Intellectual Property, What You Should Protect and How To Do It

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Intellectual Property, What You Should Protect and How To Do It with Yoriko Morita

There’s an old song that goes like this “you don’t know what you’ve got till it’s gone”. Originally about the environment by Joni Mitchell before most even knew what the environment was, but the same thing can be said for your intellectual property. It needs protecting before someone else makes a play for it or claims it as their own. Don’t wait.

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About Yoriko

I started working in patent prosecution in 1996, and I have been a U.S. Registered Patent Agent since 2001. I hold a Ph.D. in Electrical Engineering (Optics emphasis), an M.B.A., and a B.A. in Physics. I’m also a Certified Licensing Professional, recognized by the Licensing Executives Society, and have been part of the IAM Strategy 300, which recognizes the top IP professionals as nominated by their peers. I have native fluency in both English and Japanese, as well as extensive experience working and negotiating in Asia.

At Patents Integrated, we aren’t patent attorneys. We aren’t business consultants. We aren’t product developers. We’re more than that, pulling from multiple disciplines to create IP strategies that not only protect our clients’ innovations but fully support their long-term business growth plans.

Intellectual property isn’t one-size-fits-all. Every business is different, with different needs, challenges and goals. Our team has deep experience across the entire innovation lifecycle – from product development, to IP portfolio management, patent monetization and beyond – because we’ve been there ourselves, working with everything from startups, to public companies, to government entities, law firms and more.

We bridge the gaps between business leaders, technologists and legal professionals

We ensure that your company’s patent strategy is fully supporting your corporate growth plans through a variety of service offerings including:

In-house IP training seminars

Negotiation assistance in discussions involving IP, especially in Asia (native fluency in Japanese and English)

“Patent Troll” defense strategies

Patents Integrated Website

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Full Transcript Below

Intellectual Property, What You Should Protect and How To Do It with Yoriko Morita


Hello, and welcome to the business of business podcast. I’m your host, Roy, of course we are the podcast that brings you a wide range of guests that can speak to a lot of diverse topics. And, today is no different. We have an awesome guest. I’ve been waiting for this interview for a while. We’re going to talk about some complicated or complicated for me subjects, and I know that she’s going to be able to put them in layman’s terms for us, but, I want to welcome Yoriko Morita .

She is the founder and president of Patents Integrated. She started working as a patent, prosecute in patent prosecution in 1996. She’s been a us Registered Patent Agent since 2001. She holds a PhD in electrical engineering, with an optics emphasis, an MBA, and a B.A. in Physics. She is also a certified licensing professional recognized by the licensing executive society and has been part of the a M strategy 300, which recognizes the top IP professionals as nominated by their peers.


She’s also fluent in both English and Japanese and has extensive experience working in negotiating in Asia. Yoriko welcome to the show. Welcome to the show. Thank you so much for taking time out of your day to be here with us.


Thanks for having me here.


Yeah. So, we’re going to talk about, intellectual property, mostly today. I guess the easiest place to start is just at the beginning is can you tell us actually, what is intellectual property?


Sure. Intellectual property in general is essentially any information that are give you a unique business advantage. So, I mean, of course there is innovations. You would think of companies like apple and Google that have a lot of innovations. They file for a lot of things like patents and trademarks and copyrights. It also includes a category of what we call trade secrets and trade secrets are pretty broad, so I can cover everything from the way you run your business. Maybe some inside knowledge that you have about your particular industry. It can be customer lists, it can be all sorts of things. It can be, if you have the secret recipe of Coke, that’s a trade secret, those sorts of things. Essentially anything that would give your business an advantage over anybody else who doesn’t have that intellectual property.


Okay. Awesome. So that covers a very wide spectrum. Like a founder, if I’m gonna do a startup, I guess it can be, yeah. It could be manufacturing, something I could have even invented a, I guess, a whole new process or, maybe a piece equipment. Those are the things that we’re going to be talking about. Is that correct? Right. Yeah. Okay. As a business owner, as a startup, why should I be concerned about, what are the terms that I may face or should I rush out and, get this intellectual property protected upfront? Do we need to see if the, with this ideal actually take off can kind of, what is that process?


Sure. The way that I like to approach intellectual property is to make sure that it’s tied to your business. Your, the way that you want to develop your own business. Okay. It’s very different depending on what type of business you’re in, as well as what your product is. If your product is a service, like my firm is a service firm. My intellectual property is really my experience.

