In this episode, I had the opportunity to talk with Stan M. Gibson, a seasoned trial attorney specialising in MedTech intellectual property at Jeffer Mangels Butler & Mitchell, Los Angeles, California. With over 30 years of experience, Stan shares invaluable insights into the importance of protecting and monetising intellectual property (IP) for podiatrists and other medical professionals.
The Marathon Metaphor for IP Protection
Stan likened preparing for a marathon to protecting IP, emphasizing the need for proper training and professional guidance. Just as one wouldn’t rely solely on a generic training plan from the internet to run a marathon, professionals shouldn’t depend on online resources for IP protection without consulting experts. This analogy highlighted the pitfalls of taking shortcuts in IP protection, which can lead to inadequate coverage and potential legal battles.
Common Pitfalls and the Importance of Professional Advice
Many medical professionals attempt to shortcut the process by using online resources without seeking expert advice. This approach often results in incomplete or incorrect protection, leaving their ideas vulnerable. Stan emphasized that waiting until a problem arises can be costly, as litigation in the United States can be extremely expensive. Instead, he advocated for early consultation with IP professionals to ensure all bases are covered.
Steps to Securing a Patent
Stan outlined the essential steps for securing a patent, starting with consulting an IP attorney. Proper documentation, non-disclosure agreements, and assignments of rights are crucial to ensure that inventions are adequately protected. He also differentiated between patent protection and trade secrets, noting that while patents offer a legal monopoly, trade secrets can provide indefinite protection as long as they remain confidential.
Real-Life Success Stories
One of the standout stories shared by Stan involved a doctor who revolutionized spinal fusion surgery. This doctor, through diligent IP protection and strategic agreements, secured significant financial gains, illustrating the potential rewards of properly managed IP. This success story underscored the importance of professional legal advice in navigating the complexities of IP law.
Global Perspective on IP
Stan also touched on the variations in IP laws across different countries and stressed the importance of consulting local experts. For podiatrists aiming to enter the American market, understanding these differences and seeking advice from professionals in the relevant jurisdiction is crucial.
The IP Checklist
To assist professionals in protecting their IP, Stan introduced the IP checklist available at www.ip-checklist.com. This resource helps identify critical areas to focus on for comprehensive IP protection. While not a substitute for legal advice, the checklist serves as a starting point for understanding the basics of IP management.
Final Advice
Stan’s final piece of advice was clear: don’t wait until you’re halfway through your journey to seek professional guidance. Early consultation with IP professionals can save time, money, and stress, ensuring that your valuable ideas are protected from the outset. He encouraged podiatrists to view their IP as their most valuable asset and to take proactive steps in safeguarding it.
For more insights and to reach out to Stan Gibson, visit www.ip-checklist.com.
If you have any questions about this episode, you can contact me at tyson@podiatrylegends.com
Saturday, the 24th of August, 2024, CAIRNS.
The Power of Persuasion: The Mindsets, Strategies, and Tactics that Enhance Leadership Success and Profitability with Dave Frees
This LIVE one-day event with Dave Frees will be life-changing. It is rare to have this calibre of speaker in Australia, let alone Cairns, so I suggest doing whatever you can to attend. There are only a limited number of seats available, so I would not sit on the fence too long.
Schedule a FREE 30-minute Zoom Call with Me.
If you have questions about your podiatry business, team, personal goals and career direction, organise a time to talk with me. I’m here to help in any way I can. You have everything to gain and nothing to lose.
I recommend following the link below to my calendar and scheduling a free 30-minute Zoom call. I guarantee that after we talk, you will have far more clarity on what is best for you, your business and your career.
My SCHEDULE – https://calendly.com/tysonfranklin/podmeeting30
FACEBOOK GROUP Podiatry Business Owners Club – https://www.facebook.com/groups/podiatrybusinessownersclub
MY BOOK is available on AMAZON
It’s No Secret…There’s Money in Podiatry – https://amzn.to/3JhO9cz
Full Transcript
[00:00:00] Hi, I’m Tyson Franklin and welcome to this week’s episode of the Podiatry Legends Podcast. The podcast designed to help you feel, see, and think differently about the podiatry profession. With me today is Stan Gibson. He is a seasoned trial attorney in the med-tech industry. He works for a firm in Los Angeles, California called Jeffer Mangels Butler & Mitchell.
[00:00:21] They’ve been around for 45 years and Stan has been there for about 32 of those 45 years. We figured out he’s not going anywhere. soon. So Stan, how are you doing today?
[00:00:32] I feel great. How are you today?
