Joshua Goldberg | Nath, Goldberg, & Meyer
First To File, Not First To Perfect
JBG_HighRes (1)_edited.jpg
email icon.png
LinkedIn t.png

Nath, Goldberg & Meyer is a boutique intellectual property law firm that offers leadership to its clients in developing, managing and licensing patent and trademark portfolios. We have a track record of protecting advanced technologies in biomedical, chemical, pharmaceutical, electrical and mechanical inventions, designs, trade secrets, trademarks. We offer both domestic and international general counsel services.

In this episode

You don't need all the i's dotted and t's crossed to file for a patent advises Joshua Goldberg of Nath, Goldberg & Meyer. In a first to file system, as most countries including the US have, speed to file is of the essence. You probably need less detail than you think to qualify for a patent. Describing the idea is what counts. You don't even have to have a working prototype to get a patent. In Joshua's experience, it should take 6-12 months, with 9 being a good average, to go from idea conception to filing your patent application with the USPTO. Joshua shares a great story of how one of his clients got their patent application filed 1 day before their primary competitor submitted theirs on the same idea! Listen to the end for a gift that will be of value to anyone considering getting a patent.

A glimpse of what you'll hear

02:38 First to file doesn't require your invention to be fully baked.

04:18 You don't even need a working prototype to file for a patent.

05:48 Your patent application should be broad not overly narrow to maximize your protection and give you scope to tinker after the fact.

09:36 Benefits from filing early and broadly.

13:22 Recommended process to minimize the time between idea generation and patent filing.

17:15 Learn about Joshua. Email Joshua at jgoldberg@nathlaw.com or call him at +1.703.548.6284.

Episode Transcript

Centricity Introduction  0:04  

 

Welcome to the Best Kept Secret videocast and podcast from Centricity. If you're a B2B service professional, use our five step process to go from the grind of chasing every sale. to keeping your pipeline full with prospects knocking on your door to buy from you. We give you the freedom of time and a life outside of your business. Each episode features an executive from a B2B services company sharing their provocative perspective on an opportunity that many of their clients are missing out on. It's how we teach our clients to get executive decision makers to buy without being salesy or spammy. Here's our host, the co founder and CEO of Centricity, Jay Kingley.

 

Jay Kingley  0:43  

 

I'm Jay Kingley, co founder and CEO of Centricity. Welcome to our show, or our guests share their provocative perspective on what their target market is missing out on. I'm happy to welcome back to this show, Joshua Goldberg, co managing partner of Nath Goldberg and Meyers, an intellectual property focused boutique law firm. Josh is based in Brooklyn, New York. Welcome back to the show, Josh.

 

Josh Goldberg  1:13  

 

Thank you very much, Jay. I'm happy to be here again.

 

Jay Kingley  1:16  

 

Josh, as a former engineer, someone who has worked in manufacturing worked in technology, I think we understand the importance of patents and getting protection on your invention. I think one of the things that, you know, I experience and certainly, in talking to other businesses, other people in charge of R&D in a variety of corporations is the stress that they're feeling, because they start with this great idea. And they can describe the idea. And the idea is certainly worthy of patent protection. So now the race is on, okay, we've got to actually design it. Now. We have to prototype it, we have to test it, we have to be sure that it does what we think it does. Because if we need to tweak it, I mean, we have to go back and obviously change the specs in the patent. Now we're in a first to file system. So there's this big race that's going on. And the stress of having to go through all those steps and get that prototype get that actually working unit or working piece of technology is really, really stressful. And Josh, I'm wondering, going to the patent expert here. Is there a different way that you that a business should be looking at when is the right time to get their patent?

 

Josh Goldberg  2:51  

 

Oh, sure, Jay, and let me start by saying, part of what you said, is absolutely 100% correct. And that there's a race going on here. We are in this first to file system now. So that means there's a race to file at the patent office. If you and your competitor are both working on the same thing independent of each other. Whoever files first is going to win. Doesn't matter if your idea is better than somebody else's, your implementation is better than somebody else's a file first, they win. That's the important part here. What does that mean to you, as you're developing your new products, your new ideas, your new innovations. It means that if you wait until you dot all the i's, cross all the t's, figure out which screws need to be twisted by how much pressure actually make the entire thing, scrap it and make it again and make it again and do each iteration, you're probably going to lose. Because odds are if you're creating something, somebody else is working on it too. They get to the patent office before you guess what? All your work could go up in smoke like that you might not have anything left. So you absolutely once you have an idea, a concept of what you're doing and how it's going to work. You want to make sure you're getting the process to get to that patent office as

soon as you can.

