hello everyone this is steven
key thank you for attending tonight's
webinar
we have a very very special guest gene
quinn
i've known gene now for quite a few
years he's a patent attorney
he's also a law professor he's the
founder of ipwatchdog
if you haven't gone over to
ipwatchdog.com and
and i've checked that out he's got
articles on intellectual property from
from just about everyone so gene thank
you very much for coming on tonight
sure no problem stephen anytime i have
always happy to join you
before we start in i love this topic as
you know provisional
provisional patent applications because
i think it's a great tool let's talk a
little bit about
ipwatchdog and what you do over there
okay
sure um so ipwatch i like
so many things in life was unscripted
and it just it was so so as you know
stephen i'm
i have the entrepreneurs uh bug or bite
or however you want to call it uh
so i just put one foot in front of the
other
and saw some opportunities along the way
and
noticed many years ago i was the stuff i
was putting up on the internet because
we were so early to the internet i've
been doing it for almost 21 years
that people were just reading it and
then i used it
as a way to educate and to inform people
who wanted then legal work done so i
used it to collect legal work
and then you know fast forward to 2008
when
the financial crisis the real estate
market collapsed and then nobody had any
money and everybody was scrambling
so i had this asset and i had plenty of
time to write because nobody was hiring
anybody for work
so then i turned it into much more of a
publication and
and since then it's really become an
online magazine and we have guest
authors i've
just two years ago hired an
editor-in-chief which then
allows me to spend a lot more time on
doing web
free webinars and live programming and
virtual programming and
you know we're always looking for what's
what's next and
we're going to roll out a whole bunch of
stuff coming out in september
you know that's going to be a lot more
like hopefully if it comes out right
maybe
tv production kind of live streaming and
you know we're just never stopping
trying to move forward which is
sort of the entrepreneur's mantra well
you've done a fantastic
job over there jane but you've also won
quite a few awards as well haven't you
yeah i mean that it's been it you know
sometimes
it's been uh one of these events like
when somebody reads my
bio it's like did i really do all that
you know and it's like
so uh the aba the american bar
association
used to have us in their annual uh blog
category and we won the intellectual
property section
so many years in a row that then they
put us into the hall of fame and retired
is from consideration
and uh and then i i was
now twice to both in 2014 and then last
year
uh recognized as one of the top 50 most
influential people
in the intellectual property world
worldwide
and you know to win something like that
is like extremely humbling it's
you know because uh one of the other
people who won last year was uh
uh director yanko you know and
you know you know so obviously we do
different things and we're
influential maybe for now maybe but
influential for
obviously different reasons but uh still
to be
on that kind of a short list is uh
it's just you know it gives you chills
you know so
i'm just putting one foot in front of
the other and very grateful that
you know people like you and and your
fans
uh think highly enough of me to
to come over to ip watchdog and read me
and and and
you know share what we're doing on
social media and with their friends and
family
it's a great resource and i have to have
to admit gene
every once in a while there's a topic
i'm not familiar with
and i type it in google and sure enough
you covered it on your site and i always
go there to get it
so the content is spot on it's current
and if anybody wants more information on
intellectual property
strategy from some of the best in the
field please go over to
ipwatchdog and it's just a gold mine of
great stuff so
uh gene i want to talk about provisional
patent applications i
love them yeah i do too
so it's when did
was it the late 90s that that program
was developed is it 90 1995 do you
remember
yeah exactly 1995. you have a very good
memory
and it was uh when they changed the
patent term you might remember the
patent term used to be
17 years from issue and then they
changed it
to 20 years from filing as a part of you
know some harmonization efforts
and um so fundamentally a couple
a couple things were gonna were gonna
happen that were
um were odd uh
one in a nutshell what a provisional
patent lets you do
and we'll talk more about this i'm sure
is you can file your application
and establish priority without the
term clock running
but if you're in the u.s
you have to file a u.s application
realistically
before you file outside the u.s
and that's because you need to get uh an
uh
permission to file outside the us in
terms of a foreign filing license
and the easiest way to do that is with a
patent application filing
so there was going to be this odd
occurrence where
foreign folks were going to be in a
better position than u.s folks
because they could file a foreign
application because they're outside the
u.s
and they could establish rights for up
to a year before they filed in the us
without the term running so congress
realized that well that doesn't sound
right
so we need to create a provisional
application
to give us citizens the same rights
that a foreign citizen would have and
still get the ability to get a foreign
filing license
it's kind of nuanced but that's the
reason that they were created
wonderful hey um john please um
let's go to the first slide please
because i know there's a lot of people
that are new to this
jane that don't really understand
what a provisional patent application is
so can you kind of give us an overall
view of
why you would use it what does it do for
you and and what are some of the
benefits of it
yeah i mean a provisional patent
application the
the the best way to think about it is is
it is an application
