105: Patenting Guide for Consumer Product Inventors and Startups

105: Patenting Physical Consumer Product Inventions

December 8, 2021

With Rich Goldstein, Senior Patent Lawyer

105: Patenting Physical Consumer Product Inventions

Rich Goldstein is the Founder of Goldstein Patent Law. He has landed over 2,000 patents for his clients over the last 25 years. He is also the author of the book the ABA Consumer Guide to Obtaining a Patent. Today, Rich is going to share his wealth of knowledge with inventors, hardware startups, and small product manufacturers regarding the types of patents you can obtain for an invention, tips and tricks that optimize the process, and how to continue to protect your intellectual property as your hardware product evolves over the years.

Today you will hear us talk about:

  • Utility vs Design vs Provisional 
  • Time constraints of each type of patent
  • Steps that you need to take to preserve your rights
  • Over time, what do you do to protect with your ongoing development?
  • You want to make your claims specific enough, that it is still relevant to the marketplace
  • Filing a continuation in part to an improvement to your product over time
  • Filing a continuation, slightly different than a continuation in part

Product Startup
105: Patenting Physical Consumer Product Inventions
With Rich Goldstein, Senior Patent Lawyer

00:00 | Kevin Mako (KM): Hello product innovators. Today, we learn from a senior patent attorney and author on the types, timelines and tips on attaining a patent on your invention.

00:11 | Voice-over: You’re listening to the Product Startup podcast. The show that helps bring your product idea to life, by chatting with successful inventors, product developers, manufacturers, and hardware industry professionals. Our goal here is to get to the bottom of what makes a product successful, from initial idea to getting your product on store shelves. We’re taking you step by step to build a functional product and scale your product business. Hosted by Kevin Mako, one of North America’s leading experts on hardware development for small product businesses. Now, on to the show.

00:46 | KM: Welcome back everyone. Today, I’m very excited to introduce Rich Goldstein to the show. Rich is the founder of Goldstein Patent Law. He’s landed over 2000 patents for his clients over the last 25 years. He’s also the author of the book, the ABA Consumer Guide to Obtaining a Patent.

01:01 | KM: Today, Rich is going to share some valuable knowledge to inventors, hardware, startups, and small product manufacturers on the types of patents you can obtain for an invention, tips and tricks along the way, and how to continue to protect your intellectual property as your hardware product evolves over the years. Now on to the episode. Hey Rich, welcome to the show.

01:18 | Rich Goldstein (RG): Hey, thanks so much for having me, Kevin.

01:19 | KM: Really looking forward to having you on the show today to talk about patents. Looking at it from a high level, then getting into some of the tips and tricks. As well as some of the actual structure behind how they work, the different types, and whatnot. Why not just kick it off with a bit of your background, how you got into this over 27 years ago?

01:34 | RG: The main way I got into this was studying electrical engineering, learning that the reality of being an engineer would be working on the same project day in and day out for years at a time. And that just didn’t fit my personality. And also my ADD nature, right?

01:48 | KM: I like to work on different things and that’s what keeps me interested. So I learned that being a patent lawyer would mean taking my engineering background and then applying it to the law. In other words, you need to be an engineer and an attorney to be a patent attorney.

02:04 | RG: So it sounded interesting. I went to law school and I did something rather unusual, I started my practice, right out of law school. It’s pretty much unheard of. Usually what happens is that a lawyer will start working at another firm. They might work there for a number of years and, over time, develop relationships with clients and then leave and go out on their own.

02:23 | RG: Thereby, have some clients. So me starting right out of law school meant how was I going to get clients? So I did a bunch of interesting things. But essentially what it comes down to is I’ve just always had a love for entrepreneurship. A love for marketing. And so I just kind of started from the ground up. And 27 years later I’m still here.

02:44 | KM: Well congrats for doing that. You and I started in a very similar fashion, the same thing as in the design world. Generally, design firms are brewed out of folks who’ve been engineers, industrial designers at big Fortune 500 Design Houses for years.

02:55 | KM: And I was in the same boat as you. I started right out of high school. And then incorporated it at university. And then I turned down the job offers to jump into this full-time. So I know how much of a grind it is. I don’t know if I would recommend it to everybody though.

