Today I’m joined by Diana Mederos to dive into one of the most important and confusing elements of intellectual property, patents! Diana is the founder of Mederos Legal. She is highly experienced at all aspects of the patent process and is my go-to recommendation for any of my clients who are interested in pursuing a patent. If you’re interested in pursuing a patent or just want more information on what the patent process is all about, this episode is for you.
In this episode, we’ll cover:
- The steps a patent attorney takes to determine if something is patent eligible
- The three main categories of patent applications
- Time and budget expectations for a patent filing
- Specific considerations to keep in mind if you’re hoping to pursue a formula or software patent
- The necessary elements of a patent filing
- The huge risks of DIY-ing a provisional patent application without a qualified attorney
- When you should consider speaking to a patent attorney
Interested in learning more about Diana’s services? Visit www.mederoslegal.com to book a 10-minute consultation.
What was your key takeaway? Take a screenshot of this episode, add it to your Instagram Stories, tag @andreasagerlaw and @mederoslegal and let us know!
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LEP 48 Diana Mederos Final.mp3
Welcome to the Legalpreneur podcast, I'm your host, Andrea Sager, and I'm dedicated to covering common legal issues for small business owners and just how some of the world's most elite entrepreneurs have handled legal issues themselves and through attorney fashion. The information in this episode is not legal advice. This is for informational purposes only. And you should always consult with your attorney before implementing any of the information. Now onto the show.
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Hey, hey, welcome back. I know that I have promised you guys this amazing guests before because quite frankly, I know nothing when it comes to patents. It's really funny because I feel like I am pretty knowledgeable when it comes to trademarks and copyrights. But when it comes to patents, which is a form of intellectual property, I know pretty much nothing. So I have brought on who I like to call the expert, Diana Mederos. She is the founder of Mederos Legal and she is who I send all of my patent referrals to. So if you have ever contacted me for patent work, this is who I have sent you to. And I'm so happy to have her on the podcast today because, quite frankly, I don't have the answers. And I love to get you answers. So thanks for joining me, Diana. Oh, thank you so much, Andrea. It's really a pleasure to be here. Yeah. So go ahead. Let us know your background, because I know that you have been at this for quite a while. And let us know, like, how long you've been practicing.
Sure. So I am located in Boca Raton, Florida, and I assist patent clients all over the world. Anybody who wants to file in the U.S., I have two technical degrees. A technical degree or at least some substantial technical expertise is required in addition to a law degree to become a patent attorney. So my first technical degree is a bachelor's in biology and environmental science from Texas A&M International in South Texas. And my second technical degree is a master's in pharmaceutical chemistry from the University of Florida College Pharmacy. And I actually did my master's degree after law school because I just was not satisfied with just a bachelor's degree.
Oh, my gosh, that's amazing. And for those listening. Yeah, explain the requirements.
Yeah, you have to have that technical background and then you also have to have the legal background to be a patent attorney. And I also did an apprenticeship with a patent attorney up in Jacksonville. He left his in-house counsel position with a large company. And I learned so much from him. And then I came down to Boca Raton and worked with an IP litigation firm. And then I went out on my own and I do things my way. Very similar to you, Andrea. I provide great value for clients in an efficient and cost effective manner, and the clients love the flexibility as well. You don't have that big firm red tape.
I'm very reasonable. And also when clients come to me, they're just curious about patterns. Some are like, well, I don't know if I have something that's patentable or not. That's perfectly fine. I go over all of that with you. You have you don't have to have any knowledge of anything pertaining to patents to speak with a patent attorney, whether it's me or somebody else.
Yeah, no, I love that. And I love that. Whenever I, you know, I'll email you and say, hey, I have this potential client. They're not even sure. And obviously I don't even know how to tell you either. You know, she's she always tells me. Yeah, I'm so happy to have a ten minute call with them. So if you guys are listening, you're like, oh, I don't even know if I'm eligible for a patent or whatever. Yeah, feel free to contact Diana. I'll link all of her contact information in the show notes, so don't hesitate to reach out. So, yeah. Tell us more about your background. How long have you been at this?
