Outlier Patent Attorneys

Patent Licensing with Stephen Key of InventRight and One Simple Idea

Patent Pending Made Simple Podcast

Episode #9, with Stephen Key from InventRight

Prefer to watch a video instead? Check out the Youtube video here.

In this episode of Patent Pending Made Simple, Jamie and Samar interview Stephen Key, one of the foremost experts in the world of patent licensing.  They discuss the patent licensing process, the role of a provisional patent application in that process, steps to bringing an idea to market, prototyping, prior art searches, and so much more!

Stephen Key, a patent licensing expert, shares his insights on how to protect and commercialize ideas. He emphasizes the importance of focusing on the benefits of an idea rather than just the features. Key recommends starting with a Google search to see if the idea already exists and then reaching out to companies that may be interested in licensing the idea. He suggests using tools like provisional patent applications, sell sheets, and videos to test the market interest before investing in prototypes. Key also discusses the importance of teamwork with patent attorneys and agents to create a valuable patent.

Focus on the benefits of an idea rather than just the features.
Start with a Google search to see if the idea already exists.
Reach out to companies that may be interested in licensing the idea.
Use tools like provisional patent applications, sell sheets, and videos to test market interest before investing in prototypes.
Work with patent attorneys and agents as a team to create a valuable patent.

Stephen Key

Stephen Key is an award-winning inventor, intellectual property strategist, entrepreneur, author, speaker, and columnist with over 20 patents to his name. His inventions have been sold in major retailers worldwide and endorsed by notable figures like Michael Jordan and Taylor Swift. In 1999, he co-founded InventRight to teach others his unique process for open innovation and licensing. His bestselling book, "One Simple Idea," has been translated into six languages.

Stephen has written over 1,000 articles on intellectual property strategy, product licensing, and entrepreneurship for various publications. He is sought after by universities and governmental organizations to teach inventRight's processes for commercializing new product ideas.

With over 20 industry awards, including two Edison Awards and recognition as the Most Influential and Inspiring Leader Of All Time by the WorldIP Forum in 2022, Stephen is a leading figure in his field. Currently, he is part of the team launching Fishbone, a sustainable packaging innovation that aims to replace plastic in carrying beverages.

Photo of Stephen Key.


Welcome to the Patent Pending Made Simple Podcast

[00:00:00] Samar Shah: Hello and welcome to the Patent Pending Made Simple Podcast. I'm your host, Samar Shah, and with me is Jamie Brophy and a very special guest, Stephen Key. Stephen, welcome to the show.

[00:00:11] Stephen Key: Thank you. Thank you very much.

Introducing Stephen Key: The Patent Licensing Expert

[00:00:15] Samar Shah: All right, I'm going to, give you, give our audience a quick introduction on you, Steve, but I'd love for you to elaborate on this. Stephen is a Patent licensing expert, as I've come to know him, he's written several books about patent licensing been through the process several times written one of my favorite books called One Simple Idea, although there, there are others and some follow-ups to them that are pretty great as well.

Founder of invent right or co-founder of invent right and Inventors Group of America. So Stephen, with that introduction, welcome, could you tell us a little bit about yourself?


Stephen's Journey: From Ideas to Innovation

[00:00:48] Stephen Key: Well, Thank you so much for inviting me. First of all, I love intellectual property. I know we're going to talk about how to protect things and make it simple I love that but I’m just a simple guy

But really had some ideas and didn't know what to do with them.

[00:01:05] Stephen Key: I wanted to I really wanted to be in business, but I’m not a business person It's what do I know about business?

But I wanted my ideas I wanted people to see my ideas And I wanted to create products that people really wanted. And I wanted to figure out how can I get those ideas out there so people could purchase them and enjoy them. And so I just figured out a simple way to do that. And it's such a simple way that most people don't realize

You can do this yourself.

You can you can actually participate in the biggest game in the world of innovation. You can leverage your creativity and work with big companies and small companies and it doesn't matter where you live or your particular income situation. I'm all about breaking down barriers so people to share their creativity with the world, but you have to do that with some smart intellectual property tools that we have out here.

