January 13, 2025 • 15 mins
Ever wondered how an engineer can transform into a champion of intellectual property? Our host, Mario Milano, founder of Milano IP, guides us through his unique journey from mechanical engineering to the intricacies of intellectual property law. With a deep curiosity for how things work, Mario’s passion for innovation led him to protect groundbreaking inventions through IP law. Throughout the conversation, he unmasks the complexities of trade secrets, copyrights, trademarks, and patents, offering relatable real-world examples and insights. Mario’s expertise shines through as he draws from his engineering background to provide personalized advice, particularly for projects involving moving parts like cars and construction equipment.
With 2025 approaching changes at the United States Patent and Trademark Office, Mario also unravels the challenges and strategies surrounding increasing fees, especially for larger companies facing continuation fees. He shares crucial advice on safeguarding inventions before public disclosure, avoiding common pitfalls, and explains the evolving landscape of automotive technology, such as regenerative braking systems in electric vehicles. The episode tackles misconceptions about the timeline for obtaining trademarks and emphasizes the importance of strategic planning for IP protection. Whether you're an inventor or a curious listener, this episode promises to enhance your understanding of securing your creative and technological breakthroughs.
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Transcript
Episode Transcript
Available transcripts are automatically generated. Complete accuracy is not guaranteed.
Speaker 1 (00:02):
Welcome to the Secure your Creation podcast.
I'm Craig Andrews and this isthe man of the hour, mario
Milano.
I'm going to mess that up, Ipromise.
But don't worry about it, I'llget it right one day.
How are you doing, mario Craig?
Thanks for having me on Yep.
So it's the start of the newyear, 2025, and there's a lot of
(00:23):
things I'm assuming happeningin the IP space.
Would you agree?
Speaker 2 (00:27):
Absolutely Always a new development in the IP space.
Speaker 1 (00:31):
Okay, so tell me a little bit about Mario Milano
and why you created Milano IP.
Tell me why do you loveintellectual property?
Speaker 2 (00:40):
law.
You know I've always beensomeone that likes to take
things apart, see how they work.
So that led me into theengineering field, particularly
into the mechanical engineeringfield, and from there, you know,
seeing how these inventions arecreated and things like that,
then I got to see how they'reprotected.
You know, what would preventsomebody from just copying
(01:03):
somebody else's idea?
And so then that led me downthe path of learning about
intellectual property,particularly patents and
trademarks, and seeing how theywork.
And then from there I said, oh,that seems like a pretty neat
field, let me look into thatsome more.
And then, you know, went to lawschool and became an
intellectual property attorney.
(01:24):
After I became an attorney youattorney I worked for other law
firms.
I enjoyed that experience.
But as I progressed in mycareer, started to look around
and say, maybe there are somethings that I would like to do
differently from where I'm atright now.
And then I decided that whatbetter way to make my mark than
(01:47):
to open up my own shop and offerhigh quality services under my
own brain?
Speaker 1 (01:53):
So I'm not.
I'm not a lawyer, lawyer.
Stuff confuses me a little bit,but you're going to explain it
for me here.
So when it comes tointellectual property, that's
not just patents, there's morethan just patents and
intellectual property, correct?
Speaker 2 (02:07):
Correct.
Yeah, intellectual property isthe umbrella, and under that
umbrella there's usually fourtypes of intellectual property
that we talk about, and that istrade secrets, copyrights,
trademarks and patents.
Speaker 1 (02:22):
So can you give me a breakdown of what each one of
those are in a little bit moredetail?
Sure, sure.
Speaker 2 (02:28):
So trade secrets are your secret sauce.
One famous example of a tradesecret is the recipe for
Coca-Cola.
You know, there might be one ortwo people in the organization
that know what exactly therecipe is, but they do take
steps to make sure that nobodyfrom outside of their
organization would be able tofind that recipe with a google
(02:50):
search or something like that.
You know, they keep keep itunder lock and key.
