Ep. 51: How a Patent Can Protect Your Idea

00:00:03

Andrea Marquez: There's a lot of benefits that come with getting a patent. It gives your product legal protection, it makes you look more marketable, and it lets potential investors, partners, and customers know that your product is unique and valuable. But a lot goes into applying for a patent. So where do you even start? When should you file a patent? And does a patent really protect your product from people who try to copy it?  

Hi, I'm Andrea Marquez, and This is Small Business, a podcast brought to you by Amazon. Today, we'll be breaking down everything you need to know about patents, whether you even need one, and the process of filing it.

00:00:46

Colleen Chien: A patent is a legal document granted by the government, in this case, the Patent and Trademark Office, that gives the owner the exclusive right to make, use, sell, import, and distribute their invention for a certain period of time. So what it is is it's not the right to practice your invention, but the right to exclude others from using or profiting from it without your permission. It's sort of like a fence. It keeps people away from your property, but you still need to commercialize your invention if you want to make money on it.

00:01:12

Andrea Marquez: That's Colleen Chien, a professor at Berkeley Law School.

00:01:16

Colleen Chien: Before I started teaching, I worked in patent law for several years, both as a patent prosecutor, writing patents, but also providing advice to businesses on their patent strategies. I've also worked in public service. I worked in the White House on patent issues. So today, I'm speaking in my own capacity, but I just wanted to let you know I've been around the block a bit when it comes to patents.

00:01:33

Andrea Marquez: Colleen is the person to go to for anything patent related. She'll be explaining the process and giving us insights throughout the episode. It's important for me to mention that none of the things mentioned on this episode should be taken as legal advice. We are here to provide with general information. So before you do anything, please see qualified professional counsel on your specific matter. The hiring of an attorney is super important, so don't make the decision lightly or based solely on anything we cover today on this episode or any other, for that matter.

So now, before we talk to Colleen, let's hear from Becca Davison, the CEO and founder of Unbuckleme, a small tool that helps unlock a child's car seat. Right now, Becca has six patents, so her idea is pretty original and unique. Before we get into why Becca has six patents, let's dig into how she came up with the idea. As most businesses do, Becca got into entrepreneurship, because there was a gap in the market that she could fill.

00:02:33

Rebecca Davison: I had my first daughter in 2015, and my mom graciously offered to help me out with childcare.

00:02:38

Andrea Marquez: But when she was showing her mom how to unbuckle her daughter's car seat, she realized that her mom lacked the strength to do it.

00:02:45

Rebecca Davison: And we kind of looked at each other and thought, “Well, if you can't unbuckle the car seat, you can't take my daughter safely out of the house. How are we going to solve this problem?”

00:02:51

Andrea Marquez: Her mom settled on spending time with her granddaughter at home. But as Becca's daughter got older, her mom started to realize that she was missing on key memories that she could be making with her granddaughter, so she relies on her experience as an occupational therapist to come up with a solution.

00:03:07

Rebecca Davison: She designed an adaptive tool that is just a C shape tool. It's very simple, and it uses leverage. So if you think of like an old fashioned nutcracker, it just wraps around the button, that's flat on the five point harness, and it applies leverage to make it 50% easier to unbuckle. And so, it was the difference for her of being unable to do it herself with her thumb pressure and some arthritis at the base of her thumb and then, applying some leverage with this tool. And she was very easily able to unbuckle it.

00:03:35

Andrea Marquez: And when Becca saw her mom's solution...

00:03:37

Rebecca Davison: I thought, “She can't be the only person on the planet that's having the same struggle, so let's sort of explore it and see if maybe we can start a business at this point.” So I think her first response was like, “Oh, I can make a few more for your friends.” But we quickly started thinking, “Well, maybe this product should exist in the marketplace for other people to be able to use.”

00:03:57

Andrea Marquez: The first thing that they decided to do was refine the prototype that her mom created.