So I'm really glad that we're talking [00:02:00] about it because I think once you understand what some of the tools are, And how to use those tools. You can play the biggest game in the world. So that's what I do. I come up with ideas and I show those ideas to companies. And if those companies like it, they rent or license those ideas for me.

And they pay me a royalty for each and every one they sell. And I teach that now as well.

[00:02:27] Samar Shah: That's very cool. You've been a huge inspiration to us. We get inventors who call our office from time to time and they're like, Hey, I've come up with an idea. I want to patent it. And then I'm I don't know what to do after that and I'm like, huh maybe you should flip that equation and maybe you should figure out what you want to do first and then we can always come in and help you execute on those business plans.

But I always say and I learned this from you, Stephen, from reading your book start with the end start with your kind of business game plan first, and then the IP and the legal stuff can come in and help you want to do. Execute on those things and help you accomplish those goals.

I think you've been a very helpful resource and inspiration to the inventor community. And I'm really glad to have you and have you talk about some of these things.

[00:03:14] Stephen Key: Well, thank you for saying that.

Demystifying the Patent Process for Inventors

[00:03:16] Stephen Key: I think looking back, I was one of those individuals that I thought I had a great idea and someone said, you better patent that. And I really didn't know what that meant. And so I think a lot of us. that have ideas. Maybe we're watching Shark Tank on Friday nights, or maybe we've talked to a friend that doesn't know what to do.

But for some reason, the first thing out of everybody's mouth is, you better patent that. I would like to look at it a little bit differently. You have a great idea. What are some of the steps I need to do to commercialize that idea and slow it down a little bit and think and educate yourself a little bit.

That's why people are listening to this podcast, or there's YouTube videos, [00:04:00] or books. Learn about the process, but don't let fear guide you to take these steps, like filing a patent too early, even. When you don't really know what your goals are. It's all about education, it's all about knowing all the options that you have.

And, but you're going to eventually, you're going to have to learn about some of the tools, like a provisional patent application or trademark or copyright or all the little things that really add up to create that ownership of one of those ideas. I think it is important. I don't know if it's the first thing you need to do.

The Initial Steps of Bringing an Idea to Market

[00:04:35] Stephen Key: I think the first thing I would do is just see if I have a new idea, and I think a lot of people just. Don't, they don't know that's really the first thing. They think they do, they haven't seen it before, but have you really looked? Have you spent time to look online? Do a Google image search, Google shopping search, and just see if that idea exists. That's the first thing you should do, and keep looking. Don't ever stop. Just keep looking. You'll never find it all, of course. And I know a lot of people don't want to look too hard because they're afraid they're gonna find it. So do yourself and look, just keep on looking and looking and find your point of difference.

That's really the first step. And then look for prior art, and there's ways to look at prior patents that have been issued and see if you really have something unique. But I always do the, I always do the Google shopping and the Google image search first, because for me, The most important part is my idea on the market today. And if it isn't, and even if I now find a patent, I'm not worried about it because there's a reason why that patent wasn't commercialized. And then I tried to figure that out, but that's really the first step is don't be fearful take a deep breath, find some really good people that can give you good advice and search on the internet.

[00:05:58] Jamie Brophy: Think this is going to [00:06:00] be great because I think most of the clients, especially most of the clients that I deal with are coming from exactly where Stephen started out. Like they have that creative brain. They have a great idea, but they get bogged down in. Okay, now what do I do? Like the, they get bogged down in the business details.

This podcast that Samar and I have started deals with the patent side of things, but that's such a small piece of what inventors need to do. And oftentimes they come to us and they're not quite ready for a patent yet. So I think that's great advice, Stephen, is to start out with, the Google searching to see if something is already out there.

So sometimes clients come to us and they just have a great idea, but they haven't developed. They don't know exactly how it's going to work or exactly what it's going to be made out of. Things like that. So we we usually tell them, go back, figure out some of those details, and then we'll talk about, the patent side of things.

So what else do you recommend that people do? You start with the search to see if your idea is already out there. If it's not, is that the next step, is to do some more product developing, or what would you do next?

[00:07:10] Stephen Key: Yeah, that's a great question.

