by Kathleen Lynch | Apr 7, 2026 | Entrepreneurship, Infringement, Innovation, Intellectual Property, Invention, Inventor, Patent, Start Up, Start Up Considerations, US Patent Office
In patent law, making sure that all the correct inventors are named in a patent application is critical to the validity of the patent. If an inventor is incorrectly included, or if an inventor is omitted from the list of named inventors, it can result in a patent being found invalid and thus unenforceable.
This happened recently to Fortress Iron, LP (“Fortress”). This week, the U.S. Court of Appeals for the Federal Circuit ruled against Fortress in Fortress Iron, LP v. Digger Specialties, Inc.,. The case involved a couple of issued patents directed to a vertical railing panel that could be purchased as a pre-assembled panel. The idea was initially developed in 2013 by two Fortress employees in the U.S. However, the initial design had issues relating to rotation of the panel during tensioning of the cables. Fortress works with two Chinese companies, a manufacturing company and a quality control company to produce its products. An employee from the manufacturing company and an employee for the quality control company worked with Fortress to revise the railing panel design to alleviate the rotation during tensioning.
After a final design was completed, Fortress applied and obtained two patents for its vertical railing panel. Both Fortress employees were named as inventors but neither the manufacturing company employee nor the quality control company employee were named as inventors. In 2016, the quality control employee involved in the design of the railing panel left his employment and did not provide a forwarding address.
In 2021, Fortress sued Digger Specialties Inc. (“Digger”) for patent infringement of the two patents directed to the vertical railing panel. During the lawsuit, it was discovered that the two Chinese employees were omitted from the patents when they should have been included. Moreover, Fortress could not amend the patent to include the quality control employee because he left no forwarding address after his employment and could not be found.
The appeals court ruled that because Fortress was not able to name him as an inventor, the patents were invalid. Fortress was unable to assert its infringement claim against Digger because the patents were no longer valid and thus unenforceable.
What’s the takeaway here? Patent inventorship is an important consideration when filing for a patent. Inventorship is defined as a person who has contributed to the conception of the invention. Conception has been described as someone who has a definite idea of the complete invention. Because the claims of a patent define the invention, an inventor is anyone who has contributed to the conception of at least one claim in the patent. Failure to include an inventor or including a non-inventor can jeopardize the validity of your issued patent.
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 consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Mar 31, 2026 | Entrepreneur, Entrepreneurship, Innovation, Invention, Inventor, Patent, Patent Prosecution, Patentability, Small Business, Start Up, Start Up Considerations, Uncategorized, US Patent Office
A patentability search and assessment is always recommended when evaluating whether your invention would be entitled to meaningful patent protection. The search also helps to inform the inventor and patent attorney where there may be areas of more narrow protection and draft accordingly.
The United States Patent Office recently launched the AI Search Automated Pilot Program. The program is designed to evaluate the examination process by including an automated pre-examination search, and whether the inclusion will improve quality and efficiency of examinations.
The program (ASAP!) will conduct an automated search for original, noncontinuing, nonprovisional applications. The automated search results will be sent to the applicant and will provide an earlier communication regarding potential prior art issues. Under the pilot program, applicants will not be required to respond to the search results.
However, the search results may provide an opportunity to the applicant to file a preliminary amendment in an effort to place the application in a stronger position for allowance. Alternatively, the applicant may wish to file an express abandonment and obtain a fee refund in view of search results that indicate a lack of patentability.
Recently, the U.S. Patent Office has announced that it is waiving the fee requirement for any petition to participate under 37 C.F.R. 1.182 filed after March 23, 2026. This should enable self filing entrepreneurs and inventors to take advantage of this new program for free!
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 consultation is free. Email us at kl****@*****aw.com.
Photo by Szorstki on FreeImages
by Kathleen Lynch | May 27, 2016 | Innovation, IP Management, Start Up Considerations
Earlier this year, I wrote about the federal Defense of Trade Secrets Act passed by the senate. This month, President Obama signed the act into law. The law (“DTSA”) creates a federal cause of action for theft of trade secrets. This means that the owner of a trade secret that has been stolen or disclosed can sue in federal court.
There is a whistleblower provision that grants immunity from a theft of trade secret claim to anyone who makes a disclosure in confidence to either (1) a federal, state, or local government official, or (2) an attorney, as long as the reason for disclosure is for the sole purpose of reporting or investigating a violation of the law.
