March 1, 2025 • 20 mins
Ever heard that you need a prototype to secure a patent? Or that having a patent guarantees commercial success? This episode dives deep into the world of patent myths with Mario Milano, a patent attorney dedicated to enlightening creators about the nuances of intellectual property. With so many misconceptions circulating, we aim to empower inventors with the accurate knowledge they need to navigate the patent process confidently.
In our conversation, we tackle common myths like the myth of the prototype and explore the reality that patents can cover even small enhancements to existing products. Many believe that patent ownership equates to absolute security in the marketplace, but as Mario reveals, this is far from the truth. This episode is packed with insights that are crucial for anyone looking to protect their ideas and inventions.
We also discuss the essential role of professional assistance in the patenting process. Many inventors underestimate the complexity involved in filing a patent application, which can lead to costly oversights if done incorrectly. Through detailed explanations and practical advice, this episode provides your guide to understanding the realities of patents and how to leverage them effectively.
Join us in this episode to debunk the myths that could hinder your invention journey and gain valuable insights that will help you safeguard your intellectual property. Don't forget to subscribe and leave a review if you find this information valuable!
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Episode Transcript
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Speaker 1 (00:02):
Welcome to Secure your Creation podcast with Mario
Milano.
We're here today to dispel somemyths.
Mario, how do you feel aboutthat?
Speaker 2 (00:11):
Yeah, always happy to set people on the right path as
far as intellectual property isconcerned.
Speaker 1 (00:16):
Bingo.
So myths happen a lot becausepeople really don't have a full
understanding of the detailsthat come with.
In this case, we're going totalk about patents, so I'm going
to start right from the doorwith the top myth that we've
heard, which is you need aprototype to get a patent.
Tell me your viewpoint on that.
Speaker 2 (00:34):
Yeah, you know it's common for people to have a
misconception about that.
There's so much informationavailable these days and we just
don't know what's goodinformation and what's not.
So you know, I'm here to tellyou that you don't need a
prototype to get a patent onyour invention.
Some people do elect to buildthe prototype and have a working
model.
That way, they can work throughany issues that might come up.
(00:56):
They can figure out anyalternative designs that might
work as they're working on theirprototype.
But it's certainly not requiredto have a prototype.
Some people will just patent it.
When they thought of theconcept.
They think through how theirprototype could work or how the
invention could be made and somedifferent ways that it could be
made, and we just file those asthe patent application.
(01:17):
You can imagine that some forsome of these really big,
complicated, expensive patents,that it's just not feasible to
go through all that work tobuild a prototype and then learn
later that you're not even ableto secure a patent on it.
So instead what they'll do isthink through it, have it
designed conceptually, eitherwith a computer program or they
(01:39):
can just draw things out, andthen once all that's completed,
we'll get the patent applicationon file.
Once they get it approved fortheir patent, now they can go
out and build the prototype andsometimes having the patent on
the concept can even help themsecure funds for building the
prototype.
Speaker 1 (01:54):
Awesome, awesome.
So you're ready for number two?
Yep, okay, number two is nowthat I've went through all that
and I have the patent.
It guarantees me businesssuccess.
I wish that was true and mebusiness success.
Speaker 2 (02:04):
I wish that was true and a lot of my clients wish
that was true as well.
Sometimes you know you get apatent and, for whatever reason,
it's just not commerciallysuccessful.
Some of the things that I seeon that are it's too expensive
to make.
You know you can think forsmall consumer products, the
(02:24):
different, the having it cost anextra couple dollars can be the
difference between commercialand success and the product
struggling other times.
You know the market moves.
Maybe somebody else came outwith something different and and
people are moving away fromthat.
You can imagine that, uh, whenthey were still improving upon
vhs players when dvds becamepopular.
So even though you got a patenton that VHS player, it's not
(02:47):
going to be successful becauseeverybody moved to a DVD player
and so it would be nice if thatwas the case.
But no, getting a patent doesnot guarantee commercial success
.
Speaker 1 (02:59):
That's a shame, because everybody would have
patents right Then you'd be verybusy.
That's a shame, becauseeverybody would have patents
right Then you'd be very busy.
Speaker 2 (03:11):
So, in terms of number three, my invention isn't
very complex, so I don't reallyneed a patent, right?
Yeah, that's what some peoplethink that you have to have this
big, groundbreaking idea inorder to get a patent.
But that's not the case.
Typically, what I see fromlarge companies are they're
making small improvements totheir products over time.
Sure, sometimes they come upwith a brand new platform for a
product and we're going to getmultiple patents on that product
(03:33):
and it's all going to begroundbreaking territory.
But a lot of the patents that Iprepare are small improvements
on existing products.
