Fridays 12:00pm - 1:00pm (EDT)
WHAT WILL THE AUDIENCE LEARN?
Innovation and invention are often the driving force behind entrepreneurship, but obtaining exclusive rights in that creation under a patent is often considered too late or too expensive. Listeners will learn how to navigate the U.S. (and global) patent process in a manner aligned with their business plan and budget.
Innovation and invention are often the driving force behind entrepreneurship, but obtaining exclusive rights in that creation under a patent is often considered too late or too expensive. My guest, Chintan Desai, and I as registered patent attorneys will discuss the U.S. (and global) patent process and ways that entrepreneurs can and should make patenting part of their business plan and budget.
Matthew discusses patents with Chintan Desai. They discuss patents for entrepreneurs. They have worked together in the NYC area. Chintan talks about his experience getting into law and how he entered the field of law. They discuss what makes something “patentable.”
The two discuss innovations in all facets of business and when to know when something is patentable. The entrepreneur will need to ask themselves many questions when they are considering what they produce is patentable. They discuss the inherent value in being able to have a patent pending or by obtaining a patent. Chintan discusses when and why an entrepreneur should consider getting a patent. He also discusses how entrepreneurs can afford a patent and how they can prolong getting a patent. The entrepreneur must be able to figure out what means the most to their business.
Chintan discusses the costs of getting a patent. There are many different kinds of fees that an entrepreneur will have to deal with. There are ways to get the fees discounted if a business is not making a certain amount of money. Some of the charges can be very expensive while others aren’t. They discuss the difference between provisional and non provisional patents. Chintan discusses the costs of getting and filing for a patent and the difference in cost between provisional and non provisional patents.
They start the segment by discussing why it is important to file patents in different countries and why an entrepreneur may want to file a patent in a different country. An entrepreneur should think about this early on in the development of their business. Matthew compares picking which countries to get a patent in to picking a major in college. The business should drive the IP. Chintan gives his final message to entrepreneurs in obtaining a patent.
00:00:26.510 --> 00:00:32.109 Matthew D. Asbell, Esq: Hi there and welcome to intangify where we discuss the intangible aspects of business.
00:00:32.590 --> 00:00:58.649 Matthew D. Asbell, Esq: Today we're I'm I'm Matthew as well. And your host. And today we're going to talk about something pretty close to home for me, as some of you know, I'm an intellectual property attorney, and we're going to talk a little bit about patents, but patents particularly for entrepreneurs. And my guest today is chimpanzees. I and I work together at off at Kerman, the law firm. what? We're in the New York City office of a general practice law firm
00:00:58.860 --> 00:01:14.190 Matthew D. Asbell, Esq: and regularly work on on patent matters. We're having these discussions all the time with our clients. But we thought it would be useful to share the kind of information that entrepreneurs want to know about patents.
00:01:14.430 --> 00:01:17.250 Matthew D. Asbell, Esq: you know, over the podcast so chin and welcome.
00:01:18.360 --> 00:01:20.039 Chintan Desai, Esq.: Thank you for that. Me on Matthew.
00:01:20.640 --> 00:01:26.989 Matthew D. Asbell, Esq: glad to have you here. So I think you maybe to to start off. Maybe you could give a little introduction about yourself.
00:01:27.010 --> 00:01:30.350 Matthew D. Asbell, Esq: tell us a little about your your background than your experience.
00:01:30.710 --> 00:01:36.559 Chintan Desai, Esq.: Sure. Sure, so I'd be remiss to say if I've always wanted to be an IP lawyer from the very beginning.
00:01:36.590 --> 00:01:42.240 Chintan Desai, Esq.: But I kind of, you know, gravitated into it. I started off free. Met
00:01:42.330 --> 00:01:51.570 Chintan Desai, Esq.: it was bioengineering undergrad. and then I enjoy the engineering aspect. But I hit organic chemistry, and I said, All right, I'm okay.
00:01:51.720 --> 00:01:57.020 Chintan Desai, Esq.: So then I just continued forward, took a bunch of legal studies courses as electives.
00:01:57.240 --> 00:02:00.220 Chintan Desai, Esq.: and just really gravitated towards the law. And then.
00:02:00.670 --> 00:02:06.709 Chintan Desai, Esq.: you know, normally, you'd think this is where you go to law school, and then, you know, continue. No, no.
00:02:06.770 --> 00:02:16.409 Chintan Desai, Esq.: I actually then worked on an Ej. Grant, which is an environmental justice, Grant, basically, I think, Aaron Brockovich, but the clinical side of it. you know, there was a
00:02:16.500 --> 00:02:27.539 Chintan Desai, Esq.: chemical being released in the ground water not going to name specific names or companies, but you can infer And you know there was a study, and I came on at the right time. And so
00:02:27.630 --> 00:02:48.670 Chintan Desai, Esq.: I essentially right. After graduation, I continued, started as a work study job and became a clinical research study coordinator job. So I was at the University School of Medicine at the University of Pennsylvania, just doing that, following it through. And essentially, it ended up being, you know, published in like 4 medical journals talking about the importance of community stakeholders and
00:02:48.670 --> 00:02:59.689 Chintan Desai, Esq.: bring people to table. And again, this all leads right back into. I should go to med school. But that being said after you know, I had gone through that process, and I think it was helpful, because
00:02:59.770 --> 00:03:04.269 Chintan Desai, Esq.: I think post undergrad, you know, always think like all right, this is what you should do.
00:03:04.310 --> 00:03:24.050 Chintan Desai, Esq.: and this is what should be like. But I think it's important to be able to explore and get an idea of what you really want to do, and I think you can't really subscribe to that experience. So at least that's what I'm telling myself so then eventually I you know, after the the grant when dry, and I was like, well, you know what? Now? Back to what I kind of enjoy doing.
00:03:24.110 --> 00:03:29.519 Chintan Desai, Esq.: And so I then said, All right, I'm going to take the outset. Went to law school.
00:03:29.570 --> 00:03:44.380 Chintan Desai, Esq.: and lo and behold, I actually started taking some environmental law classes even then, and it kind of came full circle, because at times I was working with people that I worked with on the public policy side, but now they were on the other side of the table. as an attorney.
00:03:44.400 --> 00:03:51.859 Chintan Desai, Esq.: so that, all being said. I then, you know, kind of gravitated again towards some of the IP cl courses.
00:03:51.940 --> 00:03:55.029 Chintan Desai, Esq.: and it kind of just resonated with me. And so
00:03:55.650 --> 00:04:19.209 Chintan Desai, Esq.: post law school I started at a boutique firm, and one of the things I really enjoyed is I was able to get immersed into all aspects of intellectual property law. So that's patent, copyright, trademark, trade, secret and all related litigation enforcement. everything, you know, basically from you know the prosecution side procurement side. And then all the way through the process.
00:04:19.459 --> 00:04:33.809 Chintan Desai, Esq.: And I think that was a rare experience as a young associate, because we're in a smaller firm. but that's one of the things I really enjoyed. So I got to. Really, you know, get experience in a lot of different things from people that had been at previous big firms. So
00:04:34.120 --> 00:04:39.310 Chintan Desai, Esq.: fast forward. I was in this previous firm about 5 and a half, 6 years almost.
00:04:39.400 --> 00:04:48.479 Chintan Desai, Esq.: and then I came to off the current, and I was blessed to be able to do the same kind of thing. So bigger, firm lot more voted cross-sell.
00:04:48.690 --> 00:05:00.290 Chintan Desai, Esq.: but working closely with a you know, smaller number of people where I could focus on different aspects of patents, trademarks, copyright, and I think one of the most valuable things. With that is.
00:05:00.530 --> 00:05:06.259 Chintan Desai, Esq.: I was able to see the entire process through, because I think it's very important, especially when you're working with the clients
00:05:06.290 --> 00:05:18.770 Chintan Desai, Esq.: to have that ability to guide them through, because you're not just saying, Oh, do this, you're actually, you know, advising them, because at the end of the day, you know, the IP has to meet the business needs as well, and they have to work together.
00:05:19.730 --> 00:05:37.469 Matthew D. Asbell, Esq: I can relate to a lot of a lot of what you're saying, of course, is as someone who sort of screwed through life prior to law school myself, but I guess that that lends itself well to intellectual property law, where you have all different kinds of creative aspects of of things that you're trying to protect.
00:05:37.470 --> 00:06:00.039 Matthew D. Asbell, Esq: so so definitely can relate to that. But but but I do want to bring this full circle back to entrepreneurs and you know, and I know in the context of your work it off at Kerman. You know you do a lot of patent work on behalf of usually funded entrepreneurs. But sometimes, really, you know, just people just starting out or completely out of pocket
00:06:00.200 --> 00:06:08.619 Matthew D. Asbell, Esq: and you know. And and I think, since the majority of people listening to this program really are in that ilk.