that that allows you
to use in the first instances the
coveted terms patent pending
now if you don't have a patent
application on file
you you cannot use the terms patent
pending
that would be misleading and actually
fraudulent
it would come with penalties so if you
file
an application any application you can
use
patent pending so provisional is one way
you can do that
and it also by filing a provisional
application
it allows you to define whatever your
invention is at the moment
without starting the examination process
and without starting the patent term
clock
from ticking so the patent term the
20-year term that we're just talking
about
won't start until you file a
non-provisional later on
and it also doesn't start the
examination process
which is important because then you're
not going to be incurring any additional
costs
of examination or dealing with the
examiner
so a provisional application is really a
great way
and in fact now that we're first to file
you really need to get your applications
filed as soon as possible
after you've invented and filing a
provisional
is a great way to do it because there's
no formalities the focus is on
describing the invention you don't have
to do it in any particular way it just
has to be described
so somebody would be able to understand
it
so there's only positives with a
provisional now of course
where's the catch the catch is if you do
a bad
job describing your invention in the
provisional
then it's worthless and in fact it may
even be worse than worthless
it may prove that at the time you filed
you didn't have an invention
so you do have to really describe the
invention you can't just like
use some sales language
that's not what a patent is about you
have to describe
what it is from a structural technical
uh framework gene the reason why i like
it so much
is that if i come up with an invention
and i'm not quite sure if it's
marketable yet
and um i'm not probably don't have all
the information
maybe it's i'm at a good starting point
maybe i don't have all the
little details that i particularly like
like manufacturing details material
details but i have
i kind of i have a good idea i'm kind of
guessing a little bit
so i follow that provisional patent
applications extremely affordable
and within that year i'm learning quite
a bit i'm doing a little bit more
research i'm discovering things
and then i'm i have the ability to file
another provisional patent application
in which i can bring them all together
within that year
that's how i like it is that is that the
right approach
yeah i mean the the thing with the
the great thing about provisionals is
once you file it
you've established the rights with
respect to whatever you've described
so now you can go and start talking to
people about
what's in the application now in an
ideal world you would do
all of this stuff simultaneously you
know if you were a large multinational
corporation you would have engineers and
scientists working to do it you would
have
people working on is there a market and
doing market research
you would have marketing people figuring
out how would you
package it you know which are your
channels a distribution
what's your your target market what
how old they are you know demographics
and
who are your potential partners and
where are you going to sell it and all
that kind of stuff
but you're an individual you can't be
doing everything all at once
so you got to pick something first and
the provisional is a great place to
start because
it it locks in your rights then lets you
go and talk to
other people about the other steps in
the in
along the way and as as we've talked
many times stephen the one thing is
a lot of times inventions aren't going
to work they're not going to make people
money
so i'm a big fan of provisionals because
they they are relatively inexpensive
to file and particularly give the mentor
an opportunity to do a lot of the
work themselves if they have you know
like some guidance they can do it
i feel and and then if it doesn't
work out then they can move on to what's
next the worst scenario
is when if somebody spends all their
money on their first invention
and it goes nowhere and it's their
second invention that would have been a
success
you know they don't have any money for
that one yeah because if i rush out
out of fear and i rush out and file a
patent which i maybe i
don't know if it's going to be
marketable and i don't have all the
information
and i rush out and file it and find out
later
oops there maybe there's
maybe i missed something here then i
have to go back and file another one so
it really saves me i believe a lot of
heartache and time and money
um and so absolutely
yeah and you may actually find that
there's nothing that you can do
you know you may find out along the
process that it's a dead end
and that's perfectly fine you know i
mean not every
project you work on is going to be
successful um
so then you can just move on to what's
next and
how do you know if you're an inventor
right you know you're an inventor if
there's going to be
a the next invention you know
and um so you you gotta
do these things in a in a responsible
way and if you actually go to ipwatchlog
and you type in business responsible
there's going to be all kinds of
articles come up that's something i
preach
all the time you have to have a plan
and part of that plan is to secure
rights and pursue them for so long as
they make sense to pursue
and as you go along the way it's going
to maybe cost you more money
to do so you want to start off
cheap and then move forward
once you have reason to know the market
looks good maybe the patent search looks
good
maybe you've got partners that are
interested you know or any combination
of those
now gene let's talk about
really writing a provisional patent
application that has
value because you know how important
that is to me
yeah um and i know that
you know a lot of inventors think i'm
just if i've got this idea i'm
an invention i'm just going to hand it
over to a patent agent or patent
attorney and they're going to do all the