Licensing Ideas: Stephen's Strategy for Success

[00:07:12] Stephen Key: I have learned that if I want to stay in this game of coming up with ideas that I'm going to probably need to come up with a lot of ideas, and I'm going to need to be able to test those ideas very quickly to see if anybody really wants them. Now, you have to realize what I like to do is license ideas to companies, which means I'm going to find a company that has, that's already in business.

That has the shelf space, the manufacturing, the marketing distribution, the relationships with all the retailers, but they just need a good idea, right? So I like the licensing business model, especially for someone that's got a lot of ideas that maybe they don't want to do a startup. So That's what I like to do.

But if I come up with an idea and I look online and I [00:08:00] cannot find it, I'm pretty happy. That's a green light. I keep on moving forward. Now I try to, and when I do that research looking for similar ideas, right? I'm trying to find my idea. What I'm really looking at is ideas that are similar to it.

And because I'm doing that, those might be the same companies I'm going to reach out to, to license or rent my idea. So it's a really great way of doing some homework first, right? So I'm looking on the internet. I don't find it, but I find similar ideas. So I make a note of those companies and I realize I'm going to reach back out to those companies to see if there's some interest.

Now I do something a little bit a little bit differently than most people do.

Prototyping and Testing: Essential Steps Before Patenting

[00:08:42] Stephen Key: I love building prototypes. Trust me, who doesn't like to build a prototype? Who doesn't like, I love them so much, I build them, I put them by my bed stand at night. I love them so much. But I've learned, it's, what's really important, it's not the prototype, it's the benefit of that product. It's really the benefit. And so what I like to do if I have a lot of ideas, and maybe I'm not good at building prototypes, Because sometimes that's a barrier for people. How do I build it? What you can do is create a drawing or a 3D prototype, which is amazing today how great these 3D computer generated prototypes can look.

They look real and I can put that on a one page sell sheet. Here's my idea. This is a benefit of my idea. Maybe some features of my idea that is a selling tool for me to show a company, to see if there's interest.

It's a really wonderful tool to test, right?

Because to me, if I can show it to a company and there's interest, That gives me a green light to start building prototypes now and figuring it out. See I do one little [00:10:00] step to test a little bit because I could spend thousands of dollars on prototyping. And maybe it's too big or maybe I've designed it the wrong way or maybe no one even really wants it. How many projects have I personally worked on that I'd loved and I thought everybody's going to love them, but the ones that built the prototype, I follow the patent, I show it to a company. No one wants it. Okay. So what I'm trying to explain to everybody, yes, I love my ideas. I'm sure you love your ideas, but will people buy them?

Will companies want them? So why don't we, why don't we test a little bit? And so that's why I teach people to reach out to those companies that you have found that are similar to yours. Pretty good fit. They sell this, not quite mine. Mine's a little bit different. I got a point of difference that I send them as I contact them and say, do you work with inventors?

Not everybody does, but a lot of companies do because they embrace the word open innovation, meaning we want to see what you have. And when they do that allows me to show them that sell sheet. And see if there's interest. That's what I do. A little bit ahead of building the prototypes, but don't get me wrong. Just me saying that is never going to stop anybody from building a prototype because they want to touch it and feel it, right? Everybody does. But if you have a lot of ideas, I think that's a great tool. And eventually, if you stay in this long enough, you will have relationships with companies and you can call them up and say, Hey, look, I've got this idea and here's the benefit of it.

I want feedback right away. Yeah.

The Power of Provisional Patent Applications

[00:11:38] Jamie Brophy: Do you recommend that somebody have a provisional patent application in place before they contact companies? I think a lot of people get nervous about, disclosing their ideas. Or how do you handle that? Do you just have a non disclosure agreement?

[00:11:52] Stephen Key: That's a great question. I would always highly recommend filing a provisional patent application. Now recognize you, [00:12:00] you won't have all the details at the very beginning, but it's going to give you a comfort level that you could show your idea. The best protection is really finding companies that work with inventors. If you're fearful, find a company that's got a track record of working with inventors. They have a, they have an open innovation policy. They have a they want those ideas. Provisional patent applications to me are the greatest tools on the planet because you can write it yourself. You might need some good guidance of course I like them because it allows you to Put a lot of stuff in there you know I can put the manufacturing that I think it might be made I could put in workarounds and variations I could put it's like chicken soup.

