April 7, 2025 • 34 mins
In this episode of the Neural Implant Podcast, we welcome Dr. Eugene Daneshvar, founder of Black Swan Intellectual Property (BSIP), a boutique law firm specializing in intellectual property for neurotech and medtech innovations. With a background in biomedical engineering and law, Eugene has a unique perspective on protecting the cutting-edge ideas that drive the future of healthcare technology. After years of working at a larger firm, Eugene founded BSIP to provide more accessible, fair, and transparent pricing for IP services, moving away from the traditional hourly billing model. In addition to his work in intellectual property, Eugene also offers strategic counsel for fundraising and business development, helping startups navigate the complexities of commercialization in the medtech and neurotech space.
Top 3 Takeaways:
- "It’s difficult to change large organizations. I had tried to build a neurotech-focused practice, but my previous firm wasn’t on board. The firm was primarily focused on pharma, with much deeper pockets than neurotech, and they controlled my hourly rate, which reached $1200 an hour. It was too steep for my clients in medical devices, so I decided to create a firm that would be more accessible and help those startups – I became an entrepreneur myself."
- "The most exciting part is that I switched to flat-fee billing, so no more billable hours. Everyone dislikes billable hours, and this approach creates a win-win situation for both myself and my clients. It provides predictability in costs, and it saves me time since I no longer have to track every minute of my work."
- "I offer deferrals based on what clients need—whether it's 30 or 90 days, or until they secure funding. Sometimes, I even take shares instead of cash, depending on the opportunity. As an angel investor with Life Science Angels, I help life science startups raise capital, typically between $200,000 and $1 million, by ensuring they are prepared for investment.
0:30 Do you want to introduce yourself better than I just did?
3:15 What are you specializing in?
4:15 Why do you think you're competent in this field?
9:30 What is a typical price for your services?
12:45 What are some other services that a neurotech company might need?
16:30 How does being a small law firm affect reputation?
22:45 What is missing most? Or what is something that you wish people would know?
27:45 Is using AI an issue more for generating the patent claim or writing the claim?
31:00 So you feel confident that your job is safe from AI?
Mark as Played
Transcript
Episode Transcript
Available transcripts are automatically generated. Complete accuracy is not guaranteed.
Ladan (00:01):
Welcome to the Neural Implant Podcast, where we talk with the
people behind the current eventsand breakthroughs in brain implants.
An understandable way, helpingbring together various fields
involved in neuroprosthetics.
Here is your host, Ladin Yek.
Hello everyone.
Welcome to the Neural Implant Podcast.
Today's guest is a repeat guest.
Eugene Dan Schwar from Black Swan.
(00:23):
Intellectual property.
And yeah, so last time we talked youwere working for a different company,
I believe we're talking about patentlaw you know, filing for intellectual
property for Neurotech devices.
And now you're at a different company.
So welcome first of all, and, andI'm excited to talk about your
new adventure, your new endeavor.
(00:46):
So do you want to introduceyourself better than I just did?
Eugene (00:49):
Well, thank you so much.
My, it's such a pleasureto be here as always.
Love, listen to your podcast.
They're so authentic and, and I thinkthat's, you know, this is kind of the
experience I bring to, to my practice.
And as you can may have heard it'sdifficult to change any large organization
and I had sought to build a neurotechfocused practice, but I didn't have
(01:09):
a willing partner in my last firm.
The last firms.
Mainly focused on pharma andpharmaceuticals, and that has
much pockets than device neuro.
And they control my hourly rate,which come January 1st, went up to
about 1200 an hour which is two steep.
My medical device clients who arebeing compelled to find help elsewhere,
(01:33):
and I decided to be that elsewhere.
So you get, you get con contagious.
Entrepreneurship.
I, you know, I loved helping entrepreneursand I'm like, why don't I be one too?
So yeah, no, I'm excited totalk about what I'm up to.
Kind of see myself as kind of likethe in-house counsel specializing
in, in IP for for my clients.
(01:54):
I offer a patent prosecution,which is your run of the mill.
Type of things.
You know, doing a landscape searchof surveying the field, doing
patentability analysis, that an idea,determine if it might, you know,
meet the threshold of patentability.
Do freedom to operate once aproduct, you know, you know,
there's features to search for.
I do IP due diligence.
(02:15):
I pretty much analyze claims to productcoverage and make recommendations
to pursue new meaningful claims.
IP due diligence also includessome of these admin related
things relating to the documents.
Make sure they're, they're in order.
As you know, in the us, ownership startswith inventor and, and is assigned
(02:37):
and is assigned later based on otheragreements like employment agreements.
But most exciting, I, I wanna say,is that I do flat fee billing.
So no more billable hours.
Everybody hates billable hours.
And so when it's a wind fundfor myself and my clients, we,
they have predictability forhow much things are gonna cost.
And I, myself, I saved time by not havingto track every 1.1 hours of my time.
(03:02):
Yeah.
But yeah,
Ladan (03:03):
that's really exciting.
Yeah.
That, that's really cool.
You know, starting your own I guessboutique law firm, you know, specializing
in, I guess, neurotechnology, right?
Is that, is that what you're specializingin or medical devices in general?
Eugene (03:15):
I, yeah, I'd say, you know, it's more of what I don't do
is how I would say I, I don't do.
Pharma related things, and I don't dojust hardcore double E type things,
even though I've got a background,a double EI, I wanted to make work
in areas that I can add value to.
So although I, I, I am a neurotech patentattorney, I also represent robotic surgery
(03:37):
clients and my wife's the OB GY gyn, Iget exposed to a lot of different types
of tools for surgical tools, et cetera.
So like I do some of that as well.
And, and, and other.
Other people who know me, who trustme, who do have, I mean, I do have an
autonomous vehicle type client, mainly,mainly in a, in an education capacity.
I, I help, their fi with his filings.
(03:58):
But that's, I don't seek out that work,but I'm just known as a trusted person.
And so I give it to 'em very candidly.
Like, you know, what youdo, what do you need to do?
How do we protect this innovation?
But mainly I'd like to focus on areasin healthcare whether it's implantables,
not implantables, digital health.
I, I can help provide value.
Ladan (04:18):
Do you wanna remind people of your background?
Why, why do you think you'recompetent in this field?
Eugene (04:23):
Well you know, they're, they're part of your podcast and listen to this.
They've heard the other one, but, sure.
So background electrical biomedicalengineering dual undergrad, master's,
PhD, university of Michigan mainly wasmem based neural electrodes that I.
I was trying, my claim to famewas making movable electrodes.
(04:44):
Electrodes that could repositionthemselves either during
insertion or, or after insertion.
And you can think there's differentapplications, whether you're
recording or simulating, and tryingto get that last couple microns
would make a difference for whetheryou're recording or, or simulating.
And that required me tolearn a lot of materials.
(05:08):
I was using.
Some type of, some kind ofconjugated polymer actuators to
work inside, inside the body.
So a lot of characterization and.
And then you end up being jack ofall trades when you get your PhD.
So I ended up having to learn alot of mechanical engineering for
deciding, designing, uh, what canbe done when it comes to electrodes
(05:30):
and, and interfaces and materials.
But then ultimately you, you know,I have to and to determine the
feasibility of, you know, long term.
Life lifetime of, ofthese devices as well.
So yeah, that was my PhD workthat was in, I graduated in 2014.
Since then, I've got overa decade of experience now
(05:52):
in, in, in IP and different.
Different aspects of ip.
So, for instance, I've, I've beenan expert witness in IP litigation
for neuromodulation technology.
