Product Startup Podcast Episode 105: Patent Strategy for Product Inventions

00:00:00 Kevin Mako: Hello, product innovators. Today we learn from a senior patent attorney and author on the types, timelines, and tips on attaining a patent on your invention.

00:00:10 Narrator: You're listening to the Product Startup Podcast, the show that helps bring your product idea to life by chatting with successful inventors,

00:00:20 Narrator: product developers, manufacturers, and hardware industry professionals. Our goal here is to get to the bottom of what makes a product successful, from initial

00:00:28 Narrator: idea to getting your product on store shelves. We're taking you step by step to build a functional product and scale your product business.

00:00:37 Narrator: Hosted by Kevin Mako, one of North America's leading experts on hardware development for small product businesses. Now, on to the show.

00:00:47 Kevin Mako: Welcome back, everyone. Today, I'm very excited to introduce Rich Goldstein to the show. Rich is the founder of Goldstein Patent Law.

00:00:53 Kevin Mako: He's landed over 2,000 patents for his clients over the last 25 years. He's also the author of the book, The ABA Consumer Guide, to Obtaining a Patent.

00:01:01 Kevin Mako: Today, Rich is going to share some valuable knowledge to inventors, hardware startups, and small product manufacturers on the types of patents you can obtain for an invention,

00:01:08 Kevin Mako: tips and tricks along the way, and how to continue to protect your intellectual property as your hardware product evolves over the years. Now on the episode.

00:01:16 Kevin Mako: Hey, Rich, welcome to the show.

00:01:18 Kevin Mako: Hey, thanks so much for having me, Kevin. Really looking forward to having you on the show today to talk about patents, looking at it

00:01:23 Kevin Mako: from a high level and getting into some of the tips and tricks as well as some of the actual structure behind how they work, the different types and whatnot.

00:01:29 Kevin Mako: I'd just kick it off with a bit

00:01:31 Rich Goldstein: of your background, how you got into this over 27 years ago? The main way I got into this was

00:01:36 Rich Goldstein: studying electrical engineering, learning that the reality of being an engineer would be working on the same project day in and day out for years at a time.

00:01:43 Rich Goldstein: And that just didn't fit my personality and also my ADD nature, right? I like to work on different things. And that's what keeps me

00:01:52 Rich Goldstein: interested. So I learned that being a patent lawyer would mean taking my engineering background and

00:01:58 Rich Goldstein: then applying it to the law, in other words, you need to be an engineer and an attorney to be a patent attorney. So it sounded interesting, went to law school.

00:02:06 Rich Goldstein: And I did something rather unusual in that I started my own practice right out of law school. It's pretty much unheard of usually

00:02:11 Rich Goldstein: what happens is that a lawyer will start working at another firm that might work there for a number of years and over time develop relationships with clients and then leave

00:02:21 Rich Goldstein: and go out on their own, thereby have some clients. So me starting right out of law school meant how is it going to

00:02:28 Rich Goldstein: clients. So I did a bunch of interesting things, but essentially what it comes down to is I've just always had a love for entrepreneurship, a love for marketing.

00:02:38 Rich Goldstein: And so I just kind of started from

00:02:41 Kevin Mako: the ground up. And 27 years later, I'm still here. Well, congrats to doing that. You and I started in a very similar fashion. Same things in the design world.

00:02:49 Kevin Mako: Generally, design firms are brewed out of folks who've been engineers and industrial designers at big Fortune 500 design houses for years. And I was in the same boat as you.

00:02:57 Kevin Mako: I started right out of high school and then incorporated at university and then turn down the job offers to jump into this full time. So I know how much of a grind it is.

00:03:04 Kevin Mako: I don't know if I would recommend it to everybody.

00:03:06 Kevin Mako: But, you know, when it works, it's great. But it's definitely a rocky road to get to that gate in any case.

00:03:13 Kevin Mako: So, Rich, in terms of the patents, why don't we start just explaining what the different types

00:03:18 Rich Goldstein: of patents are between utility, design, a provisional, and how they work together? Absolutely. So, I mean,

00:03:24 Rich Goldstein: typically when you're thinking of an invention, when you're thinking of like a typical inventor

00:03:29 Rich Goldstein: and a typical invention scenario where someone has an idea for a product and they spend time trying to solve the problem, trying to make one that works better than

00:03:38 Rich Goldstein: things that came before,

00:03:40 Rich Goldstein: we're probably talking about a utility patent because the utility patent is all about the functionality of a product.

00:03:46 Rich Goldstein: It's about the structural differences that are there for a functional reason. So as distinct from just the way that the product looks, right?

