0:01

Hello and welcome to the Patent Pending

0:03

Made Simple Podcast. I'm your host Summer

0:06

Shah and with me is Jamie. Jamie, how

0:08

are you? Hey

0:10

Summer, I'm good. Squeezing in a last

0:12

swig of coffee before we chat today.

0:15

How are you? I am

0:17

doing well. I am glad you'll have a defense

0:19

against my exceptionally calming voice

0:21

here. Oh man

0:23

I got invited to this seminar thing

0:26

as part of my continuing

0:28

legal education, and it was

0:31

about sales and lawyers.

0:33

And there was this guy who was like

0:36

selling this

0:38

I don't know, sales training to lawyers.

0:40

And just seemed disingenuous

0:42

to me, you know, one of the things

0:45

he was talking about was like if you're going to sell an expensive

0:47

product, you need to seed that

0:49

into the minds of the listener

0:52

so that when you get to an expensive

0:54

price point, you have don't know, intercepted

0:56

that thought in some way, and I was like,

0:59

man, that is a a really scammy

1:01

way to do this. And then

1:04

I remembered that like there was this

1:06

like meta study of small businesses

1:08

that have failed and like a large percentage

1:10

of them, their biggest line item.

1:13

Expense was hiring

1:15

a business coach, some of them charge you

1:17

20, 40, 000 a year. I

1:20

was like that's just a crazy industry

1:22

where, you have a business that's struggling

1:24

and they're spending a ton of their money into,

1:27

how to get better. Yeah,

1:30

oh, that's cringy. Yeah,

1:32

I guess it's like the most vulnerable

1:34

population that somebody is

1:38

preying on for lack of a better term. And

1:40

it reminded me that the best advice

1:42

that I've ever gotten You know, like

1:45

in fitness and health and in business

1:47

is just to do the small steps that

1:49

make you better. And if you

1:51

want to lose weight, you should probably just go

1:53

for a walk for 20 minutes and increase that

1:55

by five minutes every week. It's very

1:57

straightforward advice and you probably don't

1:59

need to pay someone for that. But

2:01

I guess we as human beings are attracted

2:04

to the fad diets and all

2:06

that stuff. And maybe fad

2:08

kind of business plans and marketing

2:10

plans and all that stuff. Instead

2:12

of the slow incremental,

2:14

like small steps towards success

2:17

is, which is what I've always been. Yeah.

2:21

I think that's just, human nature, right?

2:24

To want the quick fix and get to your goals

2:26

right away. But yeah. And I think, the

2:28

patent process is very much like that.

2:30

Some of these things that you're talking about, you

2:32

have got this big goal. There are so

2:35

many things you need to do to accomplish

2:37

it. And yeah, you just have to

2:39

take it one day at a time, one

2:41

little step at a time. Yes,

2:44

thanks for helping me bring this around, Jamie.

2:47

That's exactly what I was thinking about. Ha. But,

2:49

yeah, and the other thing I was thinking about is

2:51

our software, the Patent Pending Made Simple software,

2:53

where it's I think for a lot of people,

2:56

spending a ton of money, thousands of dollars

2:58

on a patent application may not make

3:00

a ton of sense. I think the software is a slow

3:02

incremental step towards moving

3:05

forward and getting a patent application

3:07

done. And the podcast is also the

3:09

same thing, right? Learning all these requirements

3:12

and things you need to watch out for one

3:14

step at a time. I really like that

3:16

about what we do. Being for, little

3:19

to no cost. Hopefully our listeners

3:21

are getting something out of it. I have, I agree.

3:23

I hope so. I've, heard a lot of really good feedback.

3:26

I think people are getting a lot out of these podcasts.

3:28

So I am happy to be a part

3:31

of that. Not dramatic

3:33

improvement or small incremental steps

3:35

towards a better patent application and

3:37

a better process. I'm happy to be a part of that. Yeah.

3:41

Me too. Oh, that is good to hear. All right.

3:44

Very good. So what is today's topic,

3:46

Jamie? So today I think we're going to talk about

3:48

something that comes up for us occasionally,

3:51

and that is the question of

3:53

whether you need to have a prototype

3:55

before you file for a patent application.

