Joshua Goldberg
Nath, Goldberg, Meyer
When It Comes To Patents, Time Is Of The Essence
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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

Joshua Goldberg of Nath, Goldberg & Myers enlightens us on why it takes so long to get a patent improved and on a little known secret that can cut the decision time from 2-4 years to 1 year. The cost to take advantage of this program by the USPTO is only a few thousands of dollars and you have to fill out the expedited application by the book and perfectly execute the process or it will get tossed out. But if you're a company, either established or venture backed, and establishing ownership of your intellectual property is critical to your success, then the return on your investment will be off the charts.

When It Comes To Patents, Time Is Of The EssenceJoshua Goldberg
00:00 / 30:14

A glimpse of what you'll hear

03:18 It can take 2-4 years to get a patent approved and in that time you risk have the technology move on

04:49 Why it takes so long to get a patent approved

06:24 You can get your patent approved in only 1 years if you know the secret

09:20 Why it's worthwhile to pay the small fee to accelerate the decision making process

14:54 Wha you need to do to accelerate the patent approval process

18:28 Learn about Joshua. Email Joshua at jgoldberg@nathlaw.com

Episode Transcript
(Note: this was transcribed using transcription software and may not reflect the exact words used in the podcast.)

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 another episode of our Best Kept Secret show, where I am happy to welcome Josh Goldberg. Josh is the partner in charge of the chemical, pharmaceutical, and biotech practice areas of Nath Goldberg and Meyer, Josh prepares, acquires, and protects us in foreign patents. So he is an intellectual property attorney. And Josh is normally based in Brooklyn, New York City. Welcome to the show, Josh.

Joshua Goldberg 1:18

Thanks so much, Jay. It's great to be here with you.

Jay Kingley 1:21

Fabulous now, like you, and this is something probably our audience doesn't know. But like Josh, he and I were both undergraduate majors in chemical engineering. And my very first real job was with the DuPont Company. And my first day on the job, Josh, they gave me a notebook. And they said to me, you must write down everything that you do when you're working because it might be relevant to a patent application that we have to make. And at that young age, I'm like, Oh, my gosh, this is really serious stuff. I got to be really careful. But it really showed me from the very beginning of my career, which was a few years ago, just how important patents and protecting your intellectual property. Clearly today, if you look at the value, the business value of most businesses, be they large public companies, or even privately held companies, most of the value is in their intellectual property, where patents are one component of that. And that is really where the value in today's digital world is increasingly coming from. But there's a problem that I have seen Josh, which is in talking to lots of business owners, the frustration about how long it takes to get a patent. Many people have told me it's taking them years, they're frustrated with it, they are sitting there often wondering, is it worth it? Because the world of technology tends to move far more quickly than the time it takes for them to actually get the patent issued by the Patent and Trade Office. Now, this is your expertise. You're one of the top practitioners in this field is are their feelings legitimate?

Joshua Goldberg 3:19

Well, Jay, you know, that's really interesting that you have that perspective, because I hear from many people. In fact, I would say most people are under the impression that that patent process takes a really long time to complete. That was a good reason. Because let's face it, it takes anywhere from two to four years, on average, from the time you file your patent application, to the time you get your patent. Alright, so just like you I hear from an increasing number of frustrated people about this. Why? Because this can cause many problems, from uncertainty to what property the company's own lack of clarity as to what technology should be invested in all the way to concern that by the time this patent is granted, technology will move on the patent will have little to no value. So yes, this is something that is a very real concern.

Jay Kingley 4:14

You know, Josh, I was before starting centricity. In a previous life, I was involved in a venture back startup that had a big tech component. And, of course, we filed for patent protection. We got our very famous patent-pending, and the investors that we were pitching sort of just rolled their eyes, and they're like, when do we know? It's for real? Because guys, this is a primary reason we're investing in the company due to the tech. So, Josh, one of my questions is, why is it taking so long?

Joshua Goldberg 4:51

There are a few different reasons. Number one, a lot depends on the specific technology you're involved with. Right? So if you have a simple widget, for lack of a better word, let's say you know, a pen, a new pen with a new piece of ink. That's a very simple technology. That will take less time. Because it's an area technology area where there's less innovation less happening. There are fewer filings at the patent office. If instead you're involved in something like software, as an example, you have everybody and their brother has a new software invention. So many of them file their patent applications for it. And the US Patent Office cannot keep up with the number of examiners they have. So everything gets delayed and delayed and delayed. And that's just to get the process started. Right? Once the process is started, you now have to convince your patent examiner, yes, I'm entitled to a patent. And depending on who the examiner is, what kind of instructions they've gotten, and again, what type of technology you're in, they might just reject and reject and reject.

Jay Kingley 6:07

That's, you know, it's so frustrating, I'm sure for all the parties, you know. So Josh, I don't want to wallow in misery here. I am hoping fingers crossed, that you have a solution. What is it that people can do to get this process speeded up to really secure the viability of their intellectual property?