00:06:08.670 --> 00:06:24.359 Matthew D. Asbell, Esq: you know, I would like to really chat with you about some of the aspects of that patents, and whether that's something they even should care about. So maybe to start off in in in that subject, maybe as a first prompt for you, you know.
00:06:24.970 --> 00:06:29.370 Matthew D. Asbell, Esq: Oh, how do I even know if I have something that you know
00:06:29.450 --> 00:06:31.339 Matthew D. Asbell, Esq: what is pat the ball.
00:06:32.200 --> 00:06:40.450 Chintan Desai, Esq.: Right? So it, you know, it is an open end to question. But I think one of the things to always remember is
00:06:40.830 --> 00:06:43.050 Chintan Desai, Esq.: Sometimes things out there
00:06:43.260 --> 00:06:49.900 Chintan Desai, Esq.: that you visually see may already have been, let's say, disclosed, but not recently monetized. Right?
00:06:50.060 --> 00:07:00.759 Chintan Desai, Esq.: But I think the only way to really do that is to kind of immerse yourself in it. And you know, we typically at the outset. you know, recommend doing essentially a patent ability search. Now.
00:07:00.860 --> 00:07:08.149 Chintan Desai, Esq.: what that does is, helps you identify what the landscape is, what's out there, right? Because at the end of the day.
00:07:08.160 --> 00:07:10.930 Chintan Desai, Esq.: when you want to think about what's patentable, right?
00:07:10.960 --> 00:07:18.880 Chintan Desai, Esq.: It just can't be, let's say in a you know, a mathematical formula, or something that's just done a little faster.
00:07:18.950 --> 00:07:35.349 Chintan Desai, Esq.: or you know, a law of nature right? It's got to be something that is we call new and novel and not obvious. Right? So novel is, it's new, not not necessarily released to the public, but not obvious. So, for example, if you see something out there, you know.
00:07:35.360 --> 00:07:48.030 Chintan Desai, Esq.: it's got to be something significantly more than you know just what you see, or to the lay person to the late person. I say, someone skills in the art. They look at that. What your invention is is that different from what's out there, and I think
00:07:48.480 --> 00:07:50.579 Matthew D. Asbell, Esq: let me interrupt you there, because again.
00:07:50.660 --> 00:07:53.029 Matthew D. Asbell, Esq: cause I I mean, I think.
00:07:53.510 --> 00:08:12.560 Matthew D. Asbell, Esq: when when you have a client who comes to you who is an entrepreneur in there, and they're They're thinking they want to get a patent. They'll come to you, and they'll talk to you about that, and this is part of the conversation you have, but I'm thinking before then I'm thinking what's going to prompt them to come to you. In the first place, the ones are going to come to you. In the first place.
00:08:12.560 --> 00:08:29.709 Matthew D. Asbell, Esq: they're thinking you know, they they need some sort of prompt or queue if they're not break. It used to the process of of of creating innovations and inventions that are patentable. They need something to trigger them. That hmm! Maybe this is something that I should consider getting a patent off.
00:08:29.800 --> 00:08:36.860 Matthew D. Asbell, Esq: And so I want to get it. That how do they get there? Yes, of course, once they come to you, you're going to tell them you should do a search.
00:08:37.380 --> 00:08:39.980 Matthew D. Asbell, Esq: What should be the prompt of
00:08:41.090 --> 00:08:47.479 Matthew D. Asbell, Esq: do I think this could be something that would be patentable innovation that I could own.
00:08:47.730 --> 00:08:50.950 Matthew D. Asbell, Esq: you know, that so much so that I should talk to an attorney.
00:08:51.070 --> 00:08:52.280 Matthew D. Asbell, Esq: What's the prompt?
00:08:52.440 --> 00:09:08.239 Chintan Desai, Esq.: So I think it's really it's kind of intertwined with what you know you normally do in a business right? You're feeling a need, something that's not out there, right. So whether it be a product or service that your business is involved in, you're gonna try to find your niche or you're gonna find your specific carve out right?
00:09:08.240 --> 00:09:34.310 Chintan Desai, Esq.: And part of that on the business side is identifying what's not out there, right? Or if something's out there, I know I can do it better. And that's why my product or my service. That's why you're gonna come to my company or my business to do that. And I think it's important to you know. See that difference, and then take that to the next level. Right? So just like in business. If you see you know a gap in the market, or something that you think that all right. My services are my product.
00:09:34.380 --> 00:09:39.010 Chintan Desai, Esq.: This will solve a problem there. I think the moment you have that light bulb on the business side.
00:09:39.510 --> 00:09:49.649 Chintan Desai, Esq.: That is also when you should be thinking about the patent side, and even other related. You know, IP, but that should be your at least initial trigger, because the end of the day
00:09:49.680 --> 00:09:57.060 Chintan Desai, Esq.: is this different from what you've seen and what are you trying to solve? Right. And if you believe others aren't solving this and you, this product doesn't.
00:09:57.330 --> 00:10:03.549 Chintan Desai, Esq.: That is, when that conversation should definitely start. You should think about all right. I'm the only one that does it.
00:10:03.600 --> 00:10:10.139 Chintan Desai, Esq.: Now I want to do it, but I also want to make sure that others don't copy me, and that's where you know, the 2 things really Co, less.
00:10:10.550 --> 00:10:12.939 Matthew D. Asbell, Esq: So what I'm hearing from you is.
00:10:12.980 --> 00:10:16.390 Matthew D. Asbell, Esq: it is whenever someone innovates.
00:10:16.480 --> 00:10:18.650 Matthew D. Asbell, Esq: No, that doesn't necessarily mean that
00:10:18.960 --> 00:10:25.750 Matthew D. Asbell, Esq: they've got something that they could get a patent on, or that they should. But that's the prompt. They've innovated, and
00:10:25.820 --> 00:10:37.259 Matthew D. Asbell, Esq: they think their innovation is in advance over what was what they know exists. So now they want to explore that, and they and they see the value of having having exclusivity in that one way or the other.
00:10:37.500 --> 00:10:39.220 Matthew D. Asbell, Esq: so
00:10:39.330 --> 00:10:49.810 Matthew D. Asbell, Esq: how revolutionary does it need to be? This? You know how much of an advance you know. Do I need to have to to to decide that to you. Maybe it's something worth, haven't it?
00:10:50.400 --> 00:10:58.890 Chintan Desai, Esq.: So I think it really does depend on the technology. But there's no one rubric that says, Okay, this is, you know, different enough. Right?
00:10:58.960 --> 00:11:04.869 Chintan Desai, Esq.: I think it is really a sliding scale. Right? So you know, if you take, let's say, for example, software.
00:11:05.310 --> 00:11:17.629 Chintan Desai, Esq.: It's murky. What is different? How different is it, you know? And I think it's something where it's the difference in, you know, part of that processes. How different is it right, or how?
00:11:17.940 --> 00:11:37.579 Chintan Desai, Esq.: How? Why, why don't other products solve this right? And the more reasons you have where other products don't do this or not only does my product do you know this better? You know, let's say, reason one, but also reason 2, and reason 3. So now, when you start thinking about that. You know. Those are your queues to say, all right.
00:11:37.840 --> 00:11:48.520 Chintan Desai, Esq.: Maybe it doesn't have to be revolution. It could be any simple on a day to day item, or it could be a service that necessarily hasn't been thought about But more often than not you'll find that
00:11:48.650 --> 00:11:56.179 Chintan Desai, Esq.: a lot of patents build on, you know, existing technology, right? Because, as you see, innovation, as you see, business growing.
00:11:56.510 --> 00:12:06.819 Chintan Desai, Esq.: people think all right. These are different needs that I want to solve, and I think more often than not they build on those core ideas. So you want to start. Just you know, there's no
00:12:07.240 --> 00:12:14.919 Chintan Desai, Esq.: I say barometer for revolutionary. It's just, you know, filling that gap in that need, and it will vary based on the industry.
00:12:15.460 --> 00:12:18.449 Matthew D. Asbell, Esq: So it it doesn't need to be revolutionary.
00:12:18.630 --> 00:12:35.040 Matthew D. Asbell, Esq: but it needs to be in advance. And you refer to this, you said, it depends on the industry and the one of the industries you refer to specifically. Well, I just almost knocked over my computer there. one of the you purchased specifically is is software. But
00:12:35.100 --> 00:12:47.489 Matthew D. Asbell, Esq: you know, software and patenting and software is not just about the the the advance. Right? Okay? Fine. I I I've innovated with some new software. I mean, a lot of people are invading with software.