I've represented Fortune 500 companies,midsize companies growing companies solo
inventors, and even some non-practiceentities, or you call 'em patent trolls.
And I actually really like learneda lot from representing them.
(06:13):
'cause they, they really, thequality disclosure really mattered
if they wanted to compel a practicingcompany to license the invention.
But yeah, and I mean, I ended upworking in many different areas than
my clients from different areas.
But as far as my, my interest, as Imentioned the last podcast I was born
missing some fingers on one hand,which has really been the chip on my
(06:37):
shoulder to learn the science well.
And now try to be a, an advocatefor other innovators and scientists
who, who wanna translate their.
Into, into the market.
So now I'm catalyst to.
Ladan (06:54):
Yeah.
That's exciting.
That's really cool.
Yeah, so I think, I think somebody withyour experience, you know, both in, in
the legal side of things and, and havinga PhD, that's a, that's a rare thing.
And I'm liking actually,so I didn't know this.
We, we went into this not having talkedabout, you know, your, your new venture.
But I really like this flat rate billing.
I think that's really exciting.
It was really so.
(07:14):
Yeah, we had worked with you and, andyou know, at the $1,200 an hour, I
think I calculated that, like everyword that you said was like $30.
So it really stressedme out talking to you.
I'm just, we gotta talkthis fast possible.
I barely billed
Eugene (07:27):
for your work, whatcha talking about?
So but I will say, so that's notall you know, the commercial.
So I have three aspects of my practice.
First aspect is the bread andbutter IP work that we talked about.
The second aspect is investing.
I'm also an angel investor, andso I have very founder friendly
(07:47):
alternative fee structures.
So I do deferrals depending on whatthey need, if it's 30 days, 90 days,
you know, up to when they get funding.
And I even sometimes with someclients, I, I do take shares
instead of instead of cash.
Again, it depends on the opportunity.
I'm a, I'm an angel investor where Iparticipate through Life Science Angels
(08:09):
and we try to help companies raise money.
So Life Science Angels invest inlife science startups that are
incorporated in the US and have.
IP that's either owned or licensedby US entity, and they invest in
pre-seed through Series A, typicallybetween 200,000 to a million.
And so that's another way that that Ihelp my clients is to help, you know,
(08:30):
help them be prepared to be invested in.
And then I invest myself.
The last part of my businessthat I'm excited about is,
is Deep doing a deep dive.
Getting up to speed with what'sthe latest and greatest do it
landscape on contemporary issues.
And, and, and then I think that will bothhelp my IP work and and my investing idea.
(08:55):
So 3, 3, 3 legs of the stool here.
Ladan (08:59):
Yeah.
That's exciting.
Yeah, that's really cool.
And, and you can definitely domore than just a, a, a lawyer.
And I think in that case it makes moresense to have your own firm because then
you're not limited by these other things.
You could, you know.
Not be allowed to do something like that.
I don't know what youragreement was before, but yeah.
So, okay.
So I, I, I don't wanna put you on thespot, you know, and, and I know prices
(09:21):
might change and everything like this.
So what's a typical price?
Or, or like, what, what would one expectgoing into an agreement with you, okay, we
want to do this versus this versus this.
What might that cost look like?
How does it compare to industry standards?
I mean, answer I, I guess howeveryou want to answer, I guess.
Eugene (09:38):
Yeah.
So I think, you know, the first thingI'd say is, you know, when you look,
when you consider who to work with.
You can price shop and you canalso see, you know, what do
you get out of the experience.
And so the first thing I careabout is making sure that my
client is using their money well.
So I am not gonna push them towardsfiling if that filing is not gonna
(10:01):
help them achieve their, their aims.
That being said, you know,again, I feel like that's part.
Customer service, that's part ofeducation, and that's one of the things
I care most about is helping educateour community about the process.
That's a typical application.
We say non-provisional application.
So when you first file, you can file awhat's called a provisional application
(10:22):
that doesn't end up being seen, butit kind of holds your place in line
in terms of your disclosure date.
Then there's a, and, and that can vary.
So provisional can vary between, youcould file a blank sheet of paper and that
would still be a provisional application.
Versus you can, you can prepare afull non-provisional application,
very formal and nice drawings andclaims and, and, and then you can
(10:46):
file that as a provisional too.
So I think the provisionalis a little bit of a harder.
A harder thing to pin down the pricepoint to pin down, because it depends
on what the client seeks, but Ithink a non provisional would say is
typically between 12,000 to 15,000.
Is is the market rate given thecomplexity of the technology?
And, and you know, what theultimate intention is for, for the
(11:11):
client if they wanna put all theirideas in in one application or
split 'em up into different ones.
But I. What that entails.
And, and I actually, I have twodifferent tiers that I offer in tier one.
It's very plain vanilla.
They help the innovationand I help draft innovation.
Tier two, and this is why I startedmy, my firm is where I roll up
(11:35):
the sleeves and I help dig in.
I'm not seeking to be an inventor,but I seek to, I, I show up at the
client's site wherever they are.
So if they're in Florida, I'll visitthem in Florida, look over their
shoulder, see what they're doing.
And by just being there, you seedifferent aspects that it's, it's
old school way of doing things.
(11:57):
Aside from just meeting people virtuallyand seeing them on Zoom, I think there's
a lot of innovation that's lost intranslation or lack of translation.
That's the, I think that's, that'swhat I'd like to offer is a, a partner
in, in doing the invention disclosuresnot just putting it on the shoulders
of the client, but just having aconversation, I think being there.
(12:18):
So, so that's more on the 15th thouthousand end, but it is just a matter of,
here's my disclosure, convert this into anapplication that's more than the 12,000.
Ladan (12:28):
Okay.
That's, that's pretty good.
Yeah.
That seems that seems very reasonable.
And yeah.
Excellent.
So, so what are some other servicesthat a you know, nurtec or, or
medical device startup might need?
And, and what else would yourecommend at what point, too?
Eugene (12:44):
Yeah, so I think the, the, I think.
Our scientist listen to this.
They're very good on the on theidentifying the scientific problem
and solving a scientific problem.
And I realized business design.
It is also really important and I think myexperience in vetting companies doing due
(13:07):
diligence for the companies that come forangel investing, you really see patterns
of who's ready for taking the next step.
And so I'm also going to a conferencesactually I'll be at LSI at the
emerging Med Tech summit in March.
And I'll be at the BioelectronicMedicine Forum in New York City in April.
(13:29):
I'll be at the Neurotech LeadersForum, which I'm always at in November.
And there you also see, you know,different stage companies dealing with
either the raising the capital or goingthrough the regulatory decision tree
and, and can, if, if it's not so muchthat I it's more about issue spotting.
(13:53):
Helping them get the right resourcesearlier than later so they can
actually do a course correction.
So I have partners and in the regulatoryspace I have partners in raising money.
And one, one partnership that'shere, I think I mentioned to you.
It's called Fogerty Innovation.
They're an incubator, actually a nonprofitincubator here in Northern California.
(14:16):
It's like five minutes from my house,and they actually offer, I highly
recommend everyone to look them up.
It's fogerty innovation.org andthey have three different programs.
They have something calleda company in residence.
They actually host companies,entrepreneurs, and their teams.
They have a ton of wet lab space.
You know, pretty much you'd think likethe r and d section of a company is
(14:40):
hosted there, and companies can staythere for about two to three years.
I don't believe they charge them rent.
And they teach them all the differentaspects of r and d, IP quality systems,
clinical regulatory affairs, et cetera.