So you can get a patent on thewhole car, but you can also just
get a patent on the new rearview mirror if you want.
Speaker 1 (03:50):
I like the way you broke that down.
That was very, very simplistic.
It was awesome.
So now that I have a patent,I'm protected, right, nobody can
touch me.
Is that 100% true?
Speaker 2 (04:01):
No, unfortunately and that's something that we try to
educate clients on is that youknow, just because you got a
patent on your product doesn'tmean that if you were to make
that product, you wouldn't beinfringing the patent rights of
others.
Because, like we just mentioned, you can get a patent on small
improvements in existingproducts.
Well, there might already be apatent on that existing product.
(04:22):
So, even though now you cameout with your product that has
this new feature, you couldstill be infringing somebody
else's pet also.
Um, you get your patent and youwant to be protected as far as
nobody's stealing your idea.
Well, they could also try todesign around, basically use the
same features that you have inyour patent without actually
(04:43):
infringing your patent.
So that's something that wewould consider and try to make
sure that we get appropriatepatent scope so that it's very
difficult for somebody to designaround it.
Speaker 1 (04:55):
And number five the common myth is I have a patent.
I had a patent back in 1942.
Is that still good for today?
Speaker 2 (05:05):
It would be good to hang it up on the wall, but it's
not going to give you anyenforceable rights.
Today, patents in the USPatents are good for 20 years
from the date of application,with some exceptions of course,
but typically it's 20 years fromthe date that you filed your
application and there's no wayto really to extend that.
So once the 20 years is up,then that's it.
(05:26):
The USPTO thinks they want toencourage you to publicly
disclose your ideas by filing apatent application and teaching
everybody how to make and useyour invention so that it
improves society as a whole byspreading knowledge, and in
exchange you get a patent, youget a legal monopoly on your
(05:46):
idea for 20 years, and theythink that 20 years is the right
scope for you to have thatmonopoly.
And then then it's just public,publicly available.
Speaker 1 (05:55):
So then, from that point on, you can just re-patent
it again, if that 20-year spanended uh, not really.
Speaker 2 (06:01):
Uh, you wouldn't be able to patent the same concept.
Uh, because now that would beconsidered prior art and so if
you tried to refile the samething, they would look at your
patent and say you can't get apatent because you already had
one.
Uh, but if you tried to refilethe same thing, they would look
at your patent and say you can'tget a patent because you
already had one.
But if you made anyimprovements, then you know we
could patent those.
Speaker 1 (06:18):
So it would seem to me.
Next myth that would be logicalhere is I have an idea.
So if I patent the idea, I canget it before anybody really
gets going on it, correct?
Speaker 2 (06:30):
Sometimes, yes.
So it's tricky when you say youjust have an idea.
Mental processes are notpatentable under USPTO rules.
So if it's something that youcould just perform within your
head, if it was a math equationthat you could perform in your
head, then that's not going tobe patentable.
But if you mean an idea, likeyou have a concept for a new
(06:52):
product, then we can certainlyget a patent on that, because
we're now.
Speaker 1 (06:56):
The patent is for the product itself and not just for
the idea so, in terms of umcoverage, you keep mentioning
about how, in the US patent lawor whatever the case may be
might, you're telling me that mypatent isn't covered worldwide.
Somebody in a whole nothercountry could take my patent or
take my idea.
Speaker 2 (07:17):
Yeah, Unfortunately you get a patent in the US that
covers you in the US, but that'sit.
It won't have any effect on anyother countries.
So a lot of times clients willlook to expand to.
Speaker 1 (07:30):
Europe.
Speaker 2 (07:31):
Japan, china, canada those are typically the large
markets that I see Australia aswell.
But if you want to get patentcoverage you would have to go
through basically the sameprocess of obtaining a patent in
those other countries as youwould here in the US.
Now it's a little bit cheaper.
If you file one application inthe US, then you can take that
(07:53):
application and file in allthose other countries
simultaneously using what'scalled a PCT application, and
the benefit of that is, you knowyou only have to pay one
attorney to prepare theapplication for you.
And then you know I offer whereyou know I'm the point of
contact for my clients where Iinteract with counsel in those
(08:15):
other countries where they wantto file their application to get
another patent.
And I know that you likemedical devices, some wheelchair
hospital type stuff.
Speaker 1 (08:38):
Tell me something in reference to patents that might
be a myth within specificallythose industries.
Speaker 2 (08:44):
Yeah.
So sometimes I hear peoplethink say that, oh well, if I
get a patent on it, then FDAapproval will be easier,
particularly for these medicaldevices.
The USPTO and the FDA areseparate bodies.
You know the USPTO will handlepatent applications and granting
(09:05):
patents and things of thatnature.
