AUTM on the Air

What really happens on the other side of a patent application? Attorneys and inventors spend plenty of time thinking about claims, prior art, and Office Actions, but the examiner reviewing the application is working through the same invention from a very different perspective. Understanding how examiners approach that process can change not only the way applicants respond to rejections, but the way they think about prosecution from the beginning.
My guest is Maille “Molly” Lyons, a scientist, researcher, educator, and former USPTO patent examiner who spent 14 years examining biotechnology applications. Today, through SeaLyons LLC, she works with inventors and patent professionals to help them better understand the U.S. patent examination process. She is also the author of There Are NO Bad Patent Examiners: The Unofficial Guide to Working with the “Good” Ones, which takes a practical and often humorous look at what happens from the examiner’s side of the desk.
We talk about how examiners are trained, what they look at when a new application reaches their docket, and why claim language is so often where misunderstandings begin. Molly also explains why rejection is a normal part of prosecution, how examiner interviews can help move a case forward, and why telling an examiner they are wrong is rarely the best place to start. We also discuss what she learned after leaving the USPTO, the value of treating prosecution as a collaborative process, and what technology transfer offices can do to help researchers navigate patents before a public disclosure creates problems.

In This Episode:
[02:05] Maille “Molly” Lyons shares how her background in scientific research and teaching led unexpectedly to a career as a USPTO patent examiner.
[03:19] We talk about learning patent law from scratch and the intensive training new examiners receive through the Patent Academy.
[05:50] Molly discusses how examiner training has changed, why she loved patent examination, and the importance of strong writing skills.
[10:16] The story behind There Are NO Bad Patent Examiners and Molly’s scale from “good” to “super fantastic.”
[12:49] Who the book is for and why applicants should understand that a rejection is a normal and often useful part of prosecution.
[16:30] We discuss moving away from an “us versus them” mindset and treating patent prosecution as a collaborative process.
[19:41] When a disagreement may need to move beyond the examiner through pre appeal, appeal, or another level of review.
[21:38] Molly uses the idea of a fence around an invention to explain claim scope and the examiner’s responsibility to both the inventor and the public.
[24:57] What an examiner looks at first when a new application reaches the docket and why the claims come before the specification.
[28:48] We talk about where misunderstandings most often begin and how examiner workloads and production requirements affect the process.
[32:55] Why following a familiar application structure can make an examiner’s job easier and reduce unnecessary objections and rejections.
[35:16] Molly discusses “octopus” claims, drafting choices that make examinations more complicated, and the importance of word choice when responding to an examiner.
[38:10] How to respond when an Office Action appears to be wrong without turning the disagreement into a personal argument.
[41:26] We discuss leading with the strongest arguments, addressing everything the examiner has raised, and preserving issues that may matter later on appeal.
[45:16] Why examiner interviews can move prosecution forward and help uncover the real source of a disagreement.
[48:43] When involving a supervisory patent examiner can help and why escalating too quickly can make a difficult situation worse.
[52:01] Molly shares what technology transfer offices can do to build stronger relationships with university researchers before public disclosures occur.
[55:43] Molly’s rapid fire advice for patent practitioners and why the best examiner applicant relationships work as a collaborative dialogue.

Resources: 
AUTM
Mary Maille (Molly) Lyons - LinkedIn
SeaLyons LLC
PatWorld - Mary Maille (Molly) Lyons
Meet the IP Professional:Maille Lyons – Seeing Patents from the Other Side
There are NO bad Patent Examiners: The unofficial guide to working with the "good" ones

What happens when nearly 10,000 patents from the earliest years of the American patent system are lost, scattered, or destroyed? Those records tell a much bigger story than who invented what. They capture a period when inventors were solving practical problems, sometimes arriving at the same ideas independently, sometimes getting things wrong, and often making small improvements that helped move American industry forward.
My guests are Scott B. Guthery, Julie Burke, and Michael Risch, coauthors of Unfettered Invention: How the X Patents Sparked Early American Technology. Scott is an inventor with more than 50 U.S. patents and an author on technology and its history. Julie is a former USPTO patent examiner and quality manager, the founder of IP Quality Pro, and a member of the Board of Directors of the Association for American Innovation. Michael is a professor at Villanova University Charles Widger School of Law whose work includes patents, information access, and America’s earliest patent records.
We talk about how the X patents came to exist, why so much of the original record disappeared, and what it took to piece parts of that history back together. We also look at some of the unusual inventions the authors uncovered, what failed and overlapping ideas can teach us about the way innovation really happens, and what this early chapter of the patent system may still have to say to today’s inventors, patent professionals, and technology transfer community.

