Latest / Pitch to Product / When to File a Provisional Patent: A Guide for Inventors
Transcript
- Jack: Welcome back to the Pitch to Product Podcast. I'm your host today, Jack Dalton, Business Development Manager here at 52 Launch. I'm with Kevin Prince, the founder and owner of Quick Patents LLC, a patent IP law firm based in Las Vegas, Nevada. Kevin, it's a pleasure to have you here. Appreciate the time. Kevin Prince: Yeah, thanks Jack. Jack: Absolutely. Well, we're going to get into today. You know, we're going to cover some patent basics, some of the frequently asked questions that we get at 52 Launch, both in initial consultations with clients and clients who are two-thirds of the way through our process who are then thinking about filing for IP. And patents are kind of the big one. I know you don't handle trademarks so much, so we'll we'll stray away from those today. ⁓ We don't tend to deal with a lot of copyright here at 52 launch either. So that's kind of a non-issue. But patents are the big one. So get right into it. You know, we can start kind of at the top. What are the different types of patents? why would I get one over another? I wonder if you could walk me through that. Kevin Prince: Sure, there's you know, there's basically two types design patents and utility patents. There's also plant patents, but I don't think in 22 years I've ever dealt with one of those, so most inventors don't need to know about plant patents. ⁓ when people are talking about patents, for the most part they're talking about utility patents. they're the considered the strongest type of patent. A utility patent protects how something works. You know, it's theory of operation, if you will. Jack: Right. Kevin Prince: Whereas a design patent only protects what it looks like, the ornamental appearance. So the example I give is sunglasses. You know, if you have a pair of sunglasses that has a unique style, but it works the same way as every other pair of sunglasses, for that you would need a design patent because you can't get a utility patent on sunglasses. That's already been done, right? So ⁓ but the style, the unique look, you could certainly get a design patent on. Now Conversely, if you were the first person to invent, say, polarized lenses, now for that you'd want a utility patent. Because you don't care what the competitor's sunglasses look like, if they're using polarized lenses, you want to be able to go after them. You know, that that a utility patent on that protects the way that that filter is filtering the light as it's coming through the lens. And so ⁓ so that would be a utility patent. Jack: Right. Kevin Prince: And so that and and they're not mutually exclusive. I've gotten both utility and design patents for the same thing many times. So it's just that they protect different aspects of the invention. Jack: Right. Yeah, that makes perfect sense and it it makes sense why utility patents would be a little bit more substantial, maybe. ⁓ yeah. Kevin Prince: It kind of actually it's interesting, it kinda actually depends. ⁓ there's some there's some cases where I I like design patents better than utility patents, but we can get into that going forward. Jack: Yeah, actually I'd love to hear an example of of one of those. Kevin Prince: Okay, ⁓ so there's a lot I have a lot of clients on ⁓ Amazon. They're you know they're selling products. One client in particular had ⁓ what he calls the jug plug, and this is a silicon rubber plug for your five gallon water bottle, so you can you know go to the place and fill it up and then reuse it. and you can't get a utility patent on a plug, right? ⁓ because that's already been done. That's a called a cork. Right. Now maybe if it works in a different way, and there were some aspects of it that that were kind of unique, but for the most part, he was just trying to protect the way it looks. ⁓ and as far as Amazon goes, when he, you know, he woke up one day after a lot of success and he had a hundred competitors from China selling the same thing or something very similar. And ⁓ his market share just went to nothing. And so he was able to use his design patents. Jack: Right. Right. Kevin Prince: To convince Amazon to get rid of all those ⁓ those competitor listings. And ⁓ and so sometimes a design patent is a little easier for people to understand. You know, you just look at the the drawings and the offending product, and it's like, yeah, that that kind of looks the same. Whereas if that had been a utility patent, then some Amazon employee would have had to figure out, okay, well, what how do you do how do you read claims? Jack: Interesting. Kevin Prince: you know, on a utility patent. And does this does this claim interfere with this so anyway, there's some times where obviously can get both, great, but there's sometimes ⁓ when ⁓ I I think a design patent is adequate. Jack: Exactly. Yeah, yeah, that makes perfect sense. And interesting. So he was able to file something like a takedown notice with Amazon without having to go through necessarily the traditional legal system. That's nice. Kevin Prince: Yes. Well, let's see. So he had an attorney in LA who ⁓ has coined the term Amazon law. Might be another good ⁓ guest on your program, actually. ⁓ I'll I'll send you his info. But ⁓ and they were able to ⁓ get an injunction against all the funds of all these competitors, and the competitors all just went away because typical Chinese companies don't fight, they just go on to the next product to steal. And ⁓ Jack: Yeah. Yeah. Yeah. Kevin Prince: And then he you know, he was able to get that money for his client. So Jack: Awesome. Well, clearly they work. ⁓ so that's that's a good one. So another question