00:03:56 Rich Goldstein: It's like if we're talking about how we've improved the product to make it work better, we are likely talking about a utility

00:04:02 Rich Goldstein: patent and utility patents are founded on words. Like there's a great deal of words that go into a

00:04:09 Rich Goldstein: utility patent that define what the invention is and what other people would need to do to infringe that patent. So that's a utility patent.

00:04:18 Rich Goldstein: Where on the other hand, a design patent is just about the appearances, just about the way the product looks. It could be

00:04:24 Rich Goldstein: just the shape of a bottle and the different series of undulating curves and grooves, and that's

00:04:33 Rich Goldstein: what a design pattern is all about, just the way it looks. And now, think instead of the words in the patent, think about the pictures.

00:04:39 Rich Goldstein: The way you infringe a design patent is by making one that looks substantially similar. So two very different types of patents in terms of how they're formed

00:04:48 Rich Goldstein: and in terms of what they're what they protect and also in terms of how you infringe them you infringe your utility patent by meeting this precise definition of words known

00:04:58 Rich Goldstein: as the patent claims you infringe your design patent by having someone look at the pictures and say it looks pretty close

00:05:04 Rich Goldstein: and then that's that's infringing so those are really the two main types of patents and you

00:05:12 Rich Goldstein: mentioned the provisional too so a provisional is it's not actually a patent there's no such

00:05:18 Rich Goldstein: thing is a provisional patent, but there's a provisional patent application. Because what it is, is it's a stepping stone towards a utility patent.

00:05:26 Rich Goldstein: So again, utility patent being about the functionality,

00:05:30 Rich Goldstein: you can file a less formal description of your invention as a provisional patent application

00:05:38 Rich Goldstein: with the United States Patent and Trademark Office. And what it does is it gives you a year to then finish up the process and file that full utility patent application.

00:05:49 Rich Goldstein: The thing, though, that you have to be careful about with provisionals is the priority

00:05:55 Rich Goldstein: you get from that provisional, the priority you get from filing it and that foot in the door

00:05:59 Rich Goldstein: at the patent office that we're talking about, that priority is only as good as it is well-written.

00:06:04 Rich Goldstein: So sometimes people will say, well, I could just write up a few paragraphs and file it, and they do file it, and they get back a filing receipt from the United States Patent

00:06:14 Rich Goldstein: Office, which says, yes, here's your provisional patent application. here's the serial number, the filing date, and they think, oh, I guess I'm good.

00:06:22 Kevin Mako: I've got my application filed. But if you just wrote up a few paragraphs, if you ever needed to rely on that priority

00:06:30 Kevin Mako: to show like, hey, look, I filed my provisional back in 2020, chances are it won't be good

00:06:37 Kevin Mako: enough. I guess the important consideration there is that, well, first of all, you only have a year to file your full utility patent.

00:06:43 Kevin Mako: But second of all, the key is that if somebody infringes within that year period, you can only rely on the data that you

00:06:50 Rich Goldstein: actually put into that original filing. You can't say, well, we've now engineered it and prototyped it and here's all the specs.

00:06:56 Rich Goldstein: And we intended that within the brief write-up we did in our provisional, that won't apply.

00:07:01 Rich Goldstein: It's only what's in there, which will give you essentially that date-stamped material, that foot-in-the-door material like you said with the patent office.

00:07:07 Kevin Mako: Yep, that's exactly right. It's really only about what you do file. That's why, again, the priority you get, that priority date you get from filing that provisional

00:07:15 Kevin Mako: is only as good as it is well written, is only as good as it's well expressed, and it's only as, like you said, what was actually put in that application.

00:07:24 Kevin Mako: That's very relevant to, you know, from the design firm perspective as well, because when we're developing a product, almost anyone who comes to us with the original idea,

00:07:32 Kevin Mako: that product will evolve as we're designing it and engineering it and prototyping it and whatnot. And that product much further down the line, especially when you're in the final

00:07:41 Kevin Mako: prototyping or pre-production or whatnot, is likely going to be substantially different. at least from a patent perspective, from the original description, or at least

00:07:50 Kevin Mako: at a bare minimum, it's going to have significantly more detail. That detail is going to be a lot of the value in

00:07:55 Kevin Mako: what you want to actually protect, because a lot of those details, a lot of those engineering

00:07:58 Kevin Mako: specs, that's the actual utility in which you're going to be basing your patent claims off.

00:08:02 Rich Goldstein: So it's quite important that you've got a lot of that work done so that you have that material and understand what you're really building into your patent that you want to protect

00:08:10 Rich Goldstein: for the longevity of the next 18, 20 years of your product under that patent that you are intending to apply for once you go to your full utility.

