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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 another episode of Patent Pending Made Simple. I'm your host Samar Shah, and with me is Jamie Brophy. Jamie, how are you doing? Hi, Samar. I am good. How are you doing? I am doing all right. I am glad to be recording today. I think we're gonna tackle a question that comes up. Quite a bit or more than maybe some listeners expect.
Exactly, yeah. Definitely comes up with my independent inventors and, and startups that I work with quite a bit. And that is what even is a patent. Like what can you do with a patent? What's appropriate to cover with a patent? I think we're gonna talk about different types of intellectual property, what falls into the patent category, and then kind of what's the.
Point of getting a patent. So I think we're gonna cover a lot of good information today. Yeah. So do you wanna kick us off, Jamie, and tell us about what is a patent? Yeah, so a patent is for any new and useful device, machine method, a utility patent specifically. There are other types of patents. There are design patents and plant patents.
Uh, plant patent is for if you develop a new plant. I have never in micro. Rear worked on a plant patent and then a design patent is for, it covers a, the ornamental design of something. When we think about patents, we normally think about utility patents. That's the third type of patent that covers a new and useful machine method device.
So yeah, just kind of in a nutshell, overall, that's what a patent is for. Do you have anything to add to that Samar? No, I think that's great. Yeah, like from a really legal perspective, it is a legal document that is filed with a patent office, right? And it initiates protection for an invention. I think it's kind of the most basic way of thinking about it.
I'm glad you talked about the different types of patents, because that's important as well. They govern or their rules governing what type of patent applications protect and how they protect it. And then the only other thing I would add to that, Jamie, is the provisional and the non-provisional. I mean, we've talked about that.
Ad nauseum here on this podcast, but a provisional application is a lightweight utility application. It allows you to kind of save the date, if you will, for your invention. And the non-provisional is the more formal patent application that gets examined by the patent office. But both of those are genres or versions of a utility patent application.
Yes, that's right. And then the non-provisional specifically is the one that can end up going through the patent examining process and hopefully become a patent in the end, the provisional patent application, that one will never, it never gets examined. It never becomes a patent. It's mainly, you know, a placeholder for your filing date.
That's right. And when we talk about patents, it's kind. Easy or hard to talk about them in the abstract in many ways. But maybe we can compare and contrast just a little bit from what kind of protection or what kinds of things can you patent or protect with a patent, and what kind of things can you not?
So the one that gets a lot of clients confused is trademarks, right? Like patents, sometimes they have a trademark that they wanna protect and they say, Hey. I wanna file a patent on this thing. Should we talk about that next, Jamie? Yeah, sure. Yeah. A trademark will just protect a logo or a word or a phrase like a brand name, and sometimes patent protection is not available because it doesn't, invention doesn't kind of meet the, the criteria of the being novel and non-obvious.
To get a patent. So sometimes your best option is to get trademark protection so that you can trademark your specific brand, your specific logo, and then people would associate your brand with that product. Yeah. So yeah, there's, and there's other types of intellectual property, which I'm sure we'll go over.
But yeah, I think overall that's kind of the general difference between the, the patents and the trademarks. Yeah, no, I think that's great. I don't have anything to add to that, so I'll just go to those other buckets or categories of intellectual property. So. Broadly speaking, there is different types of intellectual property protection, right?
So things that protect items that came out of the human brain, right? Intellectual property, not physical property, but there is patents, as Jamie said, they protect inventions. There are trademarks that protect logos and brand names and brand identity. There are copyrights which protect artistic work. So art.
Then there are trade secrets, which protect pretty much anything that you could keep under a lock and key or something that you can keep a secret. Those things are protected by a trade secret. And then the final bucket here is also contracts, although they don't generally protect intellectual property in a way that other things do, but you could write up contracts that protect your rights, right?
Like a non-disclosure agreement or a confidentiality agreement or an agreement to assign inventions to others. So contracts. Play a prominent role in the world of intellectual property as well. I think maybe we should talk, I don't know. Jamie, do you think we should talk about some of these things in a little bit more detail or is that sufficient from a distinguishing what is a patent and what is not a patent?
Yeah, I think that's sufficient. I don't really have anything to add to that. Our practice focuses. Patents. So when people come and ask us about those other things, we usually refer them to somebody else that specializes in those things. But yeah, we focus primarily on, well, exclusively on patents, and that's the focus of this podcast as well.
So I think that's a good overview. I don't really have anything else to add to that, but yeah, if you have anything else to add, Samar. Please go ahead. Well, let's see. I will add just a little bit of fun here. The legal nerd inside of me cannot help myself, but trademarks will very commonly protect logos and brand names, but they can actually protect a whole lot more.