 

Jay Kingley  4:23  

 

So Josh, or am I hearing you correctly, you're advising that you need to file that pattern once you've solidified your idea well, before you have to go through the steps of prototyping and improving and manufacturing a commercial version?

 

Josh Goldberg  4:42  

 

That's 100%. Correct, Jay, that's a very common misconception. In fact, just over the past month, I've talked with three people who have come to me and said, Well, I can't patent this yet. I don't have a working prototype. And my answer to them is the same thing. I'm going to tell you, so what? You don't need a working prototype. When you file your patent application that is considered as your working prototype, you have the idea, you're able to describe it in enough detail that somebody else can understand what you're doing. In the patent law perspective, that's all you need. 

 

Jay Kingley  5:22  

 

But Josh, I don't want to be the contrarian here. But let's say I take your advice, which by the way, I want to do, because that would enable me to get there first. But what happens? If it turns out that when I do the real prototype, when I do the real commercial version, it's not exactly how I described in the patent, and you know, I had to make a couple of tweaks, you know, I had to change the type of screw that I used, had to change the finishing, you know, maybe the tolerance needed to be a little bit off. So does that mean I blew the patent application, it's going to be ruled invalid? And therefore, I'm back to square zero?

 

Josh Goldberg  6:10  

 

Jay, that is not what it means at all. So there are a couple of answers I can give you the first one, if your patent attorney is doing their job, whoever it is that you're working with, they're not going to get you protection on exactly what you're doing. Right. We call that a picture claim. If somebody else is out there, they have to do the same exact thing is you to be infringing your patent, that's not so good. Because then if they make any change whatsoever, they're not infringing you at all. You want to write your patent application in such a way that it covers a little bit more than your exact, specific solution. You want to write it so that you have a little more coverage, you can stop others from doing anything like what you're doing, not just this, but that. So just because you're tweaking your idea, you're refining it, that doesn't necessarily mean anything for me from the patent law perspective, I want to write it in such a way, all those tweaks, all those refinements are included in what we get you protection for. The other side of it is if you have to make a substantial change, not a tweak, but a really big change. Well, that just means you file another patent application on that really big change. And now you have two different solutions locked up. And you even if one is better than the other, the old one is worse, you're still stopping people from competing with you. And maybe driving, you know, taking away some of your market share, even for a worse solution. So there are a lot of good reasons to go ahead quicker rather than wait.

 

Jay Kingley  7:58  

 

So if I'm hearing you right, Josh, you're saying the art of filing the patent is to be at some level as broad as possible, but consistent with still getting approval. And then that is going to do two things for you. Internally, it gives you lots of scope for tweaks, and for modifications without going outside of the patent. And the other thing you've done, perhaps even more importantly, from an external perspective, is you have carved out a much bigger chunk, if you will of the market with your idea, which gives you a lot more space in that competitive environment to capitalize either by keeping people out or by compelling them to pay you licensing fees to use your patent.

 

Josh Goldberg  8:54  

 

Absolutely, Jane, let me give you an example. So people can understand how this works. Let's say you design a new pen with an ink that lasts 25% longer. And the new ink that you design is blue ink. Right? That's exactly what you're working on. You're working on a blue ink. So you get a patent on blue ink. Well, if somebody else wants to sell black ink that has that same 25% efficiency, they can do that because you only protected blue ink. But if instead you figure out okay, let me get more than just blue ink because I know ink is sold in a variety of colors. And as long as all the other critical pieces are there that helped me get that 25% efficiency. I still have something workable. I still have a patent that means something from the external perspective like you're talking about. I can now stop anybody else from selling blue ink, red ink, green ink, purple ink, whatever it is, versus just the blue ink.

 

Jay Kingley  10:01  

 

I'm now the the owner of the business or the head of R&D, or in the legal department of a company over overlooking what we need to do for IP. But let's start with the benefit. I think you've you've talked about it, but just sort of summarize it down for us. The benefits of the business, have you been able to lock in your patent before anybody else.

 

Josh Goldberg  10:31  

 

There are multiple benefits. Number one, the most important being, if somebody else beats you, right, they win that race, they get to the patent office first. Guess what, they can keep you off the market. So you spent a lot of time and energy and effort making the next big thing, you have the greatest idea that mankind has ever seen, you figured out how to slice bread, an eighth of an inch thinner, with nothing better to do you know, no fuss, no muss. Somebody else won the race of the patent office, you've rested all your hopes on your bread slicing machine, guess what? Now you can't sell it, they can stop you. What does that mean for you? What does that mean for your business? Are you going to be able to keep your business? Let's forget about how much profit are you going to make? Are you even going to be able to stay around? Or are you going to have to go belly up and say I need to move on to something else entirely. I don't think anybody wants to do that. So you know, winning that race is absolutely critical to you as a business owner.

