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By J.D. Houvener
Patent Attorney and Founder

I’m a patent attorney, and I’m the owner of both Patent Law. So it’s a law firm, and we’re headquartered here in Seattle. We have three patent attorneys that are local here: James Bunts, Greg Dawson, and myself. We have attorneys in California, Chicago, and Tampa, and we’re growing. So it’s really fun to be able to serve clients nationwide. And we love getting out and doing discussions like this with people like you that are out there, entrepreneurs making a difference in the world. Education is a big part of what we believe in, and making sure that we get information like this out to the public because there’s a lot of misinformation out there about patent law. You can find a lot of, let’s say, armchair quarterbacks in this field, and people hear lots of things from shows they watch, like on Shark Tank or Entrepreneur World, or whatever it is that they hear, without actually getting the facts. And with the world, you know, the internet, we have, there’s so much out there that it’s overwhelming. And so getting information from people in the profession, much like tax or, you know, any other type of insurance, you know, it’s important to get it from someone who does that for a living. So, you know, while I still come humbly before you as a person that’s learning in the industry, it is what I’ve spent the past five years doing. So I hope to share with you what I’ve learned. And at least two big subject matters today, we’re going to dive into patents and trade secrets. This is a special focus class. We did one early in January where it was covering all four areas of IP: patents, trademarks, copyrights, and trade secrets. So we’re going to skip over copyrights and trademarks today; that’ll be for a later session. Today, we’re just talking about innovation. And help yourself to as many of these as you want.”

“So let’s take a look. So this is part of a series, um, patents and trade secrets. We’re going to dive in today, it’s May 3rd, learning about the law, that’s what we’re talking about all day today. And because it’s just four of us, it’s going to be really interactive. So if you have any questions, stop me, we’ll just pause and take a break and answer your question. I budgeted about a half hour of Q&A already, so, you know, it’s free, don’t worry about knocking me off schedule. Next month, we’re doing creating a plan, I mean, hopefully, all at least thinking about or maybe already starting a new business. Um, in your moonlighting or you’re already on your way, uh, putting IP, specifically patents and trade secrets into your plan, how those actually fit in. Uh, and then last but not least, in July after the holiday, we’ll be implementing those. So how to, what actually, what are steps to take. Uh, the class, it’ll be workshop style, we’ll actually do some things in the class about how to do searches, how to identify trade secrets, how to begin classifying them. And so I’m interested to see if we can get some people matriculating through the class. And we only have four here today; sometimes we’ll get people joining in midway. It makes it really fun. Thanks, sweetie.”

“Okay, great. So the agenda and our little behind snacks and all that, uh, we’ll do a lot, just a brief around the room just so we can kind of get familiar with who we are and what kind of, uh, industries we have represented. So if you wouldn’t mind, first name, um, if you’ve got a business started already, the business name, and your industry. Let me start over here, sir, Nasser, and all sorts of different things. Good, um, background in tech, okay, since uh, changed careers to therapy, awesome. Okay, there’s a lot of like innovative ideas dealing with the massage therapy trade, projects, separate from the massage practice. Okay, so you get a lot of things going, but that’s the one major effort. Good, and do you have a business up and running yet, business name or anything yet? Okay, but not, not for the massage therapy business yet. Oh, you do? Okay, do you want to share, and if not, Bodywork Seattle? Cool, awesome, man. Thank you. So tech entrepreneur went to massage, yeah, still innovating in that area, so excellent. Thanks for coming, Nasser. Okay, and next to him, No Kanji.”

“Okay. Okay. Okay. Any specific problems being solved with your apps? I see. So you’re okay doing the developing of several different types of apps. Got it. You’re the developer. Okay, we should talk. I’m considering doing a legal app, having some issues for this. Excellent. Well, it’s just kind of bouncing; I don’t know; I’ll just kind of keep things moving. Um, with my mouse, not my work. And Keith, ocean autonomy, marine piloting systems, autopilot. That is so cool; that’s so cool. Do you have a name for that business? Oh, she’s not telling me. Thank you. Okay. All right. And, uh, Keith, perfect. All right. Nina.”

“Okay, medical diagnostic service. Any specific ailments or health issues in particular? Okay, well for testing type stuff. And do you have, um, a business started, or it’s just kind of the very, very beginning stages? Okay, thank you for sharing, Nina. Okay, excellent. So, um, we’re gonna go over the patent law fundamentals for the first part of the session. I’ll try to keep us on track, and then we’ll do a bit of a workshop just to test our understanding of that and then dive into trade secret law, talk about how laws are enforced, statewide, and how there’s a federal mandate and how to protect that through the Defend Trade Secret Act. We’ll do a small workshop and then open up for questions. Trade secret, I don’t have any in slide information here; um, that is an interesting subject; I could look into. I didn’t have anything prepared for that. Okay, so these are the four pillars of IP. Now, for some of those that I think here, intellectual property, this is what it means. There are a couple of other smaller areas, so I’ll mention those, but patents, um, is the one that comes to mind first when I think of intellectual property. This is inventions; these are designs and functional inventions, and they’re protected by the US government. They give you a 20-year limited monopoly in exchange for you sharing your invention or how to make something work. Trademarks protect a brand, really more to do with protecting a business, uh, and making sure that the customer knows where they get their goods from. It’s the source identifying, so brands, logos, that all fall underneath the trademarks. Copyrights are more of the juristic, more the right that protects creators, you know, authors, singers, performers, um, all different kinds, right? Visual sculptures, I mean, it covers a wide range of artistic creations. So that’s the domain of copyright law. Trade secret is, um, it’s quite different than the rest where you don’t actually get, you know, a document or a federal right. It’s more of a protection that you can get if you enforce it within your employment structure. So it really is all a part of being, keeping things in your company in the right way and enforcing confidential information in the right way, and I’ll go through what that means a little bit more. Privacy law actually does get tucked underneath intellectual property because privacy is such a big deal these days. We do a separate discussion on privacy all around HIPAA and compliance on government compliance and terms and conditions. It does follow intellectual property related to privacy. It’s famous people and personalities. So it’s a different classification, but it can be considered a part of IP as well. So as soon as someone has a famous enough identity, um, they can then begin suing for things like defamation or slander that all fall underneath intellectual property too. But these are the four main ones that we talked about so far with Surf here in the startup. So intellectual property just want to get kind of a show around the room maybe we have a volunteer. How would you describe intellectual property if you had to someone asked you on the street?”

“I would just say, um.”

“Description, good, good. Anything else, maybe a little more specific than that, like where those ideas come from?”

“Okay.”

“Okay, close, close. It doesn’t have to be a company, right? Just from the human mind. Uh, that’s it. That is really the definition of intellectual property and what’s nice. What I like to say to add on to that is it’s the legal protection, the legal framework that supports innovations that come from the human mind. Okay.”

“Correct, yes, yes. And a plant patent. So we’ll get to plant pads. You do not get to get a patent for something you discover that comes from merely natural resources. You must be able to reproduce it in a lab setting, and so that’s sort of plant patents. How do they get to name them?”