The way that, as well as my connections in the industry, those are things, as well as some of the processes that I use and working with my clients, so that those are things that I consider my intellectual property. Like, for example, if they, if another, if a law firm wants to acquire my business, then one of the things that I will be negotiating will be how they would value my intellectual property, which would include things like my book of business.


Okay. That’s, that’s a very valuable asset towards my company. If somebody else wants to acquire it, then no, they’re going to have to pay me some money for it. It’s a similar thing with any other service industry. Like for example, I have a friend that just bought a plumbing business, for example, and for him, the intellectual property that he really wanted to get ahold of.

This happens to be apparently it’s the, it’s a plumbing business in Maine and apparently it’s the only, plumbing business in Maine, which actually consistently has been making money for over 20 years or something like that. Okay. Yeah. Yeah. It’s a hard business to be in, and it’s hard to have longevity, especially during these crazy times. He, but he identified this particular business as being something that he wanted to be a part of because it had a long history of success.


It had a lot of trust. Brand equity is part of intellectual property. Having that Goodwill associated with your name, that’s certainly considered intellectual property, their book of business, as well as their human assets. Who they hire, if they hire contractors, how they do business, that’s all part of intellectual property. That’s how IP can influence, even as a service company.

When you get to a lot of my clients are in the hardware space. These are, everything from, I have clients that do medical devices, for example, all the way up to satellites. In satellite inner sandal, like communications, so different communication protocol between satellites and states, for example. So these are really complex things. Yeah. There, we’re talking more about patents and how we specifically file for, patent protection so that other people can’t copy their product, their technologies, as well as we also look at things like, if there’s software involved.


There is software code that needs to be written in order to operate these complex machinery, then that can also be protected in various ways. Another way that intellectual property applies to pretty much any business is with trademarks. The main one that people run into all the time is your company name, like, for example, like when you were starting your, this podcast, the business of business now, is that something that you looked around and you just decided, oh yeah, that sounds like a good name, or did what were the thoughts that went into deciding on your name?


Yeah. It was just research into, was there another one that was already out there and of course, for podcast, our, I guess our Mecca is always iTunes or has been in the past. So, you do the search of iTunes and if it’s not there, then it probably doesn’t exist.

But, it’s funny that you bring that up because I, I, I think that I have looked into this somewhat and, to try to get a trademark on the name, but the one thing as I was reading through, which I have written down for a question for you later, but I’ll go ahead and ask you now, is that, there, you have to don’t, you have to be able to staunchly defend your patent or your trademark every so often, or they will come back and say, well, obviously it’s not that critical because nobody’s even trying to infringe on your property.


There were some weird twist to the language that I read about that. Maybe you could elaborate on that just .


Okay. Sure. What are the things that, especially with, expensive types of IP alike, patents, there, you do have to weigh how so, I mean, this goes back to your business again. If, whether you have, so whether that expense, that investment that you are making in protecting your IP, is that going to be bring you value in the long run? Right. Then, it sounds like one of the things that you’ve may have heard is that, don’t bother filing for patent or trademark protection, unless you’re willing to defend it.

Yeah. Well, and defending defendant means probably, either suing somebody for infringing on your, what, on your IP, or not. If that involves litigation, that gets even more expensive. With that, though, there are ways that I think IP can bring your company value that goes beyond having to go out and defend it. I like, for example, if you are in a, an industry where a lot of the players in the industry tend to Sue each other, a lot one is, and an interesting one is actually the beer industry, the craft beer industry.


With that, there are a lot of really creative names out there that are, that brewers use for their new products. Well, sometimes though you can get a little too clever with your beer naming. There have been instances of, like for example, there was a beer that was put out that was called, there was an initially named, guns and roses. It was supposed to be like a Rosie infused kind of, a beer.

Those beer, wine combinations are pretty popular these days. Well, of course the folks that are in charge of the band guns and roses came after them and sent them a cease and desist. So they had to change their name. There are things like that happened often in the beer industry. The other one, the other example is, so I’m in Colorado. One of the bigger local breweries here, is left-hand brewing.

One of their trademarks is they managed to put, essentially like a nitrous oxide cartridge in their beer, either bottles or bottles of cans, I think in the bottles is what they managed to do and what there is a, so they have a brand, a line of beers called nitro beers, and they have all sorts of cute things about the, that line of beers that makes it taste smoother and all of those things.