They have another program calledCompany Accelerator Program.
It's a six month program that forearly stage series A, series B stage,
(15:03):
we're really accelerating their growth.
They're getting through all of thesekind of commercialization tasks.
And then they have this lastone's called the innovation.
Accelerated program and where theyhave, typically there are physicians and
hospitals nearby, LK Hospital, mountainView, Sequoia Hospital in Redwood City
that they help you know, physicians whocome up with ideas like vet their ideas,
(15:28):
we'll do, we'll talk about concepts.
And I have a couple of physiciansI've put through that program as well.
And, and I think having,so, you know, working with.
An IP attorney, I, I kind of,I'm not just an IP attorney.
I kind of help walk with theinnovators with all the next steps
they have to do and help connectthem to the right resources.
Ladan (15:51):
Yeah, that's pretty exciting.
Definitely more of a,a full service thing.
Okay, so, so before you were workingin a, a, you know, famous law firm
that had, you know, very well-knownname and everything like this.
So what do you think?
I mean, is that something that,how, how important is the name
and you know, what what work do,I guess the partners or what, what
comes with a good name like that?
(16:12):
And then what can, I guess, peopleexpect from your, you know, small firm.
Whoa, whoa,
Eugene (16:18):
whoa, whoa, small We're talking about, you know, my, the name
Black Swan you know, actually refersto like an unpredictable, unforeseen
event with extreme consequences.
So be carefully throwing out attorney.
It's people hire attorneys, not law firms.
So even whatever attorney brandname that you think you have is
actually ultimately a particularperson there that you partner with.
(16:42):
Hence.
With the, each firm we werethinking of brand, they have
different things they're good at.
And Wilson Seen is mainly, wasmainly known for their corporate side
of helping companies raise money.
They weren't necessarily knownfor their patent practice, with
exception of their life sciences.
(17:02):
Ones with the pharma, they'revery strong at pharma.
They're the go-to firm for pharma.
They're, they don't have anypartner in medical devices.
They had one that retired the monthbefore I joined, actually wanted
to be trained under him but he leftand they never filled his spot.
So one thing I liked about themthough, and the things they taught
(17:26):
me was working with deferred billing.
You know, may give high qualitywork and will bill you and
wait until you raise money.
Like, I learned that from them.
And one of the things that Iliked about that is that there's
a little bit of a relationshipbuilding that you have with a firm.
A lot of other firms, they youknow, make you pay retainer.
(17:48):
'cause we don't know if we'regonna be around in a year
to, to pay off that de fee.
Right.
But my practice, I'velearned from that from.
Wilson and I'm like, youknow what, I like that.
I like the relationship building aspect.
I like taking a chance.
I'll, you took a chance on me.
I'll take a chance on you.
And, and so I replicated the goodthings I liked about that firm.
(18:09):
But I still work with the corporatecounsel, so if you're still trying to
raise money, you can still work with me.
I just think you just go to aparticular, particular brand
for what they're good for.
If you are interestedin raising money, yeah.
You, you find who is the corporatecouncil that may help raise money.
If you're looking for patent work, whatmatters to you is who can understand who
(18:32):
can get strong patents and, and actuallyhow I how I picked, you know, my quality
of my, my mentors over the years wasI took a look at who were the winners.
Look at the claims, look at howwell the claims are written, look
at which claims went to litigation.
Because I, I worked in I litigation formany years and I also defended patents in
(18:55):
what's called IPRs or post grant practice.
And, and from there I learned aboutthe quality of the you know, the, the
whole patent as a whole and the claims.
People who, a scientist whounderstand good science, they good
IP practitioners will refer you.
(19:15):
Like for instance, if you cometo me in an area that's not my
specialty, I'll refer you out tosomebody who can do that better.
' cause I care about my brand.
I care about representingthe client's best.
So just like a physician, youknow, you'd find the specialist.
That helps whatever need you have.
You go to a general practitioner forone thing, you go to a specialist
(19:38):
you know, neurosurgeon for another.
And, and I think you ultimately,it's not like you just pick
a hospital based on the name.
You pick a particular doctor whoyou know is good at doing that
surgery if it matters to you.
And I think that's what I offerthrough my background and also
through the investing that I do.
'cause I'm actually investing my time.
(19:58):
To get reequipped show up at theconferences read the publications.
And so I have up to date information on,on what is patentable, what is new, what
is old, and that ultimately saves time.
I have a client that I gave'em some bad news this week.
I'm like, listen, this idea ofyours has been shown here, and
(20:19):
if I hadn't done that, he couldspend a ton of investment in.
And trying to pursue anidea that had a dead end.
Instead, now he can, he canget exposed to that idea.
Think about whether the idea solvesthe problem as good as his could have.
And, and from there weinnovate from there.
(20:39):
We're a partner.
They're not gone.
I'm just working with them on a different,on a different aspect of the problem.
So I think that is my brand,that's what I care about.
And, and I think the ip field by itself.
Doesn't work on that model.
And hence I'm an entrepreneur andI'm changing, changed the model.
Ladan (21:00):
Yeah, this, this is startup potential, maybe even launch some kind of
completely new yeah, like you said, modelthat, that's like revolutionizing thing.
Maybe a new legal zoom or you know,whatever, some kind of other model.
Eugene (21:12):
So my, my, my aspiration within the next year or two is to
probably launch my own accelerator.
Really, if there's partners out there,we're listening to this or if you
know people, you think it'd be a goodpartner, I already have a regulatory
consultant looking to join me.
And we're trying to feel like we wannakind of be, I wouldn't say one stop shop,
(21:32):
but really be help tackle medical deviceinnovation, neurotech innovation from
all the angles that are needed early on.
A lot of people go towards the.
They, you know, they leave certainthings from much later when when
really they should be tackled early on.
So I think that's thething, but you're right.
(21:54):
Like what is it that we need?
I think Fogy Innovation is great.
They're a nonprofit that really helpseducate and, and but and they're, they're
also related to the Stanford Biodesignprogram, and I think I myself have been
trained in that, in that type of program.
And, and I wanna offer those same lessons.
You know, for my clients.
Ladan (22:16):
Yeah.
That's exciting.
Exactly.
Coming back to this this full serviceservice, I guess for, for medical device
or you know, any, any type of innovators.
So what do you think is missing the most?
What is the, what do youin your experiences Yeah.
Well, is something that,that you wish people would?
Oh, I can
Eugene (22:33):
tell you right now, top of mind is using ai.
To invent.
I'd say a lot of disclosures I've beenseeing lately you, you know, can tell
they were ai augmented, and there's,so the U-S-P-T-O has some regulations
and some about having, using ai.
(22:53):
You know, coming up with Discover,and I'm just gonna read this
verbatim from them, be named asan inventor patent application.
A natural person must make a significantcontribution to the invention.
A person makes a significantcontribution to invention if they one
contributed in some significant mannerto the conception of the invention.
(23:15):
Two, made a contribution tothe claimed invention that is
that insignificant quality.
The tion is measured against thedimensions of the full invention.
And third, it did more thanmerely explain the well known
concepts or the state of the art.
So that's like the rule that theyapplied for AI is like, what the
natural person, what is it that theAI did versus what the person did.
(23:40):
And, and in March of this lastyear, they, they provided some
examples that I'm happy to, to share.
They, they had this one exampleabout maybe this making a, an
addition to this toy robotic car.
And they had different varying levelsof human involvement in the conception.
(24:02):
So, and they have five scenarios.
The first scenario, they hadnatural persons take output of an
AI system without any alteration.
