Kevin Mako: Hello, product innovators. Today, we learn about the different types of consumer product intellectual property protection from the managing partner of a law firm with over 80 attorneys.
Kevin Mako: This is the Product Startup Podcast, a show to learn from top leaders in hardware product development, prototyping, manufacturing, product selling and everything in between.
Kevin Mako: Hosted by Kevin Mako, the leading expert on product development for hardware startups. Welcome back, everyone. I'm very excited to introduce Tom Dunlap to the show.
Kevin Mako: Tom is the managing director of Dunlap, Bennett & Ludwig for 22 years. He teaches patent law at Lafayette College and has authored many books on these topics. Today, Tom will share valuable knowledge for inventors, startups, and small manufacturers on what provisional patent, utility patent, design patent, copyright, and trademarks are, along with best practices for securing the best IP protection for your new physical consumer product invention.
Kevin Mako: Now, onto the episode. This show is produced by Mako Design, the original firm providing end-to-end consumer product development services tailored specifically to hardware startups, small manufacturers, and inventors. Take your product from idea to store shelves at MakoDesign.com. Now, onto the episode. Hey, Tom, welcome to the show.
Tom Dunlap: Thanks for having me, Kevin. I really appreciate it.
Kevin Mako: We're really excited today to talk to you about an overarching look at the intellectual property game specifically for mass manufactured physical consumer products. These are inventions and gadgets that many of our listeners are either ideating, developing, manufacturing, or scaling that are listening to the show. Of course, intellectual property, we're talking about patents and things around this topic is important. So what we're going to do today is we're
Kevin Mako: Going to talk big picture to make sure that everyone understands all the different types of IP. And then we're gonna drill down into some best practices and who better to bring on the show than Tom Dunlap. You've got a firm that does over 1000 patents per year.
Kevin Mako: And it's exciting to talk to you because you've been doing this for 22 years, you've seen a lot of what works and what doesn't work. So let's start big picture and trickle down from there. But before we get there, just give us a bit of a backstory of how you became the success story that you are today.
Tom Dunlap: So success story is debatable. I'm pretty happy at where I am, but I started as a prosecutor. I then went to work for a private firm. I didn't like it. I quit, enlisted in the army before 9-11, and then 9-1-1 happened. And I got deployed as an armor officer and cavalry officer, came back to the law and started a new firm with a friend of mine with the idea that we would focus on intellectual property and creating a firm where we could be
Tom Dunlap: Happy people and attract happy lawyers. We grew the firm over the course of 20 years to about 80 or so lawyers. We're in a number of U.S. States, washington dc and New York and Seattle. And we have an office in the UK. We mostly focus on intellectual property, government contracts and M&A, mergers and acquisitions and diligence on M&A deals, things like that.
Tom Dunlap: So that's pretty much it. I have a lot of hobbies that are starting to occupy me more and I teach college at lafayette. I teach intellectual property for scientists and engineers starting this fall.
Kevin Mako: Well, that's perfect. We want to extract what are some of the main nuggets and lessons that you actually teach because you're teaching this very thing to technical founders. But whether it's technical founders or business founders or just inventors looking and bring on their idea, this is important information because this is the whole intellectual property protection side of your potential future business. Whether you're going to build a big brand behind your product or whether you're going to sell your technology elsewhere or license it out, it all
Kevin Mako: Is relevant here. And it all matters because one day the product's going to be in production in a growing scaling business. And there's many both opportunities and also pitfalls if you haven't properly planned for and executed on your intellectual property strategies. So let's just talk big picture. What are all the different types of IP that a hardware startup could be looking at?
Tom Dunlap: So the first thing I'll say is you've got to own your invention. So inventing your invention isn't enough. You've got to get patent protection, got to get trademark protection for your brand, copyright protection for your source code if you're smart and potentially there's some trade secrets involved. Let's talk about each of these things.
Tom Dunlap: Patent protection involves protecting an actual invention. Utility patent protects how something works. So if you have a fidget spinner, the mechanism of it spinning as long as it's new, useful and not obvious to one skilled in the art. I won't deep dive in those prerequisites but they're pretty much the same in the U.S. And canada and the UK, the world over. The other thing to remember about patents is if you file a patent in the U.S. Or canada or wherever, it's only good there. You have to
Tom Dunlap: File an other application to have any patent protection anywhere else. So you've only protected the market, you filed it. Hugely important and a lot of inventors kind of gloss over that. The other things to remember is a patent is not enough. So in addition to a patent, your product will have a brand and you can be very successful. Mcdonald's without patents on and its hamburgers has been very successful with selling the golden arches. So trademark, which protects brand and identity is sometimes equally, if not more important, depending on
Tom Dunlap: What you're selling. So you have to marry those things together. You can't just get a patent in a vacuum. And I'm going to circle back to the different kinds of patents in a second. And then thirdly, and again, something that's often overlooked, if you're a hardware developer or builder, there's probably source code involved maybe with what you're making or maybe not. But and it could be something as trite as an instruction manual.
