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invention Patenting Essentials- Amazon Seller Tips with Alex Hobson (Part 2)
July 26, 2021
Seller Round Table Episode 101 with Alex Hobson
Session Videos:

A. Part 1 with Alex Hobson

B. Part 2 with Alex Hobson

Things we mention in this session of Seller Round Table:

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Transcription in this  episode:

[00:00:01] spk_0: Welcome to the seller roundtable e commerce coaching and business strategies with and er not and amy [00:00:07] spk_1: Wiis. [00:00:08] spk_0: Mm Okay, that makes sense. Thank you. And it makes sense why we would want to file them and with the small fee and everything. It's just a great way to get that date stamp. So that when the patent examiner goes to actually review are non provisional application, they can go back and look at that prior art. That's what I'm fighting right now. Is all the prior art that is in, you know, my industry and is around my product, um my patent attorneys having to go through and just each claim just so you know, it's like, oh man. So whenever there's a lot of prior art you do want to get you want to get your stamp on it right away, get it in there. Right. So that's what it's a great way to do that. So can we talk about the difference between design and utility patents? Because many people um fear utility patents because they take a long time, right? And they say, okay, I just want to get to market. Um and with the design patent it can be approved pretty quickly and you know, it's it's a cheaper process, it's not so involved. Um And so you know, what is then, what are the main differences? Why why should we consider one or the other and which one is stronger? [00:01:32] spk_1: Okay, well a design patent is for the ornamental design of your product. And so it doesn't include function. You know, it doesn't include what types of materials go into the into the product. It's really just for the shape of your product. And so a lot of people, you know when they want a design patent, like you know, they might say, well I have magnets in mind like that, it doesn't matter. Or you know, mine mine does this. I'm like, well, you can't put functional language in design patents. A design patent is really just a series of figures of a single design, right? And it's just a description of the figures and has one claim the ornamental design for the widget has shown and the figures, That's it. So they're pretty simple, that's why they're typically less costly and you know that, and they get examined more quickly. Now, when you do follow design patent, they are incredibly picky on the figures because those figures have to show very clearly, definitely a particular design. So, if there's variations between the figures that's not gonna fly, you know, if they can't really determine the exact shape of that product. So you only follow three figures that you're probably not going to get the design pattern through, because you can't tell the full shape of that product by three figures. So, um you know what, I'm, you know, design patents are great in certain situations, especially where the shape of the product dr some benefit or is the valuable part of the, of the product. So for example, in my presentations, I'll use, it's called a rockabye mousetrap. So it's a mousetrap typically has a flat wood base and then you have the spraying in the lever and all that stuff. So in this particular design patent, they said, well I'm gonna make my, the base of my mouse trap curved, so when the mouse gets on it, you know, it's gonna start rocking back and forth and they're going to be off balance and it's going to make it more likely that they get slammed by the lever there. So, you know, there that design patent showed a mouse trap, you know, you know, the proverbial mousetrap as a patent, you know, kind of icon. But uh it had a rounded, curved base and so that was a great Um, that's a design that was a good option for that one. [00:04:01] spk_0: Got it because they didn't reinvent the function of the mousetrap well, kind of with the rock double bass, but basically it's the same functionality, it's trapping a mouse the same spring mechanism all of that. But they changed the design of it so that it looks different and works different in the shape of that mattered in the product design. So that's where a design patent was very strong for them. Is there an instant, where is there an instance where a design patent is weak and people shouldn't consider using it [00:04:34] spk_1: if you have a really complicated yes, that was going because it's pretty simple. You and one other thing about design patterns is you can show kind of, um, uh, ancillary parts of the product in dash lines in your design patent drawing so that, you know, that's anything shown in dash, even evenly spaced dash lines is not part of the claim to mention. And so whenever I do a design patent, I try to, I try to just take as much out and put it in dash lines and just show the part that is providing the value. So in that case, like with the, with that mousetrap, I would really just show the base, you know, kind of being um curved and the rest of it, I would kind of show in dash lines because you know that that part isn't really the design of that I'm concerned about. So bad design patent is one that's a really, really complicated product with lots of different shapes and nooks and crannies. And because you know, it's pretty easy to get around that design, it's really complicated. Um, and if the shape of it doesn't really give you any value, I'm not sure why you could do a design. So it's, [00:05:51] spk_0: Your competitor can just make a different shape than in the shape