immediately try to have an implant or locking mechanism that is like theirs. Maybe they're trying to get a patent on, on something that a competitor is doing. And so they want to surprise that competitor with a lawsuit at some point. I don't know.

Hmm.

They want— maybe they want to extend the sort of the stealth time for a little longer.

Yes. And yes, that very well could be. I mean, it takes a few years for a patent to get granted and you can sort of designate it secret during that time, but once it grants, it is public. So it is possible that they were trying to do that post-grant to keep it sort of under the radar. So you can do a patent search on your own. You can have your attorney sort of try to do some searching on their own before they file an application, for example. There are all kinds of All kinds of free tools, and what I think is that you should use all of these, but include a professional patent searcher in that sort of team because it is time— to do it properly, it is time-intensive, and you do not want your attorney to spend 8 hours or 20 hours or 40 hours on doing a patent search as much as I would do it, right? That would be very expensive. And it is easy to miss critical patents. And this is an analogy, sort of like you wouldn't buy a multimillion-dollar home without having a home inspection. And that's kind of what patent searchers are. We are your certified professional who can go in and look for the cracks and sort of de-risking your innovation. And, and we have all, you know, we have databases that we pay thousands of dollars for. We have all these approaches that we know how to use that no AI tool will, will really do. And I know budgets are, are really tight, especially for startups, but when you compare the prices, really, these searches pale in comparison to the price of a lawsuit or the price of, you know, missing an inventor, investors like someone who would be ready to help you and invest money but will choose not to because of patents that were undiscovered.

But quick question, and Tiger, I can't figure out where my— this is weird, the video, so I can show my that I exist.

The little— you're real and not AI.

Yeah, exactly. I'm here. It's so weird, I don't see it on my screen. Um, I don't use Zoom much, but, uh, yeah, we can hear you.

Do you have a question, Todd? Yeah, I do.

So I was, I was planning on showing my face, just— but, uh, question is, when do you recommend this in the process? So as you know, um, there's two limited resources, right? Time and money. Very, very important for our startups. And I've been in 3 over 16 years, and I— and one of them had this whole problem. We missed a patent that just destroyed our concept. We had to pivot, came up with a product that was kind of to pay the light bills, and that just caused a lot of grief everywhere. That startup failed. So where do you suggest this process for you your company occurs like within our design cycle, right? I can talk about the old StageGate process, you know, before you use, you know, I'm assuming user needs to inputs, but I'm even maybe after that, I don't know.

Yeah, I mean, funny you should, this is my next slide, maybe my final slide here. You know, ideally you have someone like me as part of your team, right? The earlier you can get patent answers, the, the better. Definitely you want to do it before you file a patent application. You should do it before you, you launch a product, before you raise funding, and then throughout for competitive monitoring. And hopefully, if you do all of these, you never get a cease and desist letter, right? So you prevent that. But these are sort of the, the points. But ideally you start doing that from the beginning, whether it is you get the idea for an improvement or a product, you yourself go on Google Patents and you start looking. You can ask someone like me to give you the portfolio of the main competitors. If they are small portfolios, you can start looking at that. You can, you know, do a preliminary search. So they're all, you know, nothing is set in stone when it comes to what you can ask from me. These are sort of what I've talked about are some standard searches, but you can ask for a preliminary this or that, or look into the competitors. You know, there are all kinds of ways of Cutting down costs and sort of phasing the information provided to you while still sort of getting some, some competitive intelligence so that not everything comes at one point and it's too late. Does that answer your question, Todd?

Yeah, yeah, and I'm still trying to fit that in. I'm struggling now. I have a little side startup and literally it's a We've probably submitted 3 patents and then the design in, in the race, right, to get product out, but then the design doesn't pan out. And so we've now submitted 3, and the one main guy likes it because it just adds to his potential patent number. But I hate it because it's cost, it's waste of money because we are completely pivoted away. From those 3 ideas, we won't use any of them because it didn't work. But, and so it's not even a defensive patent that's valuable. So that's my, my struggle within this whole thing. And, and obviously, as you guys all know, just the whole lean, you got to get out there, you got to be fast. I mean, we've had so many— you got to, because our resources are limited, even people, right? And so sometimes we put the cart way before the horse. And that's— I'm trying to get smarter about this as I get older.