03:07 | KM: But when it works it’s great. But it’s definitely a rocky road to get to that gate in any case. So Rich, in terms of the patents, why don’t we start just explaining what the different types of patents are among utility, design, and provisional, and how they work together?

03:22 | RG: Absolutely. Typically, when you’re thinking of an invention when you’re thinking of a typical inventor and a typical invention scenario where someone has an idea for a product. And they spend time trying to solve the problem, trying to make one that works better than things that came before.

03:40 | RG: We’re probably talking about a utility patent. Because a utility patent is all about the functionality of a product. It’s about the structural differences that are there for a functional reason. So, as distinct from just the way that the product looks, right?

03:55 | RG: It’s like if we’re talking about how we’ve improved the product to make it work better, we are likely talking about a utility patent. And utility patents are founded on words. Like, there’s a great deal of words that go into a utility patent that define what the invention is and what other people would need to do to infringe that patent.

04:17 | RG: So that’s a utility patent. On the other hand, a design patent is just about appearance. Just about the way the product looks. It could be just the shape of a bottle and the different series of undulating curves and grooves. And that’s what a design patent is all about, just the way it looks.

04:35 | RG: And now think instead of the words in the patent. Think about the pictures. The way you infringed the design patent is by making one that looks substantially similar. So two very different types of patents in terms of how they’re formed and in terms of what they protect.

04:50 | RG: And also in terms of how you infringe them. You infringe a utility patent by meeting this precise definition of words known as the patent claims. You infringe your design patent by having someone look at the pictures and say, hey, it looks pretty close, and then that’s infringing.

05:07 | RG: So those are really the two main types of patents. And you mentioned the provisional too. So a provisional is not actually a patent. There’s no such thing as a provisional patent, but there’s a provisional patent application. Because what it is, is a stepping stone towards a utility patent.

05:26 | RG: So again, utility patent being about the functionality you can file a less formal description of your invention as a provisional patent application with the United States Patent and Trademark Office. And what it does is it gives you a year to then finish up the process and file that full utility patent application.

05:49 | RG: The thing though that you have to be careful about with provisionals is the priority you get from that provisional. The priority you get from filing it and that foot in the door at the patent office that we’re talking about, that priority is only as good as it is well written.

06:04 | RG: So sometimes people will say, well, I could just write up a few paragraphs and file it. And they do file it and they get back a filing receipt from the United States Patent Office which says, yes, here is your provisional patent application.

06:18 | RG: Here’s the serial number, the filing date. And they think, oh, I guess I’m good. I’ve got my application filed. But if you just wrote up a few paragraphs, if you ever needed to rely on that priority to show like, hey, look, I filed my provisional back in 2020. Chances are it won’t be good enough.

06:38 | KM: I guess the important consideration there is, well, first of all, you only have a year to file your full utility patent. But second of all, the key is that if somebody infringes within that year you can only rely on the data that you actually put into that original filing.

06:52 | KM: You can’t say well, we’ve now engineered it and prototyped it, and here are all the specs. And we intended that within the brief write-up we did in our provisional. That won’t apply. It’s only what’s in there, which will give you essentially that date stamp material, that foot in the door material that you said with the patent office.

07:07 | RG: Yep. That’s exactly right. It’s really only about what you do file. That’s why, again, that priority you get from filing that provisional is only as good as it is well-written. It is only as good as it’s well-expressed. And it’s only as good as, like you said, what was actually put in that application.

07:24 | KM: That’s very relevant too, from the design firm perspective as well. Because when we’re developing a product, almost anyone who comes to us with the original idea, that product will evolve as we’re designing it and engineering it and prototyping it and whatnot. 

07:38 | KM: And that product, much further down the line, especially when you’re in the final prototyping or pre-production, or whatnot is likely going to be substantially different, at least from a patent perspective, from the original description.

07:49 | KM: Or at least at a bare minimum, it’s going to have significantly more details. That detail is going to be a lot of the value in what you want to actually protect. Because a lot of those details, a lot of those engineering specs, that’s the utility that you’re going to be basing your patent claims off.

08:02 | KM: So it’s quite important that you’ve got a lot of that work done. So that you have that material and understand what you’re really building into your patent that you want to protect for the longevity of the next 18, 20 years of your product under that patent that you are intending to apply for, once you go to your full utility.