You can imagine where that's gonna go.
Scenario two.
Natural persons make minimal alterationsthe output of the AI system while
reducing the innovation to practice.
(24:23):
Third natural persons performexperiments on the AI output
to create a modified design.
And four natural persons use an AIsystem to make minor alterations to
a new design that they came up with.
And five.
An owner of an AI system attemptsto patent the innovation.
(24:46):
In those five scenarios, you hear thatthere's different aspects of what the
natural person is doing, and the firsttwo the patent office said those two
do not amount to be those inventors.
You know, the, the natural persons didnot actually do the inventive part.
That was the AI and AI can't beinventors, so pretty much like shot
(25:07):
themselves on the foot there in terms of.
Just using AI to do things andthey themselves did not do it.
The third and fourth example iswhere they modified the design.
It was really their design.
They came up with usingAI to make alterations.
That one did meet the thresholdof, of yes, they're inventors, the
natural persons are the inventors.
(25:28):
And then the last one where just theowner of ai tries to patent something
the AI came with that also does not.
Meet the criteria.
So it's like if you own theai, the AI came up with, it
doesn't make you the inventor.
So I think that, you know, is reallyhelpful guidance and there's a lot
more details in, in the example if youactually, you know do the search on this
(25:53):
and it helps you understand how to workwith ai to understand problems and then.
When it comes to the materials, youend up giving your patent attorney.
I say a lot of, you know, you can tell,Hey, I had to draft a claim and I get a
bunch of claims, but really I found thoseto be missing of what is the novel aspect?
(26:19):
Like what is, what areyou moving the needle on?
I still feel like there's the human aspectof understanding the problem and then
really articulating what the differentialis, what you're, what you're addressing,
that you still need that human component.
Even the disclosures I get, I get thosedisclosure and I push back at them.
I'm like, listen, where is the, Isee you general statement here, but
(26:42):
what are we really doing different?
And then that conversa, it'sa great conversation starter,
but I've actually had a client.
Recently file a provisional ontheir own to try to save money.
And then ultimately when they gaveit to me, they're like, Hey, let's
make this an non provisional.
I'm like, you didn't enable what you did.
A lot of wants and need a lot ofplaceholders for the disclosure that
(27:05):
you filed, but we need to, you know,actually finish up the invention.
And so I definitely feel likeAI is definitely useful, but.
I think, you know, use it withinlike any other tool you have and, and
get some guidance on filing using aiwith your, with your patent attorney.
(27:25):
My advice.
So I think that's thebiggest thing I'd say.
Ladan (27:28):
Okay.
Yeah.
That, that is definitely a, a new thing.
And, and yeah, I've definitely worked withAI for some, you know, legal stuff, and
it's been, it's been really nice and to myeyes, you know, to my inexperienced eyes.
I'm just like, wow, this is great.
But yeah, you, you might, you might seesome differences, but, but it sounds more
like you are talking about the issueswith like developing the actual invention
versus like writing it up, right?
(27:51):
Is that, is that what you're saying?
Eugene (27:53):
Yeah, but I mean you know, writing it up, I guess is the question.
What if you're just using it to expanda section for, for known known section?
Let's say you develop an IPG, youdevelop a novel electrode and you
just kind of want to fill out likethe spec for specifications for
what are the different aspects ofIPG that kind of generally known?
(28:15):
Aspect of what is the novel distinctionsthat you've identified are the limitations
that ultimately would go into the claim?
I still don't think AI is really,at least in my experience that I've
seen so far, have been great at,at teasing that apart in, in, at
least in the, in the meaningful way.
(28:37):
But not to say it's not gonnaget there, I just think that.
There's another aspect of the, thelaw firms currently don't use AI
because we we're not confident thatthe databases that the AI pulls from
the algorithm is co has confidential.
So think that, you know, you put in,right now, if you put in, you know, you
(28:58):
think Google is free and it's a freesearch, et cetera, but everything you
type into Google is not confidential.
It goes out there.
And that's, you know, there'ssome companies who talk
about AI for patent work.
They'd say, Hey, we have aclosed network system for you.
I don't think that's truefor the free products.
So if you go to check GPT,you put your idea in there.
(29:20):
That algorithm now has learned,oh, this idea is out there.
And so next time someone else uses the.
You know, to work on theirinnovation, they may pull from
your disclosure that you included.
So we, you know, attorneys are very,very cautious because there's a
lot of malpractice to not have ourclient's material held confidential.
(29:46):
So I think for individual innovatorsas well as well, you really.
Have to be careful onwhere you put your ideas.
And so I'm, if I use Chad GBT, or not thatI don't use Chad GBT, but if I were to use
a similar program, but like that, I wouldmaybe only expand on the non-confidential
aspects of things that are known in theart to help fill out an application.
(30:11):
But you always hear about companies thatare supposed to hold your credit card
information in confide, breach, et cetera.
Right.
And I think what is the cost of.
Losing that confidentiality of your idea.
I mean, ultimately we want to, youknow, publish our innovation, right?
We are filing a patent that will becomepublic, but there is, you know, the 18
(30:33):
month embargo that you don't have intyping in your ideas into these products.
Now I am currently exploringdifferent options for.
What legal service AI offer andwhat kind of assurances they have.
But even myself, I don't put mycognizant, confidential information in
that or, you know, until one day thisreassurance is that we can rely on.
Ladan (30:59):
Yeah, that makes sense.
So you, you are pretty confidentthat your your job is safe.
For now the, on the legalside of things, right?
Eugene (31:06):
I think innovation.
Initially can be can be scary for, youknow, an old dog to learn new tricks.
But I'm, I, I think there's exciting.
The exciting thing I, I see about itis it can take out some of the grunt
work, but really separate out where'sthe value you actually provide.
(31:29):
And that's why I, whenI started this firm.
What is it that I can provide?
And I had a PhD, I had a bunchof, a bunch of depth of knowledge
that I'm sure the AI has a bunchof depth of knowledge too, right?
But but I think the human mind forcoming up with innovation is still
unique and, and I think my competitiveadvantage is still being very creative
(31:50):
and solving problems and having theempathy of innovators understand
what the, the perspective they have.
Help through, you know, through aconversation, understand what is
the problem they're trying to solve.
And I, I'm not concernedabout AI taking that over.
And you know, in any case, I thinkthere's a lot of hard problems out
(32:11):
there that need to be solved If AIcan help solve some of them, awesome.
That's what we're here to do, right?
We're here to make the worlda better place, et cetera.
And, you know if AI helpswith that, that's wonderful.
Ladan (32:25):
Yeah.
That's cool.
Yeah.
Well that, that's a, it's a brave newworld we live in and it's, it'd be cool
to have, you know, instant patents if youjust input it and, and boom, ready to go.
And then maybe you read it over, you, yourubber stamp it or something like this.
And, and yeah.
Eugene (32:39):
Well, I'll warn you about that.
AI is great in generating aton of material, but you know.
It, it doesn't, you know,you can bury the lead in it.
So don't, don't just generate materialfor generating material, I think is much.
You know, the claims, the reasonwhy the claims are short they're
short isn't so they're broad.
But you know, I'll say it's definitelyhelpful to provide something,
(33:03):
but when you provide materialwithout even reading it yourself.
That's a little, that's a littleannoying on the side of saying, okay,
did you even read what you submitted?
Because there'll be prompts in there.
Clean this up before.
Ladan (33:15):
That's funny.
So they just, they just, wow.
That's crazy.
Wow.
