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Intellectual Property Lawyer Reveals The #1 Mistake Entrepreneurs & Inventors Make Before Filing · Pitch to Product

• Jack: Welcome back to the Pitch to Product podcast. I'm Jack Dalton, the business development here at 52 Launch. Today I'm here with Scott Seely. Scott, if you can introduce yourself, thank you for being here. Scott Seeley: Yeah, happy to be here. So my name is Scott Seely. I'm a patent and trademark attorney. I've been practicing for a little over 10 years now. I started my practice at Kenobi Martin Zollstenberg, which is one of the largest boutique IP firms in the country. There I represented a number of large companies from Starbucks and Samsung, prosecuting patent applications for those companies and doing some litigation as well. A few years back, I decided to open up my own firm, eSkate IP. And so I bring that large firm expertise to clients of all shapes and sizes now. I work with some independent inventors. I work with startups and I continue to work with established businesses, helping them identify their protectable IP and working to protect it. Jack: Awesome. Perfect. Yeah, that's it's a great background for the the clients that we work with, somebody who has that bigger law and bigger client corporate experience, but has kind of moved in the direction of working with solo inventors and smaller entities because that's what they like to do. So awesome. Thank you again for being here. today we are going to cover some patent and trademark basics. And if we've got time, we'll get into how you can think about trademarks and patents in the context of your business plan, whether you're thinking about getting to a certain valuation, maybe having a successful exit. We'll talk about all that and more. to kick it off, we can I'd like to start on trademarks because the 52 launch, pretty much all of the brands that we bring to market are trademarked. either before they get to us or while they're in our in our process. whereas patents are a little bit more rare and there's kind of more topics to touch on there. So I guess, you know. One question I get that's that's super basic is what does the T mean? When can I start using it? How does it differ from the R in a circle? Yeah, we'll we'll start with with the basics here. Scott Seeley: Yeah, absolutely. So I, it makes a lot of sense that a lot of your clients come in already having trademarks or needing trademark protection. think generally when people are starting a business, getting a trademark for your business name is one of those extremely high value steps you can take to protect your rights in that business name and your branding and to avoid really costly obstacles in the future. It's the mechanism by which you establish exclusive federal ownership over your name. And getting that right early on can really prevent obstacles down the road, such as getting a cease and desist from a prior user causing you to rebrand after you've been using that name in commerce. As far as using the superscript TM versus the circled R, they're both great. They mean different things. If you have a superscript TM, that just means that whatever you're using is you're using that subject matter as a trademark. It's putting the marketplace on notice that this is the slogan, the brand name, whatever it may be that I'm using. And by using that superscript TM, I'm signifying to the market that I'm using it as a trademark. When you file a trademark application and you get your trademark registered with the trademark office, then you're the holder of a federal trademark registration and now you can use that circled R, which just means that that trademark is federally registered. My favorite example of seeing this in the marketplace is the Ford Mustang Dark Horse. And if you look that up on Google, you'll see that they're using both the superscript TM for Dark Horse and they're using the circled Jack: Okay. Scott Seeley: R for the Mustang. And there could be a variety of reasons for that. I don't want to opine too broadly on their legal strategy. But a lot of times if it's difficult to obtain a federal registration or if you just haven't gone through that process yet, it can be enough to use that super, the superscript TM to just alert the market that you're using this as a trademark. And you get some common law rights from using a name in commerce, but you do not get the whole bucket of rights unless that mark is registered with the trademark office. Jack: Right. So you can start using the TM as soon as you start selling under a name. Scott Seeley: Yeah, you absolutely can. And I generally recommend that you do the when you start using a name in commerce, the generally the law understands that people are going to go out there and they're going to do business under a variety of names. And there's a certain notion of justice and fairness that if you start using a name first, you should have some rights in that name. Those those are called common law trademark rights, and they're substantially more limited than the codified rights that you get for registering a trademark. For example, you're not going to be able to sue somebody under common law rights. You're going to need to register that trademark force before you have access to the court system. Common law trademarks are regional. You only get it in the region that you're using the mark that can get kind of murky in the digital e-commerce age where you have a website. But generally there's a notion of fairness that if you go out and you use a name in commerce, you get some rights in that name. They're just not nearly as Powerful as the rights that you get from a federal trademark registration there's also a sword and shield of IP law in general and Common law trademarks are far and away more of a shield than a sword. You're gonna have very difficult time preventing someone else from using your name in commerce But you can if if you started using a name in a certain region of the United States and you've been using it for years and some new person decides they're going to make a business and then they're going to try to force you out of your name. You can rely on those common law rights to try to protect your ground, but you're going to have a very difficult time expanding into new marketplaces or stopping that new user from using their registered trademark in areas where you don't have a established commercial practice. Jack: Gotcha. Yeah, that makes sense. yeah, the I like the sword and shield metaphor. That makes that makes perfect sense. So I think that that touched on everything I was looking for there. Another question that we get all the time is: so and I at the pro in the process of 52 launch, we'll do a couple of n rounds of naming until a client is has a name or two or three that they really like that they feel fits the brand. know, registers with their target audience. And when we have somebody decide on a name, generally we put them in touch with an attorney. And we don't usually start on the logo development until we've heard back from the attorney that this name is likely trademarkable. And so that brings up the question of well, why don't you just do the logo and the trademark together? And that way I can file them together. So there's, you know. I think a lot of people, it sort