Uh, copyrights are for artisticworks that are in a fixed
tangible medium.
So when you think about acopyright, that's for music,
books, poems, movies, thingslike that, a trademark will
protect your brand and yourbrand, any taglines that you
(03:13):
might have.
So you know, the Nike swoosh,that's a trademark.
The Pepsi logo uh, I guess I'mkind of hungry, so I'm thinking
about lunch and, uh, foodobjects.
So, uh, that's that's what'sgoing on right now.
Uh, and then patents protectyour inventions.
Uh, they have design patentswhich will protect the look and
(03:36):
feel of your design or yourobject that you've invented.
And then there's utilitypatents, which protect the way
that something functions.
Speaker 1 (03:46):
And then there's utility patents, which protect
the way that something functions.
Speaker 2 (03:58):
So, in terms of a small to medium sized business,
or even the super large ones,how do they know which one they
need or which one do youparticularly specialize in?
Yeah, so some, some clientsthat are experienced with it,
they'll know what they'relooking for.
Other but a lot of my clients.
They come to me and say, hey, Ihave this, how do I protect it?
Right?
And so I'll walk them throughthat process and I can help lay
out the pros and cons of each.
You know, because you couldhave, potentially you could have
a design patent, trademark onthe same object.
(04:20):
Uh, and other times it's it'sbetter to just keep it as trade
secret.
And so you know we walk throughthe steps of what aspect of it
are you trying to protect?
Do you want to protect just thedesign of it?
Do you want to protect the waythat your new invention works
and how it operates?
Then maybe the utility patentis the way to go.
Speaker 1 (04:39):
OK, so you offer basically like a consultation
prior to the actual service ofthe actual patent, trademark or
trade secret service part ofthings, would you say that's
true?
Speaker 2 (04:50):
absolutely.
Uh, you know, particularly Ifocus my practice focus is
mostly on patents and sometrademarks and so it's a good
idea for us to have that initialconversation, see if that's the
type of protection that wouldreally make sense for you and
make sure that you know yourexpectations are.
My services are in line withyour expectations.
(05:11):
Make sure that you know it'sgoing to be worthwhile to
actually go and get theintellectual property protection
and make sure that we are agood fit for each other.
Speaker 1 (05:20):
So tell me about your background.
I know when we had aconversation pre-production you
were referencing in terms of theengineering part of things.
Tell me about some of the, theones, the projects that you
really love to put your hands on, the projects that you really
love to delve in deep with forcertain type of clients.
Speaker 2 (05:38):
Yeah, so I've always been fascinated by like objects
with moving parts, whetherthat's cars, construction
equipment.
I was a bricklayer for a while,so construction equipment is
something that's near and dearto my heart, and so, yeah,
anything that really moves ispretty neat, especially if it's
accomplishing a task and if wecan you know from an automobile
(06:03):
aspect if we can make it gofaster or stop faster, those are
always fun projects to work on.
Speaker 1 (06:09):
Stopping might be important in an automobile.
Speaker 2 (06:14):
Go ahead.
Yeah, Hopefully you're thinkingabout stopping before you get
to the top speed.
Speaker 1 (06:19):
You know it should be ongoing, ongoing consideration
should be uh, ongoing, uh,ongoing consideration, and then
that would be a good opportunityto make sure that that patent
is really yours, because ifyours can stop better than
somebody else's, then theyshould be coming through you
anyway, right yeah, yeah, andyou would think that, uh, you
know, stopping a vehicle hasbeen around for a long time, but
(06:40):
they're constantly coming upwith new ways to improve it.
Speaker 2 (06:42):
Uh, improving the system, improving the materials
that you're using Now, withelectric cars, you're going to
have regenerative brakingsystems, that you're charging
the battery while you'restopping so always something new
, even in older technologies.
Awesome.
Speaker 1 (06:57):
So tell me about, if you, if you can because again
I'm not a lawyer but tell mesome of the new things coming
along in the IP space that youmight want to tell people that's
coming down the pipe, if youknow.