Yeah,
Eugene (33:22):
so I'll say, but my, my my closing thoughts is, you know, I, I had
some incredible mentors in my trainingwho took time to help me gain experience
and, and I believe in paying it forward.
I plan to hold office hours forinnovators to ask me questions, and
I'll, I'll announce those shortly.
There's a, there's a proverbabout how society grows.
Great.
When people plant trees in whichshape that she'll never sit.
(33:45):
And that just remindsme of the mentors I had.
And both sides and law help mebecome the innovation advocate.
I'm today.
So I would love to help scientists,innovative, listen to this, reach out
and let me know how I can help them.
Ladan (33:57):
Yeah.
Excellent.
Thank you so much.
Thank you, Eugene, for coming on and,and hopefully if people are interested
and they're in the right stage of lifeor development of some kind of technology
or idea or something like this, theycan reach out to you and learn more.
Eugene (34:09):
Thanks.
Ladan (34:10):
Thanks a
Eugene (34:10):
lot
Ladan (34:10):
on.
Hope you enjoyed the show and we'reable to learn something new, bringing
together different fields in novel ways.
Until next time on theNeural Implant Podcast.
Welcome to the Neural Implant Podcast, where we talk with the
people behind the current eventsand breakthroughs in brain implants.
An understandable way, helpingbring together various fields
involved in neuroprosthetics.
Here is your host, Ladin Yek.
Hello everyone.
Welcome to the Neural Implant Podcast.
Today's guest is a repeat guest.
Eugene Dan Schwar from Black Swan.
(00:23):
Intellectual property.
And yeah, so last time we talked youwere working for a different company,
I believe we're talking about patentlaw you know, filing for intellectual
property for Neurotech devices.
And now you're at a different company.
So welcome first of all, and, andI'm excited to talk about your
new adventure, your new endeavor.
(00:46):
So do you want to introduceyourself better than I just did?
Eugene (00:49):
Well, thank you so much.
My, it's such a pleasureto be here as always.
Love, listen to your podcast.
They're so authentic and, and I thinkthat's, you know, this is kind of the
experience I bring to, to my practice.
And as you can may have heard it'sdifficult to change any large organization
and I had sought to build a neurotechfocused practice, but I didn't have
(01:09):
a willing partner in my last firm.
The last firms.
Mainly focused on pharma andpharmaceuticals, and that has
much pockets than device neuro.
And they control my hourly rate,which come January 1st, went up to
about 1200 an hour which is two steep.
My medical device clients who arebeing compelled to find help elsewhere,
(01:33):
and I decided to be that elsewhere.
So you get, you get con contagious.
Entrepreneurship.
I, you know, I loved helping entrepreneursand I'm like, why don't I be one too?
So yeah, no, I'm excited totalk about what I'm up to.
Kind of see myself as kind of likethe in-house counsel specializing
in, in IP for for my clients.
(01:54):
I offer a patent prosecution,which is your run of the mill.
Type of things.
You know, doing a landscape searchof surveying the field, doing
patentability analysis, that an idea,determine if it might, you know,
meet the threshold of patentability.
Do freedom to operate once aproduct, you know, you know,
there's features to search for.
I do IP due diligence.
(02:15):
I pretty much analyze claims to productcoverage and make recommendations
to pursue new meaningful claims.
IP due diligence also includessome of these admin related
things relating to the documents.
Make sure they're, they're in order.
As you know, in the us, ownership startswith inventor and, and is assigned
(02:37):
and is assigned later based on otheragreements like employment agreements.
But most exciting, I, I wanna say,is that I do flat fee billing.
So no more billable hours.
Everybody hates billable hours.
And so when it's a wind fundfor myself and my clients, we,
they have predictability forhow much things are gonna cost.
And I, myself, I saved time by not havingto track every 1.1 hours of my time.
(03:02):
Yeah.
But yeah,
Ladan (03:03):
that's really exciting.
Yeah.
That, that's really cool.
You know, starting your own I guessboutique law firm, you know, specializing
in, I guess, neurotechnology, right?
Is that, is that what you're specializingin or medical devices in general?
Eugene (03:15):
I, yeah, I'd say, you know, it's more of what I don't do
is how I would say I, I don't do.
Pharma related things, and I don't dojust hardcore double E type things,
even though I've got a background,a double EI, I wanted to make work
in areas that I can add value to.
So although I, I, I am a neurotech patentattorney, I also represent robotic surgery
(03:37):
clients and my wife's the OB GY gyn, Iget exposed to a lot of different types
of tools for surgical tools, et cetera.
So like I do some of that as well.
And, and, and other.
Other people who know me, who trustme, who do have, I mean, I do have an
autonomous vehicle type client, mainly,mainly in a, in an education capacity.
I, I help, their fi with his filings.
(03:58):
But that's, I don't seek out that work,but I'm just known as a trusted person.
And so I give it to 'em very candidly.
Like, you know, what youdo, what do you need to do?
How do we protect this innovation?
But mainly I'd like to focus on areasin healthcare whether it's implantables,
not implantables, digital health.
I, I can help provide value.
Ladan (04:18):
Do you wanna remind people of your background?
Why, why do you think you'recompetent in this field?
Eugene (04:23):
Well you know, they're, they're part of your podcast and listen to this.
They've heard the other one, but, sure.
So background electrical biomedicalengineering dual undergrad, master's,
PhD, university of Michigan mainly wasmem based neural electrodes that I.
I was trying, my claim to famewas making movable electrodes.
(04:44):
Electrodes that could repositionthemselves either during
insertion or, or after insertion.
And you can think there's differentapplications, whether you're
recording or simulating, and tryingto get that last couple microns
would make a difference for whetheryou're recording or, or simulating.
And that required me tolearn a lot of materials.
(05:08):
I was using.
Some type of, some kind ofconjugated polymer actuators to
work inside, inside the body.
So a lot of characterization and.
And then you end up being jack ofall trades when you get your PhD.
So I ended up having to learn alot of mechanical engineering for
deciding, designing, uh, what canbe done when it comes to electrodes
(05:30):
and, and interfaces and materials.
But then ultimately you, you know,I have to and to determine the
feasibility of, you know, long term.
Life lifetime of, ofthese devices as well.
So yeah, that was my PhD workthat was in, I graduated in 2014.
Since then, I've got overa decade of experience now
(05:52):
in, in, in IP and different.
Different aspects of ip.
So, for instance, I've, I've beenan expert witness in IP litigation
for neuromodulation technology.
I've represented Fortune 500 companies,midsize companies growing companies solo
inventors, and even some non-practiceentities, or you call 'em patent trolls.
And I actually really like learneda lot from representing them.
(06:13):
'cause they, they really, thequality disclosure really mattered
if they wanted to compel a practicingcompany to license the invention.
But yeah, and I mean, I ended upworking in many different areas than
my clients from different areas.
But as far as my, my interest, as Imentioned the last podcast I was born
missing some fingers on one hand,which has really been the chip on my
(06:37):
shoulder to learn the science well.
And now try to be a, an advocatefor other innovators and scientists
who, who wanna translate their.
Into, into the market.
So now I'm catalyst to.
Ladan (06:54):
Yeah.
That's exciting.
That's really cool.
Yeah, so I think, I think somebody withyour experience, you know, both in, in
the legal side of things and, and havinga PhD, that's a, that's a rare thing.
And I'm liking actually,so I didn't know this.
We, we went into this not having talkedabout, you know, your, your new venture.
But I really like this flat rate billing.
I think that's really exciting.
It was really so.