heavy lifting do all the work for me and
i
i know that's not true i know that
they're only as good as the information
you provide them
so if you do file a non-provisional
later you've given them all the good
stuff in that that provisional patent
application if not it won't be that good
is that correct
that's absolutely correct i mean you
have to give your attorney the
information or
otherwise the attorney's the inventor
you know the attorney didn't invent it
you did
and so you have to give them
the information so there's going to be a
certain amount of
explaining you're going to need to be
able to do to begin with
uh and the more you can do the cheaper
it's going to be for you
okay um and what
do you want to talk about i mean one of
the ways that i find the easiest to
explain is
with pictures um you know and that's i'm
a big fan
of and not not pictures
excuse me like photographs photographs
as it turns out believe it or not
and i'm an amateur photographer so i i
know of what i talk about here
it is extremely difficult to capture in
a photograph
what you actually have in your mind's
eye
you know it is it is terrible i mean how
many times have you taken a
photograph and say this would be great
except for that road sign this would be
great
except for that bird that's flying there
this would be great
except for the glare you know whatever
the case may be
now if you're taking uh a picture of
your invention
that's not going to be that's not going
to cut it what you want is you you want
good drawings they can be for a
provisional they can be cad you know if
you're gonna get
some uh some work done to uh
you're likely gonna have cad drawings so
you can use cad drawings
you can also use uh patent illustrations
and
the drawings are usually relatively
inexpensive
yeah let's talk about that um john would
you please um
turn to the slide that says drawings for
me please
because i knew gene you were going to
talk about this so i've
i think it's towards the end john
one more one more
one more there it is
okay gene i'm a big fan of drawings too
yeah and because i think a drawing
is like a thousand words yeah
quite easily easy yeah i might miss
something
you know what i like about drawings too
i look at a provisional
patent application um
it's kind of instructions for someone to
build this
i explain it i like you know when some
when a package comes to my house
and i order something and i have to put
it together and i love these
instructions and they always have
drawings
so it's like i i love that because
it tells me look these are the parts
this is how they go together and this is
what it looks like at the end
i love drawings because it's a road map
do you feel the same way am i wrong
about that
no you are a hundred percent correct and
i have
a real word story and i don't know that
i've ever told you this story stephen
you know and
i uh this is a client you know so if we
i'm in my uh studio right now and
one of the things i have in my studio is
a wake board
so i have this client that um i've i
originally helped starting back in like
2007
and he had come up with this really cool
wake board
and you know we were i looked at it and
um i knew there was something unique
about what was going on there
because you could see some really
elderly people
in their 70s or older getting up on this
wakeboard
or and then you could see people that
were very big like
uh the size of football linemen getting
up on this wakeboard now i'm a big guy
and i've never gotten up on a wakeboard
i just get dragged around the lake all
day long
so i knew he had something special there
and so we filed a patent application
and now today the company's worth
probably about ten thousand ten
ten million dollar company and uh
so he kept telling me that
the method of riding the wakeboard
is unique and he wanted to patent it and
i'm like
are you kidding and he was insistent
so when you have a client that's
insistent you you know you you
believe them i said look if the method
of writing the wakeboard if we have any
hope of protecting this
we have to storyboard this
like a cartoon almost you know like
frame by frame
so we did that we had like nine or ten
drawings
showing the person from being in prone
position
then you know like what they would be
you know like a split second later in a
split second later in a split second
later
all the way up until they're standing
riding the wakeboard
being towed behind the boat so
in the first patent we got a up on the
wake board
um and what really turned out to be the
most valuable protection that they got
was eventually they got protection
without me
representing them getting the claims it
was a friend of mine uh took over the
case
uh got a method patents on riding the
wake board
and what was unique in it was that
when you actually did the physics and i
kept telling this is a good story for
two reasons
because i kept telling him i was like
there's something going on here
that we don't understand we need to hire
somebody to do the physics you know
whether it be a starving
phd student or something but there's
something
magical here that we're missing you know
and of course there wasn't enough money
to even hire you know a starving student
to run the
physics equations and i wish he had done
that but
so that's a word to the wise you know
when you can
add physics to your story in math
it's it's good uh and you can get help
with that from
your local colleges don't feel like you
got to hire an expert
for an extraordinary amount of money
hire a master student or a phd student
then those people are making nothing
anything that you help them with
and it'll be a line item on their resume
you know so
in any event what wound up being the the
magic here was
the way that you would take the the
tow rope from the board
it was attached to the board such that
you had to take it
off and pull towards your center of
gravity
and that made all the difference in the
world with ease of riding this thing
and it was clear as day shown when we
storyboarded it but if we didn't have
the drawings
they would never have gotten those
patents
because we didn't know that when we