The FDA oversees medicaldevices and they don't really
interact with each other.
So if you get a patent, thatdoesn't mean that you're going
to be able to get fda approvalfor your medical devices.
The time that they do kind ofoverlap is, uh, when you want to
list medical devices in theorange book, which is, you know,
(09:27):
saying that it applies to adrug, then there's some
interaction there.
But that's about it.
Speaker 1 (09:36):
So, in terms of patents, are there other things
that may be myths that we didn'tcover, that maybe come to top
of mind from you?
Speaker 2 (09:45):
Yeah.
So a lot of times I hear peoplethink that, oh well, I had the
idea first, so I should be ableto get a patent on that A while
ago.
Well, not that long ago, acouple of years ago the US
switched over.
It used to be first to inventsystem, meaning that as long as
you had your notes showing whenyou conceptualized your idea and
(10:08):
you were working diligently theentire time until you filed
your patent application, youcould establish priority that
way and say, even if somebodyfiled a patent application
before you did, but you had thisrecord that you came up with
the idea first, then you wouldstill be entitled to the patent.
Uh, us was really the only uhsystem that did that.
(10:30):
Other countries all had a firstfile system where just whoever
files patent application firsthas priority.
Now the US has moved over tothat system.
So you know you can't sit onyour idea anymore like you used
to be able to and kind of keepimproving and tinkering with it.
Now if you want to get a patent, it's best just to file it as
(10:50):
soon as you can.
Um, you know the the first tofile system.
I think it has its pros andcons.
One of the benefits is that nowwe don't have to chase down
inventors 10 years after thefact and try to establish when
they actually came up with theiridea.
Now it's we just look to seeokay, this is when it was filed.
We have more knowledge,especially when we're looking at
(11:11):
other people's patents and wesay, okay, this is their
priority date.
We don't have to wonder aboutoh well, it says that it was
January 1st 2021, but when didthey actually come up with it?
Now we know that, look, thefiling date is the filing date.
Speaker 1 (11:25):
Wow, so a couple more here before we close out.
Patents are easy to obtain,right?
You got a smile there.
That made it a little sinister.
Speaker 2 (11:39):
I wish it was, but at the same time I wouldn't have
as many.
I might not have a job if itwas too easy.
So it can be complicated,because when you start to see
these other the prior art that'sout there, knowing how to get
around it and how to comply withthe USPTO rules, even just
their technical rules for how doyou file the application, how
(12:01):
do you respond when the examinerissues an office action?
You know there's ways that thathas to be done and if you don't
do it correctly, you know youcan correct them.
But it's things that take timeand effort and it can be very
complicated when you get anexaminer who has rejected your
application and now you havemultiple uh prior art references
that you have to navigate andstill say how your invention is
(12:24):
different from all those uh.
Speaker 1 (12:25):
That's where it can be very tricky so I have a doozy
one here for you.
Ready, you're prepared for thisone?
Speaker 2 (12:31):
you're ready, you're prepared for this one you ready.
So I don't need a lawyer tofile a patent.
So that yeah.
So the USPTO does allow patentagents who are not attorneys but
they have taken the patent barwith the USPTO and they're
(12:51):
engineers or scientists orpeople who have a technical
background.
So in that sense they're notstrictly attorneys because they
haven't attended law school,they haven't taken a state bar
exam, but they are stilladministered, admitted to
practice in front of the USPTO.
Technically you don't need apatent agent or a patent
attorney to file your ownapplication.
But for a lot of times when Isee somebody who gives me an
(13:16):
application that they say oh, Ifiled this myself, they didn't
have to tell me that.
I can already tell that theydrafted it themselves and filed
it Because it doesn't look likea patent application that came
from an attorney.
There's a certain way that theapplications usually look.
There's certain ways that it'swritten.
The claims are usually thebiggest giveaway because a
(13:39):
patent attorney or a patentagent is going to draft it.
That we want to give you thebroadest coverage that you can
so that you're not justprotecting what your immediate
invention is but you're tryingto keep people as far away from
that as you can.
Typically, when I see inventorswho haven't filed, who aren't
familiar with the patentapplication process, when I see
applications that they'vewritten, it's such a narrow
(14:01):
claim that it's unlikely thatanybody would ever infringe that
claim because they're sospecific in what they're saying.
Speaker 1 (14:09):
That's big and ultimately people get it done
right the first time.
Yeah.
Because if it goes, out rightwhat somebody did themselves and
it's rejected.
Realistically.
It could have been somethingminor that yourself would have
picked up, I'm assuming.
Speaker 2 (14:23):
Yeah, absolutely, you know, because you have to have
support for any changes that youwant to make to the application
, and so sometimes you knowfiling a patent application can
be expensive, but whatever moneyan inventor saves by filing the
application themselves, theyusually end up having to spend
on an attorney who then has togo back and try to fix whatever
(14:44):
they filed and try to salvage apatent out of that.