So this is my favorite part of my trademark class, but you can protect smells with a trademark. So there's some famous trademarks on smells or like, uh, the Great American Cookie Company has trademarked that smell of cookies that you smell sometimes. Welcome through a mall. Subway has trademarked it, smell the bread, so on and so forth.
So you can protect smells, you can protect sounds. Famously Bic, the pen company has trademarked this. The clicking noise that the pen makes that is protected. Um. You can even protect colors, right? So Target has protected their red color. Coca-Cola has protected the red color, and you can also protect actions.
So famously, Lamborghini has trademarked their kind of suicide doors that open and close in a certain way. So there's all sorts of things you can protect, but the trademark, not just the logos and names. So that, I'll leave our audience with that bit of trivia here. That's cool. I didn't know about all of those different options.
That's pretty cool. Yeah. Well hopefully it is interesting to somebody and it comes in handy on trivia night or something. Yeah. So, yeah, I mean, getting back to patents, I think a question that I frequently get, I don't know about you and your practice Samar, is I often ask my clients when I first meet them, like, why do you wanna get a patent?
What's your goal with your patent? And frequently the answer I get is that they want to prevent other people from copying their invention. So, and the patent doesn't quite do that. Like in order to do that, you have to enforce your patent rights. So Samar, what are you saying when people say that they wanna get a patent to prevent others from copying them?
Yeah, we have long conversation about that. Yeah. As you kind of alluded to Jamie, the patent doesn't give you or prevent other people from copying your invention. It is not that kind of a right. The right is actually bestowed upon the patent patentee, the patent rights holder. That right. Is to exclude other people from the marketplace who might be copying your invention.
So you may be asking, okay, well what kind of right is that to exclude other people? And really it's the right to sue and to accrue damages and to collect on those damages in one way or another. Like monetary damages certainly being one of them. But it's also injunctions, right? You can use your patent to stop other people from physically selling their goods in the United States, for example, if you have a US patent or importing a product into the us, but it's a right that you have to go out there and enforce affirmatively.
The government is not going to enforce it for you, and people are not going to all of a sudden start respecting your patent rights just 'cause you have a patent. You do have to go out there and enforce it. That's the real right that you get, right? Yeah. So hopefully having a patent on your invention serves as a deterrent from other people copying your invention.
But it's not gonna prevent anybody from copying your invention. If they really wanna copy it, they're gonna copy it and hopefully stop when they get a cease desist letter from you, but not necessarily. So, yeah, I think that's one common misconception is that having the patent is automatically gonna stop people from copying you, and it's not.
That's not necessarily the case. That's right. Yeah. When my independent inventor or startup clients raise this as like the primary motivation for getting a patent, we almost always hit the brakes on that conversation and we say, Hey. It's very expensive to enforce this, right? I mean, I've talked about this story in the past episodes, Jamie, but I used to be a patent litigator and every patent case I took to trial, uh, our client spent upwards of $10 million getting to trial, right?
So it's a very expensive road and you need to make sure you've been damaged 10 x that right? Or x that in order to justify those attorney's fees. So that's something to consider and think about. And the other thing I tell my startup clients is that. It is very disruptive to the company. You're startup founders are busy building products, bringing their products to marketplace, and then all of a sudden in you're, if you're in the middle of a litigation, you find that all the key personnel, like the executives and the founders get embroiled in legal argumentation, right?
They get. Their depositions taken, they're cross-examined in court. You've gotta prepare for that. Their all their documents can be discoverable and are probably read by somebody. You know, all your text messages, email messages, everything is up for review. And that could be very uncomfortable for a lot of people.
Very distracting to a lot of people, right? So not something you wanna undertake lightly. Even if you can afford it, it's very disruptive because then your key people whose business is to sell products. For a short period of time or a long period of time, their key business becomes just like dealing with LI litigation.
And that's not what you want your executives and salespeople to be focused on. Yeah, exactly. So then Samar, if it is so, you know, cost and time intensive to enforce your patent rights, I mean, I think for most people it would be like, prohibitively expensive to enforce your patent rights. What like. I guess, you know, my next question as an independent inventor would be, well then what is the point of getting a patent and what, what would you say to that?
Yeah. We'll circle back to independent inventors who are most of the listeners here, but this is what I tell my startup clients in particular, is that patents are signaling mechanism, right, to investors primarily early on that, hey, this company. They have their act together. Like they figured out what is important from an IP perspective in this company, and they're not going to let IP assets just walk away out of the company, right?
So for investors who are investing in a company or a startup, that is a pretty critical key factor, right? That hey. The company is spending all this time and money to build intellectual property. That intellectual property is not just gonna walk away at the end of the door, at the door at the end of the day.
