In this episode of Patent Pending Made Simple, Jamie and Samar talk about the ins and outs of prototyping and whether you should have one before filing your patent application. They discuss the costs of prototyping, how it can help you in the product development process, and what you should consider before prototyping your invention.

Summary

The conversation discusses whether a prototype is necessary before filing a patent application. It is clarified that there is no legal requirement to have a prototype before filing a patent application as long as the invention is described in sufficient detail. However, prototyping can be beneficial in working out kinks in the invention and discovering potential changes that may need to be made. The decision of whether to prototype before filing a patent application depends on factors such as comfort level, cost, goals, and the nature of the invention.

Takeaways
There is no legal requirement to have a prototype before filing a patent application.
Prototyping can help work out kinks in the invention and discover potential changes.
The decision of whether to prototype before filing a patent application depends on factors such as comfort level, cost, goals, and the nature of the invention.

Chapters

00:00 Introduction and Background

03:49 Is a Prototype Necessary Before Filing a Patent Application?

07:34 The Benefits of Prototyping in the Patent Process

10:17 Factors to Consider When Deciding to Prototype Before Filing a Patent Application

In this episode of Patent Pending Made Simple, Jamie and Samar interview Stephen Key, one of the foremost experts in the world of patent licensing. They discuss the patent licensing process, the role of a provisional patent application in that process, steps to bringing an idea to market, prototyping, prior art searches, and so much more!

Summary
Stephen Key, a patent licensing expert, shares his insights on how to protect and commercialize ideas. He emphasizes the importance of focusing on the benefits of an idea rather than just the features. Key recommends starting with a Google search to see if the idea already exists and then reaching out to companies that may be interested in licensing the idea. He suggests using tools like provisional patent applications, sell sheets, and videos to test the market interest before investing in prototypes. Key also discusses the importance of teamwork with patent attorneys and agents to create a valuable patent.

Takeaways
Focus on the benefits of an idea rather than just the features.
Start with a Google search to see if the idea already exists.
Reach out to companies that may be interested in licensing the idea.
Use tools like provisional patent applications, sell sheets, and videos to test market interest before investing in prototypes.
Work with patent attorneys and agents as a team to create a valuable patent.

00:00 Welcome to the Patent Pending Made Simple Podcast
00:15 Introducing Stephen Key: The Patent Licensing Expert
00:48 Stephen's Journey: From Ideas to Innovation
03:16 Demystifying the Patent Process for Inventors
04:35 The Initial Steps of Bringing an Idea to Market
07:12 Licensing Ideas: Stephen's Strategy for Success
08:42 Prototyping and Testing: Essential Steps Before Patenting
11:38 The Power of Provisional Patent Applications
14:05 Testing Your Invention in the Real World
17:17 Stephen's Advice on Prototyping and Filing for Patents
19:55 Navigating Patent Applications: Insights and Strategies
20:40 The Importance of Matching Claims with Business Objectives
22:10 Leveraging Patents as Negotiation Tools
23:29 Crafting Patents with Manufacturing and Detail in Mind
27:01 The Role of Prior Art in Shaping Patent Strategy
27:28 Building a Strong Team Beyond the Patent
28:28 A Real-World Example: Overcoming Prior Art Challenges
33:32 The Art of Patent Writing: A Collaborative Approach
36:55 Closing Thoughts and Appreciation

What is the difference between a patent and a license?
In this episode, Jamie and Samar discuss the differences between a patent and a license. Topics include:

• Key differences
• Do you need an issued patent to get a licensing deal?
• Are there benefits of securing a licensing deal during the patent pending phase?
• Overcoming fears and uncertainties around licensing an invention
• What is a license (a contract that allows someone to use your patented invention in exchange for payment)
• Licenses can be exclusive or non-exclusive
• Most common patent licensing deal structures (lump sum payment, royalty rate per unit sold, percentage of profits)
• Finding potential licensing partners
• Tips for writing a patent application with licensing in mind (understand potential partners’ portfolios, draft claims accordingly)

Timestamps:
0:00 - Introduction
2:30 - Do you need an issued patent to get a licensing deal?
5:15 - Overcoming inventor fears about licensing
7:00 - Defining what a license agreement is
10:30 - Exclusive vs. non-exclusive licensing
12:45 - Typical licensing payment structures
15:00 - Finding potential licensing partners (teaser for future episode)
17:30 - Writing patents with licensing in mind