I could put all this stuff in there I'm, not quite sure what's going to work yet, but I can put it all in there You And feel pretty comfortable to have patent pending status for one year to show my sell sheet to companies see so yes, I do agree Jamie, I would recommend For if you're starting out if you really want a comfort level file that provisional patent application.

It's a great tool I'm a big believer in it and it forces you to really think about your idea. It forces you to think about What's the uniqueness, maybe how it's going to be used. Why is it different from other products on the market? Maybe some variations of workarounds that forces you to develop your idea even further by thinking it through.

Yeah. I think it's important.

[00:13:33] Jamie Brophy: Yeah, I'm a big proponent of the provisional applications as well. And I feel like once they, once you have that provisional application on file, that's when the real work starts. Then you have a year to do all this footwork, to contact those companies, to figure out if people are going to want it, that's your one year timeline and it starts right when that application gets filed is when you need to do all that stuff.

 Do you figure out if people are going to want [00:14:00] it? Is that something that you can do in that one year time frame?


Testing Your Invention in the Real World

[00:14:05] Stephen Key: I want to know the minute I come up with an idea, am I crazy or not? So that's why I wanted a testing mechanism. And that's why that sell sheet is a one page advertisement of your products benefits. Because if the benefits aren't strong enough, a very good chance you'll say no, we're not interested.

Or they'll go, Hey, that's really interesting. Our customers have that problem. See, so to me, it's a really simple testing mechanism and companies can see it right away and get a good response. Pass. I like it. Tell me more. What you might even include if you want to go an extra step is do a a one minute video. And that would show a problem, solution, maybe have a rough prototype. They really love to see that. Now, you have to recognize, if there's interest, the first thing they're going to want to see is a prototype. It's coming. What I mentioned earlier is when do I make the prototype, right? If there's interest, they're going to say, we want to see proof of concept.

That happens pretty quickly. The next question I have is what type of prototype do you need? Because there's many different types of prototypes. So I'm always testing along the way to make good decisions. That's the whole process. If I spend all this money on filing patents, building prototypes, starting companies, I'm doing all this, and I don't even know if anybody wants it.

How many times can I fail before I'm going to give up? So the strategy here is to test ideas, test the benefit of ideas, use tools like provisional patent applications, sell sheets, one minute videos to test a little bit. And if there's interest, then you start to build that working prototype, right?

How many do you need? What's it going to be for? So it allows me to gauge it and spend money slowly through the process a little bit. That's what it does. So [00:16:00] that way you can stay in the game longer, test more of your ideas, and hopefully you find one that just I've told someone the other day, you want ideas that roll down the hill.

You don't want ideas where you have to push up a hill, right? And there's a big difference. And once you know the difference, you'll start to look at your ideas a little bit differently and look at where some of the obstacles are. But you really want those ideas that catches someone's attention really very quickly.

It has a wow factor, it can be easily manufactured, they get it, no education, and you can test those type of things with a one page sales sheet and not even build a prototype because it could be a 3D computer generated sample. That's what we're finding today. In fact, this is going to be very surprising.

There's a project I'm working on now to one of the largest beverage companies in the world. No prototype. And you're like, you got to be kidding me.

No, because the video was so powerful. It was so engaging. They saw the benefit clearly. They didn't need a prototype

 In fact, their attitude is we'll just make the product.

[00:17:05] Stephen Key: We'll pay for the prototype.

So I'm always about. Producing very compelling the reasons why this might be of interest to you and your clients or your customers. And I do that.

Stephen's Advice on Prototyping and Filing for Patents

[00:17:17] Stephen Key: It's always testing, Jamie, I think a little bit here, but at the end of the day, you're going to have to build that prototype.

And then the day you might have to file another provisional patent application. Cause maybe you don't have all the information. I always tell everybody the first one's great. There's a good chance you're gonna file another one, right? Because once there's interest, Then I go, okay, let's go look at it again.

Did I cover it? Because I'm going to get feedback from companies too. So maybe I'm not quite sure how to manufacture it yet. So a lot of people are very concerned. Do I know exactly how to build it and manufacture it? No. I'm concerned if it's the benefits big enough to maybe go learn that stuff.

