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Patent Pending Made Simple is a podcast for inventors who are looking to learn more about the patent process
Samar Shah (00:00.078)
Hello and welcome to patent pending made simple. I'm your host, Summershaw, and with me is Jamie Brophy. Jamie, how are you? Hey, Summer. I'm good. How are you? I am doing all right. It is the New Year's and I have already made some New Year's resolutions that I have broken. How about you? yeah, of course. If I'm going to break them, I'd much rather just get them out of the way in the beginning part of the year. Yeah, well - Or so I tell myself.
I heard something yesterday that like somebody said, the new year doesn't really start until January 10th. So that made me feel a little bit better. So I can start again. Yeah, no problems. We have a podcast episode that we have directed to these themes, but we hope our listeners will do a better job than we would in our personal lives, maybe.
And that is some New Year's resolutions for inventors with regards to the patent process. What do you think, Jamie? Should we just jump into it? Yeah, sure. We've got a bright, shiny new year, new beginnings. So yeah, let's talk about it. All right. I'm actually going to let you kick this one off. What do you think ought to be our listeners or inventors number one New Year's resolution? So for me, I think the most important thing is to take advantage of
your provisional application pending. You may recall from previous episodes, your provisional application is pending for only one year. And then after that one year timeframe, you have to decide whether to convert it to a non -provisional. And the non -provisional application is the one that will hopefully eventually become a patent. So take advantage of that one year timeframe while your provisional is pending. And when I say take advantage of that time, I mean do things like
Find manufacturers or potential licensees or potential investors. There's all kinds of things you can be doing to determine whether you want to proceed with the cost of filing a non -provisional and prosecuting a non -provisional application. It does get quite expensive. So I think it's a good idea to have a path in mind for what you're going to do with your invention once you do get the patent. Anyways, yeah, to summarize, I think my
Samar Shah (02:21.422)
Number one, New Year's resolution that I would like to see independent inventors do is take advantage of that one year. That's when the work really needs to go into developing your invention, coming up with a plan for monetizing your invention, things like that. What do you think, Summer? Do you have anything to add to that? No, I think that is a great New Year's resolution. And I think if our listeners or inventors keep one, this would be it. I would agree with that as well.
I always talk about strategy, right? Like I think strategy is very important in the patent prosecution process and the patent process in general. And it is impossible, I think, to be strategic about your invention and your patents without having an end in mind, right? So they say that you should start with the end in mind. And that's what strategy is. How do we get from the start to the end as efficiently while maximizing value?
And all sorts of other things, right? How can we accomplish those things effectively? And to me, that's the definition of strategy. And, and it goes into what you said, Jamie, is it impossible to be strategic, to maximize the value of your patent and the value of the process, unless you have that end in mind. And having that end in mind will also help you do all these things that you talked about, Jamie, from a licensing perspective or a litigation perspective. I think that's really important.
The thing that the other thing I'll add to this is that sometimes we have clients who think, a year is a long time. And I think inventors tend to be optimistic people by nature, right? I think because they are solution oriented, they are also very optimistic. And as we know with New Year's resolution, it's easy to be optimistic. It's easy to project forward and think that, I'm going to eat less sugar, right? But probably the best predictor of what you...
are going to do in the next year is what you've done in the last year. It doesn't mean that you're locked into that, but that's, I think, a realistic viewpoint, right? So think about your past year, think about the progress you made and project that forward and the effort and the time involved in doing that, right? And if you're going to do a lot more than that, project out that time and effort that it's going to take to accomplish that goal. I think sometimes your optimism can work against you, especially for inventors.
Samar Shah (04:41.454)
So yeah, I would echo that or second, what you've said, Jamie. Yeah. I agree with everything you just said as well, Summer, that one year does fly by, right? We start bugging our clients about nine months after filing their provisional to say, Hey, are you filing non -provisional? That's the other thing is your attorney, if you're working with an attorney or a patent professional, they're going to need time to prepare the non -provisional. So really you have less than a year to make that decision, but.
