Law & Business Podcast Episode 31: I Have an Idea

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On the new episode of the Law and Business podcast, Wil and Anthony talk about when clients have an idea.

Episode 31 starts with the first words many clients and potential clients have:  “I Have an Idea”.  What is next in the intellectual property development process?  What are the first questions that a potential client is asked in a consultation?

-What is your business plan?

-Is this a product or is this an idea that deserves patent protection?

• -Patent:  What makes this idea or product useful?
• -Utility: How do we know that a product is new?

-We need to do a search.  Patents.  Patent applications.  Journals.  Pictures.  Videos.  Can this invention be found in action?

• -Looking at keywords, concepts, elements of the idea or product.
• -Are there differences between what is found and what is disclosed by the client?
• -Looking for suggestions in the prior art that is relevant to see if any prior disclosures teach the invention that the client has developed.
• -Looking for material that is new, useful, and not disclosed.

–Design patents: Ornamentation may be different.  The design has to be different, even if the utility is the same as another product.

–Copyright law: Can a product fall under copyright law (for example, a three-dimensional work of art)?  This protection is of what is not useful in a product.  For example, a lamp that has a statue.  So the light bulb is on top of the statue.  So there is a portion of the product that is a work of authorship; it is a work of art and would fall under copyright law.   But there is also a useful part of the product (the lamp) which does not fall under copyright law.

–Trademark law:  Branding and selling a product.  Think of a box of Pepperidge Farm cookies.  In these mixed boxes of cookies, the company name is a trademark – Pepperidge Farm cookies.  However, all of the brands of the cookies are trademarks, also.  Be it Milano, Chesapeake, Chessmen, etc.  Customers are able to create the relationship of the brand to the product.  Trademarks can include color, sounds, shapes.

-Trade dress law:  How the packaging of a product matters and creates that relationship to consumers.

Wil and Anthony talk specific examples of intellectual property development and enforcement.

Here is a lightly-edited transcript of the episode:

Anthony Verna:

All right, everyone. Welcome to the Law & Business Podcast where we continue with our quest to talk more about intellectual property. It is a journey. I have to say that when I litigate, I know a lot of litigants are looking for that instant response and it’s not an instant response. It’s a long journey. When people file a trademark, they want that instant response, but it’s not an instant response.

It’s a six month journey.

When we file a patent, it’s not an instant response.

Wil Jacques:

I have to agree with you, Anthony. It’s certainly not in the first question that comes out of my inventors’ mouths or can I get a patent? Well, we’ll have to see.

Anthony:

This is Anthony Verna. I’m here with Wil Jacques, patent agent for Verna law. And we’re talking about ideas today. What happens when somebody calls our office and says, “I have an idea”?

Wil:

This is the foundation, this is where it begins.

Anthony:

When a client tells me or potential client tells me, “I have an idea”, I ask what the idea is, I then ask, what’s Your Business Plan? Because ultimately after everything we’re going to talk about, I want a client to be able to say, yes, I want to make money on this and I want to sell it and it’s going to be sold to people A of X ages Y incomes, and they’re going to have a need for this product because enter your reason here.

Wil:

Agreed.

Anthony:

If I don’t hear that, I’m going to try to do some little coaching and counseling so I can get some answers like that. Just to kind of plant ideas in the head. And it’s something that I do with a lot of clients instinctively. Sometimes I’ll just ask, “Are you selling it on your website?”

And they’ll show me the website and they’ll show me their Facebook page. I said, can I take a look at your social? And then I say, “Oh hey, have you thought about doing this on your social? Have you thought about doing this on Facebook, this on Twitter?”

“I mean, why don’t you have x, Y and Z on your website?” I mean, so we’re business people as well as our clients and we want you to be successful in business. So my first question is: What’s Your Business Plan?

And then we get to the intellectual property.

Wil:

Absolutely.