Yeah, I mean, a lot of the companies I work with, um, like to create their own little datasets. So I, I've come up with this term of a collection search. So if you want to solve a problem or you want to work on, on, um, something, uh, like a spinal rod, um, that I don't know has a certain I mean, it's a bending spinal rod. Instead of coming up with the solution right away and checking that, and then something happens and then you pivot and then you have to do it again, you, you gather a collection of patents that all of them have to do with bending rods, and then you, you can go back to that collection over and over again with every redesign and maybe just update it instead of redoing the entire search. It sometimes it works and you can do it. Sometimes it depends on the technology, but that is one way of sort of leveraging a bigger search, but, but then having that as you pivot and change and design around patents or sort of technology challenges.

So, Todd, what you were talking about is something that I've learned the hard way as well. I would, I would say there's a large percentage of the patents that I have that are absolutely worthless because filed them too early. You know, you come up with a great idea and you're all excited. You want a patent on it when you should have waited because you have a lot of testing, you have a lot of other things to do yet. So I've started waiting until I'm close to, you know, knowing that, hey, this is, this is the final idea. Here's the things that I really need to protect.

And I would say partnering with a good patent attorney is crucial. Someone who, who is strategic about it, who knows the things that, you know, you might not have known because you were new to IP and how things work and how this is a, this is a, a problem that occurs often. And so there are ways of mitigating that by having a provisional patent application, which gives you 12 months, but you can put so much information in there and sort of not lock down on the claims that you're going to have ultimately, but just put as much information in there. Have, have, always have a patent application that's open so that you can go back and, right, go back and take information from, from that initial application and reuse it so that it's it's sort of alive and you haven't killed some of your, your own invention. But yeah, I think, you know, both the patent information but then also how you write or how your, your team writes the patents is crucial. So, you know, not all patent attorneys are equal. Not all of them have experience with startups and know how to advise them. And yeah, and they have to be knowledgeable in that specific technology that you're working in because, because one technology space might be different than another. And so I would, I would ask those questions before you, you go with an attorney or researchers to know that they are knowledgeable in that space, not from, not just from technology perspective, but the entire sort of ecosystem and how you should approach, what your strategy for IP.

Good. Andrea, that brings up a question that I was going to ask you about provisional patents. They're another thing that I have really scaled back on. I want to know what your feeling is, but I scaled back on them because I was like, you know, I didn't feel I was getting a lot of utility out of them. All I'm doing is putting my ideas out there. When I could have handled what I needed to handle with an NDA with whatever company I was going to talk to. So when is it that you see that provisional patents have any effect, good effects?

Diane sounds like— so Diane is a patent attorney that I work with often. She is in the medtech space and orthopedics in particular. Diane, do you want to take that?

Yeah, sure. Yeah, so I don't— provisional patent application, the great thing about it is it doesn't publish, right? It's confidential. There are certain companies I've had lots of docs that I've worked with who have wanted to talk to Medtronic, and Medtronic says absolutely, we will not sign an NDA. You need to file a patent application. You need to give us the serial number of that provisional application. Can be a provisional or formal utility, they don't care. But, but You know, the— I like the things that Andrea said in terms of filing a provisional application, you know, trying to jam into it as much as you possibly can and being very thoughtful about, well, where are we when we get close to 1 year out from that provisional? You know, if we're ready to go forward, then, you know, then you convert, you file a formal application, you file it wherever you want to, PCT, US, you know, and go forward. Sometimes you're at a place where we really haven't gotten that far. We're going to have to let that date go, right? So the provisional goes away. You definitely invested in the lawyer preparing it. You paid a really modest fee to the Patent Office, so you don't have a lot of sunk costs there, but you gave yourself the ability to claim priority and bought yourself time before getting into, you know, formal prosecution. And you weren't tied into whatever was limited in that application. So I don't see them as presenting any risk at all other than there's a cost component risk, right? So making sure you're making choices about what you invest in, you know, rationally, first of all. And, you know, I think working with someone like Andrea, it, I think it's, it's great. I love the things she says. These are the things that I talk with clients about. You've got to look at the big picture. You've got a road that you're going to have to go down. You have to be able to manufacture it. You have to have an idea of, you know, what the regulatory path is.

And all of those things are going to cost you a lot of money.

So searching early helps you rule out whether you're going down the wrong path completely anyway, but it also helps you avoid, you know, those down-the-road investments that are ultimately going to be frustrated by the fact that somebody else got there before you did.

Yeah, thank you.

Thank you. I appreciate it. Of course. Interesting enough that the last provisional I did was because I was going to sit down with Medtronic.

