Patent Pending Made Simple

SummaryIn this episode, an M&A advisor and business broker, Jason Brown talks with Samar Shah about preparing a startup for a successful exit. He emphasizes the importance of having a clear vision and exit plan from the beginning, including various scenarios. He also discusses the benefits of inorganic growth through acquisitions and the need to build a strong team that can operate independently from the founder. Brown highlights the value of understanding the buyer's perspective and de-risking the business to maximize its value.TakeawaysHave a clear vision and exit plan for your startup from the beginning, including various scenarios.Consider inorganic growth through acquisitions as a means of entering a market, generating cash flow, and leveraging existing customer relationships.Build a strong team that can operate independently from the founder, ensuring consistency in messaging and customer experience.Think from the buyer's perspective and de-risk your business by addressing potential challenges and building value that the buyer doesn't have to create.Invest in yourself and continue to develop your skills and mindset as a founder to drive the success of your venture.Chapters00:00 Introduction and Legal Matters02:02 The Importance of a Clear Vision and Exit Plan05:49 Inorganic Growth through Acquisitions10:56 Building a Strong and Independent Team13:47 Thinking from the Buyer's Perspective

SummaryIn this episode, the hosts discuss the different types of rejections that can be issued by the Patent Office when filing a patent application. They focus on 102 rejections, which are based on prior art, and 103 rejections, which are based on obviousness. They explain the timing of responding to rejections and the options for overcoming them, including amending the claims and making arguments based on the prior art. They also highlight the importance of carefully considering the prosecution history and avoiding creating a messy trail. Overall, they provide a helpful overview of the process of responding to rejections. The content of this podcast should not be interpreted as legal advice. All thoughts and opinions expressed herein are only those from which they came.TakeawaysThe Patent Office can issue various rejections when filing a patent application.102 rejections are based on prior art, while 103 rejections are based on obviousness.When responding to rejections, it is important to carefully review the references cited and consider amending the claims.Arguments based on the prior art should be supported by evidence and should be carefully considered to avoid creating a messy prosecution history.The timing of responding to rejections is typically three months, with the possibility of extensions.Chapters00:00 Introduction and Overview03:20 Types of Rejections10:50 Timing of Responding to Rejections15:04 Responding to 102 Rejections29:27 Avoiding a Messy Prosecution History35:06 Conclusion

SummaryIn this episode, Samar and Jamie discuss various resources for independent inventors. They highlight the United States Patent and Trademark Office (USPTO) website as a top resource, which provides information on patent basics, patent scams, and free services offered by the Patent Office. They also mention the Inventor Assistance Center and the Pro Bono Program, which are available through the USPTO. Other resources discussed include search tools like patents.google.com, PQ AI, Pantzilla, WIPO, and the European Patent Office. They also mention local inventor groups and inventor clubs, law schools and nonprofits that help inventors, and the book 'One Simple Idea' by Stephen Key as a great resource for patent licensing.TakeawaysThe USPTO website is a valuable resource for independent inventors. It provides information on patent basics, scams, and free services.Search tools like patents.google.com, PQ AI, Pantzilla, WIPO, and the European Patent Office can help with patent searches.Local inventor groups and clubs offer a supportive community and access to experienced inventors.Law schools and nonprofits can provide pro bono assistance to inventors.The book 'One Simple Idea' by Stephen Key is recommended for those interested in patent licensing.Chapters00:00 Introduction and Purpose of the Episode01:24 Top Resources for Independent Inventors05:37 Useful Patent Search Tools10:21 Joining Inventor Groups and Clubs13:39 Pro Bono Assistance from Law Schools and Nonprofits15:07 Recommended Book for Patent LicensingResourceshttps://www.uspto.gov/https://www.uspto.gov/learning-and-resources/inventors-entrepreneurs-resourceshttps://www.uspto.gov/learning-and-resources/official-gazette/official-gazette-patentshttps://www.uspto.gov/patents/basics/using-legal-services/pro-bono/patent-pro-bono-programhttps://patents.google.com/https://projectpq.ai/https://docs.ip-tools.org/patzilla/https://www.wipo.int/patentscope/en/https://www.epo.org/en/searching-for-patents/technical/espacenethttps://inventleader.org/inventor-groups/https://inventright.com/books/one-simple-idea/