Anthony:

So the thought that we’re going to have, is this a product, is this an idea that deserves patent protection and will, what are some of the highlights that we’re looking for when we say get a patent on this product?

Wil:

I know it’s, it’s something that a lot of people are a little confused about the, and they go, can I get a patent? And I, you know, kind of look at them and I say, well it kind of depends.

Anthony:

See you’re already learning to be a good lawyer.

Wil:

It depends and you can get lost in, you know, should I file a provisional patent versus a non provisional patent and old water plant patents and what are design patents and so on and so forth. And I go, well let’s talk first about what’s Your Business? To kind of reiterate your point. So when the client comes in they say, I have an idea. My first job is to kind of distill that idea into is it something that provides a new obvious utility usefulness to the art in which it’s being placed? It could be a toy, it could be a medical device. What a dispense of a new kind of therapy. It could be a new way of looking at refractory on a, on a phone green. So the question becomes what does it provide? Does it provide something that is useful? And once we kind of get past that, then we want to know, okay, because it’s not either or. It can be both. Do you offer something in terms of a unique design or low

Anthony:

Let me take a step back here because I’m curious about this phrase, the new, the obvious, the utility. When an inventor is looking for a patent in a product or whatever that invention might be, how do we know that it’s new?  I know, it’s a loaded, it’s a truly loaded word. But how can we distill what is new under our patents?

Wil:

Most inventors already have an idea of where to go at with this question because when they walked through the door and they call us Anthony, they go, I’ve not seen this anywhere. Yes. Which then forms the basis of the statute and the law that we work under, which is, well, even though you haven’t seen it, does it mean it doesn’t say does it? It doesn’t exist. So what we want to do is to actually search and that search will entail looking at any kind of a reference typically, but I’ll name a few patents. There are published patent applications. It may be journals that describe your invention to some degree. It could even be other non patented literature, pictures, videos, but anything where I see the subject matter of your invention so to speak in action. Okay. Product could be prior art. Hence your idea is not new.

Anthony:

Okay. In doing that patent search you are looking for as many keywords as possible from what a client says isn’t in an invention, but that’s easy to say: Are you looking for concepts? What are you looking for in that pattern?

Wil:

So this is what I’m looking for and actually you, you hit the nail on the head. The, the claims of a patent are essentially come down to unique elements of, of the patent. And then I’ll give a couple of examples. Let me say a prior art reference, be it patent or, or some other kind of documentation may show elements of the invention or elements of, of the idea a, B, and c. But what you’ve come to me with is something that is a, B, c, and d. And what I now have to determine is whether or not d is unique. D obviously sets forth additional elements to your, your claimed invention, to your proposed claimed invention, which in itself may be patentable. Assuming that it’s not obvious. Okay, let me give an example. Racers were invented and this is one that comes straight out of the training course for four patent practitioners. So I have a pencil which was wood with led in it for writing. And then I had an eraser in the old days that sat on the side and when you made a mistake, you picked up your eraser, you erased it. The newness of the invention was to take the elements of the wooden case led, you know, and the eraser and set the eraser on top. And so you can bind elements that already existed. But that is new. Just that simple idea.

Anthony:

In the example that you’re giving, the newness is the joining of two already existing products?

Wil:

It could be, you know, it could be the joining of something that really was discovered. It was a discovery and something we hadn’t known before. The issue is we hadn’t known it before and there was no suggestion that those things should have been put together.

Anthony:

Going back to the law school, the example from my patent law class, one of these classic examples was headphones. There are big gigantic headphones and those big gigantic headphones were in use in recording studios, in Radio Studios, in uh, airplanes, big gigantic headphones.

Then when we started to be able to miniaturize headphones, the patents on the miniaturization were first deemed to not be valid because, there was no difference. All it is is the same thing just small, but there’s a utility in that miniaturization. There’s new in that miniaturization. And of course, obviously there are big improvements in that miniaturization.