So that's the number one factor, is helping you raise that capital, attract investors, and often it helps you raise capital at a much higher valuation than you could have. Patents. So that's really important. And then for most of my startup clients, they, they get acquired by bigger companies, usually the outcome that they get.
And at this point of acquisition, if you have patents, my clients tend to see an outsize kind of value premium put in into the company that way. So, you know, they get acquired for quite a bit more with patents than they would without patents. Kind of the key things for startups, and then I think independent inventors have additional things to think about as well.
Dreaming. Yeah. Yeah. That, well, that's good to know. So yeah, I mean, even if you're not in a position to necessarily enforce those patent rights, your patent still provides some kind of, oh my gosh, what's the word I'm thinking of? Value to your company? Mm-hmm. And your business. Yeah. And I think for independent inventor, I think the benefit of having a patent is that you can find potential licensees.
You have that protection in place while your patent application is pending to find manufacturers or investors or potential licensees. So I think that's some of the benefit for independent inventors for having a patent or a patent application. Do you have anything else to add? Some are about independent inventors.
Yeah, I think that is really nice. Licensing is kind of the key part of this for independent inventors, like you said. 'cause this is what happens. An inventor will go to a company and say, Hey, I wanna license my idea to you. I think it'll be mutually beneficial. And then the company on the other side. Their whole job is to negotiate this license down, right?
So they wanna pay as close to $0 as possible. So they will come back and say, well, why should we pay you? Right? We'll just make our own and we won't have to share any revenue with you. And if a patent is your first line of defense against that line of. Reasoning, if you will. But also they will just try to beat you down on your kind of licensing rate.
Not every company is gonna do this, but you know, this is just what lawyers do and they try to find ways as to why pay you less. And the patents are a great shield against that and say, Hey, yeah, all this, everything you say, I get it. There is risk out there with a product like this, but if you wanna unlock this revenue, you have to go through us.
So patents are really important there. So not just. As like a binary thing, like you gotta have it, not have it, but also just in terms of getting some additional leverage in that negotiation and being able to hold your price without it getting too diluted. Those kinds of things are also important, something you get with a patent.
The other things that I've seen our clients do very well, I have seen some clients like use their patents and their marketing material as a way to generate and drive initial interest into their product. Right. And I've seen some of our clients do this beautifully where they have a social media campaign, they start leveraging the patent and attract some initial customers to the product, and, and then they turn it into like a social media movement, right?
And kind of a grassroots campaign and, uh. Often they do it off of the backs of the patent, so that's really helpful. I have seen some of my startup clients who have very painful procurement processes. So like I have some clients who sell their software to governments, right? And governments have a bidding process, a proposal requirement process where everybody has to submit their proposal and then like, uh, the government officials will deliberate on those proposals and RFPs and make a choice, select a vendor from that list.
And having patents is hugely valuable to some of my clients where they are able to use the patents as a way to win the RFP and they can distinguish themselves from their competitors. So it can also help with the sales process. Yeah, absolutely. That's good to know. So yeah, I mean, I think we've done a.
Good job of talking about like, what is a patent? What can you do when you get a, once you have that patent, I think, you know, an important thing to mention after, after listening to this episode, it's a good idea to have your goal in mind when you apply for your patent. Like what do you think you wanna do with your patent once you get it?
And I know we've talked about that in previous episodes, so, but yeah, I think we've done a good job of giving an overview of what is a patent. Do you have anything else to add? Samar? Yeah. You know one thing that maybe we can do here for just a couple of minutes, Jamie, is just. Talk about common misconceptions.
So I'll kick us off here, but this is one that always puzzles me and makes me scratch my head a little bit. But I have sometimes people call the office and they're like, I really want, you know, I made my product, it's ready to go. I just, and I'm waiting to sell it. So I'm waiting for the patent to go through, and I'm like, well, you don't.
You know, like a patent doesn't give you the right to sell anything, right? Yeah. You don't need a patent to sell things. In fact, at least in the United States, we encourage you to sell things, right, and get revenue and information from the market, but it's not a right to sell anything at all. Yeah, that's a great point.
I get that. A lot as well. People are waiting for their patent issue before they start marketing and selling their invention. And the patent process takes a really long time. I mean, years, you know, it could take years. So yeah, I always encourage them to go ahead. You have patent pending status. It's great to go ahead and start.
Making and selling your invention. I think the hesitation is, well, what if my patent never issues and I end up putting this product on the market and then I end up not having patent protection? What do you say to those people? Samar. Yeah. It's one of those things where, what is the quote? Like it's better to have love and loss than never to have whatever.
I'd much rather sell something and be successful selling it and make money from it than never have sold anything without patents. Right. So yeah, like that's not great. Because you lose out on the opportunity for all the things that we talked about that are benefits of getting a patent, but being able to sell a product, make a much of money from it, take that as a fallback position if I can't get a patent.