08:19 | RG: Absolutely. And I think it really begs the initial question of what actually is unique here, with regard to the product? And sometimes the best use of filing that provision, for example, is when what is unique is really the core combination of elements or really the core concept to it.

08:42 | RG: A lot of times we have a concept for something, and we think that it’s a whole new concept. And then it turns out that, well, maybe there are some differences there that we can get a patent on, but it’s more about the details. But in a situation where someone truly is correct, and it actually is the concept, it is the main ideas that are themselves unique.

09:05 | RG: Then that provisional could be quite worthwhile. Because then what you’re seeking to protect, I think we were talking about sometime earlier with regard to broad claims, you’re seeking to protect that concept, those main portions of it. 

09:20 | RG: And if you establish through that provisional that you invented those main parts that could be critical. If while you’re pursuing the ultimate patent, there were other people who talked about similar concepts, who maybe got to the patent office a bit after you, the fact that you could point to that provisional can be very important.

09:39 | RG: But if it truly ends up being about the fine details that you develop later, then the provisional is not going to have much value. Because really, if we’re focusing on things that weren’t in the provisional, then what’s really the point of the provisional?

09:52 | KM: That’s powerful stuff. I appreciate you mentioning the differences as well. Looking at it between the early days and the later stages in development and whatnot and how that actually applies. You mentioned the design patent and the utility patent. Can you do both of them at the same time?

10:06 | KM: Or do you recommend doing both of them at the same time? Or what strategy is there around that if you have some aesthetically beautiful thing, but also in combination, you have some core technology that you want to protect on the utility side as well?

10:17 | RG: Yeah, absolutely. Very often I do both for a client. I file a utility and a design. This has evolved over the years too. Like going back say 20 years ago, if you said, should I do a design or utility? I would say, well, absolutely do the utility. The design has limited value because it’s only for the way that it looks.

10:44 | RG: And if someone changes the way that it looks, then they’re going to get around the patent. So the utility is the more important patent. That has changed a bit over time. The utility is still an important patent if you’re able to get broad protection for the concepts. But a couple of things.

11:05 | RG: First of all, a lot of utility patents that I see out there are very limited to details that people could easily switch up and get around the patent. And, that really is just because they didn’t invent something as new as they thought it was.

11:21 | RG: But then also, when it comes to the design protecting the way in which the product looks, these days people don’t get imaginative when they copy you. They don’t say, well, that’s a cool concept, let’s get inspired by it. And let’s take our designers and let’s see what we can make out of this concept.

11:42 | RG: No. They just knock it off exactly the way that it is. And if you have a design pattern that looks like the knockoff, then you’ll be able to shut them down.

11:53 | KM: I like that you’re giving two layers of protection too. You’re protecting both sides of the coin in different ways. Because at the end of the day no patent nor is any product bulletproof from the market or from IP infringement or from core cases or whatever it might be.

12:08 | KM: But the point is you want to make it as strong as possible. You want to build up as much protection as possible. And if you’ve got two different avenues, you might as well, at a bare minimum, look into both of those options, if not getting both options.

12:22 | KM: Especially as your product evolves, or especially if you have some value that’s baked into that design that actually provides some of that market value. Before we go too much into the timing and details and approach to how a product can evolve and what you can think about in terms of patenting, can you just give a bit of light to the concept?

12:43 | KM: You talked about broad earlier, and I think it’s important for people to understand the difference between broad strokes claims and narrow claims. But also understanding that most patents today are a combination of existing technologies. It’s very rare that something is entirely novel.

12:59 | KM: Like someone has created a light bulb that was never made before. Most of the work that we see in any case from the consumer product standpoint are combinations or iterations or modifications of existing technology. And then that all comes down to how broad and how narrow your claims are. So can you speak a bit to that arena?

13:16 | RG: Yeah, absolutely. And, first of all, you’re absolutely right that like most new inventions are not just something completely pulled out from a vacuum. It’s something that existed before that you then improved upon. Most patents are an improvement on something that exists.

13:33 | RG: And speaking of vacuums and speaking of light bulbs, like let’s use that as an example. So it’s like if your idea was to basically take a vessel that you put a filament in. And the filament is just like a glowing piece of wire or a piece of thin wire that glows when you put electricity through it. And you recognize that that’s quickly going to oxidize and burn out.

