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Patent Pending Made Simple is a podcast for inventors who are looking to learn more about the patent process
Hello and welcome to the Patent Pending Made Simple podcast. I'm your host, Samar Shah and with me are two very special guests, Logan and Bobby. Bobby, do you wanna introduce yourself and then Logan, do you wanna introduce yourself? Thank you. Yes, that's sweetie. Samar. So I am a patent attorney. I used to work with Samar many, many years ago.
We did and a litigation, and I helped him win. I think he won a federal circuit case. That's right. We did win. There we go. Regardless, you win, right? 'cause you win on some issues, you lose on some issues. We'll call it all win. That's right. We win on the most important issues. There we go. At least that's what I remember.
Same. Same. And I got, uh, Logan with me. I'll let him introduce himself. I am Logan, Robert. Son. You don't have to be so formal. Tell me dad's son. Yeah. And Logan. How old are you For our audience, just so they have some context here. They know Bobby and I are old. So tell us 10. All right. Today I think we're gonna be talking about an invention that you and your dad came up with.
Is that right? Yeah. Awesome. Alright, so you and your dad came up with an invention, is that right? Yeah. Awesome. We're gonna, now, I'm gonna embarrass Logan and give you the Shark Tank pitch. So we noticed in soccer you had to buy shin guards, but in gyms there was no device to strengthen your natural shin guards.
Yeah, this is where we got the idea for our invention shin. Credible. Can you hear that? Woo. I love that. Okay, shin, credible. You know, I like it because I can already visualize or imagine what this thing is gonna help me do, so that makes the consumer's job a lot easier. So, good job on, on the naming. We'll talk about this, but I like the name.
I like where you guys are heading. Thank you. So what does it do, Logan? Um, it strengthens your TDIs anterior muscle. And what muscle is that? That is the muscle that is irritated when you get shin splits. That's right. And that you fill those in soccer often. Well. We filed a, a Georgia Shin Corporation.
Actually, not really. We filed an LLC. Nice. It's a shin. Incredible. LLC, and we filed a provisional patent application in Samar. Nowhere better to talk to about that than you. Yeah. I am glad. For our audience, I think the way we're gonna structure this interview is we're gonna pretend like you guys are a client who's called a patent attorney, and you guys are like, Hey.
Tell me, I know you got, I mean, Bobby, you're a pen attorney, but you use all the help I can get. Yeah. Right. So we're just gonna pretend that you guys have some questions about what to do, right? Because a lot of our listeners are in inventors just like you guys, and they have questions about what to do.
And Logan, not every inventor is so lucky as to have a dad who knows what they're doing and can help you protect things and invent things. So that's what this show is about, is helping inventors protect their ideas and guide them in terms of what to do next. So we're gonna do a little bit of that, so don't hold back, ask all the questions you want.
But I'm gonna be asking you guys some questions too. Okay. Sounds good. Awesome. You go ahead and fire off a question though, Samar. Okay. So before I fire off my questions, I will say this, that's awesome because Bobby, I was telling you this earlier, but I got, you know, I've never had shin issues in my life until recently.
So I start, you know, I used to run, just to give some context, I've run ran like mini marathons, several half marathons, played a lot of competitive tennis. I never really had shin issues until I started running again a couple years ago and I got these crazy shin splints and. Couldn't find a way to get rid of them.
Like all the advice, everything I read was just like rest. So I just rest for like three, four months until I thought they would go away, start running again, and get shin splints again. So it was very frustrating. And there's really nothing out there other than like some YouTube videos I found about this guy who had a, or like a stretch band and you could help you like work out your shins.
That helped, but there's very little out there, so I'm glad you guys are thinking about this. There needs to be a solution in the marketplace. And you guys thought of one. That's awesome. Thank you. Yeah, same here. I was looking, I was trying to come up with ideas for Logan. He wanted to do strength training for his legs, and uh, you got the quads and that, and then you balance it out with the hamstrings and then you do the calves.