SummaryThe conversation discusses New Year's resolutions for inventors with regards to the patent process. The main theme is taking advantage of the one-year timeframe while the provisional application is pending. This includes developing the invention, finding manufacturers or potential licensees, and determining a plan for monetizing the invention. The conversation also emphasizes the importance of having a strategy and an end goal in mind to maximize the value of the patent. Other resolutions mentioned include not arguing with examiners and improving time management by responding to patent professionals in a timely manner.TakeawaysTake advantage of the one-year timeframe while the provisional application is pending to develop the invention and determine a plan for monetizing it.Have a strategy and an end goal in mind to maximize the value of the patent.Avoid arguing with examiners and instead engage in productive dialogue to reach a resolution.Improve time management by responding to patent professionals in a timely manner.Chapters00:00 Introduction and New Year's Resolutions01:21 Maximizing the One-Year Timeframe06:07 Consequences of Not Taking Advantage of the One-Year Timeframe10:17 Productive Dialogue with Examiners13:03 Improving Time Management15:25 Conclusion

In this episode, Jamie and Samar interview Peter Drakulich, co-founder of 52 Launch, a company that helps individuals bring product ideas to market. They discuss the journey of bringing product ideas to market, emphasizing the interplay of patents and market disclosure, comprehensive support services, and the value of leveraging platforms like Amazon and social media for successful product launches. They also highlight the challenges faced by independent inventors and the iterative process of product development based on consumer feedback. Tune in for expert business advice and to hear about the host of resources 52 Launch can provide.Takeaways:Evaluate market validation: identify a problem and offer a solution.Value iterative product development.Utilize platform opportunities like social media and Amazon.Understand manufacturing strategy. Commit fully or not at all.Patent protection should work in tandem with your marketing strategy.Analyze where your competition lacks and capitalize on that.

In this episode, Samar and Jamie delve into the different types of patent applications, and the key information to remember for each one. There are 3 main types of applications -- design, utility, and plant. For utility patents, you may file a provisional or a non-provisional application as well. PCT applications make it possible to apply for a patent in numerous countries. Learn more about the qualifications, deadlines, and costs for each one!

In this episode of Patent Pending Made Simple, Jaime and Samar tell you what a notice of allowance is, how it should be treated, and what you need to do after receiving one.SummaryIn this episode, the hosts discuss what to do after receiving a notice of allowance on a patent application. They explain a notice of allowance and how long it typically takes to receive one. They emphasize the importance of reviewing the notice of allowance and any examiner's amendments and paying the issue fee. They also discuss the duty of disclosure, the need to file an information disclosure statement (IDS), and a request for continued examination (RCE) if new relevant references are discovered. The hosts also recommend considering filing a continuation application and discussing the timeline for patent issuance. They mention the importance of patent marking and needing maintenance fees to keep the patent in force. The episode concludes with a reminder that the podcast does not provide legal advice.TakeawaysReview the notice of allowance and any examiner's amendments carefullyPay the issue fee to move forward with the patent applicationDisclose any new relevant references through an information disclosure statement (IDS) and a request for continued examination (RCE)Consider filing a continuation application to capture different claim scopesBe aware of the timeline for patent issuance and the need to pay maintenance feesMark the product as patented to access certain types of damagesRemember that the podcast does not provide legal adviceChapters00:00 Introduction and Overview00:20 Explanation of Notice of Allowance01:33 Timeline for Receiving a Notice of Allowance03:27 What to Do After Receiving a Notice of Allowance04:43 Duty of Disclosure and Information Disclosure Statement (IDS)06:06 Importance of Meeting Duty of Disclosure07:18 Request for Continued Examination (RCE)08:09 Considerations for Filing a Continuation Application10:08 Timeline for Patent Issuance11:22 Importance of Filing a Continuation Application13:48 Patent Marking and Maintenance Fees16:22 Conclusion and Disclaimer

In this Patent Pending Made Simple episode, Jaime and Samar debate whether to amend claims or argue against rejections in a patent application. It is common to receive rejections in the patent process, but determining whether or not you should fight those rejections or amend claims in your application is a difficult dance. Listen in to get some insights into your potential options.SummaryThe conversation discusses the decision-making process of whether to amend claims or argue against rejections in a patent application. The main factors to consider are the legal doctrines of prosecution history estoppel and doctrine of equivalence, the likelihood of competitors practicing the added feature, the strength of the argument, the examiner's disposition, and the overall strategy of the prosecution. The conversation also touches on the option of filing an appeal and the potential timeline and costs associated with it.TakeawaysWhen deciding whether to amend claims or argue against rejections, consider the likelihood of competitors practicing the added feature.The strength of the argument and the examiner's disposition are important factors to consider.Filing an appeal may be necessary if the examiner is unreasonable or unwilling to listen to arguments.The appeal process can take time, but it can also be a cost-effective option.Setting realistic expectations of multiple rounds of rejections can help manage the budget.Chapters00:00 Introduction and Topic Introduction00:58 Receiving a Rejection and Considering Amendments vs. Arguments09:03 Considering Competitor Practices in Decision-Making13:25 The Importance of Strong Arguments and Examiner Disposition22:44 Managing Expectations and Budget in Patent Prosecution25:57 Conclusion