filed the the application so there was
no text
saying it you know gene i
thank you for that story because i tell
everybody
do a flow chart from the very beginning
to the end
as just kind of your guide you do this
you do this you do this i want to see it
and
you can start to look at all the
elements that are involved it kind of
to me it kind of gives me this skeleton
of what i need to
think about especially when i storyboard
it just like that i love that because
it tells us it it guides you it tells
the story
that even potentially the patent
examiner can see it and understand it
maybe even easier because i think
um it's important so and that's actually
exactly what happened in this case
because my friend
went to the examiner and they did an
interview and he brought the board
and he says i literally he got up on the
examiner's desk on the board like he was
what and showing him how it worked with
all the forces and everything
and the examiner okayed the patent right
then you know it
it matters that much because when you
can say and right now i'm showing you
figure this in the application and right
now i'm demonstrating figure this
and you see how i'm doing this here you
know and it made all the difference in
the world
i love it hey um john please find the
one slide where it talks about
manufacturing
because this is a good segue to talk
about this okay gene
something you talk about i i really love
because
sometimes we come up with an invention
but we're not quite sure
about how it maybe is put together
maybe we don't know the components maybe
we're not electrical or
a mechanical engineer maybe we don't
even know about manufacturing
so i know how important that is
so when i work on my stuff i go look i
anything i don't know i need to find out
and
i've even found people on linkedin
that if i have a my invention's going to
impact a piece of equipment and i want
to know how it's going to impact
it i will look up the piece of equipment
and find an ex-employee of that company
find them on linkedin and and hire them
as a consultant have him sign an nda
work for hire
agreement to pick his brains because
he he has real-life knowledge that it's
important
for me to put in my application am i
going too far with that
no i mean you need to have i mean the
the rule is this
you need to describe the invention so
that others of skill in the
area whatever area you're inventing in
can both
make and use the invention now inventors
are
great at explaining how to use it
they're less great at explaining how to
make it
and uh and i
and you know stephen we laugh you and i
don't know we've had this conversation
but we in the patent area we laugh about
it you'll ask an inventor how to make it
and they'll tell you how to use it and
then you'll say no no i need to know how
to make it and then they'll tell you how
to use it again
and then you think you finally get it
across and then they'll just
reword how they told you how to use it
you know and it's like it's not really
all that helpful
yeah you need to know how to put it
together
okay now you don't need to know how
somebody whether it's going to be
in china or whether you make it in
america how they're going to
mass produce it but you need to be able
to describe how to make
one yeah you know what i even like
gene i'm i'm i take it but you know yeah
i take it pretty as you know i take it a
little further than most people
um and you don't have to do this with
every idea i want i don't want everybody
that's listening tonight and going god
this is so
technical but if if you really want to
become a professional at this
you should listen to everything we're
talking about tonight because
over time you just get better at this
right
and sometimes when i design an invention
and i know how to manufacture it at the
lower
lowest cost that to me has huge value
now
especially if i'm going to try to
license it and and knowing that
going into those meetings and talk about
my point of difference and i'm going to
get to that in a minute
that knowledge i can either find out
myself i could
watch those youtube videos i might go to
a manufacturing facility i might find a
materials expert i dig a little bit
deeper because i know those little
the devils and the details jane
absolutely i mean 100 and you know
inventors will always say but
i want my patent to be broad i don't
want it to be narrow
well not true you want it to be both
you you can't have a patent that is only
narrow
and you can't have a patent that's only
broad
what you want to do is you want to
describe it so that it's both
broad and narrow um so in the way i
describe it is this
is and so i know a lot of
you folks are probably not at the point
where you have a
product that is ready for sale but let's
say that that's who you were right now
what you want to do if that's you is you
want to
have a patent that covers exactly
literally what you're selling so that
that way anybody who knocks you off
it's an easy easy they're knocking you
off
there's no there's no doubt about it you
know it's an easy case
but then you also want to have a broader
right so that when people kind of start
fishing around the edges
and maybe they're not literally knocking
you off but they're changing this or
modifying that
that you have broader protection than
what you're literally selling
so you can prevent them as well so the
patent is
a is not a single right a patent is a
whole bunch of different rights
so so don't think of it as is an
all or nothing you want to have both
general
and specific and i don't think you're
going too
too much on this like you say if you
want to be a professional
you have to treat the endeavor like
professionals treat the endeavor
and the one thing i will say is to make
sure folks aren't scared about it is
that if you in the industry have an
occasion to look at the patents
from large corporations um i would say
probably most large corporations and
this is going to be generalization but
not without
some real specific reasons and
reasoned facts behind it probably at
least 50 to 60 percent or more in some
cases