13:59 | RG: So you take the air out of that chamber. That’s basically the invention of the light bulb, right? You’ve got a chamber that has a thin wire through it that you run electricity through. It glows. And because there’s no air in there it won’t quickly burn out.

14:14 | RG: So that was the invention of the light bulb. So back when Edison invented the light bulb, he essentially could get a patent on that basic concept of having, let’s say a clear vessel, which is evacuated from the air, and then having a wire going through it. Right? A simple concept.

14:34 | RG: Now to infringe that patent it’s like, what could someone possibly do to get around infringing that? It seems like that’s the essential nuts and bolts of what makes a light bulb work. So that is in itself a broad patent. And that’s what a broad patent claim would be for is that simple concept.

14:53 | RG: But then someone comes along later on and they improve upon that light bulb. And they say, even though it doesn’t burn out quickly, it seems very vulnerable to shock. And so if you put a light bulb in a lamp on a table, someone bumps into that table, that hot wire is quickly going to break.

15:12 | RG: And so then you kind of come up with a way of taking that filament and connecting it with a couple of springs, let’s say. And so now the very thin wire is suspended on springs, which we tend to absorb the shock.

15:25 | RG: So now you’re able to get a patent on essentially a light bulb that has that thin wire in a vacuum chamber, but where the wire is connected to the external wires with a couple of coil springs.

15:40 | RG: So then now that’s what you’re protecting. Now, this is more narrow than the original patent of the light bulb. But it’s what is permitted by the prior art. Because you couldn’t get a patent on just the idea of a light bulb because it already exists.

15:53 | RG: You can’t write claims or you can’t patent that which already exists. So you have to find a way to distinguish yours, make it a bit more specific. But now here’s the key, you want to make it specific in a way that still is relevant to the marketplace.

16:09 | RG: So if the specificity you added is the fact that it’s connected with springs. Well, then the question to ask is, is this actually making it a more marketable product? Is this making it a better product? So that if someone sees it and says like, well, we want to make light bulbs but we want to do it Kevin’s way with the springs.

16:29 | RG: Because if that’s what people really want now, a shockproof light bulb. And so if they recognize then that essentially you’ve patented the spring suspension for a light bulb, and that’s important to sell the product, then that’s a valuable patent.

16:47 | RG: If it was more limited than that and there was some other feature which  you could take it or leave it. Then that’s the type of details that lead to a very narrow and limited and kind of worthless patent. So that’s kind of how that works.

17:02 | KM: That’s great. And it’s so applicable when you’re thinking about hardware products and innovations. Because most of the time, what you see is combinations or improvements of things. But it comes down to those really, as we talked about earlier in the call, those specific details.

17:15 | KM: And generally, as an inventor or somebody’s a project manager or an industrial designer, engineer, electrical, mechanical, whatnot, you’re going to be looking at these innovations. And you’ve discovered something that really will improve the world around you for some reason or another.

17:31 | KM: That’s why it’s so important to look at the patent angle. Get that level of specificness that you’re looking for so that you can protect that core innovation, that core thing that’s going to differentiate you in the market. You want to make it difficult so that not only when you come out to the market with this great new feature, your example is great, the spring in the light bulb coil.

17:52 | KM: Not only do you have this feature, but if the market starts demanding it because it’s better than a traditional light bulb or whatnot, then you make it very difficult for a competitor to do the same thing. They’re going to have to think of some new technology to compete with you, but that’s the whole purpose of the patent.

18:06 | KM: You want to get your core technology, that key market innovation that you found so that you can protect that for many years forward. But in a very detailed way. Looking specifically at engineering specifications, especially in consumer hardware products it comes down to these engineering details. 

18:21 | KM: Of course, the broad strokes ideas are important as well. But so much of that specific nature of the claims are going to revolve around those detailed engineering components that you’ve actually put in to make your innovation or your idea work, both from a conceptual standpoint, but also as a real product.

18:39 | KM: Which, from a manufacturing standpoint, you want that thing to be able to be producible and workable. And if you figured out a way to both make innovation and something that’s producible that the market wants, that’s the golden triangle.

