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Patent Law with Bennett C. David

 

In this episode, we discuss patent law with Bennett C. David, an intellectual property attorney. He is simplifying the patent application process and facilitating patent litigations. Patent law has become increasingly compacted since most modern innovations are merely improvements on previous inventions, which is why it is critical to prove and defend your novel concepts. Anyone can file a patent, regardless if they created it or not, so today Bennett details everything you need to know to protect your ideas from corporations who would appropriate your designs. Owning your patent not only ensures ownership but also increases the valuation of your company allowing you to compete in the arena of big business. 

Key Takeaways:

[4:30] Discerning if your innovation warrants a patent 

[5:38] What type of patent is suitable to the design or service you’ve created

[6:50] Broadening your protection by building an IP portfolio

[8:40] Proving commercial recognizance and creating income through licensing 

[9:45] Fleshing out your application with proof of your novel concepts and expertise 

[12:32] Mitigating risk when facing an infringement case 

[14:44] Filing a provisional application while you make your product commercially viable

[17:50] Expedite the patent process with a nominal fee

[19:00] Owning your IP is an asset that increases the value of your company

 

To learn more about Bennett and patents visit his website at https://davidiplaw.com/

 

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Disclaimer: 

The Legalpreneur Podcast is advertising/marketing material. It is not legal advice. Please consult with your attorney on these topics. Copyright Legalpreneur Inc 2022

 

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Legalprenuer transcript:

Andrea Sager  00:03

Welcome to the Legalprenuer podcast. I’m your host Andrea Sager founder and CEO of Legalprenuer Inc. As a serial entrepreneur and someone that works exclusively with small business owners legally protecting their business. I’m dedicated to covering common legal issues faced by business owners, providing you with the business knowledge you need to catapult your business’s growth and showing you just how some of the world’s most elite entrepreneurs have handled these legal and business issues themselves. In true attorney fashion, the information in this episode is not legal advice. This is for informational purposes only. And you should always consult with your attorney before implementing any of the information in the show. Hello there. Welcome back to another episode. I’m so excited because I have been telling you all that I’m going to bring on a patent attorney I had one many years ago on the podcast, but I knew it was time for an update. So I’m so excited to have Bennett David here on the podcast today. He is a patent attorney and does all things IP. So I am so excited. Bennett thank you for being here.

 

Bennett David  01:06

It’s a pleasure to be here. Thanks for inviting me.

 

Andrea Sager  01:08

Yeah, so get started. Tell us how did you get to where you are today?

 

Bennett David  01:12

Oh, man, it’s just interesting story.

 

Andrea Sager  01:15

So that’s here.

 