In This Episode:
[02:23] Scott B. Guthery explains what X patents are and how nearly 10,000 early patent records were lost.
[05:27] Reconstructing the patent record after the 1836 Patent Office fire.
[09:14] Julie Burke on what X patents reveal about America’s early Industrial Revolution.
[11:15] Scott shares how the idea for *Unfettered Invention* began and how AI helped unlock handwritten patent records.
[14:04] Michael Risch discusses his earlier research into America’s first patents and what it revealed about patentable subject matter.
[18:13] How the U.S. patent system worked before 1836 and the role courts played in defining patent law.
[22:11] Julie compares early Patent Office operations with the challenges faced by the USPTO today.
[25:03] How ordinary inventors learned to navigate the early patent system.
[27:47] Thomas Jefferson, Jacob Isaacks, and an early example of outside technical review.
[29:09] Thomas P. Jones and the *Franklin Journal’s* role in sharing patent and technology information.
[32:35] Reconstructing lost patents through archives, historical societies, court cases, and auction records.
[36:23] How AI helped uncover missing patents and make difficult historical documents more accessible.
[39:52] Examples of overlapping inventions and what they reveal about independent innovation.
[43:06] Memorable inventions, including water turbines, horse-powered ferries, alarm clocks, and coil mattresses.
[46:55] What failed inventions can teach us about experimentation, timing, and technological progress.
[51:06] The drawbacks of an early patent system where inventors often had little access to existing patent information.
[52:57] Lessons from the X-patent era for Patent Office administration, preservation, and access to information.
[56:07] What technology transfer professionals can learn about supporting promising inventions.
[57:05] Why the X patents still matter today.

Resources: 
AUTM
Unfettered Invention: How the X Patents Sparked Early American Technology
Association for American Innovation
Julie Burke PhD - LinkedIn
Michael Risch - LinkedIn
Michael Risch - Villanova University
Scott Guthery - LinkedIn
Patents by Inventor Scott B. Guthery

Canada has a strong research base, but turning discoveries into lasting economic and societal value is not always easy. In this episode of AUTM on the Air, I talk with Sarrah Lal about the launch of AUTM’s Canadian Public Policy Advisory Committee, or CPPAC. As the committee’s inaugural chair, Sarrah brings insight into why the group was created and why this is a timely moment to look more closely at the policies that shape research commercialization across Canada.
We discuss the gaps that can slow promising research on its way to the marketplace. Funding is one challenge, but so is the lack of a clear path from discovery through commercialization. We also explore how CPPAC is bringing together technology transfer and innovation professionals from across the country so they can compare experiences, identify shared problems and build practical recommendations that reflect what people working in the field are seeing firsthand today.
We also look at what CPPAC hopes to accomplish over the next 12 to 18 months. We discuss the need for stronger early-stage support and better access to growth capital, along with sustainable resources for technology transfer offices. We also look at why success should be measured through long-term outcomes rather than short-term activity and how greater alignment across the innovation ecosystem could help strong Canadian research create meaningful impact.

