When is Right Time to do Patent or Trademark?

Rich Goldstein.m4a [ 00:00:00 ]Hi, Rich Goldstein, and I'm here in Austin at the BDSS Market Masters event hosted by Kevin King. And the topic I'm going to talk about today is the most common question that I get, which is, when is the right time to do a patent or trademark? Let's talk about patents first. So, if you are concerned about your competition, if you're concerned about someone else that might want to also file for a similar patent, then the thing you need to know is that in the U.S., we are now a first-to-file system, which means the first person to the patent office is the one who has priority toward getting the patent. It wasn't always the case. You might hear stories about people having an inventor's notebook and proving that they invented it first or even mailing it to themselves. [ 00:00:53 ] None of that matters anymore. And even to the extent to which a lot of it never did matter, but now that we're first-to-file, then proving that you had an earlier date of invention doesn't matter because the only thing that matters is whether you were the far file to actually file at the United States Patent Office. So then, let's put aside other people, let's talk about your own actions and how your own actions can prevent you from getting a patent. Under US patent law, if you publicly disclosed an invention, then that starts a clock ticking, where, if a year goes by, by, then it's definitely too late. Now, don't confuse this with what some people say, where they'll say, well, you have a year to file your patent. It's not true. [ 00:01:39 ] You don't actually have a year because there are many ways in which you could lose the right to file a patent within that year. But if you do wait a year, then it's game over. So one year is the worst-case scenario, not that you actually have a year. Let's be clear about that. Another thing to keep in mind is that although the US does have this one year grace period, most of the world does not. So if you have any interest in international patents, then you need to file before you publicly disclose the invention. Here's the thing. It's really common to launch a product and not really be that sure of how well the product is going to be. [ 00:02:20 ] And so you say, I'm going to launch the product and if it goes really well, if it sells really well, then you're going to have a year to file. So if you have any interest in international patents, then I'll do the patent. The problem is because of what we just talked about, you can't circle back around to it. And I've had so many clients over the years that have come to me with a product that they're doing really well with and they tell me that they're selling it. It's doing fantastically and they have other competitors that are knocking down their door, and they just need to patent it now. And then I need to ask the question which I don't want the answer to, which is: How long have you been selling it? [ 00:03:00 ] And then they'll tell me, it's been a couple of years, maybe two and a half years. And I have to then tell them that there's no way we could apply for a patent, that it's too late. I would love to take on their project. I mean, clearly they're ready, willing, and able to do the patent and pay my fees, but I just can't help them. And they often ask, well, how would I possibly know that it becomes too late a year after? And the answer is that you would. You wouldn't. You wouldn’t. You wouldn’t. Unless you’ve watched this video. So keep in mind that that one-year rule can prevent you from ever getting a patent. And if you’re interested in international, then you need to apply for a patent before you publicly disclose the invention. [ 00:03:46 ] Now let’s talk about trademarks. So over on the trademark side of things, there is no one-year rule. There is no specific time bar toward getting a trademark. So there are circumstances where you have a mom and pop business that's been operating for decades under a certain name, and they're very well known in their industry, but they never applied for the registered trademark. It may be possible to apply now. However, it gets complicated though when other people have entered the space with similar names in the meantime. Or if one of their competitors files a trademark application before they get to file a trademark application. Then it can vastly complicate the process. Whereas filing a trademark application might be a couple thousand dollars normally, if someone else files before you, now you're turning it into tens of thousands of dollars project in order to sort it out and prove that you were using it first. [ 00:04:49 ] So you want to file your trademarks at an earliest stage as possible. And the other thing to keep in mind is just that whatever IP assets you obtain, in terms of your patents, your trademarks, and your copyrights, they'll help you tremendously when you get to exit. They'll help position your business as best in class, meaning that it's more attractive to buyers, and it will stretch the multiple in a way that will give you a huge ROI on whatever you spend on IP. Here's the thing. Patents are expensive, and you might not want to patent every product that you're launching. But what you want to do is you want to make sure that you're going to have something that you should be focusing on patenting before you launch. That's the right time to look into it, figure it out, and to make a plan. Again this is Rich Goldstein, and if you want to learn more about the patent process, or find out if it's a match to work together on a patent project, then you can contact us at GoldsteinPatentLaw.com.