Bennett David  01:18

So I was in high school actually, before I even knew about the intellectual property in the patent law field. I always knew I wanted to be an engineer, and while I was in high school was playing basketball and just wanted to focus on you know, playing ball and hopefully playing D one somewhere and I just want to keep my grades up high enough to be able to get to a great D one school. And in my senior year, there was a there was a teacher there called Mr. Clinton. And he you know, everyone said he was a great teacher, you know, you should be able to get an A out of his class. And I was like, Cool. Yeah, I need the hey, you know, I definitely need to boost my GPA. And then he, I took his class and he’s like, you seem to really like the law. And I was like, yeah, it’s great. You know, we’ve done field trips, you know, went down to the courthouse, I had a chance to see you know, depositions being taken all types of things. Before I knew it. He’s like, You should really think about it should think about going into it. And I said, No, I’m gonna be an engineer, you know, computer electrical engineering, I’m gonna go to an engineering school and it’d be state or a&t or Carnegie Mellon or somewhere, MIT somewhere like that. And he was like, okay, he said, but just do me a favor, go home and look up patent law. And just let me know what your thoughts are. I said, Okay, I’ll oblige you. So I went home, came back and said, Okay, you have a point, let’s talk further. And really, the rest was history. From there, it became an option in my career path. And I went to a&t majored in computer engineering, and had a great experience there. They just all around, I can’t say enough about HBCUs and everything that they mean to me, and initially thought I was going to go into IT support. So I did that for a little bit, I worked for a major investment bank and I was a programmer there and, and manage a lot of the high frequency trading systems all across the world and work some crazy hours. And eventually I just said, You know what I want to be more on the innovative side of things. I see all these great creations were making, I mean, we don’t really get any credit for it, because it’s owned by the company. And so but I would love to be more innovative and I want to be able to help other inventors and other people who are entrepreneurs just be able to get to the next level, because IP is a major asset that a lot of people really don’t exploit and whether it’s you want to go into licensing or you want to, you know, or you just want to create the product yourself, you have to create that space of protection for yourself. And I said okay, let’s go to law school, let’s do it with the whole process of the LSAT and, you know, in which a Suffolk University and in Boston and decided to do a dual degree program. So got my JD and my MBA, found the MBA to be very helpful even now in my practice. I find myself depending on the client, you end of operating as the de facto General Counsel when it comes to technology matters. All types of things and if you don’t have a full understanding of their business and the way that they’re trying to go or maybe even be you know, have foresight to hey, these might be things you need to consider as you continue to grow your business. It’s tough to really counsel them but but being able to have that experience, it really allows you to really look at it from a holistic view. And so from there, you know, Patent Bar, which is a lot of fun. passed the bar in Massachusetts in North Carolina and here we are, you know, and you know, just enjoying enjoying every second of it. It’s rewarding every single day to just do a new challenge and just work with new people every day.

 

Andrea Sager  04:34

As a quick reminder, the Legalprenuer book is coming out at the end of this month. I am so excited. It’s been a labor of love and Legalprenuer the business owners guide to legally protecting your business will finally be in your hands. If you have not already pre ordered your copy. Get to it now. The actual price of the hardcover book will be more than the pre sale price and if you are getting in on the pre sale price You actually get over $2,000 in bonuses. So run, don’t walk, go get the Legalprenuer book right now while it’s still on preorder. Okay, I love this. So I had the podcast for quite a while. And I always tell people look at anytime I’m talking to people about intellectual property, I’m like, Look, I can cover copyrights. I can cover trademarks. But do not ask me about patents. Because I, all I know is they are inventions. That is literally all I know about patents. So if somebody comes to you, and they’re like, Hey, how do I know if I have something that can be protected with a patent? What do you tell them?

 

Bennett David  05:36

Sure. So I mean, the very first thing I say is, hey, you know, do you feel like it’s new? You know, is this something novel? There’s something interesting about it that, you know, that prompted you to create this item or this design? That’s typically where it starts? No, typically, people innovate from a place of need, right? Or a place of want, or, Hey, I couldn’t find this out here. So I decided to make it myself. And that those are typically the stories I hear from inventors and companies all the time who are creating various products and services and, and trying to just, you know, find a way to make things easier. And if they say yes, then my next question is, okay, well, what’s the benefit? You know, what’s the benefit to the public? What’s the benefit to your particular area of commerce. And then from there, we’re typically able to kind of really flesh out what’s so important What’s so neat, you know, about this idea, this new inventive concept. So from there, I typically have to decide all right, by what type of patent is it? So you know, we have utility patents. And that’s essentially like something that’s a useful device or something that does something or changes a one concept to another. So utility is useful, right? Then you have design patents, where essentially, those were trademarks kind of overlap. Just a little bit, you know, and I think if it was like a newer concept that I really tried to push with clients now that yeah, you have that trademark protection on this design, or this idea. But that next level, really is the design patent, especially for people who would design clothes, or they design certain aesthetic views, and maybe a car or a type of product that they have. And me one of the most interesting design patterns is a Coca Cola bottle.

