Things we mention in this session of Seller Round Table:
Join us every Tuesday at 1:00 PM PST for Live Q&A and Bonus Content at https://sellerroundtable.com
Try the greatest Amazon seller tools on the planet free for 30 days at https://sellerseo.com/
Transcription in this episode:
[00:00:01] spk_1: Welcome to the seller, roundtable e commerce coaching and business strategies with and er, not and amy Wiis, [00:00:08] spk_0: mm Hey, what's up everybody this is Andy are not with And this is still a round table # 101. And we have Alex Hobson here today, Alex, thank you so much for being with us. [00:00:25] spk_1: Thank you. Thanks for having me. [00:00:27] spk_0: Yeah, so so we're gonna, we're gonna talk Alex is uh is the bestest? Is that a real word? Amy the best? Uh he is a magician when it comes to getting creative with your products and how to patent maybe a a certain sub element of that product, uh correct me if I'm wrong on that Alex. [00:00:48] spk_1: Yeah, I've gotten some pretty uh interesting things patented that. At first glance you'd say there's no way in heck you can get that patented, but there there are strategies you can use to influence Patent Office to get them through. [00:01:02] spk_0: Awesome. So before we get started I would love to know uh you know, get to know you a little bit better. Maybe give us some background, uh maybe where you're born, where you grew up, you know, past jobs kind of why you got into this? Uh we always like to have a little bit of background. [00:01:16] spk_1: Sure, Well I moved around a lot as a kid. I was originally born in north Carolina, but I moved all around and I'm now out in Arizona. Um and I went to school for mechanical engineering and then I went to work for W. L. Gore and Associates and people, especially in Idaho there, you you know about vortex garments for outdoor in the winter. But they make a lot of other products. I started off in product development and I invented a lot of new products and materials for the company. And so I started to get involved in writing the patents with the patent attorneys and then I realized I could become a patent agent and a patent agent has has to have a technical degree. Just like a patent attorney. That agent has to pass the patent bar, which is administered by the patent office to make sure that you know what you're talking about. And then you can, you can represent people in further patent office and you can help them get patents at a much reduced fee over a law firm, which is what I do. So to be a to be a patent attorney, you then also have to have a law degree and then your patent attorney and then the difference is they can represent people in court, whereas I can just get your patent issued and then if you want to go after somebody for infringement, you need to get at an attorney. So that's so that's that end of it. So I realized I could become a patent agent so I took the patent bar pass it and then I started writing full applications for engineers and scientists. Hey gore And I worked there for about 20 years and a bunch of a bunch of patents for their scientists. and then about 10, 11 years ago I decided to go out on my own and start my own practice writing patents. And so for the last 10 years I've written almost I say 900 plus patents my docket. So it's a lot uh huh. And my and the allowance rate that that that's a metric of how effective a patent attorney or agent is that giving their patents allowed. And it's the percentage of patents that get issued That they file and prosecute to the patent office. And my allowance trade is over 80% and the national average is around 50 typically, or sometimes less than 50. So I also would like to tell your listeners if they're vetting uh, somebody, someone to help them prepare and file a patent. They should ask them, what is their allowance rate? [00:03:45] spk_0: Interesting. That's a, that's a pro tip. I love that. Um, getting into, um, you know, most of our listeners watchers are in the e commerce space. Um, so, you know, they might be looking at maybe a product that currently exists and then iterating on that, you know, making some changes, um, and things like that. But in your experience, what are some of the big struggles that brand owners face when they first think about getting patents? [00:04:13] spk_1: Well to get something patent. If you had to have something, uh, something that's unique and something that's not obvious. And so if it's a consumer product, uh, and it's very similar to other products, it may be difficult to kind of think about what would be the unique aspect of that. But, you know, if you have even one minor improvement on an existing product, that improvement, if it's not obvious, can be the key basis for getting your patent allowed an issue. So that's, that's really the main thing you need to think about is what have I done to improve it? And is it significant? Like sometimes people say, well, I'm going to add a cup holders or whatever it is, they call it the proverbial cup holder. And I'm like, well, if that improvement doesn't really add a lot of advantages and make the product better, you know, that probably isn't gonna help you get it allowed, it has to be an improvement that, you know, it makes it better. [00:05:11] spk_0: Right, That makes sense. So can you give me an example of uh, you know, maybe something that you worked with in the past where there was a item that could be [00:05:21] spk_2: considered similar, [00:05:22] spk_0: but you know, they iterated on it or they they, you know, got some kind