Yeah, I get those notifications pop up in my email and I go, my gosh, it's already been nine months since we've filed that provisional application. It does fly right by. So yeah, once that provisional gets filed, be ready to hit the ground running. I think that's when, that's when a lot of the work takes place. Another thing I didn't mention is marketability analysis. Do you know if your product is going to be marketable even? Yeah, those are all good things to think about during that provisional time.
Yeah, that's very good too, Jamie. And not to belabor the point, but can you set the table for what happens if you don't take advantage of that one year? You alluded to this earlier, but to really set the stage, what are the difficult choices that you get locked into if you don't maximize that one year window that you have? I think we actually have kind of a couple of clients that are in this situation. Once the one year goes by, you need to determine whether you want to file a non -provisional.
And that does get expensive, at least for our firm. It's basically what you paid for the provisional. You need to pay that again for the non -provisional. So that is expensive. And then once your application's pending, your non -provisional application is pending and the patent office picks it up and examines it. And like we've talked about on here before, oftentimes you get a rejection. So then you're going to need to make the decision of whether you want to spend the time and money and effort into...
responding to that rejection. And then if you get another rejection or something else happens with your application that you need to spend some more money on, each little thing that happens during the prosecution is going to cost you time and money. So yeah, it's a good idea to know those things ahead of time. How much do you want to put into it? How profitable is this going to be? Is it worth it to get the patent on it? The money thing is definitely very important and it's tough to make.
Samar Shah (07:03.47)
expensive money decisions without knowing whether the product has some legs or whether it's going to give you a return on your invested capital. Having done some of that work upfront is really helpful from a money perspective. That's one thing. The other thing is that if you haven't maximized your one -year window and done some additional development work or feasibility work, or just broadly thought about the concept, then
It's sometimes hard to even figure out how to make a decision about something. So if your patent attorney says that, Hey, we got a rejection and we can go this direction as one option or this other direction as option number two. Having done the work, you can more confidently answer that question. it should be option one or option two. But if you don't know which way the product's going to go or which way it's going to do well, then you're stuck and you may end up making a decision that doesn't fit.
the ultimate product that's in the marketplace. That's my personal pet peeve, right? Number one thing that I see is I see these patents and they don't fully cover or directly cover the product that is supposed to protect. And that's a tough spot to be in if you spend all this money and then you get a patent, but it's still not optimized for the product that's in the marketplace. And so think about that as well. Yes, absolutely. I think a lot of times our clients are still...
developing the product or looking for manufacturers where while their patent application is pending and during that process the product could change from what we've described in the patent application. Hopefully the application is broad enough to cover those changes but sometimes it's not. Sometimes it's something that we didn't think of when the application was being drafted. So yeah that's a really good point when it comes down to we need to amend the claims you know we want to make sure that
claim amendment covers the product that is going to end up out there on the market. Yeah. And that's another good point that you raised. It also helps us, your attorneys, write a better patent application. If you're like, hey, I have done this analysis or I have studied the marketplace and I know I can take my invention in directions one, three, and four, we will help you protect directions one, three, and four and we'll help you identify an umbrella concept that would.
Samar Shah (09:19.726)
help you protect against variations of one, three and four. But if you haven't done the work, it makes it much harder for your attorneys to write an appropriate or a strong enough ban application. What ends up happening is that your attorney will end up writing something very broad, which may not be enforceable or it just may be too broad to be allowable. So you end up locking yourself into bad decisions potentially if you don't do the work during your one year pendency period. Yes, absolutely.
I think that covers our number one New Year's resolution for inventors. Is there anything else you can think of, Summer, as far as resolutions? I have one resolution, and I feel like I already went very negative about what people should not do. And maybe it's not in the spirit of the New Year's, but you are talking to patent practitioners whose job is to be negative, without getting up. But the other thing that I would not do...
is argue with examiners. I get that a lot where the client receives a rejection and even clients who are writing their own patent applications will sometimes reach out to our office and they're like, I got this rejection and I don't know what the examiner is thinking. Makes no sense to me. This other thing looks nothing like my thing. And they're just upset and they just can't see past those emotions. And sometimes those folks get on a call with the examiner at the patent office and...
start yelling at them or start engaging in unproductive conversation. I'll say, don't do that. The examiner at the patent office is trying to do their job right. And usually they're trying to do a good job. I think the best you can do is be open minded and listen and try to engage in a productive dialogue with those individuals instead of berating them or yelling at them. Yes, that's a great resolution as well. You want to...
