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Thursday, 16 June 2005


This popped up in Silicon Valley North: a list of the top 10 most common intellectual property rights mistakes during venture capital due diligence, by Dennis Fernandez and Neal Sainani of at Fernandez & Associates LLP.

1. Too late to start filing domestic and international patent applications.

2. Too narrow legal scope of claiming patentable inventions.

3. Filing a patent too soon.

4. Relying solely on copyrights for software protection.

5. Inadvertently tainting intellectual property rights with third party co-ownership rights.

Dennis Fernandez

6. Communication with non-lawyer agents which is unprotected by lawyer-client privilege.

7. Underestimating the importance of trade secrets and confidentiality.

8. Overlooking legitimate opportunity to set up offshore licensing tax shelters.

9. Responding slowly to Office actions.

10. Over/under-spending on legal fees to prosecute patent applications.

The IPKat -- who loves lists -- wonders if his readers agree. There are at least a couple of omissions: filing too early is mentioned, but not filing too late. Merpel adds, there's no point in filing at all if you can't afford the cost of defending your patent or using it against others.


Anonymous said...

1 Doesn't "filing too late" come to much the same thing as item 1, "too late to start filing" in the end?

2 Item 3 is fairly specific to Canadian (where the list comes from) and US practice. Here in the UK, the old system of Provisional and Complete solved the problem, and remains (and is I hope widely used) in its new guise (UK followed by revision for foreigns, or refiling using "internal priority").

3 On the cost of using your patent against others, is patent infringement insurance still available? (Though I have no knowledge of how useful it is or was.)

Michael Harman

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Anonymous said...

Fernandez' Item 6 was a pretty bare-knuckle inter-profession attack. I am interested to see that it has now changed on his website - to "Don't forget Festo" - did Mr Fernandez perhaps hire a patent agent since the first posting?

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