One of the things that really ticked off the rest of the beer industry is they try to trademark the word nitro in reference to anything beer related. Well, they’re not the only ones that have ever put, Nigel, nitro beers and, in the world. I mean, it’s just, nitro is just another alternative to carbonation. They ticked off a lot of other folks in the beer industry.

There was a lot of legal trouble around it, that kind of things, if you’re in an industry like that, and you wanted to pick a new name for your beat, your product or your brewery or whatever, you would want to be a little careful with what you use as your name. That they’re, it’s more of a, it’s a bit more of a preventative measure. You’re looking at, you’re picking in that case, you’re picking a name based on the reducing the risk of getting sued later.


Okay. In that case, you’re not so worried about other people infringing on your intellectual property and having to go Sue them. It’s more that you don’t want to get sued. That’s one way that we can, that IP can be a valuable asset to you, even if you’re never going to Sue somebody over it. Okay.


Yeah. The other thing I think talking about names is I’ve heard of these court cases before where, somebody tries to, trademark, grass, or, some very commonly used name and, people are coming kind of, like you said, with the beer people come back and say, well, this is used in a lot of products or, this name is, it’s a common usage name. I guess there’s all kinds of variations that go along with that as well. Correct?


Yes, there is.


The, so what is the value in it? And, we can speak to me because now that you’ve brought it up, it’s got me to thinking about it again, but what is there, I guess the value to somebody like myself to do the podcast, the other thing that I’ve thought about, and I’ve actually got it written down on my to-do list is, a couple of, more taglines is to, are those trademarked or service marked, or there’s something that you can do to kind of protect that tagline. So everybody else can’t use it.


Yup. That’s correct. You can, you can, register a trademark on taglines names, shapes, logos, that thing. You certainly can. There are limitations, like you’re saying, it can’t be a common name. It can’t be a common usage kind of a thing. There are. Then, definitely get guidance from a trademark specialist.

There’s, but there, what are the things about a registering your trademark is that you do need to be using it in commerce. You need to be using that trademark associated with a sale of a product or some kind of a business transaction. You do it, there are, it’s not just a matter of filing paperwork. There is you do have to use it.


Okay. Okay. Yeah. The, so that I was just thinking about like, for the exit strategy and I guess that’s one reason that, probably, well, let me hang on. I wanna hold that thought for a minute. I had one more question back on products and services.

So like how different, okay. Like I use a pretty nice microphone here, and this is the extreme I know, but, I could take this apart, turn the wires around and say, okay, I’ve got a different, combination of wiring. What’s this, what is that differentiator between an existing product and an upgrade or, I guess, how do you go about proving that whatever I did to this microphone really added a value enough more than just, kind of ripping off the original manufacturer.


I’m sure you don’t want to be considered a copycat. Right. So, whatever, so you can protect the improvements. So now we’re talking patents. Okay. You can file for a patent protection on an improvement over an existing product. Now that improvement does have to be, have to provide, sufficient improvement. So that it’s different enough. Like for example, if you’re, if it’s just like, if you have, if you purchased like your microphone, if you purchased the product a and you.

Decided, what, I have this other product B, and if I were to stick these two things together, they work so much better. Right. If you’re not aware of on the market of anybody else combining a plus B, then that could be productive. Now you’d have to convince the examiners over at the patent office that it’s an improvement enough. Or if, what will be even better is say, go back to the plumbing business again.


So your pot. Say you’re a podcaster, but you have a background in plumbing. It so happens that, with your microphone, if you take this piece of, plumbing equipment from your day job truck, right. You were sticking on your microphone, then that just creates a whole better resonance. It’s something that you’ve never seen in the microphone industry before.

Right. Of course, it’s something that, plumbers don’t think about improving microphone sounds. Right. These are, it’s an unexpected combination of two completely diverse products to produce an unexpected result. Yeah. Having that, having something like that would improve your chances of getting, being able to get patent protection on it.


Okay. I guess that investigation part, like with mine, the podcast name, it was fairly easy and, I’ve been doing it for a few years. No, nobody’s come after me yet. I’m probably pretty good there, but, let’s just say this combination of, product a and product B that maybe we think that we’re, unique about. But, we don’t know that, I mean, we, you never know in this big old world, somebody else may have, came out of the store with the, a Hershey bar and ran into the guy with the peanut butter.