“Well, so that actually goes to scientific naming conventions. You name, I believe the genus; I’m not an organic botanist. But there are ways to actually name, like, animal species and the animalia and the kingdoms and all that. But then if you’re gonna go to market with a product, that would fall underneath trademark as opposed to patent law. You know, like you heard the famous drugs, you know, Xanax, although that really has nothing to do with the actual drug that’s just more of a trademark, yeah, maybe that got to your question, maybe it didn’t.”

“Oh, I see. Oh, interesting. Yeah. Well, uh, I’ll have to come back to you on that one. That’s good. So okay, what is intellectual property? Why is it important? Why do we care?”

“Why are you guys here?”

“Right. No, your first inclination is right. It’s about the commercial success, right? It’s part of bettering society through commerce. And having the, uh, that be the motivation, prime motivation to try to help the world become a better place. We want to reward innovation. And so that’s why it’s so important. Okay, thank you for participation. So I want to bring it back a little bit to the constitution. So, believe it or not, this is a quote here from Article 1, Section 8: ‘To promote the progress of science and useful arts by securing for a limited time to authors and inventors the exclusive rights to their respective writings and discoveries.’ Okay, this provision is put in because at the time of the writing of the Constitution, there were these, you know, secret groups and societies that would keep information for a long, long time. They would produce products and mixtures, and they would sell things. And these groups would maintain this knowledge and not share, right? This is kind of this, you know, not, it wasn’t productive, right? They wanted to. So in order to incentivize that information to get out there in the world for people to want to share their information so we all would be smarter, the government said, ‘Look, we’ll actually, we’ll go to bat for you. We’ll protect, we’ll protect you. We’ll enforce your right. I’m going to give you a 20-year limited monopoly to share this with everyone if you know, um, if you want to tell everyone how to do it so that was, uh, that’s the reasoning behind patent law. So let’s, the first subject, let’s jump in. So patent law at its heart gives to the inventor. It’s just this exchange, right? The government gives you this right, the ability to enforce, protect, prevent anyone else from making, using, selling, or importing into the US. Right, assuming we’re just talking U.S. rights; there are certain international rights to talk about with patents for 20 years from the data filing. So that’s the exchange, right.

Um, so does it even qualify? This is one of the first topics we talk about when we talk with inventors. You know, is it even eligible under the patent laws? And so for utility inventions, these are the four main categories: machine, manufacturer, process (which is what a lot of software falls into), or composition of matter. Right? This would be chemical compositions or an amalgam of metals, a new type of alloy. Machines, there’s really anything, anything that you can touch and feel, any tangible device that has functionality, those are the four utility eligibility functions.

A manufacturer is more than one component, and it’s fascinating to know that you can actually put together an assembly of parts that were already in the common art. If they produce a unique outcome, so that’s really it. If you had four widgets, all four of those had already been patented before, but you’re putting them together in a unique way, and them working in as an assembly, what they produce is unique. That whole manufacture system and assembly are going to be unique and protectable.

Alright, so given that now, even if you’ve come up with something that you think is or that is eligible, right? It fits into one of those four. Is it eligible? Can you actually get through the patent office? Is the examiner gonna say, ‘Okay, this is good enough. This meets the criteria.’ This is what you have to prove to the examiner. Novelty, alright? This is worldwide novelty. You’ve got to show and prove that what you’ve come up with is the first of its kind ever. And the examiners are privy to quite a bit of information, right? Not just the U.S. Patent Office, not whatever has been filed in the U.S. system, but anywhere in the world that’s ever been published and translated into the English language is findable. They also look at what’s called nonpatent literature, which is academic journals, anything ever been published online. You could even cover things, you know, on YouTube, Reddit, strange places people have just discussed things or published them, whether on purpose or not. That could say, ‘No, this has been done before,’ and they would cite that to reject your invention and the claims that you’ve cited.

But let’s say yours really is the first of its kind, and you’re able to show that in this novel. You’ve still got to get past this non-obviousness barrier. Non-obviousness is an insight that examiners will look at and say, ‘Okay, well, someone in the field of your industry,’ let’s say you’re a watchmaker and you think you’ve got a new set of gears to put together this watch, but two years ago in the watchmaking magazine or the trade journal, there was a paper published that talked about how you could put a cog of this manner in with this type of a charger, but they didn’t actually do it. And there were different types of materials that they listed in that publication. It would be an obvious attempt, right? It was discussed but it wasn’t actually ever done. It was this an obvious iteration of a different style, and so that’d be a perfect citation examiner would use to say, ‘Now, this is just an obvious iteration, an obvious version of what’s already out there in the art.’ So they look at what’s available to that watchmaker. What’s the knowledge base of that watchmaker, the watch inventor? What would they be privy to to make that assessment?

Utility is a fairly low bar, but it does exist. So this means does the invention actually have real-life functionality today? Does it provide any real function today? And like 99 percent of inventions pass this far. Sometimes you get caught up in this issue where there’s no real-life application today. It’s like a futuristic application or it’s hypothetical. This does come into play a lot of times with drugs where they claim to, for example, lower cholesterol. And utility is the biggest bar to get past because they have to prove that actually does lower cholesterol, right? Or that the algorithm does actually reduce the RAM, you know, or the amount of electricity output, whatever it is that’s being claimed. For most other things, it’s not required, but certainly for claims that are sort of required proving it, utility can become a bar. But for most, it’s not a big deal. Okay, so those two last slides talked mostly about utility patents, and that’s what makes up about 80 percent of all patents that are issued today. They have to meet those requirements. Design patents must only – they’re not about functionality. Design only covers what something looks like and just the pure ornamental appearance of it. So that’s what the design patent is. It doesn’t have to prove any function or do anything. It’s just merely what it looks like.

We talked briefly about plant patents. Plant patents are where you actually provide a specimen to the examiners, and you show that you’ve been able to asexually reproduce this plant. You can down to the chemical breakdown. You have to provide the actual example so they can see that it actually is a unique strain, whatever it is you’re producing. Common plant patents are those in hops or apples or flowers, pineapples, you know, all different kinds of things. And you can actually get a patent and be the only one that could ever produce that or make, sell, or import those.