 

Jay Kingley  11:38  

 

Josh, I, I'd love to hear a story if you've got one about the closest race to the patent office that you've ever seen. And as you say, it's like winner takes all, what's the closest you've seen?

 

Josh Goldberg  11:56  

 

Well, the closest I've seen Jay was actually 24 hours. I had a client that we filed a patent application for them on May 7, because we found out much later in time that they had a competitor working on the same ideas then. And for whatever reason, couldn't tell you exactly why they filed their patent application on May 8, when we got into it and figuring out, okay, who won who gets the patent here, my client got their patents. A competitor didn't. Why? Because they were one day later. And that's all it took. They were one day later, guess what they lost my client won day had the market to themselves. 

 

Jay Kingley  12:39  

 

Now, typically, Josh, and just ballpark this for us, if you could, if you think about your typical company that's coming up with this great idea, from the moment of inspiration, until they've worked it through enough, I sat down with a patent attorney found the you know, wrote out all the application did all the research and investigation of prior art, etc, that good patent attorneys do and then get it to the patent office. How much time would you say would be our range of typical amount of time that you've seen that it takes to do that effort?

 

Josh Goldberg  13:19  

 

I've seen it done in as little as two months. Now, is that the standard? No. But it can happen in that shorter time period, I'd say typically, you're looking somewhere from idea creation to getting a patent application on file, nine months or so give or take. Because a lot depends on what it is you're creating. If you're working on something simple, mechanical, it's more like four or five, six months. If you're working on something chemical oriented, that's going to have a longer creation time. And now you're looking at nine months to a year. 

 

Jay Kingley  13:57  

 

So I just wanted to mention for our listeners, that you're spending four months, six months, 12 months, putting this whole thing together, and you lose by 24 hours. And it's just staggering. Which leads me into my next question, Josh, the process that you would recommend a company adopt and implement, getting to the patent office as quickly as you can, because it seems like hours count. So what would be what would be best practice that you would recommend? 

 

Josh Goldberg  14:39  

 

It all starts with having a clear system in place for documenting all the different inventions and technologies you're working on. Because if you have 2 3 4 people who are all designing, creating, doing different things, and they're working independently from anybody else, you They might tell people what they're doing. They might not. And if they don't, you run a real risk of some valuable property, some real world products not being protected timely. So you have to make sure that as a business, you really do have that system in place. Reporting system, whatever it is, you know, it used to be through a lab notebook process, is that lab notebook process, what you do now? Well, let's face it in the age of the pandemic, when we're all working remotely, we need something that's more virtual, something that you can record from wherever you are. But you still have to have that clear system. And then once you have that, you need to have a good working relationship with a patent attorney. So that once it's clear that yes, we do have this idea, we have a pretty good idea how it's going to work, you need to get to your patent attorney as soon as you can. So they can do all the things you just talked about. They can do that patent search to make sure yes, this is a new idea. Or even if it's not a new idea, here are the aspects, the pieces of it that are new that we should focus on. And this is where we can guide development. And then now that we have that part of it clear, let's get that patent application in process and get it on file as soon as we can. 

 

Jay Kingley  16:23  

 

Josh, one of the things that I just want to emphasize that you have said, is getting the patent attorney involved sooner rather than later, in this world of first file. In this world where I think there's going to be for a lot of r&d and business people, little uncertainty about how much do we need in order to secure the patent? Don't do one day's more work than you need to have that solid application. And it would seem to me bringing in your patent attorney early, getting their strategic advice on how much more do we really need to lock this baby down. Because as you told us in that very compelling story, 24 hours can mean the difference between great success and utter failure. So we're gonna take a quick break, and we come back, we're gonna learn a bit more about Josh.

 

Centricity Introduction  17:24  

 

Wondering how much longer you have to grind and chase after every lead conversation and client, Wondering how much longer you have to grind and chase after every lead conversation and client, would you like clients to knock on your door so you no longer have to pitch follow up and spam decision makers. Well Centricity's The Tipping Point program uses a proven five step process that will help you get in front of the decision makers you need by spending less time on doing all of the things you hate. It's not cold, calling cold email, cold outreach on LinkedIn or any other social media platform, or spending money on ads. But it has a 35 times higher ROI than any of those things, leveraging your expertise and insights that your prospects and network value. The best part even though you'll see results in 90 days, you get to work with the Centricity team for an entire year to make sure you have all the pieces in place and working. So you can start having freedom of time and a life outside of your business. So email time@Centricityb2b.com to schedule an 18 minute call to learn more.