Now, they’ve got the Reese’s peanut butter cup, but, so is that a function that the, I guess the founder and the person that thinks that they have the intellectual property, is that something that they need to do? Is that an investigation that would be part of the work that you do? Or how w how does that work?


Okay. That’s a really complicated question to answer actually, because there are a lot of implications about it. Say like about that, let’s start with the name. Okay. Yeah. With your name. That’s something that, it’s finding for a trademark registration is not that expensive, but still, usually if you were to go and talk with a trademark attorney about it, then the first thing that they’re going to tell you is have you done a search, like, have you done a Google search on that name?

There are very specific, databases that you can look at the us patent and trademark office has a trademark search database, which is really easy to use, at least do some of your own due diligence that way you don’t want to spend a lot of money. I think even if, so, a trademark filing, depending on your, the attorney that you choose will likely cost you somewhere between five, $500 and a thousand dollars for that initial filing.


Overall the, in order for you to actually get the registered trademark, it’ll probably cost, two or $3,000. If you don’t want to spend that money on a name that someone else might have used, just do a Google search, do a domain search, because now looking a web domains can give you an idea of who’s thinking about those ideas, whether that, of those names, regardless of whether they’ve actually started a business on it.

You can do that, their trademark, the registered trademark search, just a plain old Google search, or like you did with your were looking on iTunes. If you have a very specific, database or something that can be used as a database for your industry use that. That’s something quick and easy for patents, for things that you’re considering filing for patent protection, that gets more complicated because of a legal statute called duty of disclosure.


It means that, if you are, if you wanted to file for a patent application on an innovation that you came up with, but you knew that someone else has a very similar idea, yours is different, but that other person has a very similar idea. You’re still gonna fire your patent application. The patent office says that if of this other person’s, product, then you have the duty that you have the duty of disclosure to cite that person’s product to bring that person’s product to the patent office is attention.

Whether it’s, you know, sending in a copy of their product brochure, even if you have, even if you know that your product is different, if you don’t cite that other person’s product, then even if you were to get a patent on your idea, eventually it can be invalidated because you then insight that other person’s product.


So it gets complicated. If you are thinking of filing for patent protection, then before you go and do a bunch of searches, or like, do a bunch of research, then I will talk with an IP professional first, just so that you don’t get into that potential trap.


No. Okay. In our worlds become, the world has become smaller, but it’s also become a very big place for businesses. So, in my corner of the world, maybe it’s a great idea and nobody’s ever thought about it, but, across the world, they may have been using it or been doing it. What are the, I guess, what are the borders? Is this like, in the us type of thing, is it a global thing? Or how does, how do you translate that?


Okay, so there are two different questions here, actually. The first part is whether or not you’ll be able to get patent protection for your product. Patents are that it’s split by jurisdiction. A us patent can only be enforced in the United States. If you’re, if you know that you have a competitor in Europe, then that you’re going to want to go after eventually, then you should also file in Europe.

Now, the flip side is if you’re pro, if you’re say your competitor is in Europe and they have a product out there and they want to bring their product into the United States, but you already have a patent in the United States, then they won’t be able to compete against your product in the us. So those are different things. What I was talking about earlier, as far as the searches and being aware of other people that are doing similar things, that’s worldwide.


If it’s a publication, if it’s a publicly known, product, then it could be anywhere. So, so in that sense with the search that you would want to do, for patents you would want, no. You, you would want to know whether, somebody in a foreign country or we’re using, w w had created a similar product before. Now that having, going back through the whole, the jurisdiction thing, though, for trademarks, it can be an advantage because if you are, if, so you might know somebody using a name and say standing somewhere in Scandinavia.

Say in Sweden, there is a, there’s a website that’s using a similar name to what you want to use it. Maybe they have a registered in soybean, but it’s a Swedish company. They have no intention of doing business in the United States. So they never registered in the us. You might still be able to get that name in the United States.


Okay. Okay. Yeah. The other thing I was kind of thinking about too, is excuse me, that, for a guy just operating a business out of his garage, or, something simple, this may be a very complex procedure that turns people off, but I think we have to keep in mind as well, that if, as we grow and as we want to seek outside investors, I think that’s probably going to be one of the first questions they’re going to ask is your product per if we’re selling it based because it’s a unique product, is this product protected in some way?


Yeah, absolutely. Yeah. What are the questions that you’re definitely, and investor will ask you as well? So this might not sound like an IP question, but it actually is. The question that you will likely get is what is your competitive advantage and how can you, and how are you protecting it? So if you are a product company and you don’t have some kind of IP protection around your product, and there is nothing preventing someone else from outright copying your product, then that’s a problem for the investor.