Happy Thanksgiving to all! On today's episode, Jamie and Samar discuss the top mistakes that inventors make in writing and filing their provisional patent applications. For show notes, visit: https://outlierpatentattorneys.com/top-mistakes-provisional-applications

In this episode of the Patent Pending Made Simple Podcast, Jamie and Samar discuss patent related deadlines, including:

• The importance of patent deadlines (00:00-01:56)

• Pre-filing Deadlines (01:57-02:55)

  • Public Disclosures and Associated Nuances (02:56-10:13)

• Post-filing Deadlines (10:14-10:49)

• Responding to Final and Non-Final Office Actions (10:50-19:14)

• Other Deadlines (19:15-19:56)

In this podcast episode, the hosts Samar Shah and Jamie Brophy are interviewed by Jamie's two sons, Griffin and Jordan. The boys have questions about patents, which they ask during the episode.

They learn that a patent is a legal document that gives inventors rights to protect their inventions from being made, sold, or used by others. The process of getting a patent involves writing a patent application and submitting it to the Patent Office for review. It can take several years to obtain a patent due to the backlog of applications at the Patent Office. The cost of obtaining a patent, and more.

Once you have a patent, you need to mark your product as patented when selling it. This notifies others that you have the exclusive rights to the invention and discourages them from copying it. If someone does copy your invention, you can send them a letter asking them to stop. If they refuse, legal action can be taken by filing a lawsuit in federal court.

Overall, patents are important for protecting inventions and preventing others from copying them without permission. And, if someone does steal your invention, patents give you the right to sue infringers.

For transcript and show notes, visit: https://outlierpatentattorneys.com/patent-pending-made-simple/podcast/episodes/3

In this episode of Patent Pending Made Simple Podcast, Jamie and Samar discuss the differences between patentability opinions and patent infringement opinions. What is the difference, and when should you think about these concepts in your patent journey.

1. Introduction to the podcast (00:02)

   • Hosted by Samar Shah and Jamie Brophy

   • Catching Up (00:08-00:50)

2. Topic: Differences between patentability and patent infringement (00:51)

   • Initial discussion of the two concepts (01:13-02:41)

   • Just because you get a patent on something does not mean that you're not infringing on something, so you could still be infringing on somebody else's patent.

3. Is having a patent a good defense to infringement? ⁠4:02⁠

   • A client has a patent and they can still infringe on somebody else's patent, both of which can happen simultaneously.

   • Having a patent is not a good defense to patent infringement. Courts may not allow you to present that kind of evidence to a jury.

   • The different types of opinions that practitioners can draft: patentability, non-infringement, and freedom to operate.

   • Patentability opinions are straightforward, while infringement opinions are more complicated.

4. The importance of a patentability opinion. 7:57

   • Patentability analysis gives a good idea of whether a patent application will be rejected or not. It also gives an idea of what elements to focus on in the application to get a patent.

   • Litigation can cost upwards of $100,000 on the search itself.

   • The patentability opinion and the infringement opinions are very very different.

   • In infringement, you have to interpret the claim language and determine what is meant by each of those terms in the claims and that is kind of complicated.

5. The importance of non-infringement opinions. 12:09

   • When writing a non-infringement opinion letter, the quality of the opinion letter becomes very important, and the level of analysis that has been done is very important.

   • What to recommend to clients who want to know if they are infringing on something, and how to handle it.

   • Advice to those who want to do an initial search to see if they infringe someone else's patent before launching something.

6. Information disclosure statements ⁠16:50⁠

   Software patents are written often in a way that is indecipherable to clients. It is hard for the client to make a decision on whether the disclosure is relevant to their invention.

7. Information Disclosure Statements: The information disclosure statement is an ethical obligation to tell the patent office about references to the invention.

   • Cost considerations and ethical obligation to disclose relevant references (17:49-18:12)

   • Working with an attorney to establish search parameters and track references (19:01-19:23)

8. Conclusion and Closing Remarks (19:40)

   • Recap of key points discussed (19:49-19:57)

   • Disclaimer about legal advice and opinions expressed (20:27-20:44)