 

Andrea Sager  07:16

I was just that oh, my gosh,

 

Bennett David  07:20

every time you see a Coca Cola bottle for girls, let me see Coca Cola on the front of night. What do you think,

 

Andrea Sager  07:26

you know, you know what it is? Exactly. So is it only protected with a design patent? Are they also have it protected with trade dress

 

Bennett David  07:33

both ways. Okay, so that’s where you can really expand. So a lot of my practices around building IP portfolios, I feel like we’re able to build that portfolio out, you brought in the protection. As attorneys, we know were able to really, you know, create that scope, you know, around that bubble around the client and their product and their or their service or their idea. So yeah, as long as you to show that you continuously use utilizing this product, you trade dress design trademarks, you can essentially create a nice little bubble of protection around your company, your idea, your design very quickly.

 

Andrea Sager  08:06

Now, can you explain the difference in the types of protection? So Coca Cola has the trade dress for this protection? And it’s the patent protection for this? Yeah.

 

Bennett David  08:17

So it’s funny, like a lot of it is it overlaps? Okay, so it oh, it overlaps. So if we start with like trademarks, okay, so we know, this is our branding. So you’re protecting branding at that particular point, you know, when we started talking about, you know, the design patent, we’re saying, okay, like, you know, the design of how this operates, or maybe just how it looks by itself, there’s some designs that it’s useful based off of how it’s designed, it wouldn’t work any other way, based off of, you know, this widget being placed in this location, or this wheel being placed in this area, this axial place at a certain angle, and that alone can create a broad phone protection that maybe you might not have received via utility, then when you take that next step to trade dress, then that’s where it is commercially recognizable, you know, from a different standpoint, that when people see this design, particularly is directed towards your, your brand, your company, you you as the inventor, or the creator. So that actually when it comes to litigation, these are the things that you really think about, you know, especially with patent protection and being it being in the space of IP is if this is litigated, if someone is infringing, because that’s what we look for Canada’s be infringed if it’s infringed. Awesome, you know, like, you know, we, we can, we can license, we know, we can come up with different, you know, streams of income here for the client now, and, you know, at that point Nafi able to prove commercial, real cognizance. I mean, that takes it to a whole new level, especially when you’re speaking to a jury or whether you’re trying to determine what are the damages here, and that makes people think twice about whether or not we really want to try to infringe this idea or this product.

 

Andrea Sager  09:52

Yeah. So we have a design patent. We have a utility patent. What are the steps in protecting those pets? Because there aren’t there are different types of applications.

 

Bennett David  10:02

Yeah, yeah. So, okay, so um, you know, we could talk about it from a couple of different aspects. I think one of the first things that a lot of people ask is, okay, I think a patent is what I need, but what do you need from me? Okay, so you know, typically has a couple of different steps, I say, hey, really anything that you’ve written, let’s say, you have a notepad here, and you’ve written all these all these ideas, it can be full of ideas, that’s helpful, you might have all these different designs, or you’ve gone to a manufacturer, those things are very helpful, bring them to the table, the more information, the better, because from my job, it allows me to really step through and figure out, okay, where are our novel concepts here, it allows me to really flesh out this application. So your notepad turns into this very beautiful patent application and my 50 pages in it, and you had no idea with all these different drawings and figures. So all those things are very helpful. So always say, Listen, bring everything you have to the table. And then let me from there, evaluate and do my job. So any designs, any drawings, any any notes that you’ve written, if you’ve, you know, gone to a designer, you know, maybe some of the statement of work, the purpose, the ideas behind the product, the different commercial areas that you’re trying to go into, that really helps define the scope of how the application is gonna be drafted. From a utility standpoint, same thing for design as well. So especially the figures and different concepts that you’ve developed, those are very important to bring to the table. And then the next thing is to is to bring your expertise. That’s what I really love about my job, I get to sit here and here and hear from the inventor, hey, I created this, because of this, what you don’t realize is now I’m like, Oh, I can utilize this in the background of the application. Yeah, oh, and then what’s really neat about it, this is not important. But it’s this little thing, it really does, like, oh, what they don’t know that is very important. I’m gonna make sure we talk about that. And a lot of times, what I find is that this one concept turns into multiple applications, we can create continuations and divisionals. And really expand the patent portfolio goes back to what I said, we want to build that portfolio, that’s where the valuation is located.