00:08:19 Rich Goldstein: Absolutely. And I think it really begs the initial question of what actually is unique here with regard to the product.

00:08:26 Rich Goldstein: And sometimes, and kind of like the best use of filing that provisional, for example, is when what

00:08:33 Rich Goldstein: is unique is really the core

00:08:37 Rich Goldstein: combination of elements or really the core concept to it. You know, a lot of times we have a concept for something and we think that it's a whole new concept.

00:08:48 Rich Goldstein: And then it turns out that, well, maybe there is some differences there that we can get a patent on, but it's more about

00:08:54 Rich Goldstein: the details. But in a situation where someone truly, they're correct and like it actually

00:09:01 Rich Goldstein: is the concept, it is the main ideas that are themselves unique, then that provisional could be quite worthwhile because then what you're seeking to protect, I

00:09:11 Rich Goldstein: think we were talking about sometime earlier was about with regard to broad claims, you're seeking to protect that concept, those main portions of it.

00:09:20 Rich Goldstein: And if you establish through that provisional that you invented those main parts, that could be critical if while you're then pursuing

00:09:29 Kevin Mako: the ultimate patent, there were other people that talked about similar concepts that maybe got to the patent office a bit after

00:09:34 Kevin Mako: to you, the fact that you can point to that provisional can be very important.

00:09:39 Kevin Mako: But if it truly ends up being about the fine details that you develop later, then the provisional is not going have much value.

00:09:47 Kevin Mako: Because really, if we're focusing on things that weren't in the provisional, then what's really the point of the provisional? That's powerful stuff.

00:09:53 Rich Goldstein: I appreciate you mentioning, too, the differences as well, looking at it between the early days and the later stages in development and whatnot and how that actually applies.

00:10:01 Rich Goldstein: You mentioned the design patent and the utility patent. Can you do both of them at the same time? Or do you recommend doing both them at the same time?

00:10:08 Rich Goldstein: Or what strategy is there around that if you have some aesthetically beautiful thing,

00:10:13 Rich Goldstein: but also in combination, you have some core technology that you want to protect on the utility side as well? Yeah, absolutely. I mean, very often, I do both for a client.

00:10:22 Rich Goldstein: I file a utility and a design.

00:10:25 Rich Goldstein: And it's kind of like, this has evolved over the years, too. Like going back, say, 20 years ago, if you say,

00:10:34 Rich Goldstein: said, should I do a design or utility? I would say, well, absolutely do the utility.

00:10:39 Rich Goldstein: The design has limited value because it's only for the way that it looks. And if someone changes the way that it looks, then they're going to get around the patent.

00:10:48 Rich Goldstein: So the utility is the more important patent. That has changed a bit over time.

00:10:55 Rich Goldstein: Utility is still an important patent if you're able to get broad protection for the concepts.

00:11:03 Rich Goldstein: But a couple of things. First of all, a lot of utility patents that I see out there are very limited to details

00:11:09 Rich Goldstein: that people could easily switch up and get around the patent. And that really is just because they didn't invent something

00:11:18 Rich Goldstein: as new as they thought it was.

00:11:21 Kevin Mako: But then also, when it comes to the design protecting the way in which the product looks,

00:11:29 Kevin Mako: these days, people don't get imaginative when they copy you. They don't say, well, that's a cool concept.

00:11:36 Kevin Mako: Let's get inspired by it. And let's take our own designers and let's see what we can make out of this concept.

00:11:42 Kevin Mako: No, they just knock it off exactly the way that it is. And if you have a design patent that looks like the knockoff, then

00:11:51 Kevin Mako: you'll be able to shut them down.

00:11:53 Kevin Mako: I like that you're giving two layers of protection too. You're protecting both sides of the coin with the different ways.

00:11:59 Kevin Mako: Because at the end of the day, no patent, nor is any price. product bulletproof from the market or from IP infringement or from court cases or whatever

00:12:07 Kevin Mako: it might be. But the point is you want to make it as strong as possible. You want to build up as much of a protection as possible.

00:12:15 Kevin Mako: And if you've got two different avenues, you might as well at a bare minimum look into both of those options, if not getting both options, especially as

00:12:23 Kevin Mako: your product evolves or especially if you have some value that's baked into that design that actually provides some of that market value.

00:12:30 Kevin Mako: Before we go too much into the timing and kind of details and approach to how a product can evolve and what you can think about in terms of patenting, can you just give a bit

00:12:40 Rich Goldstein: of light to the concept of what, you know, that you talked about broad earlier, and I think it's important for people to understand the difference between broad strokes claims

00:12:48 Rich Goldstein: and narrow claims, but also understanding that most patents today are a combination of existing technologies.