But there's no machine in the gym that I, at least in the ones we go to, where you can balance it out the front part. Is the muscle that gets sore playing soccer, so That's right. That's right. Yeah. Very good. Okay, so you have invented this thing, and then the next question that people usually ask me, is it patentable?
So I'm sure you guys thought about this, and Bobby, can you walk me and maybe our listeners through what went through your head in terms of patenting this thing, and then we'll talk about some other things as well. Well, as you and I ran into the 1 0 1 issue is quite. The patent eligibility question happens a lot.
And so I was, I was excited when we came up with this idea for something that it's like, okay, this, the examiner can say, this is an abstract idea. We have a tangible thing, not some app, which is what I usually come up with, but Logan here helped me come up with like a, an actual device. So what we're thinking about is what do we want it to cover and is it really novel?
And so we were. Thinking about the basic function of the device. And we also were thinking about what could it potentially do. Like we thought you could put sensors on the, whatever the resistance is, and figure out the resistance, and also put sensor on the motion, um, the part that moves and you, you send that through a transmitter to an app and it can figure out.
You know, sets and reps and I was thinking maybe you could have that connected to something like Max Preps and have like some kind of soccer performance website and you could see if there's any kind of correlation between using our Shin credible product and improvement in soccer performance. So that's in the patent application, something we were thinking about.
Anything else, Logan, you wanna add? No. Okay. Well, you also said you wanted to make a version that was very durable. It was made out of titanium and what were you gonna call it? The shin destructible. I like that. I love that. So that might be more of a trademark thing, but that's a, the titanium version didn't make it into the patent application.
Yeah, we should talk about that. So first of all. You're right Bobby. For our listeners, Bobby and I do a lot of software patent applications and we run into issues with software, patents, section 1 0 1 or patent eligibility, which software patents in particular have a hard time with. 'cause uh, there's a rule of the patent office that says you can't protect an abstract idea.
And a lot of software patents are run into this issue. If they're not well written, they can be considered an abstract idea. That is not something inventors with physical products have to worry about, which is nice because that section 1 0 1 analysis is complicated, to say the least. So you know there, I think there are a handful of requirements in order to get a patent.
Patent eligibility is one of them, which you've already met. Then the next two requirements are novelty and non obviousness. Novelty just means that. Nobody's done it before, and non-obvious means that it can be an obvious modification of something that already exists. So how did you answer that, Bobby?
Did you guys go through and search products that were similar perhaps to see if something like this existed or anything like that? Yeah, I did a search, not. When we were doing the invention, but just when I wanted to, just to see what was out there, to actually we're like, we're gonna buy this thing if it exists.
And the only thing we saw was like a free weight style machine. It does a similar motion, but you put plates on it. I didn't see anything that was like, like a self-contained resistance. Well, we have, have in mind. So yeah, I only saw one product and like you said there, there's bands as well. I guess you could put a band on your foot and, and do the, do a similar motion.
Mm-hmm. But so just before we did got the idea to launch the invention, just in looking like upon Amazon to buy something, we realized that it didn't exist. So I think the novelty is there just from our looking, shopping for it and then realizing it doesn't exist and then mm-hmm. Idea to invent it non obviousness.
That's, it's always a fight. I mean, yeah. I expect it to be a fight, but I feel like the novelty bar, if you know it's novel, then it's good enough to file unless it's super obvious. Yeah, that's right. That's a great way to put it. 'cause Bobby, you and I have developed a fine, maybe a finer sense of what's novel and non-obvious, but I can imagine an inventor who's listening may not have that same context or understanding.
So being able to. Do what you just did, which is to figure out, Hey, does this thing exist? And if the answer is no, then you're in pretty good shape for generally filing. And so, yeah, love the way you put it. Obviousness just means that, would it be obvious for somebody to. Put a couple of things together to come up with your invention.
That's a hard question even for patent attorneys to answer, but I think as long as there isn't a product out there or something out there that's like your invention, I think generally you're in the ballpark of patent. Yeah. And I frequently disagree with the examiners about what, what's obvious and, uh, we gotta, we gotta go back and forth and bring in the PTA as an arbitrator.