Recent law changes in patent law. The American Invents Act was passed in 2013, a few years back. It’s still kind of coming through and getting implemented as patents are now being issued that were filed in 2013. They take a few years to get issued. And so we’re seeing some interesting things happen. For one, the examiners are now privy to the world of all prior art, whereas before they just looked at the U.S. Okay, and after the AIA got passed, they instituted this brand new panel called the PTAB, Patent Trial Appeal Board. It’s a special Article III court where judges all day long, all they hear is patent cases. And so they hear invalidity claims, and they also will hear reissue attempts. So if you’re a patent holder and you’re seeking to enforce your rights on someone you think is infringing, you take, like, say I’m suing Microsoft. One of the first things that Microsoft would do is this. No, no, they’re gonna try to invalidate my patent before it even goes to federal court. They’re going to want to take it to PTAB and make sure that the claims I’m asserting against them are actually valid. It’s sort of, I think it’s a sad thing, but it’s true that even if the examiner and the patent office says, ‘Yep, here’s your patent,’ it can actually later become invalidated, right? Either because a mistake an examiner made or because the law has changed. So it’s one of those things like I wish it kind of wish it wasn’t the case that that could happen, right? You know, you get these rights; you’re kind of cleared that you’ve got the ability to prevent anyone else in the world from doing this, and the law can totally change underneath you. And that’s what happened with the AIA is that I wouldn’t have the air, but I’ll talk later about a big case about software where tons of software patents have been invalidated over the past three or four years because they’ve been decided to be abstract.

Alright, merely algorithms. There were just a sloth of them that were issued in the late ’90s and early 2000s around commercial transactions, around things that are just barely more equation-based databases, just doing what we already did with traditional calculators and pen and paper but just on the computer. And the judges since then have said, ‘No, no, those are invalid.’ So a lot of money had kind of been wasted in getting those rights because the law really wasn’t clear, and it did change. The biggest change in the AIA, I missed the first bullet point, was that before this for 2013, inventors could, you could, before then used to come out of the woodworks. You know, an application would get filed on a new rocket propulsion system, and you’d get three or four inventors saying, ‘No, no, no, I invented this first. Here, here’s my notebook. You know, no, no, here’s my notebook. I got it signed by my professor and certified.’ And there was, there were these interference proceedings that way they argue about who invented first. It’s a mess, terrible mess. You can imagine. So, and we’re going to save a bunch of money. It’s actually about who files first. It doesn’t matter who actually independently invented it first. It’s who gets it filed. So it’s a large impetus and a large wave of new filings because of this. They want you to have, you can create some urgency, you know, once you’re sitting around spinning your wheels in some lab. They want you to get it out to the world and publish it quicker, so that’s the big push there. So with timing, you know.

No, no, the only way you can get rights back today is if you can show that you disclosed your invention to party B and party B then filed it fraudulently, saying that they were the inventor. Right? If you can prove that they derived it from you, there’s a derivation proceeding now in the front of the PTAB. So that’s why it’s very important for all inventors to document whoever they’ve disclosed their invention to. And you should certainly do it under a valid contractual non-disclosure agreement if you have to, but I advise my clients to file before even disclosing to third parties just to make sure because it’s that important. And you can file a provisional and get that, yeah, the whole year that a provisional can provide in order to then disclose to investors, third parties, bring members on, do Kickstarter, whatever you want to do. Right? Any of the questions around that? Okay. I’m just kind of moving quickly because of the time here.

So statutory bars are really important, and we talked about disclosures just now. But if you share your invention with anybody from the public, right, without any air of confidentiality or not under an NDA, that starts a one-year window. And yeah, go ahead and help yourself. And that after that one year is up, you have dedicated your invention to the public. That window also starts if you put it up for sale. Even just offering your invention for sale begins that window. And in a recent case just this year was decided that even a secret sale offering starts that window. So right, even if you’re under NDA, making an offer to sell your invention that starts to win your window for statutory bar. So if you’re in that window and you’re worried about timing, come chat with me later. We can talk about your specific scenario. And one caution with non-disclosure agreements, you’ve got to make sure that all contracting parties are going to be bound to that. So who or who is in the agreement, right? If you are contracting overseas, you’ve got to make sure your work that contract is going to be binding with the other party’s legal system. That’s a huge endeavor, you know, even within the states, different states have different rules about contracts. So make sure you’re working with an attorney to make sure it’s going to be a binding non-disclosure.

Hey, welcome! So, um, alright. So say you’ve worked so hard, you’ve got all the way through the system, and you’ve finally got your patent issued. Uh, what happens if someone infringes it? So, these are the whole steps of the process, and you want to try to get through, huh? Okay. For most cases when we get approached by someone who says, ‘Hey, I found someone who infringed my own patent, you know, let’s go get them,’ we say, ‘Okay, hold on, you know, hold on.’ That’s your first kind of emotional response is, you know, to go sue and go try to enforce your rights. It’s important to do the homework first and be proactive instead of being called out on these steps.

The first step is doing a validity opinion. So what we do is make sure that those claims you’ve gotten – by the way, claims are the heart of a patent, uh, we’ll get to that, I think, in a little bit – so claims are basically what you’re in words saying what you own. We want to make sure that those would hold up in a court if they were brought, you know, given the current law. Right? We just talked about the difference. I think cracking it would be good. Yeah, a couple of inches. Thanks, son.

So, um, like I said before about the software patents, right, the laws can change on you. So you want to make sure you work with an attorney, know that your invention is valid before you go and force it and go write a nasty letter, take someone to court. You don’t want to get trumped and have to be reactive.

Second is an actual infringement opinion, right? So it may actually look like they’ve got the same product as you, they’re just ripping you off, but you’ve got to take a closer look at what your patent claims say. You might have these really nice visuals and designs, and you may have a nice broad specification outlining how your invention works. But as it happens when you go through the patent office, the examiner usually makes a lot of rejections, and you’ve got to usually limit your claims, and your claims end up changing and almost always smaller than what you think they really are when you read all those words. The more words there are, it actually means the less scope you have in terms of breadth of claims, what own what rights you really own, and even the invention might be on a new car, while your claims say you’ve got a unique fender, right? A unique fender with a certain bend and an airfoil. That’s it, and this other guy might be selling something completely different. So you gotta make sure you do an infringement analysis, infringement opinion.

So let’s say you get through those wickets, and hey, your claims look valid, and sure enough, it looks like someone’s infringing your claims. Um, you usually want to file, you send over a cease and desist letter. And this may be, you know, sometimes even put a little step in between there, and I like to have the owner try to reach out, right, to the infringing party, just non-attorney to non-attorney because sometimes a lot gets done without attorneys, I found. And if you can get to a cordial par, uh, you get to your goal, whether it be to stop them from producing or to have them come to a settlement. Things can get a lot cheaper for all everyone involved. But if you need to, if things aren’t working out, there’s no communication, they don’t really, you know, they kind of give you the middle finger and say, ‘Whatever, man,’ then you need to step up and hire an attorney to send a cease and desist letter, which in essence says, ‘We demand you to not only stop but pay damages based on the sales you’ve had from this and this time.’ And outlines in very clear detail how they’re infringing on your claims. And it’s a very threatening, very serious letter that’s meant to scare them. And you do threaten litigation. That’s what a cease is.