of makes sense that you could file your trademark your name and your logo at the same time, but that's not the case, right? Scott Seeley: It can be the case. Jack: Or sorry, in w in one application. Scott Seeley: Gotcha. You definitely cannot do it in one application. We should chat a little bit about when you're selecting a name, how you select a name that's going to be well protected by the trademark system. Jack: Yeah. We can get into that. Scott Seeley: But as far as. As far as whether you want to protect your logo and your name at the same time, I generally recommend that you do. There can be strategic reasons not to. If somebody. So to take things back a couple of steps, you're right, you cannot do it in the same application. You get one trademark per application. And technically speaking, a logo and a name are two different applications and they result in two different trademarks. That being said, you can file them at the same time and many businesses do. So when I was representing Starbucks or a company like Nike, they'd come to us with a... a new product that they're going to launch, we would protect the name of the product, protect the name of the brand, protect the slogan. You can even go as far as protecting a color. My favorite example is Reese's Chocolate has trademarked the color orange with respect to confectionaries. So you can get really wild with what you protect. And if you're a large institutional client, generally they're going to file trademarks on every protectable aspect of their brand. When it comes to representing smaller startups or independent inventors, those startup resources tend to be extremely valuable and you don't want to bury yourself in legal fees and prevent the actual product from launching itself. And so there I would recommend that we focus on the biggest bang for your buck, highest value investments that you can make. And far and away, the highest value investment you can make in trademark is going to be protecting your brand name or the biggest Identifiable feature that's going to be facing the client. So either usually the brand name or the product and the reason for that Jack: Right. Scott Seeley: is Your brand name and your logo are two different kinds of application The name is a standard character mark and the logo Jack: Mm-hmm. Scott Seeley: is going to be a design mark the standard character mark protects the subject matter However, it's presented and a design mark protects only that stylized depiction. So one example would be coca-cola the name Coca-Cola is a registered trademark, but that cursive immediately recognizable Coca-Cola stylized name is also a stylized design mark. And so for an infringer to fringe on the stylized design mark, they have to present the words Coca-Cola in that same stylized way, which is a much narrower scope of protection than the standard character mark Coca-Cola, which is however it's presented, any style, any design, capitalization or what have you. That standard character mark is the broadest form of protection. So it's the highest bang for your buck and it surfaces major. So back to that sword and shield, you can get the broadest scope of protection to capture potential infringers with a standard character mark. But from a defensive standpoint, you can surface likely obstacles that you're going to face down the road using that initial application to know that your brand name is or isn't available. And that way when you go out and you use that name in the marketplace and start acquiring Goodwill, you know that you own that brand. You're not going to get a cease and desist from some other party down the road forcing you to change your name, which can be extremely costly several years into running the business. Jack: Right. Right. Yeah. That makes perfect sense. Scott Seeley: Thank Jack: So to go back, to take a step back into what goes into coming up with a name that is trademarkable, we've covered this a little bit in the past. So if you're looking for a more in-depth analysis, check out some of our other videos. But if you could go over, I think USPTO has four or five sort of designations or descriptors that apply to names. Am I making this up? Scott Seeley: No, you're absolutely right. They call it the spectrum of distinctiveness. And the more arbitrary and fanciful your mark is, the stronger your rights in that subject matter are and the more likely you are to get it protected. And the more generic or descriptive a mark is, the less likely you are to be able to get it protected. This is obviously at tension when people are trying to come up with a name for their business. Typically they want something that they can snag some goodwill. It has an immediate connotation to what they're selling. It's somewhat descriptive. So it sticks out in consumers mind and consumers know what the brand represents. That's great from a branding and marketing perspective, but it's somewhat at issue with trademark law where if a name is too generic or too descriptive, it can be difficult to protect. And so an example would be California pizza kitchen. I'm sure their attorneys wish they had picked a different name because that took a tremendous amount of effort to eventually get that name registered before the office versus because it's simply descriptive for its pizza being made in California style. They had a lot of pushback from the patent office. It's always possible to try to find a way to protect a name. so eventually they were successful. happy to chat about how you get those names protected, but it's much easier to come up with an arbitrary fanciful or simply make up a word. So trademarks like Kodak or Google, where they just made up a word, those are the most Jack: Yeah. Scott Seeley: protectable, but obviously you're not going to be able to borrow consumer goodwill from terms that consumers already know. Similarly, names like Apple for like Apple brand computers. Apple has nothing to do with computers. That was very easy to protect. Jack: Under Scott Seeley: when you start looking into something like copper tone suntan lotion, that gets more descriptive, but it's considered by the office to be suggestive because it requires Jack: Right. Scott Seeley: some element of imagination to tie the product to the mark that they're using to protect it. And then you get to like California Pizza Kitchen where they had to fight tooth and nail for that mark. you... So not to get too into the weeds, if your mark is generic, Jack: Yeah. Scott Seeley: It can't be protected at all. And if it's too descriptive, you're going to run into a bunch of obstacles. And that's where California pizza kitchen landed. You can, there's still levers that you can pull to try to get those marks protected. And the general way you do that is you show that you've acquired distinctiveness. So through advertising effort or continued use in the marketplace, you have come to cause consumers to associate that mark with your brand, not just the descriptive terms at large. Threshold time is typically about five years, but using a large amount of evidence of advertising or consumer acknowledgement, you can sometimes shortcut that and get production quicker, but it's much easier and cheaper to just pick a more distinctive arbitrary fanciful name. Jack: Right. Yeah, that's interesting. So is there at the