[00:00:34] I’m fantastic. And the other thing I just want to mention to people too, is you help innovators and entrepreneurs, including podiatrists in protecting and monetizing their ideas and transforming them into substantial assets for the businesses, which I think it’s fantastic because I know a lot of podiatrists who have a lot of ideas and they’re not sure what to do with them.
[00:00:56] Yes, that’s definitely the case. And we’ve helped a lot of doctors, a lot [00:01:00] of inventors, a lot of podiatrists actually as well with their ideas in terms of seeing if they can be patented, helping them turn those into patents and things like that. Dealt particularly a lot with orthotics and that type of thing.
[00:01:12] Okay. And I’ll point out to everyone too, that you have run a few marathons, so you’re one of those crazy people. I think I might have mentioned that off, eh?
[00:01:21] I do run some marathons, it’s funny because after I’d had three kids or I didn’t have three kids, my, my wife had the three kids, but I’d certainly picked up about 30 extra pounds some sympathy weight gain.
[00:01:31] And so I started to get into running and I got a plan off the internet and started thinking maybe I’d run a marathon. And it wasn’t quite that easy. It was I went and ran my first marathon and I’d follow the plan off the internet and about, I felt good about halfway through.
[00:01:46] And then the second half was just brutal. Not trained right. And I made it through. And. To my surprise and chagrin, the paramedics came up to me. I was so pale. I looked like I was going to fall over. So, I got a surprise at how hard it [00:02:00] was and how difficult that first marathon was.
[00:02:02] And, I’m a trial attorney and I specialize in protecting intellectual property and I’m always prepared but for the marathon, I wasn’t, and I thought to my, to myself, a lot of my clients they do the same thing. They. They pull off something off the internet and they think that’ll help protect their intellectual property.
[00:02:18] And they don’t really think it through. They just go with what they found off the internet. And maybe two, three, four years later I get called and then they’ve got a big problem. So, one of the things I’ve wanted to do and try to figure out is how can I help people do more than just hope for the best, like I was doing running my first marathon and barely make it I want to make sure that doctors, podiatrists, they understand that you don’t want to just pull something off the internet, maybe an agreement or some way of protecting intellectual property.
[00:02:45] You you really want to, you want to talk to the right people and make sure you understand what you’re doing so that you don’t have a nasty surprise later when it’s when it can be a little bit too late.
[00:02:53] Yeah, that is a really, really good point because I’ve got a friend who develops websites [00:03:00] And she said the same thing when she’ll hear somebody say, Oh no, I just did my own website and she’ll go, yeah, well I can also dig at my own ingrown toenail, but I would rather have a professional do it for me. And I think it’s interesting. I’ve heard a lot of podiatrists where they do, they’ll try and shortcut. The system like by going online and just trying to get their information from there instead of talking to a professional and I know not every podiatrist listening to this would think of themselves as an innovator or an entrepreneur.
[00:03:30] But sometimes you can patent an idea where it’s just a, it’s a modification of something that already exists. If you think you can just do it better.
[00:03:38] Yeah, no, absolutely. And I’ve had the occasion to, to work with podiatrists, both professionally and then also as a result of my training or over training sometimes.
[00:03:48] I’ve had my share of orthotics specially made for my feet and pay a lot of attention. I’m not going anywhere unless my feet are right. And doing that and working with other doctors and in other fields in medicine people [00:04:00] that, such as podiatrists are on the front lines they’re going to see things and they’re, they may, design something that they know is going to help their patient.
[00:04:09] But they don’t know how to protect what they’re designing. They want to get it out there. They want to make sure that it’s going to be available to people. They want to help their patients. And sometimes it’s, they don’t think about the best ways. to protect their own ideas. They’re so busy trying to work and develop something that’s going to help them in their own practice.
[00:04:26] Whether it’s something they might be using in surgery or it’s something that’s as simple as or actually not as simple but something that’s, that, that can be as complex to design as a proper orthotic. So there’s all aspects of that that podiatrists and doctors inventors need to think about as they’re developing and how they’re going to protect their ideas so that they actually own what they’ve created.
[00:04:47] A lot of podiatrists would be in the room with the patient. And I know this has happened to me dozens of times and you’ll be using some piece of equipment or Trying to do something and you do you always say, Oh, this would be [00:05:00] better if, and then you start modifying it yourself.
[00:05:03] Do you find some podiatrists or people in health care, they come up with an idea and they’re like, well, I don’t want to patent it. I just want to share with everyone. So everybody benefits. But could someone take that idea after they’ve seen you do it and then they patent it if you don’t?
[00:05:19] That certainly can happen.
[00:05:20] It really shouldn’t happen, but it can happen that maybe you share an idea with someone and they go out and they file the patent application on it and claim it’s theirs. Yeah. And if there isn’t clear documentation that you’re really the one who developed it they can certainly do that and have a patent issue talking about the United States laws in their name.
