Interview with Rich Goldstein of Goldstein Patent Law on When to Patent and When it is Useless

Hello everyone, my name is Ian Peterman, host of Conscious Design Podcast, and today we have Rich Goldstein, a veteran in the patent world with— well, his experience is, is much longer than mine. He's done— worked in this space for a long time, and really excited to have you on here to talk about patents and all everything that goes along with, with patents. Um, yeah, great to have you.

Awesome, great to be here. Thanks so much, Ian.

Yeah, so we had a little bit of a conversation before, and one of the, one of the topics that kind of struck really well, I think, between both of us is, do you— the question I, I get asked a lot is, do you even patent? When, when should you? Because there's a lot of people that think you always need to patent. You need to, you know, dive in and start spending tens of thousands of dollars just on— just because you have an idea. But you and I kind of agree it's not always that best. So, you know, my perspective as a designer, but I'd love you to share your perspective as a patent attorney. What's the decision-making process that you would go through?

Absolutely. And I totally appreciate that and how it is from the design standpoint. And I'm going to take the question and really divide it into 2, which is in terms of like, when do you need to protect something? When do you need to patent it? So there's the when in terms of like, what's the deadline? And then there's the when in terms of like, when is it a good decision to do?

So, yeah.

So first, in terms of the deadline, in general, you want to apply for a patent before you make the idea public in any way. Because under the law, if you make the invention public prior to applying for a patent, you immediately lose the rights in most of the world to ever apply for a patent. And most people don't realize that. And then in the US, there's a 1-year grace period. So if you If you allow a year to go by before you apply for a patent, then it will be too late to ever apply for a patent. And that's just even assuming that, that someone else hasn't stolen the idea. If someone else steals the idea, gets to the patent office before you, then it doesn't even take a year for that to happen. But let's assume that no one stole your idea and all that's happened is that you've made it public and you've let too long go by before you applied for a patent. then you lose the rights. So that's kind of like the legal side of it. And then there's the practical side of it, of when you should protect your invention. So the practical side is really more a question of like, is this the right invention to be applying for a patent on? Like, should you be putting in a patent application for this idea, or maybe you you should not. Maybe it's not worth the time and money. Um, so now in terms of this question, I think what it comes down to is, um, how broad of a patent are you going to get? Like, are you getting a patent that's just on the details, or are you getting one that's going to cover a whole new concept? Um, and most people don't realize that, that, that both of those— both of those are possibilities. Some people take the standpoint or the attitude that patents are extremely valuable, you need to get a patent. And other people say, well, if you, if you have a product, you probably shouldn't bother getting a patent, because they just change one thing and they get around your invention. And the truth is, both of those are possible. And the thing that makes the difference between whether you you might end up getting one of those very limited patents that someone could just change one thing and one that could be very valuable. It's a matter of how new your invention really is. Because a lot of times people don't have a solid sense of how new their invention really is. I mean, back in the '90s, I used to see a lot, you know, a lot of people had this notion of, well, you know, your TV remote control is always getting lost in the couch. It's getting misplaced. Maybe I should, you know, have something— what if I came up with an idea for something that attached to the remote to help you find your remote when it's missing? And, you know, that to them seemed like a really new idea to have something on the remote, let's say, that made it beep or— something where maybe you can actually locate the remote on some type of grid and know actually where it is. And so people would think like, oh, that's a great idea, let me try to patent it. The problem is that many people have had that idea. Many, many people have that idea, and there are already many patents issued for variations of that idea. But it might turn out that if you did a patent search, um, patent attorney would do some digging and find out like, okay, well, there are all these patents for different remote control locator type items, but yours is different in that yours requires you to go over to the TV and you press a button and you hold in that button, um, for 10 seconds, and then the— and then the device will start blinking and flashing For a 20-second interval. And then if you hit the button on the TV again to reset it, then it will stop. But if you don't hit that, then again in 30 seconds it will flash and beep. And then so the patent attorney might tell you, oh, you can get a patent on your invention. And you're like, great, I'm getting a patent on a remote control locator. But the truth is, because of all the other patents that already existed that were already similar, what you'd be getting a patent on then is the one which requires that you press a button by the TV and hold it in for 10 seconds, and then it beeps and it flashes for 30 seconds. And then if you don't go to the TV to hit the button again to reset it, then it will in 30 seconds again beep and flash. And so that's what you end up getting the patent on, but you don't realize it. And so you think, I got a patent on remote control locator. And then, so this is still the '90s, so you're, you're looking and you see in the Sharper Image calendar— catalog, there's a— someone's got this, their remote control locator. And it's a remote control locator that you press a button and it just starts beeping, beeping, beeping, beeping, beeping continuously. And you're like, they stole my idea. And so you go back to your patent attorney and you say, hey, look, they're infringing, let's go after them. The patent attorney says, well, it's not exactly what's covered by your claims. Because your claims are limited to, uh, beeping, blah blah blah. And then it says, see, I knew it, they stole my idea, they changed one thing and they just got around it. And the, the point though was that they didn't really steal your idea. It wasn't your idea to begin with. There were plenty of other people with beeping remote control locators. You just had a specific variation at that point that you were able to patent. And so this is often where people get confused, and this is where people, you know, this is how those myths develop, like, oh, if they change one thing, they get around your patent. The truth is, most of the time, the idea that you have isn't as new as you think it is. I'm scared to hear it. And so the important thing to figure out is how new is it? What about it does make it new? And then now we have to take a second look at like whatever that thing is that makes it new. Is that the thing that people are going to insist on having in their product? Are they going to insist on having in their product the fact that like it beeps and then it stops beeping and then you have to reset it and then like if you don't reset it then it beeps some more? If that's the thing that people really want in their product, then great. Then maybe that's something you should be patenting. But if you—