00:12:56 Rich Goldstein: It's very rare that something is entirely novel like someone's created the light bulb that was never made before.

00:13:02 Rich Goldstein: Most of the work that we see in any case from the consumer product standpoint is combinations or iterations or modifications or modifications of existing technology.

00:13:10 Rich Goldstein: And then that all comes down to how broad and how narrow your claims are. So can you speak a bit to that arena there?

00:13:16 Rich Goldstein: Yeah, absolutely. And first of all, you're absolutely right that like most new inventions are not just

00:13:24 Rich Goldstein: something completely pulled out from a vacuum. It's something which existed before that you then improve upon. Most patents are an improvement on something that exists.

00:13:33 Rich Goldstein: And speaking of vacuums and speaking of light bulbs, like let's use that as an example. So it's like if your idea was

00:13:42 Rich Goldstein: to basically take a vessel that you put a filament in,

00:13:49 Rich Goldstein: and the filament is just like a glowing piece of wire or a piece of thin wire that glows when you put electricity through it.

00:13:55 Rich Goldstein: And you recognize that like that's quickly going to oxidize and burn out. And so you take the air out of that chamber. That's basically the invention of the light bulb,

00:14:04 Rich Goldstein: right? Is you've got a chamber that has a thin wire through it, that you run electricity through, it glows. And because there's no air in there won't quickly burn out.

00:14:13 Rich Goldstein: So that was the invention of the light bulb. So back when Edison invented the light bulb, he, he,

00:14:19 Rich Goldstein: essentially could get a patent on that basic concept of having, let's say, a clear vessel,

00:14:25 Rich Goldstein: which is evacuated from air and then having a wire going through it, right? Simple, simple, simple

00:14:33 Rich Goldstein: concept. Now to infringe that patent, it's like, you know, what could someone possibly do to get around infringing that?

00:14:40 Rich Goldstein: It seems like that's the essential nuts and bolts of what makes a light bulb work. So that is in itself a broad patent.

00:14:48 Rich Goldstein: And that's what a broad patent claim would be for is that simple concept. But then someone comes along later on and they improve upon that light bulb.

00:14:57 Rich Goldstein: And they say, you know what, even though it doesn't burn out quickly, it seems very vulnerable to shock.

00:15:03 Rich Goldstein: And so if you put a light bulb on a lamp on a table, someone bumps into that table, that hot wire is quickly going to break.

00:15:12 Rich Goldstein: And so then you kind of come up with a way of taking that filament and connecting it with a couple of springs, let's say.

00:15:20 Rich Goldstein: And so now the film, the very thin wire is suspended on springs, which we tend to absorb the shock.

00:15:26 Rich Goldstein: So now you're able to get a patent on essentially a light bulb that has that thin wire in a vacuum chamber,

00:15:34 Rich Goldstein: but where the wire is connected to the external wires with a couple of coil springs. So then now that's what you're protecting.

00:15:43 Rich Goldstein: Now, this is more narrow than the original patent on the light bulb, but it's what's permitted

00:15:47 Rich Goldstein: by the prior art because you couldn't get a patent on just the idea of a light bulb because it already exists. You can't write claims or you can't patent that which already exists.

00:15:58 Rich Goldstein: So you have to find a way to distinguish yours, make it a bit more specific. But now here's the key.

00:16:03 Rich Goldstein: You want to make it specific in a way that still is relevant to the marketplace.

00:16:09 Kevin Mako: So if, you know, the specificity you added is the fact that it's connected with Springs,

00:16:16 Kevin Mako: well, then the question to ask is, is this actually making it a more marketable product? Is this making it a better product?

00:16:22 Kevin Mako: So that if someone sees it and says like, well, we want to make light bulbs, but we want to do it Kevin's way with the springs.

00:16:29 Kevin Mako: Because if that's what's what people really want now is a shockproof light bulb.

00:16:35 Kevin Mako: And so if they recognize then that essentially you've passed. patented the spring suspension for a light bulb, and that's

00:16:43 Kevin Mako: important to selling the product, then that's a valuable patent.

00:16:48 Kevin Mako: If it was more limited than that, and like, you know, there was some other feature which, you know, you could take it or leave it, then that's the type of details

00:16:56 Kevin Mako: that lead to a very narrow and limited and kind of worthless patent. So that's kind of how that works.

00:17:02 Kevin Mako: That's great. And it's so applicable when you're thinking about hardware products and new innovations,

00:17:07 Kevin Mako: because most of the time, what you see is it's combinations or improvements of things.

00:17:10 Kevin Mako: But it comes down to those really, as we talked about earlier in the call, those specific details.