And then once I learn it, then I put it back on another provisional patent [00:18:00] application.

[00:18:01] Samar Shah: That makes a ton of sense, Stephen. And I think, that's what I've appreciated about your process is that you're always testing. By definition, if you're inventing something, you don't have an idea or you don't know how the public at large is going to react to it or respond to it.

And. Goes back to your first point, right? It's like doing that Google search to see what people are, purchasing already and what are they dissatisfied about this product? In, in the marketing world, I think they say like features versus benefit, right? Like you can talk about the features of your product or you can talk about the benefits of your product.

And the benefits is the one that sells the product, right? People. Are buying a product to solve a problem. Not because it has X, Y, and Z features, right? That's not how human beings will make purchase decisions. So you've already gotten started in this mindset of benefits, right?

Which is already going to help you weed out a lot of bad ideas, right? Cause you can come up with cool features and be like, Oh, I'm going to patent this and market it doesn't work that way. That's not going to work well, but if it has strong benefits, it will. And then you kind of circle that back up with your second point, which is that you're always testing, right?

You're seeing who wants to take the next step with this product? Who's more, who's interested, who wants to maybe have some skin in the game from a prototyping perspective? These are all just ways of testing your hypothesis that this is a cool invention that has a market.

[00:19:28] Stephen Key: Yeah, there's something you said I think is really important. I don't think a lot of people understand the difference between features and benefits. I might patent a feature, but if I don't protect the benefit, maybe I've missed the whole boat. I do believe once you've tested that benefit, it's going to help you when you go to a non provisional patent application to really tell that your patent agent or your patent attorney what's really important.

Navigating Patent Applications: Insights and Strategies

[00:19:55] Stephen Key: See I don't think you're going to know that at the very beginning. And how many [00:20:00] applications have I filed where I was wrong? Later, I was like, gee, I didn't see that. I didn't get the feedback. I didn't, I wasn't talking enough to people and really understand what was important to them. I missed it a little bit.

Or there's one particular part of it that was really important. I didn't put in there because I didn't know that was important. So I think with that type of information, I can go back now when I want to file a non provisional patent application to tell whoever I'm working with that's going to help me do that.

This is what I need. I need that claim to match this benefit or this feature. I need that claim, and I like to see it.

The Importance of Matching Claims with Business Objectives

[00:20:40] Stephen Key: I always tell when I see an application, show me the claims and let me see if I can match it with my business objectives. Boy, they match because how many people file a patent that don't even understand What the patent, what it really says.

They're a little complicated. I have to admit sometimes I have to read them repeatedly myself to understand, what is this thing, but if it's

[00:21:00] Samar Shah: We do too, so you're not alone.

[00:21:02] Stephen Key: if it's really written well maybe I have a chance of understanding that the first time I read it, I just tell match what I need with the claim so I can see it that way.

I go, that's when I know I nailed it.

[00:21:17] Samar Shah: Yeah. And we talk about that all the time. When we write patent applications with our clients, we always say, Hey, tell me what are the benefits, right? What are the benefits? And you obviously can't patent benefits, but what we like to do is think about what are all the features that enable you to access the benefit, right?

And then we want to file a patent on those features. Cause a lot of times, like you could file a patent on a huge number of features potentially. But if they're not. Giving you access to the end benefit, then that patent has missed the mark, right? You haven't done a good job on that patent. I think it's really important for inventors to have that understanding, but to convey that to their practitioners and for the practitioners to take that [00:22:00] information and really capture and corner the benefit, right?

Cause that's a valuable patent. A patent that's just focused on features is potentially going to miss the mark sometimes.

Leveraging Patents as Negotiation Tools

[00:22:10] Stephen Key: Here's another thing that I do that because I mentioned that a lot of people think patents are there. to protect myself, which they can, they're great tools. I like to look at them as as removing arguments. How can I write them to remove arguments? And what I mean by that, the first argument I'm going to have is a company saying why am I paying you for this idea? And if I write it in such a way that I include certain things, and I'll, I could talk about that in a minute, but I write it in such a way That they look at and they don't even, they look at it. It's written such a way. And it's, it has so much information there. They just say, okay, because they don't know if it's going to be issued or not.