if—

but if you look at that and you say, well, you know, that's not necessarily what people are going to want in their product, they're just going to want it to beep. And I'm not able to get a patent on the fact that it beeps. And I'm not going to be able to thereby prevent the competition from saying, well, let's just have ours beep continuously, then it's probably not a patent worth getting.

Right. Oh, that's— that exists so much now. I'm actually kind of curious how— if Apple patented their little tile locators. We're talking about locating devices because there's so many other competitors out there with a locating tile. So there's— yeah, there is still today, right?

Yes, exactly. And when you're at a certain level, the game changes a little bit too. So like with them, I bet you they do have patents on that. And maybe they go to those specific features like where it doesn't let you— or there's a feature that like if there's a Tile that's within range of your phone and it travels with your phone, then it notifies your phone that there's a Tile that's being tracked. And that's, I think, to prevent people from being unknowingly tracked. So like that feature, for example, perhaps that could be patented, that it's, you know, it easily links to and it pairs with nearby iPhones, but it has this kind of anti— well, this privacy protecting feature that prevents someone from sticking one in your backpack and that it'll alert your iPhone that like, hey, this Tile has been following your iPhone around. Is this your tile?

Right.

And that's, you know, so that feature could be protected, potentially, assuming that hadn't been done before. And, you know, again, this could be something where there is a nexus, there is a tight connection between the thing that makes people like the system versus not, that's got this privacy feature. So that would be the same inquiry, though. Is this worth patenting? Like, are people going to want that feature? Um, right.

But it's more, it's more that question of people— do, do people want, and is it a core— I think the core technology is a term I've used with people. Is it, is it going to be repeatable? Do people want that thing? Is it going to influence future products?

What's the buying decision? Exactly.

Or not?

You're going to be able to patent about this. Is that going to influence the buying decision? If not, then maybe you think twice about whether you should be patenting this.

And is there— so when you go through that process, if there's no reason to patent, is there ever a reason to patent simply to block other people from blocking you? Like, is there, is there kind of a defensive play that you go, well, I don't really care, but we might do that? and I don't want somebody else to patent it to try to say that I'm infringing on their patent. Is it, is it purely, you know, is that, is that ever a thought process?