In This Episode:
[02:10] Sarrah Lal explains why AUTM’s Canadian Public Policy Advisory Committee (CPPAC) was created and why this is an important moment for research commercialization in Canada.
[04:43] Canada has a strong research foundation, but fragmented programs can make it difficult for innovations to move smoothly from discovery to commercialization.
[08:11] Measuring research commercialization success means looking beyond patents and startups to the broader economic and societal outcomes that develop over time.
[11:58] Commercialization barriers often involve incentives, industry engagement, institutional capacity, and access to capital rather than the quality of the research itself.
[15:13] CPPAC is using evidence, stakeholder input, surveys, and focus groups to develop practical policy recommendations that address gaps in Canada’s innovation ecosystem.
[19:54] Systems thinking can help policymakers understand how funding, regulation, infrastructure, incentives, and other parts of the commercialization pathway affect one another.
[23:18] CPPAC’s priorities include improving early-stage funding, attracting growth capital, and creating more sustainable support for technology transfer offices.
[25:45] Greater alignment around shared national priorities and stable long-term policy could help Canada translate more of its research strengths into economic growth and lasting impact.

Resources: 
AUTM
Sarrah Lal - McMaster University
Sarrah Lal - LinkedIn
AUTM Canadian Public Policy Advisory Committee

Technology transfer offices usually keep score with patents, licenses, startups and revenue. It's real proof research is moving beyond the lab. Yet it can miss some of the most interesting parts of the story. A technology might reshape clinical practice, influence public policy or strengthen a community without ever producing a commercial outcome that fits neatly into an annual report. As tech transfer evolves, there's a growing opportunity to look past the traditional scorecard and ask how does university research actually create value, how can that value be tracked, and how can TTOs make those connections more visible?
I'm joined by Dr. D. Max Crowley, Director of the Prevention Research Center at Penn State, the C. Eugene Bennett Chair in Prevention, Professor of Human Development and Family Studies and Public Policy, and Director of the Evidence to Impact Collaborative. His work sits at the intersection of prevention science, economics, public policy and implementation, focused on translating research into better outcomes for children and families. He's been funded by the NIH, the Robert Wood Johnson Foundation, the Annie E. Casey Foundation, the Doris Duke Charitable Foundation and other major organizations. His career-long focus on how knowledge moves into practice gives him a distinctive perspective on how we define and measure impact in tech transfer.
We talk about what it means to treat commercialization as one stop on a much longer road from discovery to real-world use. We talk about why relationships with industry, government, healthcare systems, nonprofits and communities can matter as much as the transaction itself. TTOs are uniquely positioned to help universities track where their research actually ends up. We also dig into the challenge of measuring impact that can take years to surface, the limits of short-term metrics, and what belongs on a more meaningful impact dashboard. 

In This Episode:
[03:04] Why universities may be using the wrong scorecard to measure research impact and what a broader definition of success could look like.
[04:39] Traditional tech transfer metrics such as patents, licenses, startups, and revenue only capture part of the value created by university research.
[07:58] The growing opportunity for TTOs to take a leadership role in demonstrating the broader public impact of research.
[11:56] Moving discoveries from basic research into real-world use requires stronger connections across the university rather than leaving the responsibility solely to technology transfer.
[14:35] Building stronger relationships with licensees can give universities greater insight into what happens after a technology is commercialized.
[18:28] Changing incentives for faculty and staff could encourage greater recognition of research adoption, collaboration, and public impact.
[26:01] Annual reporting requirements can be difficult to reconcile with meaningful outcomes that may take years or decades to emerge.
[29:00] A broader impact dashboard could track external partnerships, policy influence, and where university research is actually being used.
[32:59] One practical place for TTOs to begin is by mapping their existing relationships with government affairs, outreach, and other externally focused offices.
[35:02] Looking ahead, successful TTOs may play a much larger role in telling the complete story of university research and its impact on society.

