Common Mistakes You Should Avoid When Getting a Patent

Intro (00:09):
Welcome to innovations and breakthroughs with your host Ritz Goldstein, talking about the evolutionary, the revolutionary, the inspiration and the perspiration and those aha moments that change everything. And now here’s your host. Rich Goldstein.

Rich (00:32):
See here, host of the innovations and breakthroughs podcast, where I feature top leaders and the path they took to create change past guests include Ricks is Ari Bob Serling. And Stephen Key. This episode is brought to you by my company, Goldstein patent law, where we help you to protect your ideas and products we’ve advised and obtain patents for thousands of companies over the past 26 years. So if you’re a company that has software product or design, you want protected go to Goldstein patent law.com, where there are amazing free resources for learning about the patent process. And you could email my team@welcomeatgoldsteinpc.com to explore if it’s a match to work together. You could also check out the book I wrote for the American bar association that explains in plain English, how patents work it’s called the ABA consumer guide to obtaining a patent I have here today.

Rich (01:19):
No one McNeely Noah is a creativity and innovation expert. Noah has spent much of his career helping to shape and guide a seemingly endless series of good ideas into successful product businesses. No has developed products for wide variety of startups, and also for major brands, including Coca-Cola Proctor and gamble, black and Decker. Arm-in-Hammer Plantronics, Biolab, CR Bard, the home Depot and many others. Uh, Noah’s present company product Quickstart provides product development, prototypes and manufacturing services to invent entrepreneurs early stage companies and startups. It’s my honor to welcome here today. Noah McNeilly. Welcome Noah. Thanks for having me. It’s not hard to be here. My pleasure. And, and so, um, how did you get started in innovation? Well, um, so, so I went to engineering school, uh, at Georgia tech right out of high school. I really didn’t know that much about innovation. I just knew that I liked being creative and building things and, uh, um, naively, I thought that’s what engineering was all about.

Rich (02:27):
So then I got to school and to realize that there was a lot of calculus involved and a lot of physics and a lot of, lot of studying till three o’clock in the morning to get through a lot of classes. So, um, that’s, uh, that’s how I got started in a way, uh, through my experience, there actually did some work at, uh, general electric as a, as a student, uh, internship type program. And that really opened my eyes to how the real world works. It’s not just, uh, formulas and calculus and mathematics. It’s actually, uh, understanding

Noah (03:00):
Some of the business side of innovation and so forth and so on. So I got all the way through mechanical engineering school and decided this is about half of what I really want. The other half is a field called industrial design. So I went back, uh, to grad school and, uh, and eventually earned a master’s degree in that program. And, um, uh, it took me a while to figure out the right path, but really I’d always been a creative person. I’m one of those weird kind of students who I love both the math classes in high school and the art classes. And, uh, it took me a while to figure out a way to combine them. And that’s, that’s how I got started.

Rich (03:37):
Got it. And so it’s interesting. So it turns out you were right. Like you, you went into engineering school thinking that it was about building things and designing products. And they said like, no, no, no. It’s about calculus and about like lab reports and things like that. Right. Um, and then as it turns out, you realize later, like, no, the real world is not about calculus and lab reports. It’s about actually figuring out what works for a business like what’s going to help. So it, it it’s about building things, right? So it turns out you were right. What it’s really about.

Noah (04:08):
You know, I have a lot of respect to the academia side. I’m actually, I’m actually a board member of the expert advisory board down at Georgia tech, um, Emmy school. So, you know, I have a lot of respect for that and it’s a great foundation for real-world application. I think it’s, it’s a, it’s maybe a little tough to go really deep into product development without some of that foundation, but the foundation alone can get you to maybe being a professor or a teacher of engineering, not necessarily, um, not necessarily the application of engineering into real product development in the real world. I think that that requires the experience and it requires much more than just than just the, the theory behind how, how the world works. It involves actual experience, you know, the world works.

Rich (04:55):
Yep, absolutely. And it’s funny because engineering school is a wake up call for me too. It’s like, um, a little bit of a different one. It was like, that’s when I realized that engineering wouldn’t be about designing something cool every day that it was about working on the same project every single day for five years at a time. And that’s, that’s when I pivoted into patent law. And that’s what gave me the ability to work on different things every day. Um,

Noah (05:22):
Here’s the thrive on that. We’ll be happy to design the same turbine blade for the next 30 years. And, uh, that’s their, uh, that’s, that’s their happy place, but it’s not, it’s not, yeah.