selves, no function for the product. Then, you know, if it solves a function, then it's going to be harder for a competitor to get around because they're going to be like the Rockabilly one. They wouldn't be able to just make it square. You know, I mean like a boat bottom or something because it's the same design essentially and it wouldn't do them any good. So I love that example. That's really awesome. So what about the time to file a patent? Is there any way you mentioned a way to speed up the process? How do we do that? [00:06:27] spk_1: Well, let me let me finish on what the difference between design. [00:06:30] spk_0: Sorry, that [00:06:32] spk_1: was the first part. So then a utility is a much stronger patent. That was I think one of your questions because a utility patent, you can show multiple embodiment in one patent filing and you can talk about the functionality. You can, the claim could be to a system, you can talk about the components and how they interact and, and you can, and those kind of the way they interact, the way they're configured with each other can be what makes it unique. You know, you can have two points A, B and C, which is well known in the art. But if you can figure in a unique way and you describe that your claim, you can get that allowed. So silly patent can be for the article, you can describe the article itself kind of physically Well, you can be like a system, you can talk about the physical components and how they interact. It can be to a process of how you make something. Or it can be to a method of using something. So there's a lot more options um, and a utility patent because you can, you can incorporate all those claims if you want. You can describe in different ways. And so, you know, utility patent is determined, you know, a infringement, that infringement that is, is determined by reading a claim and determining whether or not you have each of those elements that we just talked about. So they're much broader and stronger in terms of enforcement than a design patent. Right? So, um, so the next question was how do we speed things up at the patent office? Well, you could be over 65. [00:08:05] spk_0: Oh so old people get pressed. And do you hear that? Andy we were just talking about getting old. This is great [00:08:11] spk_1: age is of no you know what they deserve it. And you know honestly you could just partner like you know I'll call my dad and say hey dad you want to be on my patent? Well you did a I did have a client do that one time. I said I just want to add my dad to it. I'm like what was he an inventor? And they said no but he's over 65 You can't do that. Your leadership has to be Actually I was always looking for the hacks, right? [00:08:42] spk_0: So you can be 65. And what else [00:08:45] spk_1: you can do there yet? Track one prioritized examination request that's $1,050 extra as my community or another option is um you know if you're gonna file internationally you can file a PCT application first um which stands for the paris convention treaty um or patent cooperation treaty. Um And so What what a PCT is it gives you a ticket to file internationally for up to 30 months from the filing date, your earliest filing date. So say you filed the PCT application first, you have 30 months from that standpoint to find the US. or Europe or Janet wherever else you want to file. But you know if you do file at first they do what's called an international search and a written opinion on patentability. And they usually do that within six months. [00:09:42] spk_0: Yes they're fast. They and they can sometimes help you right [00:09:47] spk_1: if they can help you a lot because if if you get your written opinion back and they say hey all we find all claims to be meet the requirements for patentability, which is novel useful and not obvious. Then you can file in the U. S. With what's called a patent prosecution highway petition, PPH petition. And basically what you do with that petition is you say, hey, the PCT examining authority, you know, in the written opinion. So we think this is this is this meets requirement compatibility. So why don't you just allow it to basically what you're saying? And so, uh, they will examine it in an accelerated fashion in the U. S. And and that PPH program is available in lots of other countries. And then you're, you're, you're much more likely to get an office action really quickly and a much higher percentage of patterns that are filed with a PPH petition are allowed versus the standard less than or around 50% being allowed. So that's another good options. A little bit more complicated. But if you definitely are gonna file, you know, if you have a product that you definitely want, some sort of international patent filings, you might want to do the PCT first because then you're gonna learn something right off the bat and you can use that to your advantage uh in terms of filing back into the U. S. So I I always recommend that for [00:11:10] spk_0: People. And it also still holds your date to right? It's still like a filing date thing and then you get that 30 months and then you still have to File within that 30 months. You still have to file in whatever countries you're going to sell in whatever countries you plan to. Um you know, usually it's important export countries are really good to file in and those are going to incur additional costs and then they have additional filing requirements but it's just it's a really good options so um Cool. Um What about products? We talked about some of the different costs, There's various costs, there's various options um and some ways to speed up the process and different considerations. What about products that cannot be patented? What