Speaker 2 (07:10):
Yeah, so for 2025, fees did increase at the USPTO.
It had been a little whilesince there was a fee increase,
so that's something to consider.
It's not a drastic one I'd sayit's in line with inflation.
But if you're somebody who'sfiled a lot of patent
applications, just want to checkthose, update, update your
prices so that you know what thenew maintenance fees are,
(07:30):
application fees, etc.
There's also uh they've changedthe structure of the fees for
continuations, uh which is whereyou file one patent application
and when you get a patent onthat, then you file a second
application based off of thatfirst application.
It's a technique that typicallylarger clients will use to make
sure that they can preventtheir competitors from copying
(07:53):
their designs.
But those fees are increasing,so that's another thing to
consider.
Speaker 1 (07:59):
So here I have a funny story for you, right, and
I'm going to give a little bitabout myself here.
So you know how, when you go toschool and you had to take a
language, and you go back andyou go through class one to ask
two, and then you talk to theprofessor or you talk to the
teacher and you go this is allfine and good, but tell me some
of the bad words, right?
Tell me some of the bad wordsin the language, right?
So tell me some of the badthings that can happen in the IP
(08:21):
space.
Just, I don't know, whateverone that comes top of mind the
bad stuff that happens if you'renot protecting your
intellectual property in theproper way.
Speaker 2 (08:30):
Yeah, so the number one thing that I see that people
do that kind of get them intotrouble not even really trouble,
but make it difficult to get toprotect their stuff with IP is
public disclosure, particularlyin the patent field.
That's really not good.
If you start telling peopleabout your idea or you start
(08:51):
offering to sell your ideabefore you have your patent
application filed, uh, you canlose rights if you wait too long
.
In the us there's a one-yeargrace period, uh.
So if you told somebody aboutit today, january 8th 2025, you
would have up until january 8th2026 to actually buy your patent
application.
But outside of the us there aresome countries that don't play
(09:14):
that game.
They just you know, if youdisclosed it before you filed
your patent application, youcan't file, you're not going to
get a patent and there's notreally any arguing around that.
So you know, sometimes peopleare unaware of those rules and
so you know they offer or theyjust they're talking about their
idea in public somewhere.
They forgot that they had togive a presentation on their new
(09:35):
concept.
So now they're up in front of acrowd and given that kind of
talk about their invention andthat can lead to a loss of
rights, wow.
So so yeah, it's.
It's a pretty big deal, youknow, because you you spent all
this time developing your ideaand then you know, you think
you're gonna protect it becausenow there's a lot of commercial
interest in it.
You're doing, well, you'redoing a lot of sales, sales and
(09:56):
then come to find out thatyou're not able to sell or
you're not able to get a patenton it can be pretty devastating.
Speaker 1 (10:04):
So I'm assuming then, based on that, that you have a
lot of people who might come toyou after the fact.
Is there anything that you cando for them after the fact, or
is there a workaround?
I know sometimes a workaroundis is the minimal option, but
it's not the best option, but isthere, is there any type of
workaround if you know that thatsituation's happened?
Speaker 2 (10:25):
There is we talk about.
You know what was thedisclosure.
You know what?
What was included?
Did you?
Were there any features of yourinvention that you didn't talk
about?
You know, maybe we can get apatent on those features, any
features of your invention thatyou didn't talk about?
Maybe we can get a patent onthose features.
What are some improvements thatyou have in the pipeline that
you didn't talk about before oryou're still developing now?
Those things we can stillprotect with the patent.
Speaker 1 (10:47):
Okay, good, there is hope out there for people.
Speaker 2 (10:51):
Yes, All is not lost, but you should be considering
whether you're going to befiling your patent applications
before you start talking toother people about it.
And most of the time people areright, you know.
It's natural that people thinkabout oh what if somebody steals
my idea?
So they want to get protectionfirst.
