Working with Attorneys
Handing the Keys to the Drunken Sailor and Hoping You Get Home
Letting the CTO manage patent policy is bad for business. Some CEOs abdicate their IP policy to the CTO. The CTO spends lots of time with the patent attorney, so it just makes sense to let them deal with it. Right? Sadly, I see the results of this over and over in poor quality IP…
Read MoreRegistration Numbers
Due diligence in patents requires looking at the patent attorney. When I review patent applications, I always download the full prosecution history of the patent from the USPTO. The prosecution history is the formal, legal record of the back-and-forth between the applicant and the Patent Office, and includes all the papers as originally filed, as…
Read MoreAssignment Due Diligence: Unassigned Assets
Spotting bad behavior in startup companies. It is heartbreaking to see bad behavior by ‘inventors’ and their startup companies, but it occurs over and over again. Let this lesson be an example of the things you need to check anytime you are doing due diligence on an early stage company. First pass at due diligence…
Read MorePatent Attorneys Do Not Live with Their Mistakes
The Feedback Problem in Patent Law. Patent attorneys typically have zero feedback about the quality of their work product. This is an inherent weakness of the whole patent system. The attorneys do not have to live with their mistakes, because patent litigation and patent transactions happen long after their work product has ended. The Long…
Read MoreWhy You Cannot Hire a Patent Attorney Who Worked for a Competitor
I talk to countless patent holders, and I often hear that their patent attorney did all this work for a direct competitor before doing their patents. Somehow, the client seems to think this is a good thing. It is not. It is always a bad thing to hire a patent attorney who has previously worked…
Read MoreThe Problems with Your Patent Attorney Owning Stock in Your Company
The Ethical Quandary Patent attorneys are entrusted with the responsibility of safeguarding their clients’ intellectual property. This fiduciary duty requires them to act in the best interest of their clients, providing unbiased and objective legal advice. However, when a patent attorney owns stock in a client’s company, their financial interests conflict with their professional obligations.…
Read MorePatent Attorneys’ Misguided Obsession About Costs
Hand wringing amongst patent attorneys show their misguided view of their clients. Patent attorneys work in a bubble that is completely hidden from laypersons, but is an incredibly loud echo chamber. An example is the current obsession and endless handwringing over the USPTO’s DOCX filing requirement. The issue is that the USPTO prefers that you…
Read MorePatent Descriptions: Every Word Hurts You
Every Word in a Patent Application Hurts You The patent application has two parts: the specification and the claims. Every word in the specification is a trade secret[1] you give away to your competitors. Every word in the claims narrows the claim and limits your enforceable rights. Long Specifications Hurt You Many clients are told…
Read MoreCommunication 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 More