Rich (05:33):
Not mine either. And it sounds like though the part of your pivot was towards industrial design then is to realize that maybe industrial design had a bit more of the flavor of what you were looking for in terms of getting to kind of, um, design some cool stuff.

Noah (05:49):
Yeah. I mean, the way I, the way I tell people is I speak both languages of product development, speak the engineering side. I mean, how do you make it work? How do you make sure it’s manufacturable? How do you make sure the cost is right, right. But I also speak to the design side of how do you actually make it something that people want to use, make it something that people want to buy. And, um, you really have to succeed on both sides of that to have a good product. I mean, you can have, you know, a big gray box. It works really, really well, but nobody’s going to put that in their kitchen or you can have this really fancy looking thing that doesn’t work and nobody’s going to buy that either. So you really have to have that combination.

Rich (06:24):
Yeah, absolutely. So that is a great combination. So, um, I, I think, um, um, you had told me that you, you spent a good deal of time doing this type of design work on a big scale where you had a company that, that did all this work for major clients, but it, um, I guess it, it was a pretty big team. And at times you, you, you weren’t as connected to the client and connected to the work as you would like to be.

Noah (06:52):
Yeah. So I’ve been doing this for going on 25 years. Um, right out of grad school. I started a company with some other partners. We actually grew that company to about 40 designers and engineers and scientists, um, and other other types over the course of several years. And, um, I manage that company. I ran it. I was the CEO for several years and we did a lot of work with companies are black and Decker and Coca-Cola and really big name companies. I really saw a lot of that side of the industry, but as the team grew, I realized, yeah, I turned 40. My wife says I hit my midlife crisis. Uh, I realized that all I was doing was managing people. I wasn’t working with clients. I wasn’t innovating, I wasn’t doing any of the stuff that I got into this industry originally to do.

Noah (07:41):
I was getting further and further from my passion. And I wised up one day and realized that life’s too short route to work on what you’re passionate about. So we ended up, um, spinning that company off, sold it to some of the employees and there’s, they’re still out there. They still do. Um, really high-tech high-end type of, uh, type of programs, but that’s how product Quickstart was formed. It really around my passion of working with smaller companies, I really enjoyed the educational side of helping people that maybe haven’t done it before, work all the way through the process of, I have an idea all the way out. I knew what to do with it all the way through their design, the re-engineering and the prototyping building out their supply chain. And the way I tell people, we’re here to provide as much help as they need, or as little help as they need. And because our clients are typically startups or entrepreneurs or inventors or small companies, they only have so much resources to get their product across the finish line. And that’s where we thrive. We really thrive. And I thrive on that, um, that side of product development of, of cutting all the fluff out and lets us do exactly what we need to do to get you from point a to point B.

Rich (08:57):
Okay. So let’s do that. Let’s cut all the fluff out and let’s, let’s talk about what it takes to get from point a to point. No, no more, right? No more marketing pitches. Let’s just get right to it. So like, like what, what types of mistakes do people make when they’re trying to get from point a to point B?

Noah (09:15):
Well, um, so you’re, you’re, you’re a patent attorney, so I’m going to try not to offend you, but

Rich (09:20):
No, no, you can. If you want to say, people waste their money on patents, go ahead and say, cause I say that to people often do wasting money on patents. I also, people you don’t have to, you don’t have to like, you know, that

Noah (09:32):
I was being a bit facetious in the field, but you know, oftentimes I meet people that they’ve spent, you know, they spent 90% of their budget on the wrong patent before they even start development side, they have this idea we’ve got on paper. The first thing that we’re kind of obsessed with beginning a patent, they run out to a patent attorney. Who’s in many cases, maybe not as scrupulous as you it’s like, Oh yeah, we’ll patent it. We can patent anything. So they get this patent that ends up going up on their wall and then they spend all this money. Then they come see me. And within 30 minutes of meeting with them, we’ve already found four or five better ways to do their product and what their patent covers. And then they’re like, well, we need to do what the patent says. Well, that’s fine.

Noah (10:13):
You can produce that product. But if I can come up with better ways and cheaper ways in five minutes, you know, your competitors can twos that patent really in those cases, it became kind of a worthless piece of wall art. So absolutely. So in a broader sense, people spend money on the wrong things without, without really understanding how the process works. I think there’s a lot of snake oil salesmen out there in the, in the industry that, um, you know, convince people that eat eight to just engineer it. You need to just make a prototype. You need to do this, that or the other. They’re very in, in so much scrupulous penetration need to just do a patent, but they’re not looking at the whole big business picture. So I think that’s, that’s the big mistake I see is people think about their invention or their prototype without thinking about their business and that leads to people having a lot of problems.