of new spin on it to where they were able to then patent the product. [00:05:31] spk_1: Well, most patents are improvement patents because other than, you know, other than new material, new materials or you know, coming up with a new element, I mean everything is some combination of known materials that you're putting together in some unique way. Um let me see here. So, um, you know, we recently got a patent issued and it's a it's a people maybe have heard about the thera cane, right? And that's a cane that you can use to rub on your back. And um so that the inventor that I work with, they said, well we want to have one with a handle on it so we can get better leverage and want to handle to be adjustable along the length of the, of cane. So we prepared the patent application and we talked about how that um, that handle was uh, slightly attached, you know, to the uh elongated portion of the thera cane I'm using Pat language. Um, but yeah, and so we were able to get it through. I mean it took at least one off section and talking to the examiner and what's called a phone interview. But we talked about how that really made an improvement in the device because you can apply more pressure, you know, different points on the body because you have that adjustable position of the, of the handle. So that's one example [00:06:57] spk_0: awesome. So [00:06:58] spk_1: um you [00:06:59] spk_0: know say that you know joe's out in his garage, you know, coming up with his his next new invention and he's he's you know, he's got something kind of started to put together but he wants to go share it. He wants to get you know uh you know, input from his neighbors or from people at work. Um You know, when should somebody start really thinking about um you know patent patent protections at that point should be should they be trying to go for a provisional patent to kind of shop the idea around uh you know what what would that look like in your mind? [00:07:30] spk_1: Well really um the US. is under what's called first to file now and that changed back in 2013. And so you really don't want to disclose your idea to anybody until um unless you have an agreement accompanied child agreement until you get at least a provisional patent filed. And so really the first step when you start working on something, you think, oh this is really cool. I think I might have an invention. Should I file a patent or what should I do? I would really encourage people to just first maybe go on google and do a lot of searches for that product and then if they're satisfied that they can't find anything like it, then call somebody like me to do a patent priority search because there's lots of things in the patent literature and also in other databases that um you might not be aware of by just doing a google search. And so then if you know, if the, if the patent agent or attorney doesn't find anything that looks similar, then I would say, yeah, go ahead and prepare, you know, provisional or regular pattern or non professional and get it filed. But the cost, you know, it's really an important step of, of due diligence to do the patent for heart search before you do before you prepare a patent. Uh, and the cost of it, it's much, much less than preparing a patent application so that I think it's really a wise first step for anybody thinks they have something that's unique and a value. [00:08:53] spk_2: So basically we need to, yeah, they need to search and see what I love to do because I think people will go to google patents and if you aren't familiar with patent language, it's really hard to search for a similar product, right? Because I mean, utility patent, you're patenting the way that something is used or the way that it works. So it's not like if I'm searching, you know, I create a new bottle with a new type of cap that's interesting and different than any other bottle on the market. I need, I'm not going to be able to just search for bottle, I'm going to have to really search for the way that something works or so what I love to do is search do like a google search for similar products and then I will see go to their website and stuff and see if I can find any information. Um but do you have any tips I guess for amateurs when they're first doing that patent search because that's a question that I get all the time. Of course, I always tell them like, you know, search on your own, but then hire patent attorney or a patent agent. I have to patent agents that I love you and don are like my my to go to patent agents. But but the thing is is you know, do you have any tips for the you know, we have a lot of brand owners and they're constantly bringing new things to market and the others, the other side of it is they're worried that something their brains, the market infringes on someone's patent. So that's the reason they're doing a search. Um so what's the easiest way or the best, the most effective way for us without becoming patent agents ourselves to do a search like that? [00:10:42] spk_1: Well, there's like I said, there's google patents, you can actually also use the USPTO United States Patent and Trademark Office. They have a search database you can use, it's a little bit more clumsy than google patents, but I would really recommend using what's called free patterns online dot com because you can type in a couple of key words, you know, and and they'll give you a, you know, a list of patents that kind of matched that keyword phrase. And then if you click online and you think it's close, it will then show you the ones underneath