It is, and it can be a thought process. But I, I, yeah, I wanna, I wanna parse out though, like, 2 different parts of that. One is that, um, by the way, when you get a patent, that doesn't mean you're not infringing anyone else's patent. Uh, I mean, this is a very commonly held belief, is people will say like, well, I'm going to get a patent to make sure that I'm not infringing anyone else. And you would think that that would be the way that it works because, well, hey, if I'm different enough to patent it, that must mean I'm different enough that I'm not infringing someone, right? But it just doesn't work that way because things come as building blocks, right? Patents are built as building blocks where if you've got a product with A, B, and C, then you can get a patent. A few years later, someone else has a product with A, B, C, and D. Now, adding that element D might be different enough that they say, hey, this is worthy of a patent, but you can't make your A, B, C, and D without making A, B, and C, and therefore you'd be infringing the first patent. So very often, you are, you know, you're infringing— you can get a patent and be infringing other people's patents. So having a patent doesn't mean you're not infringing someone else. But if you are launching a product and you're concerned, well, maybe someone else can come along and apply for a patent on the same thing that I, that I'm putting out, and then I want to avoid having that happen. Well, that could be a reasonable approach to prevent that from happening. But generally, your idea being out there in public before they apply for their patent would be enough to stop from— stop them from getting their patent. But as a practical matter, sometimes, you know, the Patent Office examiner wouldn't know about your product enough to, to say, oh, well, it's not patentable because of Ian's product from last year. And so they might grant the patent to that other person. Ultimately, you might be able to invalidate the patent, but at a big expense. So sometimes as a practical matter, as a practical defensive measure, you can say like, well, if I go ahead and I get a patent on this and it will be published, it'll be easy to find and easy to prevent someone else from mistakenly getting a patent on the same thing. So I guess that's the two, the two ways I would look at your question.

Right. Well, I asked that because I've had people come to me like, well, I want to, I want to, you know, they'll even pay me to do design expert. Well, figure out 20 different ways to do this product idea so that we can, we can kind of pre-figure out what are all the options? And then blanket patent every option in order to capture a market. It's definitely rarer to— far more rare for me to see that, but it's been an approach of more fearful startups that are like concerned about skipping something and then getting in and having to deal with the litigation later of of dealing with someone getting a patent. The other thing that kind of falls into that, and I think you've touched briefly on, is we now— US does first to file now, but it used to, and I still have people that think, oh well, it's if I had the idea first and I got it out there. But it kind of undoes itself a little bit because if you do actually launch, if you're first to market, and it's out in the public, then it becomes technically unpatentable. So is there, I guess, with that shift, is there any benefit? Like, is that a big change in how people should think about it for people that weren't aware that we changed over?

Well, does it shift? Well, I mean, shift towards not applying for the patent, you mean?

Yeah.

Well, I guess it's the same type scenario before. But again, it's like if, you know, if someone else applies for the patent, they can have a patent granted without anyone knowing about your product being public. Maybe in the end, you can prove it and invalidate the patent after you spend $100,000 on a reexamination procedure, you know, or on some type of post-grant procedure to have the patent validated. you know, or end up in litigation and spend hundreds of thousands in court and ultimately be able to prove that, hey, my product was on the market. And so rightfully, if the product is on the market before they applied for the patent, then you would be— then their patent is invalid, but it could be after a painful path.

Right. And it's my understanding, typically once you begin that litigation process, that's where That's where the money starts to rise quickly.

Yeah.

And cost.

It's unbelievably expensive. Yep. I mean, I, you know, that's why a lot of times having the patent in hand, it's— there's a good amount of momentum to that. Even if, even if a patent ultimately is invalidated, there's a good amount of momentum to it because it takes a lot of money to get a patent invalidated. So people get a lot of mileage sometimes out of even invalid patents.

Right, right. Just because it takes, takes so long and so much.

Yeah.

Is there, is there anything else other than, you know, this kind of decision path? If as a startup entering into the product world or a small business wanting to launch more products, you know, there's this decision, should I patent, should I not? As a patent attorney, what else do you look at as far as, you know, instead of just a black and white, is there a gradient? Is there, is there other things that you would recommend someone to be thinking about, right, in, in addition to that, you know, just initial yes, no, do the patent or not?