The investor is not going to want to give you money because someone else didn’t come in, we’d come in, copy it, copy your product. And it’s a similar thing. I, I’ve heard more, in talking with, investors and some of the people that do due diligence for investments. Due diligence essentially just means, how legit is your business that we are, that we want to give money to, and that covers intellectual property.


If one of the things that they have is one of the problems that they find is that, well, maybe you haven’t filed for a trademark on your company name and you, or even worse, you had tried to file for a trademark registration, but you got rejected because someone else already had a registered trademark on it. You continued to use that name anyway, just because, all your marketing materials are already printed and like you’ve got your website and all of that. Maybe that comes up during your investor due diligence. That’s a problem. You don’t want to run into that.


Okay. Yeah. Cause I I’d see similar names across states and I guess that maybe somebody just didn’t go, file for that name. They may be if their business is, contained in a state or a local area and you’re off in another area, I guess that they just kind of let that go. Cause it’s really not worth either one of them trying to make a fuss because they’re not infringing upon each other.

The one thing too though, is the, I think why you need to do this also is the protection for the exit strategy because you’ve built up this business, spent a lot, a lifetime doing it. You think that you have a unique, competitive advantage, maybe a product or, you know, and I’ll let you know, you can pick which one that you want to talk about, but, you know, when it comes down to the end, we want to sell the business and somebody takes a look at what you’ve got.


If you’re not protected, I guess they could walk away and copy it and just kind of leave you in the cold.


Yeah. And that happens. And, for example, I have a, I was just talking with a friend the other day. He has a company that he’s built a pretty, it’s small, but very locally respected brand. Now he’s starting to talk with some national people, national corporations that are looking to either acquire his company or to help him franchise his business outside of my little local jurisdiction. One of the issues that he’s finding is that when he does start looking national, then they really, they have a lot higher expectations on how they can protect the brand.

Then, other people can just come in and just like you said to copy, right. Yes, if you want, if you have aspirations of growing your business to beyond just your local jurisdiction. Yeah. That’s something that you definitely want to think about. One of the things that I do tell people is that, with an IP strategy that, an IP strategy should be complimentary to your business strategy so that, maybe part of your IP strategy is that, what, I’m a software company, software patents have a really hard time in the courts and I’m repping my product all the time anyway.


Patents take, three to five years and tens of thousands of dollars. Yeah. I don’t want to do that, I just want to protect my product. I want to sell my product or sell my software partner. Maybe it’s in the app. I want to sell my app on the apple store and then maybe pivot and do something else six months later, maybe that product’s not going to work out, but I have all of these ideas that I want to move forward with my company.

My IP strategy is that I will not file for patent production. I’m just going to be sure to turn out these products that are going to sell really quick, you might die really quick, but I’ve already got the idea for the next thing. That’s how I’m going to run my business in my IP strategy is to keep that idea flowing, not necessarily to stop and try to protect every single step on my way to big success.


So that’s a perfectly valid IP strategy. Yeah. It’s just that you need to be able to articulate that you need to have thought about it. Even with investors, no going to go back to your question about investor questions. When an investor asks you, Nope, what is your IP strategy? Do you have an IP strategy? The, one of the things that they’re looking for is just that you have put thought into it.

Like when you put your w when you’re putting chose your product name and you chose your company name and your chose, your product features, you did think about it. You did think about how you’re going to protect those, what you consider are your product, competitive advantage, having thought about it and to be able to articulate it, that’s really what your investor is looking for. Not, how many patents patent applications apply all day that how much money you’ve spent on it.


That’s, so that’s how you can talk about your IP, tie it all to your exit strategy and to think about. In order for me to get from where I am now, to where I’m getting acquired by the big guys, what do I need to build with my product? So, no, obviously there needs to be a product development plan. There an IP strategy that goes along with the product development plan to be able to protect your cons, your idea every step of the way, or simply to move faster than your competition? Yeah. These are all things that you can think about as you have your exit in mind.


Yeah. That’s a good reason to seek out professionals such as yourself, because well, that time horizon that it takes, but also, there’s a difference in something that’s a fad product that’s going to burn itself off within, probably before you could even get to the filing office with it versus something that’s very capital intense that may take years and years of development and a lot of money that would be definitely some things that you would want to consider, but again, seeking out professionals like yourself.