00:12:47.610 --> 00:12:54.200 Matthew D. Asbell, Esq: from a patent perspective, it's got to be more than that, at least today. Right?
00:12:55.500 --> 00:13:00.559 Chintan Desai, Esq.: Yes. So you know, first software patents right in general.
00:13:00.650 --> 00:13:10.610 Chintan Desai, Esq.: you know it varies on how they're treated. So you know, there is no harmony on how software pat patents or I had applications are treated, whether they're how they're examined.
00:13:10.710 --> 00:13:17.560 Chintan Desai, Esq.: And you know, the real, the main crux of it is, you know, when you look at a software and as to improve computer functionality.
00:13:17.760 --> 00:13:37.609 Chintan Desai, Esq.: and it has to do it. as solve computing challenge in unconventional way. And that's basically laying and speak, for it has to do more than just obvious. So can't just, you know, make computations faster, right? And so part of that is not only identifying. Does it do more than what's known or unconventional out there? Or does it just make something faster.
00:13:37.670 --> 00:13:38.840 Chintan Desai, Esq.: but also
00:13:38.940 --> 00:13:51.550 Chintan Desai, Esq.: the Underc. Of how it works right? And when you write an application, and we'll probably get more into this, you'll see that how you write an application will also be important when you look at software patent applications.
00:13:52.870 --> 00:14:08.219 Matthew D. Asbell, Esq: That's great. Thanks so much. We're going to go to break. When we come back we'll talk, maybe about some other forms of of patents and and maybe the patent application process you've been listening to intensify on talk radio, dot. Nyc, I'm your host, Matthew as well. We're going to break. See you back short.
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00:16:21.800 --> 00:16:41.439 Matthew D. Asbell, Esq: Welcome back to in tang. If I on talk radio dot Nyc. I'm your host, Matthew as well. My guest is chin to the side, and we're talking about patents for entrepreneurs. We were talking a bit before the break about how a business knows if they have something that is patentable even to prompt them to go to an attorney.
00:16:41.440 --> 00:16:54.329 Matthew D. Asbell, Esq: and we were recognizing that in different technologies, different different industries. you know what is and what is not patentable might vary. We use the example of software which is something that's been
00:16:54.400 --> 00:17:01.050 Matthew D. Asbell, Esq: a little bit out of favor in recent years, but something that is, it is still often patentable.
00:17:01.430 --> 00:17:25.809 Matthew D. Asbell, Esq: the The other ones. I wanted to talk to you about some examples you know, or maybe things like, Well, okay, I came up with a new way of doing business or or a new way in which I interact with a device like this swipe on an iphone when that came out or even even a new appearance of something that already exists. So
00:17:26.470 --> 00:17:40.940 Matthew D. Asbell, Esq: I mean, there's all different kinds of innovations, right? Innovation in the form of something that improves function is one. But how do you deal with a new method of business, a new way of interacting with a device or a new
00:17:40.970 --> 00:17:43.149 Matthew D. Asbell, Esq: appearance of something that is known.
00:17:44.250 --> 00:18:04.380 Chintan Desai, Esq.: So I I think it's really a multi-pronged approach, because you'll often see things where, you know we'll go back to how things, you know. Does it improve upon what's you know currently there. And part of that is really how much, how many technical solutions it solves right? And then you also mentioned like, let's say the look right. The design
00:18:04.910 --> 00:18:11.689 Chintan Desai, Esq.: you may want to protect, you know, the aesthetic side of it, and that's really just the way it looks, and more often than not
00:18:11.700 --> 00:18:14.079 Chintan Desai, Esq.: you'll often have certain products where
00:18:14.100 --> 00:18:25.779 Chintan Desai, Esq.: there'll be different aspects that are, you know, let's say, protecting the design side because it is, you know you you're looking. You're talking about the ornamentality, and that's really just how something looks right.
00:18:25.880 --> 00:18:31.309 Chintan Desai, Esq.: And then you say the function? you know, some something may work in a different way
00:18:31.320 --> 00:18:35.109 Chintan Desai, Esq.: or build upon. You know something out there, and I think
00:18:35.430 --> 00:18:41.170 Chintan Desai, Esq.: how to identify which one is right for you is really a question of, you know.
00:18:41.560 --> 00:19:04.750 Chintan Desai, Esq.: a, is that function going to be building upon what's out there, you know? Does it provide that, you know? Does it solve those technical problems. Or, you know, in in unconventional ways, and even just, you know, build something that isn't out there. But then, also recognizing that sometimes it's not just necessarily function, but design. And I think you know, it's important to oftentimes discuss both
00:19:05.040 --> 00:19:07.419 Chintan Desai, Esq.: and honestly apply for both the times.
00:19:08.280 --> 00:19:24.450 Matthew D. Asbell, Esq: Yeah, I I mean, I think all too often people take this very surgical approach to how they want to the protections that they want. They think they need to protect this concept, this this functionality, or they excuse me about the sneeze.
00:19:25.210 --> 00:19:33.330 Matthew D. Asbell, Esq: The the allergy is about to hit me. It's it's it's burning the nose right or they won't protect this functionality, or they want to protect appearance. But sometimes it's both
00:19:34.390 --> 00:19:37.689 Matthew D. Asbell, Esq: all right. There shows I'm safe.
00:19:37.820 --> 00:19:50.059 Matthew D. Asbell, Esq: yeah. And sometimes it's both or different aspects that need to be protected, and having a portfolio gives you a toolkit to, to, to enforce right and to protect yourself and protect your. You know what it is you're ultimately doing in the marketplace.
00:19:50.270 --> 00:19:56.729 Chintan Desai, Esq.: So that makes a lot of sense. Yeah, it just. I was, gonna say, just to add to that. So I think there's also from the business side.
00:19:56.840 --> 00:20:08.239 Chintan Desai, Esq.: there's a lot of reasons why you'd want a patent right. And sometimes that is because you want to say patent pending right? Because especially if you're in a smaller industry or very close to the industry.
00:20:08.250 --> 00:20:18.499 Chintan Desai, Esq.: you know, people know who the other, you know, partners are, or the other companies that we're operating that space are. And so sometimes there's just inherent value to be able to say patent pending right?
00:20:18.570 --> 00:20:28.959 Chintan Desai, Esq.: And so there's sometimes, you know, strategy behind that where you may not you. You want to get the patent, or you know that's the goal. But
00:20:29.190 --> 00:20:38.940 Chintan Desai, Esq.: if you're not sure, let's say about the patentability, right? Or it could be something you're not sure about. Sometimes you have business reasons as to. I want to be able to say pat and pending, or
00:20:38.990 --> 00:20:50.729 Chintan Desai, Esq.: I'm still building this, I'm still working on this. I'm still, it's still, you know, kind of percolating. But in the in the, you know. In the meantime, I wanna say, this is my invention. Let's see where it goes.
00:20:50.830 --> 00:20:55.019 Chintan Desai, Esq.: I think so. Those are a lot of different business factors that kind of weave into.
00:20:55.100 --> 00:20:57.669 Chintan Desai, Esq.: Why, you'd want to, you know, pursue it.
00:20:58.210 --> 00:21:01.470 Matthew D. Asbell, Esq: Yeah, that's the other thing that that I think I see a lot
00:21:01.490 --> 00:21:03.569 Matthew D. Asbell, Esq: which is that, you know.
00:21:03.820 --> 00:21:10.909 Matthew D. Asbell, Esq: when people come to you for this with the idea, like they, they're thinking as to why they need it.
00:21:11.050 --> 00:21:18.459 Matthew D. Asbell, Esq: It's not that that always that clear. And many people don't pursue it because they they, they, they, they they're thinking why they don't need.
00:21:18.750 --> 00:21:39.600 Matthew D. Asbell, Esq: But you know you've given an example. One reason why people would need it, which is that they want to be able to discourage others. by saying patent pending and it, you know, a and you know. But but there are. There are others right, because patents are often the most valuable part of a of a business ultimately, and and the
00:21:40.360 --> 00:21:43.649 Matthew D. Asbell, Esq: the the, the, the company, the entrepreneur, is
00:21:43.930 --> 00:21:52.440 Matthew D. Asbell, Esq: often thinking about the endpoint of getting the patent and the value of getting the path to. And there can be a lot of that, you getting the P. But they're also
00:21:52.700 --> 00:22:08.969 Matthew D. Asbell, Esq: some values potentially along the way, like like you sort of incrementally and incremental improvements along the way, or or like you said, taking patent pending. So I think it's important for people to realize there might be many different reasons why they should consider doing it.