Even if you're saving well,you're going to spend about the
same amount of money, but the ormore you know by doing it that
way and the value of the patentwould be much greater if you
have it prepared professionally,just like anything else.
(15:04):
You know the, the people who doit all the time.
They're experts at it andthey're going to know how to do
things the right way, andsometimes doing it yourself, uh,
is just not as good it's justanother step in another cog in
the wheel that doesn't need tobe there.
Speaker 1 (15:17):
Yeah, Another one here is is that you can file a
patent any time after inventingit.
Speaker 2 (15:24):
So if you do not publicly disclose it and you
keep the idea to yourself, then,yes, you can file for the
patent at any time, but once youstart telling other people
about it or writing about itonline, then you're not going to
be well.
Yeah, you're going to beprevented from filing the patent
application because now yourearlier public disclosure will
(15:45):
be considered prior art againstyou, and so an examiner would
just reject your applicationbased on your disclosure of it.
Wow, the other risk withwaiting to file it is just, you
know, it gives other people timeto come up with your idea as
well.
There's a lot of patentapplications filed every year,
so you never know.
Sometimes we file an applicationand we find out later that
(16:08):
somebody else filed a verysimilar patent application a
month later, and so you know,when that's the case, it's like
uh, you know, you're verydisappointed because the other
side, or whoever filed it later,is very disappointed because
they could have had anapplication had they just been a
little bit faster in eitherfiling it or getting whatever
(16:29):
materials together that theyneeded.
Um, and yeah, it's a largeprice to pay for waiting and
it's nothing worse than cominglate to the dance.
Speaker 1 (16:37):
Yes, it's nothing worse than coming late to the
dance.
So are all patents createdequal?
That's a myth.
Yeah that is.
Speaker 2 (16:45):
And absolutely not.
You can imagine that some ofthe most valuable patent
applications or at least themost litigated ones I would
think were the sewing machinewas a big one, the typewriter.
Those are kind of very famouspatents because they were so
(17:06):
groundbreaking in theirtechnology.
Some patents are just smallimprovements, like we mentioned,
and they have value, uh, butwhen there's groundbreaking
patents they're certainly goingto be worth a lot more so the
other one here is, which I'veeven heard.
Speaker 1 (17:23):
I'm not even in your spaces, I can just ignore the
patents of competitors.
What do I?
That doesn't mean anything,yeah yeah, uh, that's.
Speaker 2 (17:32):
That's not a good approach to take, you know, uh,
I call it the ostrich approach,where you just stick your head
in the sand and hope everythingworks out for the best.
That's not good, you know.
Eventually, if you startselling a product and you're
ignoring the patent rights ofothers and you intentionally
just ignore them and don't tryto look out for them at all, to
(17:55):
look out for them at all numberone if your product is
successful, somebody is going toend up sending you a cease and
desist letter or they're goingto end up filing a lawsuit
against you for patentinfringement.
And if you're intentionallyignoring the rights of others,
then that's what's consideredwillful infringement, which
means that if you are found tobe infringing other people's
patents, it will triple theamount of damages that you are
(18:16):
responsible to pay, which makesthese patent judgments
astronomical.
Sometimes they can even reachthere's been multiple lawsuits
now where the settlements arefor a billion dollars, and you
know that would sink any companythat I'm aware of.
Speaker 1 (18:32):
Yes, by far Easily.
So the last one here a patentstops all infringement
automatically.
Speaker 2 (18:41):
No, the patent is only one step in preventing
infringement.
Ideally, you will obtain yourpatent.
Other people will see that yougot a patent on your idea and
they will stop any or refrainfrom doing any activities that
would be considered infringing.
In reality, some people justdon't know that they're
(19:02):
infringing, or, um, you know, ifthey're really bad actors, then
they just don't care and theydo it on purpose anyway.
Uh, and so once you have yourpatent, then you you have to
enforce it, or you can enforceit if you want, and so
enforcement can take a lot ofdifferent forms.
Sometimes it's cease and desistletters, sometimes it's you know
(19:23):
, actually filing a patentlawsuit or something along those
lines.
But yeah, getting a patentgrants you the right to prevent
others from doing it, but thepatent itself doesn't actually
prevent other people from doingit.
Then you have to go out andenforce it.
Speaker 1 (19:40):
Makes sense, makes sense.
So, if you're listening to thispodcast and you're hearing some
of this stuff or you have madeuse of these myths, believe me,
they're not all right.
Mario just proved that Right.
So, ultimately, I know you cango to Milano IP dot com and
contact Mario.