Rich (11:01):
Yep, exactly. And I think, um, I mean, uh, a good way to tie that together is to, is, is them not seeing what the opportunity is in front of them where it’s like, sometimes the patent is an opportunity, but only if they could get a patent on the concept and not on the specific solution. Right. Right. And so, so then that could be a good opportunity. But most of the time, I mean, as use a 90% of the time, it’s probably not the patent is not the most important thing in front of not the most important opportunity. And a lot of times this solution isn’t the, the, the right opportunity. It’s like they have a solution and they’re told, you know, build a prototype on that. Or, um, let’s find out about manufacturing it where really the opportunity that they had was not solution, but buzz that they identified the problem. And maybe there’s a, they identified the problem. They identified the need. That’s really the brilliance of what they did. And maybe there’s a different solution that someone like you can help them brainstorm. Um, and then that’s, then, then the effort would not be wasted by spending all this time pursuing the wrong solution.

Noah (12:15):
Yeah. And you’re, you’re exactly right. The most important part, a successful product is a good problem to solve, um, or, or a good opportunity. Sometimes not so much a problem. Maybe it can be an opportunity to take, to answer, to maximize as well, but that’s, that’s much more important than the solution and matching that problem with the right solutions is also key. You know, people will come in here, they’ve, they’ve maybe they’ve found a good problem solved, but their solution it’s kind of like the cure is worse, worse than the disease. Sometimes they have this $100 solution, four or $5 problems. So we have to work through those things because that maybe a clever, maybe a very cool invention, but that’s not a business. I mean, if you’re, it’s only one part of the, of the issue, the core, as you said, is they’ve found a really good problem to solve. So now let’s take a step back and figure out what’s a better way we can solve that, that the market would actually support. And, um, and, and we can launch a business that way.

Rich (13:16):
So w w why do you think that people invent

Noah (13:21):
Well, um, lots of different reasons. There’s good reasons to that there’s batteries and students. Uh, I’m sure you’ve met as I, uh, people that are just like, I want to be an inventor of really just invent something. I don’t care what it is. I’m going to go out there and I’m going to fight it. And I’m going to, usually that doesn’t work out so well, the best inventors that I’ve met are the ones that have encountered a problem in their daily box. You know, maybe they’re, um, maybe, maybe they’re a dentist and there’s this process they do in dentistry. This is actually a real example. It’s a process they do in dentistry and there, they spend a lot of time on it and they’re like, yeah, this is not the best. This there’s gotta be a better way to do this. So then they create a solution for that.

Noah (14:03):
That’s very focused around the problem that they deal with all day long. And maybe it’s, they’ve bounced some sort of work around and they’re like, could this work around, become a product that other people can use? So I think, you know, there’s that old expression, necessity’s the mother of invention. And I think it’s really, it can also be frustration is the mother of invention, is that things that frustrate people in their daily lives tend to lead to the best inventions, um, mothers that, that, that have an issue with their, with their, their kids. And they come up with an invention to solve that. Or, um, again, doctors, nurses, uh, whoever it is, you know, plumbers, plumbers come up with the best plumbing products. It’s that, uh, it’s the doctor who tries to come up with a plumbing product that sometimes doesn’t do as well or plumber or the trust come up with a, you know, with the dental problems. And that’s where we generally, um, we’re doing, we find issues. Sometimes it works out, but usually it’s the people that experienced problems that come up with the best inventions.

Rich (15:04):
Right? So it’s like that dentist, that experiences that problem in a dental process and says like, this is like pulling teeth, you know, I need the needs to be a better way. So I couldn’t resist that. Uh, but, uh, but in general though, it’s like, I think where people do often go wrong, as you say, it’s kind of like when they invent outside of their field, like someone tries to imagine, um, what a carpenter would want and they don’t do carpentry. Right. But carpenter who’s faced with this problem every single day knows exactly what that frustration is and knows how excited, um, he, or she would be if, if all of a sudden this thing was available. And so that’s, uh, that’s usually a good start.