00:22:09.390 --> 00:22:16.759 Chintan Desai, Esq.: And just to add on that, one of the reasons is like you mentioned. So a lot of the times when you're an entrepreneur or your startup, you know
00:22:17.450 --> 00:22:21.030 Chintan Desai, Esq.: you're you're it's almost you're betting the company on. Let's say this
00:22:21.120 --> 00:22:33.009 Chintan Desai, Esq.: invention or this product. Right? This is, gonna be what your launch is going to be predicated on. Sure, you know, in your goals like down the line you want to have a product line, or you want to have a series of services or whatever it may be.
00:22:33.130 --> 00:22:40.100 Chintan Desai, Esq.: But this is gonna be the launch point. Right? So it's all the more important to make sure that you have your. You know
00:22:40.170 --> 00:22:44.149 Chintan Desai, Esq.: you know everything lined up, and you're sure about that, because
00:22:44.330 --> 00:23:06.129 Chintan Desai, Esq.: oftentimes your company's success or your ability to grow, will be predicated upon this phase and this you know this invention. So it you know those are one of the key aspects as to why is it important? Because the company's, you know, future could be predicated upon that, or it's ability to expand will be, you know, inextricably linked to that.
00:23:06.940 --> 00:23:15.270 Matthew D. Asbell, Esq: So so what? Maybe we persuaded people that it's important and and and worth doing, and that, and that it's valuable.
00:23:15.390 --> 00:23:31.259 Matthew D. Asbell, Esq: But you know, if I'm an entrepreneur listening to you, one of the things I'm thinking is, yeah. But come on, how much it's gonna cost me. I'm all out of pocket. I've been. I just lost this business. This is a lot of you know. I assume it's gonna cost me a lot of money to get this.
00:23:31.490 --> 00:23:37.770 Matthew D. Asbell, Esq: and I'd like to hear you address that. But another concept I'd like to to think about is why I don't have to do this now.
00:23:37.980 --> 00:23:48.090 Matthew D. Asbell, Esq: you know it's it's, you know, A. It's going to be expensive. It's out of my pocket and be what you're telling me. I have to go do this now. Why, why, why can I just do that in a couple of years?
00:23:48.300 --> 00:24:15.200 Chintan Desai, Esq.: So you know, the thing about patent ability is, you know, and and just, you know, pursue that invention is, you know, we have what we call in the Us at least, is what we call a one-year grace period right? And that's from when you put it on. When you put this product on sale, or when you disclose it to the public, you have one year from then to file the application. Now I mentioned that in the Us. And the caveat, being some jurisdictions around the world, have what we call absolute novelty, which means they don't have a grace period. Right?
00:24:15.380 --> 00:24:21.759 Chintan Desai, Esq.: So the reason it's important to think about it early on before you really set product and not wait
00:24:21.780 --> 00:24:33.900 Chintan Desai, Esq.: is, you may preclude yourself from getting a patent later on because of your own disclosure. Or, let's say, because it's been disseminated, the public. And it's been more than a year. So that is that disclosure will be cited against you.
00:24:34.120 --> 00:24:35.280 Chintan Desai, Esq.: Now
00:24:35.410 --> 00:24:43.980 Chintan Desai, Esq.: there are ways to kind of kick the can further down and with costs and strategies. But
00:24:44.000 --> 00:24:47.860 Chintan Desai, Esq.: you know it's kind. It's important to have that mindset early on, because.
00:24:48.060 --> 00:24:57.919 Chintan Desai, Esq.: just like when you have, let's say your brand or your likeness. You you put it out there once it's out there, it's going to be disseminated, and people will do with it what they you know, want.
00:24:57.960 --> 00:24:59.910 Chintan Desai, Esq.: but at least you can shape.
00:24:59.930 --> 00:25:05.689 Chintan Desai, Esq.: you know, the message that you wanna that wants to go out with. And I think that's the important thing. And again
00:25:06.270 --> 00:25:14.349 Chintan Desai, Esq.: you will preclude yourself from patentability if you aren't thinking further down the line, because once it's out there it can be cited against you.
00:25:14.910 --> 00:25:32.439 Matthew D. Asbell, Esq: but so patents, unlike other forms of intellectual property, have this time constraint. a broad meeting. You have to do it before you disclose it, or or sell it, or anything like that, and and in the Us at least within a year. And after that you're basically out of luck.
00:25:32.490 --> 00:25:46.320 Matthew D. Asbell, Esq: so so that's the reason why entrepreneurs need to do this sooner. And so you've justified that. But what about? By hey? You know, my empty pockets? How am I going to pay for this? This is, you know. I assume it's expensive.
00:25:46.740 --> 00:26:14.659 Chintan Desai, Esq.: Well, so it depends. Right? You know, there's ways like I said, there's strategies on how we can, you know, prioritize certain costs. Right? So, for example, when it comes to patent applications, yes, the entire process. When we talk about what we call in full non provisional obligation and going all the way to basically prosecution, which is when you go back and forth of the Uspto, they say, you know this you mentioned. They say something else out there, and you argue why it's different. And all the way through to that process, grant
00:26:14.710 --> 00:26:26.949 Chintan Desai, Esq.: that could be many years, and you know that could be a lot of money. But there are ways to within the early stages, push that back further or kick the can further down. Because, for example, if you're a business.
00:26:27.170 --> 00:26:31.829 Chintan Desai, Esq.: you may. Still, you know, there's writing reasons. A you may still be building on the technology, right.
00:26:31.890 --> 00:26:35.470 Chintan Desai, Esq.: So you know, like this is still in the R&D phase.
00:26:35.490 --> 00:26:38.399 Chintan Desai, Esq.: and we still are flushing it out. To see.
00:26:38.530 --> 00:26:44.500 Chintan Desai, Esq.: Is this economically viable like? Is this something we want to pursue on the business side? to.
00:26:45.010 --> 00:26:50.720 Chintan Desai, Esq.: I want to, you know, place my time right now, but I want to also see, are there others out there? Right?
00:26:50.820 --> 00:27:00.289 Chintan Desai, Esq.: And so you're able to let's say file. For example, a provision application. Right now, I mentioned provision applications is slightly different than not provisional.
00:27:00.920 --> 00:27:08.219 Chintan Desai, Esq.: and it allows you to essentially say, your place, marker. and but it's a much lower cost. And so
00:27:08.230 --> 00:27:31.920 Chintan Desai, Esq.: you know, the the goal is, there are ways just like in business. When you're in the early stages, you're gonna prioritize certain aspects. Right? So similarly, when you look at an IP portfolio or a you know the initial stage of how you want to pursue protection. There are ways where you can say, All right. I want to protect you in this way that don't preclude your ability to pursue. You know the stronger IP protection later down the line.
00:27:32.800 --> 00:27:50.569 Matthew D. Asbell, Esq: So if I'm an entrepreneur, and I hear words, provisional application and non professional application. I have no idea what that means. So so maybe you could just briefly define those. So we understand we're talking about, and then
00:27:50.890 --> 00:28:01.899 Matthew D. Asbell, Esq: stick on the fees with me a little bit here, because it's not just about. you know the form or what you what you're filing, but maybe also about what what the cost of each of those things are.
00:28:02.270 --> 00:28:31.829 Chintan Desai, Esq.: Yeah. So a provisional application is essentially it's a placeholder. It never gets disclosed. But it essentially, you know, when you file that, you're saying, here's my invention, and it, you know, the contents is what we call the claims which you know, define what the invention is to description and drawings. it's almost like a baby non provision application, but by itself a provision application will never just mature into a patent or be examined.
00:28:32.040 --> 00:28:45.239 Chintan Desai, Esq.: But what it does is it allows you to place your time in line while you're still developing it, or while you want to. You know, if you want to delay essentially your non provisional application, which I'll mention, a second is
00:28:45.290 --> 00:28:50.540 Chintan Desai, Esq.: You want to delay while you're getting your ducks and all you're deciding on the business side what's important.
00:28:50.820 --> 00:29:07.480 Chintan Desai, Esq.: And then within one year found that provisional. We have the non provisional now, the non provisional supposed to build on that provisional. And that's what's going to be examined, disclosed. and you know, open to the public. And so that's when you really are saying, Okay, this is my invention. These are the claims.