can't be patented was you have some examples to give us what we should not even be thinking about patenting. [00:12:09] spk_1: Yeah well there are some changes in uh interpretation of patent law not too long ago, there was a Supreme Court case um Alice versus CLS Bank and there it was a patent litigation situation around the case. The patent dealt with transfer of funds and things that nature. So the Supreme Court end up reviewing this case and they said, well we don't think there's any infringement here because we don't even think this is patentable subject matter. You're just talking about transactions and moving things around a computer and they wrote up their opinions and it created this like bomb at the USpto because then all of a sudden it's like well software software generically is not patentable and at that time there were lots and lots of at patents. People had these different apps that they want to patent and for the most part apps are no longer patentable because if you have a software that deals with taking in some input through the computer interface, it regurgitates it somehow and spit something else out to you that is not patentable. You know that that is just algorithms that modified input data. That is not patentable. Alex as a creator, as a creator of software, I'm not happy about that, I think there should be a special class. I think there should be a third class of of patents. This is just my personal opinion, because you know, these days, exactly like you're saying is is that changed the game? In terms of, you know, if I come out with something innovative in terms of the, on the software front, somebody can just go, oh cool, I'm gonna like, you know, pretty much either copy it verbatim, you know, write it with my own code of course, but copy it verbatim or just, you know, just steal it, steal the idea. So anyway, sorry to interrupt, but I just wanted to get that out there. Yeah, you're right. It really actually was a big problem for people and I had clients in this situation where I had filed the patents for them on these basically algorithms and computer software type concepts prior to this ruling and then I had to tell them well things change now, it's not patentable, you know? So it was it was really tough for people in my industry trying to explain it to people who didn't understand but and it's and it's also kind of weird for people who did have issued patents prior to this and then now they're like well if I assert it against somebody, they're just gonna take me to the p tab and say well it's uh it's not patentable so you can't see me for anymore. So it's really a weird situation. Um and then this really happened back in 2000. Um And so they're still trying to kind of get their U. S. P. J. Is trying to get their heads around, you know, how, you know what what aspects of computer software are patentable one aren't. So I can tell you just from my experience, if you have a computer software related concept, if it interfaces with something physical, say a sensor or in some cases even GPS monitoring can be considered a physical thing that's moving around, that can make it patentable. But you know, say it interfaces with a sensor on a process line and then your software adjust um, you know, something in the process lines. And that certainly is still patentable because you still have physical components that are um outside of the outside of the abstract convention. And so also, if you have software that improves the computer itself, like if it's uh what's the term for that, it's uh you would know that the software developers code like, say that again, What would the software that runs a computer, What's that called? That? It's really the operating system or the boot? Yeah. That exists in self care. That, you know, makes it run faster or provide some sort of new functionality to the computer in terms of what it can do. That's also definitely still patentable. But it sees again it's all these apps where you just are bringing in data, you know, and spit some out to somebody on the screen. That's unfortunately not patentable as of now, a good chair. Not now. [00:16:33] spk_0: That is frustrating because that's one of the biggest thing in our inventor circles that we get, you know, is always all I've got this software, I've got this and it's like, oh man, sorry. Um, but the cool thing is with software, you know, if you are, if you are offering a really unique service or something, you can at least protect your code and you know, it's a great way, at least to be able to protect your code and still bring something to market. Where if you make a product and you put it out there, it's much easier to reverse engineer, right? Although there's ways for software as well. But so I think we've covered just about everything. We have picture brain for just about everything here. But we have we have one more question before before and he takes back over here when we have a patent pending status, right? So we filed our provisional and we get the notice that it's been filed and now we're patent pending. What can we do with that? What have you seen people do with that? How do they use that? That status? [00:17:38] spk_1: Well with patent pending? Uh you you there are requirements from the patent office to put people on notice that your patent pending. And then once you your patent gets issued to put the public on notice that your product is patented and if you don't do that, then you can lose um rights to some of your damages because, you know, people don't know they're infringing. And then how can you say, hey, well, paying my money for infringing if you didn't, you know, go through the, you know, the steps to inform them. And so with