 

Jay Kingley  18:24  

 

Welcome back. We're talking to Josh Goldberg of Nath Goldberg and Myers, the boutique firm of intellectual property attorneys. Josh, I'd like to find out a little bit more about you. We're going to start by asking the question of what are the pain points that your firm solves for its clients? And why do they need you to get rid of that pain? 

 

Josh Goldberg  18:48  

 

One of the biggest pain points we solve is we have clients we have people who come to us that there's a lot of sleep at night. Why? Because they have more work than they can possibly handle. They have more different things they're looking at that they possibly can possibly handle. And they worry that they're going to let something fall through the cracks. That may be one of their most important inventions, one of their most important products is going to actually get all the way to the market not have any protection. And they're going to lose sales because of it. Either. They're going to have a competitor out there, or somebody else is going to do it first and be able to stop that people come to us to make sure that doesn't happen.

 

Jay Kingley  19:35  

 

One of the things that we do with our returning guests, is we have a little fun we use something that we do in our Centricity Tipping Point program, which I know you're aware of. We call it memorable moments. It is a way that we build deep relationships and learn things about each other that is I like to joke around our spouse and significant others doesn't even know. So we have 411 questions. And Josh, you're going to pick, give me a number, which is going to determine the question you're going to answer in real time. 

 

Josh Goldberg  20:13  

 

All right, let's see here. Let's go with question. 256 256.

 

Jay Kingley  20:23  

 

Oh, great question, Josh. Tell us the most memorable live performance of any kind, be it music, theater play. You name it. Live performance.

What is the most memorable that you've been to? 

 

Josh Goldberg  20:39  

 

Wow, that's an excellent question. This goes back. I've known my wife for a very long time. We were highschool sweethearts. And we are currently actually on our third go around together. This one, you know, sometimes it takes three times for things to stick. Third time's the charm, whatever you want to say. Back when she was graduating high school, rather than go to her senior prom. She got her and I tickets to go see Tommy the Musical on Broadway. And yeah, I mean, this was a big deal back then. And I'll always remember because I was working. I didn't want to go to a senior prom. I'm two years ahead of her. I'd been through there and done that. And I was so happy, so ecstatic that we got to do something really interesting, but I consider it really interesting. Then go to another one of these dances and, you know, sit around the Punchbowl and do whatever. It was stellar and staggering. You know, we went out to dinner beforehand, right there, the theater district and Broadway in New York, had a wonderful dinner, saw the performance had such a better time then everybody who was at the prom that we even met up with some of her friends at a comedy club afterwards who'd been to the prom, and we were comparing our nights, and boy was our night better than theirs. So there's no chance I'll ever forget that.

 

Jay Kingley  22:03  

 

What a magical moment. This is that's really terrific. We've had a really great discussion. We today we've cleared up what I think is a significant misconception that could literally cost you your business about not waiting and getting that patent filed early. I'm sure we have got listeners, they're going to want to continue that discussion with you explore how to better improve the speed of action. What is the best way for our listeners to get in touch with you? 

 

Josh Goldberg  22:36  

 

Well, Jay, I can always be reached by email. That's JGoldberg, J G O L D B E R G at Nathlaw, N A T H L A W.com. Or you can give us a call here at 703-548-6284. 

 

Jay Kingley  22:57  

 

And we will put that in the show notes and as an insert into our video, making it easy for you to reach out to Josh, Josh. Another stellar performance on the show. But yes, it's not your first rodeo with us. And you know, I will not let you leave here without offering a gift to our listeners. What do you got for us this time, Josh?

 

Josh Goldberg  23:25  

 

Well, Jay, I like talking to people. And I like helping people. So anybody who's listening, if you want a free consultation, talk about what you're doing, see what options are available, and how you can help your business. Just reach out to me mentioned the Centricity show. And I'm happy to give you that free consultation. 

 

Jay Kingley  23:45  

 

Josh has given us all the clarion call to get off our butts, get our patent application in sooner rather than later. It's a winner take all first of all system, folks, right? Don't get this wrong. So Josh, thank you so much for sharing your insight with us today to our audience. Let's continue to crush it out there. Until next time.