00:04:02

Rebecca Davison: She spent her career making splints for patients with disabilities and making adaptive tools, using leverage and rubber bands and things like that. That's what her whole career was. So to use some leftover splint material, it's very pliable. It heats up, and you can bend and stretch it. And then, it hardens when it cools. And so, it's a perfect prototyping material actually, because you can just test different features.

00:04:21

Andrea Marquez: And they tested everything.

00:04:23

Rebecca Davison: I think we probably had, no joke, over 75 prototypes of just, “What if the lever arm was longer? What if it was taller? What if it was open wider?” At one point, I think my mom got screws or hinges. We were trying so many different things, thinking, “Well, if we're going to actually invest the money into bringing this to market, we'd better make it perfect.”

00:04:40

Andrea Marquez: And once they finally settled on a prototype that was up to their standards, they decided to get market feedback and research.

00:04:46

Rebecca Davison: I think that's a super important step for early entrepreneurs is to really validate your concept and your idea. So we went to a trade show. We talked to a lot of industry experts. We actually gave out a lot of samples to people and got feedback and said, “What would you change about it? And also, what would you pay for it?” And so, that feedback was super important, and having all those prototypes really helped us get a lot of feedback in the early days. We wanted a product that customers loved, and that was just the driving goal and it continues to be our driving goal. We want customers to be so happy with this product.

00:05:14

Andrea Marquez: Becca knew that she had to protect her idea before she went to market, so they filed for a provisional patent a few months after they came up with her idea. And if you don't know what that is, Colleen says that it's the first step to filing a patent.

00:05:28

Colleen Chien: A provisional patent is kind of a temporary application filed with the US PTO. It's inexpensive in the sense that you don't have it go through the entire process, and it's great, because it allows you to claim patent pending status on your invention for up to a year. When you go from provisional to non-provisional, you're basically entering the formal application process and starting the examination. And that's generally for a utility patent. And a utility patent protects these functional aspects of your invention. It's what most people think about when they talk about patents.

00:05:56

Andrea Marquez: And there's also other types of patents, like the design patent.

00:06:00

Colleen Chien: Which cover our new original and ornamental designs for articles of manufacturer.

00:06:04

Andrea Marquez: And even a plant patent.

00:06:06

Colleen Chien: For new and distinct plant varieties.

00:06:10

Andrea Marquez: So we've already mentioned that Becca's product was unique and original, which is a requirement for your idea to be patentable. But in order to find out if your idea is novel and non-obvious, you have to do a lot of research.

00:06:25

Colleen Chien: It's about looking through existing patents, published applications, and also just looking around in the field and trying to understand, “Has this idea been discussed before? Has it been put into a product or sold?” If it has, then you're not going to be able to patent that idea in that form anymore. You'll probably try to look for some of the more unique elements of what you're doing. So you can start with online databases, like the USPTO or Google Patents or you can hire a professional to conduct the search for you.

00:06:49

Andrea Marquez: But Colleen says that just because you can apply for a patent doesn't mean you should.

00:06:53

Colleen Chien: I think you always want to start with a business need and what the business purpose of the patent is. Patents are expensive to apply for, and then, going through the process can take several years. So if you are looking for some kind of thing that you can hold in your hand, negotiate with immediately, a patent is not typically going to serve that purpose.

00:07:12

Andrea Marquez: But if you decide that you do want to get a patent, there's a few things you need to do before you start the filing process. First, you need to figure out which patent to get.

00:07:21

Colleen Chien: Is it the design that's really unique and unusual about your product? Or is it really some idea or new way of doing things that you're bringing to bear?

00:07:30

Andrea Marquez: Then you have to think about which patent will fit within your budget.

00:07:34

Colleen Chien: You can still start by filing a non-provisional patent, which is kind of like a placeholder. It's a patent application, but it's a way to say, “This is my idea. I'm going to stake out this territory, and then, I'll decide whether I want to turn it into a full blown patent at the end of the year.”