that impending you are, um, you have a party date set and as long as you then later file, you know, the proper patents non provisional PCTs or it might be within the right timeframe that party date doesn't change. So what are you whatever made you patent pending? If somebody filed on that same thing later, you're good. That's what patent pending does it also. And some of my clients have products that are, you know, they're, they're kind of me to wish, I hate to say it. And so I'm very straightforward. People like the likelihood of you getting a patent on this is very small, very low. And they're like, well I still want to be patent pending. And like, well then you can file and be patent pending and in this case you may want to be patent pending for as long as possible so that it's a deterrent to competitors from knocking off your product. And so in those cases, instead of trying to accelerate it, we might want to delay it. So follow it as a provisional wait a full year then followed as a regular application. Um, and then once you get to uh, examination, which is going to be 2.5 years for three years from the data found original, that whole prosecution period can be drug out really as long as you want. So you'd be patent pending for a long, long time and maybe that's enough time for you to get out and make a name for yourself in the marketplace and deter competitors from trying to infringe. So that's that's what Pat pending does. There's something that's an interesting use case that I've never heard of before. That that's awesome going back to the international patents. So um I know myself who have have some inventions, I have some CAd designs, you know, I haven't quite gotten to the point where I'm bringing it to market yet, but one of the biggest worries I know for me and I'm sure for most people listening to this podcast who have some type of, you know, patentable or possibly patentable product, you know, the biggest worry is is that, you know, you somehow publish it or it gets out and then, you know, somebody in china knocks it off immediately um and starts producing it. So can you explain a little bit, I know that like in the U. S. Um uh you know you have the provisional patent but I know that in some countries and I believe china Germany correct me if I'm wrong here, but once that product is displayed anywhere, even if you have a patent in the U. S. And you don't have one um in those countries that now it's pretty much open game. I know that I've heard that a lot of people are going direct to china now and getting a patent there because you can get it fairly quickly and cheaply. Um And then I've also heard Germany is kind of like a hack to get a patent within like six months. I guess their patent system moves a lot faster than ours. Um You know how how does that work and you know any interest because he is there any kind of hacks that you can use to to make sure that you know the the chinese manufacturers don't see the product and just knock it off immediately. Well first of all, I want to comment on what you said about filing in foreign countries. Uh If you publicly disclose it, if you probably disclose your invention prior to filing in the U. S. You still have one year to file, even if it's been publicly disclosed. The problem is if you probably disclose it and somebody else sees your your blog or whatever it is, you posted online, they can file it and there's no way for you to track and show that they derive that from seeing your posting. And so you know if you fall after they do, you're gonna be second to file. You're not gonna get the bad so that it's um not a good idea to publicly disclose before you file but you can publicly disclosed and you still have one year to file in the U. S. And that's you know but it's not I don't advise it. And other countries you know europe and most other countries have what's called an absolute novelty requirement which means if you probably disclosed it you have just waived your rights too far back. So if you have a great idea that you think you might down the road wants some sort of international patent filings do not probably disclose it until you file at least provisional. Yeah and so um. Yeah. Yeah. Yeah. Okay. Oh go ahead. Sorry continue. Yeah. And I think your other question was about filing in foreign countries. Um Yeah they're my experience with china is that you know it's not that quick because a lot of these foreign countries you can follow patent and then you can um you're going up to five years. You can request examination. So if you if you request examination really quickly you're right. It's going to be processed pretty quickly. But most of my clients kind of waited a normal amount of time which I think it ends up being two or three years from the date of filing in china because it really most concerned about the U. S. And you know that they're not wanting to incur additional expenses before they need to in this foreign countries and their patent pending in those countries. So you know it's it's still something that should and hopefully we'll turn into a patent. one other thing I did want to mention too is you can you can follow patent in the US and file a non publication request so that it never publishes unless it issues as a pattern. And um Yeah, so if you want to be a pat, if you wanna be patent pending but you want people to know about your invention, that's an option. And so you can be patent pending for 35 years. Uh and you're legally labeling your product as patent pending because it's pending but nobody can see it. It's not a public publicly disclosed document. So but if you're going to do a nondisclosure uh request for non publication, um you can't file it internationally. So