Lexigent LLC

Conference proceedings are prior art the day they publish. So are posters, published abstracts, preprints, and a thesis once shelved.

The United States gives you twelve months for your own disclosure. Most of the world gives you nothing.

The fix is sequencing, not secrecy. File a provisional, then publish. It delays your paper by weeks and preserves everything.

https://www.lexigentllc.com/insights/disclosing-your-invention-before-filing/

They are now a third party with rights in your core technology, and their incentives are no longer yours.

They may be at a competitor. They may be unreachable. They may be perfectly reasonable and simply want to be paid.

Any of those is a problem when it surfaces during a financing, which is exactly when it surfaces, because that is when someone finally reads the paperwork.

Confirmatory assignments cost almost nothing while the relationship is good.

Startup Law | Entity Formation to Funding | Lexigent, LLC Startup legal services: entity formation, founder agreements, venture capital financing, equity incentive plans

Under 35 U.S.C. 102(a)(1) an offer to sell triggers the on-sale bar. The Supreme Court confirmed in Helsinn v. Teva that even a confidential offer counts.

A quote to a distributor. A pre-order page. A signed supply term sheet. A price list sent to one customer.

Inventors expect that selling matters. They rarely expect that offering does.

File before you quote.

https://www.lexigentllc.com/patent-process

Can I patent this? That asks whether your invention is new and non-obvious.

Can I sell this? That asks whether building it infringes somebody else's claims.

Nothing about the first answers the second. You can hold a valid patent on your product and still need a license to ship it, because an earlier claim reads on one of your components.

In incremental fields that is normal. The cost of finding out scales with how late you find out.

Contact | Schedule a Consultation | Lexigent, LLC Schedule a consultation with Lexigent, LLC to discuss patent prosecution, IP strategy, commercial law, or startup legal needs. U.S.

Design patents: fifteen years from grant, so prosecution time costs you nothing. No maintenance fees. Usually issue in about a year.

And under 35 U.S.C. 289 you can recover the infringer's total profits on the article, a remedy that exists nowhere else in patent law.

They answer a specific problem: the competitor who engineers around your utility claims but keeps your product's familiar look. A utility patent does not stop that.

For anything with distinctive form, file both.

https://www.lexigentllc.com/patent-prosecution

Maintenance fees are due at 3.5, 7.5, and 11.5 years after grant, escalating substantially each time. Miss one and the patent lapses once the grace period closes.

Letting one lapse is often correct. The technology moved on, the product was discontinued, the fee stopped earning its keep.

What it should never be is a surprise. Know which of yours you intend to keep, and when the next payment is due.

How Much Does a Patent Cost? | Attorney Fee Guide Transparent breakdown of patent costs: provisional applications, utility patents, design patents, USPTO fees

Under the DTSA, information qualifies only if it derives value from being unknown and is subject to reasonable measures to keep it secret.

That second element is a fact question a court decides, and it is where cases are lost.

Written identification of what is confidential. Signed agreements with employees and contractors. Access controls. Exit procedures. Document marking.

Without those, you have information you would prefer competitors did not have. That is not the same thing.

https://www.lexigentllc.com/hidden-assets

Recording an assignment at the USPTO is not required for validity between the parties. It matters anyway.

An unrecorded assignment can lose to a later bona fide purchaser, and it is the first thing diligence checks. An unrecorded chain of title reads as disorganization even when the paperwork exists.

Recording is inexpensive and quick. The gap it closes is neither.

https://www.lexigentllc.com/startup-law

If a contractor ends up a co-owner of your patent, understand what that means.

Absent an agreement otherwise, each owner may license the patent independently and owes the others no accounting. Your former contractor could license your core technology to your largest competitor and keep every dollar.

Enforcement is worse. All co-owners generally must join an infringement suit, so one uncooperative owner can stop you suing anyone.

Sounds like shared upside. Works like a veto with no revenue share.

Startup Law | Entity Formation to Funding | Lexigent, LLC Startup legal services: entity formation, founder agreements, venture capital financing, equity incentive plans

"Assignor hereby assigns" transfers legal title on signature.

"Assignor agrees to assign" has been treated by courts as a promise to do something later, creating at most equitable title. If that person never follows through, or joins a competitor, or simply stops replying, you may not own what you believed you owned.

Most templates found online use the weaker phrasing. Check yours.

https://www.lexigentllc.com/startup-law