Who is an inventor when it comes to a patent? Can there be multiple inventors? What rights do they have? These questions will be answered in this insightful episode of Patent Pending Made Simple, where our hosts, Jamie Brophy and Samar Shah, delve into the intricacies of inventorship claims and their implications in the realm of patent applications and legal protections.SummaryIn this episode, Jamie Brophy and Samar Shah discuss the topic of inventorship. They explain that an inventor is anyone who helped come up with the idea behind a patent and, specifically, anyone who helped come up with the idea written in the claims. They also discuss the importance of understanding inventorship from a legal perspective, as the person who came up with the invention is presumed to have ownership of the invention. They highlight the need to carefully review employment agreements, as many of them state that any inventions made during the course of employment belong to the company. They also discuss the complexities of determining inventorship and the importance of including all potential inventors to avoid future legal issues. Finally, they mention the additional obligations and paperwork that arise when multiple inventors are involved.TakeawaysAn inventor is anyone who helped develop the idea behind a patent, specifically the idea written in the claims.Understanding inventorship from a legal perspective is important, as the person who invented the invention is presumed to own it.Employment agreements often state that any inventions made during the course of employment belong to the company, so it is important to review these agreements carefully.Including all potential inventors is recommended to avoid future legal issues and ensure the patent's validity.When there are multiple inventors, additional obligations and paperwork regarding ownership may arise.Chapters00:00 Understanding Inventorship02:28 Ownership of Inventions in Different Countries03:54 Importance of Determining Co-Inventors' Responsibilities06:44 Analyzing Inventorship on a Claim-by-Claim Basis10:33 Including Potential Inventors to Avoid Legal Issues13:23 Additional Obligations and Paperwork with Multiple Inventors

What are the key differences between a patent attorney and a patent agent? In this episode, Jamie and Samar dispel the myths surrounding patent attorneys and patent agents. They specify the qualifications a patent attorney and patent agent must have and what actions fall under their jurisdictions, respectively.  Takeaways:Both patent attorneys and agents are required to take the patent bar exam, which qualifies them to represent people in front of the USPTO. Patent agents are restricted strictly to the legal representation of clients in front of the patent office. However, patent attorneys can operate anywhere the law and the patent office intersect. Regarding more complex legal consultations that are not confined to the patent office, an attorney is often better equipped to handle them. Generally, attorneys charge more than agents, but this varies depending on the agent's or attorney's experience and market.Timestamps:0:00 - Introduction 2:11 - How do patent agents get registration numbers?2:49 - Patent bar exams 4:00 - Qualifications to take the exam4:45 - What can agents and attorneys do and not do?5:50 - Cost differences6:56 - Appeal Briefs 7:49 - At what stage do you need to get an attorney?8:50 - Closing thoughts

In this episode of Patent Pending Made Simple, Jamie and Samar talk about the ins and outs of prototyping and whether you should have one before filing your patent application. They discuss the costs of prototyping, how it can help you in the product development process, and what you should consider before prototyping your invention.SummaryThe conversation discusses whether a prototype is necessary before filing a patent application. It is clarified that there is no legal requirement to have a prototype before filing a patent application as long as the invention is described in sufficient detail. However, prototyping can be beneficial in working out kinks in the invention and discovering potential changes that may need to be made. The decision of whether to prototype before filing a patent application depends on factors such as comfort level, cost, goals, and the nature of the invention.TakeawaysThere is no legal requirement to have a prototype before filing a patent application.Prototyping can help work out kinks in the invention and discover potential changes.The decision of whether to prototype before filing a patent application depends on factors such as comfort level, cost, goals, and the nature of the invention.Chapters00:00 Introduction and Background03:49 Is a Prototype Necessary Before Filing a Patent Application?07:34 The Benefits of Prototyping in the Patent Process10:17 Factors to Consider When Deciding to Prototype Before Filing a Patent Application