00:07:49

Andrea Marquez: That's what Becca did when she first applied for her patent. She says that they were still refining their prototypes and trying to figure out what they wanted their product to look like. So they filed for a provisional patent.

00:08:01

Rebecca Davison: Which, in the US, gives you 12 months to continue to sort of iterate around the margin of your design before you submit a non-provisional patent that gets actually examined by the US patent office.

00:08:12

Andrea Marquez: And Becca says that they needed all the time they could get, especially since they were new to entrepreneurship.

00:08:18

Rebecca Davison: So it's going to take us four times longer than it could take anyone else to pop on the market tomorrow with this product. So we needed to sort of buy ourselves some time in a sense and make sure that we had protected our idea to give us time to go do the legwork and make sure, again, that we had the most perfect product and that we had designed it and marketed it in the right way that we wanted to.

00:08:34

Andrea Marquez: Colleen also says that filing for a provisional patent is a great way to protect your idea, if you're not going to be working on it alone.

00:08:41

Colleen Chien: Having that patent or even that patent filing in your pocket gives you the confidence to have those conversations and say, “Hey, let's work together on this, but I want to make sure my rights are respected.” And that can allow there to be a tradable asset for that patent-holder or that patent applicant, that then they can use to negotiate with the other parties to, again, bring this to market. And it just provides that trust and that sense of confidence that that patent applicant or patent-holder can bring into the process, that there is something outside of the negotiation that's protectable by the patent-holder.

00:09:13

Andrea Marquez: So just filing a patent application can give you some peace of mind. Having an early filing date can work towards your advantage, if someone tries to copy your idea, but a patent application doesn't give you immediate legal protection. You could only enforce a patent after the patent is granted.

00:09:28

Colleen Chien: That's why I always recommend that using non-disclosure agreements and other ways of withholding information if you need to are going to be smart ways to also protect your idea when sharing it with potential partners or manufacturers. But I think it's important to realize that patents, as much as they can be used to exclude others from copying your idea, they can also be used to include others in your process and collaborate with them in bringing your idea to market.

00:09:54

Andrea Marquez: Okay, so after you've done your research and verified that your idea is original, you can finally start filing your patent. We've already said that the first step could be to file a non-provisional patent. It'll protect your idea as you work on it. Then if you realize that your idea is gaining traction in the market, Colleen says it's time to convert that provisional patent to a non-provisional patent.

00:10:18

Colleen Chien: Once you're in that range of filing an actual application, you'll go back and forth with the patent office over several rounds, in most cases. Your application will be reviewed by an examiner, and then, there'll be a back and forth, some suggestions with ways you can amend or make your patent claim stronger. And then, hopefully, eventually, in about three quarters of the cases, you'll get your patent. Once you get your patent, you'll have that exclusive right to your invention for a set period of time. You can continue to pay maintenance fees and have your patent live out its full life to 20 years from the date of filing.

00:10:50

Andrea Marquez: And once you have your patent, the first thing you should do is celebrate.

00:10:55

Rebecca Davison: I think we have a video of my mom and I popping champagne, and we were like, “We have the patent. It's so exciting. It's great. Everything's going to be good now.”

00:11:02

Andrea Marquez: Until someone tries to copy your product.

00:11:06

Rebecca Davison: I think what really surprised us was seeing some of the competitive products that popped up that looked identical to ours, but perhaps had just changed the smallest of details, things that were so nuanced and specific, that doesn't change the function of the product at all, but it was just copying our idea with a small tweak, but then, they could sort of use that language to say, “Well, they said that the top arm was longer than the bottom.” So you sort of get into this song and dance of what words you've included in your claims. And that was shocking to me, because I thought, “Well, what do you mean? This is the identical product. They've just taken the smallest interpretation of words.” And I do believe you can take someone to court, and you can say, “This is basically the same thing,” and you can make all those arguments. But we didn't have the resources to do that.

