Patent Strategy

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…

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…

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…

One of my most hated phrases from entrepreneurs. I often hear from inventors and entrepreneurs who proudly state: “there is nothing like it in the market.” As if this was a badge of honor. It is not. This is a signal – and not a good one. Everything in life is signal. Everything in life…

Early filing dates are almost always a bad thing, not a good one. Many entrepreneurs are often lulled filing patent applications – especially provisional applications – because they are told that an “early effective filing date” is a good thing. Patent attorneys who are anxious to lock in another client will push the Fear of…

Regulatory risk has big effect on patent valuations. Medical devices and pharmaceutical inventions are a special case of intellectual property and are an interesting case study in the valuation of IP. They are an example of the influence of regulatory risk into a valuation analysis. When an invention requires regulatory approval, a patent is only…

The first step is often ‘skipped’ by startup founders. Many startups fail to have the basic agreements in place so that the company owns its inventions.  Part of this is a failure to put the basic agreements in place for a startup company, and often the failure of the founders to commit to the company…