So assuming you get their attention, the goal then would be to go to settlement, which is a win in most cases, right? As a patent holder, especially if you haven’t yet built up your business. You’ve just got the technology, and you may have a business partner, someone that’s already building a product already in the stream of commerce. Why not think of them as a business partner and look to get a royalty right on every product they sell? There’s usually a nice shining, you know, sort of a silver lining to a lot of this in reaching settlement. If you can’t get there, go to an arbiter. Then we go to litigation, and like I mentioned, the PTAB is a common place where patents get litigated. It’s a lot less expensive at the PTAB because those judges are knowledgeable about the law. Right? Things take less time. These judges hear patents all day long, so it’s really, uh, the attorneys and the clients, and they know what to expect when they go to the, uh, federal court is kind of sort of the last resort, and going to trial is very, very expensive. Tons of discovery, experts, I mean, minimum, you’re looking at, you know, two or three hundred thousand dollars to take it all the way through to verdict on most technology. A different venue you can go to is the ITC, International Trade Control. Okay, so this is an avenue to go down if you’re not necessarily interested in monetary damages. Okay, you just want to get someone to stop shipping into the US. That’s what this is for. And what’s interesting about the ITC is they will not stay the hearing for a PTAB concurrent proceeding. Uh, so sometimes like I could get an example earlier where you’ve got, you know, I’ve got a patent and I’m suing Microsoft. One of the first moves they might make is to go. So, you go take it to the PTAB to go try to invalidate your claims.

If you have a co-pending federal case against them, the court of the federal jury at the district court will say, ‘No, I’m going to wait. I want to hear what the PTAP says first before I continue.’ The ITC, they’ll go ahead without waiting until getting a nice fast response. You’ll get the customs to basically stop shipment a lot quicker, but it’s expensive, and there’s some different pros and cons there. Like I said, there’s no monetary damages that come out of the ITC. So, if you want money damages, you got to go to either federal court or to PTAB to invalidate. Okay.

So, a long list of things that are required to file an application. I’m not going to go through every single one of these. I want to just highlight the three that are required to get a filing date. This is for a patent application, a non-provisional patent application. So, while you do have to submit all this stuff eventually to get that all-important filing date, you just have to file a specification, claims, and drawings. So, specification is a fancy word for a written description of your invention, and drawings are needed if it’s, um, I mean, for almost every case, you need drawings, but the requirement is to have claims. Okay, so claims are the heart of the patent. This is what defines your rights and what you’re saying you’ve invented, what you own. So, those are the three that are required in order to get there. The spec has to be enabled, so it’s a fancy word that just means you must fully describe it such that someone like yourself, an inventor in your field, will be able to take that writing and go build the invention, go make at least one version of your invention. That’s how detailed it’s got to be.

So, here’s, as compact as I can get it, sort of an ABC flow chart for specification or, sorry, for filing an application. And we meet with our clients, we go through eligibility, we talked about, you know, hey, is this even fit, are we even in the right game, you know, is this one of those four types of, um, patents? Is it a machine, an assembly, a process, or a composition of matter? Are they the right, are they the only inventor? Sometimes it’s the case, you got multiple inventors. So, make sure you understand who’s inventing this thing. And oftentimes we end up talking with a lot of employees of businesses that are actually going to be the owner of the invention. A lot of folks don’t understand that when they invent and they’re on the job, an invention likely is owned by the company that they work for under their employment agreement. So, those are all things you can get upfront and clear about who the client really is and what the expectations are for the business. A lot of inventors, it’s key to understand where their mind is, what their goals are, whether their goal is to just be a technologist and just come up with the new technology and license and sell it or if they want to grow a business. So, it’s important to understand the goals, we can help advise and give recommendations, uh, either way. Right, forming an entity, getting an operating agreement together, you know, helping you with investment or just looking for licensees and buyers.

And so the two big choices here after you do a patentability search is to follow a provisional or non-provisional application. There’s, um, in most cases, a new inventor, someone that’s doing this for the first time, we almost always recommend filing a provision. We do this because it’s a nice place to get the filing date, you get the patent-pending status, and you don’t lock yourself into claims right away, and you have all the way up to one year to file. When you file that provisional, you’ve got a full year to then file your non-provisional. And so, in that year, we recommend taking it to market, taking it to those people that might be interested in purchasing it, build the prototypes, take it to trade shows, test the market to make sure this is something you really want to go after. Check-in and see if it’s something you still want to do. And if it is, we’ll go ahead and write the non-provisional, roll up any improvements that have been made in that nine to ten months, write the claims at that point, and that’s the strongest way to get that submitted.

All right. So, I’m just trying to move quickly through this because I just got a little bit of a late start. But if you guys came in, you can just stop me if you want, ask questions as we go. Sure. Yes, there are CFR. Um, 35 CFR 1.84. I want to write it down, but that’s the guideline. There’s actually a lot, and we have someone in-house that’s all they do all day long is patent drawings. Uh, they have to be line drawings at the non-professional phase, and they must not have, you know, like three-dimensional shading. You have to actually show in specific lines, uh, where the curves are happening, and you most essentially have to point out the different elements that you’re claiming. So, the whole point of drawings is to be able to show the examiner, show the public, enable someone like you to actually go build the thing. So, to as much as they’re needed to be able to, you know, produce the invention, to be able to make it, that’s how clear you need to be. For a lot of software and process patents, they’re flow charts. That’s all the drawings are, right? There’s nothing to physically show, you know, and you would never want to put code or any kind of, uh, unless you’re trying to claim a novel graphic user interface, you wouldn’t want to show that, like they want to keep it as a trade secret. So, um, hopefully that got to your question. Great. Yes. Yes. Yeah, well, there’s a big market for that in what’s called litigation finance and licensing support. Say, say I’m a brand new startup, and I actually work hard for two or three years, get my invention patented, have granted rights, and yet I see Amazon or Google or Facebook infringing, and you say, like, I’m enough money, I can’t do this. Well, you can actually license your right to a bigger entity, right? Sell your patent rights to someone that could go take them on, so it creates a market you get to broker. Um, right. Well, what’s nice about the patent law is that when you file an application, it doesn’t get published for 18 months. Okay. So, you do have some time, and that I mean, it’s with a lot of things in technology, fast-moving technology, you’ve got to be quick to market. So, before you publish before you even file an app, you need to be doing a lot of work to build the prototype up in-house and keeping things as trade secret before you publish them. So, we advise clients very carefully if they’re doing like an investor pitch, uh, you know, pre-filing. You probably got really just I advise not at all if you can, if you can get the, get at least a document, you know, enough to get a patent filed first, do it, file it first before disclosing anything. Um, and there’s nothing to really stop you know, this issue of while you’re pending. So, even after it gets published, you know, it could be pending for a year, um, and companies could take the risk these big companies, right? They could say, ‘Ah, there it is, great idea, I’m gonna go do it,’ and kind of bet against you, hoping that you don’t actually make it through and get the patent granted. We do that all the time. We’ll send out letters saying, ‘Look, no, our client has a patent-pending invention that covers this technology. We’re putting you on notice that when patents do grant, we’ll be able to sue you for retroactive damages to the point all the way back to when they first got noticed. So, there are some, there’s some methods to do that, but sure, there’s risks, and happy to talk with you about a specific scenario

Alright, so how do you make money? We talked about some of that right here. Okay, so when you have a patent that’s granted, it’s like any other property right. It’s like your deed to the house or your ownership to a car. You’ve got the ability to fully transfer that. You can give it, devise it through a will, you can decide to sell it outright, and you can license parts of it. You’ve got four main rights, and I mentioned these: the right to make it, the right to use it, the right to import it, and the right to sell it. So, you could license just one of those rights. You can line up a manufacturer and give them a license to make it. You’re the only manufacturer that gets to make this product for me. So, that’s the ability for you to obviously get money or get money back for being able to do that. Someone’s able to sell on your behalf, right? They’re going to want it; they’re going to pay you a royalty for that license.