00:17:15 Kevin Mako: And generally, as an inventor or somebody's a project manager or an industrial designer, engineer, electrical, mechanical, whatnot, you're going to be looking at these innovations

00:17:25 Kevin Mako: and you've discovered something that really will improve the world around you for some reason or another.

00:17:31 Kevin Mako: That's why it's so important to look at the patent angle, get that level of specific that you're looking for so that you can protect that core innovation, that

00:17:41 Kevin Mako: core thing that's going to differentiate you in the market. You want to make it difficult so that not only when

00:17:46 Kevin Mako: you come out to the market with this great new feature, your example is great, the springs in the light bulb coil, not only do you have this feature, but if the market starts

00:17:55 Kevin Mako: demanding it because it's better than a traditional light bulb or whatnot, then you make it very difficult for a competitor to do the same thing.

00:18:02 Rich Goldstein: They're going to have to think of some new technology to compete with you, But that's the whole purpose of the patent.

00:18:06 Rich Goldstein: You want to get your core technology, that key market innovation that you found so that you can protect that for many years forward.

00:18:13 Rich Goldstein: But in a very detailed way, looking at specifically at engineering specifications, especially in consumer hardware products, it comes down to these engineering details.

00:18:22 Rich Goldstein: Of course, the broad strokes idea is important as well, but so much of that specific nature

00:18:27 Rich Goldstein: of the claims are going to revolve around those detailed engineering components that you've actually put in to make your innovation or your idea.

00:18:34 Rich Goldstein: work both from a conceptual standpoint, but also as a real product, which is from a manufacturing standpoint. You want that thing to be able to be producible and workable.

00:18:43 Rich Goldstein: And if you figured out a way both to make an innovation and something that's producible that the market wants, that's the golden

00:18:49 Kevin Mako: triangle. And that's what you really need to be focusing on protecting. And like you said, you can do it both from a design and from a utility standpoint. And that's so powerful.

00:18:57 Kevin Mako: Yeah, absolutely. Now you're singing my song. So essentially, I think about it like a Venn diagram. You've got the things that make something patentable.

00:19:05 Kevin Mako: You've got the things that make something marketable.

00:19:08 Kevin Mako: And if you can patent the overlap between those two, if you can take that feature, it could be some fine details about

00:19:17 Kevin Mako: the product, but it could be the, you know, it could be some fine details about the product that the patent claims focus on.

00:19:24 Kevin Mako: But if those are the things that people really want and need in the product, then that's valuable. So that's really what you're looking for is the overlap between what's

00:19:31 Kevin Mako: patentable and what's marketable. And when you can find the sweet spot between those two, that's when you have a valuable patent.

00:19:38 Rich Goldstein: That's when you have a patent that's going to prevent the competition from doing the thing that's making people want to buy your product.

00:19:46 Rich Goldstein: Yeah, that's brilliant. And it's important, I think, to look at it on that standpoint that

00:19:52 Rich Goldstein: it may not be, or actually, I mean, you tell me, Rich, in your experience, how often is it that all the technical details of a product are patented? Probably very rarely. It's

00:20:02 Rich Goldstein: It's like you said, it might be 25% of it, but a really core, really important 25% of that product, which is actually what really the patent revolves around.

00:20:10 Rich Goldstein: The rest of it is just the remainder of the product that you need to get it to market. But really, the thing that's patented, and I think a lot of inventors don't realize this,

00:20:18 Rich Goldstein: they look at a product and they say, well, I want this whole thing patented, or I want all this

00:20:22 Kevin Mako: technology or all this design work. Well, that's unlikely because a lot of it's already been done before or certain pieces of your product have already been done before.

00:20:28 Kevin Mako: It's putting it all together in a unique way in combination with maybe some pieces.

00:20:32 Kevin Mako: of core technology you've developed that really comes down to that the core power of that patent. Yeah, absolutely. And let me just look at the reverse situation of that too.

00:20:40 Kevin Mako: So it's like sometimes the example you gave was like where someone is looking at their product and saying, hey, we want to get

00:20:46 Rich Goldstein: this product patented. But let me give you the reverse of that, which is that people will say,

00:20:51 Rich Goldstein: oh, I want to make something similar to that piece of hardware, but it's patented. But what do you mean it's patented? Well, it's got a patent number on it. So it's patented.

00:21:00 Rich Goldstein: Well, no, the product isn't patented. There's some aspect of it that's patented. There's some core combination of features about it that's patented.

00:21:09 Rich Goldstein: It's like people often look at a competitive product and say, well, that's patented without thinking that what it really

00:21:17 Rich Goldstein: takes is to dig further and see actually what about it is patented.