And, but it's done in such a way. It's a very good selling tool for why you should pay me because that's the first question they always have. Steve, there's something similar out there. Why are we paying you? So I really know my point of difference. The second argument is that will it issue? Come on Steve, it's not really going to issue if I write it in such a way with enough details, there's a very good chance that Patent Examiner is going to issue this. Because I can put a level of detail in there about the manufacturing and other stuff that I'm pretty clear I can get a patent on it. Okay.

Crafting Patents with Manufacturing and Detail in Mind

[00:23:29] Stephen Key: Or one feature of, or one point or one, one part of that because of the manufacturing and then if it ever gets where people want to, a litigation situation, and I saw this because I sued a little company Lego years back.

And I realized

[00:23:45] Samar Shah: lawsuit, no big

[00:23:46] Stephen Key: It's a small little company. I realized that patents are just words to be interpreted at different times for different people. But some of the techniques that are used, they couldn't get around some of the words, right? And if you write it in such a [00:24:00] way, you can overcome arguments.

And how do you do that? It's really simple. In my mind, you write about the problem and the solution. Okay, I got it. I write, I always include a lot of manufacturing. Okay. And so what I do is that I go, I'm not a manufacturing expert, but that's what I specialize in, but I know how to find the right people that are. And I find people that are in that particular field and I have them sign an NDA with work for higher language so they can help me figure it out, but they don't own it, I still own it. So I can find the most efficient way something could be done. I use that information from someone that's in the field.

He has more information than I would ever have more information than any patent examiner's ever going to have to tell you the truth. So they provide that information for me, which is really great. Then I also ask him and myself, how can I steal it from myself? Because

[00:24:58] Samar Shah: love that,

[00:24:59] Stephen Key: there's some really smart people out there that are going to try to reverse engineer what I have, just like Lego, they did the same thing.

They tried to reverse engineer it. Okay. So by doing that, now I've got workarounds so no one can work around me. I got variations. So once I've added all this together and a lot of drawings, drawings, pictures are worth a thousand words. I love them and they're great selling tools. So when I add all this together in a provisional patent application, when you see it, you're like, no one knows.

They can't interpret it. Because there's so much there that companies just say, okay, because no one from those departments from manufacturing to legal knows all of it. And because when you put it this way, it's how to get deals done. So they're selling tools. And then when that goes to a non provisional patent application, you pick and choose the things you need.

There's just a strategy that, that I've used. Now this, for [00:26:00] simple ideas, I don't think you need to go to that degree.

Okay, great. But if you're really working on ideas that have big potential, you believe, you work with big companies that you need to really think it through. Right and get some help.

I mean you can't do it by yourself You're going to need to get some help and once you do that, then you're providing Enough good information to that patent attorney or the patent agent where they can do a great job for you Because they're only as good as the information you're providing so there's a really simple strategy to this.

I think that a lot of entrepreneurs and startups should probably think about really knowing more about their IP, knowing more about their intellectual property, knowing more about their point of difference, knowing more about what the market's saying. So they really file some really great stuff.

[00:26:52] Jamie Brophy: You're using the provisional patent application as a tool to, project your idea while you do all this, contact the companies and do all your research.

The Role of Prior Art in Shaping Patent Strategy

[00:27:01] Jamie Brophy: My next question would be, at what point do you analyze the patentability of your idea and how important do you think that the patent is?

Because, we've had some clients come to us where. It's, we tell them it's going to be really difficult to get a patent on this. It's a great idea, but it might not be possible to get a patent on it. So I guess how important do you think that patent piece is to getting a product to market?

Building a Strong Team Beyond the Patent

[00:27:28] Stephen Key: I don't think it's as important as people think it is. I think it's important, but there's other things I think that are just as important. When it comes to just getting the deal. If I have an application that's done extremely well, but I put the right team together, know how, experience it takes away risk.

So I don't think it's just a patent. I think people are fooled. I think you go into a situation where you built a right team and a company can look at it and they're confident to go forward with it, right? [00:28:00] So I think you wrap your IP with your team and knowledge. I think that's a much stronger approach.