of their patents are are not that great
they're okay you know they're okay
enough to get granted
you know so even the big boys don't
do it the right way 100 of the time and
they still get rights
so what we're trying to talk to you
about is doing it
the a way a hundred percent of the time
so because if you're striving to do it
the a way and you make a mistake
well so then you got it b-plus you know
that's still going to be better than the
vast majority of stuff that's out there
i'm really glad you said that because
you you know i'm a real stickler for
this
okay and um and i'm glad you feel that
way because i
i i do believe that as we said at the
very beginning you have to give
your patent agent or patent attorney
when you
when you're ready to file a
non-provisional and you if you know your
invention is marketable
you have to give them the good stuff um
yeah
i want to talk about now take it
like i said a little bit further i want
to protect my invention but i want to
protect the innovation
like you said make it broad now so i can
so it's broad enough that if someone
gets close to it
um i can maybe keep them at bay so john
please
turn to variations of workarounds please
there you go all right am i crazy gene i
have a question for you here
okay well you probably are crazy we're
both crazy right
i i i'm always thinking how could
someone work around me
okay i'm always thinking because i know
these engineers and i know people are
really smart and i know innovation keeps
on moving forward
and i know that if i kind of get ahead
of it if i i call it stealing it
i steal my invention from myself
and i start that think about it what's
that
i love that by the way yeah i i i want
to
because i've been in these meetings
before and i know these guys are really
smart engineers and they've been taught
to work around stuff
and so i'm always thinking how would
someone work
around me and what type of variations
could i put in there not only to protect
my invention today
but maybe maybe a little maybe the
innovation
is that a smart move absolutely i mean i
think it's absolutely essential
you have to do that because that's what
people do
is and there's you shouldn't be
shocked and you know we we can get on
our high horse and say you know that
that shouldn't
happen and they're stealing stuff and
there's a difference between when a
company like
sometimes apple's been known to do this
sometimes microsoft's been known to do
this i've just read the other day that
you know google or amazon are now
starting to do this which is not
shocking you know because
a lot of the big companies have done
this at some point in time or another
is is they'll let you think they want to
deal with you
then they'll have you come in they'll
have you lay all of
your inventions out on the table and
then once you lay it all out on the
table they don't need you anymore and
they start making them
now if you don't have the rights to stop
them
then you've got nothing you know and uh
it's not personal it's business now i
think that miss
leading you on is is really rotten but
you know so save that situation that i
think has
you know kind of a uh you know it's just
evil
but infringement is not moral
it's people are looking to say you have
this right
it's almost like you think of your
property you know people are looking at
your property well this is where your
property line ends
so if i stand here i'm not trespassing
it's not a moral uh decision
it's just business so it's your job
to make sure that that property line
extends as far as possible
and that's how you do it with variations
and alternatives now the two different
the difference
and it's kind of a slight difference is
with an alternative
you would have uh it would be a whole
different version
and with a variation it would be okay
well and not to say this would be a
patentable distinction but
it comes in green or blue i mean so
that's the same thing comes in green or
blue so
let me give you a for instance to put
this for let's say
you you've invented a device that uh
that
manages to clip papers together
so there's the ordinary paper clip but
then there's also a binder clip
now those two things are structurally
different
okay so they would you would need to
have
uh and then there's even differences
within the ordinary paper clip you know
there's the ones that are shaped like
in an x form or the ones that are kind
of loop around themselves
you know so you would have different
alternatives
structurally yeah and then you would
have different variations
meaning that well it could be made out
of metal or they could be made out of
plastic
and you want all of those things you
want a matrix of variation whether it be
a true variation like we just talked
about
or an alternative um and that's where
you get the real breath and the
and i've had so many inventors tell me
over time it's like but
i'm never going to do it that way and
i'm like i don't care whether i'm going
to do it that way
somebody is going to want to do it that
way and i've fought so many inventors
who say
nobody would ever do it that way and
finally you know i just got
take and say okay look and you can't
well you probably can do it now i mean
home depot and lowe's they're open
now but go to home depot go to lowe's
whichever is your preferred
home improvement store walk into the
aisle where they sell shovels a shovel
for god's sake
you're gonna see everything from like a
square
metal uh piece of metal
on a pole all the way up to like
the ferrari of shovels it's gonna
you know be concave and it's gonna be uh
sharp at the tip and it's gonna have the
soft memory foam padding and
you know and it's okay well which one
are you gonna want
well part of it it's gonna be your
budget and part of it's gonna be
um what do you need to do um and
for some people the the cheapest
shovel no matter how much harder they're
gonna have to work
is gonna be a perfectly fine substitute
for the best shovel
yeah um so when you invented a shovel
you need to make sure that you have the
cheapest shovel disclosed
as well captioning not
it from available yep because if someone