Uh, so, but you know, sometimesaccidental disclosures happen
(11:12):
as well.
Speaker 1 (11:12):
Okay, so I remember when we talked before you.
You talk about that and again,as a novice, I'm sitting there
going.
I want a patent on my brand or,I'm sorry, a trademark.
I want a trademark on my brand,right, and I expect it to be
done like in a week.
Is that a real thing to be donesuper fast.
Speaker 2 (11:32):
You know, like everything, haste makes waste.
So if we can take our time,then that's usually better.
Trademarks are usually filed alot faster than patents.
But for the trademark, you know, unless you have a reason why
you need to file it right away,we would want to do a search
first.
Number one, to make sure you'renot going to be infringing
(11:53):
somebody else's trademark byadopting your new uh logo or
trademark uh.
And number two, it makes surethat we, we can make sure that
we're gonna act, that when wefile the application, that we're
actually going to be able tomake it all the way through,
that there's not going to be anyissues and we're going to be
able to make sure that yourtrademark gets registered,
rather than filing quicklywithout doing the search and
(12:14):
then finding out, you know, six,six months from now, that we're
not, we're not able to get thetrademark for you.
Speaker 1 (12:20):
And then, how long is that process in a non-rest time
, how long does that usuallytake?
Speaker 2 (12:25):
Usually within a week or two we can get the trademark
application to file.
We can do the search, reviewthe results, have a discussion
about the results and then filethe application.
Speaker 1 (12:34):
Okay, and so the fees .
Something of the fees do theygenerally change, or how does
that work?
Speaker 2 (12:41):
To do the search.
You know we offer flat feeservices to do the search and
file the application.
And for patents, we do offersome flat fee services,
depending on the technology.
Do offer some flat fee services, depending on the technology.
You know, for a trademark, theflat fee is usually pretty
consistent, you know, whetherwe're when we're doing the
(13:04):
search or filing the applicationfor the, regardless of what the
underlying trademark is.
For a patent, it really dependson the technology.
You know, if you have a bicycle, you know that's a relatively
simple invention usually,whereas you know like a, a MRI
machine or something verydetailed kind of machine, then
the fee would go up for that.
Speaker 1 (13:24):
OK, so some of the terms that I had researching was
talking about patent portfolios.
Can you give me a little bit onthat, because that'll probably
be something we do in anotherepisode, but just give me a
brief idea of what that means.
Speaker 2 (13:38):
Sure, so some people talk about the company wide
patent portfolio and that wouldbe all the patents that a
company has, regardless of thenumber of products that they
have.
So you know, they might have acouple of patents for product A,
a couple of patents for productB and a couple of patents for
product C.
We would say that the entirething is the company's patent
portfolio and sometimes there'soverlap.
Right is the company's patentportfolio and sometimes there's
(14:00):
overlap, right.
They might have one patent thatthey think is only for patent
for product a, but it mightcover products a, b and c in
some uh scenarios.
Uh, other times we would talkabout what is the patent
portfolio for product a and thenwe would.
We would look at all thecompany's patents and say, okay,
all the patents that couldapply to product a, you know,
that's the patent portfolio forfor that product.
And the benefit of havingmultiple patents or an entire
(14:23):
patent portfolio directed to oneproduct is that when your
competitors are are looking,okay, product a is very
successful commercially.
We want to adopt a similardesign, we want to sell a
product like that.
If a company sees that you haveone patent, yeah, that might
give them some pause.
But if the company sees thatyou have 10 patents on that one
product, they know that it'sgoing to be very difficult to
(14:45):
design around it, and so theneither they'll just not release
their products because theydon't want to have to deal with
it, or they'll come to you andask you if they can take a
license, which is where you know.
A patent license is wheresomebody would pay you in order
for you to give them permissionto make that product and not
assert your patent against them.
Speaker 1 (15:03):
Mario, awesome, awesome, awesome interview.