Yeah, I mean, and this is what I'm saying about choosing your professionals, right? You, you need to know who, who you're talking to, to someone else has, you know, the someone who has had clients in the same situation that, that you, you are in. Raymond, I see your, your hand is raised.

Yes, first off, really excellent questions and discussion, and Andrea, thank you so much. And I'm sorry, I had to leave for a little bit for a phone call. So I'll have to watch the video. But I should know this. I probably knew it at one time. But provisionals that don't convert, do they go into the public domain or not?

No, they do not. So they stay secret. That's the— yeah, that's the sort of beauty of them.

Okay. But if they stay secret, Does a patent examiner have visibility to them and will they apply a non-converted provisional as prior art that might defeat your patent?

No, no, they don't exist as far as the Patent Office or anyone else is concerned. It's between you and the Patent Office that it goes away. You know, I mean, okay, the literal record is still there, but it never publishes.

No, it has to be a published patent or application or publication, right? So everything that they're using is, yeah, prior art.

Prior art has to be published.

Yeah.

Okay, thank you. That was helpful. Totally different topic, but it's kind of, I don't know if it's interesting, but Tiger might remember this back in the 80s, I think somebody got a patent on bony ingrowth surfaces way back in '79 or something like that. And for a long time, you know, first off, everybody in the '80s started applying pore surfaces on everything, and the claim was super broad. If it's porous and bone can grow in it, I own it, or whoever it was. Whatever happened— does anybody remember that? And whatever happened to that lawsuit and whether the the inventor prevailed. It doesn't seem like they did. Otherwise, I think that person would be super, super rich. And if not, why? Why didn't— if they— unless somebody invalidated his patent, or does anybody remember that particular instance?

I remember a little bit, but I met the guy that invented fiber mesh for Zimmer. Back in the day that put it on the Miller-Galante knee, and that guy made a fortune. And some— the fiber mesh got around the plasma spray, um, you know, type of architecture for some reason.

So I was there at the time, and I'm trying to remember his name too, but nevertheless, there was somebody that predated him that I think attempted to, uh, sue But maybe he got— he paid off. I don't know. I never heard the outcome, unlike the set screw on pedicle screws where everybody had to pay— what was it, the 555 patent or whatever that number was?

Roger Jackson.

Yeah, for the set screw that doesn't splay, if I'm remembering. But the bony ingrowth would have been huge. I mean, huge. But that's a long time ago. Passed his through. I was just curious, was it because it was an invalid patent or, or what happened?

Yeah, I, I don't know of it, but I think that can certainly be a scenario, right, where it was invalidated, or, you know, just someone showed him the prior art that could have invalidated it, and so they just— he decided not to, not to sue.

Okay, that's possible.

That's interesting. That's really interesting. So, Andrea, you can take off your slides and we can—

Well, yeah. So I think I had maybe one or two more. So yeah, it's sort of the key takeaways is to think of the patent information out there as sort of your weapon. Have a team of patent attorney, patent searcher, and yourself or engineers and think of it as a— I know people think of it as another thing to pay for, but really it's also a tool to save you money. So yeah, so this was my presentation and I'm happy to sort of play around with the data. If anyone has any questions, we can answer those first. And, and in the meantime, if you can think of anything you wanna— you want me to, to look for, and I can, um, I can do it live.

Yeah, throw out a— throw out an area that you're interested in, and she's got 15 minutes, so this could be fun to watch. I mean, I know Raymond and, uh, Eric have a ton of spine patterns, and I'm sure Todd does too.

Well, as you're thinking, I start— I put together— this is classification for surgical robots. Yep, surgical robots. So, so patents are classified just like when you go into a library, old school library, where you have all the different sections. So this is the same way. So if we're looking at all the surgical robots, that were patents or application published in the first part of this year. So there's 3,508 in there, classified in there, and you can either go through them or combine that with some, some keywords. And so this is the database that I paid thousands of dollars for to allow me to, to look through patents. And for every search, it's at least 600 to 800. That's the minimum, but oftentimes thousands of patents. But I can also take all of these and analyze them and just sort of look at who the main players are. Nothing you know, too surprising here with Intuitive Surgical and Auras Health and Globus. Um, can look, look at the ones that are litigated. There's a lot of oppositions already in here. Licensing information is not, um, it's more on a voluntary basis, so that is not the entire picture. How big of this portfolio are granted patents versus pending, where people are filing, you know, US MOUs, but also Europe and in China and Japan and Germany. And there's all kinds of charts that, that I can come up with. So user input or Imaging markers.