Mario, what are the last tipsthat you would give to the
(20:02):
listeners in terms of patents,in terms of these myths?
What would you tell them?
Speaker 2 (20:07):
Yeah, so if you hear any anything about a patent and
you're not sure if it's right,or you know you want to learn
more information, certainlycontact your local patent
attorney.
I'm happy to help, Happy tochat.
You know we do offer a freeinitial consultation, so any
questions that you might haveI'm happy to help.
Speaker 1 (20:26):
All right, everyone.
That's Mario and I'm Craig, andwe'll catch you on the next
episode of Secure your Creations.
Till next time.
Welcome to Secure your Creation podcast with Mario
Milano.
We're here today to dispel somemyths.
Mario, how do you feel aboutthat?
Speaker 2 (00:11):
Yeah, always happy to set people on the right path as
far as intellectual property isconcerned.
Speaker 1 (00:16):
Bingo.
So myths happen a lot becausepeople really don't have a full
understanding of the detailsthat come with.
In this case, we're going totalk about patents, so I'm going
to start right from the doorwith the top myth that we've
heard, which is you need aprototype to get a patent.
Tell me your viewpoint on that.
Speaker 2 (00:34):
Yeah, you know it's common for people to have a
misconception about that.
There's so much informationavailable these days and we just
don't know what's goodinformation and what's not.
So you know, I'm here to tellyou that you don't need a
prototype to get a patent onyour invention.
Some people do elect to buildthe prototype and have a working
model.
That way, they can work throughany issues that might come up.
(00:56):
They can figure out anyalternative designs that might
work as they're working on theirprototype.
But it's certainly not requiredto have a prototype.
Some people will just patent it.
When they thought of theconcept.
They think through how theirprototype could work or how the
invention could be made and somedifferent ways that it could be
made, and we just file those asthe patent application.
(01:17):
You can imagine that some forsome of these really big,
complicated, expensive patents,that it's just not feasible to
go through all that work tobuild a prototype and then learn
later that you're not even ableto secure a patent on it.
So instead what they'll do isthink through it, have it
designed conceptually, eitherwith a computer program or they
(01:39):
can just draw things out, andthen once all that's completed,
we'll get the patent applicationon file.
Once they get it approved fortheir patent, now they can go
out and build the prototype andsometimes having the patent on
the concept can even help themsecure funds for building the
prototype.
Speaker 1 (01:54):
Awesome, awesome.
So you're ready for number two?
Yep, okay, number two is nowthat I've went through all that
and I have the patent.
It guarantees me businesssuccess.
I wish that was true and mebusiness success.
Speaker 2 (02:04):
I wish that was true and a lot of my clients wish
that was true as well.
Sometimes you know you get apatent and, for whatever reason,
it's just not commerciallysuccessful.
Some of the things that I seeon that are it's too expensive
to make.
You know you can think forsmall consumer products, the
(02:24):
different, the having it cost anextra couple dollars can be the
difference between commercialand success and the product
struggling other times.
You know the market moves.
Maybe somebody else came outwith something different and and
people are moving away fromthat.
You can imagine that, uh, whenthey were still improving upon
vhs players when dvds becamepopular.
So even though you got a patenton that VHS player, it's not
(02:47):
going to be successful becauseeverybody moved to a DVD player
and so it would be nice if thatwas the case.
But no, getting a patent doesnot guarantee commercial success
.
Speaker 1 (02:59):
That's a shame, because everybody would have
patents right Then you'd be verybusy.
That's a shame, becauseeverybody would have patents
right Then you'd be very busy.
Speaker 2 (03:11):
So, in terms of number three, my invention isn't
very complex, so I don't reallyneed a patent, right?
Yeah, that's what some peoplethink that you have to have this
big, groundbreaking idea inorder to get a patent.
But that's not the case.
Typically, what I see fromlarge companies are they're
making small improvements totheir products over time.
Sure, sometimes they come upwith a brand new platform for a
product and we're going to getmultiple patents on that product
(03:33):
and it's all going to begroundbreaking territory.
But a lot of the patents that Iprepare are small improvements
on existing products.
So you can get a patent on thewhole car, but you can also just
get a patent on the new rearview mirror if you want.
Speaker 1 (03:50):
I like the way you broke that down.
That was very, very simplistic.
It was awesome.
So now that I have a patent,I'm protected, right, nobody can
touch me.
Is that 100% true?
Speaker 2 (04:01):
No, unfortunately and that's something that we try to
educate clients on is that youknow, just because you got a
patent on your product doesn'tmean that if you were to make
that product, you wouldn't beinfringing the patent rights of
others.
Because, like we just mentioned, you can get a patent on small
improvements in existingproducts.
Well, there might already be apatent on that existing product.