Yeah, so I've been writing and prosecuting patents for at least six and a half years and I've handled everything from the initial client invention disclosure to the patent searches, to the preparation and filing of the application, defending patents in federal courts, prosecuting infringers in federal court, and also defending patent validity before the patent trial and Appeal Board. So I've had a very broad spectrum of experience and I also manage companies, complete IP portfolios, especially international patent portfolios. That's really important to adding value to your company.
Yeah, I love that. You've seriously I've handled literally like every little thing with patents. That's amazing. So if and this may be a different answer, depending on what type of product it is, but if somebody comes to you and they're like, hey, I have this thing, can it be patents? Like what's kind of like the first I don't know, the first thing that you go over with somebody.
Yeah. So first I determine whether what you have is patent eligible. So to get a patent, you have to have something that is not abstract. It doesn't necessarily have to be a physical object itself, but it needs to be defined sufficiently enough to where somebody who reads what I write can be able to make and use your invention.
And it needs to be novel, something completely new or new for the most part, and it needs to be not obvious. And when I mean. It's not obvious, like an obvious variation based on what's already out there, so the standard for that and here's some legalese that sounds fancy and yeah, it can get complicated, but it's whether a person of ordinary skill in the art would have been motivated to make and use your invention at the time your patent application was filed.
So that's kind of difficult to determine at the very beginning. That's definitely determined at the examination phase. And I'll also go over the different phases of the patent application route. But I also consider all of these factors at the very beginning because I want you to have a successful patent application. So I also do a cursory patent search with every application that I filed and I'll find the most relevant or the top three to five most relevant. Prior art sources will go over the differences between your invention and what's already out there. I may make suggestions for modifications or I may say, look, there's something that's exactly like what you have out there and going the patent route is not going to be a good investment of time and money for you. Let's look to other things or let's look at creating something else. So with the patent application, you may hear that there is a utility patent or a provisional patent application.
So there are well, first, three main categories of patent applications versus utility usually covers the structure, the function methods of use. There's design patents that cover the ornamental features of an object, the way it looks. And then there's the plant patent that covers certain types of new plants. And there's a whole list of specific requirements for that. That's not really worth getting into, because unless you're working at a university lab or a high tech agro lab, it's not going to be relevant to you if you find a new species of plants on the side of the road. Nobody's ever seen it before. You did not invent it. You discovered it, but you did not asexually reproduce that plant to where it qualifies you to get a plant patent. So what design patents? It's a more straightforward application type. Sometimes I'll work with a formal illustrator to get us those illustrations, or I can even do the renderings myself, depending on what the product is like.
All right, let me interrupt you right there. So far, the design patent, this is the actual design of the product and the utility is the functionality.
Yeah. Yeah. So the design patent simply protects the way something looks and the scope is actually quite narrow. So to protect your design, you can have, let's say, for example, a coffee mug and it has a unique shaped handle and we can apply for a patent on it and protect it. Now, if somebody wanted to design around that, do something also like a coffee mug, but a different kind of handle and that's the only thing that they're changing. Does it infringe on your design patent? Probably not, since the scope is so narrow.
But design patents are really underutilized. They still bring great value to your intellectual property portfolio. And there's the opportunity for an international application in other countries. Sometimes it's called industrial design. So there's processes for that. And I'll go over with the clients and decide what application type and what protection strategy is going to be best for your business goals.
And I present you with all the options, the pros and the cons. So I equip you to make that business decision. And then the utility patent applications cover the structure, function, methods of use. And so examples of these types of objects are like household consumer goods. You also have software, but with software there needs to be that hardware architecture involved with it. It can't just be a basic program that's traditionally implemented on basic computer parts. I need very specific how the internal components are structured and how the data flows and is treated at each of those structures to provide us with that computer program.
So if you have like if somebody creates software just like a coding for an app or something that can't be protected with a patent, it can, if what was created, solve some kind of technical problem. It needs to be a technical solution to a technical problem. So let's say you have an application or a software program that allows you to do photo editing. And some of the current problems with similar software like Photoshop Express, for example, is slow rendering times. Well, you created an algorithm that works with the CPU. That increases the product rendering time or it allows you to edit your photos in raw, even on a cell phone, which wouldn't be too extreme considering the processing capabilities of these latest phones and some of the phones coming out. It's crazy. I think the new iPhone 12 is rumored to be even more powerful than like the twenty seventeen MacBook Pro. I totally believe it. And I think Apple is starting to manufacture its own chips instead of getting their silicon from Intel, if I remember correctly. So that's another thing about being a patent attorney is I'm pretty nerdy and I know the latest tech.