You can litigate. Okay, so this is sort of a way to monetize, and this is sort of classic patent troll, non-practicing entity type stuff. You buy patent assets and you just litigate. You look to try to threaten people and try to get them to settle or give you a royalty because of your rights. And the one nice side about patent trolls is that the inventor who sold, they got paid. So the knowledge got out to the world, and the inventor got paid. So in the end, there is still a good side to these patent trolls that get a bad rap.

Competitive advantage. You know, this is a good one. If you’ve done your job and you’ve enforced your rights, you’ve kept competitors out of your niche, you have a nice broad portfolio of patents, you’ve got a market corner, right? You’re the only person that can sell that one or two products or that service. So, it’s a big way to make money.

The PTAB, I mentioned, is just a different form of litigation than federal court, too. Just to show you some numbers, this is kind of fun facts. This is about a year or two old, but just to see who’s out there selling. So Mitsubishi actually is by far and away the most active seller of patents. They actually sold, this is just in one quarter, 166 patents. So these are individual granted patents. Most of them are overseas, but 42 of them are U.S. A lot of other companies here, you can see in electronics, computer science, and so universities get involved. So packages mean more than one patent, more than one patent right bundled together. I just want to show you some idea of how much volume there is. Now, who’s buying patents? And speaking of patent trolls, so these guys are real local, right? Mercer Island, Intellectual Ventures. These guys purchase an enormous quantity of patents and put together portfolios. They’re not alone; there’s a lot of other companies I never heard of before I pulled this up that are purchasing. This is just, again, in a three-month period of time, data published. So there’s a whole market out there for people willing to purchase patents.

And how much do they go for? This is interesting. To find out that U.S. patents are generally worth quite a bit more, 30 to 40 percent more than non-U.S. patent assets. But I’m surprised, actually, about how low the value is. I mean, this is sort of in the grand scheme, and this goes along with big portfolios of 10 or 20 patents being sold at a discount per asset. They’re being sold for around 200 to 250,000.

Well, I mean, the U.S. market is still very strong in the economic market, the economic upswing. That’s my guess. Is that, oh man Vince, I don’t know. I think it’s kind of spoils, and then I’ll let it go. Yeah, that’s my guess. Is that U.S. market is better just for people selling and then perhaps they believe that those patents issued are stronger. You know, they believe in the examination that was done.

Alright, let’s do a little workshop. So, I know some of you guys came in late, but let’s give this a shot. So, I’ll give you a couple of minutes to read through this hypothetical, and then we’ll come back in a couple of minutes, and I’ll ask for you guys to volunteer.

Sammy takes his invention to a trade show on January 10th, 2017, and people love it. They found it, but it doesn’t sell any. He just takes it there, tells people about it. He makes some improvements to his invention after the trade show. If he files his provisional on January 20th, 2018, when should he file the non-provisional, and why do you say that?

Okay, anybody else see anything here?

So finish what you’re saying. So, you’re saying it’s too late. Okay.

Say what? Yeah, yeah, okay, good. Anybody find anything else in here? There’s a couple, there’s one, there’s one other big thing I’m looking for.

He didn’t… he took to the trade show. He publicized it. Beautiful. There it is. So, a couple of things we hit on. So, the sale part was sort of the red herring. That’s the just because he didn’t sell any doesn’t matter, right? He published it to the public on January 10th, and so he has only one year to file a non-provisional on what he published. But the subtle catch was the improvements. If he did not publish those improvements, he could actually file on those improvements. So, he would have time assuming that, of course, he didn’t publish those improvements. So, that was the one subtle catch I wanted to point out there. Some people get into this issue where, oh my gosh, this has been on Kickstarter for two years, but they’ve been tweaking it, right? They’ve been actually modifying it quite a bit, and they have a whole different version than what’s been published. You could potentially file on that new version you’ve been keeping in-house. It’s not totally gone. Okay, well… say again, sorry? Okay.

I think, well, so, so I guess I’ll just say hopefully, get it right. The M, you, so you have Invention A as the core invention, and you’re saying that got published, and you didn’t protect it. It got protected by you?

Uh…

Okay, okay. Man, I don’t know why. Maybe this is late in the day. I’m not following you, so all I got to say is that if whatever has not been published to the public, you can seek protection for.

Yeah, so, so um, there’s something already out there that has a patent right. You can definitely get a patent for just an improvement on that. Now, but you have to pass that, yes. So absolutely, and their most patents that get issued today are improvements on current technology, absolutely. But the issue is that you’re going to need to likely seek a license from that patent holder if it’s not you to be able to take it to market, right? So, you’ve got… there’s a… there’s a patent on a new grill for a BMW, right? This brand new grille, and you come up with a way to actually make it more aerodynamic. So, you’ve added this additional sealant, and you’ve got a system for putting on an airfoil and little vortices to break off the air wind current. But it only is able to be added to this grille right, and Mercedes has a patent on the grille. You’re not going to market and sell your improved grille without getting a license from Mercedes.

Okay.

Okay, yeah. Your own design, yeah.

Okay, yes. So, in that case, in order to get it, no, you don’t need that. But, but actually what happens sometimes is the examiners will cite your own invention against you. You have to build a show, even for improvements that they’re novel and non-obvious above and beyond the prior art. We’ve had this before. Our own clients, right? They’ve got little changes to their invention, and the examiners say, ‘No, this is just an obvious change, an obvious variant of your original invention.’ So yeah, so that is normally the problem. Anything else on patent law? Move on to trade secret. My watch is broken. Do you have the time? Okay. Now we’re doing pretty good. We’ll try to leave some time for Q&A. It’s a trade secret; you see some really famous examples of trade secrets. The Colonel’s recipe and Coca-Cola’s secret recipe for the formula for the drink. So these are things that are kept within the company with the primary reason that they believe that it’s not reverse-engineerable, right? They’re selling a product, and they don’t think, you know, no matter what you do, you can’t figure out how to make this.

You don’t.

Yeah, yeah.

Yeah, no, it’s a trade secret. That’s what we’re talking about trade secret. These folks decided not to patent 110 years ago. Coca-Cola decided we don’t think anybody can figure this out, and so we’re going to keep this as a trade secret.

Okay.