Yeah, it's according to patent examiners on first review, everything is obvious, but we al almost always win those arguments, right? If it's rejected on obviousness grounds, we'll overcome that rejection usually. Yeah, hopefully. Okay, awesome. So the first thing you guys did was see if this product is out there.
That's very good. I think that's a great first step. Then you filed a patent application. I think that's a great second step. Well, hold on. Sorry. Okay. The next thing we did was filed an LLC. Good. Okay. Very good. We waited, we waited for the Georgia Secretary of State to, to tell us we had our LLC and then we filed the patent application.
Okay. Very good. LLC to me makes a lot of sense in this case, but for our listeners, there's different types of corporate entities that you can form. The primary reason to form a company. Is to limit liability, right? So this is what we learned first year of law school, Bobby, that some kind of a legal entity can protect you and your personal assets from liability.
You make this thing and sell this thing and God forbid it urge somebody, that person wouldn't be able to come after your personal assets, right? They can come after the company's. And let me ask you, um, how would you typically advise a client? Would you advise 'em just to get the patent application in their own name or would you advise them to form a company or if they have an existing company to file it in the company's name?
Or is it just Yeah, sorry. That's a tough one. No, no, that's a great question. Well, entity or micro entity status play into that. Yeah. So the legal answer is you should form. A company, at least an LLC, whenever possible and as soon as possible. Okay. But sometimes my clients don't know what they're gonna do with this.
Right. Sometimes they have a long developmental pipeline or cycle, so they invented something today, but they're not actually gonna sell it for let's say, another year. Right. Right. Do some prototyping, partnerships, all sorts of legwork that you have to do. In that case, I can sometimes see that it's okay to skip it, just, you know, put it in your personal name and then we can transfer ownership into the company in the future whenever you're getting closer to like something associated with a liability.
Okay. So that's something that we do sometimes. Sometimes the clients don't know if they're gonna raise outside capital or not, right? If they're, if they're gonna go to investors and raise money for their product or venture in that case, they sometimes wait as well. And I'm okay with that because venture capitalists, they don't want to, they're not gonna invest in LLC, they're gonna wanna invest in a Delaware C Corp usually, right?
So. In that case, if they're still trying to figure out, Hey, am I gonna bring on investors or not? What is the nature of those investors? Sometimes it's okay to wait. Sometimes my clients already have investors on board, right? They've already taken on money, and then they ask, Hey, can I just put the patent under my name personally?
And I'm like, no, somebody's gonna invest in this thing. They're gonna wanna see. They're gonna wanna have. You invest in a company that owns the IP rights, right? Otherwise that deal's gonna fall through or it's not good faith, right? If you've already taken the money. So those are some of the things, some practical considerations for clients.
Yeah. Legal answer is file something. If you're gonna raise capital file a C corp in Delaware, if not form an LLC in your state. Interesting. So I'm not a corporate lawyer. Neither am I, by the way. One of the trends I've noticed is formation in Nevada. Oh yeah. Yeah. That's also kind of a tax advantageous situation.
So because you are not building any revenue anytime soon, yes. You're okay. Like none of these things really come into play, but like. If you were gonna start generating a bunch of income tomorrow, then all of this becomes much more complicated, right? Or you need to talk to a corporate attorney and a tax attorney at that point, because you can have different tax liabilities depending on the state that you incorporate in.
Silicon Valley investors, they won't invest in anything other than a Delaware C Corp, right? They'll just like make you redo your formation paperwork, and that can sometimes cost tens of thousands of dollars to rework it. I had another guest on this podcast. We haven't released this episode yet, but she started off as an LLC for five years.
She ran it as a. A single owner business and then her business took off and she started ask, you know, she started getting interest from venture capitalists and they were like, yeah, we'll invest, but you need to be a Delaware C Corp. And she found an attorney who was like, yeah, I'll convert your LLC. She's from Virginia, her Virginia LLC, into a Delaware C Corp.