I think that when we talk aboutfuture episodes of the podcast
Secure your Creation podcast, wetalk about future creation.
We're going to really delvedeep into all the different
types of stuff, it be designpatents, whether it be the
schematics that you review.
All that different detail we'regoing to do over different
(15:24):
episodes.
So what I would suggest isanyone looking for anything in
the ip space, particularlypatents trademarks were um trade
secrets and there was anotherone I'm missing what.
What is that?
Copyright, copyright, copyright.
How can I forget copyright?
Visit MilanoIPcom and you canask Mario and anybody in his
(15:46):
staff in terms of help in termsof getting your IP straight.
I'm Craig Andrews and this isMario Milano, and we will talk
to you guys next time, craig.
Welcome to the Secure your Creation podcast.
I'm Craig Andrews and this isthe man of the hour, mario
Milano.
I'm going to mess that up, Ipromise.
But don't worry about it, I'llget it right one day.
How are you doing, mario Craig?
Thanks for having me on Yep.
So it's the start of the newyear, 2025, and there's a lot of
(00:23):
things I'm assuming happeningin the IP space.
Would you agree?
Speaker 2 (00:27):
Absolutely Always a new development in the IP space.
Speaker 1 (00:31):
Okay, so tell me a little bit about Mario Milano
and why you created Milano IP.
Tell me why do you loveintellectual property?
Speaker 2 (00:40):
law.
You know I've always beensomeone that likes to take
things apart, see how they work.
So that led me into theengineering field, particularly
into the mechanical engineeringfield, and from there, you know,
seeing how these inventions arecreated and things like that,
then I got to see how they'reprotected.
You know, what would preventsomebody from just copying
(01:03):
somebody else's idea?
And so then that led me downthe path of learning about
intellectual property,particularly patents and
trademarks, and seeing how theywork.
And then from there I said, oh,that seems like a pretty neat
field, let me look into thatsome more.
And then, you know, went to lawschool and became an
intellectual property attorney.
(01:24):
After I became an attorney youattorney I worked for other law
firms.
I enjoyed that experience.
But as I progressed in mycareer, started to look around
and say, maybe there are somethings that I would like to do
differently from where I'm atright now.
And then I decided that whatbetter way to make my mark than
(01:47):
to open up my own shop and offerhigh quality services under my
own brain?
Speaker 1 (01:53):
So I'm not.
I'm not a lawyer, lawyer.
Stuff confuses me a little bit,but you're going to explain it
for me here.
So when it comes tointellectual property, that's
not just patents, there's morethan just patents and
intellectual property, correct?
Speaker 2 (02:07):
Correct.
Yeah, intellectual property isthe umbrella, and under that
umbrella there's usually fourtypes of intellectual property
that we talk about, and that istrade secrets, copyrights,
trademarks and patents.
Speaker 1 (02:22):
So can you give me a breakdown of what each one of
those are in a little bit moredetail?
Sure, sure.
Speaker 2 (02:28):
So trade secrets are your secret sauce.
One famous example of a tradesecret is the recipe for
Coca-Cola.
You know, there might be one ortwo people in the organization
that know what exactly therecipe is, but they do take
steps to make sure that nobodyfrom outside of their
organization would be able tofind that recipe with a google
(02:50):
search or something like that.
You know, they keep keep itunder lock and key.
Uh, copyrights are for artisticworks that are in a fixed
tangible medium.
So when you think about acopyright, that's for music,
books, poems, movies, thingslike that, a trademark will
protect your brand and yourbrand, any taglines that you
(03:13):
might have.
So you know, the Nike swoosh,that's a trademark.
The Pepsi logo uh, I guess I'mkind of hungry, so I'm thinking
about lunch and, uh, foodobjects.
So, uh, that's that's what'sgoing on right now.
Uh, and then patents protectyour inventions.
Uh, they have design patentswhich will protect the look and
(03:36):
feel of your design or yourobject that you've invented.
And then there's utilitypatents, which protect the way
that something functions.