that were referenced when it was being prosecuted by patent office. So you can kind of, if you see one there that looks even closer, just click on it and it's super user friendly and easy and you can kind of progressively get closer and closer to your idea. Uh And that's I mean that's a good way I think for people to start. There's other ways you can do what's called a sign. The search, like you said, you'll go and you look for similar products, You look at the companies, somebody like me, you know, I asked people before I do a search do you know of anybody else similar what the names of the companies and I'll do a sign the searches uh, looking for any patents that are assigned to those companies. And sometimes I do in a science search and it's like 1000 right now, like, well that's still too many to go through then. I say. So in my heart I subscribe to a professional search our database, but then I can do the assigning search and then I can say, I can now subset that by a particular class or subclass within the patent office or I can say are subdivided our sub search it by some keywords to. Um, so it makes it easier for me to narrow in on things a lot quicker having that database. But yeah, I would say go to free patterns online if you, and if you are ambitious enough to try to do some other types of searching, you can search by a shiny on the USpto and you can also search by class and subclass because whenever patents are filed, they get put into a class and subclass. And you can go onto the USPTo website and look at the classification descriptions. Uh, and you can search those and you can kind of find some that are similar similarly describe your product. And then you can kind of totally scour those particular classes and sub classes, but that's again, a little bit more work. So it's [00:13:04] spk_2: not [00:13:05] spk_1: really, but [00:13:06] spk_2: right, So that's, that's such a great tip to also look by classes because then you're going to find multiple products that are similar to yours, especially if you're in, if you're making dog toys or you're making a type of a knife or something like that, like that's going to fall into that subclass and you're going to be able to search if you're making a kitchen container or something like that. Um It's all going to be there and then you can kind of go through those and look at the drawings and get an idea. Um So let's talk about this is always the scary part. People are like, ok, so I need to file my provisional so that I can get patent pending and that buys me a year. Right? Um but that's only for a utility patent, it's not for a design patent. Get into that in a minute, but can we get into length of time? So, you know, I have some patents that were good to go, especially design patents that can be granted in as little as six months and I have utility patents that have taken a lot longer and I'm still fighting. So when it comes to timing, how long does it take to get a patent after filing the application and what can be done during this period of time? [00:14:20] spk_1: Well you have options um you know if you file provisional and don't do anything for your you've already set when you're uh of time. Uh And then if you follow non provisional and you just file it the regular way, it typically takes anywhere from I'd say 18 months to two years before you get your first office action. So if you did the provisional and then a non aboriginal with regular filing, you're looking at 2.5 to 3 years before you get your first off section. So if you if that's not acceptable to you, there's other options. Uh So one option is, you know, don't wait, you don't file a provisional at all. Just file a regular non provisional first which will cut off a year. Or you can you know if your file provisional, um you might be spending a few more months, maybe six months getting your concept really. Uh nail down, don't wait the full year. Go ahead and file six months after your father. Your provisional. A lot of people kind of just mindlessly say, okay, I follow my provisions to wait the full year but you don't have to, you can file it the next, you can file an operation the next day you want to. Then there's other options. If For example one of the inventors is over the age of 65. You can get free accelerated examination based on age. So you can file it with the petition and you're probably going to get an office action back within About six months to eight months. Then there's also what's called A track one. prioritization uh prioritize examination request now that cost some money. So if you if you want to file that with your arm provisional, it's going to be accelerated. Just like I said for the petition based on age and you're going to get a feedback within um About six months to eight months. And the fee for that for a micro entity I think is I think is either 1000 500. Get confused me, look at me, look it up. Yeah, it's actually 1000 50. So the requester prioritized examination of 1000 50 but then you're instead of waiting a year and a half to two years, you're going to get feedback in probably six months. And and I filed patents for people With the track one request and I actually got a notice of allowance I think like six weeks later. So I think that might be a record. I'd like to know what the record is, but that's super, super fast. [00:16:47] spk_2: Yeah, that is pretty fast. So let's say that I go and I do. We already talked about how to search by class, how to search by a sign e how to use free patents online, all of those resources. How