00:29:07.580 --> 00:29:13.880 Chintan Desai, Esq.: And then that's what you send. Let's say to the Patent Office, whether it be the Us. Or the jurisdiction. and so
00:29:14.080 --> 00:29:23.180 Chintan Desai, Esq.: that provisional never gets disclosed until, let's say, a non provisional file that claims priority to it. And it's important to file that provision because
00:29:23.270 --> 00:29:31.059 Chintan Desai, Esq.: anything you have in that non-professional that claims priority, you're able to date back to that provisional right? So we're always in. We're always thinking about the priority date.
00:29:31.080 --> 00:29:44.100 Chintan Desai, Esq.: right? Because at the end of the day you want to be able to say, I want to really back to the earliest possible date, because in the interim, while you're thinking it out, someone may come along and say, I have this idea.
00:29:44.240 --> 00:29:52.970 Chintan Desai, Esq.: and you don't want to essentially short. Change yourself because you're working on it, for someone else independently is working on. So that's why it's important to kind of think about both those things.
00:29:54.160 --> 00:30:02.349 Matthew D. Asbell, Esq: Thanks for that. We're going to go to break you've been listening to in tang. If I on talk radio dot Nyc, I'm your host, Matthew asked on my guest to shin the side.
00:30:02.370 --> 00:30:03.819 Matthew D. Asbell, Esq: We will be back shortly.
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00:32:05.070 --> 00:32:14.360 Matthew D. Asbell, Esq: Welcome back to in tang if I on talk radio dot Nyc, I'm your post, Matthew as well. My guest is tintin to sign. We're talking about patents or entrepreneurs.
00:32:14.450 --> 00:32:18.800 Matthew D. Asbell, Esq: and you know, we were talking a little bit before the break about
00:32:18.900 --> 00:32:27.050 Matthew D. Asbell, Esq: sort of these different forms? Of what are the utility, patent applications, the applications that are for you know how things work?
00:32:27.070 --> 00:32:45.879 Matthew D. Asbell, Esq: and that there is this thing called a provisional patent application. That is basically a placeholder, but it a less expensive and easier way to to get something on file while you continue to develop or look for funding, and you can say patent pending in the interim.
00:32:46.160 --> 00:32:51.479 Matthew D. Asbell, Esq: and we're talking a little bit about, you know, when you're a an entrepreneur.
00:32:51.770 --> 00:33:05.010 Matthew D. Asbell, Esq: you know, if you're just starting out, you you're often out of pocket for these costs. So so chin. And I I think the next thing I really need you to to to address for our audience is, you know, what are these costs?
00:33:05.230 --> 00:33:09.389 Matthew D. Asbell, Esq: you know, and and is there, how do I get a discount?
00:33:10.080 --> 00:33:18.559 Chintan Desai, Esq.: Right? So it. It is an important cost, right? And I think the the reason we think about that is because, you know, early on
00:33:18.590 --> 00:33:24.529 Chintan Desai, Esq.: certain things like, let's say the filing costs. For let's say non provisionals. You know
00:33:24.600 --> 00:33:32.230 Chintan Desai, Esq.: those things do add up. So you know, you're talking about the attorney's fees, which are the constant, you know, but you know I'd say we have the most competitive rates.
00:33:32.240 --> 00:33:42.850 Chintan Desai, Esq.: but I digress, but you know you have to think about the official filing fees right? And those things do add up. So there are ways that those fees are reduced, and you know
00:33:42.880 --> 00:33:51.009 Chintan Desai, Esq.: they're referred to as entity fees, and, you know, based on type vanity you are, you may be, you know, be able to get a discount. And, for example, there's
00:33:51.230 --> 00:33:57.109 Chintan Desai, Esq.: what we call a large entity that's on, discounted Kennedy, and that's usually, you know, a company that has more than I believe it's
00:33:57.630 --> 00:34:20.900 Chintan Desai, Esq.: 5 550. Yeah, that's right. 500 employees. you know. So. And I don't know about you. But I don't know many startups that have 500 employees right off the bat. So then you have what they call a small entity, right? And that's entitles you to a significant reduction or fees. So, and I believe and I want to make sure I have this correct. But I believe it's
00:34:21.350 --> 00:34:23.230 Chintan Desai, Esq.: a 60% discount
00:34:23.440 --> 00:34:52.210 Chintan Desai, Esq.: And then further to that these are just when I say fees. They're not just, you know, on the filing fees, but they're also on the examination fees, you know. Then they're also on the issue fees later through the process, the grand fees. And so you talk about those savings they add up. But then, even beyond that, when you're talking with the individual entrepreneur, there's also micro entity fees. Now, Microw, any fees are reserved for you can. If you're a educational institution.
00:34:52.510 --> 00:34:59.619 Chintan Desai, Esq.: or you qualify on a gross income basis. And there's certain other qualifications where you haven't filed them more than 4 applications.
00:34:59.830 --> 00:35:01.210 Chintan Desai, Esq.: But you know
00:35:01.500 --> 00:35:13.740 Chintan Desai, Esq.: that's even more discounted, so that can be up to. And I want to say this correctly, I believe it's 70 or 80%, 80% right? And so when you're thinking about, let's say.
00:35:13.780 --> 00:35:15.590 Chintan Desai, Esq.: you know, a provisional application
00:35:15.820 --> 00:35:22.329 Chintan Desai, Esq.: for micro entity could be as little as nearly 80 or $90. Right? You know, that's a filing fee. That's
00:35:22.420 --> 00:35:33.020 Chintan Desai, Esq.: much. It's significantly better than what you you know. Pay normally. And then when you think about a non-provisional, you know, that's a couple of $100 savings right then and there, and
00:35:33.050 --> 00:35:34.860 Chintan Desai, Esq.: you know the thing to remember is
00:35:35.540 --> 00:35:43.659 Chintan Desai, Esq.: an application. Let's say a non provisional occasion. It's not even picked up by the Uspto, you know, absent certain ways you can expedite it.
00:35:43.690 --> 00:36:06.370 Chintan Desai, Esq.: They don't pick it up for 3 to 4 years. Right? So you know, you're going to invest, not only to prepare this application. But then you're thinking about, I'm going to file it, and I'm not going to see anything or any Roi for at least 3, 4 years, and even then it's still process to get it through right? So I think it's important to think about. We talk about cost savings. And you know, you're thinking about a business or start up. That's starting early on.
00:36:06.610 --> 00:36:10.740 Chintan Desai, Esq.: you know. You want to reduce the fees upfront as much as you can right.
00:36:10.840 --> 00:36:24.699 Chintan Desai, Esq.: because later on, when this is good. Yes, you know, it'll be easier to swallow, and you'll be able to say, All right. I want to put more money into the R&D, and you'll file the patent applications right? Because you're going to say, All right. Here's my product line. But
00:36:24.790 --> 00:36:28.120 Chintan Desai, Esq.: early on it's important to be able to have that cost savings. I think.
00:36:28.480 --> 00:36:48.280 Chintan Desai, Esq.: You know, there's the Uspto recognizes that even more recently they've it's to certain things where they're trying to encourage, you know, entrepreneurship or individual inventors by reducing the fees or baking further reductions. Just so, you know, it's in. It's kind of an insider into the process, because once you get into the process.
00:36:48.410 --> 00:36:53.609 Chintan Desai, Esq.: you know, the hardest part is getting into the process of talk. For many, you know, individual members.
00:36:54.240 --> 00:37:03.439 Matthew D. Asbell, Esq: Yeah. So you know, let, I want to have her at home just a little bit. you know, because it's a little bit abstract. But
00:37:03.460 --> 00:37:04.709 Matthew D. Asbell, Esq: I believe the
00:37:04.750 --> 00:37:11.940 Matthew D. Asbell, Esq: the the government charge for a large, the normal charge for a provisional patent application is about $300.
00:37:12.020 --> 00:37:16.859 Matthew D. Asbell, Esq: So it's not really particularly expensive. If you're hiring a lawyer, it's going to be de minimis. But
00:37:16.960 --> 00:37:33.370 Matthew D. Asbell, Esq: but nonetheless and and it's kind of funny. I I you know I could hear you struggling to remember the percentages they used to be so easy to remember until they changed the law just a few months ago. But, But you know, it used to be 50 and 75. And basically they moved them up to 60 and 80.
00:37:33.580 --> 00:37:47.750 Matthew D. Asbell, Esq: so small. Nc gets half of that, you know. And he's gonna pay half of that $300. So 150 micro reds is going to pay or less than have them tomorrow. So they're gonna they're gonna pay 40%, right? So it's gonna be even less.
