Prior art

Patent Strategies for Startup Companies

I often have the pleasure of working with entrepreneurs and scientists that start companies to commercialize their great ideas. Usually, such founders want patents and have a “patent strategy,” but what exactly does that mean? The answer is not simple, is different for every company, and is highly fact-specific. Read More...

A Walk Down Memory Lane

It happens to the best of them. In 2007, Steve Jobs wowed us with Apple’s new device, the iPhone. On September 26, 2013, a German Court was wowed by the same video. Mr. Jobs was one of the inventors on European Patent No. EP2059868. Prior to the earliest priority date on which the German Court could rely, Mr. Jobs introduced a claimed feature of the patent -- the rubber banding effect. For instance, in the 37the minute, he showed the rubber banding effect:

Based on this disclosure, the Court invalidated the patent within the German borders. This is a good example of why inventors and patent assignees should be careful about the disclosures they make about important technologies prior to filing for patent applications.

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Evaluating a Company's Patent Position

In December, 2012, ExecSense, the world's largest publisher of professional webinars, eBooks & more, published my eBook, Evaluating a Company’s Patent Position. The following is the Executive Summary:

There are many reasons that patent attorneys may be asked to conduct diligence reviews of a company’s patent estate. Investors may seek to take an equity position. Banks may seek to extend loans. Other companies may seek to acquire the company, its assets, or start a joint venture. Evaluating a company’s patent position is a complex matter with many moving parts. It is much like peeling an onion where each bit of information may open up a new line of inquiry. While some parts of the process should be accomplished early, there is no strict chronological order in which the steps of the investigations unfold.

Broadly speaking, the steps in a patent diligence evaluation require multiple lines of inquiry. The attorneys investigate the company’s patent rights and the content of the underlying patent families. Also, the company’s products, services, R&D, and commercial timelines – as well as those of its competitors – must be ascertained. These should be compared with the company’s patented and pending claims. Also, the attorneys should investigate the validity and enforceability of the company’s patents and any relevant litigation. All this should be accomplished while preserving confidential information and the attorney-client privilege.

This chapter is not a do-it-yourself guide on patent diligence. There are too many complex issues and concerns about the facts, the law, confidentiality, and the attorney client privilege for anybody but a competent attorney – or team of attorneys – to tackle. Rather, I hope that the following narrative helps educate the consumers of patent diligence.

To read the whole book, you can find it at the following links:

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Publish And Perish: The Tension Between Publishing And Patenting

In re Droge serves as a cautionary reminder to those who manage the publication policies of inventors. In this case, one of the inventor’s own prior publications was used to find that the claimed invention was obvious. Thus, it is critical to manage inventor publication activities to minimize the risk of creating prior art against your own patents. Some guiding principles are provided for patent professionals or others that seek to manage publication policies. Read More...