Joshua Goldberg 6:32

Well, you're absolutely correct about that, Jay, there is a way to short circuit the entire process. So there's a little known program at the patent office where if you pay an extra fee because as we all know, the US government likes its fees, you'll be taken out of turn and get through the process within one year. Think about that. I just said it's two to four years on average, I'm telling you by paying some extra money, you can get done within one year. Now, of course, this is no guarantee you will actually get the patent. You still need to meet all the normal requirements. But at least you know where you stand by the end of that year. And if you're using this for fundraising, to protect your assets or your markets, you know what you need to do by the end of that year, one way or the other. There's such a big cost to uncertainty for any business. And I just want to emphasize the point that you made. This doesn't guarantee you a favorable outcome, but it gets you resolution. It is a way to resolve uncertainty if I'm hearing you right 50 to 75% quicker than going through the normal channels. Josh, just order of magnitude, how much are we talking about this extra fee. So that all depends if your company size. So if you're a big company, it's an extra $4,000 Give or take a little bit. If you're a small company, you pay half that an extra $2,000. If you're what's called a micro entity, the smallest of the small, it's an extra $1,000. And I have to tell you, Jay, when I just recently two three weeks ago, at lose track of time and Pandemic world, but I was talking with a software company based out of the UK. And I was just telling them about this program. He asked me what the cost was I said for your size. It's an extra $1,000 He says what I was expecting you to tell me $20,000 I can't believe that I can do this for such a cheap price.

Jay Kingley 8:47

Yeah, that is stunning. I was thinking you're going to tell me five, even six figures to get that kind of expedited service. It I don't want to trivialize any sum of money. But if there is such a thing as de minimis, really, pennies. It's got to be this. But let me talk about that's the cost side. But Josh, let me ask you about the benefits side, what do you see as the benefits to a company in the decision-maker for being able to rapidly accelerate the decision making process?

Joshua Goldberg 9:27

Well, there are quite a few, just to name some of them. And there are more. If you're a smaller company, even a medium-sized company, you're looking to sell your company or get investment. No different than you were just saying in your story, Jay, whoever might invest will treat a patent in hand very differently than patent pending, or even no Patent No sense of IP. The way I like to put it is you're looking for investment in some way, shape, or form, and you're going to be going out there talking to people. And they're going to say, Well, what's your IP position? And you can say, oh, yeah, I'm working on it, I've been thinking about it, what's IP, and your ask just keeps going down and down and down. Or you can say, I have this patent, I have that patent, here's my strategy, here's what my portfolio looks like. And your ask is just going to keep going up, up and up. And let me tell you, if you're a company, with any international aspirations, and you have, say, three or four different technologies, but you can only afford one or two of them, how do you know which ones are the ones that are worthwhile to pursue, and to put your money behind? Well, if you know, the US Patent Office got gave you a patent? That's a pretty good sign that that's worthwhile investing in around the world, versus your other technologies that maybe you're not so lucky. Why spend the five or six figures like you were talking about? On a guess? Why not just go ahead and know, and spend your investment wisely.

Jay Kingley 11:14

And, you know, my experience with anyone looking to raise money is a really strong portfolio of IP, covers up a lot of sins, there'll be a lot of things in investor group, say, Oh, we can fix that we can get you're this type of skill, this type of, you know, employee, this location. But what they can't wave their hands and do is get you the IP. So really, I think it's the foundation of really any business in terms of its value. What about for the person who's got to be, you know, running the company, in charge of finance, in charge of value, talking about emotionally? What's going on, when they're on the long track versus the short track?

Joshua Goldberg 12:03

Well, yeah, the short track, of course, is it helps you sleep at night, you don't know where your next money is coming from your next investment is coming from. Now you have a little more peace of mind, it's a little easier. But let's say you're, like many other companies, these days, you have talent, and you have some really good talent, you'd like to keep them or you'd like to attract more talent. If you're able to get patents in their name, get the nice certificate you put up on the wall, make a big deal out of it to your company. I've got to tell you, employees and ventures, researchers, they all love seeing that, right? It's a small thing. It means a lot. When you're talking about how you treat your employees and what kind of company you are. I've seen companies that have the wall of fame. Patent plaque after patent plaque after patent plaque, and inventors will compete with each other, hey, I'm on the wall and three spots, you're only on there. And two, what have you been doing lately? It almost becomes a game. And as we all know, premium talent is at a premium right now. There's no way that you can guarantee you can keep your people, you can attract new people. You do everything you can. And this is one of those things you can do.

Jay Kingley 13:29

Well, I don't want to date myself. But I remember the very first day I showed up at DuPont. And you know, they told me who my supervisor is going to be in he was this older engineer and I whatever, right? I'm a 20 21 year old kid and everybody in the hallways whispering to me, he invented a Cron. He's a God. Right? You are so lucky, because he mentors one new engineer a year, and you won the lottery, because and he was revered because of his ability to create IP that moves the needle for DuPont. And DuPont showed their love back to him. So I couldn't emphasize that more. Joshua is if you're running a business, it's we're in a talent world, right? People who can create IP for you value beyond belief. And you know, the other thing, Josh, I just to transition, the ROI. You know, you start by talking about how low the cost was to expedite in, you know, which translates into this huge reduction of uncertainty, plus all the benefits both hard benefits in the emotional benefits that you talked about. The case to me is overwhelming the ROI. You know, at some point, you have so many zeros, it's not worth even trying to calculate it all out. So alright, there, what do I need to do?