Oh, I love that. Yeah, that's going to be really interesting. That's really cool. So I'm just thinking more software. So like, let's say the Uber app with how they connect riders and drivers, is that something that can be protected with the patent or is that more copyright or.
It could be both. It could be both. Yeah, with with software in copyright. I'd definitely recommend using the special procedure to file it under trade, secret protection.
And the thing with patents is there's always going to be some interconnection with the other types of intellectual property like trade, dress, trade secrets, copyright and even sometimes trademark. One interesting fact about patents and trademarks, how they relate together, because when I'm drafting a patent application, you actually cannot use trademarks in any of the descriptions. So, for example, Velcro, Velcro is actually very smart. Yes, I know that a lot lately. Yeah, you can't use Velcro in a patent specification. It has to be a hook and loop closure. So that's that's an example.
I'm surprised Velcro hasn't been canceled due to genericism.
Yeah, I guess they've done a pretty good job about policing that. And I think that's that's where that that matters is is policing the use of a term before it becomes generic. I'm trying to think if facsimile is one of them or Kleenex, Pampers.
I talk about those. I've talked about this before on the podcast and on social media like. So an entrepreneur or space girl, boss and boss, babe, even though they are actual brands, they don't have trademark protection because they're now just commonly used expressions or generic.
Yeah. So one thing that's different from the trademark process is the patent process is a lot longer. Yes, definitely a time commitment. So for example, with trademarks, we file the application and then in about three months you expect that examiner to review it with patents. It's 18 months at. Oh, my gosh, that's insane. That is a huge time commitment. Yeah, there are ways to expedite that.
Of course, you can do just about anything with the payment of a surcharge or fee, but generally the rule is expect an office action at the 18 month mark and in an office action, you're going to get rejections and objections. And people may think that's a bad thing. Well, it's not. You want an application that's thoroughly examined because ultimately, especially what I work very hard towards is getting these patent applications actually granted and commercializing it, put it to use enforce your rights. So when you're out there enforcing your patent rights, the last thing you want is somebody to come and challenge the validity of your claims and say that these claims weren't examined thoroughly enough. So I tell my clients, expect the rejection, expect me to spend a good amount of time interviewing the examiners and preparing a response. And it's just it's a dance. You go back and forth with the patent examiner and ultimately get the claims and condition for allowance. And then you pay an issue fee and you get your grant and patent. So utility patents last 20 years from the initial filing date, a design patent last 15 years. And so going back to design patents that length of time is also something you want to consider when you want to compare it to trade, dress, registration, trade, dress also protects the way something looks. But the way that something looks also has to serve as a designation of origin for a brand with a design pattern. You don't necessarily have that requirement with a trade dress. You can renew it indefinitely so long as it's being used in commerce. But you can't renew a design patent. Same with the utility patent. You can't renew it once that 20 years expires. It's fair game.
It's in the public domain. So that's also something I consider with clients who have something like a formula, like a formula for a supplement, a drink or a construction product or a cleaning product. I tell them, I say, look, a patent, you get an exchange, it's a full disclosure for a 20 year monopoly. After that 20 years, time's up. Anybody else can do the same exact thing. And so sometimes the client will say, oh, well, I want to keep this a trade secret. And so let's let's put a trade secret protection program in place and I'll work with them on that. However, with a very clever patent attorneys, especially those who have a background in chemistry like me, there are ways of doing both maintaining a trade secret while also getting a utility patent on your formula. So that requires a deep knowledge of the art that product or invention is in and disclosing it in the best mode and providing an enabling disclosure so that somebody can read my specification and be able to make and use the product while still not fully disclosing everything. There's some drafting techniques that I use to accomplish that. So that's something I'll also discuss with potential clients when they come to me for a formula type of invention. So one thing with formula, I know supplements and cosmetics and skin care, nutrition and health based foods and drinks are really popular right now. Same with anything pertaining to software. It can get a little difficult when you are not the one who is the formulator and when you are not the one who is a software developer.
I need to speak with the person who's actually making these things so that I can get the information I need to be able to show how this new product, this new software is an improvement and is different over the prior art. And if I can focus on that up front, you're going to have a successful patent application later on during examination.