00:11:47

Andrea Marquez: Copycats can still exist, even if you have a patent. Colleen says that it's important to remember that a patent protects the idea, not the expression of the idea in terms of product.

00:11:58

Colleen Chien: So you can have a patent over a particular aspect of a product, and if the copycat doesn't copy that particular aspect, but copies other parts, then it will still bear a resemblance potentially to the original item that's being sold. So that would be a situation where I would consider it to potentially be uncomfortably close, even though it's not infringing.

00:12:19

Andrea Marquez: There are still ways to protect your product, like leveraging trademark and copyright.

00:12:24

Colleen Chien: Are they trading on your brand or copying some aspect that identifies you to the consumer? That could be a trademark violation. If they use your exact words or a source code, that could be a copyright violation. Notably, with copyright, you don't have to file for it. It automatically exists. So even if you haven't filed for formal protection, you can still register your copyright. You might have a copyright claim. You can go through process to apply for a trademark, even after you've been putting it in use or you intend to use it.

00:12:53

Andrea Marquez: We can't stress enough the importance of getting the right kind of help.

00:12:57

Rebecca Davison: I definitely recommend anybody going down this path to work with an IP attorney, because they are very familiar with this process and how to craft your claims in a way that broadens your coverage as much as possible. And I think patents are so important to small businesses, because we don't have the big resources of big corporate companies. So the patents that we do have have given us a bit of a moat to succeed and have been really critical to our success.

00:13:20

Andrea Marquez: It's also important to remember that there is a difference between copycats and competitors.

00:13:25

Rebecca Davison: I don't mean to come across and say that we don't welcome competition, because I do think, if people come up with new ways of doing things that are different, I think that's fair game. And I would argue that we were probably not the first. There was another tool on the market before us, and we saw it and it didn't work for my mom. And so, we aren't the first either. So I do think that there's a healthy space for innovation.

00:13:45

Andrea Marquez: So it's important to be open-minded about the competitive landscape. There can be healthy competition.

00:13:51

Rebecca Davison: And I think that's hard sometimes for entrepreneurs to recognize is they want to be very territorial about their invention, but you're solving a problem. You're going to find your target market. You're going to find those people that really, really want your product and really resonate with your story, and that's really all you need to focus on is how to succeed and how to make your business succeed. I think some of the legal stuff can be distracting, and if you focus too much on competitors, I think it can take your focus off what really matters, which is your own business and how to grow it.

00:14:21

Andrea Marquez: I'm so glad Becca pointed that out. Protecting your idea is important, but don't get too lost in the legalities of it all. That time is better spent on improving your business, and if you're considering getting a patent, Colleen says that right now is the perfect time to do it.

00:14:36

Colleen Chien: I think there's been a realization that we really need all ideas to be out there and to come to market as much as possible. And good ideas can come from many places, and I think, for small business owners, there may be that desire to ensure that your invention, if you're putting out in the world, it can be something that you can control to some degree. And that's what a patent can help you do.

00:14:55

Andrea Marquez: I think anything law related and business could get a little overwhelming, but Colleen and Becca did a great job in simplifying the process and explaining what a patent is. We covered a lot in this episode. If you missed anything, don't worry, we've taken notes for you. You can find them at smallbusiness. amazon/ podcasts. That's it for this episode of This Is Small Business brought to you by Amazon.  

Reach out to us at thisissmallbusiness@ amazon. com to tell us what you're up to, or let me know what you think about this episode by leaving a review on Apple Podcasts. It's easier if you do it through your phone. And if you liked what you heard, I hope you'll share this with anyone else who needs to hear this. If you're an aspiring entrepreneur or maybe you already have your small business up and running and you're ready for the next step, a super valuable resource that can help you is the Amazon Small Business Academy. Take the free self-assessment on the Amazon Small Business Academy site at www. smallbusiness. amazon.  

Until next time, I'm your host, Andrea Marquez. Hasta luego and thanks for listening. This is Small Business is brought to you by Amazon with technical and story production by JAR Audio.