How to Control Inventions and Patents Resulting from Joint Development

“…each coowner [of a patent] is ‘at the mercy’ of its other co-owners.” – Federal Circuit Court of Appeals.

STC.UNM (the licensing arm of University of New Mexico) was at the mercy of Sandia Corp. regarding STC’s patent.

STC sued Intel Corporation for infringement of U.S. Patent No. 6,042,998 (the ‘998 patent) in the case of STC.UNM v. Intel Corp., No. 2013-1241 (Fed. Cir. 2014). STC and Sandia co-owned the ‘998 patent.

But, Sandia refused to join the lawsuit against Intel, “prefer[ring] to take a neutral position with respect to this matter.” This led the court to dismiss the infringement suit against Intel.

STC was at the mercy of Sandia’s refusal to join the lawsuit. Maybe this lawsuit against Intel could have resulted a large money judgement for STC. But, …

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Design Patent Drawings: Surface Shading

DesignPatentCokeBottleDesign patents seek to protect the appearance of an article of manufacture, such as a product or a portion of a product. Therefore, design patents consist mostly of drawings of the invention with a small amount of text. The drawings mostly define the scope of protection that will be provided under the design patent. Therefore, the details of the drawings for design patents are very important.

Surface shading in the drawings may be important to determining whether the patent design covers a particular third party product (e.g. an alleged infringer). The patent rules provide regarding design patent drawings, “Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented.” MPEP 1503.02. The rules further provide, “Lack of appropriate surface shading in the drawing …

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Patent Drawings: System Diagrams


When drafting an patent application that has components communicating or connected to each other or to a network, one or more figures showing system level interactions between the components should usually be included. Such figures are common in patents directed to software, methods, computers, or other electronics. As the Manual of Patent Examining Procedure provides, “In a typical computer [patent] application, system components are often represented in a ‘block diagram’ format, i.e., a group of hollow rectangles representing the elements of the system, functionally labeled, and interconnected by lines.” MPEP 2164.06(c).

One requirement in writing a patent application is to enable one skilled in the art area of the particular invention to be able to make and use the invention without undue experimentation from reading the patent application (which later …

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Patent Drawings: An Introduction

LegoFig4_US_Pat_3005282One approach to drafting a patent application is to start with the drawings. I think this approach is the probably the best for those embarking on DIY patent drafting.

Once you have the drawings created, writing written description of the patent application, is partially a function of describing what is shown in the drawings and expanding beyond what shown in the drawings.  In other words, the drawings can provide the initial road map for drafting the written description. The drawings can be road map because once the parts of the invention shown in the drawing are labeled, you can proceed by describing the parts of the invention and the way that operate or interact with other parts with reference to the parts shown in the drawings.

So, under one …

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What Galileo’s Pendulum Clock Teaches About Inventing


Fifty-eight years in the making, his slow hunch about the pendulum’s “magical property” had finally begun to take shape. The idea lay at the intersection point of multiple disciplines and interests: …Physics, astronomy, maritime navigation, and the daydreams of a college student: all these different strains converged in Galileo’s mind.

“After experiencing a desire to invent a particular thing, I may go on for months or years with the idea in the back of my head,” said Nikola Tesla. Telsa call this the incubation period, which precedes direct effort on the invention. Science writer, Steve Johnson, calls it a slow hunch; an idea that comes into focus over a long time.

Johnson discusses several examples of how slow hunches develop in his excellent book, Where Good Ideas Come From

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Don’t Admit That: Problems in DIY Patent Application Drafting

“Mr. Morsa … admitted in the specification that the system as described in the patent ‘can be implemented by any programmer of ordinary skill . . . ‘ . . . Therefore, by using Mr. Morsa’s admissions, the Board simply held him to the statements he made in attempting to procure the patent.” – Federal Circuit Court of Appeals.

US20030093283A1_Fig3Properly drafting your own patent application can be difficult. Client-drafted DIY patent applications sometimes say too much, don’t say enough, or both. A client drafted patent application can say too little by failing to describe the invention with sufficient detail. And a client drafted patent application could say too much by making unnecessary admissions that can negatively impact the application.

In the case of In Re Morsa, No. 2015-1107 …

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Overcoming the Difficulty of Recognizing Good Ideas

Knowledge formation, even when theoretical, takes time, some boredom, and the freedom that comes from having another occupation, therefore allowing one to escape the journalistic-style pressure of modern publish-and-perish academia… –Nassim Talab.

Antifragile“The future is already here — it’s just not evenly distributed” is a quote often attributed to William Gibson. Nassiam Taleb, the author of Black Swan, and more recently Antifragile: Things That Gain from Disorder, asserts that in many cases you cannot predict the future. We have a hard time recognizing good ideas and implementing them. Having time and cultivating a capacity for boredom, as explained below, can contribute to one’s ability to recognize good ideas.

When a good idea succeeds, it can have a huge upside–a much greater upside than downside. Taleb says that …

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Secretary of State Approval of Corporate Name Is No Defense to Trademark Infringement

“the fact that defendant received a charter [from the State of Illinois] to use the name ‘Lady Esther Corset Shoppe, Inc.’ does not protect [the defendant].”

Lady Esther, Ltd. sued Lady Esther Corset Shoppe, Inc. for unfair competition based on the defendant’s use of “Lady Esther” in it company name. It appears the defendant argued it was protected from suit because the Illinois Secretary of State approved the formation of its corporation under the name Lady Esther Corset Shoppe. The court rejected this argument in Lady Esther, Ltd. v. Lady Esther Corset Shoppe, Inc., 317 Ill. App. 451, 458 (Ill. App. Ct. 1943).

The Lady Esther case is old, but this point is still valid: the approval of a corporate or LLC name by the Illinois Secretary of State is no …

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Trademark Disclaimers and Hopeless Trademark Appeals

LouisianaThis appears to be another case where the applicant pursued a hopeless claim. Why did this happen? The problem is that the applicant initially chose a weak trademark and then tried to prop it up by pursing a course that it could not win.

Louisiana Fish Fry Products (LFFP) filed a trademark application on LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME! as shown at the beginning of this post.

The Trademark Examining Attorney and the Trademark Trial and Appeals Board (TTAB) both found that LFFP was required to disclaim “Fish Fry Products” as it was descriptive and generic of LFFP’s products. LFFP appealed this requirement to the Federal Circuit Appeals Court and lost in In Re: Louisiana Fish Fry Products, Ltd., No. 2013-1619, (Fed Cir. 2015).…

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Know When to Stop Wasting Money on Trademark Litigation

MoneyWasteYou need to know when to stop wasting money on trademark litigation. Here is a case where the plaintiff should have stopped on day two of the lawsuit, but didn’t.

Dr. Tartell and Dr. Mandel jointly practiced medicine until 2011, when they split their practice and went separate ways. The break up was contentious.

After the break up, Dr. Mandrel (1) registered six domain names using some variation of Dr. Tartell’s name, redirecting some to Dr. Mandrel new website, and (2) purchased Google AdWords keyword for Dr. Tartell name, which caused Dr. Mandell’s website to appear as an advertisement whenever someone searched with those terms on Google.

Tartell filed suit against Dr. Mandell including claims for cybersquatting, false designation of origin, and unfair competition (all trademark law related claims).

The day …

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