Right. Um, well, I mean, one thing to consider though, like, is even if it seems like you're unique, like it seems like that there's nothing just like your product, that you can, you can still be rejected if it's obvious. So this is one thing that, that I think it's probably expected that you can't patent something that's not new, right? Like if something existed just like yours, then you can't patent that. We expect that. We expect that patents are for something that's new, not for something that's old. But another level to that is that an invention has to not only be new, it has to also be non-obvious. And non-obvious means that even if there's nothing identical to it, if the difference between it, the difference between your invention and things that have been done before is something which would be obvious to people in the field, kind of within the range of what people would expect that they can do, then it's not going to be patentable. And, and, um, some common examples of this is like changing the size, changing the shape of a product. Um, it's like you have, uh, clothes hangers that are meant for big and tall people, and typical clothes hangers are just one size. and you say, well, I'm going to make mine specifically this size, that would probably be considered obvious because people that make clothes hangers know that they can make them different sizes. They just choose to make them one standard size because it leads to efficiency in manufacturing. But that would be obvious to just change the size of something like that or make something out of a slightly different type of plastic. It's like people that design products like that know that they've got a wide variety of materials that they could use. And even though no one has— even though it hasn't been documented of someone making it specifically out of that material, it's probably obvious and therefore it would be not patentable. So I think that's an important thing to consider, is that the invention to be patentable has to be non-obvious. And so you want to think of whether your idea is, you know, even if no one has done the exact same thing, does it fall kind of outside the range of expectations? Is it something which, uh, when people look at it, they would say, oh, like, they wouldn't exactly think to do that? Then that's maybe something that is potentially patentable as, um, as being non-obvious.

Right. I mean, that makes sense. It shouldn't be something that everybody is already doing in some way or scaling it. What about— I get asked this, and it's obviously not my area of expertise, but design patent and utility patent. And I've seen a rise in people, clients coming to me saying, oh, I have this design patent I have. And so there's Obviously that conversation, well, what kind of patent is, is the design patent becoming more and more valued? Because when I started my career, it was, it was kind of laughed at as not really a real patent. It was just something some people with extra money did. Larger companies did it and not really putting too much weight in that. Is that even a decision process? Are you seeing any more value in it?

Is it—

is it a stronger patent? What is it?

Absolutely.

So what do we think about those?

It's a very good point. So just to, um, just to get straight the differences though, utility patent is when you think of— when you typically think of an invention, you think about someone in their garage making something that's improved compared to things that have been done before. Like someone that hired Ian, someone that hires you because they're like, I want to make a better blah, blah, blah. And so you're thinking through how to make it better, and you're coming up with structural differences that are there for a functional purpose. And that's what a utility patent is all about. Design patent, on the other hand, is just about the appearance of a product, just about the ornamental appearance, they would say. So it's kind of like even beyond the function, like what's the, um, what's the design, what's the shape that makes it look pretty? Ornamental appearance. So traditionally, people have said like, yeah, I don't know if a design patent is really worthwhile because if you, if you make it look different, then it's not going to infringe. So all someone needs to do to get around your product is make it look different. Except for 2 things lately, and the 2 things that have really made design patents a lot more valuable these days and a lot more sought after. And, um, so one thing is that most of the time when someone copies your product, they don't get inspired by your product. They don't get imaginative. They don't say, that's a cool product, let's design our own with that same concept but like with our own design. No, they just knock it off. They just have 10,000 of them made. So when they unimaginatively knock off your product, a design patent will be in a effective tool for you to be able to say, nope, that's my design, and you can shut them down. And then the other part of it is that these days, you know, the greater majority of products sold, especially online, are sold on platforms like Amazon. And on Amazon, if someone copies your design, you can make an IP complaint without even hiring any attorneys, without spending big bucks, without spending anything and get them shut down. Now, the thing on Amazon is that you can make an IP complaint if you've got a utility patent and you can make an IP complaint if you've got a design patent. The difference is that utility patents, again, are about functionality and they're defined in words. There are words that define what is infringing that patent. In a design patent, The infringement is based on pictures. Does it look like the picture?

Hmm.