3:58

So Summer, you want to take a first stab at the answer

4:01

there? This is going

4:03

to be the easy one today. There is no requirement

4:05

to having a prototype before you file

4:07

a patent application. We get this question

4:09

posed to us all the time that, Hey, I haven't

4:12

actually made this thing yet, or I'm still trying

4:14

to find 3d modeling company

4:16

or a prototyping company. Can I still file

4:18

a patent? And the answer is almost always

4:20

yes. Yes, absolutely.

4:22

There is a requirement that your patent

4:25

application has to describe your invention

4:27

in sufficient detail that

4:30

a person of ordinary skill in the art would

4:32

be able to read your patent application

4:35

and, basically duplicate

4:37

your invention, be able to make and use your invention

4:39

just from reading your patent application. So

4:42

that's the standard of how much detail needs

4:44

to be in your patent application.

4:47

A prototype can help with that, but, sometimes

4:49

you might already have that level of detail

4:51

without making a prototype. Yeah,

4:54

that's right. So there are two parts of this

4:56

question. One is what are, what

4:59

is required from a legal perspective? Which

5:01

I think you addressed here. The

5:03

second part is, should you file a patent

5:05

application if you haven't done a prototype

5:08

from a kind of a practical perspective? So

5:11

I'm sure we'll get to the practical in a second, but

5:13

you're right, the 112 the enablement

5:15

requirement is something that you

5:17

need to think about. You need to describe the invention

5:20

in enough detail that scony

5:23

art can make and use the invention. The

5:26

other requirement, I think of it as a

5:28

Section one on one requirement is

5:30

that your invention has to

5:33

be useful. And this

5:35

is an esoteric topic

5:37

that I've never seen come up actually, other than

5:39

my law school exams which,

5:41

you know For a utility patent, it has

5:43

to be useful is one of the requirements.

5:46

And one of the ways that you can be not

5:48

useful is if if the invention

5:51

is too speculative or hypothetical,

5:53

right? And the famous examples that

5:55

we always talked about in law school were like

5:57

time machines and perpetual motion machines.

6:00

Those things are considered too

6:02

fantastical or hypothetical.

6:05

In those cases, you can get a patent,

6:07

without even without a prototype yeah,

6:09

this reminds me of, my kids come up with these

6:11

things all the time. I'm just like, I

6:14

have an idea for a robot that's going to clean

6:16

my room and make me food.

6:18

They saw an episode of the Jetsons or something and

6:21

I'm like, yeah, you can get a patent on that.

6:23

It's a great idea, but you

6:26

have to actually develop it. If you want to get a patent

6:28

on it. Yeah, the shorthand terminology

6:30

that I always use is would you

6:32

have a kind of reasonable expectation

6:35

of being able to make this right? So

6:37

a robot that will clean your room

6:40

you need to, like you said, Jamie, describe

6:42

it enough detail that somebody can reasonably

6:44

make it. And if you don't have that level

6:46

of detail, then you're probably not there from a

6:48

patent perspective, right? Yeah.

6:51

So should we move on to the practical

6:53

side of things? Maybe we should talk about, when

6:55

it is a good idea to get a prototype or

6:57

is there anything else we should talk

6:59

about as far as the requirements of the patent

7:02

application? Yeah, I think

7:04

we've covered it. The legal side is very clear.

7:06

You don't need a prototype to get a patent application

7:08

done. As long as your invention

7:10

is not too hypothetical or

7:13

as long as you can describe it in enough

7:15

detail, you're usually good to

7:17

go from a patent perspective. So

7:20

yeah, let's talk about the practical that

7:22

side is a little bit more nuanced. Yeah.

7:25

So I think, I think we see this

7:27

frequently where somebody goes

7:29

ahead and files a patent application

7:32

without doing a prototype, which is

7:34

totally fine. We've described the device

7:37

in sufficient detail. And

7:39

we've met all the requirements of the patent application.