[00:05:38] And you wouldn’t be included on that. And then going through the process of trying to correct that or prove that you really were the inventors very difficult. And certainly I see a lot of people in the medical field Podiatrists included. They are working on the front lines and, they’ll see something that, that could be done a little bit better.
[00:05:56] These are very creative people. They may fabricate something on their own or go out [00:06:00] to a small fabricator and have a new instrument fabricated for themselves or some other device that they need that they’ll know will help their patients. And then they’ll, it’ll be successful and they’ll want to share it.
[00:06:11] And they may even want to figure out ways that they can monetize it, but they’re not thinking about the intricacies that need to happen in order to do that. And if it is, once it is shared with someone if they’re not under a non disclosure agreement or any type of confidentiality obligation that they can just go ahead and take it and do what they want, and you’re really in a difficult position in that situation.
[00:06:34] Okay, this is going to lead on to a couple of questions here, and this is just how my brain works. You did mention America, so I know there’ll be people listening to this podcast who do not live in America, but the rules would be pretty similar in different countries, from America to Australia. There might be some, you intricacies in between, but in general, the overall rules of protecting your ideas would be very similar.
[00:06:58] They may well be. I think you need to get [00:07:00] a specialist , in the jurisdiction in the country where you want to obtain the patent. So the laws, there may indeed be similarities, but it’s important to have someone who really knows and specialises in that particular country to talk to, to make sure it’s done right.
[00:07:14] There can be differences in who gets to be decided as the inventor or different inventors and things like that. So you want to think about these issues and be aware of them. And then you want to consult the right professionals in, in terms of getting it done the right way. Because they’re not, it’s not all one size fits all and, and I would hate to see somebody pull something off the internet and think, Oh, well, this is what, how it’s done in the United States so I can go out and do it the same way in Australia because, it’s a different legal system. And while there may be similarities you really need to consult with an expert in that jurisdiction to make sure that you’re doing it the right way.
[00:07:49] One of the main reasons I wanted to get you on here as well, is because, and my brother and I have always spoken about this, we said, until you crack the American market, you haven’t made it, because [00:08:00] it’s a big, it’s a big market.
[00:08:04] And I know a few podiatrists in Australia who have invented some really cool stuff. I’ve never spoken about whether they’ve got patents or where they’ve taken or how far they’ve taken it, but I know they’re doing okay with it. And I’m thinking. If they need to talk to someone in America, at least here’s a contact now that they can reach out to.
[00:08:26] Absolutely. And I’m certainly always happy to do that. And I actually have a guy that’s on the internet called the IP checklist, which is at IP-checklist.com and that is something that people can start by looking at. And also can contact me to, to follow up on that, but at least get some guidance so you can spot some of the issues you need to be aware of because there’s a lot of them in terms of if you’re a podiatrist and you’ve decided to work with someone else, maybe you’re going to hire a consultant to help you with your idea.
[00:08:56] In the United States, if you don’t get an [00:09:00] assignment of that person’s rights to yourself, and even though you told them you know how to do part of this, but they’re working on their own, they come up with some of their own ideas, they may end up being the one who’s the inventor, not you.
[00:09:11] And then would own it without a proper assignment. That’s one of the things I always caution people is you need to make sure that you wanna have non-disclosure agreements and you also wanna make sure you get assignments. that are proper so that you are really getting, if you’re working with anybody else, you’re getting an assignment of whatever they make or create.
[00:09:28] You’re getting assignment of what they invent to yourself so that you own it. Because in the United States laws, the person who invents something is the one who owns it. Even if you paid for it, the inventor is the one who owns it. We have companies that make sure that they have assignments from their employees or consultants to make sure that they own what those people are inventing.
[00:09:48] Yeah, I’ve seen a lot of employment contracts where it actually has written in there anything you invent or create while you’re employed here actually belongs to the company, doesn’t belong to you as an [00:10:00] individual, even if you’re doing it in your spare time sometimes.
[00:10:03] Right. And that’s something that if you’re paying somebody to do work, you want to have a provision like that. And there’s particular language you need to use in the United States to make that effective for patent rights. I’ve had a lot of cases and I do trial work and I’ve had, Hundreds of clients that usually come to me, and I’ll look at their contracts and they’ll already be in a lawsuit.
[00:10:24] So the contracts are done. And it’ll be a situation where you look at the contract and you’ll say, this contract is just bad enough to have gotten you sued, but hopefully it’s just good enough to win. And that’s an expensive proposition. So it’d be situations where we’ll win the case, but it will have been expensive.