(07:14):
Yeah, we had worked with you and, andyou know, at the $1,200 an hour, I
think I calculated that, like everyword that you said was like $30.
So it really stressedme out talking to you.
I'm just, we gotta talkthis fast possible.
I barely billed
Eugene (07:27):
for your work, whatcha talking about?
So but I will say, so that's notall you know, the commercial.
So I have three aspects of my practice.
First aspect is the bread andbutter IP work that we talked about.
The second aspect is investing.
I'm also an angel investor, andso I have very founder friendly
(07:47):
alternative fee structures.
So I do deferrals depending on whatthey need, if it's 30 days, 90 days,
you know, up to when they get funding.
And I even sometimes with someclients, I, I do take shares
instead of instead of cash.
Again, it depends on the opportunity.
I'm a, I'm an angel investor where Iparticipate through Life Science Angels
(08:09):
and we try to help companies raise money.
So Life Science Angels invest inlife science startups that are
incorporated in the US and have.
IP that's either owned or licensedby US entity, and they invest in
pre-seed through Series A, typicallybetween 200,000 to a million.
And so that's another way that that Ihelp my clients is to help, you know,
(08:30):
help them be prepared to be invested in.
And then I invest myself.
The last part of my businessthat I'm excited about is,
is Deep doing a deep dive.
Getting up to speed with what'sthe latest and greatest do it
landscape on contemporary issues.
And, and, and then I think that will bothhelp my IP work and and my investing idea.
(08:55):
So 3, 3, 3 legs of the stool here.
Ladan (08:59):
Yeah.
That's exciting.
Yeah, that's really cool.
And, and you can definitely domore than just a, a, a lawyer.
And I think in that case it makes moresense to have your own firm because then
you're not limited by these other things.
You could, you know.
Not be allowed to do something like that.
I don't know what youragreement was before, but yeah.
So, okay.
So I, I, I don't wanna put you on thespot, you know, and, and I know prices
(09:21):
might change and everything like this.
So what's a typical price?
Or, or like, what, what would one expectgoing into an agreement with you, okay, we
want to do this versus this versus this.
What might that cost look like?
How does it compare to industry standards?
I mean, answer I, I guess howeveryou want to answer, I guess.
Eugene (09:38):
Yeah.
So I think, you know, the first thingI'd say is, you know, when you look,
when you consider who to work with.
You can price shop and you canalso see, you know, what do
you get out of the experience.
And so the first thing I careabout is making sure that my
client is using their money well.
So I am not gonna push them towardsfiling if that filing is not gonna
(10:01):
help them achieve their, their aims.
That being said, you know,again, I feel like that's part.
Customer service, that's part ofeducation, and that's one of the things
I care most about is helping educateour community about the process.
That's a typical application.
We say non-provisional application.
So when you first file, you can file awhat's called a provisional application
(10:22):
that doesn't end up being seen, butit kind of holds your place in line
in terms of your disclosure date.
Then there's a, and, and that can vary.
So provisional can vary between, youcould file a blank sheet of paper and that
would still be a provisional application.
Versus you can, you can prepare afull non-provisional application,
very formal and nice drawings andclaims and, and, and then you can
(10:46):
file that as a provisional too.
So I think the provisionalis a little bit of a harder.
A harder thing to pin down the pricepoint to pin down, because it depends
on what the client seeks, but Ithink a non provisional would say is
typically between 12,000 to 15,000.
Is is the market rate given thecomplexity of the technology?
And, and you know, what theultimate intention is for, for the
(11:11):
client if they wanna put all theirideas in in one application or
split 'em up into different ones.
But I. What that entails.
And, and I actually, I have twodifferent tiers that I offer in tier one.
It's very plain vanilla.
They help the innovationand I help draft innovation.
Tier two, and this is why I startedmy, my firm is where I roll up
(11:35):
the sleeves and I help dig in.
I'm not seeking to be an inventor,but I seek to, I, I show up at the
client's site wherever they are.
So if they're in Florida, I'll visitthem in Florida, look over their
shoulder, see what they're doing.
And by just being there, you seedifferent aspects that it's, it's
old school way of doing things.
(11:57):
Aside from just meeting people virtuallyand seeing them on Zoom, I think there's
a lot of innovation that's lost intranslation or lack of translation.
That's the, I think that's, that'swhat I'd like to offer is a, a partner
in, in doing the invention disclosuresnot just putting it on the shoulders
of the client, but just having aconversation, I think being there.
(12:18):
So, so that's more on the 15th thouthousand end, but it is just a matter of,
here's my disclosure, convert this into anapplication that's more than the 12,000.
Ladan (12:28):
Okay.
That's, that's pretty good.
Yeah.
That seems that seems very reasonable.
And yeah.
Excellent.
So, so what are some other servicesthat a you know, nurtec or, or
medical device startup might need?
And, and what else would yourecommend at what point, too?
Eugene (12:44):
Yeah, so I think the, the, I think.
Our scientist listen to this.
They're very good on the on theidentifying the scientific problem
and solving a scientific problem.
And I realized business design.
It is also really important and I think myexperience in vetting companies doing due
(13:07):
diligence for the companies that come forangel investing, you really see patterns
of who's ready for taking the next step.
And so I'm also going to a conferencesactually I'll be at LSI at the
emerging Med Tech summit in March.
And I'll be at the BioelectronicMedicine Forum in New York City in April.
(13:29):
I'll be at the Neurotech LeadersForum, which I'm always at in November.
And there you also see, you know,different stage companies dealing with
either the raising the capital or goingthrough the regulatory decision tree
and, and can, if, if it's not so muchthat I it's more about issue spotting.
(13:53):
Helping them get the right resourcesearlier than later so they can
actually do a course correction.
So I have partners and in the regulatoryspace I have partners in raising money.
And one, one partnership that'shere, I think I mentioned to you.
It's called Fogerty Innovation.
They're an incubator, actually a nonprofitincubator here in Northern California.
(14:16):
It's like five minutes from my house,and they actually offer, I highly
recommend everyone to look them up.
It's fogerty innovation.org andthey have three different programs.
They have something calleda company in residence.
They actually host companies,entrepreneurs, and their teams.
They have a ton of wet lab space.
You know, pretty much you'd think likethe r and d section of a company is
(14:40):
hosted there, and companies can staythere for about two to three years.
I don't believe they charge them rent.
And they teach them all the differentaspects of r and d, IP quality systems,
clinical regulatory affairs, et cetera.
They have another program calledCompany Accelerator Program.
It's a six month program that forearly stage series A, series B stage,
(15:03):
we're really accelerating their growth.
They're getting through all of thesekind of commercialization tasks.
And then they have this lastone's called the innovation.
Accelerated program and where theyhave, typically there are physicians and
hospitals nearby, LK Hospital, mountainView, Sequoia Hospital in Redwood City
that they help you know, physicians whocome up with ideas like vet their ideas,
(15:28):
we'll do, we'll talk about concepts.
And I have a couple of physiciansI've put through that program as well.
And, and I think having,so, you know, working with.
An IP attorney, I, I kind of,I'm not just an IP attorney.
I kind of help walk with theinnovators with all the next steps
they have to do and help connectthem to the right resources.
Ladan (15:51):
Yeah, that's pretty exciting.
Definitely more of a,a full service thing.
Okay, so, so before you were workingin a, a, you know, famous law firm
that had, you know, very well-knownname and everything like this.
So what do you think?
I mean, is that something that,how, how important is the name
and you know, what what work do,I guess the partners or what, what
comes with a good name like that?