(04:22):
So, even though now you cameout with your product that has
this new feature, you couldstill be infringing somebody
else's pet also.
Um, you get your patent and youwant to be protected as far as
nobody's stealing your idea.
Well, they could also try todesign around, basically use the
same features that you have inyour patent without actually
(04:43):
infringing your patent.
So that's something that wewould consider and try to make
sure that we get appropriatepatent scope so that it's very
difficult for somebody to designaround it.
Speaker 1 (04:55):
And number five the common myth is I have a patent.
I had a patent back in 1942.
Is that still good for today?
Speaker 2 (05:05):
It would be good to hang it up on the wall, but it's
not going to give you anyenforceable rights.
Today, patents in the USPatents are good for 20 years
from the date of application,with some exceptions of course,
but typically it's 20 years fromthe date that you filed your
application and there's no wayto really to extend that.
So once the 20 years is up,then that's it.
(05:26):
The USPTO thinks they want toencourage you to publicly
disclose your ideas by filing apatent application and teaching
everybody how to make and useyour invention so that it
improves society as a whole byspreading knowledge, and in
exchange you get a patent, youget a legal monopoly on your
(05:46):
idea for 20 years, and theythink that 20 years is the right
scope for you to have thatmonopoly.
And then then it's just public,publicly available.
Speaker 1 (05:55):
So then, from that point on, you can just re-patent
it again, if that 20-year spanended uh, not really.
Speaker 2 (06:01):
Uh, you wouldn't be able to patent the same concept.
Uh, because now that would beconsidered prior art and so if
you tried to refile the samething, they would look at your
patent and say you can't get apatent because you already had
one.
Uh, but if you tried to refilethe same thing, they would look
at your patent and say you can'tget a patent because you
already had one.
But if you made anyimprovements, then you know we
could patent those.
Speaker 1 (06:18):
So it would seem to me.
Next myth that would be logicalhere is I have an idea.
So if I patent the idea, I canget it before anybody really
gets going on it, correct?
Speaker 2 (06:30):
Sometimes, yes.
So it's tricky when you say youjust have an idea.
Mental processes are notpatentable under USPTO rules.
So if it's something that youcould just perform within your
head, if it was a math equationthat you could perform in your
head, then that's not going tobe patentable.
But if you mean an idea, likeyou have a concept for a new
(06:52):
product, then we can certainlyget a patent on that, because
we're now.
Speaker 1 (06:56):
The patent is for the product itself and not just for
the idea so, in terms of umcoverage, you keep mentioning
about how, in the US patent lawor whatever the case may be
might, you're telling me that mypatent isn't covered worldwide.
Somebody in a whole nothercountry could take my patent or
take my idea.
Speaker 2 (07:17):
Yeah, Unfortunately you get a patent in the US that
covers you in the US, but that'sit.
It won't have any effect on anyother countries.
So a lot of times clients willlook to expand to.
Speaker 1 (07:30):
Europe.
Speaker 2 (07:31):
Japan, china, canada those are typically the large
markets that I see Australia aswell.
But if you want to get patentcoverage you would have to go
through basically the sameprocess of obtaining a patent in
those other countries as youwould here in the US.
Now it's a little bit cheaper.
If you file one application inthe US, then you can take that
(07:53):
application and file in allthose other countries
simultaneously using what'scalled a PCT application, and
the benefit of that is, you knowyou only have to pay one
attorney to prepare theapplication for you.
And then you know I offer whereyou know I'm the point of
contact for my clients where Iinteract with counsel in those
(08:15):
other countries where they wantto file their application to get
another patent.
And I know that you likemedical devices, some wheelchair
hospital type stuff.
Speaker 1 (08:38):
Tell me something in reference to patents that might
be a myth within specificallythose industries.
Speaker 2 (08:44):
Yeah.
So sometimes I hear peoplethink say that, oh well, if I
get a patent on it, then FDAapproval will be easier,
particularly for these medicaldevices.
The USPTO and the FDA areseparate bodies.
You know the USPTO will handlepatent applications and granting
(09:05):
patents and things of thatnature.
The FDA oversees medicaldevices and they don't really
interact with each other.
So if you get a patent, thatdoesn't mean that you're going
to be able to get fda approvalfor your medical devices.
The time that they do kind ofoverlap is, uh, when you want to
list medical devices in theorange book, which is, you know,
(09:27):
saying that it applies to adrug, then there's some
interaction there.
But that's about it.
Speaker 1 (09:36):
So, in terms of patents, are there other things
that may be myths that we didn'tcover, that maybe come to top
of mind from you?
Speaker 2 (09:45):
Yeah.
So a lot of times I hear peoplethink that, oh well, I had the
idea first, so I should be ableto get a patent on that A while
ago.