Pratt and Whitney AMG, they have thousands of patents on jet engines. Oh my gosh, yes. Yeah, I’ve seen them. I worked at Boeing for 10 years been working propulsion, but I’ve seen plenty of patents on actual propulsion devices and fans and blades. Now, yeah. So tell me, so you’re worried about…

Yes, absolutely, absolutely. And so that’s the idea is that that’s the big test before you decide to patent something. If you can truly convince yourself that once it hits the market that people could not be able to break it apart. You know, buy it and figure out how to do it on their own. If they could do that, you’d want to seek patent protection for it.

So yeah.

This is, so trade secrets are, yeah, this is kind of like source code, source is is trade secret, and in almost every case, it wants to keep that within the company. Only if you ever wanted to start selling it or licensing software would you then want to seek copyright protection for code, right? Code itself is just like a book, like a story, a story can be told a million different ways just like code can be written a million different ways. So, you keep that under copyright law. So, we have a whole separate section. We talked about copyright law and software just like you would any other written language, but this is something you want to keep in-house and under top secret. So what’s the overall premise is that, you know, things that are not readily ascertainable. In order to qualify as a trade secret, it can’t be part of the public knowledge right now. It doesn’t mean that nobody knows, right? Maybe, you know, some people know exactly what goes into KFC’s recipe, and they don’t know it, okay. But, um, it must not be readily ascertainable, readily known in the public. That’s one of the big ones, okay. You’ve got to show that you’re keeping it secret. So, if it’s a written piece of paper, you’ve got it in a safe, and it’s locked and a limited number of people actually have the key, or if it’s in digital form, you’ve got it’s fully encrypted. It’s in the cloud, and only a limited number of people have access to it, and you’re monitoring access to that. If it’s, you know, it’s a building, you know you’re building a machine, you have a process that’s traded secret you have badges and you’ve got credentials and security that’s the element number two, you’re showing that you’re keeping a secret, going through efforts to show secrecy, and the third one is it must be economically valuable. You have to demonstrate to a court that your trade secret if it got in the hands of a competitor they’d put it to immediate use to make money. So those three elements are met, right? Not known in the public, that you are keeping it secret and that it’s valuable. You’ve got a trade secret. So you kind of think, wow, okay, that could mean a lot of things, and it in, you’re right, things like customer lists are trade secret, right? All of a sudden, your internal business processes become trade secret, and so it’s really amazing how much actually is a trade secret. How you do what you do in your business, I mean, I bet even surf right? But you guys have ways in which you have positioned this office or this room, you know, and those are different ways you might consider who has access to that information, right? Who and so it really is a lot about employment controls, and we’ll get into a little bit of that here too.

Alright, so people ask, okay, how do I know, do I have a trade secret? Um, and it’s likely yes if you have a company and it’s making money, you likely do, okay. I would mention this not readily ascertainable efforts to keep secret and economically valuable, um, so what can they be, you know, there’s a lot of things like at Boeing we, you know, we would have access. Some people would have access to our composite lab, you know, and that’s where a lot of trade secrets are housed. Boeing made a decision, for example, that they did not want to seek patent protection for certain methods of manufacturing. It’s a really common thing to keep as a trade secret mainly because of enforceability issues. So, if you have a novel way to produce something and it’s going to only be within your buildings, how on earth would you be able to tell if someone else is doing it without being inside their buildings? So, it’s another kind of way to look at something as well. Okay, even if I got a patent on this, what how would I build, monitor, and be able to tell if someone’s infringing, and if I can’t tell from the final product, right? If I look at this chair and I can’t tell if they used my foam producing method or not.

Just by the way it’s shaped, even if I open it up, I can’t quite tell if they use my phone manufacturer. I need to keep it as a trade secret; that’s a secret in-house mechanism. So a lot of it’s about monitoring and being able to enforce it later. Software is a huge one, so software and source code are definitely trade secrets. Formula is the same thing, just like Coca-Cola; I guess it could be considered a formula. So these are big points that kind of go beyond IP law. I just wanted to mention them here because they do vary state by state when it comes to employment agreements, and each state has its own laws about certain disclosure, certain limitations that employers can put on employees for non-compete agreements. Sometimes you’ll sign agreements; Washington is allowable. You could be signing an employment agreement that says even after you leave, you can’t start a competing company for six months. This is not uncommon, especially in the tech world. But in California, they’re invalid; that’s they want to have much more competition done in California. So every state’s different. Non-disclosure agreements the same way. Each state has its own rules around what means confidential information. There’s a whole baileywick of stuff to get into with regard to privacy and HIPAA information. Exit interviews are a great point to bring this up. If you’re an employer and you have employees, this is huge. You want to make sure that as part of that severance package that they’re getting or you’re giving them money, they’re confirming that they’re leaving information behind, that they’re not, that you then writing, they say and reaffirm that they are not to take this confidential information from your company. And that way, you really document that, and you’d be wise, especially if they’re higher-ups in the company or have a lot of experience, watch where they’re going, right? Just be knowledgeable, and you can actually inform their next employer, just to put them on notice. Hey, we have certain trade secrets, and we want to make sure that you acknowledge, without telling what the secrets are, of course, we want to make sure you would respect the fact that this employee has certain knowledge, and you wouldn’t want to misappropriate that. Now, would you? And by doing that, you might scare them enough to make sure that that employee does follow that.

Yeah, it is, and well, a lot of times it’s, um, it’s just part of the bigger employment law concerns. There’s, um, there’s, um, oftentimes a package, and I’m not an employment attorney, a lot of times there’s, you know, certain back pay or reasons where you’re going to have to put an outlay of money out anyway, that’s when you’d want to put that, even if it’s not a severance package, um, but it’s just, if they were, if they didn’t sign that agreement, they actually wouldn’t get their benefits. Um, I hope that answers a little bit. Yeah, it’s a little complicated when it comes to that. If they didn’t sign, you know, might mean that they lose their, they’re kind of waving their rights to other privileges, but the underlying point is that they’re still obligated to keep that information confidential. It’s just not really a good opportunity to, again, get it in writing if ever they were to misappropriate. So, yeah, sorry, I don’t have a much better answer to that.

So, computing security is a really big one. I mentioned the virtual workspace. I mean, it’s becoming more and more prevalent. This is huge. It’s harder and harder to watch employees, or they’re not always sitting in the cubicle, right? They’re all over the world, they’re all over the country. Um, and so making sure you can monitor access, even really closely monitor where the information is going. You know, for our law firm, for example, like no attorney is allowed to save any information to their personal computer at all, ever. Everything stays on the cloud, you know, that’s just one example. I’m not a security expert, but from what I’ve been trained to do, that is the best way to know exactly where all of our data is. It’s either on the cloud or not at all. So, it’s in my mind more secure to have it done that way. Now, a physical office, obviously you want to make sure there’s protections. Like I said, badging in and out, um, you know, protections around, you know, locking devices. If things are being stored on computers, you want to make sure they’re not going to get just walked out the building; they’ve got monitors on them or whatever it is to track them. Those are ways to keep the office secure. Any questions on that?

