Communication Hygiene: Things You Never Say To Your Patent Attorney
Good news in writing – bad news by phone. Inventors have extraordinary power in the patent process, especially in litigation. An inventor’s opinion or comments can often be twisted during litigation and ultimately, used to invalidate a patent or discredit the patent owner. There are things you should never say to your patent attorney, at…
Read MoreAvoid Wishful Thinking Patents
I just want “protection,” but I have a run-of-the-mill product. Most startup CEOs want patents because they want ‘protection,’ so they go to a patent attorney. And the patent attorney is in the unfortunate situation of having to find something “inventive” amongst a bunch of run-of-the-mill technology. For early stage startup companies, the entrepreneur becomes…
Read MoreDamage Control: Filing Patents After An Employee Leaves
Capturing ideas so you own them can limit the damage a key employee might inflict when they go to a competitor. A company-wide strategy for patents can have ancillary benefits when dealing with employee issues. Let’s say your company is in a highly competitive market for talent, and a key inventor/employee announced that they are going…
Read MorePatent Ethics: Is it Ethical for the Patent Attorney to list themselves as an inventor?
The hallmark of a sleazy patent attorney is one who lists themselves as an “inventor” on patents that they write for a client. There is the “legal” definition of an inventor, and there is the realistic, practical definition. The legal definition of a co-inventor is anyone who contributes at least one limitation to one claim…
Read MoreRisks of Investing in Government-Sponsored Research
“March-in” rights under 37 CFR 401.6 allow the government to re-possess a patent using a very arbitrary process. One reason NOT to invest in startups based on government-sponsored research, including patents from universities. Inventors can get patents on government-sponsored research, and may university patents have a statement in the text of the patent that states…
Read MoreShowing Up – The Simplest Thing
Being a good steward of capital is the only metric that matters. As an early stage investor, I have only one meaningful metric: a good steward of capital. We do lots of due diligence, dig through endless agreements, check references, review contracts, and look at countless details. But in the end, we are trying to…
Read MoreContingency Fee Litigation Is Only a Last Resort
If you are having to do contingency fee litigation on your patents, you did something wrong. Contingency fee litigation is a unique feature of American Law, where attorneys perform some or all of the litigation – and they get paid only if they win. Contingency fee litigation is often associated with the “ambulance chaser” attorneys…
Read MoreIP Theft – Starting that “Side Project”
“He doesn’t own my brain” – Oh, yes he does. Doing the entrepreneurial gig is hard. There are countless barriers and endless hurdles to overcome, and many entrepreneurs relentlessly power through them. But stealing IP is never, ever, appropriate. Here’s the fact pattern: Entrepreneur starts a company and takes on investors. One of the investors…
Read MoreLicensing Inventions from Independent Inventors
Understanding motivations is key. I was an engineer for 13 years before switching to patent law, which was over 20 years ago. My engineering career was mostly in the manufacturing side, designing fixturing and tooling for production lines. However, I had a product idea that I wanted to invent and license products to companies. I…
Read MoreIdeas from Outsiders: Not Always a Good Bet
Many entrepreneurs attempt to start businesses by coming into an industry as an outsider. As an angel investor, I generally don’t like these kinds of entrepreneur situations – and I especially do not like independent inventors who write patents in this manner. My preference is that an entrepreneur knows the deep, dark bowels of an…
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