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Rogue inventor March 14, 2012

Posted by Brian Schar in Patent prosecution.

This article is astounding in a number of ways.


First, the author/inventor claims that the patent applications filed on his inventions were “nonsensical” and that he couldn’t make sense of them.  So, did he just admit that he lied when he signed the declaration?

Second, if he can’t understand the patents, then he certainly can’t understand the claims; does this mean that he’s using the Slashdot method of determining claim scope?  (The “Slashdot method” refers to the general agita of the teenagers who post there when they read an abstract from a patent and get worked up in righteous indignation that the patent “covers” what’s listed in the abstract.)

Third, this points out the need for a nondisparagement clause in an employment agreement or indepenent contractor agreement.  You can’t keep an inventor from testifying in court, and you don’t want to even appear as if you are attempting to influence him or her to provide truthful information in discovery and in court.  However, you can provide a gag provision that keeps an inventor from turning on you and being a titanic jerk to your company in the press, on his own initiative.  I’m going to start doing that immediately.


1. Adam Furst - March 14, 2012

Brian, how narrowly would you draft the nondisparagement? Applicable to inventions only? Inventions and technology? Patents? Just curious, thx!

Brian Schar - March 14, 2012

I am amending our general consulting agreement. This is a first cut:

Consultant shall not disparage the Company or his or her work or work product for the Company. Nevertheless, this section does not prevent and cannot be interpreted as preventing the Consultant from providing accurate and truthful information and/or testimony in a governmental investigation, internal investigation, court proceeding or the like.

Brian Schar - March 14, 2012

Broad enough to cover any consultant/employee work product. This is not just an IP issue.

2. Weaver v. Houchin – Inventorship Lessons - March 18, 2012

[…] (preferred) or have good evidence that those individuals are not inventors.Also, in this vein, Brian Schar at American IPA brings up an interesting point from the recent Yahoo-Facebook patent dust-up, where a former Yahoo […]

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