[00:10:42] And if you just had the contract done the right way, particularly in terms of assignment language and those types of things you probably never would have had to be in any litigation at all. And litigation in the United States is expensive. It can be hundreds of thousands, if not millions of dollars.
[00:10:56] So that’s, it’s to be avoided. And that’s really having now done [00:11:00] this for over 30 years and seen a lot of the problems that people run into when they’re not doing things the right way I want to get the word out there that, Hey, there are ways to do this the right way so that you can avoid these problems and you don’t need to find yourself in litigation.
[00:11:15] So doing the homework at the, in the early stages is the important part, like talking to someone in that area, getting the right contracts in place, just dotting all the i’s, crossing all the t’s, because trying to do it afterwards can be really difficult.
[00:11:29] Well, if you’ve waited too long, so let’s say you’re in the situation where you’re a podiatrist, you had a you had a great idea you hired a consultant to help you, you don’t, you’re busy, you don’t have time to to flush it all out yourself, to have it all fabricated to come up with all the details.
[00:11:45] So you hire a consultant to do that and you pay them and you don’t put any assignment language in, you don’t put a non disclosure in you just agree to pay them a certain amount of money you pay them that money and, in the United States, that person, if they’ve invented something that’s [00:12:00] patentable without an assignment, they’re going to own that invention.
[00:12:03] Now let’s say you’re two years down the road and you realise, hey, this is working. It’s something that I can use and make public. You’re in a situation where now you want to go, you’re going to have to go back to that person who you’ve already paid and try to get their rights.
[00:12:16] And you’re probably going to pay them more or they may decide that they like what they own. They won’t give you the rights back. So you don’t want to wait too long and find yourself in that situation. Or the agreement’s unclear. It wasn’t, you, someone pulled it off the internet and modified it a little bit.
[00:12:33] And yeah, there’s an assignment provision in there, but maybe it’s not as well written as it should have been. There’s a non disclosure, but it’s not written as well as it should have been. So it’s ambiguous. And now you’ve got. Two people who are going to argue about what it means. And those are the disputes that usually end up in court.
[00:12:49] If things are clear, they don’t end up in court. So you want to avoid court at all costs if you can.
[00:12:55] So when it comes to getting a patent though, is there a, if you see something that’s already in existence, [00:13:00] is there a certain percentage on how much it needs to change before you can get a new patent? Because I’ve heard people say, oh, you’ve only got to modify it.
[00:13:08] A certain amount. I’m going, well, how much is a certain amount? What is it? Can you measure that?
[00:13:13] Well, I wouldn’t say there’s a percentage. It’s not that mathematical. If you make it, if you make an improvement that is new, novel, and not obvious under the U S laws, then you can get a patent on it.
[00:13:25] You can make improvements that are like that, and then you can get a patent, but it’s not a percentage change. It’s more in the United States, you’re going to go to the U. S. Patent Office. You’re going to have a patent examiner who’s going to look at it. They’re going to look at what is called the prior art or what we refer to as the prior inventions, what’s already out there, what might be sold in the public domain already.
[00:13:48] So if it’s clearly an improvement to something, they’re going to look at what it’s an improvement to, and they’re going to say, okay, is it new, novel and not obvious. Was it, was this something obvious that anybody could have done who practices in this [00:14:00] area? So if it’s something to relate to, say an orthotic, if it’s a modification to an orthotic that any podiatrist could see and make.
[00:14:07] You’re not going to be able to get a patent on it, but if it’s really new and novel and not obvious to somebody that’s in that field, that in this situation is a podiatrist then you, and you should be able to get a patent on it. But you’re going to go through that process with a patent examiner who ultimately will either approve
[00:14:21] or not approve the patent.
[00:14:23] I like that. So if it’s something that’s so obvious that probably every podiatrist in their clinic is doing that anyway, they’re just not talking about it. You’re not, you’re never going to get a patent on it.
[00:14:35] Right. And a patent is a, in the United States is a legal monopoly. It’s really the only one in our laws that is a legal monopoly where you can exclude everyone else from making what you invent.
[00:14:47] So it’s very powerful. And exchange for getting that powerful right to exclude other people. You’re making public in your patent filing which becomes public when it issues as a patent and usually 18 months after you file the application, it’s public. [00:15:00] So once it’s, you’re giving access to everybody in the world what you’ve created and what you’ve thought of in exchange for then getting the exclusive right to exclude other people from making what you created.
[00:15:12] So that’s that’s very important and powerful, but it needs to have its limits. We don’t want people being able to patent things that are obvious and then be able to exclude everyone from doing things that were obvious. We want people advancing the science and advancing the art of that science, not just copying or coming up with something that, that everyone’s already doing or that would be obvious to everyone.