Well, not that long ago, acouple of years ago the US
switched over.
It used to be first to inventsystem, meaning that as long as
you had your notes showing whenyou conceptualized your idea and
(10:08):
you were working diligently theentire time until you filed
your patent application, youcould establish priority that
way and say, even if somebodyfiled a patent application
before you did, but you had thisrecord that you came up with
the idea first, then you wouldstill be entitled to the patent.
Uh, us was really the only uhsystem that did that.
(10:30):
Other countries all had a firstfile system where just whoever
files patent application firsthas priority.
Now the US has moved over tothat system.
So you know you can't sit onyour idea anymore like you used
to be able to and kind of keepimproving and tinkering with it.
Now if you want to get a patent, it's best just to file it as
(10:50):
soon as you can.
Um, you know the the first tofile system.
I think it has its pros andcons.
One of the benefits is that nowwe don't have to chase down
inventors 10 years after thefact and try to establish when
they actually came up with theiridea.
Now it's we just look to seeokay, this is when it was filed.
We have more knowledge,especially when we're looking at
(11:11):
other people's patents and wesay, okay, this is their
priority date.
We don't have to wonder aboutoh well, it says that it was
January 1st 2021, but when didthey actually come up with it?
Now we know that, look, thefiling date is the filing date.
Speaker 1 (11:25):
Wow, so a couple more here before we close out.
Patents are easy to obtain,right?
You got a smile there.
That made it a little sinister.
Speaker 2 (11:39):
I wish it was, but at the same time I wouldn't have
as many.
I might not have a job if itwas too easy.
So it can be complicated,because when you start to see
these other the prior art that'sout there, knowing how to get
around it and how to comply withthe USPTO rules, even just
their technical rules for how doyou file the application, how
(12:01):
do you respond when the examinerissues an office action?
You know there's ways that thathas to be done and if you don't
do it correctly, you know youcan correct them.
But it's things that take timeand effort and it can be very
complicated when you get anexaminer who has rejected your
application and now you havemultiple uh prior art references
that you have to navigate andstill say how your invention is
(12:24):
different from all those uh.
Speaker 1 (12:25):
That's where it can be very tricky so I have a doozy
one here for you.
Ready, you're prepared for thisone?
Speaker 2 (12:31):
you're ready, you're prepared for this one you ready.
So I don't need a lawyer tofile a patent.
So that yeah.
So the USPTO does allow patentagents who are not attorneys but
they have taken the patent barwith the USPTO and they're
(12:51):
engineers or scientists orpeople who have a technical
background.
So in that sense they're notstrictly attorneys because they
haven't attended law school,they haven't taken a state bar
exam, but they are stilladministered, admitted to
practice in front of the USPTO.
Technically you don't need apatent agent or a patent
attorney to file your ownapplication.
But for a lot of times when Isee somebody who gives me an
(13:16):
application that they say oh, Ifiled this myself, they didn't
have to tell me that.
I can already tell that theydrafted it themselves and filed
it Because it doesn't look likea patent application that came
from an attorney.
There's a certain way that theapplications usually look.
There's certain ways that it'swritten.
The claims are usually thebiggest giveaway because a
(13:39):
patent attorney or a patentagent is going to draft it.
That we want to give you thebroadest coverage that you can
so that you're not justprotecting what your immediate
invention is but you're tryingto keep people as far away from
that as you can.
Typically, when I see inventorswho haven't filed, who aren't
familiar with the patentapplication process, when I see
applications that they'vewritten, it's such a narrow
(14:01):
claim that it's unlikely thatanybody would ever infringe that
claim because they're sospecific in what they're saying.
Speaker 1 (14:09):
That's big and ultimately people get it done
right the first time.
Yeah.
Because if it goes, out rightwhat somebody did themselves and
it's rejected.
Realistically.
It could have been somethingminor that yourself would have
picked up, I'm assuming.
Speaker 2 (14:23):
Yeah, absolutely, you know, because you have to have
support for any changes that youwant to make to the application
, and so sometimes you knowfiling a patent application can
be expensive, but whatever moneyan inventor saves by filing the
application themselves, theyusually end up having to spend
on an attorney who then has togo back and try to fix whatever
(14:44):
they filed and try to salvage apatent out of that.
Even if you're saving well,you're going to spend about the
same amount of money, but the ormore you know by doing it that
way and the value of the patentwould be much greater if you
have it prepared professionally,just like anything else.
(15:04):
You know the, the people who doit all the time.
They're experts at it andthey're going to know how to do
things the right way, andsometimes doing it yourself, uh,
is just not as good it's justanother step in another cog in
the wheel that doesn't need tobe there.