So let's talk about formulations for a second, because I know there's a huge influx of health and wellness entrepreneurs there, private labeling, their own supplement line, their own product line. Now, I know those cannot be protected with a patent because they're all they're doing is private labeling. So they go to the manufacturer and they say, hey, let me taste let me take some stuff and I'll pick the one that tastes the best. And that's what our private label. So that if you're private labeling and really not having any say so, then you're not eligible for a patent with your products. But can you kind of describe is there a way to figure out how much of your input is needed to get that patent or to be patent eligible? Or is it just a matter of working with the formulator to have the formulator kind of assign whatever rights they may have to a patent is similar to copyrights or any any other intellectual property?
Yeah, there's definitely going to be that assignment aspect that's going to be necessary. And sometimes it's good to talk to a patent attorney before you even begin getting a white label or custom blended product. So there's that aspect. And yeah, a lot of the questions that I'll ask are going to be technical, technical questions. So even though my background, my educational background is in biology and chemistry, I still know a heck of a lot about computers and software, because even as a as a scientist, you're writing programs to validate and to analyze your own data. So there's a huge computer component. And I even built my own computers that I use here at home.
So, um, I, I've never realized how much, like, truly nerdy you are. I love you.
My nickname is Dorky. Dorky Diana kind of has a nice ring to it. And the funny thing is I'm kind of segueing being a little entertaining here. At Karaoke one night in law school, the Michael Jackson song Dirty Diana came on the wall. I'm not dirty. I'm dorky. So Dorky Diana. And it's been like that since.
I love it. I love it. Oh my God. That's awesome.
Yeah. So I'll dig and I'll ask those technical questions and I'll and I'll push you. And it's not to criticize you. It's really to get to the heart of the invention, because aside from the nitty gritty technical details, that's on the small scale. The larger picture is really what is the whole point of this invention? Why was this invented? Why did why was it procured? And if I can communicate that to the examiner in plain language, make it very easy to understand. I've done my job. I had one client once. He had this firm draft his patent application, and he goes, yeah, it was great. I had no idea what it meant. I'm like, well, no, that's not great. The examiner is not going to know who it's being ments either or they're trying to hide something. I don't know. So taking something technical and translating it to plain language a lot of times makes for a more successful patent application it doesn't have.
To be very long, the best patent applications are are only as long as they need to be to precisely and accurately describe the invention, make sure all the parts are included, and also considering the scope, disclosing potential alternatives. And that increases the value of the claims that are written because it anticipates some things that can be done in the future. But you're not really doing them right now. And it also kind of blocks out your competitors from doing something very similar without them infringing on what's in your patent claims. So patent claims, that's one part of the patent specification. You have the detailed description, you have the illustrations. If the required if it's an object and you have the claims and the abstract and the claims are the most important, they're red in light of the specification and the drawings. And so usually the shorter the claims, the broader your protection. When I drop them, I try to find that balance between giving you broad claims, but not unreasonably broad. Of course, it's expected that there's going to be some amendments to kind of narrow the scope to overcome any prior art rejections. But there's a whole lot of dances and balancing and things to consider. It's a huge chess game when preparing a patent application and even with a provisional application, that non formal application that gets you that patent pending status and it lasts one year, it's very crucial.
Don't do it yourself. I have seen so many people shoot themselves in the foot by doing their own provisional applications and then coming to me to do the non provisional. There's a huge risk in doing that. Number one, you may not identify what exactly your invention is and may not be what you think it is and maybe a different aspect of from what you have. And let's say you don't cover what your invention actually is and you're disclosing it to investors, promoting it during that one year being patent pending. You come to me and then I see that your invention is not actually covered within the scope of that provisional application. Guess what? You can be prior art against yourself, so you may not be protected and that can damage your ability of getting a patent. So just get it done right from the very beginning.
Yeah. So I know this will vary greatly, but I know the listeners are obviously wanting a ballpark estimate of what is the price look like, even go so short term, what is it like to get started with you and then long term going through the entire process, what can they expect to spend?