[00:15:34] And I want podiatrists too, listening to this, it doesn’t always need to be podiatry related. If you have a thought or an idea, that can change something that’s even outside of podiatry. It’s still worth pursuing those ideas.
[00:15:48] Absolutely. If you have an idea in a different field or something, altogether that’s new, novel and not obvious.
[00:15:55] And you think that it’s something that can be useful to people. Yes, I would [00:16:00] definitely consult with the proper professional and see what they think and whether they think it’s something that’s worth obtaining a patent over. There also are sometimes if you have something that you talk a little bit about trade secrets, there may be situations where you have a manufacturing process or a secret formula like we have with Coca Cola where you want to keep it secret.
[00:16:21] And the advantage of doing that is in the United States, the patent laws have limits. You don’t get that monopoly forever. So you’re limited to a specific number of years and with a trade secret as long as it stays a secret, you have rights to it forever. So that’s one of the reasons.
[00:16:39] Yeah, and I think that’s, so you have Coca Cola that’s never made public its formula for Coke because it wants to keep that a trade secret. Now if somebody independently comes up with the exact same thing, they can use it. You can’t exclude them from doing it where you can with a patent. If I patent something and I have a patent and you come up with the same thing independently, I can exclude you from using [00:17:00] it still.
[00:17:00] But if it’s secret someone can come up with it on their own in a different way. Then, they can make use of it. And nobody’s
[00:17:07] been able to do that yet with Coke. Not that I’ve seen. I’ve never seen anybody be able to match Coke exactly how they do it.
[00:17:13] I think that’s right. And I think that’s exactly right. And it’s it’s been a trade secret for well over a hundred years. And maybe, who knows, maybe they’ve changed it some, but yeah they keep it under lock and key. That was was it Dr. Pemberton, wasn’t
[00:17:23] it? I
[00:17:24] think that may be right.
[00:17:25] He didn’t make any money from it. It’s actually in the first couple of pages of my book that I wrote that I mentioned that he’s, he made $50 or something the first year he had it out, but spent $87 in marketing. And then he died a year later.
[00:17:40] Poor bugger.
[00:17:42] And now he has an empire, but he’s not around to see it.
[00:17:46] I think he was a pharmacist. So KFC, for example, had this secret 11 secret herbs and spices. Is that another one? Or is that just marketing? They’ve just made that up.
[00:17:55] It’s probably a lot of marketing, but they, I’m sure they have their own recipe for whether it [00:18:00] could be discovered by someone else.
[00:18:01] And, whether it’s not as famous as the Coke recipe. So I don’t have personal knowledge as to whether it’s I’m trying to think if I’ve tasted chicken that’s exactly the same or not. It’d be hard to tell. But they. You can they, I’m sure they have a recipe that they keep secret.
[00:18:13] This not, wouldn’t just be only marketing, but whether someone else could come up with the same thing and, or not as that’s a harder one to know.
[00:18:20] Yeah. So a podiatrist has an idea. What is the process that they go through? Do they, Oh, I’ve got this idea. It’s. unique. Nobody else is doing it.
[00:18:33] It’s not obvious. Do they come and talk to you first or what’s the process they should be going through to actually get, to get this going?
[00:18:43] Yeah, they should come talk to either myself or someone like me someone who knows and can look at whether, a professional who can look at whether it’s something that can be patented or do they want to keep it a trade secret?
[00:18:55] You’re going to really want to start with the basic knowledge of who, who owns this [00:19:00] um, who created it. Was it just the podiatrist on his own or is it coming from somewhere else? Is it perhaps a joint creation? You need to start with that as well. I wouldn’t want to skip over that issue of who invented it who created it.
[00:19:13] But once you look at that, you also then want to decide what is the best way to protect it? Is there some is it, can it be patented? Is it worth patenting? Sometimes it may not be. And to talk about the whole process behind that is it something that could be kept as a trade secret? And would it be better to keep it as a trade secret?
[00:19:33] That, that may be true as well. But it’s important to, to look at that at the beginning and not wait. Waiting can cause a lot of problems. I’ve seen hundreds of them over the years.
[00:19:44] You don’t have to have made it and create it first. Can you just have the idea in your head, then talk to someone and go.
[00:19:50] Now, what do I do? Or do you need to at least have a drawing of it or a prototype that you’ve made or at least something that looks similar to the prototype?
[00:19:59] I think [00:20:00] you can just come and talk to a lawyer, before you have drawings that they, there are drafts, people that help with patent drawings.
[00:20:07] So you don’t have to have drawings. You don’t have to have a prototype. Those things help. Flush the idea out if they exist but they may not in all situations. And if you’re keeping it confidential and just to yourself and you want to take the time to draw it out and make a prototype there’s nothing wrong with doing that.