USPTO sort of a formula they go through to figure out if a name has acquired distinctiveness? Is it like if I have 10,000 Google reviews or like do you need testimonial? What what goes into that? Scott Seeley: the number of Google reviews you have is helpful. it's essentially a fact sensitive analysis of whether there's sufficient evidence to show that consumers have come to associate that mark with your brand rather than the descriptive terms at large. I have been successful getting these names protected when the brand has a long history of advertising expenditure. when the brand has a well established web presence, when there's unsolicited media attention is another great indicator. Having a bunch Jack: Yeah, that makes sense. Scott Seeley: of Google reviews works. So it's very fact sensitive. It depends on the case, but web presence, unsolicited media advertisements or media acknowledgement, those are some of the better evidence that you can rely on. But yeah, you can also show them your advertising expenditures. But, and I've been successful relying on Google reviews. I had a client who had a lodging business in a certain region and we were actually able to get them protection for that region's name lodging. And we were able to do that by showing that they'd been in practice for I think it was seven years and they had like a thousand plus five star reviews. And we were able to get an extremely contentious name allowed at the trademark office. So it's fact sensitive and it depends on the circumstances, but there's a variety of ways that you can try to get it to work. Jack: Yeah, that's cool. Great. Yeah, we can kind of wrap up trademarks here with, you know, the answer I give when clients ask me, Well, why do I need a trademark? And then I'll let you give the actual answer, which you've kind of touched on already. But Not being an intellectual property expert, when our clients ask me, you know, you're recommending that I go spend X amount of dollars with an attorney, what am I actually getting out of this? One of the things that I point to is that trademarks, and it's now I believe just a trademark filing is required to become listed on Amazon's brand registry. And you know, since we're doing a lot of e-commerce here at 52 launch. It makes sense that we're selling a lot on Amazon. It's the biggest marketplace in the world. And if you're not selling on Amazon, you probably should be. but the brand registry unlocks all of these kind of options for your actual product listings, like a video. There's some other stuff. And the only other way to access that is without a trademark, is to sell for two years and be in good standing or something like that. So a bypass is kind of a long waiting time. It also makes it much easier to get copycats kicked off Amazon, from my understanding, if your brand is trademarked and you're in the brand registry, because Amazon doesn't want to get into legal disputes over allowing people to infringe on other people's intellectual property rights. So it makes sense that they're pretty good about working with the trademark brands against the non-trademark brands if there's some infringement there. That was a longer answer than I probably should be giving people. why do trademarks exist? Scott Seeley: Yeah. So the being able to get registered on the Amazon brand registry is a massive boon to businesses. And I definitely recommend that people take advantage of that opportunity. from a IP law perspective, there are, I think that... When I'm representing clients, a lot of the value that I think I can add to the client's business is avoiding obstacles down the road. And for me, one of the biggest problems that I've seen is somebody starts a brand, they've picked a relatively descriptive name and it turns out down the road that they're unable to protect that name or it turns out that somebody else is using that name. and then they have to go and rebrand and they lose all the goodwill that they've established in their business up to that point. So from my perspective, a major reason to get a trademark is to actually get federal ownership of your name. When you register your business with the state, the business might, the state might do a cursory search to make sure that there's not like two identical business names being registered. But the states, first of all, that's gonna only be within that state and the state's not super interested in preventing confusingly similar names from being used. When you get a federal trademark registration for your brand name, you get federal ownership of that brand with respect to those goods and services across the nation. So you know that you're not going to get cease and desist down the road. You know that you own the name. You know, if somebody else starts making a competing product under the same name or a confusingly similar name, there's action that you can take to squelch that activity. whether it's on Amazon through the brand registry or through sending a cease and desist letter, there's things you can do to own that name and take action with respect to your ownership in that name. And so I think that's super important. And. Jack: Right. Yeah. So the the sword is protecting anyone else from using your name, from copying your brand, from pretending to be you. And the shield is you don't have to potentially completely rebrand to three however many years down the road when somebody finally figures out, wait a minute, these guys have been using our name for the last however long. And that would be a big step back because branding is important. in a pretty contested e commerce space, like yeah, I've heard the word source identifier used around trademarks as you know, kind of the the definition almost. But yeah, that Scott Seeley: Yeah. So if there is a senior, if you're starting up a business and there's a senior user using that same name or a similar name, when you go to file a federal trademark registration and examining attorney is going to pick up that application. They're going to do a search of the same and confusingly similar names. And so they're going to surface those conflicts early in the process. And you can file a trademark before you've begun using the name or after you're already using the name in commerce. So if you start Jack: Right. Scott Seeley: the process early. you can surface those potential risks and mitigate them before you've invested a bunch of money in branding, marketing, printing, manufacturing a product with your brand name emblazoned into the product. It's better to service those issues at the Jack: Right. Scott Seeley: planning stage rather than later down the road. And if there is a senior user, they're likely to cause issues for you down the road. you're not going to. steal their name from them by filing a registration, but you can service that issue. You can decide whether you need to rebrand or you can have a clearance opinion of, well, the names are similar, but our goods and services are so different that we're unlikely to have a problem. The example there would be like Delta Dental versus Delta Airlines. So you're absolutely Jack: Right. Scott Seeley: right. A trademark is a source identifier for a particular good or service. And so if the name is similar but the underlying goods and services are so dissimilar that there's no likelihood of