Tom Dunlap: If you have a unique instruction manual, you can copyright that. The copyright office has some minimal requirements, but compared to patents and trademarks, the standard's a lot easier to get copyright protection.
Tom Dunlap: And finally, and probably, Kevin, you know a lot about this, there's something called trade secrets. If you want something to last forever and you don't want to disclose it to people and it is an invention or a process, you could just keep it secret.
Tom Dunlap: Good example is the formula for Coca-Cola. That was never patented, but you don't know what it is. Apparently there's like one guy who knows it and if he dies, something's released. Another guy knows it. I don't know. But the point is you can keep something very secret and there's just as much value or more like that in the Coca-Cola formula than there is in a patent where you're publishing it. And the idea behind a patent is that I'm sharing this with the world. I'm telling you how to do it. For 20 years, I get a monopoly
Tom Dunlap: On this invention. Nobody else can do it and I can sue you, which is a whole nother ball of wax and a whole other piece of expense. So back to patents briefly, because I need to explain that a little more. One thing that is not a patent that you will pay for and you'll go online, you don't click on one of the online platforms and say, oh, provisional patent. That's not a patent. It allows you to use that as a filing date and go back in time and claim that as your original filing date, but you still have to file a full-on utility patent.
Tom Dunlap: That provisinal expires in a year in the U.S. Another kind of patent is a design patent.
Tom Dunlap: And if you have made something that doesn't do anything, you can still get a patent on the design. They're potentially not as valuable, but they're still certainly valuable. The Coca-Cola bottle, the shape of that actually has a design patent. The fender of a car, board games often have design patents. So there are things, there are elements to your utility item that you can layer a design pattern on top of and get a fair amount of protection.
Tom Dunlap: So it doesn't hurt to look at every piece of IP you could possibly have and how these things overlap and intersect I can say almost unequivocally that anything you can tell me right now you can give me a product and I can probably come up with at least two to three pieces of intellectual property they're different from each other that you need to protect and own because if you don't somebody else can copy your stuff and compete with you just steal yourself a bigger
Tom Dunlap: Company especially so something to be aware of and just like uh patents trademarks are also national so if you file a us trademark, all you've got is a us trademark. You've got to file also in canada, also in the UK, also in the EU.
Tom Dunlap: Fortunately, all those countries and canada just recently, thank goodness, joined something called the madrid protocol. So we can file through world intellectual property organization with one application and designate member countries.
Tom Dunlap: So there's a really easy way to do it, but you don't own a trademark everywhere or a patent everywhere unless you file in all those places that you need. So that's kind of a huge, very high level like shotgun overview.
Kevin Mako: Much appreciated. I love how you break down all the different pieces and I'm really eager to dig deeper into obviously the patent space. Most inventors, they dream of this day where they get the patent approved and they have that old stamped thing to put on their wall. It looks beautiful and obviously it's a very exciting time for an inventor.
Kevin Mako: So let's break down the different types of patents. You mentioned the provisional. I want to talk with you about your advice on when that is useful and also what you need to prepare for. Obviously, you've talked about that one year mark, which is super important.
Kevin Mako: And then obviously driving into kind of best practices around utility and design, especially as most hardware startups have a variety of different unique pieces to their products. Some of them are broad ideas. Others are very narrow technologies that make those ideas work.
Kevin Mako: So I don't know where you want to go from this, but I'd like to at some point get to the concepts of broad versus narrow claims and how the claim system works, as well as best practices around the different types of patents that a hardware inventor could use.
Tom Dunlap: Let's start with provisional because that's kind of the most basic when you go to a click-to-buy patent website, not advising that. But if you do that, you'll see first and foremost, the least expensive thing you can buy is a provisinal application because that is essentially your ideas and putting a cover sheet on them. There are no claims in a provisional patent. You don't actually get anything at the end of it. All you get is a bookmark.