(16:12):
And then what can, I guess, peopleexpect from your, you know, small firm.
Whoa, whoa,
Eugene (16:18):
whoa, whoa, small We're talking about, you know, my, the name
Black Swan you know, actually refersto like an unpredictable, unforeseen
event with extreme consequences.
So be carefully throwing out attorney.
It's people hire attorneys, not law firms.
So even whatever attorney brandname that you think you have is
actually ultimately a particularperson there that you partner with.
(16:42):
Hence.
With the, each firm we werethinking of brand, they have
different things they're good at.
And Wilson Seen is mainly, wasmainly known for their corporate side
of helping companies raise money.
They weren't necessarily knownfor their patent practice, with
exception of their life sciences.
(17:02):
Ones with the pharma, they'revery strong at pharma.
They're the go-to firm for pharma.
They're, they don't have anypartner in medical devices.
They had one that retired the monthbefore I joined, actually wanted
to be trained under him but he leftand they never filled his spot.
So one thing I liked about themthough, and the things they taught
(17:26):
me was working with deferred billing.
You know, may give high qualitywork and will bill you and
wait until you raise money.
Like, I learned that from them.
And one of the things that Iliked about that is that there's
a little bit of a relationshipbuilding that you have with a firm.
A lot of other firms, they youknow, make you pay retainer.
(17:48):
'cause we don't know if we'regonna be around in a year
to, to pay off that de fee.
Right.
But my practice, I'velearned from that from.
Wilson and I'm like, youknow what, I like that.
I like the relationship building aspect.
I like taking a chance.
I'll, you took a chance on me.
I'll take a chance on you.
And, and so I replicated the goodthings I liked about that firm.
(18:09):
But I still work with the corporatecounsel, so if you're still trying to
raise money, you can still work with me.
I just think you just go to aparticular, particular brand
for what they're good for.
If you are interestedin raising money, yeah.
You, you find who is the corporatecouncil that may help raise money.
If you're looking for patent work, whatmatters to you is who can understand who
(18:32):
can get strong patents and, and actuallyhow I how I picked, you know, my quality
of my, my mentors over the years wasI took a look at who were the winners.
Look at the claims, look at howwell the claims are written, look
at which claims went to litigation.
Because I, I worked in I litigation formany years and I also defended patents in
(18:55):
what's called IPRs or post grant practice.
And, and from there I learned aboutthe quality of the you know, the, the
whole patent as a whole and the claims.
People who, a scientist whounderstand good science, they good
IP practitioners will refer you.
(19:15):
Like for instance, if you cometo me in an area that's not my
specialty, I'll refer you out tosomebody who can do that better.
' cause I care about my brand.
I care about representingthe client's best.
So just like a physician, youknow, you'd find the specialist.
That helps whatever need you have.
You go to a general practitioner forone thing, you go to a specialist
(19:38):
you know, neurosurgeon for another.
And, and I think you ultimately,it's not like you just pick
a hospital based on the name.
You pick a particular doctor whoyou know is good at doing that
surgery if it matters to you.
And I think that's what I offerthrough my background and also
through the investing that I do.
'cause I'm actually investing my time.
(19:58):
To get reequipped show up at theconferences read the publications.
And so I have up to date information on,on what is patentable, what is new, what
is old, and that ultimately saves time.
I have a client that I gave'em some bad news this week.
I'm like, listen, this idea ofyours has been shown here, and
(20:19):
if I hadn't done that, he couldspend a ton of investment in.
And trying to pursue anidea that had a dead end.
Instead, now he can, he canget exposed to that idea.
Think about whether the idea solvesthe problem as good as his could have.
And, and from there weinnovate from there.
(20:39):
We're a partner.
They're not gone.
I'm just working with them on a different,on a different aspect of the problem.
So I think that is my brand,that's what I care about.
And, and I think the ip field by itself.
Doesn't work on that model.
And hence I'm an entrepreneur andI'm changing, changed the model.
Ladan (21:00):
Yeah, this, this is startup potential, maybe even launch some kind of
completely new yeah, like you said, modelthat, that's like revolutionizing thing.
Maybe a new legal zoom or you know,whatever, some kind of other model.
Eugene (21:12):
So my, my, my aspiration within the next year or two is to
probably launch my own accelerator.
Really, if there's partners out there,we're listening to this or if you
know people, you think it'd be a goodpartner, I already have a regulatory
consultant looking to join me.
And we're trying to feel like we wannakind of be, I wouldn't say one stop shop,
(21:32):
but really be help tackle medical deviceinnovation, neurotech innovation from
all the angles that are needed early on.
A lot of people go towards the.
They, you know, they leave certainthings from much later when when
really they should be tackled early on.
So I think that's thething, but you're right.
(21:54):
Like what is it that we need?
I think Fogy Innovation is great.
They're a nonprofit that really helpseducate and, and but and they're, they're
also related to the Stanford Biodesignprogram, and I think I myself have been
trained in that, in that type of program.
And, and I wanna offer those same lessons.
You know, for my clients.
Ladan (22:16):
Yeah.
That's exciting.
Exactly.
Coming back to this this full serviceservice, I guess for, for medical device
or you know, any, any type of innovators.
So what do you think is missing the most?
What is the, what do youin your experiences Yeah.
Well, is something that,that you wish people would?
Oh, I can
Eugene (22:33):
tell you right now, top of mind is using ai.
To invent.
I'd say a lot of disclosures I've beenseeing lately you, you know, can tell
they were ai augmented, and there's,so the U-S-P-T-O has some regulations
and some about having, using ai.
(22:53):
You know, coming up with Discover,and I'm just gonna read this
verbatim from them, be named asan inventor patent application.
A natural person must make a significantcontribution to the invention.
A person makes a significantcontribution to invention if they one
contributed in some significant mannerto the conception of the invention.
(23:15):
Two, made a contribution tothe claimed invention that is
that insignificant quality.
The tion is measured against thedimensions of the full invention.
And third, it did more thanmerely explain the well known
concepts or the state of the art.
So that's like the rule that theyapplied for AI is like, what the
natural person, what is it that theAI did versus what the person did.
(23:40):
And, and in March of this lastyear, they, they provided some
examples that I'm happy to, to share.
They, they had this one exampleabout maybe this making a, an
addition to this toy robotic car.
And they had different varying levelsof human involvement in the conception.
(24:02):
So, and they have five scenarios.
The first scenario, they hadnatural persons take output of an
AI system without any alteration.
You can imagine where that's gonna go.
Scenario two.
Natural persons make minimal alterationsthe output of the AI system while
reducing the innovation to practice.
(24:23):
Third natural persons performexperiments on the AI output
to create a modified design.
And four natural persons use an AIsystem to make minor alterations to
a new design that they came up with.
And five.
An owner of an AI system attemptsto patent the innovation.
(24:46):
In those five scenarios, you hear thatthere's different aspects of what the
natural person is doing, and the firsttwo the patent office said those two
do not amount to be those inventors.
You know, the, the natural persons didnot actually do the inventive part.
That was the AI and AI can't beinventors, so pretty much like shot
(25:07):
themselves on the foot there in terms of.
Just using AI to do things andthey themselves did not do it.
The third and fourth example iswhere they modified the design.
It was really their design.
They came up with usingAI to make alterations.
That one did meet the thresholdof, of yes, they're inventors, the
natural persons are the inventors.
(25:28):
And then the last one where just theowner of ai tries to patent something
the AI came with that also does not.
Meet the criteria.
So it's like if you own theai, the AI came up with, it
doesn't make you the inventor.