[00:20:23] It’s just, if you’re going to start to share it with anyone or you’re going to have anybody assist you with it. Then you better be careful, and I would involve legal counsel to make sure that you’re, you’ve got a proper confidentiality provision, you’re making sure you’ve got proper assignments, that you’re dotting your I’s and crossing your T’s on those types of things.
[00:20:40] But if you’re going to keep it just to yourself no reason not to flush it out a little bit more But also, talking to a lawyer may help. They may help flush it out. There are draftspeople that can help draft what are called patent figures that can be drawings of what’s going to be a part of a, an embodiment in a patent.
[00:20:55] Okay, so the advice is talk to your lawyer first. [00:21:00] I think
[00:21:00] that’s best. At least to get an idea of where you are. It may be that the lawyer will tell you, you’re not ready yet. You don’t have enough here to go for a patent. You need to work on this more. But at least then, if you’re going to do that.
[00:21:12] Do you need to have anyone else help you? Again, it’s really important to make sure if you’re going to have anybody else involved, that you’ve got confidentiality and you’ve got the assignment language done properly. And , that can be tricky if you don’t do it right.
[00:21:24] And the lawyer you talk to, like you’ve got over 30 years experience, if you were talking to someone with experience, you probably know people in the different areas that you could talk to this person to help with the design, help doing the contracts,
[00:21:37] we can help identify people who can help with, the contract drafting. I’m, I personally don’t do patent applications. Yeah, I ended up being the trial attorney that litigates them after they’ve been issued as patents. But I have people at my firm that do the patent application process and work with the United States Patent Office that will go through that process.
[00:21:58] And there are drafts [00:22:00] people that we know that can help with the figures that go into the patents that describe the embodiment. That’ll be depicted in the patent and there may be people that we, we also can, I can help identify in terms of if there’s somebody that, that needs to help flush the idea out, but if you’ve got if the podiatrist has someone in mind who they’re thinking about working with, that’s when we can really help in terms of making sure the agreements are proper.
[00:22:23] Okay. Now, Is an expensive process to go through?
[00:22:27] Well, it depends on what part of the process you’re talking about. The process I do in the litigation part, whether you’re going to fight over who invented something or whether there was a proper assignment that can be very expensive. That’s what we were talking about the hundreds of thousands or, millions of dollars.
[00:22:42] Going through and getting the drafting of the agreements is not an expensive process and getting a patent application issued into a patent is generally not that expensive. You’re not talking about you’re not saying about hundreds of thousands of dollars at all. It depends on how many patents you’re trying to get.
[00:22:57] And how much what [00:23:00] I call prior art what’s referred to in the legal terms as prior art, how many prior inventions, prior publications are there that the Patent Office is going to identify? That can make the patent application process a little more expensive if that, there’s a lot of that and if the Patent Examiner keeps coming back with questions and there’s a lot of back and forth the Patent Office.
[00:23:19] But it’s still a lot less expensive than what litigation is.
[00:23:23] Okay. So if it’s extremely unique, then it could get, it could run through pretty quickly. If it’s something where the examiner has got to get backwards and forwards and ask more questions, then the expense is going to go up.
[00:23:38] Yeah that certainly will make the expense go up. If there’s going to be a lot of office actions or what they’re referred to United States where the patent office is maybe rejecting some of the claims of the patent or even all of the claims of the patent and saying, Hey, there’s this, there’s these publications that already show what you’ve claimed to invented.
[00:23:55] And you’ve got to go back to the patent office, explain why they’re wrong about that and how it’s different. You [00:24:00] may have to amend some of the patent language. Those kinds of types of things are just some examples that makes it more expensive. But in the event that you don’t have that type of issue where you’ve got something that is, is unique or, very unique.
[00:24:11] So there’s not a lot of publications or other inventions that, that, look like it at all. And there’s not, a lot of that prior art out there, then it’s probably going to go a lot faster and not be as expensive. Have you got a ballpark figure? It’s really hard to give it just a ballpark figure.
[00:24:27] It’s going to be, probably north of 10, 000 in general, but how far north is really going to depend on the circumstances of what we’re talking about.
[00:24:37] That’s good though because it’s one of these things you don’t want people just having these frivolous ideas and go Oh, I’m gonna do a patent on this and it’s a waste of time So it’s good that they’ve got to invest some money.
[00:24:47] So they’ve got to really believe and what they’re doing could potentially be a patent
[00:24:51] Right, I think that’s true. And the lawyers will look at it and be able to tell them. And they can do their own searching as [00:25:00] well to see whether there’s other inventions in the field. So they have some idea whether there’s other publications and get some idea of how hard it’s going to be to get a patent in this field.