Tom Dunlap: And how that bookmark works is you have to disclose enough information in that provisinal application so that the utility application relates back to it. So you have describe enough that the thing that you file a year from now is pretty much the thing you've disclosed in the provisational. And there's really no use in doing it because you're still paying the full price of utility patent, unless you're in a hurry or your budget constrained. And I'll give you some
Tom Dunlap: Examples. The most common thing we see at our firm is we represent a lot of universities. Mit's bites and bits is one example, or we represent biotech company that's at a university in virginia, george mason university. And professors will go to a lecture and they'll have some new invention. Like we've just come up with a new nanoparticle that size, sieves dna and attaches hatches, and everyone's really excited. They want to go publish this and they want to
Tom Dunlap: Go lecture about it. But the university office of tech transfer is like, holy crap, you don't have a patent on that. As soon as you disclose this in 90% of the countries in the world, it is now in the public domain. Anybody can use this and we can no longer license it and you don't own it anymore. That's a bad result. So a provisional patent is a stopgap run to the patent office. It can be filed in a day or two pretty inexpensively. You put a cover
Tom Dunlap: Sheet on it, can claim the rights to it, and then your professor can go lecture. Same thing for inventors. So if you have a piece of hardware or a machine and you need to move quickly to get in the market space, you can file a provisional and be reasonably protected.
Tom Dunlap: You're not as protected as if you had filed a full non-provisional application, which has claims and specification and a lot more work to it and is a lot more expensive, but you do technically get protection. If you ever get into litigation, you have to prove sometimes times, if there's a time question, that that non-provisional application, also utility app, that's the same thing, relates back to the provisional. And that can be a challenge if
Tom Dunlap: You've improved it over that year. But a provisual is a good thing to do if you're in a hurry and you want to start talking about your invention with third parties. Because an NDA, and this is another huge misconception, is only as good as the paper that it's written on and the people that sign it.
Tom Dunlap: And I hate to say this, but most NDAs can be worked around if you have a dishonest. If somebody really wants to get around it and be dishonest, they can get around it. So there are good things to have, you should sign them because it is a contract. And if you catch someone, great, but it's really easy for them to do something through another company or on the side, and they have the knowledge in their head, and you can't extract that. But a patent, if they do it, you can sue them because you own it legally. So things to think about there.
Kevin Mako: I want to break down the something you mentioned there about the improving of a provisional patent, because I think that's quite often misunderstood by an inventor. Center, they go through, let's say a CAD design or a rough prototype, and they take that information, all the information that they have at that time. Of course, like you said, you want to put as much into it as you can, because you're going to rely on that information later if anybody tries to copy you in the meantime before you actually file your full utility patent. But something that's
Kevin Mako: Often misunderstood is the fact that through later stage detailed engineering, mechanical prototype, pre-production prototype, preproduction itself, production, as you go through all these different elements and certifications and whatever else, the product is very likely to, first of all, become much more detailed in terms of an engineering perspective.
Kevin Mako: Second of all- that's good. It's likely going to change. There's going to be elements of it that are going to, whether it's a user-based requirement or whether it is a technology limitation or whether simply just a change of heart to the inventor or any of the number of other stakeholders. The problem is very rarely is that initial CAD design the exact same product downstream. Now, you mentioned as you change things, you now in a litigation scenario, which is how you should always be
Kevin Mako: Considering this anyways, that's why you're doing this. Everything you do. Yes. That presents a problem. So talk a bit about that and how inventors maybe might want to actually delay putting that information into a provisional or a full utility patent until they're a little more flushed out on the engineering and a little bit more confident they know what they're actually going to production with.
Tom Dunlap: So there's two things here. One, you can file an application and have it not disclosed in the U.S. If you sign a certification that you're not going to file for in patent application. So you can file a provisional and essentially have it sort of secret. That's one option, and it does give you some protection. And remember, the standard is it has to relate back. But as you said, if you change the invention and have something new
Tom Dunlap: Midstream, I guess the good news is if you never disclosed it, all you've lost is that priority date. So if it's something new, you can fill your non-provisional application with the new information. The only claims in that non-provisional that are protected are the claims that relate back to that provision. So you will lose your priority date on part of your invention, but it's not the end of the world. And it is another strategy not to file
Tom Dunlap: A provisional early and to wait. But remember, the us, we were the second to last country in the world to be a first to file country. We were a first-to-invent country and people had inventor's notebooks and they were doing silly stuff like mailing themselves letters like, I invented on this date, but we are a first to file country now ever since the american invents act.