 

Andrea Sager  12:07

That’s what exactly what I teach clients is, look it, it is perfectly legal to not do any of the stuff that we talked about. But it is our job to help you build this wall of protection. And once we have this wall of protection so high, nobody’s gonna be able to get into your business and infringe on it. That’s why we’re doing these things. So it’s not illegal to operate and not have a patent on your invention. But that’s going to cause other people to come and rip you off and come and infringe on your what you could have been had protected and monetized the whole time. So can you talk a little bit about the risk that somebody runs by not protecting their patent?

 

Bennett David  12:44

Oh, absolutely. Well, the first risk is kind of where you are headed, right? When it comes to infringement. Now someone can see what you’re doing, and they can try to just create around it or recreate it. And let’s say they have deeper pockets than you. It happens all the time. I hate to say that, and I love protecting the little guy, you know, the small businesses and startups because you have these big companies, deep pockets, billions, trillions of dollars. And they just come and say, Oh, that’s neat. And they’ll create it within a week and have it on a shelf by the end of the month. So meanwhile, you you haven’t taken the proper steps in order to ensure that you’re protected, that goes back to that wall, the higher the wall that you curate, it shows that they really took extreme lengths. That’s what you want to show an infringement case. They took extreme lengths in order to really make sure they took over your branding, or they took over your design or your device that you’ve created. So that’s that’s part one, you had you have a leg to stand on, you have protections legally. The other thing is it allows you to kind of as a business, carve out your own space within a very crowded market. I mean, a lot of times patents nowadays are really just improvements. There’s very, very rarely do you find something that’s, you know,

 

Andrea Sager  13:47

really novel.

 

Bennett David  13:50

Yeah, never seen it before, you know, and do all improvements. Right? So if you’re trying to compete with other companies in a crowded space, you know, you’ve you’ve done the whole SWOT analysis, you’ve looked at all your different competitors, you say, Okay, this is the area we need to get into how do you actually carve that area? Because if you go create it, and their competitor, your competitors realize, oh, this might be a competitor, I like what they’re doing. And they’re like, Oh, the first step they’re going to do is say, do they have any applications on file? I mean, I do that for a living, hey, can we do an analysis to see what this competitor has out there? That’s step number one. If you have nothing, they’re gonna go create something and they’re gonna go in, they’re gonna go File themselves. And before you know it, it’s the first file system that first to invent. You’re already out, you know, so that’s

 

Andrea Sager  14:31

  1. Isn’t that a difference between with trademarks? Because trademarks, it’s first to use not first to file so is patents, is that completely different?

 

Bennett David  14:40

Completely different first to file, you could have created it first unless you publicly disclosed it. Now. That’s when things get things get a little interesting. You have a year from the time that you publicly disclose this, that you went to a trade show, let’s say you went and did did a pitch to one of these companies. You’ve disclosed it you have record of it, that’s great. But what if within a year it becomes public College. So typically one of the first things I’ll tell people is Hey, file a provisional, you know, a provisional was a very useful tool, if it’s utilized wisely, you can file a

 

Andrea Sager  15:08

provisional, what does a provisional application? Absolutely. So

 

Bennett David  15:11

provisional applications are essentially applications that you could file that are not examined by the USPTO. The way I like to explain it is we we can file a provisional, let’s say you have, let’s say someone wants to do a pitch to your company. And they say, Hey, you know, I really like to show you this product, think you might be interested in it, and you go to them, they might say, okay, yeah, that’s great, looks good. We’re not interested and then go and recreate it happens all the time. All right. But let’s say before you disclosure, you call me you say, Listen, I’m gonna go through this disclosure in a couple of weeks, the first thing we say to you is we need to get something on file. So we show that you were the first to file, meaning, first of all means I was also first to create, if it’s someone else, they’re the first to create it. So we could file the provisional and it buys you a year, you get a whole year to do all your marketing, you can continue to make your designs, you can go back to your developer and keep making your manufacturer and make changes and get it to the point where all right, I think is now commercially acceptable, I can now you know, sell it to whoever or I can now start creating this product and commercializing it, at that point, you file a non provisional, so you’re technically patent pending, but you know, essentially just saves your place in line and it saves your day. So we file today, got it, and you file a year from now, you still get the benefit of that priority date of the date that you found a year later. So it’s always important to make sure you get everything you need to get done all your ducks in a row within that year. Now, you can turn around file the non provisional, get it examined all the way through, and hopefully you get a registered patent at the end of it.