[00:25:10] So you get, you can get an estimate from the lawyers ahead of time before you start doing all that work as well. And should. I think it’s important to do that.
[00:25:18] Okay. Give us a couple of success stories. Some people that you’ve helped work through or they’ve taken an idea and have done really well from it, especially the monetizing side of things.
[00:25:31] Sure. So, one example, we represented a doctor a doctor who really revolutionised spinal fusion surgery.
[00:25:38] And he had a lot of great ideas, incredible ideas for improving spinal fusion surgery with different instrumentation methods for using that instrumentation and spinal implants devices that would be used for fusion in and he was able to get quite a bit patented.
[00:25:56] He also did an agreement with one of the large medical device [00:26:00] companies that then claimed to own everything he would ever invent in the future. And there was a they filed a lawsuit over that and we filed a counterclaim. That case ended up going to trial. And we were able to win that case And obtain a verdict of 570 million.
[00:26:15] Oh, that’s a nice win. It was a nice, it was a nice win. And then the company that had sued him ended up buying all of his technology for 1. 35 billion. So, there can be real money in these in these transactions and getting these patents. Now he had some incredibly inventive implants, instruments, methods he really revolutionised all spinal fusion surgery.
[00:26:41] So, it wasn’t just one or two ideas he had. He had hundreds, if not thousands. So it was a, an extensive portfolio that he’d come up with, but that there is real value , in patents and in the intellectual property that’s being developed and created. But if you don’t have that documented properly, then, someone [00:27:00] can just take it.
[00:27:01] Well, I asked for a success story. That was a massive success story. A few podiatrists just drove off the road, I think, when they heard the billion dollar mark. That was a big one. That was huge. Yeah. That was bigger than big. That’s bigger than Ben Hur. That’s how big that was.
[00:27:18] With there any more, do you have any podiatry ones that have monetised it quite well?
[00:27:24] We’ve had some that have successfully obtained patents and I think made some money as a result of that, I can’t identify those publicly, but yeah, we’ve definitely worked with podiatrists , that have and these would mainly pertain to orthotics is what we’ve seen the most of obviously the shoe industry, you’ve got a lot of examples of successes as well, but it’s probably the big shoe companies are the ones that that lead that but there’s a lot of patent battles over running shoes which I pay some attention to my running shoes cause they’re important.
[00:27:52] Yeah.
[00:27:52] I know, shoe design, the cushioning systems the outsole, there’s so many variations and they’re [00:28:00] always trying to outdo each other and there’s a lot of marketing behind it as well.
[00:28:04] Yeah, absolutely. And there’s carbon plate technology is is all the rage now I think in the racing shoes.
[00:28:09] And The cushioning and the return that they give to your legs. So you’re not having as much stress on your legs, but the it’s obviously big business and, I’m sure there are podiatrists involved in helping with some of that design as well. So it, sometimes they’re, they may be working for the company.
[00:28:27] What I’ve seen in the medical field more often is the just my personal experience, it’s anecdotal, but is the doctors will have ideas and they’re the ones who are coming up with a lot of the novel ideas and then they’re taking them to these bigger medical device companies and probably even the shoe companies.
[00:28:45] I don’t have a specific example, but it’s important if you’re going to be doing that, dealing with very sophisticated companies that you have your own counsel and you’ve dotted your I’s and crossed your T’s.
[00:28:54] Yeah. Well, I told you before I press record my experience when I was much younger [00:29:00] and I had absolutely no idea.
[00:29:01] I just thought you’d have an idea. You share it. Right. Not realizing that you needed, just thinking, well, that was my idea, so it must be mine, but you don’t really realise it. Your idea can be taken very quickly.
[00:29:11] Well, especially if you just give it to give it away, it can be taken very quickly.
[00:29:15] Yeah. It probably will be. That’s the way the world works is somebody else is going to take it if you don’t have it protected properly.
[00:29:22] , I don’t think you can over protect your ideas too much. Now you have this thing, intellectual property health checklist.
[00:29:27] What is that all about?
[00:29:30] Yeah, so it’s the ip checklist. com is where people can find it. www.ip-checklist.com And what I’ve tried to do there is just lay out some of the very basic Things that you want to look for. Again it’s not meant to be a one stop solution to everything, but at least it gives an idea of things you want to check off to make sure you’re doing.
[00:29:52] And again, I would absolutely consult with a professional on that. Because it’s a checklist. It’s not legal advice by itself. [00:30:00] But it’s, it’ll give you an idea of do I need to be looking for non disclosure agreements? What are the assignments look like? Do I want to be looking at patent protection?