Sure, yeah. I have no problem being very transparent about what to expect. So I'll tell you right now what my fees are. So a provisional application of low complexity, meaning it's a simple household goods that doesn't have very many moving parts to it. That would be about twenty eight hundred dollars. And that includes that cursory prior art search. And then something high complexity would be like a diagnostics invention or something chemical based or a complex software hardware architecture invention that can go five thousand and up for provisional application and not provisional application. Low complexity. Thirty five hundred, high complexity starting at eight thousand. And I know we talked about the possibility of design patents being filed internationally. We can do the same with the utility patents as well. So those also are a little bit more expensive. The international it's called the Patent Cooperation Treaty application that has two different stages. There's the international stage and the national stage. So all in all, it's a thirty month process going from initial application to the national stage. And so national stage is where you actually pick what countries you want patent protection in and then your application gets examined in each of those countries. And that's where I coordinate with local council. So unfortunately, there isn't one international application that gives you just global protection everywhere.
There's those two stages that could go buy you some time to have that patent pending status. It gives you time to raise more funds and to make decisions of where you want to file for patent protection. And I tell clients, don't file everywhere. Even if you can afford it, it's going to be a waste of money file where you're going to have your biggest client bases, where you're going to be doing the most business, and where the potential copycats with deep pockets are going to be. And also considering the local court systems in those countries, whether you actually want to deal with the courts, they're not.
Yeah, yeah. No, I love how you're so open with that. And I'm the same way with my clients. They're like, oh, what should I do? I need to do this. Honestly, no, like this could be a waste of money, just do this and get you that the protection that you really need. So, yeah, no, I love that you're so open and honest. Yeah, thanks. Last question. Is there like a you know, if there's a threshold, if somebody has an idea, should they talk to you? If somebody has started working on a product that when should somebody talk to a patent attorney?
I think from the very beginning. I don't think it's ever too early to talk to a patent attorney. I offer a free ten minute call for everybody. And that's kind of just to see if we're a good fit for each other. And then if you want a more substantive consultation where I actually go over your business plans with you or if you don't have a business plan or an IP plan, I can work on that with you during the substantive consultation. And I do those by videoconference and I have people send me whatever documents they want me to review beforehand and I'll discuss it. So, yeah, I can definitely help somebody who wants to get a plan in place to incorporate patents as part of their IP portfolio. Yeah, even if you have a patent portfolio already established, I can do an audit for you and you can see where we can maybe expand on what you have. So there's I think at every stage it's not going to hurt to talk to a patent attorney. And I like to think that I'm different from the stereotypical patent attorney. I like to make myself accessible and make it stress free. I tell my clients we don't worry about it. Just give me what I need, sit back, relax and let me do my thing. So that's another thing. So the examination period for it's long, it's many months, many, sometimes many years. The turnaround time, it can be four to six weeks. And some people may think that's a really long time. Why don't I just design get something in a few days? Well, that's because a lot of care and consideration goes into what I write. You're definitely getting your money's worth. And my prices, believe it or not, are slightly below the national average for the same type of services yet, but really reasonable compared to other attorneys I've talked to.
Absolutely.
Yeah, I try to keep things very reasonable. I think of myself, if I were in the client's shoes, what would I want? And that's what I try to provide.
Yeah. No, I love that. I love that. So thank you so much for giving us this information because I don't even know where to begin when people ask. So tell the audience where they can find out more about you. How can they get in contact with you? And we'll link everything the show knows.
Wonderful. So you can go to my website, www.Mederoslegal.com or you can also type in Mederos.legal. And right on my front page is my calendar and my availability is right there. You can pick the day in time that works for you and I give you a call at that time.
Perfect. You make it super easy. I love it. Oh my gosh. OK, so this has been wonderful. I am so grateful for you. I'm so grateful to have somebody that I can send my clients to when they ask, because again, that is not something that I handle. So thank you so much. You guys go check her out. If you think you may even have an idea, definitely go. Chat is always worth a ten minute call. And of course, it's always best to chat with an attorney and work with an attorney from the beginning. So don't hesitate and don't be intimidated, because as you can hear here, we are very approachable.
That is true.
All right. We'll see you guys next time.
If you found this information helpful, I would be so grateful if you could share it with a fellow business owner. And it doesn't cost anything to rate, review or subscribe to the show. Your support helps me reach more listeners, which allows me to support more business owners in their entrepreneurial journey. I'll see you next episode.