Speaker 1 (03:46):
And then there's utility patents, which protect
the way that something functions.
Speaker 2 (03:58):
So, in terms of a small to medium sized business,
or even the super large ones,how do they know which one they
need or which one do youparticularly specialize in?
Yeah, so some, some clientsthat are experienced with it,
they'll know what they'relooking for.
Other but a lot of my clients.
They come to me and say, hey, Ihave this, how do I protect it?
Right?
And so I'll walk them throughthat process and I can help lay
out the pros and cons of each.
You know, because you couldhave, potentially you could have
a design patent, trademark onthe same object.
(04:20):
Uh, and other times it's it'sbetter to just keep it as trade
secret.
And so you know we walk throughthe steps of what aspect of it
are you trying to protect?
Do you want to protect just thedesign of it?
Do you want to protect the waythat your new invention works
and how it operates?
Then maybe the utility patentis the way to go.
Speaker 1 (04:39):
OK, so you offer basically like a consultation
prior to the actual service ofthe actual patent, trademark or
trade secret service part ofthings, would you say that's
true?
Speaker 2 (04:50):
absolutely.
Uh, you know, particularly Ifocus my practice focus is
mostly on patents and sometrademarks and so it's a good
idea for us to have that initialconversation, see if that's the
type of protection that wouldreally make sense for you and
make sure that you know yourexpectations are.
My services are in line withyour expectations.
(05:11):
Make sure that you know it'sgoing to be worthwhile to
actually go and get theintellectual property protection
and make sure that we are agood fit for each other.
Speaker 1 (05:20):
So tell me about your background.
I know when we had aconversation pre-production you
were referencing in terms of theengineering part of things.
Tell me about some of the, theones, the projects that you
really love to put your hands on, the projects that you really
love to delve in deep with forcertain type of clients.
Speaker 2 (05:38):
Yeah, so I've always been fascinated by like objects
with moving parts, whetherthat's cars, construction
equipment.
I was a bricklayer for a while,so construction equipment is
something that's near and dearto my heart, and so, yeah,
anything that really moves ispretty neat, especially if it's
accomplishing a task and if wecan you know from an automobile
(06:03):
aspect if we can make it gofaster or stop faster, those are
always fun projects to work on.
Speaker 1 (06:09):
Stopping might be important in an automobile.
Speaker 2 (06:14):
Go ahead.
Yeah, Hopefully you're thinkingabout stopping before you get
to the top speed.
Speaker 1 (06:19):
You know it should be ongoing, ongoing consideration
should be uh, ongoing, uh,ongoing consideration, and then
that would be a good opportunityto make sure that that patent
is really yours, because ifyours can stop better than
somebody else's, then theyshould be coming through you
anyway, right yeah, yeah, andyou would think that, uh, you
know, stopping a vehicle hasbeen around for a long time, but
(06:40):
they're constantly coming upwith new ways to improve it.
Speaker 2 (06:42):
Uh, improving the system, improving the materials
that you're using Now, withelectric cars, you're going to
have regenerative brakingsystems, that you're charging
the battery while you'restopping so always something new
, even in older technologies.
Awesome.
Speaker 1 (06:57):
So tell me about, if you, if you can because again
I'm not a lawyer but tell mesome of the new things coming
along in the IP space that youmight want to tell people that's
coming down the pipe, if youknow.
Speaker 2 (07:10):
Yeah, so for 2025, fees did increase at the USPTO.
It had been a little whilesince there was a fee increase,
so that's something to consider.
It's not a drastic one I'd sayit's in line with inflation.
But if you're somebody who'sfiled a lot of patent
applications, just want to checkthose, update, update your
prices so that you know what thenew maintenance fees are,
(07:30):
application fees, etc.
There's also uh they've changedthe structure of the fees for
continuations, uh which is whereyou file one patent application
and when you get a patent onthat, then you file a second
application based off of thatfirst application.