00:21:22 Rich Goldstein: That's a big one. I'm glad you brought that up because generally, if anything in and around their product idea is patented, we see a lot of inventors just throw

00:21:30 Rich Goldstein: their hands up, oh, shoot, it's over.

00:21:33 Rich Goldstein: But if you haven't seen it on the market, or nobody's doing it well, or you have a unique spin to it, or you haven't taken the time to actually

00:21:40 Rich Goldstein: look into what's patented, which comes back to what you're saying there, Rich, there might be more meat on the bones than you think of this idea.

00:21:47 Rich Goldstein: And it's at least at a minimum worth further exploration. Yeah, absolutely. Absolutely. And just a little footnote to that, too, is like,

00:21:55 Rich Goldstein: kind of like whether every feature of the product gets patented is kind of a matter of the

00:22:00 Rich Goldstein: budget of the company too you get bigger companies that have more money than they have

00:22:06 Rich Goldstein: quantity of products that they're putting out and they'll they'll look to get a dozen different patents on the product and they might have limited value

00:22:16 Rich Goldstein: or many of them have limited value but a lot of times it's like I wish that the value of the patent

00:22:26 Rich Goldstein: matched up with the amount of money that a company is willing to invest into patenting. Those two don't usually coincide.

00:22:34 Rich Goldstein: There are companies spending millions on patenting very, very thin innovations, like really is not much there.

00:22:40 Kevin Mako: And then there are other companies that are spending very little when they have really groundbreaking stuff that they could get valuable patents from.

00:22:47 Kevin Mako: So, you know, I'm a big proponent of education about this. I'm a big proponent about entrepreneurs understanding how this works so

00:22:57 Kevin Mako: that they can make appropriate patent decisions. They could look at something and say, maybe these last three products we did didn't have much that was patentable about it.

00:23:07 Kevin Mako: And that's why we didn't spend money on patenting it. But now this fourth one, there's a lot of potential here. So let's focus on this.

00:23:14 Kevin Mako: Probably one of the biggest mistakes I see entrepreneurs make is being too overzealous on patents such that they really,

00:23:22 Kevin Mako: invest heavily into their first or their second product, which maybe wasn't very patent worthy.

00:23:28 Kevin Mako: And by the time they get to the third, which is the thing where there's a good amount of

00:23:33 Rich Goldstein: innovation, they're already feeling kind of burnt out on patenting. Didn't really do much for them in the first two products. So why bother for the third?

00:23:40 Rich Goldstein: So having the right discernment about whether you have something that's going to lead to a

00:23:46 Rich Goldstein: valuable patent in front of you is going to lead you towards getting the right patents at the right time. I'm glad you brought up the concept of further products

00:23:55 Rich Goldstein: down the road and the patentability as well because I do know that a lot of entrepreneurs feel like it's kind of when they've released that first thing, that's it.

00:24:05 Rich Goldstein: But there's a lot of value to be driven, of course, first for market feedback that comes back from your first product and engineering improvements and manufacturing

00:24:14 Rich Goldstein: improvements and all the rest. But taking all of those and looking at when you develop your next

00:24:19 Rich Goldstein: version of it, whether maybe it's the pro version or, heck, even the cheaper version or something or maybe just an accessory for it, there's value in that incremental

00:24:28 Rich Goldstein: innovation that you made there. There's value potentially patentable there.

00:24:34 Rich Goldstein: So I think it's very important to look at the patent strategy as something that evolves over time. Like you mentioned, instead of going, you know,

00:24:42 Rich Goldstein: top-heavy down, you can actually have it consistently run through your business as you're

00:24:46 Rich Goldstein: scaling as you're adding more products, looking at those incremental innovations and seeing how that fits in. Yeah, absolutely.

00:24:53 Kevin Mako: So, I mean, I think first thing to consider on that is is when you actually have waited too long to start the process.

00:25:01 Kevin Mako: So, so first of all, it's if you, if you make an invention

00:25:07 Kevin Mako: public and you haven't already applied for a patent, you immediately lose the rights in much of the world to ever patent the product or, let's say, the core concept

00:25:16 Kevin Mako: of it, if that's potentially patentable. And in the U.S., if a year goes by from the time at which you first made

00:25:25 Kevin Mako: it public, then you will have lost the rights in the U.S. as well. So generally, if you're ever

00:25:31 Rich Goldstein: going to be doing anything with regard to patenting, you want to file before you make the invention

00:25:37 Rich Goldstein: itself public. So there's that. Let's keep that in mind. Also keep in mind that it's a first to file system that we're in.

00:25:47 Rich Goldstein: So there's even if you weren't too late in filing with regard to your own behavior,

00:25:55 Rich Goldstein: then it's also possible to lose the rights because someone else filed before you. So like there's two ways to kind of lose out.