Wil:

I’ll tell you one more. One of us to always take into account that, you know, in, in the newness of a thing, you know, a, typically you’re right. Dot size. Doesn’t matter. No joke. Uh, jokes and might to the audience. Yeah. Okay. But what we’re, what we’re getting at is patents also have the element of processes. And so the huge large headphones may have had one way of being manufactured that was totally different from the way that one would manufacturer the smaller miniaturize headsets. Hence, we were looking at a process of bringing this utility into play. The other thing is the components, even though we may say it was just a matter of size, it may not be obvious how to take a mega size, a foam filled headphone and bring it down to something that doesn’t quote unquote cover the air.

Anthony:

Right, but goes into the air.

Wil:

Correct.

Anthony:

Again, new useful utility, potentially patentable.

Now let’s, let’s talk about something that doesn’t have a utility and obviously now we’re talking about a design patent. So apart from a design patent not having utility, when somebody calls and says, I need a design pen, I always wonder how they know that they need a designed pen rather than a utility pad. But what are we looking at in order to get that design patented? The rest of the world doesn’t even call it a design patent.

Wil:

Yes it is. It is. It is truly a a term of art in America, but I think people come to you knowing already that, okay, I’ve seen this action, this enablement, this utility before terms of let’s say it was a fire hydrant or something like that. I’m like, you know, I want to bring the water out and the idea of how we pump and bring water out is not something that is new. However, outside of all the things we’ve invented, how do we screw it? How do we unlock it? How do we get the pressure to move? One may actually have come up with a design that looks different.

Anthony:

What you can say is what’s new and original is the ornamentation.

Wil:

Absolutely. The design is a design for an article that in itself already has some utility, but it is not the utility that we’re after. What we’re after is that new and ornamental design. A sneaker is a sneaker is a sneaker. But let me tell you, we make millions, hundreds of millions of dollars every day through different of sneakers. Why? Because they looked different.

Anthony:

Understood. Completely.

And just to hop on the back of design patents, because copyright law is another area that we want to have our clients look at. And when we talk about the difference between a design patent and what a copyright protects, it’s this, the copyright is protecting any original work of authorship that has been fixed in a tangible medium of expression. And so we can easily say something like say a bike rack that is abstract art. And, and by the way, the, the city of Quebec recently put out a whole bunch of bike racks and they are all pieces of art. So go Google that cause it goes, they’re fascinating to look at. But there’s a utility in each, each of these and cause there are bike racks, but there’s a part of this that is not utility either. And that would be the artwork portion of it. So while you can take your bike, you can take a bike and you can strap it there. So you, would you say that, oh, something like this could easily fall under a design pattern and then the copyright cause there’s an artistic side to it.

So you have the design pan because there’s an ornamentation to something useful, but there’s also an artistic side to it, which is a work of somebody. It isn’t an authorship.

Wil:

Yeah. And just to be clear, what we’re talking about here is, is something that is from today moving forward, because we understand how bike racks work already and so the idea of any other sort of patent is precluded, but the design patent is still available to you if you come up with something that is on a mentally unique. And to your point about the copyrights, it’s one of those things that as a patent agent, I never really understood what was the need for the copyright in addition to the design patent. But you’ve enlightened me, you know, explain it a little bit more.

Anthony:

First off, not everything that qualifies for design. Pat is going to qualify under copyright law and vice versa. I mean there are works that fall under copyright law that are musical works, literary works. Really truly copyright law is about works of authorship and the reason why I’m able to bring up this, this venn diagram that has a sliver that design patents and copyright overlap is because there are going to be some articles that have a useful side and a non useful side and I think the traditional idea under copyright law would be a statue that has a lamp that’s also a lamp and so the light bulb is on top of the statue. I always say that that I grew up with my grandparents who had a lamp that had a statue on, like my parents even had it renovated.

Wil:

I had a grandparent that had a statue with a lamp on top. Exactly.