It's a technique that typicallylarger clients will use to make
sure that they can preventtheir competitors from copying
(07:53):
their designs.
But those fees are increasing,so that's another thing to
consider.
Speaker 1 (07:59):
So here I have a funny story for you, right, and
I'm going to give a little bitabout myself here.
So you know how, when you go toschool and you had to take a
language, and you go back andyou go through class one to ask
two, and then you talk to theprofessor or you talk to the
teacher and you go this is allfine and good, but tell me some
of the bad words, right?
Tell me some of the bad wordsin the language, right?
So tell me some of the badthings that can happen in the IP
(08:21):
space.
Just, I don't know, whateverone that comes top of mind the
bad stuff that happens if you'renot protecting your
intellectual property in theproper way.
Speaker 2 (08:30):
Yeah, so the number one thing that I see that people
do that kind of get them intotrouble not even really trouble,
but make it difficult to get toprotect their stuff with IP is
public disclosure, particularlyin the patent field.
That's really not good.
If you start telling peopleabout your idea or you start
(08:51):
offering to sell your ideabefore you have your patent
application filed, uh, you canlose rights if you wait too long
.
In the us there's a one-yeargrace period, uh.
So if you told somebody aboutit today, january 8th 2025, you
would have up until january 8th2026 to actually buy your patent
application.
But outside of the us there aresome countries that don't play
(09:14):
that game.
They just you know, if youdisclosed it before you filed
your patent application, youcan't file, you're not going to
get a patent and there's notreally any arguing around that.
So you know, sometimes peopleare unaware of those rules and
so you know they offer or theyjust they're talking about their
idea in public somewhere.
They forgot that they had togive a presentation on their new
(09:35):
concept.
So now they're up in front of acrowd and given that kind of
talk about their invention andthat can lead to a loss of
rights, wow.
So so yeah, it's.
It's a pretty big deal, youknow, because you you spent all
this time developing your ideaand then you know, you think
you're gonna protect it becausenow there's a lot of commercial
interest in it.
You're doing, well, you'redoing a lot of sales, sales and
(09:56):
then come to find out thatyou're not able to sell or
you're not able to get a patenton it can be pretty devastating.
Speaker 1 (10:04):
So I'm assuming then, based on that, that you have a
lot of people who might come toyou after the fact.
Is there anything that you cando for them after the fact, or
is there a workaround?
I know sometimes a workaroundis is the minimal option, but
it's not the best option, but isthere, is there any type of
workaround if you know that thatsituation's happened?
Speaker 2 (10:25):
There is we talk about.
You know what was thedisclosure.
You know what?
What was included?
Did you?
Were there any features of yourinvention that you didn't talk
about?
You know, maybe we can get apatent on those features, any
features of your invention thatyou didn't talk about?
Maybe we can get a patent onthose features.
What are some improvements thatyou have in the pipeline that
you didn't talk about before oryou're still developing now?
Those things we can stillprotect with the patent.
Speaker 1 (10:47):
Okay, good, there is hope out there for people.
Speaker 2 (10:51):
Yes, All is not lost, but you should be considering
whether you're going to befiling your patent applications
before you start talking toother people about it.
And most of the time people areright, you know.
It's natural that people thinkabout oh what if somebody steals
my idea?
So they want to get protectionfirst.
Uh, so, but you know, sometimesaccidental disclosures happen
(11:12):
as well.
Speaker 1 (11:12):
Okay, so I remember when we talked before you.
You talk about that and again,as a novice, I'm sitting there
going.
I want a patent on my brand or,I'm sorry, a trademark.
I want a trademark on my brand,right, and I expect it to be
done like in a week.
Is that a real thing to be donesuper fast.
Speaker 2 (11:32):
You know, like everything, haste makes waste.
So if we can take our time,then that's usually better.
Trademarks are usually filed alot faster than patents.
But for the trademark, you know, unless you have a reason why
you need to file it right away,we would want to do a search
first.