00:37:47.770 --> 00:38:09.520 Matthew D. Asbell, Esq: So maybe it's 120 and micro entity is like 60 or something like that. when you talk about the full patent application. What we're referring to as a non provisional patent application which you're eventually going to do assuming you provide a prior to provisional, or you're going to do now, for if if you're ready to
00:38:09.550 --> 00:38:11.390 Matthew D. Asbell, Esq: those costs are
00:38:11.550 --> 00:38:35.109 Matthew D. Asbell, Esq: closer to about a thousand dollars upfront in terms of the government fees. So then, when you're talking about paying 400 or or 200, you know versus a thousand. It's a it's a really significant savings. as you also stated, right, that travels with you throughout the process. So when the patents ultimately issue those these are also reduced. So it really does end up being thousands of dollars in the end.
00:38:35.250 --> 00:38:57.530 Matthew D. Asbell, Esq: so I think that's really important to kind of hammer home that those charges are not that expensive? And and I think it's that reason for for that reason that there are these entities out there that are like, oh, we'll file your patent for you. You can go to these websites, and you know that where they'll help you file your patent application. But they really don't
00:38:57.560 --> 00:38:58.870 Matthew D. Asbell, Esq: give you
00:38:59.120 --> 00:39:10.910 Matthew D. Asbell, Esq: advantage in terms of strategic planning to ensure that you ultimately will get that patent. It's more like, Yeah, you want me to file this for sure. I'll file this for you. I can't promise you it's worth anything, but I'm going to file it
00:39:11.090 --> 00:39:22.000 Matthew D. Asbell, Esq: and so there's there. There's that aspect to that sort of the reason why you spend money on on an attorney, because if you only have to pay, you know 60 bucks to provisional application.
00:39:22.090 --> 00:39:24.029 Matthew D. Asbell, Esq: Well, I could just follow this piece of paper.
00:39:24.230 --> 00:39:26.920 Chintan Desai, Esq.: nobody is going to look at it right
00:39:27.020 --> 00:39:38.730 Matthew D. Asbell, Esq: sometimes. That's even what people do right? Tell. Tell. Tell us a little bit about that when when when it's advisable, or a client to sort of file what you call a cover sheet provisional pattern.
00:39:38.840 --> 00:40:06.399 Chintan Desai, Esq.: Right? So there's times when you know, and with heck like clients. And I've had, you know, in the past where they're about to, would say discuss something at a convention, right? Or they're about to release something. And it's you know, it's a big, you know, trade convention, or it's going to be a medical convention and a doctor is going to talk about. Let's say their medical device right? And you know, on short notice, they're not sure if they're going to, you know. Pursue, let's say ultimate patent protection on it. But
00:40:06.440 --> 00:40:32.989 Chintan Desai, Esq.: it is something that's novel and novel enough that they're going to be the ones, you know, introducing it at their, you know. Keynote speaking event. we always, we call it. It's a cover sheet provisional. Now, what it does is, it's essentially, you know, it's a write up It's quick. So you know the Federal provide us with the drawings they have in a rough format. I'll write up, and we'll try to format it. And essentially, sometimes it could be a 2 page or 3 pager.
00:40:33.060 --> 00:40:43.230 Chintan Desai, Esq.: But it describes what the invention is right, and it's important to do that, because, you know, we talked about priority there, right? And so, you know, when you file a provisional application.
00:40:43.310 --> 00:41:10.330 Chintan Desai, Esq.: you know, it's a slice. You don't know how much detail you want in there, or have to have in there, but you want to have enough to show that you have essentially possessionally mentioned, right? So that someone someone in the or, you know, reads that they'll be able to understand the invention and say, Okay, I understand the conception how it works, and we call it the best mode, right? And so it's important to have enough description there, because when you do ultimately file that non provisional, and it's important to keep in mind. You know.
00:41:10.570 --> 00:41:21.210 Chintan Desai, Esq.: a great provision. Application is great, but it's only as good as the detail within it later on. Right? So when you file that non provisional, you need to be able to relate back to that priority day and say.
00:41:21.330 --> 00:41:37.819 Chintan Desai, Esq.: this is the invention. I talked about it here. And this is my more formal detailed product or description that just builds on that right, because at the end of the day you, you can only claim priority to that which you have or have shown possession of in the past. And so.
00:41:37.820 --> 00:41:55.050 Chintan Desai, Esq.: you know these cover super originals, although quick and dirty, and they're, you know, in an attempt to, you know, just to make sure again, this goes back to the absolute novelty you want to have something on file before you speak, if you're considering other jurisdictions, and it's advisable, obvious in the Us. As well. But you know there is a Grace period. But
00:41:55.090 --> 00:41:55.960 Chintan Desai, Esq.: again.
00:41:56.810 --> 00:42:05.010 Chintan Desai, Esq.: the devil is always in the details with the Grace period. You know. You don't want to ever rely on that, you know. Preferably so. it's important to think about.
00:42:05.240 --> 00:42:27.060 Chintan Desai, Esq.: You know you you do that cover, she provisional, and we've had certain things where you can. Daisy Chain a series of provisionals. Right? And so you may have different stages where you say, all right, I'm building on this, my first original, and 3 months later you say, well, we're in advance stages. Let's do another provisional, and you can claim priority to both. As long as you know, it's within one year of the earliest, you know, date.
00:42:27.190 --> 00:42:39.750 Chintan Desai, Esq.: So, for example, if you file a provisional application on January first for the provisional application on February first, then the following year, if you claim. If you say I'm gonna by it January fifteenth.
00:42:39.840 --> 00:42:47.419 Chintan Desai, Esq.: you may. You won't be able to claim priority to that January first one, but you'll be at a clean priority to the second. So you know, it's important to keep in mind
00:42:47.480 --> 00:42:51.139 Chintan Desai, Esq.: why you may want to do that provisional application or something one.
00:42:51.170 --> 00:42:54.200 Chintan Desai, Esq.: and we touched on a little bit. Part of it is because
00:42:54.630 --> 00:42:58.490 Chintan Desai, Esq.: you're shopping the product you're looking to license it out.
00:42:58.510 --> 00:43:19.329 Chintan Desai, Esq.: you're still thinking about. All right. I may want to get other funding right? So we talk about costs early on. So one of the ways, you know, you always see certain shows that talk about pitches, you know, in a centric owner of the Mavericks is on there. But you know they talk about the importance of having that provisional application on file right?
00:43:19.360 --> 00:43:22.779 Chintan Desai, Esq.: Because you want to be able to build on that later. And
00:43:22.830 --> 00:43:28.459 Chintan Desai, Esq.: you know, when the money is, you know, you have to be more careful in the early stages of the startup
00:43:28.940 --> 00:43:32.459 Chintan Desai, Esq.: you have to allocate and prioritize. But
00:43:32.910 --> 00:43:35.960 Chintan Desai, Esq.: if you have a better provision application, or the more detail you have in it.
00:43:36.140 --> 00:43:50.180 Chintan Desai, Esq.: That's gonna be something that's, gonna you know, help you sometimes get additional funding. So you wanna think about how much you include in there. But there's different ways of you know how much detail you put provision versus non provisional. And the other thing to keep in mind is
00:43:50.430 --> 00:43:52.479 Chintan Desai, Esq.: the more detail you put into the provisional.
00:43:52.960 --> 00:44:11.629 Chintan Desai, Esq.: The in theory, less work needed is needed in the non provisional application, right? Because at the end of the day, you know, the non provision was going to be, what's going to be guiding you into? Let's say, that's what's going to be reviewed. That's what's going to be examined. So yeah, but that's those are the things you consider when talking about a provisional or non-profession.
00:44:12.680 --> 00:44:19.540 Matthew D. Asbell, Esq: So we're going to go to a break. But before we do. I wonder if you could just sort of give a real ballpark, rough range
00:44:19.620 --> 00:44:35.380 Matthew D. Asbell, Esq: of what you think, you know, in a typical situation? Nobody's gonna hold you to it in a typical situation. You know how much somebody might spend on it, on, on the attorney, and on the on the government in terms of filing
00:44:35.720 --> 00:44:53.809 Matthew D. Asbell, Esq: from the cheapest cover sheet. Provisional to the most complete non provisional, full patent application. Just the filing but the preparation filing. What what's kind of the range that people should expect, so I would say it can vary between 1,500
00:44:54.030 --> 00:44:59.950 Chintan Desai, Esq.: to 2,000 all the way up until it could be up to 18 to 20,000.
00:45:00.510 --> 00:45:03.080 Chintan Desai, Esq.: And I say that because
00:45:03.130 --> 00:45:09.770 Chintan Desai, Esq.: you know, certain applications may have certain, you know descriptions that may even be more robust, or require even more detail. But
00:45:09.790 --> 00:45:16.330 Chintan Desai, Esq.: and so you know, along the way you may say, all right, there is more involved. And so the subject matter can really.