consumer confusion, then it can be possible that those two marks exist concurrently in the marketplace because at the end of the day these marks are ultimately a source identifier and they operate on a likelihood of confusion. So that's really the main goal is owning the brand and preventing confusingly similar uses elsewhere in the marketplace. whether it's in an Amazon brand registry or just in the marketplace at large. Jack: Yeah, perfect. All right. I think we can w wrap trademarks up there for now. I'm sure we'll we'll get even more into them in later episodes. But let's move on to patents because those are sometimes more exciting for people anyway. Let's start with the three types of patents, of which we'll only focus on two. and I'll come up with some some frequently asked questions as you're going over. Over those. Scott Seeley: Yeah, so really there's two types of patents that you can get and that's a utility patent and a design patent. When it comes to utility patents, there's an optional precursor step where you can file a provisional application. That application just sits at the office. It doesn't publish. It doesn't get examined, but it draws a line in the sand and lasts for one year where you can convert it to a utility application. And then that does get examined and has the potential to issue as a utility patent. And so we get a lot of inventors that come in and say, I want to get a provisional patent on this subject matter. And it's always a conversation of there's no such thing as a provisional patent. It's just a precursor step to filing a utility application. So that precursor step can be valuable. You get priority for what's disclosed in the provisional, but when you go and do that conversion to a utility application, if you add a whole bunch of new subject matter, that new subject matter isn't entitled to that priority date. So it can be a valuable precursor step, but can also open up the attack surface for future challenges against that patent. So it's a bit of a give and take that people should walk that path knowingly. When Jack: Yeah, absolutely. Scott Seeley: we look at the difference between a utility patent and a design patent, They're both extremely useful, but in different ways a utility patent application is useful for protecting a novel non-obvious invention a function a feature a method of making something an inventive process That's really the domain of a utility patent When we look at a design patent, it's for the ornamental appearance of a object You can be strategic about the way that you file design applications. And sometimes you can do a little bit of an end run on some functionality because form tends to follow function. But to kind of distinguish the two broad categories of patent, if you've built a better mousetrap, if you have a better catching mechanism, a better method of manufacturing the mousetrap, a better method of using the mousetrap or trapping mice, that's all the domain of a utility application. Going back to kind of the Coca-Cola example, a lot of times there's subject matter that's difficult to protect because the underlying functionality is not new or non-obvious, like storing liquid in a bottle. So you can Jack: Mm-hmm. Scott Seeley: use a design patent to protect, for example, Coca-Cola's characteristic silhouette of a soda bottle. You can protect that with a design patent because holding liquids in a bottle isn't new, but your ornamental design for how you're doing it can be new. This can be extremely useful if you have a ecosystem and you don't want competitors working in your ecosystem. I've seen this used with printer cartridges and for example, like a Keurig machine. If you have a device Jack: yes. Scott Seeley: and the overall device is generally known, but you're making your own version of it and you don't want other people making add-ons or accessories that work with your device, you can use design patents to protect the... like 3D configuration of devices that interwork with your product. So whether that's a Keurig machine where the concept of brewing coffee isn't really new, but you have a specific receptacle that fits a specific capsule, you can design, patent your receptacle and the capsule to prevent other people from making competing objects that are going to try to work in your ecosystem. And printer cartridges have done this as well, where printing, injecting ink through a cartridge isn't new, but you can protect the shape of your slot, the shape of your cartridge, because after at end of the day, those are ornamental design decisions. And then if anybody wants to make a cartridge that fits in your slot, they're going to need to infringe that ornamental design. It's not perfect. Jack: Mm. Scott Seeley: There's some caveats that you need to be aware of, but you can use both really effectively. And I really like design patents when the Jack: Yeah. Scott Seeley: utility prospects might be a little bit shaky. because they go through a different examination pathway that can sidestep a lot of those obviousness challenges that a utility patent's likely to face, and they're a lot less expensive to prepare. So Jack: Right. Scott Seeley: I think people sleep on design patents, and I think that they absolutely can be used strategically to protect some unexpected features of the product. Jack: Yeah, yeah, that was a great example. got me thinking. So yeah, that was good. sorry, thinking about K cups and licensing. Scott Seeley: Hahaha Jack: yeah. So some more of the questions that that we get. you know, the big one is how do I know if my design can get a utility patent on it? So you talked about novel. Which means new and non-obvious, which I'll let you explain in more detail because it's more complicated than it sounds. yeah, oftentimes with 52 launch products, we're not necessarily looking to get a utility patent on the entire product. obviously a design patent would be, but with the utility patents that we've seen in the past, specifically the ones that We think have worked out the best. It'll be, it won't be the whole widget. It'll be a widget within the widget that allows us to, for instance, manufacture it at a 30% discount compared to the most popular products on the market that would be competing in the same product category. And you know, that can be pretty powerful for protecting your edge if your edge is price in the market. Scott Seeley: Yeah. A lot of strategy goes into trying to decide whether you want to file a utility application and if you do what you're going to file on. And there is a tremendous amount of opportunity to make some really obscure and unexpected mistakes that can cause real problems down the road that you're not even going to know about until you go to enforce the patent. to take several steps back and kind of start at the beginning. How do you even know whether this is something that's Jack: Right. Scott Seeley: worth filing on? That's really a subjective decision that's based on your risk tolerance and what currently exists in the marketplace. When you draft a patent application, it's going to get assigned to an examiner who... is going to be a subject matter expert in that field. And they're only going to be examining applications within that group. So they're going to have a pretty good idea. They're going to have examined a large