Make the examiner your friend, establish a rapport with them, even if you do think that being insured. Yeah, I think that's great advice. I remember when I was an examiner and I had an attorney that was a little rude to me and accused me of things that had nothing to do with the merits of the case. And yeah, it made me not really desire to work with him to come to a solution and made things difficult for prosecuting that application.
Samar Shah (11:39.534)
I wonder why Jamie. This may be a good episode for a future podcast where we can talk about how to conduct a productive examiner interview or how to have a productive conversation with your examiner. Cause it is a charged situation where somebody saying your invention is not patentable and you look at the references and you disagree vehemently sometimes. When you're in that situation, how can you get to a productive place? And I have.
A framework that Jamie, you and I talked about, Ian and I just talked about this recently about how to engage with an examiner in a productive way so that everyone can walk away with an eye towards a resolution and without hurting your case from either direction. So I think that might be a good one for us to tackle in the future. Yeah, that's a great idea. I like that idea for a future episode. I was just thinking since one of my personal resolutions was to get better at time management.
I would recommend that also for an inventor's resolution. If you're working with a patent practitioner, respond to them in a timely manner. That would be my suggestion for a resolution. You know, as we've discussed in previous episodes, there's a lot of deadlines in the patent process. And when your patent practitioner has to contact you several times to get, you know, the answer they need or the approval they need, it makes it really difficult to.
respond to those deadlines in a timely manner. So yes, resolution number three, time management, respond to your patent professionals in a timely manner. Yeah, I agree. We have clients who are very quick about responding and engaging with us. And we have clients who are very slow or dragging their feet. And I always think about it as they're not intentionally trying to be slow, but they're just sorting out a bunch of other things like on the business side. So.
They need to figure those things out first and then they can give us appropriate direction or engage with us in an appropriate way, which is totally fine. Just let us know that, okay, we're working on this. We'll get back to you in 10 weeks or whatever it is. That helps us plan and docket things appropriately because there's this human nature component to this. And I find myself thinking this way too, where if I have a client who I know is going to respond to me in a week.
Samar Shah (13:57.87)
then I will schedule their tasks a week out and we'll just get through it faster. I know we can have a good resolution. And if I have another client who's going to take 10 weeks to respond to me, then it's hard for me to invest a lot of time and effort into the thing. Cause I know in 10 weeks, I'm going to forget it. And then I'm going to have to reinvest that time and effort to get back up to speed. I think even if your practitioner is not intending to do a bad job, I think you increase your odds of them doing a bad job right by.
not being communicative by not setting expectations and so on and so forth. So I think it's important to communicate as well. Cause I understand, I always think that there's a bunch of stuff going on in the client's life or business that's why they're not responding. I hope that's the case, but even if it's not, or even if it is the case, it's hard for your attorney to schedule things and dock at you for things for a timely resolution. If we're not hearing back from you quickly enough. Yes, absolutely. That is my assumption as well. They have.
other things they need to figure out or a lot of things going on in their lives and it's just low on their priority list, which is fine. That stuff happens, but yeah, let us know what's going on. Yeah. I think that means our time's up. man, yes. It looks like we have an external timing valve here. That sounds good. What a great way to end a New Year's resolution podcast. Yeah, perfect. This has been helpful. Yup.
Very good. I hope this has been helpful to everyone. I hope everyone sticks to these new visualizations. If you struggled with these or if you think there are other ones that might be good ones for inventors, please email us or message us and let us know. Yes. All right. Thanks, Samara. I'll talk to you next time. Yes. Thanks, Jamie.