18:50 | KM: And that’s what you really need to be focusing on protecting. And like you said, you can do it both from a design and a utility standpoint, and that’s so powerful.

18:57 | RG: Yeah, absolutely. Now you’re singing my song. So essentially,  I think about it as a Venn diagram. You’ve got the things that make something patentable. You’ve got the things that make something marketable. And if you can patent the overlap between those two, if you can take that feature, it could be some fine details about the product that the patent claims focus on.

19:24 | RG: But if those are the things that people really want and need in the product then that’s valuable. So that’s really what you’re looking for, the overlap between what’s patentable and what’s marketable.

19:33 | RG: And when you can find the sweet spot between those two, that’s when you have a valuable patent. That’s when you have a patent that’s going to prevent the competition from doing the thing that’s making people want to buy your product.

19:46 | KM: Yeah. That’s brilliant. And it’s important, I think, to look at it from that standpoint. It may not be, but you tell me Rich. In your experience, how often is it that all the technical details of a product are patented? Probably very rarely.

20:02 | KM: It’s like you said, it might be 25% of it, but a really core, really important 25% of that product which is actually what the patent revolves around. The rest of it is just the remainder of the product that you need to get to market.

20:15 | KM: And I think a lot of inventors don’t realize this. They look at a product and they say, well, I want this whole thing patented. I want all this technology or all this design work. Well, that’s unlikely. Because a lot of it’s already been done before.

20:26 | KM: Or certain pieces of your product have already been done before. It’s putting it all together in a unique way in combination with maybe pieces of core technology you’ve developed that really comes down to that the core power of that patent.

20:37 | RG: Yeah, absolutely. And let me just look at the reverse situation of that too. So it’s like sometimes the example you gave was like, where someone is looking at their product and saying, hey, we want to get this product patented.

20:47 | RG: But let me give you the reverse of that, which is that people will say, oh, I want to make something similar to that piece of hardware, but it’s patented. But what do you mean it’s patented? Well, it’s got a patent number on it, so it’s patented.

21:00 | RG: Well, no, the product isn’t patented, there is some aspect of it that’s patented. There’s some core combination of features about it that’s patented. It’s like people often look at a competitive product and say, well, that’s patented without thinking that what it really takes is to dig further and see actually what about it is patented.

21:22 | KM: That’s a big one. I’m glad you brought that up because generally, if anything in and around their product idea is patented, you see a lot of inventors just throw their hands up and go, oh shoot! It’s over.

21:33 | KM: But if you haven’t seen it on the market or nobody’s doing it well, or you have a unique spin to it, or you haven’t taken the time to actually look into what’s patented, which comes back to what you’re saying there Rich, there might be more meat on the bones than you think of this idea. And it’s at least at a minimum worth further exploration.

21:51 | RG: Yeah, absolutely. And just a little footnote to that too, whether every feature of the product is patented is kind of a matter of the budget of the company too. You have bigger companies that have more money than they have the quantity of products that they’re putting out. And they’ll look to get a dozen different patents on the product.

22:14 | RG: And they might have limited value. Well, many of them have limited value. I wish that the value of the patent matched up with the amount of money that a company is willing to invest into patenting a product invention. Those two don’t usually coincide. There are companies spending millions on patenting very thin innovations.

22:39 | RG: Like really there’s not much there. And then there are other companies that are spending very little when they have really groundbreaking stuff that they could get valuable patents from. So, I’m a big proponent of education about this. I’m a big proponent of entrepreneurs understanding how this works so that they can make appropriate patent decisions.

23:00 | RG: They could look at something and say, maybe these last three products didn’t have much that was patentable about it and that’s why we didn’t spend money on patenting it. But now this fourth one, there’s a lot of potential here. So let’s focus on this.

23:15 | RG: Probably one of the biggest mistakes I see entrepreneurs make is being too overzealous on patents that they really invest heavily into their first or their second product, which maybe wasn’t very patent worthy. And by the time they get to the third, which is the thing where there’s a good amount of innovation, they’re already feeling kind of burnt out on patenting.

23:36 | RG: It didn’t really do much for them in the first two products, so why bother for the third? So having the right discernment about whether you have something that’s going to lead to a valuable patent in front of you is going to lead you towards getting the right patents at the right time.