Anthony: That’s the classic example is that you have a portion of this product that falls under copyright law because there is a statue and then statute was a work of authorship. It’s a 3d visual work, but there’s a part of this that is useful because it’s a lamp. And so in that, you know, in something like that you can make an easy split between what is not useful because the statue is a statue. It’s not useful. Under copyright law, it’s not useful under patent law and you’ve [inaudible] you can see what is useful, the light, right. And so there’s that easy mind split. So when we talk about the bike rack, that’s a little more difficult because it’s more abstract because the bike rack itself, it’s really hard to split the bike rack from the piece of art because it’s one in the same. But there is a work of authorship in a bike rack. So are there options

Wil:

The inventors and idea generators, they might be missing because of this confusion.  What sort of advice would you give to them?

Anthony:

I would say it’s a total case by case basis as to whether a product is going to fall under copyright law, going to fall as a design patent or both or both. And that both, I’m going to tell you right now, if I’m drawing a venn diagram that both is a little sliver there. That intersection is not very big. It’s a very, very little slipper because most of the time if something’s falling under copyright law, it’s not useful at all. And even a design pattern requires some kind of usefulness behind it. We’re just filing for the ornamentation behind the product.

Okay, so then here’s a question from the world again, think of it as new, original and ornamental design for a useful article of manufacturer. That’s how you really wanted to define that design patent and the copyright is a work of authorship, but that’s why the bike rack example to me is so helpful here because you can have abstract art, have some kind of usefulness if that’s what you’re looking at because the bike rack can be abstract and you’d still chain your bike to it.

Potentially the exception, you know, and that’s why I talk about things like the lamp because you can easily see in your head, all right, here’s a statue. And then on top of that is a light bulb and a lampshade and you can easily like draw a line in your head.

Wil:

Okay.

Anthony:

There’s The statue and then at some point the statue ends and lamp. Okay. And what’s above the statute because it’s just a light bulb isn’t going to fall under copyright law because it’s useful. It’s a so it’s like, but under that falls under copyright law because it’s a work of authorship.

Wil:

I got it, I got it. Let’s see. Again, one of our clients walks through the door. I have an idea, this is where we start, but in my world I want to get into the minutiae of, of the different types of patents. Let’s just just kinda stick to this idea. The design patent versus the quote unquote trademark or copyrights or copyrights. As you’ve said, there is still prior art, something that would preclude one being able to patent that ornamental design if it had already, quote unquote been invented or it’s already in the public domain and there are ways for it to get their nose timing like one year of you own it, this sort of thing. But in the end of the day, the copyright can’t itself be prior art against my design patent filing.

Anthony:

You threw me a curve ball. I’d say that there’s a chance of it happening. I don’t know for sure if the patent examiner is going to be going through either books that, that have works of art or the Library of Congress filings are huge. And even if, if you as say a copyright owner or you as somebody who’s looking to do research, if you need copies of deposit materials on a library of Congress filing, they’re going to charge you 200 bucks an hour for them to go into their archives. That’s how the library of Congress treats their archives. I don’t necessarily know if a patent examining attorney is going to find that, but from the personally, it’s not something that I’ve ever seen or litigated. But I also want to sit here and say, well, why couldn’t it be prior art? Because it’s there for the public.

Wil:

Yeah. Probably something for us to look at for a future talk with our audience. And I think that’s a good idea. Certainly kind of begs the question of our ability to help you with the business and part of helping you with the business is a strategy for the IEP that you do want to file and properly a budgeting and not just resources of dollars, but resources of time. They still, when you do certain things to make sure that, assuming that this can be prior art, you move that off the table and you get the greatest amount of IP protection possible.