that we get ⁓ mostly in initial consultations is from a client who just went and spoke to a patent attorney and didn't necessarily have a very productive consultation. Basically, the feedback they got from the attorney was a great idea, it may be patentable. But you don't have enough here for me to formulate claims around. You don't have drawings. I can't actually put a patent together. So what does somebody need to have? How far along do they need to be in the development process to A, file a provisional patent? And you can maybe elaborate a little bit on what that is. And then B, actually file a non-provisional. And let's stick with utility patents. Kevin Prince: Yeah. Yeah. Okay. So with utility patents that come in those two flavors, provisional and non-provisional, or what some people call a regular patent application. ⁓ a provisional is like it sounds, it's temporary. It only lasts for a year. And within that year, you have to file the non provisional in order to get the benefit of the provisional filing date. So if you file a provisional Then you have one year to file your non-provisional. I like to think of a provisional as kind of like a placeholder in line at the patent office. You know, you're standing in line for this patent outside the patent office, but you haven't gone through the door yet. It's they're they're waiting for the ticket, which is the non-provisional. And then when you get the non-provisional filed, then you can go through the front door of the patent office, get in line for the examination, and all of that fun. ⁓ hopefully eventually at at the back door you'll have a patent, right? So that's Jack: Mm-hmm. Kevin Prince: That's kind of how I ⁓ I look at it. There's really two advantages to a provisional and one drawback. Other than that, they're they're the same. ⁓ both both types of patents, you need to be able to explain to somebody how you make it and how you use it. And if you can't if you can't explain to me how to make it, then I can't write a patent because I can't put that into a document and then file it because it's not what they call enabling. It doesn't enable someone who's reading this to know how to make it. Jack: Right. Kevin Prince: So ⁓ so you do have to have enough detail to know how to make it. And that doesn't mean every nut and bolt, every resistor in your electronic circuit. No, it just means, you know, functionally, do you have all of the components figured out, how they're gonna work together, how you're gonna assemble them, and what this thing's gonna do. And even the ugliest prototype can be enabled. I mean, the ugliest prototype that works that demonstrates that the product is ⁓ is functional. Jack: Mm-hmm. Kevin Prince: At that point, you could you could file a patent on that. So ⁓ so back to my the two advantages of a provisional and the one drawback. The advantages of the provisional are that they're usually less expensive to start. ⁓ and so from a cash flow standpoint, that can be an important thing because there's lots of opportunity to spend money when you're launching a product, obviously. And then two. Jack: ⁓ yeah. Kevin Prince: The provisional gives you 12 months to kind of put the finishing touches on this product. You know, if you're still tinkering with it, four months from now you might you might have an improvement that you want to get into the patent. And it's not too late at that point because you haven't filed the final patent yet. You're this is still a provisional. In fact, my dad ⁓ he was a ⁓ amazing inventor. He had 35 patents in his lifetime. Yeah, and ⁓ so it was kind of a neat. Jack: Whoa. Kevin Prince: environment to grow up in because you know we were very much encouraged to think outside the box. And he had a dental product he was working on. And I think he filed three provisionals on it because he kept tweaking it. You know, he kept improving it. And so we what we did was we rolled up all three of those provisionals into the same non-provisional. ⁓ that is ⁓ certainly ⁓ doable. You know, there's your non-provisional can reference multiple Jack: Mm-hmm. Yeah. Kevin Prince: Provisional. So every time you come up with kind of a blockbuster idea, you should probably get a filing date for it. You know, file a provisional. If it costs you 65 bucks, then you know, write it up and file it. So ⁓ those are the two advantages of the provisional. The drawback of the provisional is it delays your patent. Like I said, you're just standing at the front door until you file the non-provisional. And that's when the examination process starts on your patent. Jack: Mm-hmm. Kevin Prince: So I mean that can be important, right? If if you know you know people are watching you, they're gonna knock you off right away. Well maybe skip the provisional, go straight to the non provisional, and maybe even pay the extra money to the patent office to speed it up. Jack: Yeah, that's ⁓ that's pretty interesting. Mm mm. Kevin Prince: That's the one that's pretty Jack: Great. ⁓ yeah, we covered the difference between a provisional and a non provisional. ⁓ perfect. So you just started getting into this. At what point in the development process do you genuinely or generally advise people to start this? Because we have our own kind of take at 52 launch, and I could go over what that is, and maybe you provide your feedback on it. Yeah, so generally 52 Launch is geared towards getting inventors and entrepreneurs to revenue as quickly as possible. That's you know something that we do better than any of our competitors that we are aware of. ⁓ and that and that's because we do everything in-house other than IP, starting with design, through branding, marketing, and then. We are