23:52 | KM: I’m glad you brought up the concept of further products down the road and the patentability as well. Because I do know that a lot of entrepreneurs feel like when they’ve released that first thing, that’s it. But there’s a lot of value to be driven, of course, first from market feedback from your first product and engineering improvements and manufacturing improvements and all the rest.

24:16 | KM: But taking all of those and looking at when you develop your next version of it, whether maybe it’s a pro version or heck even the cheaper version or something, or maybe just an accessory for it, there’s value in that incremental innovation that you made there. There’s value potentially patentable there.

24:34 | KM: So I think it’s very important to look at the patent strategy as something that evolves, as you mentioned. Instead of going top-heavy down, you can actually have it consistently run through your business as you’re scaling, as you’re adding more products, looking at those incremental innovations, and seeing how that fits in.

24:52 | RG: Yeah, absolutely. So, I think the first thing to consider on that is when you actually have waited too long to start the process. So, first of all, if you make an invention public and you haven’t already applied for a patent, you immediately lose the rights in much of the world to ever patent the product.

25:15 | RG: Or let’s say the core concept of it if that’s potentially patentable. And in the US, if a year goes by from the time in which you first made it public, then you will have lost rights in the US as well. So generally, if you’re ever going to be doing anything with regard to patenting, you want to file before you make the invention itself public.

25:01 | RG: So there’s that. Let’s keep that in mind. Also, keep in mind that it’s a first-to-file system that we’re in. Even if you weren’t too late in filing with regard to your behavior, then it’s also possible to lose the rights because someone else filed before you.

26:01 | RG: So there are two ways to kind of lose out. One is from other people. Other people get into the patent office before you. And the other one is just by virtue of the fact that you made it public and you lost the rights to it.

26:18 | KM: Those are really important considerations, two very important things to keep in mind before you go public with your product. Because keep in mind that beforehand, especially as a design firm, we get access to all kinds of proprietary information. But it’s protected under a non-disclosure agreement and it’s behind the scenes.

26:36 | KM: And that’s okay. But the moment that you actually take that and put it onto a website or social media or whatever, it might be that you do an investor pitch competition, which is public, not a private investor pitch competition, but a public one, you have to keep in mind that you’ve now established a date. And that clock is ticking.

26:52 | KM: And not only is the clock ticking, but at any point, somebody may get in front of you in line and just simply take your innovation and file it themselves, which is what you referred to in that first-to-file thing.

27:03 | RG: Yeah, exactly. And so that’s something to be aware of, just establishing your rights at as early a time as possible. But now pointing towards the illustration and the question that you’re asking about like the product developing over time.

27:20 | RG: So imagine that we filed a patent application before the invention was public, but then let’s say 18 months later we come up with a key innovation. We come up with a feature that really makes the product a lot better. What we could do at that point is file what’s called a continuation-in-part.

27:43 | RG: So basically that would be a patent application where it was mostly what you had filed 18 months ago, but now you’re also adding on to it the innovation. And so now the patent office will look at it as if, okay. So a part of it is this new. A part of it is this innovation you’ve added that you’re now filing, let’s say November 2021, December 2021.

28:10 | RG: But part of it was filed back in early 2020. And so they give you credit for the fact that most of it was in the original application. I guess the bottom line for this is if you’re going to develop it over time, the thing to have, which helps you with this, is having an application pending of some kind.

28:38 | RG: The way the patent office rules work is you can file that continuation in part application with your innovation, as long as you have another application still pending. So imagine you had filed whatever two years ago and it got approved. It got approved after a year and then issued into a patent.

29:01 | RG: So you have a patent in hand on your product, but now you have this innovation and you want to do a continuation-in-part. You can’t do it because that other patent is already issued, it’s no longer pending. So what people tend to do in terms of their IP strategy is, even if that first patent was approved, before it issues they file another application called a continuation.

29:29 | RG: Not continuation-in-part but a continuation. Basically just going along from that first one, and maybe now trying a different set of claims, a different possible combination from that original application. And that continuation might, as long as it’s still pending, you can file that continuation in part. Now you can add the innovation on.

29:50 | RG: So it’s like a chain of applications that companies that have evolved IP strategy, that’s what they do. They keep the chain going by keeping an application pending. Even after their application is approved they file another one.