Anthony

Agreed. All right, now we have plenty of podcast episodes on trademarks, but that’s what’s next on the list, right? Here’s a product. That product is going to be sold. Yes. So that means it has to be in the marketplace and that means it has to be branded and where a lot of people get a little bonkers on trademark law is talking about plucking words from the public domain and now it’s no longer in the public domain. But trademark law is all about specific uses outside of some famous trademarks. It’s really about the use of whatever word, phrase, logo design, sometimes a color. We can get into that if you’d like. Sometimes the sound we can get into that if you’d like our used in relationship to certain goods or services. And so that means that what, however this product is going to be branded, however this company is going to be branded and sometimes people come to us before our company has ever formed and that’s perfectly acceptable.

Wil:

Come to us as early as you can. Trademark Law protects the branding of the product and company.

Anthony:

And I always say think of trademarks and branding the way that Pepperidge farm would, and I say this when you’re in the store, go grab a box. In my case, two or three.

Wil:

I’m with you there.

Anthony:

Grab a box of Pepperidge farm cookies and in these mixed boxes of Pepperidge farm cookies, obviously you look at the back and it says Pepperidge farm at the top and it has lists all the cookies, whether it’s Milano, Chesapeake, chessmen, I forget what else there is, but whatever it is, I mean it has seven or eight different types of cookies. All of the cookie names are trademarks. You have the trademark for the company and then each product line is different. They’re all cookies. But each product line is a trademark.

Whether or not it’s registered as a different story, but they’re all trademarks because it’s all branded. It’s all in the stream of commerce. And customers can create that relationship between the name and what the cookie is. And in this particular case with the cookie shape is what the cookie flavor is, what the texture is. That’s every, all of that needs to be a part of the business plan. And that’s the part that I think trips up a lot of people is, is that you want a brand that you can really just kind of think about every product line. That’s the key with a company, every product line. And I don’t care if you do good, better, best philosophy in your pricing and your product lines. I don’t care if it’s like Pepperidge farm and you’ve got cookies and all of these cookies might be a little different.

By the way, speaking of good, better, best, there are Snickers, Milky Way, Three Musketeers. That’s not necessarily a good, better, best kind of quality. But Three Musketeers, is for children because cause it’s the sweetest. Milky Way is less sweet. It was meant for teens and adults.  Snickers is least sweetest and also has the nuts in there. That reduces the sugar content as well. That was meant for adults. So again, every product line, different names.

Wil:

I’ll have to check into that. And they got, I thought Snickers were made for golfers.

Anthony:

You ever see kids on the golf course?

Trademark Law, we’re going to do, we’re going to treat this very similarly to patents. We’re going to do a trademark search just like we’re going to do a patent search. We’re going to find out what registrations are there. We’re going to see what application are in the patent and trademark office. We want to see what common law uses of this particular word or phrase are out there. If there is a red flag and that red flag says that there are plaintiffs that could have the ability to sue you and when we’re going to tell you about it, if there are yellow flags, we’re going to tell you about those, those yellow flags and we’re going to say, here are your defenses and here’s how you can work your way around it. In today’s world, doing this trademark search I think is more important than ever because there’s more data than ever and there are more law firms ready to talk to their clients than there have ever been.

And, and there are tools galore for receiving trademark alerts to compare your clients’ trademarks to what is being filed and what’s being registered and you, you need to stay on top of that game in today’s world.

Wil:

Well I don’t want to feel as the, I’m being kind of left out of this conversation getting a little lonely. Sorry my foot. But you said something that you know, suggested to me that maybe I should still confer with the client that walks through the door saying, I have an idea and an idea. Let’s say we’ve already determined me go into the design patent law area, but when I look at trademarks, there’s something else going on other than the name and is there some place within how one defines a trademark that potentially brings in what something looks like? Order design of something. Is there short part of trademarks that deals with that? Absolutely.

Anthony:

In the earlier list, trademarks can include color. Trademarks can include sounds and let me sing for you:

N

B

C

How’d I do?

Wil:

Very good.

Anthony:

Thank you.

That is a sound trademark. That was developed early on. Back when they played those chimes as a way of actually telling their affiliates when a program is actually is beginning or ending a network program.