So I think that, you know, is reallyhelpful guidance and there's a lot
more details in, in the example if youactually, you know do the search on this
(25:53):
and it helps you understand how to workwith ai to understand problems and then.
When it comes to the materials, youend up giving your patent attorney.
I say a lot of, you know, you can tell,Hey, I had to draft a claim and I get a
bunch of claims, but really I found thoseto be missing of what is the novel aspect?
(26:19):
Like what is, what areyou moving the needle on?
I still feel like there's the human aspectof understanding the problem and then
really articulating what the differentialis, what you're, what you're addressing,
that you still need that human component.
Even the disclosures I get, I get thosedisclosure and I push back at them.
I'm like, listen, where is the, Isee you general statement here, but
(26:42):
what are we really doing different?
And then that conversa, it'sa great conversation starter,
but I've actually had a client.
Recently file a provisional ontheir own to try to save money.
And then ultimately when they gaveit to me, they're like, Hey, let's
make this an non provisional.
I'm like, you didn't enable what you did.
A lot of wants and need a lot ofplaceholders for the disclosure that
(27:05):
you filed, but we need to, you know,actually finish up the invention.
And so I definitely feel likeAI is definitely useful, but.
I think, you know, use it withinlike any other tool you have and, and
get some guidance on filing using aiwith your, with your patent attorney.
(27:25):
My advice.
So I think that's thebiggest thing I'd say.
Ladan (27:28):
Okay.
Yeah.
That, that is definitely a, a new thing.
And, and yeah, I've definitely worked withAI for some, you know, legal stuff, and
it's been, it's been really nice and to myeyes, you know, to my inexperienced eyes.
I'm just like, wow, this is great.
But yeah, you, you might, you might seesome differences, but, but it sounds more
like you are talking about the issueswith like developing the actual invention
versus like writing it up, right?
(27:51):
Is that, is that what you're saying?
Eugene (27:53):
Yeah, but I mean you know, writing it up, I guess is the question.
What if you're just using it to expanda section for, for known known section?
Let's say you develop an IPG, youdevelop a novel electrode and you
just kind of want to fill out likethe spec for specifications for
what are the different aspects ofIPG that kind of generally known?
(28:15):
Aspect of what is the novel distinctionsthat you've identified are the limitations
that ultimately would go into the claim?
I still don't think AI is really,at least in my experience that I've
seen so far, have been great at,at teasing that apart in, in, at
least in the, in the meaningful way.
(28:37):
But not to say it's not gonnaget there, I just think that.
There's another aspect of the, thelaw firms currently don't use AI
because we we're not confident thatthe databases that the AI pulls from
the algorithm is co has confidential.
So think that, you know, you put in,right now, if you put in, you know, you
(28:58):
think Google is free and it's a freesearch, et cetera, but everything you
type into Google is not confidential.
It goes out there.
And that's, you know, there'ssome companies who talk
about AI for patent work.
They'd say, Hey, we have aclosed network system for you.
I don't think that's truefor the free products.
So if you go to check GPT,you put your idea in there.
(29:20):
That algorithm now has learned,oh, this idea is out there.
And so next time someone else uses the.
You know, to work on theirinnovation, they may pull from
your disclosure that you included.
So we, you know, attorneys are very,very cautious because there's a
lot of malpractice to not have ourclient's material held confidential.
(29:46):
So I think for individual innovatorsas well as well, you really.
Have to be careful onwhere you put your ideas.
And so I'm, if I use Chad GBT, or not thatI don't use Chad GBT, but if I were to use
a similar program, but like that, I wouldmaybe only expand on the non-confidential
aspects of things that are known in theart to help fill out an application.
(30:11):
But you always hear about companies thatare supposed to hold your credit card
information in confide, breach, et cetera.
Right.
And I think what is the cost of.
Losing that confidentiality of your idea.
I mean, ultimately we want to, youknow, publish our innovation, right?
We are filing a patent that will becomepublic, but there is, you know, the 18
(30:33):
month embargo that you don't have intyping in your ideas into these products.
Now I am currently exploringdifferent options for.
What legal service AI offer andwhat kind of assurances they have.
But even myself, I don't put mycognizant, confidential information in
that or, you know, until one day thisreassurance is that we can rely on.
Ladan (30:59):
Yeah, that makes sense.
So you, you are pretty confidentthat your your job is safe.
For now the, on the legalside of things, right?
Eugene (31:06):
I think innovation.
Initially can be can be scary for, youknow, an old dog to learn new tricks.
But I'm, I, I think there's exciting.
The exciting thing I, I see about itis it can take out some of the grunt
work, but really separate out where'sthe value you actually provide.
(31:29):
And that's why I, whenI started this firm.
What is it that I can provide?
And I had a PhD, I had a bunchof, a bunch of depth of knowledge
that I'm sure the AI has a bunchof depth of knowledge too, right?
But but I think the human mind forcoming up with innovation is still
unique and, and I think my competitiveadvantage is still being very creative
(31:50):
and solving problems and having theempathy of innovators understand
what the, the perspective they have.
Help through, you know, through aconversation, understand what is
the problem they're trying to solve.
And I, I'm not concernedabout AI taking that over.
And you know, in any case, I thinkthere's a lot of hard problems out
(32:11):
there that need to be solved If AIcan help solve some of them, awesome.
That's what we're here to do, right?
We're here to make the worlda better place, et cetera.
And, you know if AI helpswith that, that's wonderful.
Ladan (32:25):
Yeah.
That's cool.
Yeah.
Well that, that's a, it's a brave newworld we live in and it's, it'd be cool
to have, you know, instant patents if youjust input it and, and boom, ready to go.
And then maybe you read it over, you, yourubber stamp it or something like this.
And, and yeah.
Eugene (32:39):
Well, I'll warn you about that.
AI is great in generating aton of material, but you know.
It, it doesn't, you know,you can bury the lead in it.
So don't, don't just generate materialfor generating material, I think is much.
You know, the claims, the reasonwhy the claims are short they're
short isn't so they're broad.
But you know, I'll say it's definitelyhelpful to provide something,
(33:03):
but when you provide materialwithout even reading it yourself.
That's a little, that's a littleannoying on the side of saying, okay,
did you even read what you submitted?
Because there'll be prompts in there.
Clean this up before.
Ladan (33:15):
That's funny.
So they just, they just, wow.
That's crazy.
Wow.
Yeah,
Eugene (33:22):
so I'll say, but my, my my closing thoughts is, you know, I, I had
some incredible mentors in my trainingwho took time to help me gain experience
and, and I believe in paying it forward.
I plan to hold office hours forinnovators to ask me questions, and
I'll, I'll announce those shortly.
There's a, there's a proverbabout how society grows.
Great.
When people plant trees in whichshape that she'll never sit.
(33:45):
And that just remindsme of the mentors I had.
And both sides and law help mebecome the innovation advocate.
I'm today.
So I would love to help scientists,innovative, listen to this, reach out
and let me know how I can help them.
Ladan (33:57):
Yeah.
Excellent.
Thank you so much.
Thank you, Eugene, for coming on and,and hopefully if people are interested
and they're in the right stage of lifeor development of some kind of technology
or idea or something like this, theycan reach out to you and learn more.
Eugene (34:09):
Thanks.
Ladan (34:10):
Thanks a
Eugene (34:10):
lot
Ladan (34:10):
on.
Hope you enjoyed the show and we'reable to learn something new, bringing
together different fields in novel ways.
Until next time on theNeural Implant Podcast.
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