00:45:16.590 --> 00:45:30.080 Chintan Desai, Esq.: you know, really shift that. But it can be as low as 1,500, and that's again for the provisional application all the way up until the you say at least 20,000 plus, you know, for the nonprofit allocation.
00:45:30.550 --> 00:45:52.479 Matthew D. Asbell, Esq: Yeah. And I think it's also a function of maybe how organized and clear the client is in providing you the information right? The more you have to spend the time trying to organize stuff and put it in the right places, and whatever you know you don't, you don't have things to go back and forth right. The more time it takes the more costs. There there are.
00:45:52.630 --> 00:46:00.690 Matthew D. Asbell, Esq: So that's great. We're going to go to break. I really appreciate it. When we come back we are going to talk a little bit about
00:46:00.750 --> 00:46:09.829 Matthew D. Asbell, Esq: the foreign rights you've been listening to in tangify on top radio, dot nyc on your host Matthew as well. My guess is chimpanzees, and we'll be right back.
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00:48:14.700 --> 00:48:25.020 Matthew D. Asbell, Esq: Welcome back to in tang if I on top radio, dot. Nyc, I'm your host, Matthew as well. My guess is to the side, and we are talking about patents or entrepreneurs.
00:48:25.100 --> 00:48:27.579 Matthew D. Asbell, Esq: We were exploring all different aspects of
00:48:27.900 --> 00:48:44.390 Matthew D. Asbell, Esq: professional and non provisional utility patents. We also talked about design patents. we talked about the fees involved in trying to obtain these, and why these are valuable both in terms of getting them at the end. But also in, you know, just getting on file.
00:48:44.710 --> 00:48:54.469 Matthew D. Asbell, Esq: One of the things that you mentioned in that context is You know there's no gray spirit in many countries abroad.
00:48:54.640 --> 00:49:19.339 Matthew D. Asbell, Esq: and you know, maybe your maybe your invention is going to be something that's going to be offered or sold in or manufactured in in other countries, so there might be a need to deal with the the patent rights and other countries that might be, not something that resonates with people so quickly. you know, we in the Us are often very I. You know us centric and our focus. And
00:49:19.340 --> 00:49:31.619 Matthew D. Asbell, Esq: and to think, Oh, well, let's get the right here, that's all we're going to do. But you know, if if I've got an innovation that I'm planning to manufacture. So you know, you know, you know, abroad.
00:49:31.860 --> 00:49:35.950 Matthew D. Asbell, Esq: what? What do I need to think about? And when?
00:49:36.710 --> 00:49:56.200 Chintan Desai, Esq.: Yeah. So I think it's it's really important. I think it's often under sold and under appreciated as to why it's important to think about that. And it's important to think about early on, because, you know, like we mentioned, you know, all the costs don't have to be upfront, but you also want to make sure that you don't preclude yourself
00:49:56.250 --> 00:50:00.480 Chintan Desai, Esq.: from, you know, being able to file it in other jurisdictions later on down the line.
00:50:00.540 --> 00:50:12.509 Chintan Desai, Esq.: And you know the reason is that you know patent rights. They're territorial, right? So they're gonna be where you file is, where you're going to get the protection right. And that's going to be the importing or where your manufacturing. So
00:50:12.530 --> 00:50:14.759 Chintan Desai, Esq.: at an early stage, it's important to think about.
00:50:14.800 --> 00:50:21.319 Chintan Desai, Esq.: Where do you see the product going? Right, you know. Is this business going to be. Are you going to be just in the Us only.
00:50:21.590 --> 00:50:46.939 Chintan Desai, Esq.: or you know, do you foresee it to be in other countries? You know whether it be in regions so in Europe, but in a certain aspect. If you have specific countries like Australia, New Zealand, China, Japan, you know South Korea, Brazil, Mexico, Canada. You know, it's important to think about this at an early stage, because and and just like you would with your business right, live in a global world. So in the in the business side.
00:50:47.070 --> 00:50:55.710 Chintan Desai, Esq.: you're going to think about all right. What other countries am I going to work in right? Or, you know, will this product expand? And you know, so it's important to early on.
00:50:55.810 --> 00:51:15.969 Chintan Desai, Esq.: you know. Incorporate that in your filing strategy, because, you know, as we discussed about the novelty. I have some novelty or certain jurisdictions of different, you know. Views on you know what's considered disclosure. You want to have something on file and something on father, you can relate back to right. So we talked about provisionals and the ability for a non provision to really back to provisional.
00:51:16.030 --> 00:51:21.519 Chintan Desai, Esq.: Well, there's also an international application which is called the Pct. Application.
00:51:21.730 --> 00:51:23.900 Chintan Desai, Esq.: I sometimes call it a
00:51:24.170 --> 00:51:25.330 Chintan Desai, Esq.: hybrid.
00:51:25.390 --> 00:51:28.150 Chintan Desai, Esq.: you know, provisional application, because
00:51:28.200 --> 00:51:43.279 Chintan Desai, Esq.: simoto provisional. It doesn't by itself mature into a pad. but it does have some limited examination. It does get published. and it does have certain days where you have to then claim priority to it
00:51:43.370 --> 00:51:45.639 Chintan Desai, Esq.: into the various countries. Right? So
00:51:45.660 --> 00:51:51.960 Chintan Desai, Esq.: if a inventor comes, you know, comes to us and says, Well, I'm interested in 3 to 4 countries. Right?
00:51:52.470 --> 00:51:56.930 Chintan Desai, Esq.: You know. Sometimes this is the best is one of the best options, because
00:51:57.560 --> 00:51:58.560 Chintan Desai, Esq.: it's a
00:51:58.860 --> 00:52:03.550 Chintan Desai, Esq.: international application that gives you essentially that place where we discussed.
00:52:03.900 --> 00:52:13.670 Chintan Desai, Esq.: and it gives you a preliminary examination. Right? And so it's not binding on, you know the search authorities. But these examinations are conducted by
00:52:13.770 --> 00:52:22.880 Chintan Desai, Esq.: the various jurisdictions, actual patent offices. So you know, if you have, for example, the Us. As a search agency.
00:52:23.050 --> 00:52:36.020 Chintan Desai, Esq.: when you do enter, we call the National. So that's, you know, like in a provisional, you have to eventually find a non provisional with the Pct. You eventually have to file a national application, which is just a non provisional in a particular country.
00:52:36.310 --> 00:52:41.989 Chintan Desai, Esq.: If that country says, Well, yeah, you use, let's say, the Us. Sur agency for your international application.
00:52:42.290 --> 00:52:56.869 Chintan Desai, Esq.: They may be more likely or more persuaded to follow that when you talk about examination of that non provisional within there, you know, within that specific country. So it's important on different laws, and it allows you to, you know. Push costs further down.
00:52:57.090 --> 00:52:58.750 Chintan Desai, Esq.: you know, at the end of the day, because
00:52:58.880 --> 00:53:00.369 Chintan Desai, Esq.: in a
00:53:00.530 --> 00:53:09.510 Chintan Desai, Esq.: in a what do you call it? An international application? You have 30 months, sometimes 31 months, usually 30 months from the priority day, which is the earliest priority date
00:53:09.590 --> 00:53:16.979 Chintan Desai, Esq.: to file and not provision. Now 30 months. That's quite a bit of time. you know, and that allows you flexibility on the business side
00:53:17.160 --> 00:53:21.390 Chintan Desai, Esq.: to either, you know, have funding or see where the product is going, but also
00:53:21.520 --> 00:53:28.499 Chintan Desai, Esq.: on the just if you're on the R&D side determining. do we want to proceed with this, you know? Do we want to purchase further
00:53:28.670 --> 00:53:29.480 Chintan Desai, Esq.: and
00:53:29.600 --> 00:53:41.079 Chintan Desai, Esq.: further to complicated? Further, I think if you think about it, you can actually file a provisional application. And then a Pct or an international application claiming priority to that provisional application.
00:53:41.320 --> 00:53:45.289 Chintan Desai, Esq.: And that's even that's gonna allow you to, you know, essentially
00:53:45.600 --> 00:53:54.840 Chintan Desai, Esq.: do the same things we discussed. But maximize the amount of time before you have to make the decision on which countries you want to do. And it's important to think about that. Because
00:53:55.180 --> 00:54:03.389 Chintan Desai, Esq.: if you file, let's say example I a non provisional location in the Us. But then later decide. Oh, I want to get protection. Another country.