Sure.

Sure. Um…

Oh, like telling your employees that you’ve got patented…

Yeah, I would just say being as honest as you can. I think telling them everything, the whole story. If it’s patented technology, they should know that. Um, they will, you’ll want to make sure that if it’s trade secret, then you make sure that as part of your employment agreement, before you even bring them on, that employment agreement has confidentiality provisions that are specific to the technology that you’re wanting to protect. And before you give them access to that information, that they’ve fully signed and that’s a binding agreement, right? So if you’re afraid of them, you know, taking that information away, you’ve got that even more reason to have that agreement in place, uh, first before you bring them on. Uh, and another clarification there, a lot of times people get confused, there are different roles about independent contractors and employees. Um, there are different rules in place, and so there’s stronger, so there’s more… it’s easier to get enforceability for employees because they have to have certain domiciliary and there’s because you’re paying for their, um, they’re oftentimes their training, um, and their hourly wage, you’ve got a better… you’ve got the upper hand in terms of what access they have, tools and training. Independent contractors, it’d be tougher to put restrictions on if that contract weren’t already in place.

You lose your trade secret, yeah. And that’s what’s unique about trade secrets is that they don’t have to be novel, right? Two companies could actually have the same trade secret, um, and if, and if, whenever they become known in the public, they lose their trade secret status.

You have no way to enforce misappropriation, right? Exactly. And remember, don’t forget, the traits, you don’t… you don’t get rights like you do for a patent for trade; you just have the ability to sue for misappropriation if you can show those three elements. So you’re not able to show that it’s not readily known in the public, you’re not able to show, for example, that it’s economically valuable, whatever the reason may be, then you lose the rights, right? Now, a lot of companies, what they do is they’ll, they’ll have these trade secrets in-house as they create prototypes and as they work on products. They don’t publish them, but they keep it in these labs, and only when they reach a certain point, they file a patent, or if the timing’s right, but they keep them under wraps until they feel like they’re ready to be commercialized. But they’re taking the risk that no one else will innovate on that same area and take it to the public. There’s actually another little interesting wrinkle there is that a lot of companies, like IBM, are really well known for this and doing what’s called defensive publications. And so they’ll know that a competitor is working, perhaps they’ll have a good idea, a competitor is working in a certain area, and they’ve got enough resources and money to be able to actually innovate and publish new technology just in the form of a white paper in an academic publication, to where that will prevent anyone else, their competitor, from getting a patent on it, right? So it’s like, wow, my gosh, so it’s… they’re… they’re being really aggressive, right? They’re trying to block out anyone else from even innovating in a future area that could potentially compete with them. So it’s an advanced way to do it, um, a way of providing the public, you know, with knowledge, so it still provides a general good, so it still meets the kind of the sniff test. The really big case, really big case you guys might have heard in the news, Waymo versus Uber. So these self-driving cars, right down in Silicon Valley. So they’re, uh, there’s a huge case. Oh man, this narrator, this computer keeps doing this. But, um, ex-employee, uh, well, Ali was an employee at Waymo, which is Google’s… Alphabet’s company, Google Waymo, um, self-driving car. He was a chief engineer, just idiotic move. Downloaded 14,000, right? Documents from Waymo’s database, probably off their cloud. And within a week, left the company because a red flag, red flag. And within a month, started his own company, autonomous car, and then magically, that company got bought by Uber, a competitor in very much the same field. So, um, long story short, saving you some details if you want to go dig in, please do. That was going to go to trial; we were all… the attorneys were waiting. We wanted to get a ruling on this; we wanted to hear what the judges had to say about trade secrets. Um, and even had it all calendared, everything, but it settled. Okay, settled, but for a big number, 245 million dollars, huge win for, um, for Waymo, right? Uber had to pay; this is also a big feather in the cap for trade secret law, right? They were able to show that these were true trade secrets, enough to scare Uber to settle.

Well, it’s already in the public…

It’s in all these court proceedings. So much of this has already been publicized. There are certain parts of it that were under seal, but a lot of it got out. Um, but yeah, whatever was not publicized, Uber is not able to use. I mean, my gosh, if they… yeah, if they continue to misappropriate, that would be a big deal. So things that were kept under seal, they would… that would still belong to Waymo.

Gosh, I think so. I think so, yeah, yeah, yeah. Well, yeah, he did, and, you know, um, it’s… I believe there are criminal investigations going on between Uber, right? For sort of criminal espionage or corporate espionage. And, um, it’s ugly; it’s pretty ugly. Yeah, well, and, yeah, it’s one of those things, like, nobody wants him now; he’ll have to start his own deal, you know? But knowledgeable dude; I don’t know that much about him personally. Maybe… do you know much more about his… okay. Uh, let’s see here. Okay, there’s a couple more slides. Yeah.

Yes, yes.

[Music]

Of course, yeah, you can do that. No, I mean, that’s not… that’s kind of just… that’s kind of weird. Um, why would you do that? Just a scenario. The scenario is you don’t want your competitors to really know about it.

Well, so I mean, yeah, so this is… you’re saying a foreign language is that the idea or foreign, yeah. Um, yeah, the… in order to prevent the patent from getting issued, you have to, uh, the examiner has to be privy to it. So your idea is you’re kind of hiding it so the examiner maybe doesn’t find it.

You would force your competitors to waste a lot of money thinking they can get a patent; then you would just invalidate it by showing them this publication. I don’t know; you might get some sort of, like, latches, you know, like sort of like, uh, sitting on your laurels, like, type of thing, because, uh, I don’t know. That is an interesting case. That’s… I haven’t thought of that before. Very creative.

[Music]

Very, um…

I’m taking note of that myself; it’s good. You’re smart people, man. Nice. Well, okay, um, how do you make money with trade secrets? All right, well, the first one is that you’re… you’re… no one knows, right? You’ve got this way to deliver products that no one knows how you’re doing that; they can’t figure it out. And the biggie is that you’re able to do that for well beyond 20 years if you do it right, and that’s the beauty, right? You decided I’m taking this method because you think you can do better than you can with patents. Listen, sell trade secrets. You find a… maybe after you’ve tried to exploit it, you’ve sold as many, um, you know, these golf balls. You’ve got this way to put this type of material together. If you’ve tapped out your resources in your supply chain, but you’ve got this partner that knows how to make golf, golf clubs, and you want to do some license, some cross-licensing, you know, try to make some more money, well, you can let them in on your technology, and maybe you can come up with a way to provide a novel golf club head, you know, or something like that. Sure, okay.

How they’re… yeah, made. There you go. So there’s a lot of hypothesis that the last couple of years they modified the manufacturing process, and I think why is when they like pay for this. So what they did, they had X-rays, baseball.

Right, that’s cool. That’s cool.

[Music] Yeah, yeah.

That’s funny, huh? I didn’t know that’s a great one, exactly.

Totally, totally. Yeah, you can boil down the Coke liquid and figure out exactly the components of each chemical. But what was the heat compound? What did they exactly… how did you get that syrup in the right proportions and, you know, so very interesting. Yeah, so that’s certainly a way they could.