do we know when we see a product that might be similar to ours? Do you have any tips when I read patent language? It's really confusing. Do you have any tips for kind of deciphering whether or not you might be infringing on someone else's idea or someone else's patent with your idea or your differentiation of a [00:17:24] spk_1: product? Yeah. So what you would do is, so do you find a patent that looks like it describes uh it's kind of similar to your product number one? What you want to do is determine whether or not that patent is actually active. So you can go to the United States Patent and Trade Mark Office and go to public pair and type in the patent number or the application number and then it will show you have they paid their maintenance fees isn't an active pattern. A lot of patents are issued and are granted and, but then 3.5 to 4 years later, people don't pay the fees to maintain it and it's actually abandoned. So if it's abandoned, um, especially if it's been abandoned for quite some time, you can feel pretty comfortable that, that, that is now in the public domain, The owner of the patent can revive a patent if it's gone abandoned for failure to pay the maintenance fees. But you know, if they haven't done it within a couple of years, uh they have to have a pretty darn good reasons why they didn't pay the fees on time. So that's the first thing, make sure it's um actually active now. The other thing too is you probably when you go on pair, you want to look at, you know, cross references to see if there's, there might be other patents that are in the patent family, like, so when you file a patent, sometimes you get the first one issue, then you'll file a divisional or a continuation or they may file what's called a continuation in part. So there could be, you know, a lot of patents that are very similar to the one that you're looking at, that, you know, that one you're looking at might be abandoned, but there might be other ones that aren't. So you really need to understand the entire patent family for that application. So then then you can look at for the patents that are active and issued. Um You can then go to the claims and you want to look at the independent claims and and for you to infringe, you have to have each and every element listed in the claim or really an equivalent thereof. So, um, so when you look at that, you basically read say it has a handle. You know, say for example it's a it's a cane, right therapeutic king. So you would say it has, you know, elongated straight portion. It has occurred portion you say? Yeah, my product has that, you know, doesn't have a handle. Yes, it has a handle. But um, so, so for example, if my client with that therapeutic uh, Kane application found a patent that was had to handle but it wasn't slightly engaged. Um, they would infringe because they have, they have all the elements, but they have an additional feature. Their feature is that the handle is slide herbal. So they would be dominated by the other patent that talked about therapeutic Kane with a handle that extends from the side because yeah, they have, they have all the same moment. So that's a, that's a big thing that you need to look into before you go to market because if you spend a lot of money to make the product and marketing all the other stuff that you spend money on and then you find out, well, I'm dominated by somebody else as soon as you get out there and republicans start making money or maybe before you're probably gonna get a letter from those people saying, hey, that you're infringing their patent, you need to cease and desist. So again, to infringe, you have to, you have to have each and every element of the claim. So you have to just kind of methodically go through it. And some people do what's called a claim construction table and they'll pull out each statement of the, of the claim and I'll kind of check it like do we have that part, you know? Okay, yes, next one. Do we have that part check? Okay. We got so that's exercise. You have to go through. [00:21:13] spk_2: Got it. So Andy, did you have a question? No. Okay. I thought I heard you say something so I didn't want to interrupt you. Um, so for example, with your, with the cane product, the reason that your client was able to gain a patent for that is that they changed the handle on the product to actually function differently. So even though the product was essentially the same as the other patent and they would have infringed on it had they just kept it the same because they changed the handle and they were able to say ours functions differently. It's used in a slightly different way in the way that it functions. So they were able to patent it because of that. Um So when if I'm just recapping what you're saying about that, it's basically like I need to read through the claims, I need to understand all the patents because some strategies that big companies use. Um and even small companies use like what I did with mine when I'm waiting for my utility patent to get approved, I've filed multiple design patents so that at least I can protect each part of my product because design patents get approved fairly quickly. So you know what you're saying is you need to understand every part of that patent family because had they filed multiple patents on it that you didn't look at and you only looked at one, then you might be infringing on something and not realize it. And I agree with you completely. Like you should do some searching on your own, but you should hire someone who understands how