The bill was 12,000. Maybe I should be a corporate attorney. Yeah, right. I was like, well, that doesn't sound right, first of all, but yeah, that's very expensive. Yeah. I was told to ask this, but I don't know what this means though. When should we convert to non-provisional? That's a great question. So you filed the provisional, so your dad knows this, but you have 12 months from your provisional filing date to file the non-provisional application.
So what I would recommend is wait the full 12 months, right? Wait as long as you can, uh, 'cause you already paid the fees for provisional, so you might as well make those fees work for you for as long as possible. 'cause when you do the conversion to a non-provisional, you have to pay an additional fee. So you wanna try to delay that.
For as long as possible. But on the flip side, let's say this thing takes off, right? Like, let's say we post this podcast and people are like knocking on your door and they're like, Hey, we want this thing. Then you may wanna consider converting sooner, right? Depending on, on what the market is doing with this invention, in this product.
In that vein, I know you, you do a lot of fast track, right? What do you, what do they call it? Tier one? Yeah. Track ones. Track one. Yeah. Can you tell me about that process? Absolutely. So we, for our startup clients especially, we'll often file a fast track application. So normally when you file a non-provisional Logan, it takes the patent office almost two years, sometimes longer.
To review your patent application, okay? It just sits there in a pile until somebody's ready to look at it. And the backlog at the patent office for most examiners is about two years, and nobody's gonna look at it for that long. That's too long for some clients, right? For especially for startups, we're moving at lightning speed.
So we'll file a fast track request where you basically pay an extra fee, it's between a thousand or 2000 bucks, and they put your application in the front of the line. So usually they'll, the examiner at the patent office will review your application within three or four months as opposed to two years.
Okay. That was great information. Samar. I gotta ask you another question about trademarks. Yeah. Do you deal with them? Like, do you file any trademark applications? I have not. I don't know a whole lot about trademarks other than what I learned in my one trademark class in law school. I'll do my best to see if I can answer your question though.
No, no. I think it's good. I'll, if I don't know it, I don't know it. Do you have a sense of what classes like, I mean, the question I was gonna ask, which I think might be unfair, but, uh, what classes would you, or how many classes would you advise someone following a trademark to go after? Good question. I actually don't know.
Okay, but for our audience sake, I would say this, that trademarks, unlike patents are categorical. So when you file a patent application, that patent is protected no matter what somebody does with it, right? So if somebody makes the same product as what you have, and if they use it for some other thing, they still infringe your patent.
Trademarks are not like that. So trademarks exist in categories, so you had to specify which category you want protection in, and then you'll get protection in that category. To give you some example, like Starbucks, right? Like their trademark would be in the coffee or retail chain operations categories.
So if you wanted to have a Starbucks oil change company, right, like probably could, I mean, there's some exceptions to this, but they exist in categories and you're only protected in the categories that you specify in your trademark application. And that's why you can have like Delta faucets, for example, and Delta Airlines, right?
Because they, they can exist in different categories of, uh, business. Yeah, exactly. I was looking myself and you know, uneducated, but my look was, I was thinking there were three candidates. There was one for like health, like I was thinking like what you were mentioning, the rehab aspect of it. Um, so like that could like, uh, it seemed like there was like a healthcare product category.
Then there was something called sports and toys and like that would be like what you would see in the commercial gym, I think. And then there was a category just for apps. So I was thinking like all three of those were possible candidates. Yeah. I don't know. I had to ask a trademark attorney or Bobby.
The other thing that comes to mind is to find a product that's kind of similar to yours. Not similar in a sense that does the same thing, but like it has the same kind of general audience or product categories. Right. Look up their trademarks, see what categories they're in, and then just copy that.
That's great advice. Yeah. And for our listeners, that's something you guys can do too. There's a trademark database called Test. TESS. You can just Google that and find other companies, right, with similar types of product lines and see what they, what categories they've claimed, and that gives you some guidance in terms of what we should claim as well.