30:06 | RG: And then they file another one. So that’s core to the strategy of being able, as you’re asking, to be open and available and able to pursue those later improvements is by having an application pending as long as you can.

30:25 | KM: This is incredibly valuable information, especially for hardware startups. And we talk about this regularly on this show, one of the best things you can do to really create a world-class product is, of course, first and foremost, to start with a great product. Then you go to market.

30:40 | KM: But more importantly, listen to your customers at that point in time. When you do go to market with your first 500 units, listen to what they say. And those innovations, both from your engineering team, your internal team and the market are likely going to guide you to some pretty powerful improvements to your product.

31:00 | KM: That may be some of your most patent-worthy or most valuable pieces to the long, let’s say 10 or 20 lengths or life cycle of your actual product itself. And especially when we’re talking a lot about additive manufacturing, doing a short run to get your new product to market, listening to customer feedback, pre-selling on Kickstarter and Indiegogo.

31:22 | KM: As well as getting feedback there before you’ve even gone to production. Well, the tools that Rich is talking about here allow you to have a bit of patent protection in the early phases of your early filing dates.

31:33 | KM: But then also capture that value as your product evolves, which is very likely in a new product going to market, especially if you’re a new brand. So I really appreciate Rich you bringing that kind of advanced patent strategy insight to our listeners.

31:46 | KM: Because I think that, especially in the hardware space, that’s becoming more prevalent. Especially as a short run or test run manufacturing is becoming more prevalent as part of the planned strategy of getting a product to market. As opposed to tooling up 50,000 units and then hoping that works to sell over the next few years.

32:05 | KM: People are starting with short runs and doing iterative improvements. It’s kind of taking from the software world of agile development. Bringing that into hardware now that we have all these advanced tools that are available to us in the hardware space to keep iterating and developing and perfecting that product.

32:20 | KM: And of course, at the end of that, we want to have all those iterations and improvements protected from an IP standpoint as well. So thanks for that insight. Rich, if we’ve got folks who are interested in learning more about how to do a patent with you or a patent strategy with you, what’s the best way to reach out to you and your firm?

32:39 | RG: Yeah, absolutely. Hey, can I just add a little footnote to what you’re saying?

32:43 | KM: Yeah. Even better.

32:44 | RG: Yeah. So I think really the key to all of this is having strong communication between whoever’s handling the patent strategy and your engineering team and the people that are handling the business strategy. Like having open communication where people who are looking at the business strategy know what features are being developed by the engineering team.

33:09 | RG: And your patent team knows what the engineering team is developing and what your business people are focusing on. That’s key to all of this. It is having communication between those three entities. And yeah, If people want to learn more about me or get in touch with me, of course, I’ve got a website, goldsteinpatentlaw.com, which is a way that you can get in touch with my team.

33:34 | RG: Find out if it’s a match to work together with us. There are also learning resources, series of videos that help you better understand the patent process. I also have a book that I wrote for the American Bar Association that explains in plain English, how patents work, it’s called the ABA Consumer Guide to Obtaining a Patent.

33:56 | RG: You can get that on Amazon. And lastly, I’ve got a podcast too, which you’re going to be on soon. It’s innovations and breakthroughs. And really, I feature people who have taken their path towards innovating a product and taking something that was just a mental concept and bringing it out into the world.

34:15 | RG: And I love telling those stories. And that’s pretty much it. And it is really awesome to be here in this conversation with you and your audience talking about patent protection in the hardware realm.

34:32 | KM: Rich, much appreciated for being on the show. I really look forward to being a guest on your podcast as well. And with that we’ll say thanks a lot. And we’ll see you next time.

34:41 | RG: Thank you.

34:42 | Voice-over: Thanks for tuning in to this episode of the Product Startup podcast. The show that teaches you what it really takes to bring your product to market and turn it into a big success. This podcast series is brought to you by MAKO Design + Invent, the original and leading firm in North America to provide global caliber end-to-end physical consumer product development to startups, inventors, and small product business clients. If you’re looking for product development help on your invention, head over to makodesign.com. That’s M-A-K-O design.com, for a free consultation from one of MAKO Design’s, four design studios from coast to coast. Thanks for listening and see you next time.


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