Speaker 1 (15:17):
Yeah, Another one here is is that you can file a
patent any time after inventingit.
Speaker 2 (15:24):
So if you do not publicly disclose it and you
keep the idea to yourself, then,yes, you can file for the
patent at any time, but once youstart telling other people
about it or writing about itonline, then you're not going to
be well.
Yeah, you're going to beprevented from filing the patent
application because now yourearlier public disclosure will
(15:45):
be considered prior art againstyou, and so an examiner would
just reject your applicationbased on your disclosure of it.
Wow, the other risk withwaiting to file it is just, you
know, it gives other people timeto come up with your idea as
well.
There's a lot of patentapplications filed every year,
so you never know.
Sometimes we file an applicationand we find out later that
(16:08):
somebody else filed a verysimilar patent application a
month later, and so you know,when that's the case, it's like
uh, you know, you're verydisappointed because the other
side, or whoever filed it later,is very disappointed because
they could have had anapplication had they just been a
little bit faster in eitherfiling it or getting whatever
(16:29):
materials together that theyneeded.
Um, and yeah, it's a largeprice to pay for waiting and
it's nothing worse than cominglate to the dance.
Speaker 1 (16:37):
Yes, it's nothing worse than coming late to the
dance.
So are all patents createdequal?
That's a myth.
Yeah that is.
Speaker 2 (16:45):
And absolutely not.
You can imagine that some ofthe most valuable patent
applications or at least themost litigated ones I would
think were the sewing machinewas a big one, the typewriter.
Those are kind of very famouspatents because they were so
(17:06):
groundbreaking in theirtechnology.
Some patents are just smallimprovements, like we mentioned,
and they have value, uh, butwhen there's groundbreaking
patents they're certainly goingto be worth a lot more so the
other one here is, which I'veeven heard.
Speaker 1 (17:23):
I'm not even in your spaces, I can just ignore the
patents of competitors.
What do I?
That doesn't mean anything,yeah yeah, uh, that's.
Speaker 2 (17:32):
That's not a good approach to take, you know, uh,
I call it the ostrich approach,where you just stick your head
in the sand and hope everythingworks out for the best.
That's not good, you know.
Eventually, if you startselling a product and you're
ignoring the patent rights ofothers and you intentionally
just ignore them and don't tryto look out for them at all, to
(17:55):
look out for them at all numberone if your product is
successful, somebody is going toend up sending you a cease and
desist letter or they're goingto end up filing a lawsuit
against you for patentinfringement.
And if you're intentionallyignoring the rights of others,
then that's what's consideredwillful infringement, which
means that if you are found tobe infringing other people's
patents, it will triple theamount of damages that you are
(18:16):
responsible to pay, which makesthese patent judgments
astronomical.
Sometimes they can even reachthere's been multiple lawsuits
now where the settlements arefor a billion dollars, and you
know that would sink any companythat I'm aware of.
Speaker 1 (18:32):
Yes, by far Easily.
So the last one here a patentstops all infringement
automatically.
Speaker 2 (18:41):
No, the patent is only one step in preventing
infringement.
Ideally, you will obtain yourpatent.
Other people will see that yougot a patent on your idea and
they will stop any or refrainfrom doing any activities that
would be considered infringing.
In reality, some people justdon't know that they're
(19:02):
infringing, or, um, you know, ifthey're really bad actors, then
they just don't care and theydo it on purpose anyway.
Uh, and so once you have yourpatent, then you you have to
enforce it, or you can enforceit if you want, and so
enforcement can take a lot ofdifferent forms.
Sometimes it's cease and desistletters, sometimes it's you know
(19:23):
, actually filing a patentlawsuit or something along those
lines.
But yeah, getting a patentgrants you the right to prevent
others from doing it, but thepatent itself doesn't actually
prevent other people from doingit.
Then you have to go out andenforce it.
Speaker 1 (19:40):
Makes sense, makes sense.
So, if you're listening to thispodcast and you're hearing some
of this stuff or you have madeuse of these myths, believe me,
they're not all right.
Mario just proved that Right.
So, ultimately, I know you cango to Milano IP dot com and
contact Mario.
Mario, what are the last tipsthat you would give to the
(20:02):
listeners in terms of patents,in terms of these myths?
What would you tell them?
Speaker 2 (20:07):
Yeah, so if you hear any anything about a patent and
you're not sure if it's right,or you know you want to learn
more information, certainlycontact your local patent
attorney.
I'm happy to help, Happy tochat.
You know we do offer a freeinitial consultation, so any
questions that you might haveI'm happy to help.
Speaker 1 (20:26):
All right, everyone.
That's Mario and I'm Craig, andwe'll catch you on the next
episode of Secure your Creations.
Till next time.
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