 

Andrea Sager  16:35

So what is the current timeline of getting a patent a full patent.

 

Bennett David  16:41

So if you go through the standard process, the standard process right now, it can easily take anywhere from two to three years. A lot of it has to do with the fact that the USPTO has a heavy backlog, you know, they you know, they they have examiner’s who are overloaded and they have all these different cases they have to examine, you know, they have a certain amount of time, they have to get them done by so as you go through the standard process, you can expect from the time that you file to at a time hopefully you receive a registered patent, it could take three years. But once you go through that process, your patent pending, you can start advertising your product, your your idea is a patent pending idea. And that is enough notice, essentially put people on notice, hey, no, they actually have something on file here more maybe this potential company interested in you, you know, that’s where a lot of valuation comes in, as well. So that’s, that’s part one. Part two is they have at the Patent Prosecution Highway. So if you for an additional nominal fee with the USPTO, they have all these different fees. But you know, for nominal fee, you can have the whole process completed within a year. So what does that nominal fee, I think right now is around $1,500, depending on the size, so there, they have like micro entities, small entities, and then obviously large company. So depending on where you fit within that scale, the fee can change. So you can pay the additional fee on top of the fee yard had to pay for the non provisional filing. And then as long as you do everything or your attorney takes care of everything, you know, in a timely fashion, they promise that you will go from filing to registration within a year. So maybe that is a novel idea. And for a lot of companies that’s very enticing, because they’re like, Hey, we’re trying to carve this space, we want to carve it fast. And we know where we have, we have a great idea that we want to push it to the public. And we want to get ahead of our competitors right now and be protected.

 

Andrea Sager  18:28

Okay. And so for trademarks, I like when I had my law firm, I was doing flat fees. I know for patents, it’s harder to do a flat fee. But would you say like a small business comes to you and they have this product, this invention that they want to protect? What is the average cost that they’re looking at paying, including filing fees, everything involved?

 

Bennett David  18:49

So going from just the preparation or going through the entire

 

Andrea Sager  18:53

the entire Yeah, the entire start to finish very easily. It

 

Bennett David  18:57

could range depending obviously, depending on the examination process, and prosecution is taking place and easily can be anywhere from eight to probably 15,000 very easily. It is an investment, you know, but it’s also an investment in your protection. It’s also an investment in your business. I tried to say it’s kind of like insurance, you know, you don’t want to go to the doctor without health insurance. You don’t want to drive your car, you actually some states won’t even let you drive your car without car insurance. Exactly. You know, so it’s insurance for your business, but also look at it like an investment. Once you’re able to get your your patent registered, you’re able to find a certain valuation of how much it’s actually worth banks actually look at that as an asset in your business. Oh, absolutely. And I think that’s the part that people miss are people comes with trademarks when it comes to patents, even trade secrets, you know? So there’s, there’s very various areas that when you are able to get valuated, they can say oh, your company is worth, oh 10 million, you might not have 2 million in the bank, but you have an asset that’s worth 10 million, you know, and then if we’re you know, all of our business owners, entrepreneurs who understand what that means, I mean, think about all the funding ideas now. I know that you’re able to think about in order to really expand your business to a whole new level. So yes, it’s a 10 to $15,000 investment for potentially, hopefully a 10 to $15 million valuation. So it’s important.