So, one other question I had while you’re talking about that was the expiration, like we always hear with drugs that, their patents burn off after a certain period of time. I guess that’s when the, can you think of the name of it, but that’s when the, yeah. That’s when the generics come in. What about, what about hardware software? The, do those patents burn off eventually as well?


Yep. Patents all expired 20 years from filing. You have a very, you have a limited monopoly. That’s where you do have to keep in mind that once you file a patent application, it’s going to take you, it’s going to take at least three to five years for you to get an issued patent, assuming everything goes well. Okay. If your business, like the app business that I was talking about earlier, if you’re a business as an app business and your product isn’t going to be around in three to five years, you’re going to be doing something else.

Right. And don’t bother with mountains. Yeah. If you are known for some of these complex electronics companies, if your product development cycle is on the order of years, and it’s going to take your competitors years to ramp up their product development in order to catch up to you, then maybe filing for patents is going to be worthwhile for your endeavor.


Yeah. Because that’s generally when you’re going to need, maybe a, a larger boost of money is when you finally bring your product, you get it developed, bring it to market. That is really not the time that you want to find out. Somebody has beat you to the patent office. What is the procedure? I’m going to go out later on and try to cook something up in my garage. And, I’m going to call you up and say, okay, I’m ready to, seek a patent or a trademark on this. How does that, after you received the phone call from someone, what does that process look like going forward?


Sure. I have a bit of a unique, approach, so to contrast, and if you were to go to tell exactly what you said to a patent attorney, then at a law firm, then they’re usually going to say, sure, I can get you a patent on that. And then what they’ll take down. So they’ll listen to your ideas. Don’t ask you a bunch of questions about your ideas, how it’s different from any other solution that’s out there.

They’re right. A down, they put together, they’ll put together a and application, and then they’ll go away for a couple of years waiting for the USPTA to respond to you. I do, I like to do things more differently, because partly because of my MBA, I think about patents in terms of business value. So it’s an investment. You want to get a return on investment on things like Penton costs.


If you were to think about it in terms of what is having a patent or a registered pattern or a registered trademark or anything else for that matter, how is this IP going to help your company? So is this, how is this going to help you distinguish yourselves over the competition? Is this is having IP protection around your product know, is that going to help you raise, raising, increase the valuation of your company and help you raise money? is maybe, putting together a trade secret policy, is that going to help you even more.

So it might cost less to do that, but there are implications of things, what you have to do. Where is the best place for you to spend your business money in order for the IP to work for you? That’s, that’s what I would ask you. I may, so I asked a lot of business questions, and then after that, if we determined that, for example, if you are in a, an industry where a lot of people Sue each other over IP, like for example, if you are in, yeah, for example, I have a friend that’s an accident that used to do a lot with action figures.


One of his big things, other than trying to get the best manufacturing deals in China was to get the best licensing deals from Marvel or Disney or whatever. There for him, IP was really important for him because he needed to make sure that the products that he is creating is sufficiently well-protected. So that these are my action figures. Aren’t that hard to copy. Right? Right. You want to make sure that your brand and your products are protected now.

That w if something were to happen, if this Disney won’t come after him yeah. You know, those sorts of things. It, it comes out in kind of unexpected ways. They’re in his business, it was really important for him to have very strong IP policies, licensing deals, that kind of things. Okay. In those cases, it, or if it’s a really innovative product then, and you want to get, eventually get acquired by apple, then you would want to have good patent protection around your innovation.


Okay. Then, so then what I’ll do is I’ll do a similar thing as a patent attorney, I’ll ask you lots of questions about your innovation, and then we’ll, we will put together a patent application that at a price point, especially that w that’s that will bring you value in the long run. That’s what I would, try to do for you. After you get the filing, and like I said, the patent office has a backlog.

You don’t take, you it’ll likely take at least two years for you to hear back from them, unfortunately. You ha you start the negotiation with an examiner at the patent office, whether you file in the us or you’ll file anywhere else, there’s an examiner. That’s going to look at your patent application, look for other, what we call prior art, which is essentially other people’s publications that describe innovative inventions that are similar to yours.


You’ll start that negotiations with the examiner, who is going to come back here and say, I don’t think you should get a patent on this, on your idea because this other person has a similar idea, how is yours different? So then you go, you argue back and forth. If you are able to convince the examiner that, yes, my idea actually is unique. It’s not, it’s very different from that other guys for these reasons. If you can convince the examiner that then you’re get an issue.