number of applications that look a lot like yours. And they're going to know where to look for prior art, what that prior art looks like. When they do a search, they're going to examine for a bunch of requirements. The big battleground for most inventors does tend to be obviousness. So they'll do a search, they'll flag any reference that discloses exactly what you're already doing is gonna be a novelty destroying reference and any combination of references that they can combine using no more than common sense will be an obviousness challenge. Obviousness is not there to try to denigrate the product. We have this conversation with inventors all the time. Obviousness is a term of art within the patent landscape and it has a specifically codified meaning that's not the commonplace meaning. And essentially it's, we merely combining known elements according to their traditional function to yield purely predictable results? And if so, that's not a good sign for obviousness. And we're gonna wanna dig deeper and try to figure out what arguments we can make. You're absolutely right in generally speaking, You don't want to file a utility application towards the product as a whole. There's 13 million some patents out there and innumerably more applications and just general public disclosures out there. And when the examiner does a search, the entire written work product of humanity is available to them. So generally speaking, the broad concept of the product at large is generally going to be found in the literature. The way that you start narrowing this down and circumventing these challenges is you look at your product and you identify the inventions that were required to bring that product into reality. And usually when you look at a product, there's a multitude of different problems that needed to be solved to make that product real. And I would generally file an application towards the solution to those specific problems. rather than the invention as a whole. And so those solutions could be an improved method of making the device. It could be a problem that needed to be solved to make two disparate pieces of technology work together within the device or anything of that nature. It's helpful because it still protects the product at large because if a competitor wants to make a competing product, they're either gonna need to solve that same problem and use your solution, or they're gonna need to come up with their own solution to that problem, and then they're contributing to the work product of humanity by disclosing another way of solving that problem. So this is an area where inventors frequently get tripped up with, and they very frequently draft at the wrong level of abstraction, and they chat with their attorney about the wrong level of abstraction. So when you go through the strategy process, and you're trying to decide, is this something worth filing on, I think a real conversation that needs to be had is what literature exists out there that we're gonna teach somebody how to do this and what technical problems did you encounter when you started making this product and how did you solve those problems? Was it just pulling a solution from an existing reference or did your team need to put some research and development effort into solving it? And if so, protect that solution and the foreseeable ways that other people might try to solve that. And that's a really good first step. There's a lot of additional steps, but that's a much better place to start than I want to protect mouse traps as a whole. Jack: Right. Yeah, that's a that's a fantastic answer and something that I hadn't really thought about before. I'm sure our design team does that as they're you know bringing new products into existence. I will remind them to, if they are not doing that currently, to record those types of thoughts of what problems are we solving and how. yeah, that's very interesting though. That's a that's a great way to think about it. Scott Seeley: Yeah, whenever I file a patent application, I'm always expecting an obviousness challenge. And I wish that the world worked as predictably as examiners love to assert that it does. But whether it's software, Jack: Mm-hmm. Scott Seeley: whether it's physical products, it's a little bit less impactful in biotech because in wet sciences, it's known as an unpredictable art. So you have a little bit more wiggle room. especially with software and physical products. Examiners love to say reference A exists, reference B exists. It would be obvious to simply combine them. And I wish things just worked together, but different pieces of technology rarely just work together. There's almost always Jack: Right. Scott Seeley: some technical problem that needs to be solved to mesh these disparate technologies. And that's a really fertile ground to mine for patentable subject matter. And people frequently draft just one type of claim. So if you, maybe you've meshed those pieces of technology and so now you've solved a problem of how you make them work together. Did you think about protecting, is this going to give rise to a new manufacturing method? Because that's separately protectable as its own patentable subject matter. Is this going to give rise to a new method of using the device as a whole? Because then that also is a whole separate ground of protectable subject matter. And so being really thoughtful and strategic about what are we protecting? When we protect this, are we opening different avenues of protection in other areas? That can be super valuable. So often I see someone get a successful patent through, but they've only protected one scope, maybe the solution of making those technologies work together. And they neglected to protect methods of making it, methods of using it, or other ancillary features that. can be really powerful from a portfolio standpoint to read on competitors and exclude others from making your subject matter. And from a enforceability standpoint of making the asset more difficult to challenge after it's been issued. Jack: Gotcha, yeah, that makes sense. So is it possible to kind of protect the let's call it a product on multiple levels in a single application, or are we more talking about a patent portfolio? Is that is it common to have multiple patents on the same device? I would assume it would be. Scott Seeley: It is extremely, so yeah, this is a huge mistake that inventors make all the time. They think they're going to monopolize the entire field through one patent and it almost never works that way. It is extremely common for one product to have a multitude of patents that protect it. And there's a large variety of ways that you can go about doing that. Sometimes it makes sense to file separate applications towards the different inventive problems that needed to be solved. And sometimes it makes sense to file one omnibus application, disclose the technology as well as you can, and then continue to mine that subject matter through something called continuation practice. Right now, there are, there has been some examiner guidance in the last few months that is incentivizing examiners to issue what's called a restriction requirement, and it's causing some consternation in the field. This has always been something that examiners would do. You file an application you Somebody invents a better