Yes, Raymond. So I think when we talked, I mentioned the software PatSnap that prior company, you know, invested in. And it had probably— I'm sure it wasn't terribly valid, but maybe there was some science behind it— was an IP valuation section. And so do you have that similarly in this software?

No, not, not for a monetary value, but there are things in here that will give it sort of invention metrics. But I— the formulas used, whether it's PatSnap or somewhere else, you know, patent strength, it's based on citations and these metrics that generality, like it's a score, you know, it's based on these patent classification and how it is compared with the average. So it's— I don't have too big of a faith in it.

Yeah, I remember they also had the actual settlement values. Um, I see litigations. That is potentially useful.

Yeah, I mean, that's a fact, right? Like, at that point, you're, you're not coming up with something. That's a fact. It was litigated. And yes, and, and this database will have it too, but you have to pay extra for sort of that litigation data, and I don't use it enough to, to warrant Ja.

I guess if a company is intending to acquire patents for their own protection against their own risk of getting sued, because generally smaller companies are less at risk because they don't have the deep pockets. So then the question is, how do you present to a large company what the— I don't know whether I'd call it risk avoidance that they're potentially going to, or the value of that, that they potentially might have if they had your patent against a lawsuit against another one of their large competitors? Are you tracking with me?

I didn't communicate very well. I think I am.

Okay, so, so I have a priority date that may be 6 years ago. They're now entering that space and they want not so much my patent, but the patent for the purpose of making sure that their competitor doesn't sue them and bring them into court, you know. And so I could see some value in in just presenting the value of the patent for their own protection purposes?

Yeah, I mean, you can sort of map your claims towards the competitor's products. Yeah, right. That would be one way. If you would have a bigger portfolio, I actually made this LinkedIn post. This was 3 years ago. When Globus bought Medtronic, uh, NuVasive. And it's another one of these visuals that, that you can do with this database. And so I put the two portfolios together, and NuVasive is purple dots and Globus is the red dots. And you can kind of see here, it's, it is a little hard, but this was for, um, neuromonitoring, and it's mostly NuVasive. It's mostly blue. So, you know, in theory, Globus might have wanted to acquire NuVasive if they thought that, that they don't have a lot in neuromonitoring, and that's an area they want to enter. So the portfolio is complementary that way. There is also a lot of overlap, right? We look at intervertebral implants here, both of them are sort of equally represented. I think that these islands are the same as well. When it comes to robots, Invasive didn't have much there. So, you know, kind of showing the two portfolios and how they complement each other might be a way Of course, if you just have 1 or 2 patents, this doesn't make sense. It's for bigger portfolios. Cool.

That's really interesting.

Wow. Wow. Any other questions or things you want me to quickly— we have a couple more minutes here to look up whether on this particular portfolio or just look for something else.

Andrea, I had a separate question that I've had to deal with several times recently, and that's where to patent, you know, other than the US. I'm getting conflicting advice on that. Like, I've had a lot of people tell me, hey, you know, it's not worth your time patenting in China. You know, you can get a patent there, but, you know, kind of, so what? So what they're telling me. And then other countries in Europe, there's so many that you can go into. Is there any good rules of thumb that you know of for figuring that out?

Yeah, I mean, I wouldn't patent anywhere where I'm not planning on selling my product or where I'm not manufacturing it. Right? It makes no sense of doing that. Now, if you're thinking of— maybe you're not going to do it, but a potential licensee or— or license— yeah, licensee, or, or someone who would acquire the IP, if they do, if they are doing business in other countries, then it might be smart for you to to do there. I would look in competitors and see where, where they are filing. So that's a lot of times, that's why you, you have these analytics too, to see what people are doing as a general rule, or competitors are doing. And, and again, there are ways of— it's a lot of money. The more countries you, you file in, the more expensive it is. Um, but you can file what's, what's called PCT application. So it's sort of a world application, and then you have, I think, 18 months. Diane can probably chime in here until you decide exactly which country to, to go into. So you kind of buy yourself a little bit of time.