Trademarks can be shapes.

Sometimes this falls under what we call trade dress law.

Let me explain the difference a little bit. Trade dress law is all about packaging for a product. It’s all about the ability for consumers to look at packaging and understand. It’s a, that’s what the product is. The difference between trademark and trade dress law is that trademark is about the branding and trade dress really is about the packaging. Now we can have nontraditional trademarks like the shape of a product and if you try to make a chocolate product and the shape of a triangle, I’m pretty sure the Toblerone people are going to be coming right after you. And in today’s world, I would say traditionally that would fall under trade dress law because we’re talking about packaging and the shape of a product, but it’s registered as a trademark here in the United States.

Wil:

Very interesting. Almost kind of it brings to mind the Tropicana carton juice carton in which there were utility patents filed because certainly it was able to perform in a chart way. But at the same time there were designed patents that were filed a on those inventions and Annette packaging as well because it looked so different than anything else that that was on the market.

Anthony:

What I would say is, um, look at the fact that Coke and Pepsi had very differently shaped bottles. I’m sure Pepsi has registered the shape of its bottle. I certainly know Coke has registered the shape of its bottles. Trade dress law is about the packaging. It relates to trademark law because in today’s world we’ve started to accept things that were traditionally trade dress, like shapes of bottles, shapes of containers, shapes of products, and allowed them to be registered as trademarks in the US Patent and Trademark Office.

Wil:

So is this a reasonable intersection of uh, the work that you’re doing trade dress and design?

Anthony:

Aabsolutely. Well, I mean if something is trade dress, it can be registered in the patent and trademark office. Absolutely. Absolutely. The question with trade dress, maybe that’s the question we should be for our, uh, for our client. It’s a hard question to answer because frankly, if somebody says, do I need a patent? Do we need a copyright? Do we need a trademark? The answer to all of these questions is yes. All right. From a selfish perspective, the answer is yes. From a realistic perspective, the answer is no. You don’t need any of that. But if you put a product out there and somebody else bigger than you with better manufacturing, then that company is able to make it more cheaply than you. You’re not protected. If somebody starts making knockoffs using your brand, it’s, you know, if you’re, it’s not registered, not as protected as if you are registered.

You have a higher burden to go in. In federal court. If somebody is making copies of your artistic work and you haven’t registered it, you don’t even get to step into federal court until you register it. So, so this isn’t necessarily a need the way, say car insurance is that need. But if you’re looking to build a successful business, your patents need to be protected. Your trademarks need to be registered, your copyright is needed to be registered else. Your ability to stop others from creating your works from using your brands and selling them. Let me give you a quick example because we are running a little longer than that than usual, but it’s only a couple of minutes. But let me give a quick example. We’ve got a toy client and copyrights are filed. The trademarks are filed, fire and trademarks are filed. We’re currently in the, in the middle of doing trademarks and copyrights in the People’s Republic of China because of course that’s where the products are made.

We’ve already had an anti counterfeiting lawsuit for that client. We’ve had an infringement of copyright infringement, a lawsuit for that client because of a similar looking design. And that’s the kind of protection that you want as a part of the business. You want to be able to walk into court and say, “They’re infringing. You know, either we take this all the way or we settle,” and that’s what you want in order to keep your business going. And I can’t recall how many cease and desist letters I’ve sent out for this particular client. That’s what you need from a business or you want that ability to get others out of your way on the parts of, of your business that really truly belong to you.

On that particular note, I think we’re going to call it.

Wil:

Yeah, that was, that was excellent. Thank you, sir.

Anthony:

Good. I’m glad. I’m glad. And for everyone else listening, please don’t forget to rate us on iTunes or wherever you get your podcasts. Don’t forget to subscribe, listen to all of our back episodes. Well, maybe not episode one, two or three, but please let us know back episodes and we will come to you again very soon. Thanks very much for listening.

Wil:

Thanks.