00:54:03.850 --> 00:54:08.639 Chintan Desai, Esq.: If you don't do within a certain period of time, you will be precluded from doing that, because.
00:54:08.690 --> 00:54:20.050 Chintan Desai, Esq.: you know, once published, you know, in the Us. Or once it's out. Once it's like part of an application. You have a certain period of time which claim priority in other countries. So you want to think about this at an early stage.
00:54:20.200 --> 00:54:27.539 Chintan Desai, Esq.: But you don't necessarily have to, just because thinking about it in early stage doesn't necessarily translate to. You have to put all the cost down at an early stage.
00:54:29.120 --> 00:54:30.060 Matthew D. Asbell, Esq: So
00:54:30.420 --> 00:54:36.320 I think about these sort of the the foreign rights aspects kind of like the same way.
00:54:36.470 --> 00:54:38.929 Matthew D. Asbell, Esq: When you go to college you have to pick a major.
00:54:39.160 --> 00:54:44.429 Matthew D. Asbell, Esq: you get. You have to pick a major in college, and some of those people go to college, and they
00:54:44.490 --> 00:54:54.619 Matthew D. Asbell, Esq: they don't know who they are, what they want to do. They? They, you know, they take a major, you know, because they need to, or where they pump you as far down that they wait as long as they can before they have to.
00:54:54.760 --> 00:54:58.659 Matthew D. Asbell, Esq: But other people kind of know. You know this is what I went to college for.
00:54:58.720 --> 00:55:09.629 Matthew D. Asbell, Esq: I think if you that translates to oh, I know I want to be in the United States. I know I'm going to be in Canada, Mexico, and the United Kingdom.
00:55:10.250 --> 00:55:16.660 Matthew D. Asbell, Esq: Those are my targets. Yes, maybe there's others, but those are the ones that I want. You could pursue those right from the get. Go
00:55:16.770 --> 00:55:25.219 Matthew D. Asbell, Esq: nice early on. But if you're more like that first person who's like. Oh, I don't know. I gotta feel it all out.
00:55:25.270 --> 00:55:43.090 Matthew D. Asbell, Esq: See how well it does see all the funding goes, how my sales are in the Us. Whatever it is before I worry about. You know world domination, and I don't know which country is better with me. Maybe I should pick Columbia. Maybe I should pick Brazil, and maybe I should pick China up, or in about 1, 2, 3 whatever.
00:55:44.130 --> 00:55:45.150 Matthew D. Asbell, Esq: So
00:55:46.240 --> 00:55:49.469 Matthew D. Asbell, Esq: instead, I'm going to do this international application.
00:55:49.680 --> 00:55:56.759 Matthew D. Asbell, Esq: and I can buy a lot of time, and then I can deal with deciding the countries down the line after I know how this is going.
00:55:57.420 --> 00:56:15.890 Matthew D. Asbell, Esq: Yeah, that makes a lot of sense that it could save a lot of money for an entrepreneur. They're not. They're not free of having to pay anything right by deferring this cost. There's gonna be a fee in that early stage to do the Pct application correct. And it is. It is definitely more than the cost of a provisional application. But
00:56:16.150 --> 00:56:24.769 Chintan Desai, Esq.: as we discussed, the benefit is, you do get insight into examination, right? So provisional application doesn't get examined.
00:56:25.090 --> 00:56:27.709 Chintan Desai, Esq.: Pcc. Does get examined.
00:56:27.940 --> 00:56:33.389 Chintan Desai, Esq.: But it doesn't mature to a patent, but that examination will give you insight into how
00:56:33.570 --> 00:56:38.510 Chintan Desai, Esq.: other countries will treat it so you may end up at that stage and say, Well.
00:56:39.100 --> 00:56:46.139 Chintan Desai, Esq.: you know, I don't know if we want to do this, and it's kind of important, because it gives it gives you all the tools to decide when you want to incur those costs. Right?
00:56:46.370 --> 00:56:52.789 Chintan Desai, Esq.: And so that's just another tool to kind of give you the insight into what the future looks like, because
00:56:52.840 --> 00:56:59.939 Chintan Desai, Esq.: ultimately it is a business decision, right? And it's it's going to be where the product takes the company. And I always say this.
00:57:00.030 --> 00:57:04.409 Chintan Desai, Esq.: the business. The IP should not drive the business. The business should drive the IP
00:57:04.950 --> 00:57:15.839 Chintan Desai, Esq.: at the end of the day. Right? So that's kind of the core thing where they work with each other. But the IP is supposed to complement the business and help the business get to its goals.
00:57:16.470 --> 00:57:32.799 Matthew D. Asbell, Esq: That's great. Thank you so much we're about to end. But I wanted to ask you to, you know. Leave You know what your what your main message would be for the entrepreneurs listening to the program. you know I'm an entrepreneur. I don't know anything about patents. What? What's your message? What's your message for me?
00:57:33.330 --> 00:57:37.510 Chintan Desai, Esq.: So I, I would say, identify some of these ideas early on right.
00:57:37.550 --> 00:57:46.729 Chintan Desai, Esq.: you know, just like you would do in business. If you think this is an issue. This is something that no one else is doing, and this is why my product is better. Identify that
00:57:46.890 --> 00:58:11.700 Chintan Desai, Esq.: and keep it close. you know. Keep it close to the vest in the sense of take advocate protections before you disclose to others. Right? And that could be. We didn't get into it as much, but having a non disclosure of making sure it's kept under app, because at the end of the day you know, you want to make sure it's protected. But then also filing those provisional applications of those other aspects to to protect it early on, because once it's out there.
00:58:11.850 --> 00:58:15.170 Chintan Desai, Esq.: you know, you want to be able to a clean your list prior to date.
00:58:15.300 --> 00:58:23.359 Chintan Desai, Esq.: and, you know, be able to then relate back to that and build upon it at a later date, or sell it or license it, you know, and be able to see a patent pending right?
00:58:23.430 --> 00:58:29.590 Chintan Desai, Esq.: So I think in the course of it, it's important to identify those things early on, and to make sure you protect them.
00:58:30.040 --> 00:58:46.159 Chintan Desai, Esq.: And then you you know, and it and it shouldn't be you shouldn't be bogged down. Necessarily the cost. Because, like we discussed, there's ways to kind of prioritize certain costs, or there's ways to delay certain costs. Right? Why, you're trying to determine if this is the product for me.
00:58:46.240 --> 00:58:52.719 Chintan Desai, Esq.: And so I think, just like, you know, an individual's branding or a company's branding.
00:58:52.800 --> 00:59:00.109 Chintan Desai, Esq.: It's important to control that message or shape that message and protect that message before it's disseminated to the public. And you know
00:59:00.470 --> 00:59:04.950 Chintan Desai, Esq.: it's just like anything else you want to be able to guide that, because
00:59:05.140 --> 00:59:12.930 Chintan Desai, Esq.: that's you know what you're that's what your sweat and tears are going to. This. Start up. That's what you're thinking about, right, because I know when I talk to inventors.
00:59:13.340 --> 00:59:24.180 Chintan Desai, Esq.: They know it, you know, inside and up. They know their invention right? And I think that's one of the most fascinating things. When you talk to an inventor you have to learn their you know what the invention is, be able to speak to them about it.
00:59:24.260 --> 00:59:27.909 Chintan Desai, Esq.: and then translate to the legal and of the patent applications.
00:59:28.160 --> 00:59:41.799 Chintan Desai, Esq.: But I think it's important because you live and breathe this invention, you know. So it's important to protect it, because you spent time and money into this, and time and sweat equity, you know. And so I think that's probably the takeaway, you know.
00:59:42.810 --> 00:59:48.799 Chintan Desai, Esq.: embrace it, kind of identify it, and then, you know, don't hesitate to, you know.
00:59:49.130 --> 00:59:54.779 Chintan Desai, Esq.: pursue or get advice, because you know, it shouldn't be about cost, because there's ways like I said
00:59:55.000 --> 00:59:56.380 Chintan Desai, Esq.: to, you know.
00:59:57.010 --> 00:59:58.679 Chintan Desai, Esq.: mitigate some of those risks.
00:59:59.460 --> 01:00:10.030 Matthew D. Asbell, Esq: That's great. Thank you so much. Shinton. my guest has been Chinton, this Guy, an attorney in intellectual property and patent law at the law firm of off at Kerman.
01:00:10.310 --> 01:00:21.799 Matthew D. Asbell, Esq: pleasure having you. You've been listening to in tangify your host, Matthew. As well please tune in on Fridays at noon, eastern time for our our, podcast thank you. So much, have a great day.