This may be out of your wheelhouse, but I’m sure that you deal with it. If you’re a big manufacturer and you come up with a new product and it’s all in-house, or if you’re a software developer, you can keep a pretty tight leash on that.

Maybe it’s you on your computer, or maybe two or three other people, but let’s just take, the guy, I guess, the success story of he’s out in his garage, tinker and around comes up with something, but he’s got to take it to a manufacturer, so, okay. We’ve got two or three years before we could even see protection on this thing. How do you protect yourself in order to get prototypes made, or even start the process when you can’t protect it?


Sure. Two words, strong contracts. That’s where you start throwing the legal language around it. There, yes, it’s, there are lots of people that don’t necessarily respect things like non-disclosure agreements or, consulting agreements, or meant, or, IP agreements within, like per even purchase agreements. There, there are contracts, there are ways that you can tighten those things up in contract. Like for your software example, one of the things that a lot of people do is to hire out, hire other developers, to actually bring your product to fruition.

What are the things that you definitely want to do is to have an IP clause in whatever contract that you use to hire the developer, to make sure that he or she has explicitly assigned any rights to what they write over to your company so that your company outright owns that.

Make sure that it is in writing and make sure that it’s like, okay, anytime you use a consultant for anything like, whether it’s generating your new logo or, even anything creative like that, make sure that there is language in the contract that you use to hire them. That the rights are assigned to you, and that you act you explicitly own anything that is created to make sure that’s strong contracts.


All right. Great. Well, well, Rico, I certainly appreciate you taking time to be with us today. Before we get away a couple of questions, first is, what is a, a habit or a tool or app, or what is something that you use in your daily life could be professional, personal that you feel like adds a lot of value.


Okay. In my world, because I, I do client work time-tracking is like the bane of my existence. And, one thing can, I can actually name a product. Okay. I use this thing called time Mueller. It is a it’s this cube thing. It’s a, it’s a term. What it has is it has marks that you can use. That, for example, this one says, biz ops, this one says marketing, this one says client non-billable. It says client hourly, those sorts of things.

All I have to do is, so this just reminds me by just having this here, it reminds me, so, okay. Now I’m going to go from, I’m not even talking to Roy, so I’ll call this marketing. So that’s what I’m doing. I’ll put that marketing side up on top, automatically starts tracking something like my time alert just started. My app just started tracking.


When I say, okay, now I’m done talking with talking to Roy and I’m going to do client work. I switched to client hourly, and then I’ll hit all them. Magically starts tracking. Interesting. This has been the best thing ever.


And it’s called Tom Mueller.


Yes. Okay. So kind of U L a R. Okay. Awesome. There are some, there are tiny little, I think they’re in Austria, tiny little startup app. There’s an app that goes with it. It’s great. Having that physical thing has been great for me. That’s been a, that’s been a time changer or a game changer.


So you learn something every day. That’s, that’s why I asked that question. Cause man, I tell you what I have had some great ideas, but that’s a good one. I’m gonna check that out because that’s always, it’s always a problem, especially if you have multiple clients, because you just get so focused on what you’re doing, that, making that change to do something else. It just escapes me a lot of times. So. Awesome. Well, appreciate that. Well, so if you don’t also tell us, who’s your client, what you can do for them. Of course, how can they reach out and get ahold of you?


Of course, the, my specialty. Like you said, at the beginnings of my background is in electrical engineering. So I’m a hardware girl. I like hands-on product things. Lbs work really well to protect hardware innovations. Most of my clients are in the hardware space. It’s like I said earlier, in software products are really hard to protect with them. Yeah. I, I don’t work with a lot of software clients. I like hardware clients that have really interesting innovations that can be very complicated.

Like, I’ve got a couple of clients that work in quantum computing. It’s dealing with cubits, like who knew about cubits, those kinds of things. I like those sorts of cutting edge hardware innovations. Those are the kinds of clients that I think get the most value of working with me. The easiest way to get ahold of me is through my website it’s


Okay, awesome. Well, thanks again for being with us, we appreciate it. A lot of great information for us to think about. So, this is going to be it for another episode of the business of business podcast. Of course, you can find us at We’re on all the major social media and a, the video version of this will come out on YouTube once this episode is released. Until next time, take care of yourself and take care of your business.

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