Samar, we've come to the end of of our questions, but we're gonna turn your show back over to you and let you ask it question. I love it. This is great. What I was hoping to cover was some corporate stuff, some patent stuff, some trademark stuff. Maybe we should talk about copyrights a little bit. Have you guys thought about that?
Have you done any copyright work around this, Bobby and Logan? No, we haven't. Okay. I'll give you guys a, especially for our listener's sake, a really quick overview on copyrights. So copyrights protect creative works of arts, so trademarks will protect the company's name and the logo and things like that.
Copyrights will protect. Creative things that you make to help sell the product. So, you know, Coca-Cola for example, the name Coca-Cola is a trademark, but the Coca-Cola, polar bears, for example, are copyrights, right? So if you take photographs, if you make artwork to support the product, those would be all things that you can copyright.
Yeah, I, so I do have a question now. I sketched out. A version of our shin, credible product. Then I gave my description to chat GPT, and then it made a drawing. That was pretty much the same thing I drew. Could I then print that out, send it to the copyright office and be like, here's my copyright. So that that would require a copyright attorney to weigh in.
Yeah. I also took one copyright class in law school. It did not help answer this question, but actually I think this is a kind of a area of law that. Is under a lot of heat and scrutiny right now. Right? So I don't even know if there is a very good answer one way or another yet. Well, I'll say this. The version that chat GPT gave me was very, was like the same thing I sketched.
Then I gave it to Gronk and it so like, I'll put it this way, chat. GPT gave me the Flintstones version. Gronk gave me the Jetsons version. It was unrecognizable. It looked like a, I don't know, like a Dyson vacuum cleaner. Oh my goodness. Just a little bit different. A lot of creative liberty there. I wouldn't feel right sending that, that one to the copyright office, but That's right.
That's right. Yeah, we, we should have a copyright attorney on this podcast at some point. 'cause this, I bet a lot of people are doing this who are listening to this show. Right. They're just gonna chat GPT to help them with illustrations or help. Better visualize their invention and their product. That's an open question.
Yeah. Okay. Very good. Now, the last thing I wanted to ask you guys about is commercialization. How do you plan to make money from this invention? Now that you've come up with it and you've done a lot of the legwork that you need to do to legally protect yourself and set yourself? For success, but what, what are your goals?
What are your plans in terms of making money from this thing? Honestly, what were you thinking, Logan? I was thinking we'd go on on podcast and talk about it and hopefully get it, get some interest that way. What were you thinking, bud? We would sell it. How about Logan's gonna, we're gonna make a version, Logan's gonna use it, and then he is gonna dominate his soccer league, and then they're gonna be like, what did, what was the secret?
He's gonna be like. I got a incredible secret for you. Yeah. He's gonna be like a soccer influencer and he's gonna be like, Hey, this thing helped me a lot. Yeah, exactly. That's the plan. To be honest, I, I don't really know. I, I mean, it's kind of a interesting product and. I mean, interesting project for me and him to do together.
But yeah, I don't know. I, I'm interested in any ideas you have for commercialization. Yeah. The reason I ask is because a lot of my, you know, a lot of listeners especially right, are not thinking about this yet. 'cause inventors by nature are like engineers and tinkerers and thinkers. Right? And oftentimes they don't think about the commercialized.
Of it, right? Or the commercial impact. So I always like to start my conversations with them, with that in mind, right? Because outside of that, the patent can just be a very expensive piece of paper for you, Bobby, I know it's a little bit different here, but for our listeners, you really should be thinking about how you're gonna commercialize your invention and make money from it.
Because that helps you answer a lot of the questions that we just went through, right? Is it worth spending the money on a patent? Is it worth putting an LLC together? Should it be an LLC or should it be an S Corp or a C corp? All these questions that you need to ask can be answered by just having an end goal in mind.
The other thing I always say is that. The type of end goal you have in mind may dictate how we write the patent application, right? Or if we need to prioritize between a trademark and a patent, that can help us too. But broadly speaking, for inventors in particular, there's two pathways to commercialization, to making money.