The longest— you can get the longest window if you file a provisional application, even if it's a complete application. So provisional can be what we call a paperclip paper cook provisional or just quick and dirty that has no formalities, you know, bullet points, hand drawings. It could be, you know, just getting the idea out there, like to go to talk to Medtronic, for example. Or it could be a full-blown application, very well thought out, completely drafted, but you file it as a provisional. So it gives you the ability at 1 year to either pivot and add subject matter, add some new drawings. You've come up with something new, may or may not get the priority date, but you can get it in the application. And then that's 12 months, right? So then you file your PCT application, PCT application, you get another 18 months before you have to commit to any jurisdiction that's a party to the PCT, and that would include the US. So you could even file just a PCT application, ride it all the way out to what, what totals 30 months from the provisional filing, and then you could even add new subject matter then if you file the US application off of that PCT. But it keeps your foot in the door. And if you're strategic and thoughtful about where you have the search done during the PCT, then you also have some insight as to what your position may be if you went into any one of the jurisdictions, you know, that you might want to file in. Andrea is right. Yeah, getting that landscape search, understanding what your potential acquirers or competitors are doing, you know, and where might you manufacture, or maybe you've got a product that is particularly suited for a market that's not the U.S. market, which is not necessarily the case for most, you know, spine and orthopedic applications. But certainly in cosmetics and some other fields, you know, China and Japan are particularly interesting for certain things while the U.S. is not interesting. So knowing that level of detail and then, you know, really strategically taking advantage of how you file can get you, you know, a pretty nice runway.

And, and, you know, China, for example, has been, you know, is known for sort of copying anyone's design. And but they have gotten better when you do have patent lawsuits about sometimes siding with a foreign patent holder. Now, of course, that requires the means to go through the lawsuit. So if you feel like you're not there, then maybe it's not worth it. I know that the bigger players have sort of changed strategy and are filing more.

In China?

Wow.

Great, thank you.

When I got to Ellipse in 2012, I killed all the Chinese patents instantly because I said, why are we spending money on this? You know, even if somebody infringes in China, you're not going to go over there and fight them and you're not going to win. So anyway, that was my opinion back then. I'm sure things have changed.

And you know, that was— yeah, exactly. That's how things were back then. And they're changing.

I want to ask about inventorship because I was taught many years ago that the inventors have to be correct on the patent. So they have to be the people that actually thought of that claim, and they could tell you the story. I was in a room and we were drawing on the board and this is what happened. But a lot of companies just throw up surgeon names and stuff on patents, and they sort of, you know, they make it look good, but they're not the real inventors. And can that invalidate a patent if you put, you know, Dr. Johnson on there and Dr. Johnson had nothing to do with it?

Again, I think Diane should answer this question, but I think absolutely you have to prove that Dr. Johnson was not involved. So that's probably where the hard part is. Do you have enough proof to bring to a lawsuit. But if you can, then, then yeah, technically you are not allowed to put someone on there who has not been involved, and you are not allowed to, to omit someone who has been involved. But, but yeah, their name is not there.

Patent can definitely be invalidated for fraud on the Patent Office, you know, either withholding an inventor or, or naming someone who's not an inventor. You know, it is a sort of an intent-based standard, right? So it's like if it was just inadvertent and nobody ever realized that somebody wasn't named or, you know, somebody shouldn't have been named, it's not a particularly draconian rule. But you can have circumstances certainly where someone is left off who really believes they belong and they could upset your apple cart down the road because if they get put on the stand, you know, they can say, ah, you know, that guy never really liked me, and you know, this was really my idea and I can prove it. So leaving them off could be a problem. Or, you know, I got really mad because they always put the head of surgery on every single application even though he never contributed. And you know, that's only going to come out in a litigation. And you know, at that point in time, you don't want that kind of information out there because it's at least going to spend your money and it might result in invalidation of the patent if you can show that there was a deliberate intent to withhold an inventor or, you know, to include someone who never invented. So my advice is, if you want to be on a patent application, be at the table when the work's being done. It makes it a little more difficult for someone to say, you know, you weren't there and you didn't contribute.

Hard to do, Diane, because a lot of the best ideas come in hallways and airports and—

Yeah.

You can't really predict creativity. Interesting. Well, it's— but any parting questions? This has been great, man. I've learned a lot.

Okay.

Yeah, this is great.

Well, thanks.

Thank you.

Yeah, thanks a lot. This is, uh, demystifying IP is so hard. It's so hard for everybody. Everybody needs IP, but they don't know exactly what it is. Or how to get it.

It's a treasure trove of information. I have the best job.

Yeah, you do. All right, well, thanks, thanks, Andrea, and thanks for joining us, Diane. That was—

yeah, my pleasure. Thanks, Tiger. Thanks, Andrea.

Thank you, everyone. Thank you. Bye.