Yeah, absolutely. I think another misconception that I'll talk about is once your patent issues, you have the exclusive right to make and practice that invention, but it doesn't necessarily mean that you're not infringing on somebody else's invention. We've done a whole other episode about patentability versus infringement.
If you want more information about that, you can listen to that episode. Yeah. You know, just because you have the patent, that doesn't mean that you're, you won't be infringing on somebody else's if you practice your invention. Do you have anything to add to that Samar That's such a good. One. I just had this conversation the other day with somebody who was using patent pending made simple.
We have this search tool, and they went through the search results. They were like, yeah, this is amazing. But at the end of it, they were like, but how do I know if I'm infringing somebody else's patent? It's like, well, the way you'd figure that out is called a freedom to operate analysis without that, which can be very expensive without that.
You don't really know, even after you do a freedom to operate analysis, you don't actually know. So there is some risk in terms of how our patent system is set up, right? And some would call it antiquated in that respect. But there's always gonna be a risk, I think, that you infringe somebody else's patent, barring a really high quality freedom to operate searches and analysis.
But even then, I don't think the risk ever goes down to zero. That's just. The reality of the patent process and that's, there have been legal reforms that have tried to curb some of these challenges, but it is an artifact of the way our legal system is set up. Our patent system is set up that. There will always be some uncertainty about whether you infringe a patent or not.
Yeah, absolutely. Do you have any other misconceptions that you have in mind that we should talk about Samar? I'll do the last one here, and this is not so much our clients. I think we do a pretty good job of keeping our clients informed, but every now and then I'll have somebody call in who's been working with another attorney and they'll say, Hey, I filed my patent.
And I was thought I was done with the patent process, but I just got a rejection. What do I do about that? So that's the other misconception is filing it is being done with it, but I say filing it is getting you to the 50 yard line mark, right? So you, you will get rejections most likely after you file the patent application and you'll have to prosecute it and go have some back and forth with the patent office on it before it's granted as normal part of the process.
But don't think that just 'cause you filed a patent application, a non-provisional that you're done with it. Yes, absolutely. Yeah, I do. That does come up every once in a while where people say, okay, I filed my patent application. When am I gonna get my patent? Mm-hmm. And it takes a really long time to get a patent.
I know we've covered this in other episodes as well, but Yeah. Just because you've got the application filed. Doesn't necessarily mean that you're gonna get your patent tomorrow. In fact, you're not gonna get your patent tomorrow. It takes a really long time to go through that prosecution process at the patent office.
Read a statistic recently that like, and we already know this, but 85 to 90% of. Patent applications get rejected, and as we've talked about in other episodes, you have a chance to respond to those rejections and that's the whole patent prosecution process. But there is most definitely gonna have to go through some rejections, some back and forth with the patent office before your patent issues.
Mm-hmm. That's just part of it. So yeah, just, you know, arm yourself and equip yourself with as much knowledge into the process as possible. We've said this over and over in other episodes, but understand your goals, right? Know why you're getting a patent, right? What your goals are with your invention and your product, and how are you planning on making money?
All those things are really important in helping make informed and smart patent decisions, right? Because if you walk into the process thinking, once I file my patent, nobody will copy it. You might be very disappointed with that outcome, right? So talk to your attorney, feel free to call us, ask us questions.
We're happy to answer them, but uh, the more you know, I think the better your outcomes can be. Yes, absolutely. Okay, well I think we covered a lot of great information today, Samar. I can't think of anything else to add, so I think that about covers it for this episode. What do you think? Yeah, I think so.
Thanks again, Jamie. This was fun. I am glad we got to talk about it. You know, this reminds me the last time we talked about this maybe is when your sons interviewed us about what is a patent, so I'm glad to revisit That's true. Yep, that's true. That I have to say is my favorite episode. If you haven't listened to that one, go back and listen to it.
Yes, that is, that is such a great episode. Uh, yeah. I'm looking forward to getting my kids to listen to it too. Yeah. I can only hope they'll ask questions as well as your kids did. Yeah. You know, since we recorded that episode, frequently at dinner, my kids are like, mom, what'd you work on today? And I'm like, well, I worked on, I just kind of give them like a general overview.
It's something different every day. That's why that keeps me on my toes, keeps this job interesting. That's right. I al often tell people that it's one of the funnest jobs in the world, being a patent attorney, and my patent professor at law school used to say that patent attorneys are some of the highest paid writers in the world per word.
So take some solids in it. That. That makes sense. All right, Samar. Well, thank you. I'll talk to you next time. Yes. Thanks Jamie. And thank you everyone for listening. 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 or the management.