[00:30:09] Do I want to look at trade secret protection? There can be, obviously names are very important. Am I creating a brand? The Nike brand is obviously extremely valuable just by itself. So if you’re going to be creating a brand, do I need to check to make sure I can use that name.
[00:30:25] I don’t want to just pick a name and I’m starting to market something and it turns out someone else already has the rights to that name. So you want to be careful about those types of things and how you protect your brand. So it identifies a number of critical issues that you want to think about.
[00:30:39] And really it’s a way to do a health check on your intellectual property. I’ve been involved in this field for over 30 years, and I believe that your intellectual property and your business is your most valuable asset without your intellectual property you probably really don’t have much.
[00:30:55] Your intellectual property, that’s, those are your ideas, those are your names, that’s how people know you, that’s what you’re [00:31:00] known for so that’s something that you just, you need to make sure you’re protecting. Yeah,
[00:31:04] so you’re not just talking about patents here, you’re talking about copyright, trademarks, the whole package.
[00:31:12] Absolutely. It’s meant to be a checklist. So if you’re starting out in business or you’ve got concerns, you’re already in business, it’s meant to just give you a checklist to at least run through it. And then, you can consult with a legal professional on things you’re concerned about to make sure you’re getting legal advice on these topics.
[00:31:28] So if there was a podiatrist in Australia or in the UK, they should talk to someone locally first for their country, but then if they wanted to break into America, would they talk to their lawyer who talks to you or would they go to you directly?
[00:31:43] They can come to us directly but I definitely would recommend they consult initially with a lawyer in their jurisdiction in their country.
[00:31:50] I think that’s important to do, but they can come to us directly and that, that does happen frequently. I have a number of clients internationally , that come to us directly.
[00:31:58] . So before we wrap up. [00:32:00] Do you have any other final advice or anything that you just feel like this needs to be shared?
[00:32:06] Cause I don’t want to get off of here. And you go, I wish I had said that.
[00:32:10] Well, it’s interesting. So, continuing on the running in the marathon theme is, after my first marathon, I realised I needed to work on it a lot more and I went and hired a professional coach and made sure I could learn how to train better, got into a training program for six days a week, really followed the detailed step by step process of what a professional was telling me to do.
[00:32:32] And it made all the difference. I ended up running my fastest marathon ever in the Chicago marathon. And the professional advice that I got, made it so I didn’t just survive the marathon, I thrived in it. And I, so I do want to leave people with, if you really want to do more than survive in intellectual property, if you’ve got great ideas and you want to thrive with those ideas, you need to talk to a professional.
[00:32:55] Don’t just pull something off the internet. And hope that it’s going to work out for the best. [00:33:00] You’re on a, you’re investing a lot of your time and your money, but your ideas, they really are your most valuable asset and you need to make sure they’re protected. So do it the right way. And consult with professional early on.
[00:33:12] Don’t wait until you’re halfway into your journey and realise, Oh now I might be in trouble
[00:33:19] halfway through the marathon. You realise, I think I should have trained more than once a week.
[00:33:24] Yeah, exactly. Exactly. And you feel the pain and you just hope to make it through.
[00:33:27] You want to do a lot more than that in your intellectual property journey. You want to make sure that your business deserves more. Your ideas deserve more. You want to make sure that you’ve protected them and done what you can to to talk to professionals and have the best plan for them possible.
[00:33:41] I think that’s fantastic advice. Now, if people want to reach out to you, what is the best way of doing it?
[00:33:47] It’s really to go to the IP checklist, the www.ip-checklist.Com. That’s the best way to to reach me.
[00:33:54] Okay. And I’ll put a link of that in the show notes and everywhere else so people can get hold of it.
[00:33:59] Do you want me to share your [00:34:00] email address or you’re like, no, don’t email me. The
[00:34:02] checklist is the best. The checklist is the best way. We have a whole form there and that’s the best way to contact me.
[00:34:08] Okay. So we’re going to keep. Stan’s email, a secret.
[00:34:13] I think Google’s got it. So that probably does.
[00:34:17] Okay. So Stan, I want to thank you for coming on the Podiatry Legends Podcast. I hope everybody who’s listened to this, it’s got them a little bit excited. If they have ideas bouncing around in their head is don’t keep them there is I think, get them out and protect them. And I think protect everything, anything that pops around in your head, protect it, because like you said, your ideas are just worth.
[00:34:40] So much money and peace of mind too. So Stan, thank you very much for coming on here.
[00:34:46] It’s my pleasure. I really enjoyed it. It’s great talking to you.
[00:34:48] Okay. And I’m sure we’ll talk again in the not too distant future. That would be my pleasure to do it. Okay. Thank you. Bye. Bye.