Risks 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…

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Showing 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…

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Contingency 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…

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IP 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…

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Licensing 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…

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Ideas 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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Method Claims and Undetectability

Why these types of claims can be harmful to an inventor – and when they make a patent unenforceable. Method claims are especially difficult to detect, but they have another twist that makes them less important than “apparatus” claims. Method patents are infringed only when and where someone does the method.  Method claims can be…

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Unintended Consequences of Business Decisions

Every decision has consequences. Some can be spectacular. My first job after college was at McDonnell Douglas, a (former) giant airplane company in St. Louis.  It was at the very tail end of the Cold War and we were building the F-15, F-18, and Harrier fighter jets. I was a young producibility engineer assigned to…

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Lots of inventors means lots of problems.

There are many patents that have many inventors. It is not uncommon to see 4, 5, 6, or even more inventors listed on a patent. In fact, there are over 200 patents with at least 25 inventors – some have 130+ inventors! This is a huge problem. I understand the desire to ‘reward’ team members…

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