I've signed licensing agreements that have nothing to do with the IP I filed. It had to do with my team, it had to do with knowledge, it had to do with a lot of other stuff that had nothing to do with patents. Because at the day, those are arguments. And sometimes you're going to be suing people and do, and that's just a messy thing.

But here's the other thing I think is really important.

A Real-World Example: Overcoming Prior Art Challenges

[00:28:28] Stephen Key: When I created this one technology, it was a rotating label. I was in a Procter Gamble meeting. The president and CEO of Procter and Gamble saw my technology and says, come on out, show my technical group, your great technology. So I went out there and I didn't really know what to expect.

I was just so pleased that someone wanted it. So I went out there and they had their whole team was there. And I had my marketing person there and my manufacturing there. And I gave this quick presentation and there's about 30 people in the room from Procter and Gamble. And they slid this piece of paper across the table.

And he said, Mr. Key, we're not going to pay one penny for this idea. And they all walked out. And I didn't know what that piece of paper, I didn't know what it meant. So I looked at it and had all these numbers with their patent numbers, prior art. So I sent it over to my attorneys and they said, Steve, we did a prior art search.

We didn't find anything, but they found your idea. You're not the inventor. In fact, it's been invented by two people 50 years ago. And not only a little bit like your idea, exactly your idea. I started thinking about this, that why would they invite me out to embarrass me? Why would the CEO love it?

Why would people say that they love this idea? But why was I going to let prior patents stop me from going forward?

And what I realized when I read that patent, there was no method of manufacturing.

So today that technology, we sold 500 [00:30:00] million labels. I have 20 patents on that technology. Someone told me I'd never get a patent on. So I'm really careful when people say that. Because I think you can always find something to give you some perceived ownership. You just have to look at it from a business perspective a little bit, because if there's a patent out there, prior art, but it's not on the market, there's a reason why. I try to find the reason why, and then I file that. So I'm very careful when someone says that's not patentable. Maybe yes, maybe no. I think we have to dig a little bit deeper. And I think then at that point, find that point of difference. You might have to change it, tweak it, change it. Have to do some more homework.

But then wrap your wrap, some really good people around it, your know how wrap it around it. But I love when they ask me that too. I love in a meeting when they say, Steve, why are we paying you? There's prior art on this. I love when they ask that question because then I come back and say, look, of course there's prior art.

There's prior art on everything out there. But have you seen my idea on the market? no. And that's what we're filing on the difference between that prior art and my idea that you're looking at today. That and that difference is how we figured out how we're going to bring it to market and they always say I get it

[00:31:29] Samar Shah: I love it. I've said this to Jamie and I've said this to our audience ad nauseam. So they're familiar with this, but I always tell people that, hey, A prior art search is just an indicator, right? You can spend a few thousand dollars on a prior art search. It'll give you an idea, but it is not an exhaustive, definitive answer to your question.

So I used to do high stakes litigation work at a, a very large corporate law firm in Silicon Valley. And I've, we've taken cases to trial, [00:32:00] spent tens of millions of dollars on a litigation. And in every case that I took to trial or did work up on a litigation our clients spent easily over a hundred grand on a prior art search.

So if you want that level of certainty and you want to know for sure. Then you can spend that kind of money, right? And then you'll know, maybe. But yeah.

[00:32:21] Stephen Key: what's really interesting about that. Patent examiners don't they do a limited amount of searching if you ever get in a litigation situation, they're going to do a lot of prior search I think you do just enough For me to see where some of the landmines are Right, I don't need to know all the landmines, some of the big ones that just appear and that kind of gives me an idea of where I need to maybe skirt around it or maybe change a little bit or find that uniqueness.

I wasn't really thinking about. It just gives me. Some knowledge of history of what happened. I like it to me. It's like the history of something. And I really want that because I'd hate to be in a meeting when they pull some of that up. And I know it exists, but I like to, I don't go crazy on it.

Trust me. And you can't, I don't do that. I'd rather look in the market first, but I do the prior art because it does tell me, but I'm never going to let it stop me. What stops me is my product on the market. That will stop me, but it will never stop me because there's a prior patent. Never.

[00:33:29] Samar Shah: I think this is really helpful.