7:42

And then while their patent application is pending,

7:45

they, Go ahead and make a prototype where

7:47

they start trying to manufacture it. And they discover

7:49

during that process that there are some things about

7:52

their product that, that need

7:54

to change. So then we have

7:56

to go back and analyze the patent application

7:58

and determine, whether those changes are still covered,

8:01

whether we might possibly need a new patent application,

8:04

if the changes are if they're. Pretty big

8:06

changes. The pro the prototyping

8:08

process can help you work out

8:10

any kinks in your invention,

8:12

and a lot of times the prototyping

8:15

process can make you realize

8:17

there are issues with your invention that you didn't know

8:19

about, or that you didn't think about before doing

8:21

the prototype or help you

8:23

realize that there are other ways to do certain

8:25

things with your invention. There are definitely

8:28

some benefits of prototyping. Do

8:30

you have anything to add to that, Summer? Yeah.

8:34

I think that's a good point.

8:36

The additional piece is that Prototyping

8:39

can sometimes be very expensive, right?

8:41

Or getting an understanding of

8:43

what large scale manufacturing would

8:45

look like, or even small scale manufacturing

8:47

would look like all that stuff is

8:50

financially very capital

8:52

intensive. And getting an idea

8:54

of that is helpful, right? Before

8:57

you embark on this journey with your product.

8:59

Because if you have to outlay 30, 40, 50,

9:02

000 to get a product onto

9:04

the shelves. Then, I would like to know

9:06

that before I spend a bunch of money

9:08

on a patent application. So there

9:11

is a bunch of financial information

9:14

and a bunch of other metrics that you'll

9:16

identify by going through the prototyping

9:18

process. And that's helpful even

9:20

before you take your first step. Yeah. The

9:22

prototyping process can be expensive. I

9:25

feel like it's getting a little less expensive

9:27

with, how prolific 3D printing is

9:29

nowadays. That definitely helps,

9:31

with certain products. But even if

9:33

you don't do a prototype, just getting, Engineering

9:36

drawings sometimes is

9:38

sufficient or can be helpful

9:41

with working out some of those kinks in

9:43

your invention. Yeah,

9:45

that's right. Yeah. We know some fantastic

9:48

3d prototyping folks who do

9:50

a really good job. I think our last

9:52

client who got 3d prototypes

9:54

done they spent, under 200 to get

9:57

it done. And it's pretty incredible. So

9:59

if you guys, the listeners need referrals

10:02

or want to talk to 3d prototypers, we're

10:04

happy to connect them to you. Just

10:06

just email us or email Jamie. Thanks,

10:10

Summer. You're welcome.

10:13

Let's talk about this, Jamie. What

10:15

about the flip side? When do you think, or

10:18

if ever, do you think it's a good idea to file a patent

10:20

before you prototype? What do you think about that? Yeah,

10:23

I think, a lot of our clients

10:26

do that, and I, and that's totally fine to

10:28

do and, I guess you need to weigh

10:30

the pros and cons of filing

10:32

a patent application sooner than later.

10:34

If you've had any public disclosure

10:37

of your invention, you might need

10:39

to file your application. Sooner

10:42

than later, you might need to get that filing date

10:44

soon and the prototyping process

10:47

can delay, the filing of your patent application.

10:49

In that case, you would probably want to file

10:51

your application before you do a prototype.

10:54

And like we already mentioned, the prototyping process

10:56

can be expensive, so it might be

10:58

a good idea to, file a patent

11:00

application and then work on, finding

11:03

investors or potential licensees,

11:05

things like that. Do you have anything

11:07

to add to that, Summer? Yeah

11:10

yeah, I think that's right. It really

11:12

depends, I think this conversation

11:14

about prototyping first or

11:16

filing a patent first or doing any

11:19

R& D or development work before filing

11:21

a patent, vice versa, I think

11:23

comes down to a few different factors.

11:26

I think the number one is comfort

11:28

level, right? So we have clients who get very

11:30

nervous about proceeding with

11:32

the prototyping step or

11:35

the R& D step without being Patents.

11:37

And then we have other clients who feel

11:39

very comfortable about it, right? So they're happy to prototype

11:41

and develop and even sell their stuff

11:44

without patents. And then if they hit certain

11:46

metrics, then they'll come to us and want to file

11:48

a patent. But I think you have to take

11:50

into account your comfort level, right? We're,

11:53

human beings after all, right? Can't really

11:55

make a decision in a vacuum

11:57

if you're not going to feel comfortable about these things.