In this episode of Patent Pending Made Simple, Jamie and Samar interview Stephen Key, one of the foremost experts in the world of patent licensing.  They discuss the patent licensing process, the role of a provisional patent application in that process, steps to bringing an idea to market, prototyping, prior art searches, and so much more!SummaryStephen Key, a patent licensing expert, shares his insights on how to protect and commercialize ideas. He emphasizes the importance of focusing on the benefits of an idea rather than just the features. Key recommends starting with a Google search to see if the idea already exists and then reaching out to companies that may be interested in licensing the idea. He suggests using tools like provisional patent applications, sell sheets, and videos to test the market interest before investing in prototypes. Key also discusses the importance of teamwork with patent attorneys and agents to create a valuable patent.TakeawaysFocus on the benefits of an idea rather than just the features.Start with a Google search to see if the idea already exists.Reach out to companies that may be interested in licensing the idea.Use tools like provisional patent applications, sell sheets, and videos to test market interest before investing in prototypes.Work with patent attorneys and agents as a team to create a valuable patent.00:00 Welcome to the Patent Pending Made Simple Podcast00:15 Introducing Stephen Key: The Patent Licensing Expert00:48 Stephen's Journey: From Ideas to Innovation03:16 Demystifying the Patent Process for Inventors04:35 The Initial Steps of Bringing an Idea to Market07:12 Licensing Ideas: Stephen's Strategy for Success08:42 Prototyping and Testing: Essential Steps Before Patenting11:38 The Power of Provisional Patent Applications14:05 Testing Your Invention in the Real World17:17 Stephen's Advice on Prototyping and Filing for Patents19:55 Navigating Patent Applications: Insights and Strategies20:40 The Importance of Matching Claims with Business Objectives22:10 Leveraging Patents as Negotiation Tools23:29 Crafting Patents with Manufacturing and Detail in Mind27:01 The Role of Prior Art in Shaping Patent Strategy27:28 Building a Strong Team Beyond the Patent28:28 A Real-World Example: Overcoming Prior Art Challenges33:32 The Art of Patent Writing: A Collaborative Approach36:55 Closing Thoughts and Appreciation

What is the difference between a patent and a license?In this episode, Jamie and Samar discuss the differences between a patent and a license.  Topics include:Key differencesDo you need an issued patent to get a licensing deal?Are there benefits of securing a licensing deal during the patent pending phase?Overcoming fears and uncertainties around licensing an inventionWhat is a license (a contract that allows someone to use your patented invention in exchange for payment)Licenses can be exclusive or non-exclusiveMost common patent licensing deal structures (lump sum payment, royalty rate per unit sold, percentage of profits)Finding potential licensing partnersTips for writing a patent application with licensing in mind (understand potential partners' portfolios, draft claims accordingly)Timestamps:0:00 - Introduction2:30 - Do you need an issued patent to get a licensing deal?5:15 - Overcoming inventor fears about licensing7:00 - Defining what a license agreement is10:30 - Exclusive vs. non-exclusive licensing12:45 - Typical licensing payment structures15:00 - Finding potential licensing partners (teaser for future episode)17:30 - Writing patents with licensing in mind

Happy Thanksgiving to all! On today's episode, Jamie and Samar discuss the top mistakes that inventors make in writing and filing their provisional patent applications. For show notes, visit: https://outlierpatentattorneys.com/top-mistakes-provisional-applications --- Send in a voice message: https://podcasters.spotify.com/pod/show/patentpending/message

In this episode of the Patent Pending Made Simple Podcast, Jamie and Samar discuss patent related deadlines, including: The importance of patent deadlines (00:00-01:56) Pre-filing Deadlines (01:57-02:55) Public Disclosures and Associated Nuances (02:56-10:13) Post-filing Deadlines (10:14-10:49) Responding to Final and Non-Final Office Actions (10:50-19:14) Other Deadlines (19:15-19:56) --- Send in a voice message: https://podcasters.spotify.com/pod/show/patentpending/message

In this podcast episode, the hosts Samar Shah and Jamie Brophy are interviewed by Jamie's two sons, Griffin and Jordan. The boys have questions about patents, which they ask during the episode. They learn that a patent is a legal document that gives inventors rights to protect their inventions from being made, sold, or used by others. The process of getting a patent involves writing a patent application and submitting it to the Patent Office for review. It can take several years to obtain a patent due to the backlog of applications at the Patent Office. The cost of obtaining a patent, and more. Once you have a patent, you need to mark your product as patented when selling it. This notifies others that you have the exclusive rights to the invention and discourages them from copying it. If someone does copy your invention, you can send them a letter asking them to stop. If they refuse, legal action can be taken by filing a lawsuit in federal court. Overall, patents are important for protecting inventions and preventing others from copying them without permission. And, if someone does steal your invention, patents give you the right to sue infringers. --- Send in a voice message: https://podcasters.spotify.com/pod/show/patentpending/message