to look at that patent family and how to really understand what you're getting into. Right? [00:22:52] spk_1: You really should. Yes. [00:22:53] spk_2: You're not just saying that because you sell services right? Like, I mean it is important. I'm sure you've seen a lot of people get into trouble and you know that would be crazy, right? In terms of if you do infringe on someone's patent, they can literally sue you for all the profits that you have gotten and then damages and then some, so that would not be any fun. That [00:23:19] spk_1: would not be good. Yeah. Yeah. Do you want to make sure that people understand that you can get a patent issued and granted on an improvement, but you can be dominated by somebody else's issued patents. So you can, you can get a pattern in your hand like a yeah, I got a patent on this improvement, but you actually are not allowed if the company decides to send you a season, the cyst letter, you're not allowed to actually make it and sell it. So that's kind of weird. [00:23:45] spk_2: Oh wow. So like your therapy cane guy with his slide double handle. If the original makers of the hurricane would have said no, this is all you did was change the handle. They could have said, no, you can't do this. [00:24:02] spk_1: But the particular references related to just the came with a hand are old and their expired. So that's okay if it hadn't been an issue an act of patent that would be a case where they got the patent allowed because they improved it dominated by somebody else's issued. An act of that. [00:24:18] spk_2: Got it. Okay. Now can we talk a little bit about provisional patents? I think people are always confused by these because they're called patents but they're not really patents. Right? No one's actually reviewing that. So can you tell us what is a provisional patent and how can it be useful? [00:24:37] spk_1: Well a provisional patent is really has a patent application you filed to set your priority date? So as I mentioned before the U. S. Is operating on their first to file. And so if you have a great idea and you want to explore it more and you don't you maybe want to talk to some people or whatever it might be, you might want to follow the original patent to set your date of filing so that if anybody files after that date, you would be first to file and you would get the patent, you know, over them. And so original patent, uh, really the requirements from the USpto are very minor when it comes to what the personal patent needs to look like. You can take a piece of paper, you can write down your concept and describe it as early as you can, you can sketch up 234 figures and label them and send it in. Um and the fee is only $75. So it's they're not going to be making sure that you have proper claim language, they're not going to be making sure that your line drawings are proper in terms of clarity and you have everything numbered properly. Like I said, it's just a really great way for people to get something foul quickly to cover their idea. Now, with that being said, you know, if you do file a one paragraph original patent With one little sketch and you wait a full year and then you go to file your non provisional and you work with somebody like me who's going to write a real proper patent application and we put together a 10 page application and eight pages of figures. Um, we write up all the claims, probably most of those claims that we file in that non provisional year later will not get the benefit back to your provisional because the claims and that non provisional to get the date back to the original have to be supported. Buy whatever you said in that provisional. Right? So if you don't say very much, you're not going to really support very many claims later. [00:26:42] spk_2: Yeah. The way that the way that my agent described it to me when I was originally filing mine was we want to make the non Provisional. Sorry, the Provisional as strong as possible. Because if if there was any if someone else invented something in that time frame right as well. And then we're suddenly filing are non provisional and all of our claims are perfect. And there are different from what we originally filed, then they can go back and look at that and go, well, no, we have proof we invented this before. We did this before. So what we did was we tried to write as good of a Provisional as we possibly could where we could basically just make like a couple of tweaks and violent non Provisional. [00:27:26] spk_1: That's exactly what I like. Yes. So my these are preparing preparing a provisional are the same as a non provisional. But then when you get to the one year point for non provisional, it's just a really minor for you to review it and followed as a actual non provisional. And the other thing too, like if you do a really uh sparse provisional, you kind of feel like, oh, I have a cover, but then you actually, and you might get out in the public domain, you might be describing it and you might be describing stuff that you really didn't even write in the provision. So now you're publicly disclosing alternative embodiments that you never even filed on. So people get the sense of security by filing these really short provision. That's not a good idea. Thanks for tuning in to part one of this episode, join us every Tuesday at one PM pacific standard time for live Q and A. And bonus content after the recording at cellar round table dot com, sponsored by the ultimate software tool for amazon sales and growth seller s c o dot com, and amazing at home dot com.