The Art of Patent Writing: A Collaborative Approach

[00:33:32] Samar Shah: Stephen, one of the things that I always preach and again, I've said this 100 times over is that we have a framework for writing a patent application. And all of the things that you're saying is actually like it fits in really nicely with the framework that we have.

Because it helps us explain some of these things. When we write a patent, we all, I, we always think about it like a Russian nesting doll, right? So we want to start with a kernel of an idea, right? Which is really the feature set that enable you to access [00:34:00] your benefit statement. And then we say, okay which one of these feature sets can we live without, right?

So what we do is we want to write up that invention. And then we say, what can we live without? So we just remove those components and we write up the invention again. We know it's a little bit broader now. And then we say, okay what's left? What are the different ways of manufacturing or accessing this feature set?

We write it up again. And then we say, okay what's left? How can somebody create an alternative, right? What are alternative to these things, or what are some alternative ways to access the same benefit set? And we write up the invention again. And then we say, okay what's left? How can we expand the scope of coverage using broader terminology and words?

And we write it up again. So we'll end up writing the whole invention four or five times in a document and to allow us to get a lot of coverage on that piece of paper, which is, it sounds exactly like what you're describing, right? It's yeah, you want to figure out all these things and all the legwork and dump it into the patent document because it's a marketing tool, right?

I always think about it as a litigation tool, but it's the same thing your selling to a jury or a judge, as opposed to, a licensing person on the other side.

[00:35:04] Stephen Key: Well, I'm really glad you said that. I don't know if everybody does that, right? I think that approach is showing a level of care to provide something that has value. I don't know if you're going to find that from everybody, right? And that takes a lot more work, a lot more thinking. It I, Yeah I like that you're saying that because I do think it's to really create a patent that's, that has value today.

You have to do that. You do. And if you're not, you're going to have a patent that's not worth anything. And I know a lot of, a lot of patents that have been issued probably aren't that valuable to tell you the truth because they haven't done that level of detail. That's why it is a teamwork when you work with your, your patent attorney, patent agents, teamwork. [00:36:00] And you can only expect them to do so much given their time. So that's why I'm saying like, you need to collect some of this information and make it easier for someone, right? To take that information and write it in such a way that's going to give you the protection you're looking for.

So it's really a teamwork here. And and without that type of teamwork You're probably going to regret it or it's not going to be marketable or for some reason there's going to be workarounds. The situation with Lego, there was two words, they couldn't go, they couldn't get around two words and those two words were in there for workarounds. It was really thought about, it was thought out before we filed it. So that type of knowledge ahead of the game, it it's allowing you to feel confident going forward.

[00:36:53] Jamie Brophy: Yeah, I think this has been really helpful.

Closing Thoughts and Appreciation

[00:36:55] Jamie Brophy: Thank you so much for joining us today, Stephen. I think we're, I have so many more questions, but I think we're, I think we're out of time. We don't want to take up too much of your time.

[00:37:07] Stephen Key: Well, thank you. And I'm really glad you're bringing up these important things. I think they need to be talked about more. And I think more people need to understand the process. And I'm glad that you're sharing that and doing it at a higher level than most of the people that I see out there that are providing the service, but they're not explaining it this way.

And they're not asking the inventor to help provide that information or question that information. I'm just not seeing it. So I'm really glad that you're doing that and providing that type of valuable service to people. Congratulations on that's good.

[00:37:42] Samar Shah: Thank you. Yeah, no, and we appreciate you. We'll have to have you come back again and talk more of these things, but we appreciate all the value you've given. You've given us personally and to the inventor community. It's been really great. Thanks, Stephen.

[00:37:55] Stephen Key: Well, thank you very much for having me.

[00:37:58] Samar Shah: Thank you.

Thank you for joining us on the Patent Pending Made Simple podcast. I hope you enjoyed our show. If you'd like to receive updates, view the show notes, or access a direct link to any resource, go to the episodes page on patentpendingmadesimple. com. To help others find our podcast, please like, share, and subscribe.

Thanks again for tuning in. I look forward to having you with us next time on Patent Pending Made Simple. This podcast has been hosted by Outlier Pat attorneys. And is not indebted to, nor does it create the attorney client privilege between our hosts, guests, or any listener for any reason. The content of this podcast should not be interpreted as legal advice.

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