does
come close to it and if you've and
you've thought about that
you can keep them at bay because because
i as you know i was in federal court
defending my patents and gets a little
toy company
lego back in the day yeah a little and
they were very smart i mean they they
didn't like the price
and so they reverse engineered it very
smart engineers i i have to kind of
admit they did a good job gene
um yeah and that's the thing that's
frustrating you want to hate them
i i look back they did they did a good
job
and it was fair game i tried to tell
everybody
it was it's fair game but it's our
responsibility now
to say all right now if that's the way
the game is played and i know that they
might do that how can i
prevent that because they they get
hung up on a couple words okay so
um and that's another the same friend of
mine who i was telling you just talking
about earlier before he's like
patent litigation is one of these things
where you they take a word that
everybody knows what the meaning of
is and then in litigation then suddenly
nobody can define it and
everybody questions what it really means
and i'm sure you had that experience
right i learned
that patents are words
that can be interpreted by different
people at different times
that's being generous that's a very
that's a very slippery that's a moving
target that i don't really
want to be involved in too many times so
anyway no no no
no but once you are involved in one and
people know that you're willing to stand
up for yourself
then you know
you hopefully never you're not going to
ever be involved in one
but part of this too is you have to
approach this like you're a serious
professional
so you've got to check these boxes along
the way you have to
define your rights you have to present
properly you need to
be a professional you know if you act
like a gibloni people are going to treat
you like a gibloni
what i like about this and everybody's
listening tonight what we're talking
about
what gene just said is becoming a
professional and how you present
yourself so
when someone challenges your ip
and they're going to do that because
there's prior art i'm going to get to
that in just a minute
but when you know your point of
difference and you know you've done some
manufacturing
background you know your material and
you've got workarounds and variations
and you've got all these drawings
you come to the party really prepared
and they look at that and they go you
know it's probably just best to work
with this guy because
he's probably an asset so
i think it has these type of
tools as a provision provisional patent
application if it's done well
really serves you well forget about
defending that gene forget that world
but no yeah um
right yeah because that's really what
they what they want
is they want the value you bring you
know because
the other thing too is from the minute
that you file the application
the application is stale and getting
staler by the day
because you don't have a duty to update
the application now
you might make such an important advance
that you'll file another application on
it but a lot of times the advances that
you're going to make
are going to be tweaks around the edges
they're the things you just talked about
stephen about
well i figured out how to make it a
little bit more economically
well but that maybe probably doesn't
warrant a patent
but that is the type of thing that a
licensee would really be interested in
knowing
yeah it gives it gives it that perceived
ownership i always talk about so much so
yeah um john please go to um patent
searching because that's
become pretty important to me
yeah and this is not a real
this is a you know a difficult topic now
um i i love this gene
and i tell everybody it takes a long
time to love this
okay um i always tell everybody too if
you really if you're having
a problem falling to sleep at night
read read a patent application
and trust me you'll fall asleep real
quick um yeah you will
what i like about this though by looking
at
um not just all prior art but prior
patents
to me there's stories that are being
told
and it explains the history of
innovation
or what were people thinking at this
particular time and i can see the
advancement
of innovation too yeah you really can
i love it that way and but also
you know if you have an idea an
invention if you're really serious about
it i think you should learn how to do it
yourself
okay and knowing that you'll never be an
expert at it that way but you'll be
pretty darn good
and it doesn't matter you're never going
to find anything in everything anyway
okay but that's a whole nother argument
but yeah i also believe
if this is something you're serious
about learn how to do it yourself so
maybe you might find some things that
you can learn
such as what companies are doing what
you can look at the innovation and see
where they're going you can see who's
filing it
you can look at the variations of course
the
the different different types of
inventions in your particular field
but it really tells you do i have a
point of difference here
and and if i don't have that point of
difference i've got to make a decision
that i either redesign rethink it or
walk away
and i also believe you should hire a
professional to do it too
am i right or wrong yeah there's a lot
there's a lot there you know let let's
go back to the
where i was just saying in an ideal
world you you do
all of it at the beginning and money
spare no expense like this
guy said in jurassic park but um
that's not the world we live in so at
least not as
inventors usually in entrepreneurs which
most of you on the call probably are
so what we're trying to do is figure out
a way to tell you to do this in
in a in a systematic way that you can
move forward with
that is responsible that checks the
boxes gets you the information you need
when you need it
and uh let you move forward so the first
thing is is since we live in a first
invent world
which you must interpret as file first
what we have started telling people is
is that
it is probably best to
file the provisional application before