the designers and the manufacturers, which streamlines that process from often years down to usually within twelve months of actually having products to sell, which is Kevin Prince: Yeah, good. Yeah. Well it's great. It's great to have when you're designing something, have manufacturing in mind. Right? Yeah. Jack: ⁓ yeah. Yeah, designing and designing for manufacturing are two different practices. And generally, we advise clients to when we get to what we call design review two, which is when we're about to start incorporating the final tweaks that the client wants on their design, on their product, we advise them to Kevin Prince: Two different yes. Jack: Connect with an attorney and start having a conversation about a provisional. Because our feeling is with most of the products that we're getting ready to put out to market, there's something new, they're probably not being closely watched, they're not gonna get ripped off right away. they're not gonna get ripped off until they start making money. And since our goal is to get to cash flow positive as quickly as possible, generally we advise provisional kind of. Maybe a month or two before going into production. Then maybe six months after production starts, so eight months later, as long as you've started selling some units, you've proved the market viability of that product to yourself, then you go and get the non-provisional, you make sure you're fully protected. ⁓ you know, a trademark would come a little bit earlier in the process. But certainly we always recommend that people do searches. ⁓ that's another topic that we get. Question I get a lot is what am I actually paying an attorney to do when they ask me to pay for a prior art search? You know, why can't I just go on Google Patents? Why can't I just do some basic web searches, use AI to make sure that my idea is patentable? So that was a whole lot at you, but Kevin Prince: Well, let me start with this because you mentioned that I don't do trademarks, but there's a reason. I'm a patent agent, I'm not a patent attorney. So I'm an engineer, but I don't have a law degree. So the patent office lets me, as a registered practitioner, I pass the patent bar just like patent attorneys do, and I can represent clients to the patent office just like attorneys do. But so they let me pretend to be a lawyer, but only in this one little area called patent prosecution. Trademarks is not part of that. Jack: Mm-hmm. Right. Kevin Prince: ⁓ write writing a cease and desist letter would would not be part of that. That's a legal ⁓ that's a legal activity. ⁓ helping you with your licensing agreement, you know, that's not something I could do either. But I can do everything patents at the patent office. So in terms of your timeline that you gave, I think that that's probably appropriate because ⁓ you you once you know what the kind of the final design is gonna be and you're not adding Major or significant features, ⁓ then at that point it's probably safe to do the provisional. And the way we work is if if you have us write your provisional, then when it comes time to file the non provisional, I don't charge you the full price for that, I just charge you the difference. So so the the provisional, because we're doing a lot of the same work that's going to go into the non provisional. So we apply those funds towards the non provisional. And it doesn't have to be a year. Jack: Right. Kevin Prince: Right, if you launch the product and all of a sudden there's a copycat, but you've only been patent pending for six months with your provisional, you can hurry up and file a non-provisional right away. You don't have to wait the whole twelve months. So that's another reason I like the provisional. You know, you're not locked into a delay. You can jump in with a non-provisional ⁓ as soon as you feel the need to. Jack: Right. Kevin Prince: So I think it's prudent to do a search ⁓ if you're if if you're pursuing a utility patent. I don't usually recommend we do a search on a design patent. And the reason on a design patent is because ninety five percent of the time they go straight through the patent office anyway. We don't have the prior art issues on design patents that we do with non provisional or with ⁓ utility patents. In fact With utility patents, it's the opposite. 95% of the time they get rejected because of prior art. And then you've got to argue with the examiner, and hopefully at some point, you'll be in the 65 to 70 percent of patents that do get issued. ⁓ so that's what the and the reason you do a patent a patentability search is because you want to make sure that there's not some real obvious dead ringer out there that was, you know, patented three years ago. Jack: Okay. Kevin Prince: And you don't know about it because they never made it to the marketplace. People always say, ⁓ I I've looked everywhere, I haven't seen it. No, you haven't looked everywhere if you haven't looked into the patent literature. And so ⁓ I don't really care who does the patent search, but you gotta you gotta do three types of searches. ⁓ it you have you everyone starts with a keyword search, and so do we. But then you also have to determine what are the relevant classes and subclasses, because Jack: Right. Kevin Prince: Some patent practitioner, you know, you might call it a widget and someone else calls it a thingamabob. And if you don't search thingamabob, you're gonna miss it on a keyword search. So you gotta have class and subclass, right? And then also on your relevant A list patents that you find that are the closest, you wanna do forward and backward reference searches. And if you do that, ⁓ that's a pretty thorough search. And in fact, I have an online