Tom Dunlap: The philippines was the last one. But what that means is whoever files their patent first, regardless of who invented it first, owns it. So that priority date has become paramount to anybody who invents anything, getting on record.
Tom Dunlap: My thought is to the extent you can get on record early, even if you change your invention, all you're losing is some of that priority date. And midstream, because provisionals are so cheap, file provisional if you're not ready to file a non-provisional yet.
Tom Dunlap: I mean, they're not expensive. And that's a really common strategy for companies with a lot of money, of course. I know nobody has an unlimited budget, but that is a strategy. We filed a series of seven provisionals.
Tom Dunlap: You can also file another strategy, final one. You can file a patent that relies on your original provisional application and then file a continuation in part that basically has improvements to that patent as a second patent.
Tom Dunlap: So it's that priority date and a new patent with your improvements related to the first patent.
Kevin Mako: Let's talk a bit about claims and what those are. So you get to the point where you're filing your full utility patent, you want to protect your invention idea and the technology behind it. What is the concept of claims?
Kevin Mako: And then what are some best practices about too broad, too narrow, and what a good lawyer is trying to do to make an excellent patent application?
Tom Dunlap: Yeah. So first thing to know is there are independent claims and dependent claims.
Tom Dunlap: And all you own in that entire, whatever, 100-page patent application that you filed or patent are the claims. So you'll read like 10 pages of introduction and 50 pages of specification. You'll look at the drawings, but all you own are the claims.
Tom Dunlap: And the claims are five or six sentences that say this invention does xyz or an improvement on xyz. Then you have something called dependent claim. So I'll give you an example. An independent claim would be a ballpoint pen that opens and writes.
Tom Dunlap: And a dependent claim would be the ballpoint pen of claim one that writes in black, or the ballpoint pen of claim one that writes in red. So those dependent claims aren't independent claims, you own only that first independent claim by itself, and the dependent claims flesh it out. But that's all you really own. So starting with the fact that all you own in the patent are the claims, too narrow or too broad. So this is a challenge that I would not give specific advice until you're involved with a specific invention.
Tom Dunlap: Intervention. Generally speaking, there's a couple things here. The first thing you do when you're filing a patent is you do a patent search. That's absolutely important because a patent has to be new. There's three requirements for a patent. It has to be useful. Useful is a very low threshold. If you're building stuff you build, Kevin, like mechanical stuff or electronic stuff or hardware, it's going to be usable. It just can't literally be unuseful. Don't worry about
Tom Dunlap: That one. It's a problem with software, but for what you do, everything's going to be useful. The next requirement is it has to be new. That means if somebody in 1932 in nepal wrote a journal article about exactly your invention and published it on the top of a mountain and you've never seen it, and you file and get your patent, your patent suddenly has become not new anymore, not novel. So you've lost your patent. So a patent search is really
Tom Dunlap: Important. Now, obviously in the high tech industry and what you do, searching us patents is usually enough because we're the biggest market on earth in the united states. And most people are filing patents here if they want to make money off their product. So usually a us patent search is good. Some pharmaceutical companies will also do japan, and you'll do multiple countries to make sure there are no patents there that aren't in the U.S., but you need a patent search.
Tom Dunlap: The second aspect, and this is where I'm getting to the narrow and broad piece in a kind of circuitous route, but you have to look at the patent landscape. So that's the first thing. You see what's out there, and there's this invention that's really close to yours, and this invention is really close yours. You're kind of squeezed in here. You might have to draft claims that are necessarily narrow so that your invention is truly new.
Tom Dunlap: And that can suck, but you also don't want to draft patent claims that are overly broad either such that you're really claiming nothing. What your patent search says, what the patent landscape is, your lawyer will have to look at that and what your invention is and what you're claiming.
Tom Dunlap: The next thing is it has to be not obvious. And that comes into drafting broader, narrow claims too. And obviousness, I don't know if you've heard of this concept, I'm sure because you've been in the business for a long time.
Tom Dunlap: Yeah. It's a complicated thing to explain to people who don't deal with it all the time. But the standard in the U.S. Is not obvious to one skilled in the arts. And so if you're making a coffee machine, it's somebody who's skilled in the art of coffee machines, like literally.
Tom Dunlap: Or if you're making a toy, I mean, I had a litigation case for seven years over a water balloon product. You screw into a hose that blows up 100 water balloons. And we had to find experts Bunch O Balloons, yeah.