For transcript and show notes, visit: https://outlierpatentattorneys.com/patent-pending-made-simple/podcast/episodes/3 In this episode of Patent Pending Made Simple Podcast, Jamie and Samar discuss the differences between patentability opinions and patent infringement opinions. What is the difference, and when should you think about these concepts in your patent journey. Introduction to the podcast (00:02) Hosted by Samar Shah and Jamie Brophy Catching Up (00:08-00:50) Topic: Differences between patentability and patent infringement (00:51) Initial discussion of the two concepts (01:13-02:41) Just because you get a patent on something does not mean that you're not infringing on something, so you could still be infringing on somebody else's patent. Is having a patent a good defense to infringement? ⁠4:02⁠ A client has a patent and they can still infringe on somebody else's patent, both of which can happen simultaneously. Having a patent is not a good defense to patent infringement. Courts may not allow you to present that kind of evidence to a jury. The different types of opinions that practitioners can draft: patentability, non-infringement, and freedom to operate. Patentability opinions are straightforward, while infringement opinions are more complicated. The importance of a patentability opinion. 7:57 Patentability analysis gives a good idea of whether a patent application will be rejected or not. It also gives an idea of what elements to focus on in the application to get a patent. Litigation can cost upwards of $100,000 on the search itself. The patentability opinion and the infringement opinions are very very different. In infringement, you have to interpret the claim language and determine what is meant by each of those terms in the claims and that is kind of complicated. The importance of non-infringement opinions. 12:09 When writing a non-infringement opinion letter, the quality of the opinion letter becomes very important, and the level of analysis that has been done is very important. What to recommend to clients who want to know if they are infringing on something, and how to handle it. Advice to those who want to do an initial search to see if they infringe someone else's patent before launching something. Information disclosure statements ⁠16:50⁠ Software patents are written often in a way that is indecipherable to clients. It is hard for the client to make a decision on whether the disclosure is relevant to their invention. Information Disclosure Statements: The information disclosure statement is an ethical obligation to tell the patent office about references to the invention. Cost considerations and ethical obligation to disclose relevant references (17:49-18:12) Working with an attorney to establish search parameters and track references (19:01-19:23) Conclusion and Closing Remarks (19:40) Recap of key points discussed (19:49-19:57) Disclaimer about legal advice and opinions expressed (20:27-20:44) --- Send in a voice message: https://podcasters.spotify.com/pod/show/patentpending/message

Are you curious about what the patent process looks like from start to finish? What happens after you file your patent application? What deadlines and expectations should you have? Join us on on this episode of Patent Pending Made Simple as Jamie and Samar walk you through the lifecycle of a patent. Visit our show notes page for a transcript and resources: https://outlierpatentattorneys.com/patent-pending-made-simple/podcast/episodes/2 Topics we cover: • The provisional application is an informal application that acts as a placeholder to secure an early filing date. It gives inventors up to 1 year to decide if they want to pursue a full patent application. • Within 1 year of filing the provisional, inventors must file a non-provisional or PCT application to claim priority to the provisional filing date. • After filing a non-provisional application, the patent office will typically issue a rejection within 18-24 months. This is a normal part of the patent prosecution process. • Inventors can respond to rejections, amend claims, and make arguments to try and overcome the rejections. This can go back and forth multiple times until the application is either abandoned or allowed. • International filings via the PCT route can allow inventors to enter national phase in countries like Europe and Canada. However, international filings are expensive and the US is often the most lucrative market. --- Send in a voice message: https://podcasters.spotify.com/pod/show/patentpending/message

Episode 1: Intro to the Patent Pending Made Simple Podcast, and its hosts: Jamie Brophy and Samar Shah. In this episode, Jamie and Samar discuss frameworks that you (the inventor) should use when you think about your patent application as well as frameworks for protecting your innovations. Episode 1 - What is a good patent application Introduction to the podcast. 0:00 Welcome to the Patent Pending Made Simple Podcast. Jamie's background and goals for the podcast. Samar's background. What makes for a good patent application? 3:03 What makes for a good patent application. Working with a small boutique firm. The benefits of working with an inventor focused patent practitioner. The first step to getting a patent 6:33 What are the physical characteristics of your invention? Benefits and advantages of an invention. Conceptual framework for a patent application 8:37 Layers of abstraction What aspects of the invention are essential? The importance of clarity in a patent application. 11:17 Importance of being as clear as possible. Clarity, precision, and best mode. Writing to different audiences ⁠16:33 Patent litigation in the US. How Inventors should review patent applications 19:17 Patent documents are difficult to read. Collaboration with clients leads to better patent documents. Make sure the claims are right. 21:43 Having a strategic perspective to the claims. Big picture perspective on a patent application. Next time on patent pending made simple. --- Send in a voice message: https://podcasters.spotify.com/pod/show/patentpending/message