Now imagine you submit an IP complaint to Amazon, one for utility patent and one for a design patent. For utility patent, they're gonna say, we don't know how to interpret this. Gotta find some other way to figure this out. But I don't know how to read a patent and understand if it's about this nodule here and is your product have those same features? And so they're not going to quite know how to deal with that. But if it's a design patent, they look at the pictures. They look at the pictures of the patent. They look at the picture of the product that you say is infringing, and they shut them down. They'll say, yeah, it looks close, shut them down. And they tend to defer to IP owners. So it pays to be the IP owner. It pays to be the one holding the design patent. So these days, design patents have become a lot more valuable. And, and I do a lot of design patents, especially for my e-commerce clients.

That makes, that makes a lot of sense from a standpoint of understanding. You can understand a picture. Yeah, these 2 things look, look the same. Yep. We're, we're in agreement. We can't really argue, argue that point as, as much as we can. Well, this is a bunch of legalese language, and we're not, we're not your patent attorney. We're not going to interpret a utility patent for you.

Right.

So that's interesting. So that makes it— that makes a lot of sense, especially with how popular Amazon is getting and, and other platforms even, that, that's, that's a rise in its value because people are making millions of dollars off Amazon and they want, they want to protect that.

Absolutely. Absolutely. Well, I mean, there's a lot of kind of effective tools in IP if you know how to use them. And so I am a big proponent of educating people about IP so that they could make good decisions that help their business and not waste money on IP that's not really going to help them with their business.

Right. Are you seeing a a shift to where some people may even be skipping a utility and just getting a design patent depending on what their, you know, market is, or where that— the design patent's actually being more valuable in some cases?

Absolutely, absolutely is. Because if you imagine a scenario where, um, there is a design patent available because the product has a unique appearance. A utility patent may be available, but the product itself conceptually isn't that groundbreaking. There isn't that much that's different about it. So maybe you can get a utility patent, but circling back to the first thing we talked about, the utility patent you get might be kind of stuck in the details. And so a design patent might actually be more valuable. And, and Design patent costs a lot less than a utility patent. So there are quite a number of situations where people just do the design and, and that, that's more valuable than any utility patent they can get for it.

That makes a lot of sense. Awesome. Well, to, to kind of wrap up here, it sounds like, you know, just, just as an overview, You really, really, the decision-making is, is, is this something that is going to actually affect your sale? And some, some cases it might be the look, you know, your design aesthetic might, might actually be part of why somebody picks your product, in which case, you know, a design patent would be, could be a smart choice. And if it's not, then just get it to market and not, you know, if a patent is not going to really be defendable or or really worth it at the time, getting it to market is also a way to protect it in, in some regards. You may— hopefully you don't have to end up in litigation about it, but, but still.

Well, I guess the way I would encapsulate is to say that you make the decision early about whether you are going to be pursuing a patent. And if you're not, just make the decision and move on and move on with, with everything that you need to do with getting the product out and launched and don't look back. But you do need to make the decision early. But it doesn't always pay to go ahead with the patent. And if you don't, then again, just move ahead with the things that, that, that are going to make the product successful and don't look back with regard to the patent.

Perfect. Well, for anyone that is looking to get patents done, design or utility, Definitely, you should be in contact with Rich Goldstein. And where can people find you in order to get a hold of you?

All right, awesome. Um, well, I mean, first of all, I, I'd like to offer that if people want to learn more about patenting, um, I wrote a book for the American Bar Association. Uh, they asked me to write a book to explain to entrepreneurs how patents work. It's called The ABA Consumer Guide to Obtaining a Patent. And, uh, If you want a copy, I'll send you a copy. You just email my assistant to assist@goldsteinpc.com and just include your mailing address because it's a physical book and your phone number because I need a phone number to order you a book through Amazon. But yeah, I'm happy to send you a book. And if you want to contact us to potentially work with us on something, you can go to my website. It's, uh, it's goldsteinpatentlaw.com, and there are some more educational resources there. And you could also select to, uh, schedule a time to talk with my team to, you know, find out if it's a match to work together.

Perfect. So step 1, read the book. Step 2, reach out and, and get something going. Uh, perfect. Well, this has been really great. I really appreciate your time and, and sharing this and Very happy we, we discussed design patents since that's probably my number one question I get now from people is, oh, well, should we do that or not? So it's been a great conversation.

Yeah, absolutely. Thanks so much.