00:26:03 Rich Goldstein: One is to like one is from other people.

00:26:07 Rich Goldstein: other people get into the patent office before you. And the other one is just by virtue of the fact that you yourself made it public and you lost the rights to

00:26:17 Rich Goldstein: it. Those are really important considerations, two very important things to keep in mind before you go public with your product.

00:26:24 Rich Goldstein: Because keep in mind that beforehand, especially as a design firm, we get access to all kinds of proprietary information, but it's protected under non-disclosure agreement

00:26:33 Rich Goldstein: and it's behind the scenes. And that's okay. But the moment that you actually take that and put it on to a website or

00:26:39 Rich Goldstein: social media or whatever it might be, you do to an investor pitch competition, which is public, not a private investor pitch competition, but a public one.

00:26:47 Rich Goldstein: You have to keep in mind that you've now established a date and that clock is ticking.

00:26:52 Rich Goldstein: And not only is the clock ticking, but at any point, somebody may get in front of you in line and just simply take your innovation and file it

00:26:59 Rich Goldstein: themselves, which is what you refer to in that first to file thing.

00:27:02 Rich Goldstein: Yeah, exactly, exactly. And And so that's something to be aware of. It's just establishing your rights at as early a

00:27:12 Rich Goldstein: time as possible. But now pointing towards like the illustration and the question that you're asking about like the product developing over time.

00:27:20 Rich Goldstein: So imagine we filed a patent application before the invention was public, but then let's say 18 months

00:27:29 Rich Goldstein: later, we come up with a key innovation. We come up with a feature that really makes the product a lot better.

00:27:37 Rich Goldstein: What we could do at that point is filing what's called a continuation in part.

00:27:42 Rich Goldstein: So basically, that would be a patent application where it was mostly what you had filed 18 months ago,

00:27:50 Rich Goldstein: but now you're also adding onto it the new innovation. And so now the patent office will look at it as if like, okay, so a part of it is new.

00:28:00 Rich Goldstein: a part of it is this new innovation that you've added that you're now filing, let's say,

00:28:06 Rich Goldstein: November of 2021, December 2021, but part of it was filed back in, you know, early 2020.

00:28:15 Rich Goldstein: And so they give you credit for the fact that most of it was in the original application.

00:28:21 Rich Goldstein: And so just the, I guess the bottom line for this is like if you're going to develop it over time,

00:28:30 Rich Goldstein: The thing to have, which helps you with this, is having an application pending of some kind.

00:28:37 Kevin Mako: You see, the way the patent office rules work is you can file that continuation in part application

00:28:44 Kevin Mako: with your new innovation as long as you have another application still pending.

00:28:50 Kevin Mako: So imagine you would file whatever two years ago and it got approved.

00:28:56 Kevin Mako: It got approved after a year and then issued in. to a patent. So you have a patent in hand on your product, but now

00:29:06 Kevin Mako: you have this innovation. You want to do a continuation in part.

00:29:09 Kevin Mako: You can't do it because that other patent is already issued. It's no longer pending.

00:29:15 Kevin Mako: So what people tend to do in terms of their IP strategy is

00:29:21 Kevin Mako: before that first, even if that first patent was approved, before it issues, they'll file another application called a continuation, not a continuation in part, but a continuation.

00:29:31 Kevin Mako: Basically just going along from that first one and maybe now trying a different set of claims, a different possible combination from

00:29:40 Kevin Mako: that original application. And that continuation might, as long as it's still pending, now you can file that continuation in part. Now you can add the innovation on.

00:29:50 Kevin Mako: So it's like a chain of applications that companies that have evolved IP strategy, that's what they do is they keep chains, they

00:29:59 Kevin Mako: keep the chain going by keeping. an application pending, even after their applications approved, they file another one, and then they file another one, and they file another one.

00:30:08 Kevin Mako: So that's core to the strategy of being able to, as you're asking, to kind of be

00:30:16 Kevin Mako: open and available and able to pursue those later improvements as having an application pending as long as you can.

00:30:24 Kevin Mako: This is incredibly valuable information, especially at a hardware startup, because one of the

00:30:30 Kevin Mako: best things, and we talk about this regularly on this show, one of the best things you can do

00:30:35 Kevin Mako: to really create a world-class product is, of course, first and foremost, start with a great

00:30:39 Kevin Mako: product you go to market, but more important, listen to your customers at that point in time.

