Persistence and Patents Can Equal Success

Every once in awhile I come across a great inventorship story.  This is the story of Jane ní Dhulchaointigh (pronounced “knee-gull-queen-tig”).  A UK product designer, Jane developed a moldable glue which is sold today as Sugru.

Jane started out wanting a more effective ergonomic knife handle.  Using silicone caulk and sawdust, she spent 6 years experimenting with over 5000 different variations on a moldable glue formula.   Once she had attained the desired formula, Jane wanted to approach 3M to buy it.  But the year was 2008 and many advised her against it. 

Since necessity is the mother of invention, Jane and her team decided to launch the product themselves.  They initially focused on the online craft market and used social media to help advertise their product.   

What’s the take away here?  Be persistent.  It took Jane 6 years to develop this product and formula.  Most of us would have given up after 6 hours.  Also choose your advisors well and follow solid advice.  Sugru’s sales skyrocketed with the strong emphasis on social media.  Jane has also maintained a strong competitive advantage internationally by using the patent system.

Protecting your innovative developments is critical to any organization.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

Ego is Grounds for Cause of Action in Inventor Dispute

Socrates once said “the way to a good reputation is to be what you desire to appear.”  For one man, he wanted to be a named inventor.   

In an action against his former employer, Seagate, Mr. Shukh filed an action in federal district court charging that his reputation was harmed by Seagate’s failure to include him as an inventor on 6 Seagate patents.  The district court dismissed the action finding that Mr. Shukh did not provide sufficient evidence to support his case.  However, the Federal Circuit Court of Appeals that hears patent cases, vacated the lower court’s decision.  The court found that “being considered an inventor of important subject matter is a mark of success in one’s field comparable to being an author of an important scientific paper.” 

What’s the take away here?  If you are an inventor, and you are not identified as such on a patent application or issued patent, you may have a case against your employer based on harm to your reputation.  As the court stated, if you are correctly an inventor of important subject matter, being recognized as such is a mark of professional success.  Failure to be properly included as an inventor may harm one’s reputation which may be actionable.

Capitalizing on innovative developments is critical to any organization.  Having the right person to help you make those decisions is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

Beware of the Start Up Weekend

I had lunch with a colleague who is an IP attorney and an engineer.  He was telling me about his participation in a start up weekend and all of the challenges and fun that he had.  In hearing this, we discussed, as patent attorneys do, the consequences of disclosing ideas to a loosely held group of people whose only relationship to each other is on the back of a napkin. 

Most start up weekends do not impose any obligation of confidentiality on their attendees for all that is developed and disclosed in a 48 hour period.  This raised the concern that perhaps anything that is developed that may be rather meaningful, i.e. might lead to actual commercialization of a product or service, may need to be “black boxed”.  In other words, the team of developers could agree to disclose only the basic outline of the structure and/or function of the development and then disclose the details of the operation once a patent application has been filed or a confidentiality agreement has been signed. 

To do otherwise may jeopardize the group’s ability to seek meaningful protection which may likely translate directly into meaningful funding.  The US patent system has moved to a first inventor to file system.  In that system, the inventor has a year to file on the invention developed after it has been disclosed.  The rest of the world essentially requires absolute novelty.  So if any invention is disclosed prior to a patent filing, any international patent rights outside the US may be lost completely.   This is something worth considering when venturing into a start up weekend.

One aspect of any new development is the extent of patent protection available to the ultimate product or service.  If all international patent protection is lost by the close of a start up weekend as a result of disclosure, then the level of funding and any significant patent advantage may be lost.  It remains that anyone involved in a start up weekend should ask the appropriate questions regarding disclosure with the organizers and raise any concerns with the team as it could impact the protection and funding of what may be developed during the weekend.

Protecting your innovative developments is critical to any start up venture.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.