12:00

So I think that's number one, just know yourself

12:02

and what makes you comfortable. The

12:05

other piece of this is the cost,

12:07

right? For example, like medical device

12:09

companies or pharmaceutical companies they'll

12:11

spend, tens of millions, 50

12:14

million, sometimes developing a product. In

12:16

those cases, they'll definitely want to file

12:18

patents before they go down this road,

12:20

right? Very expensive road to, to build something.

12:23

But then we have other clients who build a prototype,

12:25

right? Under a hundred bucks. You have to also

12:27

just take into account the cost of the

12:30

prototyping, right? If you're going to spend

12:32

a lot of time and resources on prototyping,

12:35

it's a very complicated thing, then

12:37

you may be better off filing a patent first.

12:40

Before you expend a bunch of money

12:42

prototyping if it's going to be relatively

12:44

cheap for you to prototype, then you might

12:47

as well prototype first and then file patents afterwards.

12:49

So there, there is that factor. There's

12:52

probably a few more things to think about Jamie, but I think

12:54

maybe those are two big ones. Yeah,

12:58

I think the only other thing I would add

13:00

to that is it also depends on what

13:02

your goals are with your patent

13:04

application. Maybe it's not

13:06

your intention to ever manufacture

13:09

and sell that product, but rather your intention

13:11

is to get a patent and find

13:13

a licensee. And in that case, you

13:15

can probably avoid the expense of going

13:17

through the prototyping. That's

13:20

right. Yeah. Yeah. Or some of

13:22

our clients will, start a kick kickstarter

13:24

campaign. So you have to think about

13:26

the timelines of those things

13:28

and when you're going to be making a public

13:30

disclosure a lot of prototyping

13:33

companies will sign your non

13:35

disclosure agreement, which will give you some protection,

13:38

but I know we have clients who feel

13:40

uncomfortable with just having An

13:42

NDA level of protection, like they want an

13:44

additional layer of protection, like a patent.

13:47

So the patent can help with that. But it really depends

13:49

on who you're going to end up telling, right? If

13:51

it's making you feel comfortable that

13:54

this person who's receiving my information

13:56

is reliable and trustworthy, you

13:58

work with them a few times. Then

14:01

I think you can, push the patent. A

14:03

little further into the future, but if you're going to be

14:05

disclosing it to someone, you're not really sure if

14:07

it'll stay confidential or

14:09

if they're overseas might be difficult

14:12

to enforce your nondisclosure agreement.

14:14

Generally it's just hard to enforce an NDA,

14:17

right? Because once the toothpaste

14:19

is out of the tube from a disclosure perspective,

14:21

it's really hard to put it back in. In those cases,

14:24

the patent might be the way to go first.

14:28

Yes, absolutely. Another

14:30

thing to think about is having

14:33

a prototype might help you with your marketing

14:35

your customers being able to physically interact

14:38

with your product might help with, marketing

14:41

or selling your product. So I

14:43

think that's another factor to consider.

14:45

I think it just comes down to, each

14:47

individual and what their goals are with their

14:50

product, with their invention and what

14:52

their business goals are. And

14:54

I think. It varies greatly from

14:56

individual to individual. Yeah.

14:59

I'm glad you mentioned that Jamie, cause yeah, it also

15:02

depends on the invention. Cause we have a lot

15:04

of clients who want to license their invention

15:06

and for many of them, they

15:08

don't need a prototype at all, right? Like they just need

15:10

a nice cell sheet Like a picture

15:13

of their invention, and it's pretty self

15:15

evident how the invention is going to work.

15:18

So it's not like you need to go and send

15:20

your prototype to people for them to consider

15:22

licensing your invention. It's it's very self

15:25

evident. There are other inventions

15:27

where it's not self evident at all, right?

15:29

How the invention would work, how it

15:31

would all fit into a casing, for example.

15:34

In those cases, having a prototype is

15:36

very valuable and important part

15:38

of the sales or licensing process.

15:41

So yeah, it really also depends on the

15:43

invention itself. That's a good point. Yeah.

15:46

I think that about covers it Summer,

15:48

unless you have anything else to add about

15:51

prototypes. I think this was a lot of good

15:53

information again today. Yeah,

15:56

I think so. I'm glad we the legal

15:58

side was clear this time for

16:00

a change. I'm mad about that. But yeah, no, this

16:02

was great. Thanks. Thanks, Jamie. Okay.

16:04

Thank you, Summer. Have a good one