One is to make the thing yourself, right? And you can package it, market it, sell it, ship it, those things. Those would become your responsibility, right? You can certainly find vendors to help you support that, but it's a good job, right? It's a lot of work if you need to do it, but you make, you can potentially make a lot of money that way too.
The other option is called patent licensing to where you can license or lease the rights to your invention to another company, and they will make it, they'll sell. They'll do all the work and they'll write you a check for renting or using your intellectual property or your patent. And often my clients who go that route will get a check in their mailbox, like once a quarter or once every two year, once a year, twice a year, something like that.
So those are some things to think about. 'cause that can influence what you spend your time on next. Now that you have invented this, do you need to spend time finding licensing partners or should you spend your time prototyping this and finding manufacturing partners, that kind of thing. Do you have any suggestions for me or the audience on how you would go about finding a manufacturing partner?
That's tough. It'll connect you to a couple of people who might be a good starting point, but that's a little bit outside of my area of expertise as well. It's, it's changing a lot. Right. So like, uh, early prototypes, a lot of my clients are doing like 3D prototyping and things like that. And then for the actual manufacturing, it really depends on the nature of the product.
Different manufacturers have different expertise, right? They have different things that they work on at different scales. So you just gotta talk to a lot of people and find the right person who has expertise in making your thing. You can have manufacturers who make pillows for example. Right. And that's not gonna help you very much.
They make heavy equipment and that's not gonna help you very much. You just gotta find that kind of sweet spot. Yeah. There are also manufacturers who specialize in making, you know, 10 million plus of something. Right? That's not gonna be a. What you need right now. Right. It's a lot of just, you know, meeting, networking, getting more connections and finding the right person.
Do you think with the tariffs it'd be a lot less, a lot less likely that we're gonna shim port this invention? I don't know about that. I know that all my clients who are doing overseas manufacturing are scrambling. Yeah. Everybody. I had a client who moved their operations or were in the middle of moving their operations and then moved it again because the landscape changed again on them.
Right. As they were making them like it happens daily. Yeah. Yeah. It's a unpredictable environment, to say the least. Yeah. Yeah. It seems like where I go to check my crypto prices, every time it's like updates the tariffs or whatever, and it seems like it's happening. I, I don't know how often it's actually happening, but it seems like it's all the time.
I can't imagine having to having, oh my gosh. Yeah. Yeah, no, they're all stressed out. Several clients have like moved overseas for a couple of months just to help like shepherd all this stuff around. Yeah. Um, it's a tough spot to be in. Well, thank you for your time. Samar. I'm gonna assume what we said was attorney-client privileged and we can now see you from malpractice.
No, I'm just kidding. That's right. That is, people ask me, you know, they message me and they're like, Hey, why don't you have more inventors and practical conversations? And I'm like, well, you've gotta understand there is this thing called attorney client privilege. When people talk to me, they have often an expectation of privilege, right?
'cause they're talking to an attorney and sometimes they. I'll waive it. I don't care. I'm like, I don't know if you realize what you're doing, if you understand the implications of it. Bobby, I think you agreed to waive privilege and I trust that you know what you're doing, so I'm not worried about it. But this is helpful so we can have a more candid conversation here.
Yeah. Agreed. Yeah. Awesome. Alright, very good. Well, this is an awesome product. You guys have made an incredible amount of progress for how little time you guys have been working on this for. So congratulations. Congratulations Logan, and I'm looking forward to seeing you on YouTube, working out your shins and kicking ass in soccer.
Thank you. Stay tuned. Yeah, it's gonna be happening. Yeah. I look forward to it. Alright, well thank you, Samar. Yeah, thanks guys. The Patent Strategy Podcast is recorded for informational purposes only and should not be considered legal, business, or professional advice. We are not responsible for any loss, damages, or liability that may arise from the use of this podcast.
The podcast is not intended to replace professional legal advice and should not be treated as such. The views expressed in this podcast may not be those of the host for the management.