00:30:43 Rich Goldstein: When you do go to your market with your first 500 units even, listen to what they say and those innovations, both from your engineering team, from your internal team, and from

00:30:53 Rich Goldstein: the market are likely going to guide you to some pretty powerful improvements to your product

00:31:00 Rich Goldstein: that may be some of your most patent-worthy or maybe some of the most valuable pieces to the long, let's say, 10 or 20 year length or life cycle

00:31:09 Rich Goldstein: of your actual product itself. Especially when we're talking a lot about additive manufacturing, doing a short run to get

00:31:15 Rich Goldstein: your new product to market, to listen to customer feedback, pre-selling on Kickstarter and Indiegogo, as well as getting feedback there before you've even gone to production.

00:31:25 Rich Goldstein: Well, the tools that Rich is talking about here allow you to have a bit of patent protection in the early phases or your early filing dates, but then also capture that

00:31:34 Rich Goldstein: value as your product evolves, which is very likely in a new product going to market, especially if you're a new brand.

00:31:40 Rich Goldstein: So I really appreciate, Rich, you bringing that kind of advanced patent strategy insight to our listeners, because I think especially in the hardware space, that's

00:31:50 Rich Goldstein: becoming more and more prevalent, especially as short run or test run manufacturing is becoming more prevalent as part of the planned strategy of getting a product to market,

00:31:59 Rich Goldstein: as opposed to tooling up 50,000 units and then hoping that works to sell over the next few years. People are starting

00:32:06 Rich Goldstein: with short runs and doing iterative improvements, kind of taking from the software world of agile

00:32:10 Rich Goldstein: development, bringing that into hardware, now that we have all these advanced tools that are available

00:32:15 Rich Goldstein: to us in the hardware space to keep iterating and developing and perfecting that product.

00:32:20 Rich Goldstein: and, of course, at the end of that, we want to have all of those iterations and improvements protected from an IP standpoint as well. So, thanks for that insight.

00:32:28 Kevin Mako: Rich, if we've got folks who are interested in learning more about how to do a patent with you or patent strategy with you, what's the best way to reach out to you in your firm.

00:32:38 Kevin Mako: Yeah, absolutely. Hey, could I just add a little footnote to what you do. Yeah, even better. Yeah, so I think really the key to all of this

00:32:48 Kevin Mako: is having strict. strong communication between whoever is handling the patent strategy and your engineering team

00:32:56 Kevin Mako: and the people that are handling the business strategy, like having open communications where people that are looking at the business strategy know

00:33:06 Kevin Mako: what features are being developed by the engineering team and your patent team knows what engineering team is developing and

00:33:13 Kevin Mako: what your business people are focusing on. That's key to all of this, is having communication between those three entities.

00:33:22 Kevin Mako: And yeah, I mean, if people want to learn more about me or get in touch with me, of course,

00:33:28 Kevin Mako: I've got a website, gold steampatentlaw.com, which is a way that you can get in touch with my team, find out if it's a match to work together with us.

00:33:37 Kevin Mako: There's also learning resources there, a series of videos which help you better understand the patent process.

00:33:44 Kevin Mako: I also have a book that I wrote for the American Bar Association that explains really. in plain English how patents work.

00:33:52 Kevin Mako: It's called the ABA Consumer Guide to obtaining a patent.

00:33:55 Kevin Mako: You can get that on Amazon. And lastly, I've got a podcast too, which you're going to be on soon. Innovations and breakthroughs.

00:34:05 Kevin Mako: And really, I feature people who have taken their path towards innovating a product and taking something that was just a mental concept and bringing

00:34:14 Kevin Mako: it out into the world. And I love telling those stories. And,

00:34:20 Kevin Mako: And that's pretty much it. You know, and it is really awesome to be here in this conversation with you and your audience

00:34:28 Kevin Mako: talking about patent protection in the hardware realm.

00:34:32 Kevin Mako: Rich, much appreciated for you being on the show. I really look forward to being a guest on your podcast as well. And with that, we'll say thanks a lot.

00:34:40 Kevin Mako: And we'll see you next time. Thank you.

00:34:42 Narrator: Thanks for tuning in to this episode of the Product Startup Podcast, the show that teaches you what it really takes to bring your product.

00:34:50 Narrator: to market and turn it into a big success. This podcast series is brought to you by Mako Design and

00:34:57 Narrator: Invent, the original and leading firm in North America to provide global caliber in-to-end

00:35:02 Narrator: physical consumer product development to startups, inventors, and small product business clients.

00:35:08 Narrator: If you're looking for product development help on your invention, head over to Mako -design.com. That's M-A-K-O Design dot com.

00:35:17 Narrator: For a free consultation from one of Mako-D-O-D-E-E-O-D-E-V-E-A. Design's Ford Design Studios from coast to coast. Thanks for listening and see you next time.