that's the rule. If you want to follow us only, you can do the non publication request. But then you know if you do decide later, you know that you want to follow PCT within a year. You got to reason that uh non publication quest so interesting. So in this case all around, if you out to get out of the gate, if you think that you're going to go international, you need that international protection, then the PCT is definitely the way to go. It sounds like just from the get go. Well, you well, you can Yeah, I do think that's the way to go. In most situations, you can file a provisional first and that one year filed PCT, a lot of people do that to. Um But yeah, I I'm with you. I like filing a PCT straight away. If if their products pretty well developed and they know the one international protection, then you go right ahead and do the PCT right. One other quick thing that I'm interested in is because my product, one of my products falls into this category where, you know, somebody takes a product that's, you know, is used for, you know, maybe I'm just gonna throw something out here even though it won't make sense. But like, you know, a lot more, right? Somebody says a lot more is cool, but, you know, I'm gonna, I'm gonna edit it and put a fan on it instead of a blade. It's gonna look a little bit different and it's gonna be a street cleaner, right? It's gonna blow dust off the street or something like that. Um, how does that work in terms of, because it's a different, does a change in use case give you a better chance of getting a pet? Well, sometimes like a method of use claim if you're using something that's very conventional, but the use is really unique. Um, in that case you're creating air movement and, and maybe that is really unique, but, you know, when you're like, wow, you know, we're taking this thing and flipping upside down, it works. Great. Is this other device? You know, that's Yeah, that's when, you know, I think a method of using here might be the way to go because you know, from an article standpoint, it's kind of the same or exactly same components maybe and arrange the same way. Um the way it's made the same. So that's really your kind of final option. In some cases too, you may have developed a unique article and also it's kind of a totally unique new product that the use as never been, never been done before. Right? So in that in that situation you want to file both an article claim or system claim. And then also a method of use claim. Because when you do a method of using claim, you can um there's something about getting um royalties sooner because you have to put the public on notice because the method claim you can't put a label on it. So you know if you're really interested in getting um uh you know there's many dollars you can from from infringers. Method of use is also a good idea for that reason. Awesome, Super interesting. Well I know I learned a lot today um amy anything else that you wanted to ask Alex before we go? [00:27:08] spk_0: No I think I learned a lot to. Um and hopefully this really helps folks search for patents, understand what to do, understand the difference in the benefits of using a patent agent and a patent attorney uh especially know when to ask for help because that's always the worst part is understanding um when to invest and you know and ask for that help. So I think you've answered all those questions for us today Alex and we thank you so much for being [00:27:38] spk_1: here. Hey thanks for having me, I had a great time, Yeah Alex one last thing before you go. Um We always like to ask this are you you know if you're one of those people who likes to read business books or even inspirational self help, anything like that, are you uh is there anything you're you're into right now in the in that realm? Any podcast, anything you're listening to you right now? I read so much as as soon as I get away from computer I got a mountain biking. All right, I like that. Good enough so let people know let people know how they can find you Alex. Um Well my website is uh invention to patent dot com with hyphens between it and I don't know if you posted up there, but uh if you put invention to patent in the google um should be on the first page of the second page. Um and then my my email address and my phone number on there too, so it's just pop in the get to the website and then you can reach me that way or get my notes if you like to. Well that's up to you. You might you might get calls at three in the morning because from the international audience. Well I do have an it's 806-340605. If people have questions awesome, perfect, thank you so much Alex, really appreciate it. Everybody has joined us live as usual. Thank you guys so much in the in the, in the zoom meeting. If you haven't joined us yet, please do so every Tuesday one pm pacific we record this with a live audience, sell a round table dot com forward slash live. If you haven't yet subscribe to the podcast, please do so if you have the time please leave a star rating and a review. We really appreciate it. Even if you say we suck. We love that feedback reach out anytime to Amy and Amy or I if you guys have any suggestions on what you want us to cover, we love to hear from you guys because we want to get you guys the content that you want to hear and as usual, thank you guys so much and we'll see you next time on the cell. A round table. [00:29:36] spk_0: Thanks for tuning in, 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 [00:29:45] spk_1: dot com, [00:29:46] spk_0: sponsored by the ultimate software tool for amazon sales and growth seller. S [00:29:51] spk_1: C O dot com [00:29:52] spk_0: and amazing [00:29:53] spk_1: at home dot com.