The wrong may have done that, but my idea is that multiple companies can actually license and explain their trade secret, taking a risk that the company will keep it secret. Right, knowing that the company you’re talking with will keep and protect it much like you would. But you can license that and transfer it to another party like any other, right? Um, and then potential patentability. I talk about this idea where you can keep things in-house for a long time, and then if you find out that it’s still commercially viable, then seek to publish it. As long as you haven’t sold it or published it, you can seek patenting on it even if you’ve kept it in-house for five, ten years. So Boeing does this all the time. They’ve got this Phantom Works; they’ve got hundreds of ideas that are currently classified as trade secrets, and they could seek patenting on them. They might not; they’re kind of going back and forth on whether they invest money and time and effort into them or not. Um, that’s what we do a lot of the times. We help companies figure out what do they have, right? They’ve got R&D company groups that just spin their wheels all day long. A lot of times what they’re doing is not aligned with where their business is going. The CEOs have no idea what the heck and how to classify what they’re doing. So just sort of like racking, filing, putting in the right priority items to go take to market.

So really quick workshop here. I got another story for you guys. This is a little interesting one. So, okay, while working on the job at big tech, Sammy signs an NDA (Non-Disclosure Agreement) with his boss to learn about a secret project called Neptune. It contained information about all the employees’ allergies. He later decided to share the spreadsheet with a large email distribution, including vendors, suppliers, and employees, to help raise awareness. Is Sammy liable for trade secret misappropriation?

Yeah, well, so it’s just with his boss, just within the company for now, for this argument. That’s a great question, by the way. I assumed this would be a non-disclosure between just within big tech. He’s limited to distribution only within big tech.

Not from… Yeah, exactly, so that’s…

Okay.

Okay. Do you think there is trade secret misappropriation?

Nailed it! Nailed it! Most people don’t get that. So right, you think, ‘Oh my gosh, this has got to be trade secret info,’ but now allergies? Well, there could certainly be HIPAA violations here and probably other privacy issues. It’s not economically valuable to big tech to know about employees’ allergies, so…

There is probably… There could be.

So, it’s extending the family of who gets access information, but of itself, it’s not necessarily a violation. It’s not for the general public.

Rights. Business is about blackmailing their employees about their [Laughter].

[Music] [Laughter]

It’s about technology.

[Music]

Yeah, yeah. That wasn’t where I was going, but yeah, totally. Yeah.

When I wrote this, I thought of my daughters. No, no, my daughters have nut allergies, so maybe this employee was like, ‘Oh my gosh, I don’t want anybody to bring nuts into the company.’ I mean, that’s the idea, raise awareness of certain allergies, that’s all. But you guys spotted it; you hit around that’s one thing I wanted somebody to pick up on is that it really wasn’t economically valuable. Yeah, at the high level.

So, one favorite quote from Mr. Addison is, ‘Genius is one percent inspiration and 99 percent perspiration.’ So what we can… Yeah, right. But you can learn all you want about the law, and it’s awesome you guys are here, but it’s going to take a lot of hard work to bring it to mark and get these projects off the ground. But the fact that you’re here has demonstrated that you’re willing to do this. You know, Thursday afternoon. So let’s talk. Any questions?

Man, I like to think everybody has one percent inspiration. Yes, um…

Yes.

Yeah, you… Let’s go through the rules. So, not really ascertainable. Um…

Keeping it secret within the company and economically valuable, sure.

Sure, sure, yeah. But I mean, as soon as you went public or as soon as you sold it…

No, no, you have a full year after you sell. But I’m saying as soon as you disclose it, the government is going to find out about it, uh, and at that point, uh, you not only… Yeah, you’d get completely, uh, stopped, and stopped using, you know, government eminent domain type of thing; they could come in and prevent you from doing anything and put you under. Oh, yeah, the government has enormous powers. Yeah, yeah. I don’t… I’m not in the government, but this is all kind of through hearsay, through knowledge, uh, law and law school. Yes, there’s tons of authority the government has to prevent just individuals out there in the world from doing certain things.

Yeah, they wouldn’t… They may not know. Well, right, they if and until they know, right? Yeah, and there probably are rules, um [Music] kind of like whistleblower-type rules, you know, for certain things, uh, you know, weapons of mass destruction, um, you know, certain types of things that could put people at risk and nuclear, you know, where even if even if your boss tells you, ‘Don’t tell anybody,’ you know, you’ve got whistleblower rules, you know, there’s certain privileges where you’re able to do that. I mean, you know, this is my thought.

Yeah, right. So that’s… Yeah, so assuming it’s patentable, assuming it’s eligible and patentable, and you’ve not sold it or published it more than a year ago, it’s eligible. This is the rule under under 35 USC 101, uh, 102a. Yeah, 102a, uh, it’s whether it’s sold or published; you’ve got one year. And I mentioned earlier even if it’s a private sale, even if you’re under NDA, talking with your manufacturer overseas, making it, just negotiating, ‘Hey, if you make this for me, here’s what it is, if you make this for me, I’ll, you know, um, I’ll give you a license or, you know, we’ll sell it to you, I’ll license this to you for this amount,’ that starts the winner timer.

And yeah.

India, India, or Native Americans, India, India, okay, yeah. So, you said the government has a really high power on that, so in the meantime, the court actually can order through their secret recipes to check out their poison or I don’t know. I don’t know. Um, so you’re saying that people from India were being alleged that they were being harmed by consuming beverages.

Your question is whether the Indian government, the US government could demand…

I would imagine that they have the rights to do that, um, if they felt it necessary. I thought the… That situation in India had to do with the manufacturing plant, not the consumption of the product. Yeah, they did it at first, but yeah, it’s not the case.

I mean, I don’t know. Um, the answer is I don’t know. Okay, I’m sorry; I haven’t… I haven’t researched that. It’s a very interesting question; I think if you’re Coca-Cola, you would try to cooperate to the best of your ability without giving up that rest without giving up that method. You tell them all the ingredients, you know, as much as they needed, um, but yeah, uh, David, David, okay, the magician, yeah, uh-huh, so his case, it came, oh really, man, you’re up on this, all right, dude, I need to talk to you, this is great.

Uh, the details of a trade secret, one of his trademark tricks, okay, wow, would you send me that? I’d love to look at that. I’d love to look at that, that’s great, man, earlier this week and I was like, wow, awesome, you’re welcome, take care, Keith, yeah.

But still, private judges know about that, but that’s the thing, it wasn’t a direct assault against the sanctity of trade secrets. It was, uh, it was an obligatory, uh, disclosure in order to demonstrate that they actually did not.

[Music]

Well, that’s curious, so that’s, I’m going to look that up. Yeah, I’m going to look at it, I got to see, yeah, I’ll go read the case. Is it five or is it six? Okay, good, yeah, that’s awesome, I’ll look that up, thank you, great questions, man.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/