mousetrap. So you draft up in the application. This is what the mousetrap is This is how you make it This is how you use it when you file an application you get a certain number of claims you get 20 total claims three of those get to be independent and so best practice is usually to Draft a variety of different types of claims. So you'll have a claim and one independent claim group set towards the mousetrap and the physical device itself, one group towards the method of making it and one group towards a method of using it. And examiners have frequently enjoyed restricting out those into three, they'll issue what's called a restriction requirement. And they say that it would be just too much of a search burden. These are three distinct inventions and they need to be examined separately. It's a really helpful admission from the office to get. So usually you go, okay, thanks for acknowledging that these are non-obvious variants of one another. For examination, we're going to pursue the most commercially valuable embodiment upfront, just from a cost savings perspective. And so we'll go after the mousetrap as a whole. You can then pursue those remaining groups of claims as a divisional application. And so you can get three patents towards that one invention from that one application. Similarly, Jack: Cool. Scott Seeley: you can file an application, you can do claims towards the mousetrap as a whole. right before that patent issues, you can file a continuing application to try to broaden out your claim scope or claim other aspects that are still within the original disclosure. And so this is a great way to get a portfolio of patents from one drafting effort. And so that is generally the recommendation that I would give to most startups and independent inventors is draft one well-written disclosure that covers the product as a whole and continue to mine that same specification for subject matter. keep a continuation opening. also has strategic advantages for if somebody starts trying to design around your claims, you can use those continuing applications to target those design arounds, assuming that you have a foundation for that in your specification. That being said, larger companies, for example, like Microsoft for Windows, they have innumerable patent applications separately drafted towards different aspect of like the Windows operating system. So sometimes if you have really distinct, meaningful inventions, it can make sense to file multiple applications toward those multiple distinct inventions, even if it all ties to one product. Jack: Right. Awesome. Well, you know, we'll we'll touch on some of the the super duper common questions here, which you know we can't I'm sure you can't avoid either. how much do these generally cost and how long do they take before you can actually hold them in your hands? Scott Seeley: Yeah, so if we're talking about a utility patent application, you're likely looking somewhere in the ballpark of eight to $16,000 in attorney drafting fees. The government is gonna charge a filing fee of about $1,200 and you're probably gonna incur some drafting fees, usually on the realm of 500 to $1,000. The fees associated with drafting a utility application are really directed towards the scope of the drafting effort and the complexity of the subject matter that you're dealing with. So a relatively simple mechanical invention, if you have like a better fish hook, I would expect to spend probably around $8,000 in attorney drafting fees for a simple mechanical invention. On the flip side, I have prosecuted applications towards like, Like if we're talking about pharmaceuticals, whether it's like small molecule chemistry or like a large molecule biologic, you're likely looking in the upper 16 to nearly $20,000 in attorney drafting fees. For a highly complex software invention, you're likely looking at 12 to $14,000. Software applications are susceptible to a whole nother area of examination called one-on-one subject matter eligibility. And so extreme care needs to be taken when you're drafting software applications. So all that to say, it really depends on the complexity of the subject matter that you're working on and the scope of the drafting effort. If you want one omnibus application that covers 17 different inventions within one product, I would expect to pay more than I would if I'm doing a very focused application towards one piece of invented subject matter. So I think. When you work with a lawyer, it's important to be upfront about this is what my budget is, these are my business goals and work with someone who can come up with a strategy that's useful for your budget and your goals. We talked to, so for example, maybe we're budget constrained and it's not going to make sense to file a full utility application because it's going to be really costly and the subject matter, there's questions as to whether it's going to be successful on an obviousness front. So maybe it makes more sense to pivot towards a design application where you're gonna probably spend closer to four to $6,000 and try to use strategic use of a design patent to get the protection that makes sense for your business. Maybe you just want to show that your product is patented from a marketing perspective that's gonna have a way different prosecution landscape than like a loop in pharmaceuticals. who wants to have an evergreen portfolio of some new pharmaceutical that they're gonna be making. Those are wildly different drafting efforts. So I think it's important to be upfront and find a strategy that's right for your budget and your business. Jack: Yeah. Yeah, absolutely. That is how we feel about intellectual property is it's a very important part of the business strategy or the go to market strategy or the exit strategy. But intellectual property just itself is not necessarily a strategy. So it's it's gotta be framed well, it's gotta make sense for your budget. For where you're trying to take this, whether you're pursuing licensing or you want to sell it yourself, or you want to do both. But yeah, that was that was great. And then how long generally, I know this is a range as well, but how long generally does it take from let's say somebody's already worked with 52 launch, they've got their full design, their CAD files, their 2D line drawings. And it's we'll assume that it's patentable. but that we'd like a search to be done. So from that first meeting pre-search to an issued utility patent, how long roughly are we looking at? Scott Seeley: Traditionally you are probably looking at two to three years. The bulk of that time is going to be the application sitting at the patent office waiting to be examined and then another bulk of that time is going to be the examination process, arguing back and forth in a negotiation with the examiner trying to find what subject matter within that application is allowable and then agreeing on an allowable claim scope that will eventually issue as a patent. the new director of the USPTO who took office several months back has been putting a huge push on examiners to reduce the pendency and the pendency has been coming down lately. We have been seeing first actions issuing, in as little as seven months after filing the application. So that, that pendency time is coming down. The patent office is hiring more examiners to