Number one, to make sure you'renot going to be infringing
(11:53):
somebody else's trademark byadopting your new uh logo or
trademark uh.
And number two, it makes surethat we, we can make sure that
we're gonna act, that when wefile the application, that we're
actually going to be able tomake it all the way through,
that there's not going to be anyissues and we're going to be
able to make sure that yourtrademark gets registered,
rather than filing quicklywithout doing the search and
(12:14):
then finding out, you know, six,six months from now, that we're
not, we're not able to get thetrademark for you.
Speaker 1 (12:20):
And then, how long is that process in a non-rest time
, how long does that usuallytake?
Speaker 2 (12:25):
Usually within a week or two we can get the trademark
application to file.
We can do the search, reviewthe results, have a discussion
about the results and then filethe application.
Speaker 1 (12:34):
Okay, and so the fees .
Something of the fees do theygenerally change, or how does
that work?
Speaker 2 (12:41):
To do the search.
You know we offer flat feeservices to do the search and
file the application.
And for patents, we do offersome flat fee services,
depending on the technology.
Do offer some flat fee services, depending on the technology.
You know, for a trademark, theflat fee is usually pretty
consistent, you know, whetherwe're when we're doing the
(13:04):
search or filing the applicationfor the, regardless of what the
underlying trademark is.
For a patent, it really dependson the technology.
You know, if you have a bicycle, you know that's a relatively
simple invention usually,whereas you know like a, a MRI
machine or something verydetailed kind of machine, then
the fee would go up for that.
Speaker 1 (13:24):
OK, so some of the terms that I had researching was
talking about patent portfolios.
Can you give me a little bit onthat, because that'll probably
be something we do in anotherepisode, but just give me a
brief idea of what that means.
Speaker 2 (13:38):
Sure, so some people talk about the company wide
patent portfolio and that wouldbe all the patents that a
company has, regardless of thenumber of products that they
have.
So you know, they might have acouple of patents for product A,
a couple of patents for productB and a couple of patents for
product C.
We would say that the entirething is the company's patent
portfolio and sometimes there'soverlap.
Right is the company's patentportfolio and sometimes there's
(14:00):
overlap, right.
They might have one patent thatthey think is only for patent
for product a, but it mightcover products a, b and c in
some uh scenarios.
Uh, other times we would talkabout what is the patent
portfolio for product a and thenwe would.
We would look at all thecompany's patents and say, okay,
all the patents that couldapply to product a, you know,
that's the patent portfolio forfor that product.
And the benefit of havingmultiple patents or an entire
(14:23):
patent portfolio directed to oneproduct is that when your
competitors are are looking,okay, product a is very
successful commercially.
We want to adopt a similardesign, we want to sell a
product like that.
If a company sees that you haveone patent, yeah, that might
give them some pause.
But if the company sees thatyou have 10 patents on that one
product, they know that it'sgoing to be very difficult to
(14:45):
design around it, and so theneither they'll just not release
their products because theydon't want to have to deal with
it, or they'll come to you andask you if they can take a
license, which is where you know.
A patent license is wheresomebody would pay you in order
for you to give them permissionto make that product and not
assert your patent against them.
Speaker 1 (15:03):
Mario, awesome, awesome, awesome interview.
I think that when we talk aboutfuture episodes of the podcast
Secure your Creation podcast, wetalk about future creation.
We're going to really delvedeep into all the different
types of stuff, it be designpatents, whether it be the
schematics that you review.
All that different detail we'regoing to do over different
(15:24):
episodes.
So what I would suggest isanyone looking for anything in
the ip space, particularlypatents trademarks were um trade
secrets and there was anotherone I'm missing what.
What is that?
Copyright, copyright, copyright.
How can I forget copyright?
Visit MilanoIPcom and you canask Mario and anybody in his
(15:46):
staff in terms of help in termsof getting your IP straight.
I'm Craig Andrews and this isMario Milano, and we will talk
to you guys next time, craig.
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