Tom Dunlap: Josh Malone was my, well, the toy company that josh sold his product to was my client. But anyway, very close with josh. But point is, we had to find an expert in water balloons, like literally find people who are experts in toy products with filling things with water.
Tom Dunlap: I mean, that's what skilled in the art means and what is that standard of various product to product and science to science. So that's where you get to your claims, what kind of product you have, what other products are out there and looking at all the other things that have been invented and combining those things together is what you're doing obvious or not to somebody who's an expert in your field.
Tom Dunlap: Hopefully, if you're the inventor, you're an expert in the field and you have some sense of that. But I don't know if that really answers your question. I don't want to commit to saying you should draft narrowly. You should draft your claims broadly. The crappy lawyer answers, it depends.
Tom Dunlap: Yeah, that's great.
Kevin Mako: It just gives people kind of an idea of what those differences are between broad or narrow. So that's very helpful. Any last tips and tricks that you would advise to a kind of hardware startup going through that
Tom Dunlap: Process of actually getting their first patent done so NDAs with everybody and when you aren't manufacturing in a western country and I know this is an experience thing you need to be really careful about disclosure of your invention to manufacturers you don't know that don't have reciprocity from a litigation standpoint you can get an NDA signed with somebody in vietnam to
Tom Dunlap: Manufacture your product, but the enforceability of that, if they copy your product all of a sudden is very, very difficult. Well, almost impossible. So think about that. That's kind of a tip and trick that people have learned by heart lesson. You're going to run into knockoffs if your product's successful, no matter what, no matter who you are. Don't make it easy for them.
Tom Dunlap: I guess that's a tip-and-trick.
Kevin Mako: And talk a bit about what your firm does to help hardware startups that are getting off the ground.
Tom Dunlap: So we are an IP firm principally, but we also do government contracts. We do everything from helping with their limited liability company and their partnership agreement.
Kevin Mako: Huge piece of advice.
Tom Dunlap: Don't go into partnership with somebody and make a product without something on paper and signed by both of you before you make money. Otherwise, it's terrible. Get something signed with your partner or partners. We deal with fundraising.
Tom Dunlap: So we'll do anything from private equity, crowdfunding, sec 504, 505, and 506, which are in the U.S. We call private offers. Another fact for your startups, you can't ask people for money.
Tom Dunlap: Even friends and family, it's illegal. It's technically a public offering unless you fall into one of these exemptions. It is pretty easy to make these exemptions work for you, but you've still got to check all the boxes. There are something called state Blue Sky laws that come into this. You have to comply with the state Blue Sky laws depending on where the people you're asking for money from live. All of those things we do and they're very important to remember. The other thing I would advise you before you do your roadshow, at least get a
Tom Dunlap: Provisional app on file and figure out your brand and maybe trademark search, trademark landscape, get that stuff done. So we do all of that stuff, soup to nuts. But we also help clients, partly because our big chunk of our firm is in dc, sell to the government, patented products, inventions, hardware, whatever it is. We do government contracts work. A lot of that involves protesting awards and things like that. But it's a really good source for steady income for a lot
Tom Dunlap: Of product manufacturers. If they can get on a gsa schedule or sell something to the government, it's pretty nice. In fact, our firm has a government contractor to NIH and health and human services ourselves. So we live it too. Oh, much appreciated. What's the website if somebody is listening in? Sure. It's www.DBLLawyers.com. So it's two l's in the middle.
Kevin Mako: And I will put that link in the show notes below. Anyone can click through. Tom, thanks again for all your words of wisdom about the landscape for hardware startups on what the different types of intellectual property are and some of the tips and tricks in and around protecting your invention idea. Thanks again. Thanks, Kevin.
Kevin Mako: Thanks and take care. Thanks for tuning in to this episode of the Product Startup Podcast. If you found some value in the show, please do us a huge favor and hit the like button and subscribe.
Kevin Mako: If you have any questions, guest suggestions, or anything else, feel free to reach out to us anytime at our email podcast@MakoDesign.com.
Kevin Mako: This show is hosted by Kevin Mako, North America's leading expert on product development for hardware startups, and the podcast is produced by Mako Design, the original firm providing end-to-end consumer product development services tailored specifically to hardware startups, small manufacturers, and inventors. Take your product from idea to store shelves
Kevin Mako: At MakoDesign.com. That's M-A-K-O Design dot com. Thanks for joining and see you again soon.