reduce that pendency time. but at the end of the day, these are time intensive procedures, so I would expect it to take some time. That being said, Jack: Right. Scott Seeley: the system understands that this takes some time. So oftentimes your rights and the subject matter are going to extend back to your filing date. So I wouldn't be discouraged by the amount of time that it takes to get a patent because the rights that you get are valuable and they can stretch back in time. and that also goes back to maybe it makes sense to get a provisional on file quickly. to establish an effective filing date early so your rights can reach back as far as they can. Jack: Perfect. one other point that I think is particularly important to cover for the audience of 52 Launch is public disclosure and the deadlines around that. Scott Seeley: Yeah, so these are the broad category of this activity is called statutory bars. And they're essentially actions that an inventor can take that can destroy their ability to get a patent in the future. And so the big ones for most clients tend to be public disclosures and offers for sale. And so the patent law, this kind of comes down to novelty, but the patent law essentially says that if you publicly disclose your invention, then that triggers a statutory bar and you cannot get a patent on that subject matter in the future. It's the same for an offer for sale, but that's particularly pernicious because an offer for sale can trigger that statutory bar even if it was a secret sale. So you have to be extremely careful about licensing and manufacturing and conversations of that ilk because even if they're under an NDA, The normal way that you prevent something from being a public disclosure is you have some evidence that whatever the disclosure may have been, it was under some kind of expectation of secrecy. So if you're engaging in some kind of discussion with investors or manufacturers and you have an NDA, it's not dispositive, but that can be a strong indicator that this isn't a public disclosure because it wasn't available to the public because it was expected to be secret. But that's not the case for offers for sale. So if you do have some kind of licensing discussion, it's important that you let your attorney know. In the United States, get a, usually you get a one year grace period from the date of that inventor initiated disclosure. This doesn't count if it was another party, but if it was the inventor that initiated the disclosure, generally speaking, you have a one year grace period where you can file a patent application and that patent application still has a chance of being valid. not all jurisdictions recognize that grace period. So sometimes people are interested in pursuing international protection. You do that through a patent cooperation treaty filing. It's called PCT. But not all jurisdictions recognize that grace period. Europe, for example, requires absolute novelty, where even the inventor's own disclosure a day before the filing date can destroy their ability to get a patent in the future. So it's important to start thinking about this Jack: Really? That's wild. Scott Seeley: stuff early. and let your attorney know if there's been any kind of disclosure, what the circumstance was, or any licensing discussions or offers for sale, because those can be some really severe deadlines and they can have some dire consequences down the road. Jack: Yeah. Yeah, that's a big one. It's it's not necessarily obvious to most people, I don't think, because we've got a lot of clients that you know consult with us and we always ask, How long have you been thinking about this product? And it's it's not rare for us to hear five years, seven years, I've been thinking about this for 10 years. And usually in that conversation a little bit later on, the the Topic of intellectual property comes up. And they'll say, like, yeah, I wanted I I'd like to get a patent on this. And I kind of usually don't say anything because I'm not an attorney and I'm not gonna provide any legal guidance or advice or anything like that. But knowing about that one year grace period and the deadline that follows, no. I'm sure you've been talking to people over about it for the last five to ten years. So I always kind of take a step back when I hear that. good call to action for everybody out there who's come up with an idea in the last year and has been seriously thinking about bringing it to market. Like go talk to an attorney. Tell them when you first started talking to other people about it. If you've brought it to a sh trade show, if you've offered it for sale. there's never been a better time than now. So that was kind of the rough costs. I think maybe it would be good to cover the rough cost range for a design patent. Scott Seeley: Yeah, a design patent is probably in the range of about four to $6,000 to get one of those applications on file. They're much less expensive than a utility patent. It depends on the number of embodiments that you want to file. I really like design patents. do think they're underutilized in the industry. They sidestep a lot of those obviousness considerations because they go through a different examination pathway and they're much less expensive to prepare. If you have a lot of the cost in a design patent is the drawings, you need to have a full set of drawings that show all the various views. So somebody can understand the physical orientation of the ornamental appearance of the product. But yeah, they're super useful. I would budget four to six, maybe closer to eight if it's gonna be a wildly complex invention with multiple different embodiments where you need to show all of these for those different embodiments. And those embodiments would be like, we've done, like if you have a shoe that has like an add-on, you could protect the shoe, you could protect the add-on, you could protect the shoe in combination with the add-on. So again, just like with the utility application, a lot of the costs are gonna be directed to the scope of that application. And so if you're trying to do a lower cost design patent, I would focus on one set of drawings for one, for the primary commercial embodiment. And then as resources permit, consider additional. configurations in which a consumer might encounter different designs of the same product. But yeah, they're much less expensive to prepare and I would typically budget somewhere between four to six thousand dollars to get that on file. Jack: And is it the same waiting period? Are you looking at like two to three years to issuance, or is it shorter than that? Scott Seeley: They're a bit shorter. We usually see design patents get disposed of within about a year after filing. So yeah, they're a little bit less expensive and they tend to get examined a little bit more quickly. And again, I think those are really strong reasons that people should consider filing on design patents, especially if the obviousness front is going to look challenging from a utility point of view. Jack: Yeah, yeah, certainly I think there are a lot of fifty two launch products that would benefit from a design patent just as much, if not more, than a utility patent. Perfect. kind of wrap up the the patents conversation. I think the definition that I've heard more specifically for a utility patent is