Resources: 
AUTM
D. Max Crowley, Ph.D. - Penn State
Evidence-to-Impact Collaborative
Overton Index
Pennsylvania’s Public Universities Seek to Strengthen Partnerships, Boost Trust, and Deepen Impact
Daniel Max Crowley - LinkedIn

Some of the most impactful innovations don’t fit neatly into the traditional technology transfer model. Feel Your Best Self began during the COVID-19 pandemic as a collaboration between educational psychology and puppetry at the University of Connecticut, with a simple goal: give children practical, research-based ways to understand and cope with big feelings. What started in a single classroom has since grown into an award-winning toolkit reaching families, educators, and communities far beyond UConn.
Joining us to share the story are Dr. Sandy Chafouleas, Emily Wicks, and Dr. Christopher Conners. Sandy is a Board of Trustees Distinguished Professor and Neag Endowed Professor in UConn’s Department of Educational Psychology and co-founder of the Collaboratory on School and Child Health. Emily is Manager of Operations and Collections at UConn’s Ballard Institute and Museum of Puppetry and Director of Puppetry Education for Feel Your Best Self. Chris is Director of Licensing for Life Sciences at UConn’s Technology Commercialization Services Office, where he helped guide the project through its intellectual property and commercialization journey.
We talk about how an unexpected collaboration between psychology and puppetry became Feel Your Best Self, why creativity and joy are such important parts of teaching emotion-coping skills, and how the team designed the program to remain flexible and accessible. We also explore the university-wide collaboration behind the project, the decision to license a social innovation and create FYBS and Co., and what this experience can teach technology transfer professionals about recognizing valuable innovations that may look very different from the technologies they usually encounter.

In This Episode:
[04:21] We discover the origins of Feel Your Best Self and how a pandemic-era collaboration brought educational psychology and puppetry together.
[07:19] Why they decided to explore an unconventional partnership and how rigorous science and creative expression proved to be a natural fit.
[09:03] The earliest virtual classroom sessions, including puppet kits, short videos, and feedback that helped the team keep the program simple and adaptable.
[12:04] Early responses from teachers and students helped Sandy and Emily realize Feel Your Best Self could become much more than a temporary response to the pandemic.
[15:05] The research behind the program’s Calm, Catch, and Connect framework and why different emotion-coping strategies work for different people and situations.
[18:18] The team discusses the four values that guide Feel Your Best Self credibility, accessibility, joy, and creativity and how those principles shape the program.
[21:09] How puppet making gives children and adults a chance to explore coping strategies together rather than simply being told what they should do.
[23:04] Puppets can lower the stakes around difficult conversations, giving children another way to express emotions that may be uncomfortable to discuss directly.
[25:00] Their surprise at how strongly middle and high school students responded to puppetry and continued using their puppets after the workshops ended.
[27:25] The Feel Your Best Self toolkit includes videos, storybooks, activities, educator resources, puppet-making materials, and other tools that families and professionals can customize to their needs.
[31:11] The thoughtful design process behind creating three characters children could recognize and relate to.
[34:47] How the team turned evidence-based coping techniques into memorable three-step strategies with names children can easily understand and use.
[37:05] Translating Feel Your Best Self into Spanish required the team to think beyond individual words and consider how language and context vary across cultures.
[38:18] UConn’s technology transfer role and why copyright-based and social innovations can create meaningful public impact alongside more traditional patentable technologies.
[41:03] How collaboration with UConn’s Proof of Concept Center transformed puppet-kit production from a labor-intensive manual process into something that could scale.
[44:25] Philanthropic support helped Feel Your Best Self move from small classroom experiments to professional video production, broader dissemination, and national reach.
[46:25] The team explains why UConn licensed Feel Your Best Self to FYBS and Co. and how they balanced free access to the program with physical products and other services needed for continued growth.
[49:23] The unexpected path from a grant-funded passion project to entrepreneurship and the learning curve that came with building a company.
[50:25] Awards and media attention have helped expand the program’s reach, but some of its most meaningful impact comes from seeing educators, families, and communities adapt the resources in their own ways.
[52:25] Reflections on how Feel Your Best Self changed the way UConn’s technology transfer office views social innovations, copyrights, and other projects that fall outside its traditional STEM portfolio.

Resources: 
AUTM
Feel Your Best Self
Dr. Sandy Chafouleas - UConn - Neag School of Education 
Dr. Sandy Chafouleas - LinkedIn
Emily Wicks - UConn - Ballard Institute and Museum
Emily Wicks - LinkedIn
Dr. Christopher Conners - UConn - Technology Commercialization Services
Dr. Christopher Conners - LinkedIn