class. I don't know, maybe you can link to it, but I have an online class that teaches you how to do that through Google Patents. So I don't really care the search. Yeah, I don't care who does the search. I just care that a search is done because the la the last thing I want you to do is spend thousands of dollars on a patent application, and then boom, they reject it because of one patent that is, you know, has everything that you have that we could have found. That's how I got in this business. I'm an inventor. Jack: We will absolutely link to that. Kevin Prince: And I had this idea for a brainwave reading alarm clock, because I was sleeping through my alarms. And I thought, why why is this thing trying to wake me up at a specific time? Why not try to wake you up at your peak sleep cycle when your brain is, you know, in REM state, when your the cycles per second are the highest? And that's like a 45 minute range. And so I found this ⁓ patent agent locally in Orange County and and he did a search and he found the exact same thing patent did 10 years earlier. Jack: Yeah. Right. Kevin Prince: And it was ⁓ it was very eye-opening. I was like, wow, look at all the detail. It was like reading a patent on my device, it just didn't have my name on it, you know. And of course I was bummed, but you know, then I just went on to my next product. So ⁓ you know, that it's important to make sure that there's no dead ringers out there. Now the patent office is probably gonna find something anyway, so a search is not like Jack: That is strange. Kevin Prince: You know, this is a guarantee that the patent office is gonna approve this. That's not what that's not how they work. ⁓ in fact the MO at the patent office is pretty much we're gonna reject everything once. And then and then you can argue, hopefully have a reasonable examiner and you can come to an agreement as to what the claims are gonna Jack: Yeah. Cool. Yeah, well, that's kind of a good segue into one of my next questions, which is, you know, if if your idea for a brainwave reading alarm clock had been patented 10 years earlier, almost to the exact specifications that you were thinking, that tells you that you know there are 19 million issued patents, some somewhere in that range. I'm sure I'm off. Okay, 12. So Kevin Prince: ⁓ no, we're in the twelve millions right now. Maybe worldwide, probably worldwide. Jack: Yeah, maybe, maybe that's where I got that number. Clearly, many ideas, many ideas that people come up with. They get hit by a lightning bolt. It's like, ⁓ my God, this is the best idea ever. They go on to find that something like it already exists. So, this is another question we get a lot: is how do I let's say somebody is doing a patent search on their own? What are they looking for? to disqualify themselves from being able to get a patent or kind of conversely, what does their idea need to have to make it patentable? Kevin Prince: Good question. I get that a lot too. And I get that a Jack: Right. Mm-hmm. Mm-hmm. Yeah, it took me ⁓ a couple of tries to get my head around those novel and non-obvious ⁓ thresholds that the US P TO has. But that was a great explanation. I think you made it pretty clear. ⁓ you know. Yeah. Right. Yeah. Right. That was a great example. That makes a lot of sense. So a lot of our clients aren't necessarily putting a product out there that's totally new. So when our design team is looking for ways to protect the product with intellectual property, they're more often looking at a component of the system or the structure of the product that, for instance, you know, if Our team has designed some little widget that goes inside the product that allows us to manufacture it for 20% less. And protecting that, But to us, it makes sense to protect that piece because it's protecting one of your competitive advantages in the market. ⁓ And rather than trying to convince the USPTO that you're your product is totally new and different, which many times isn't possible. You can just go really simple and it's more straightforward and and more effective sometimes. Right. Mm. Yeah. Interesting. Well, one kind of final topic I wanted to touch on we get a lot of clients whose ⁓ goal when they first talk to us is to license their product. And we live in the world of consumer products for the most part, and there's a pretty solid theme ⁓ of over the last 20 years, longer than I've been here, it's become harder and harder to get a licensing deal on a consumer product, specifically those that are pre-revenue. So people pursuing licensing deals when they haven't sold a single unit yet, we've seen the success rate of that go to way below 1%. And it's still a huge goal of most inventors to think, all right, I had this great idea. I've you know got a prototype I can show people, I've got some market research. I should be able to go get a licensing deal on this in five minutes. And it's kind of a coaching moment for us a lot of the time where we have to get them to see that it's so much easier to get those deals if you've sold 1500 units yourself. Like what I say to people sometimes is, you know, if you watch Shark Tank. How often do you see somebody get a deal on Shark Tank with zero dollars in revenue? Like it's it's pretty rare. It's happened, but it's Yeah. I think we hit on a lot of the points that come up frequently in my conversations with clients or prospective clients. ⁓ you know, If you've got a got a product idea, reach out to us, reach out to Kevin. We'd love to talk to you, hear about your idea, what the problem it solves is, and hopefully we can help. So Kevin, thank you again for joining us. Very valuable to get your feedback ⁓ And yeah, thanks for watching.