 

Andrea Sager  20:12

One thing that I want to touch on because I love that you’re talking about value, because I try to teach a lot of business owners, a lot of our audiences, very small business owners, a lot of side hustlers. And I try to teach them look, it’s not just about this cashflow. It’s about creating value in your business. Because at the end of the day, like that’s going to be your ticket, not just this cash flow right now. And I even so Legalprenuer we’ve gone through, we did a small friends and family round, but we’re about to start raising money again. And but I also talked to a lot of startup founders going through, you know, debating, like, hey, if we’re gonna raise money, what are we going to do? Like, how are we going to fund our business, and I tell them all the time, like, don’t be afraid of debt, don’t be afraid of debt, and going to those banks to get that line of credit to get this business loan, showing these things in your business increases, that value increases your chances of getting funding, just from a bank debt from a bank, like debt, sometimes, especially depending on where you are in business, a lot of times debt is way better than getting that VC funding, at the end of the day, it is going to be way cheaper than getting a VC that’s going to take 20 50% of your company, when everything is said and done with because if you’re if you’re a startup founder, and you start funding from day one, you’re going after VCs from day one, when you go to sell your company, most likely, you’re not going to own more than 20% of the company. That’s right, it is in your best interest to bootstrap from the beginning. And bootstrap includes debt, it just means you don’t have outside investors, a bank is not investing, when you have debt, it is just debt that you can pay off over time. And being able to show the value of your business is much higher than just this cash flow that you have. It is critical, and being able to make that decision of okay, we can just fund with debt versus VC money.

 

Bennett David  22:00

Absolutely. And even if you take it a step further, like going back to your point about you know, you selling your business, I have several clients, like hey, I just want to build this business up by their serial entrepreneurs, and then I want to sell it to someone and then I’m gonna move on and I’m gonna flip it and move to the next one completely. Okay, you know, I would love to be like them. That’s why I like working with them. But typically, that’s what they do. I mean, they turn around, they get their portfolios evaluated, and they’re like, oh, okay, so it’s worth this much. Because the end of the day, we think about these major mergers and acquisitions, people always wonder, how did they value that company that much? Right? Yeah. They’re, they’re looking at the IP, they’re looking at, you know, who they’re who their commercial base is. And they’re like, Well, we know how much money we are investing and we know what our return is. So here’s our offer, you know, but if you come in and you don’t have anything protected, you know, your your liability, your company’s a liability, why would you be attracted to a Google or an apple or Facebook, you’re not going to be attracted to them because they built massive IP portfolios. That’s what they care about. Can we work in that space? And they enforce them and go after other people who are trying to do what we’re doing? Can we do it?

 

Andrea Sager  23:07

Yes, yes. Oh my gosh, but thank you so much. Oh my god, I so glad that I had you on here. I know that we could talk so much longer about patents but please tell the audience where can they find you? How can they reach out to you if they might have an idea that can be protected if they have an invention that can be protected? Where can they find you?

 

Bennett David  23:27

Sure absolutely. Bennett David at David IP law.com Is my email or www dot David IP law.com You can find me there Instagram we’re trying to build our social media presence at patent litical. You know, I try to be very analytical element of my clients patent portfolios and, and things like that. So that’s where you can find me and look forward to working with any and everyone of all sizes.

 

Andrea Sager  23:56

I love it. They call you David, I knew I was gonna do that this whole time. Bennett thank you so much. And don’t worry you all everything will be in the show notes. You can just click there find everything that you need. Bennett, thank you so much. This has been great.

 

Bennett David  24:10

Absolute pleasure. I look forward to it.

 

Andrea Sager  24:14

Here at Legalprenuer, we’re committed to providing a supportive legal community. For all business owners. I know how scary the legal stuff can be. If you found this information helpful, I would be so grateful if you could share it with a fellow business owner. And quite frankly, it doesn’t cost anything to rate review or subscribe to the show. Your support helps me reach more listeners, which allows me to support more business owners in their entrepreneurial journey. Have any questions or comments about the show? Feel free to drop me a line on Instagram. I promise I read all of the messages and comments. And if you want to be a guest on the show or know someone that would make a great guest simply fill out our application form and a team member will reach out if we think it’s a good fit. I’ll see you in the next episode.