The whistleblower provision requires employers to provide notice to all employees. Failure to do so will void an employer’s ability to take advantage of the DTSA’s provisions regarding exemplary damage awards (up to twice the damage award) and attorneys’ fees in cases of willful violations.
What’s the take away here? It is in every employer’s best interest to include the new notification in any employee agreement relating to trade secrets, confidentiality and/or nondisclosure obligations. This would include
- Non-compete agreements
- Consulting agreements
- Employment agreements
- Separation agreements
- Retention agreements, and
- Independent contractor agreements.
It would be wise to also include a notice in any employee handbook or new employee orientation materials.
Protecting your 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 kl****@*****aw.com.
by Kathleen Lynch | Apr 19, 2016 | IP Management, Start Up Considerations
I wrote earlier this year in my blog about a pending trade secret bill approved by the judiciary committee in the senate. Recently the senate passed the Defend Trade Secrets Act. The act essentially provides for a federal cause of action for trade secret cases. The bill is now in the house and is expected to pass. President Obama has shown his support for the bill.
While the federal law is pending, state trade secret laws are the only remedy currently available. Recently Epic Systems brought a trade secret case against Tate Group, an Indian company, for theft of trade secrets, computer fraud, breach of contract and unfair competition in the western district of Wisconsin (case 14-cv-748-wmc). The jury awarded Epic $240 million in compensatory damages and $700 million in punitive damages. The jury found Tata guilty of downloading documents from hospital software and providing those documents to one of its subsidiaries, Med Mantra. If Epic ends up collecting the award, it will be more than double Epic’s expected annual profits this year.
What’s the take away here? If you are the owner of trade secrets-protect them. Ensure that you have implemented systems and educated your people on best practices to keep your trade secrets confidential. If someone takes your trade secrets without authorization, go after them. Hopefully you will be able to do that in federal court in the near future. If you are working with companies that have trade secrets, make sure you abide by the terms of the confidentiality agreement and treat the trade secret information in the same manner as you would treat your own proprietary information.
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 kl****@*****aw.com.
by Kathleen Lynch | Mar 22, 2016 | Entrepreneurship, Start Up Considerations
Paul McCartney is using a US Copyright provision to right a wrong he feels occurred many years ago. As you may recall, the bulk of the Beatles tunes were attributed to the duo of John Lennon and Paul McCartney. However, in the 1960’s, Paul McCartney and the other Beatles lost their publishing rights to many of their songs when ATV, a publishing company created by the Beatles, their manager and some of their investors, was sold without the knowledge of the band members.
At one time Yoko Ono, John Lennon’s widow and McCartney tried to purchase ATV for 20 million dollars. The deal fell through and Michael Jackson purchased ATV for 47.5 million in 1985. McCartney may now be able to reclaim those rights 56 years later.
Rather than let it be, McCartney filed a “notice of termination” with the US Copyright Office. This enables a songwriter to reclaim ownership in publishing rights for a song anywhere between 2 to 10 years before the 56 year lapse of time after the publication rights were originally sold. Some of the songs won’t be eligible for release until the singer is 83.
What’s the take away here. Any artist, author or creator of a work protected under copyright law should understand those rights . In addition, anyone who may have an interest subject to copyright law should think carefully about corporate structure and where the ownership of the intellectual property should be held when forming a new business. This often takes the form of an IP holding company. Situations may vary, but who will own the rights in the copyright and how the business will be structured should be well thought out when setting up any business.
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 kl****@*****aw.com.
by Kathleen Lynch | Mar 2, 2016 | Entrepreneurship, Innovation, Start Up Considerations, Trademark Service Mark
A European General Court recently denied the Coca-Cola Company European Community trademark protection for the shape of its new bottle design. European Community trademark protection provides trademark rights to the owner throughout all European Union member states.
The bottle design was determined by the court to lack distinction. In fairness, protection of a shape in the EU is difficult to prove. The shape must be shown to be recognizable by consumers by shape alone. Coke failed to meet its burden of proof in this situation.
Here, Coke revamped its bottle design and made it less distinctive than previous designs, which were protected by EU Community trademark registration. In an effort to modernize their product packaging, Coke may have drifted away from its recognizable bottle shape.
What’s the take away here? For any company, protecting the shape of a product through trademark registration is a challenge. The shape must be sufficiently distinctive to enable consumers to recognize the product over the competition. If your organization is going to go down that route, be sure to create a sufficiently distinctive product that is recognizable by your customers over the competition.
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 kl****@*****aw.com.