pretty good. It's In exchange for telling the world how to make and use your invention, the US government or whatever jurisdiction it is grants you a 20-year monopoly on creating and selling that product, which is a definition I really like. you have anything to add to that, feel free. And it would, I actually forget, is there a lifetime on design patents? Scott Seeley: Yeah, I think design patents are 15 years from their filing date. And then utility applications are 20 years from their filing date. You need to file maintenance fee payments on utility applications and you don't need to file maintenance fee payments on design patents. And you're absolutely right. So the stated justification for the patent system is it's a give and take between inventors and the government and it's in exchange for teaching the world how to make the subject matter the patent system will grant you a monopoly on that to encourage the useful arts and so that's the stated justification people can kind of take it for what it's worth but the practical implication is you need to file your claim is not going to be valid if you don't have a sufficient enabling disclosure to back up that claim. So when you file a patent application, you're going have a bunch of different sections. You're going to have a drawing section that shows what the product looks like. You're going to have a detailed description section that's going to explain how to make and use that invention. And then you're going to have a list of claims at the end that define the exclusive monopoly of what you're trying to claim. And people, we've spent a lot of time talking about these claims and how you draft the claims to be strategically valuable. to avoid design arounds, picking the right infringer, making sure you don't make the infringer the consumer that's using the product. You want the infringer to be the company that's manufacturing the product. You want to avoid divided infringement problems. So a lot of strategy goes into those claims. But at the end of the day, those claims aren't valid unless they're supported by an enabling disclosure that a person of ordinary skill in the art could read that disclosure and then make and use the invention. And so the practical significance of that give and take is when you come to the patent drafting process, are you gonna have enough information and enough detail that you're gonna be able to teach someone of ordinary skill in the art how to make and use the invention? And if so, you need to make sure you include that in the application to fulfill the inventor side of that contract with the government. And so from a practical standpoint, That's a primary consideration that inventors need to be aware of. All the motivation and stated purpose of the system aside, that's the practical implication. Jack: Right. And that would imply that you need to have a not necessarily completed, completely ironed out design, but you have to be pretty far along in the design process. You can't just have an idea you came up with using Chat GPT and then say, I'm gonna go get a patent on it, unless you know have some sort of expertise that allows you to truly understand how you're going to make and use it. Good. I think we can wrap patents up there. One thing, if if there's a good example that you have of a former client that kind of leveraged their IP successfully, either to take some competitors off the market, kind of have a successful exit, something like that, that kind of tie into the business. value that is generated by intellectual property. Scott Seeley: Yeah, absolutely. so there's a bunch of cases where we've represented clients, where they're starting up a business and they get a trademark on their name. And then later on down the road, they see somebody else who's practicing business, under a confusing, a similar name. And we've sent a bunch of cease and desists out there to prevent people from continuing to use those confusingly similar names. back when I was at. Kenobi, we... It's tough. I probably can't talk too much about specific clients and what actions we've taken on their behalf. But frequently Jack: That is the hard thing about it, right? Scott Seeley: I read a lot of cease and desists for people who have a business and somebody else is trying to sell a similar product under a similar name and we'll stop that activity. From a patent perspective, people frequently say, I have an idea. I want to make this idea and I want to license it. What do I need to do to license it? And the end of the day, patents are the vehicle in which you establish ownership over an invention and have anything at all to license to someone else. So you're not going to license your invention using an NDA. You need to establish ownership over that property and patents are the way that you do that. And then from a utility patent perspective, It's extremely persuasive to send somebody a seasoned assist with a claim chart attached saying, look, we own patents for this technology. These are the subject matter that these patents cover. And we looked at your product. We analyze your product with respect to our claims. Here's the overlap of what your product does and how it maps onto our claims. And you need to change what your product is or take a license to our patent. And so that absolutely happens all the time. but it's important to understand that especially in the patent world, litigation and the ensuing damages for patent infringement tend to be relatively cataclysmic for most companies. And so if somebody is accused of infringement, they're gonna go to the ends of the earth to try to figure out why their patent, why their product doesn't map onto your claims or why your claims shouldn't have been issued in the first place. And so that goes back to searching. having a strong strategy upfront, pursuing a variety of applications directed to a variety of different subject matters to make your portfolio as strong as possible so that you're not just asserting one claim that's easy to knock out through a post-grant challenge or easy to design around. And that's why it's really a, it's a process, it's a strategic system. I would not, you're not just paying a lawyer to take your disclosure and file it with the office. You really need a strategic partner who's gonna be able to navigate the system as a whole and help you build a strong portfolio of assets that support your business. And I think a lot of people get lost in the weeds of I want a patent for this product and they don't see the value that exists in the landscape as a whole. Jack: Yeah. Awesome. Well, we can pretty much wrap it up there, I think. Clearly, this stuff is very complicated. It requires a professional touch. If you've got an idea that you think is worth having a patent conversation about, you can find Scott at esgateip.com. We both offer free consultations, correct? So Scott Seeley: Absolutely. Jack: you can book a time to speak to either the team at 52launch at 52launch.com. Or Scott and his team at EastGateIP.com. Scott, thank you so much for being here. Is there anything else you want to plug? Scott Seeley: No, thanks for having me. It was a lot of fun. Jack: Awesome. Yeah, it's much appreciated. we will keep coming out with these. So stay tuned for future episodes and thanks for watching the Pitch to Product podcast.