Noah (15:53):
Yeah. And that actually translates over to how, um, how we do design and development. To some extent, you know, a carpenter comes in with a great solution or a great problem to solve, and maybe it needs some work around the solution. I’ll never know as much about carpentry as they do, but I have to immerse myself somewhat into the problem that they’re, that they’re experiencing when they’re trying to solve to create a solution for. So if I don’t understand anything about how they, that, if I don’t understand the nature of problem, they’re solving, at least on some level, I can’t really help them. So not only do do the, the, the experts in the fields come up with the best problems, but I, I have to jump in and try to leverage as much their expertise as I can to help them solve it.

Rich (16:38):
Got it. And, um, so when, when it, when it comes to, um, and first of all, you mentioned immersing yourself in the problem helps you to solve it. Uh, but also one of the things that’s called for here is to validate the ideas, to validate that we’re on the right track, which I imagine also requires immersing yourself in it. Uh, but how do you, how do you go about approaching validating ideas? Like, what do you think is the best approach for validating an idea knowing you’re on track, uh, with your, with your solution?

Noah (17:12):
Well, there’s off the top of my head. There’s three areas of validation that are really important. One, does it work? You can’t, can you do the physics even workouts? So there, we would build prototypes and we might build prototypes early on that are not very pretty. They’re just what we call proof of concept prototypes. So we’re not spending a lot of money on them. We’re not spending a lot of the client’s money on them. We’re just confirming that you put these two pieces of material together. They’re going to do what they’re supposed to do. So that’s the validation of just the doesn’t work side. There’s also, the validation of is the design appropriate side. And there we’ll create, um, early on we’ll create imagery, we’ll create, uh, digital renderings, more great virtual prototypes that the client can then go in and show to their potential customers and say, you know, here’s, here’s the new, um, the new type of hammer.

Noah (18:05):
Um, does, does it look right? Does it look like something you have bought the third one that I think a lot of people in this field kind of miss, or at least don’t think about early on is the cost validation. So remember I said our order, some people have a hundred dollars solutions to $5 problems. We need to make sure that the solution we’re coming up with has a pathway to a reasonable manufacturing cost. So we’ll do that analysis and validation as well as early as we can. Now, day one, I can’t give you exactly what it’s going to cost, but we can start to sharpen that, that picture as we move forward. The last thing I want my class to do is get really excited about a solution that gets priced out of the market. So we want to make sure that we, um, we validate all three of those elements as early as we can. Now, granted different industries might put more emphasis on one or the other, you know, if it’s a, if it’s a fashion accessory, then the, the design, the design validation is going to be more important. If it’s a medical product, um, the, the functionality might be more important than cost might be less important if it’s a very commoditized type thing, costs might be the most important thing, but all three really have to be, um, have to be validated.

Rich (19:21):
Got it. So, um, what role have you seen, what role have you seen IP play, um, in the progress of your client’s products? Um, in, in, in, uh, in helping them enter the marketplace and, you know, granted, um, you know, we’ve already discussed one part of it, which was that often they do spend too much on it and for the wrong reasons. Um, but let’s just look at the, the situations where it has helped them, where it has been the appropriate thing. So what role have you seen it play

Noah (19:56):
In areas where their intellectual property can really cover, can be pretty broad, uh, and really form a wall of protection around their, their core ideas, such that others can create products without competitive products without violating those ideas. Um, I see that falling very strongly in cases of licensing, especially in areas like in the medical fields, uh, who did work with a doctor, um, gosh, three or four years ago. Now it was a kind of a complicated medical procedure, but, um, his, his product had some, was able to get some fairly broad intellectual property around it, which really he never intended to launch the product himself. That was really all about taking that intellectual property and the prototypes, et to, uh, a surgical tool manufacturer. And he got them to license that based on that intellectual property. And I think in that case, then the lunch would probably be very broad or broad enough to protect that idea was very important.

Noah (21:03):
Um, sometimes I think the patent strategy is really important sometimes in more consumer type items where, you know, the patent strategist patent attorney looks at and says, you know, we’re not going to be able to get a really broad patent here. Let’s go to the provisional, the patent pending route that gives you at least cursory level of protection, which I’m sure you could talk to you better than I can say, patent pending on their product. It gets out there, they grab some market share, then they make their money. They go, and then it was successful. Somebody is going to knock it off, but by then, you know, it’s, there’s nothing you can do about that, but it does provide that little bit of timeline of where people don’t know if it’s going to be fully patented. And, um, so I see those as kind of two, two areas, really the licensing area, um, to a big company, most inventors, frankly, they’re not going to have the funds to defend a patent, um, in court if they had to, uh, unless they’re, you know, part of the bigger startup or they’ve got some financial backing behind them.

