Patent Strategy

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…

“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…

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…

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…

“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…

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…

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…

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…