you do
a prior art search now asterisk what
does that mean
certainly before you would do a
professional prior art search with a
you know a patent search firm because
that can take a couple weeks
to get back and it's going to take you
probably a week or
so or 10 days to go through um
all the patents you know because they're
they're boring and difficult and
a search can come back sometimes with
anywhere from 10 to 50 patents that
you're going to need to take a look at
so does it make sense to
put off filing a provisional
or should you go and file the
provisional get your priority date
and then do something i think what you
should do is
you should probably do some you got to
do some kind of searching on your own
first is you i got to do a product
search on google or whatever search
engine you're using
to see can i find it is anybody selling
it
can and then do some kind of prior art
search and the more you
you try and get better at it on your own
like
like you were saying stephen the better
off you're going to be because
um in your pro and don't be
uh surprised if you don't find anything
because when you first start searching
nobody finds anything
that's you have to search a lot of times
for an hour or two
before you start getting to the good
stuff and then once you get to the good
stuff
that's when it really starts to open
because
they'll start you'll start using the
same terms that you're reading in the
patents that are close
and then that then they your keyword
searching gets better and better
so if you're trying to figure out
what's out there do some searching on
your own but don't do so much
that you're going to put off getting the
filing date in
because the to file a provisional
application
is so cost effective
the filing fee for a small entity is 140
and for a micro entity at 70 dollars
that you're going to want to file now
then at some point after that
then on the certainly between then and
when you file the non-provisional before
you file the non-provisional
you absolutely need to have a
professional prior art search
done by somebody who is uh does this for
a living
because even they a search by somebody
like that
is not going to be nearly as good as the
examiner search at the patent office
simply because by the time you get to
the patent examiner you're going to be
dealing with like the one person
who has for 40 hours a week been dealing
with exactly this technology sometimes
for
like the wakeboard example i gave you
that examiner was a 30-year examiner
in in the art of water sports you know
so the
the searchers i mean what kind of search
you think that guy could do
you know but wait wait a minute wait a
minute
okay i i that doesn't mean that doesn't
mean that you shouldn't look
you should look okay and the but the big
thing and i guess where i was going with
all this is
let me dial back a little bit because
more important than
finding anything i think is
reading what is in a patent and starting
to familiarize yourself
with what is there and and how do people
describe
inventions and how do i need to describe
my invention
and is there is there anything out there
that is too close for my comfort and if
there is
if it's too close for for your comfort
then guarantee you there's going to be
other stuff that's closer
so that sounds fair stephen it sounds
fair
to two things though um
i do believe you have to help your you
do it yourself
but you also have to help the person
that in the third party independent
search person and i don't think it
should be your patent attorney by the
way and that's a whole nother discussion
i think you need to help them do a good
job too because
yeah it's happened to me where um
my patent attorneys found a third party
in dc they did a search and they didn't
find anything
um and later you know
after i filed two patents someone else
found two okay so
so i kind of wasted a lot of money
because that search wasn't really done
correctly
because i wasn't talking to the third
party my attorneys were
and i learned i should have given my
patent attorneys more information to
give to them
right and and kind of know the space i i
need to know the market
similar products on the market i know i
need to know some of the similar
uh patents that are out there to do my
own searching so it goes back again
for you to become the expert um i mean
absolutely
okay that's one thing i've learned but
here's the funny thing gene i understand
these patent examiners
they're really nice guys they don't they
don't seem to be nice guys but they're
nice guys
yeah really they they really know their
area
you're right but why is it when you get
that office action
they're always they're all they're
always
showing you those priorities that that
nothing close to what you have why is
that if they're so good at it
i wish i had an answer for that i mean
the answer is going to be so
unsatisfying i mean
you know the review that you get
a lot of times the first time out from
an examiner
is usually pretty poor um
and wait a minute you just said they're
experts at this so
why is that they're experts at searching
and
what it is is they have they're under
time crunch i mean they only
have but like so for in an area like
uh like the so maybe something like
simple like
kitchen gadgets they probably only have
12 or 13 hours
for the entirety of the application and
that would include
doing the the search reviewing the
search
which is going to take them two to three
hours to do regardless of what they're
searching for
uh even if it's just a kitchen gadget uh
reading your application going over the
claims
creating the office action then uh
talking you on the phone for 30 minutes
or whatever
then uh getting your response back
reviewing it
maybe doing another supplemental search
finding some more art doing another
office action
i mean it's not a lot of time so a lot
of times i think
that the examiners um
there's two answers really the one is
the examiners are so crunched on time
that they're going too fast and two
is sometimes we assume that they've read
the
the specification they don't read the
specification