Noah (22:08):
Um, I do, I do have another example of a doctor who did a product for this was I did a bronc for earlier in my career and they do have some financial backings and they’re able to, to protect some things in court. And the very first revenue they made off their product was actually losses in revenue where someone else and inadvertently violated their intellectual property. And it wasn’t really competitive, but it wasn’t violations. There were able to go out to them and say, no, we don’t want to go to court. Um, you’re making a lot of money off of this. It’s rip pay us X amount. And they ended up getting licensing revenue out of that for several years. And that was there, you know, it wasn’t enough to, to, uh, you know, change their, their business direction at all. But they got money out of, out of having that IP in place.

Rich (22:52):
Yeah, absolutely. And I think that’s, that’s an important thing is that, um, you know, first of all, if you want to license something, you, you really do need to have IP to be able to license it. And it has to be strong IP. So it’s like if you’re, uh, I think a good lesson is that as if your intention is to license a product, um, then you need to take a close look at whether it’s possible to get strong IP protection, strong patent protection. Because if, if all you’re able to do was get a patent on the very specific solution, like some very specific details about it. No one’s going to want to license that the company that you show it to might be excited about the concept, but they don’t necessarily need to follow every last detail of your solution. And if that’s all you’re able to patent, you’re not going to be able to license it. There’ll be excited enough about it to go ahead and make their own solution and pursue that market. So,

Noah (23:49):
Yeah, I think a good test is, um, you bring your IP to someone, me, or someone like me, and if we can design around it and in an hour, then it’s probably not real strong in that that’s something to be concerned about.

Rich (24:03):
Yep, exactly. Um, and, uh, um, so, so then, I mean, I know that that, that you don’t directly offer marketing services for clients, um, but you have created an opportunity to help your clients connect with, with, uh, with each other and other manufacturers. You created something called innovation marketplace. Jen, tell me a bit about that.

Noah (24:27):
Yeah. So I think one of the things that differentiates us is that we do have a lot of products we developed that make it to the market and become successful businesses. And, uh, it will surprise sometimes I go to my competitors websites and I see a lot of pretty pictures of things that you never actually see in the store, or you need a lot of pretty logos Depot Lowe’s and home Depot and Lowe’s

Rich (24:54):
Home Depot Lowe’s we shop there too. Right?

Noah (24:56):
So, so this is the section of our website, which is actually just links out to, uh, my, uh, my client’s websites, where they’re on the market that they have, their, their products are out in, you know, in the, in the real world. And you can, you can go there and, uh, check them out. You can buy the products and, uh, you know, that’s the way for us to support our clients a little bit, but it’s also, to me, it’s even better than a portfolio page of, of, Oh, look at all the cool stuff we we’ve designed. It’s look at all the businesses we’ve helped. We’ve been a part of getting off the ground and into the marketplace. And, uh, and it’s, it’s, it’s one of my favorite things is to see one of the product side developed out in the market and, uh, not to direct people to them. So that, that’s what that’s all about.

Rich (25:40):
Yeah. It is a pretty awesome feeling, right. When you see your clients have success with the thing that you gave them a boost with, I mean, we can’t always say that, like, it was, it was us that that made it successful that made the difference, but, but seeing someone be successful and knowing that we helped in some way, I think is probably the most satisfying.

Noah (26:02):
Yeah. I mean, it takes a lot of cooks in the kitchen to get a product business launched. And we’re, we’re a part of that. We’re certainly not everything, but it is very gratifying to, to see, to see the fruits of our labor out in the market.

Rich (26:16):
Absolutely. So, um, if people want to learn more about you or get in touch with you, how do they go about doing so?

Noah (26:22):
So the best way to reach us is through our website. Uh, it’s just product quick-start dot com. Um, you know, there, of course you’ll find all the obligatory, um, contact us forms. We do also have a, a self assessment form, which is really useful if you do want us to, um, reach out to you, if you can fill that out, that helps us to understand where you’re at and helps us to prepare for our call with you. Um, so find us through the website and we’ll be happy to schedule a call with you, you know, no charge to talk on the phone for a little while and figure out if we can help you.

Outro (26:56):
Awesome. Um, no, I really appreciate you coming and visiting the show. Thanks so much for being here. Absolutely. Thank you. Thanks for listening to innovations and breakthroughs with your host, rich Goldstein. Be sure to click, subscribe, check us out on the web at innovations and breakthroughs that come and we’ll see you next time.