they look at the pictures and they read
and they read the claims
no okay but gene is
could that be off topic for just a
second could that be the reason that we
have some bad patents
well i'm sure i'm sure it is to some
extent you know i mean
and and it is i mean right and here's
the thing there's there's so many
applications that are out there
if and most applications are or most
patents are not going to
make people money so if the office if
the examiner spent
all the time getting it right then
could you imagine what the backlog would
be okay
all right fair enough and and you know
so the answer sucks
is what it is but the first time what
you can't what you can't do though is
take
two the first action you get from the
examiner
too much to heart okay
so so gene we maybe we should have you
back on to talk about
p tab um and that's a little another
i'd love to yeah it's a whole nother can
of worms that's a whole nother can of
worm
so um we're coming up on the hour i know
we only have
six minutes left john is there any
questions there that we could probably
answer one or two because i
i know i don't want to go too much
longer yeah
i love this topic by the way i i yeah
i don't do you have any questions
yeah i'm taking a look here let's see if
not oh wow
yeah let's see here um
all right are you taking clients right
now gene
um right at the moment i am not
affiliated with the law firm
um but if you need help finding an
attorney i can uh
recommend somebody to you that can
probably
help you so if you want to find me on
linkedin link in with me is probably the
easiest way to get in touch with me
and uh and i'll uh ask you a couple
questions and try and
point you in the right direction gene
life is pretty good
you're you're you're a patent attorney
but you're not practicing anymore
because you you're educating us so good
job at that
yeah yeah i'm trying i mean what
it is i'm an entrepreneur i'm trying to
do my my own
thing here with the the building a media
empire we'll see how that goes
what's going well all right what next
question john yeah
next one uh does finally a provisional
patent start the
international time clock for publication
um yes on the when you
you if you want to get some rights
internationally
you would file eventually a pct
application would probably be your next
stop
and all the pct dates are geared towards
the first filing date now if you are
going to go outside the us
what you should make sure you do in your
provisional application
is make sure you have at least one claim
because some countries and in
particularly the european patent office
has become a stickler for form over
substance
if you don't have a cl you don't need to
have a claim in your provisional for us
practice but in the european practice
they say that well if you don't have a
claim we don't know what your invention
is
now you'll see how much ridiculous how
ridiculous that is
because if you say i claim the
let's say you're you disclosed a kitchen
gadget
and you say i claim the device that i
have disclosed
that's perfectly fine now they suddenly
know what your invention is
so you can literally make it that
generic um but you have to have at least
some kind of claim if you want to go
outside the united states
as best practice
excellent um what happens if after
filing my ppa
i changed my prototype or parts of it
um what you
well what you probably should do is
file another provisional application
then
the question will become is 12 months
from the filing of the first application
whether or not that first priority date
continues to have relevance
if it does then you would need to file
the non-provisional
and you would wrap both or everything
together that you have at that point
into a single non-provisional sometimes
what you might
find is is that the first provisional
that you filed
was was in retrospect inadequate
or maybe even wrong after further
testing
or just you know it described a version
of the invention that just didn't work
very well or not
maybe at all or what have you so that
you don't worry about that priority date
and then you'll
then worry about filing 12 months from
the second
provisional but those kind of decisions
if you're going to throw away a priority
date like that
i would encourage you to do that only in
conjunction with consul
consult with a attorney or agent because
giving up on a priority date should be
considered a very big decision
okay really okay
with potential legal consequences
because the reason is
let's say that if you gave up in a first
to file world if you gave up a priority
date
and you had been offering it for sale
for example
or talking about it published publicly
and displaying it
you may have created certain problems
that would prevent you from getting
a patent um so that's why
you really need to before you would give
up a priority date
talk to somebody about your particular
factual situation
just to make sure that you're not going
to be making a a costly mistake that
will
prevent you from ever getting a patent
all right
great advice uh
yeah john we're going to stop there
because i really want to do this on time
and
i know gene has a lot to do gene thank
you very much for coming on
no problem no problem at all and if you
want to have me back i'd be happy to
come back and do it sometime you know i
always enjoy talking to you stephen
yeah i'm going to ask everybody put in
the chat box if you want gene back
please
thank him tell me the next topics you
want to hear about
gene knows what he's doing he's
practical you guys here's the difference
he's given you practical information and
that's what i really love about your
your perspective on all this because it
does get expensive and there is some
risks
and you want to be smart with your
dollars if you are you'll keep on being
in this business longer
that's absolutely true you know you
really need to
be smart thanks a lot
and thank you all for uh listening to me
for an hour oh
that went by fast john thank you very
much for removing the slides and making
everything
easy for me my pleasure okay good night
everybody
good night
you