Joshua Goldberg 15:02

Well, you know, it's interesting, he asked that because the process really looks very similar. For a normal patent application, you start with your patent search to make sure that your invention or technology actually is new, nobody else has done it before. Then you move to drafting your patent application, making sure the inventors are in agreement with what is being said. And then finally, you file your patent application. Now, here's where it gets a little different. So you have to pay that extra fee I mentioned because, again, the government likes its fees. But you also need to submit an additional petition to participate in this accelerated examination program. And this is where it gets really tricky. Because the petition has to be done absolutely. 100% correctly the first time. If not, you're not in the program, you're out. You have to pay the fees in the right way. And it's kind of a bifurcated fee. If you don't do it, right. Guess what, you're not in the program, you're out. So it, it's easy and simple. If you know what you're doing. If you don't know what you're doing, and you're going to do it on a whim, I can bet I'm willing to bet you're gonna run into a pitfall.

Jay Kingley 16:18

That's why they call it government bureaucracy. do it our way or the highway.

Joshua Goldberg 16:23

And you know what they say? The best kind of correct if you're a government bureaucrat is technically correct.

Jay Kingley 16:34

I love that. I love that. All right, Josh, I have to tell you, uh, you know, I always knew about patents, the importance of patents, I've heard the frustration. This is the first time someone has really shown there is a light at the end of the tunnel. And in fact, that tunnel is a whole lot shorter than most people think. Now, when we come back, we're going to learn a bit more about Josh, and what Josh actually does.

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Jay Kingley 18:04

Welcome back, everyone. Let's take some time. Find out a bit more about Joshua. Josh, you talk to us about this program. Clearly, I know this is a major pain point, you are on top of it. A great resource to get that done. But I know that there's more that you do for your clients beyond that, talk to us a bit about some of the pain points that you solve for your clients. And why is it that they need you to help them get rid of that pain?

Joshua Goldberg 18:34

Well, Jay, in addition to getting patents quicker for people, one of the things I briefly touched on, was the whole sense of international protection. If you get a US patent, guess what that means you're protected here in the US. And here in the US only. If you want to have sales in Germany, or Japan, or Korea, you need to get patents in each of those countries. And that's a real area of expertise for my firm. I do not know anybody who does the international protection of patents better than we do. We have a huge network of associates that we've built up by traveling over the years. And this is where the past 18 months have gotten really difficult for me because I have not gone anywhere outside of the country since February of 2020. So I've been doing a lot of zoom calls, early in the morning, late at night talking to people in China or Australia, to make sure I don't lose all those relationships with people. In fact, one of my clients is the US government, the US Department of Agriculture. I do all of their non US patent work for them. They have a whole internal team of people to do US work. They have no capacity to do external work outside the country. I fill that gap for them. I do that for many other people too.

Jay Kingley 20:03

Josh, I just want to interrupt you here. Because I really think this is you know, and, and maybe we'll do another show with you talking about this issue. But really briefly, the standards to patent in this country, you know, how they judge versus most international, is countries is different. And, you know, just real briefly, if here I am in, for example, the United States, I've done everything I should protect myself, I am just going to guess because competition is fierce. You've got foreign competitors, trolling patent applications, and seeing if they basically can legally steal your IP and freeze you out of certain international markets, because they get those patents on your work that you don't. So just real briefly, a little bit of education on that?

Joshua Goldberg 20:58

Oh, absolutely. There is a whole industry on patent mining. And sometimes it's for a completely benign reason, right, you want to figure out where I need to take my research, you look to see what other people have done patents. That's great. Then you get into less benign reasons. Okay, so what have people done in the US? Or What have people patented in Germany or Europe? Gee, have they protected that invention anywhere else? No, well, let's manufacture that product here in China, or in India, or in Vietnam. And now we can export it to the US, maybe do something a little different. And now we avoid the patents entirely, depending on what it is. Or maybe the US is the biggest market. But really the second biggest market is oh, I don't know, Japan. They didn't bother to protect their Japanese market. Let's just sell in Japan, take all the sales from the innovator. We didn't have to spend any money, we can charge a lot less for it, and still make a ton of money. How does that help the innovator company? Not one bit.

Jay Kingley 22:17

And Josh first to file versus first to invent?

Joshua Goldberg 22:20

Well, that used to be a bigger deal when you started DuPont because the US was first to invent most of the rest of the world was first to file. Now, for about 10 years or so, US has moved to a first-to-file system just like the rest of the world. But it's kind of a first to file Plus, there are still options where if you can show somebody stole the idea from you and filed first, they might not have rights anymore. But that's one way where you really need to know what are the laws in each country? And what does it mean for me?

Jay Kingley 22:57

And it also suggests to me, time is of the essence, if you have any intellectual property, you can't be sitting on it, because someone could fall before you and game over on your end.

Joshua Goldberg 23:09

Well, I have a story about that back in the day. And this is going back a while back to 1995. When there's there was a GATT treaty that we entered into June 8 was the day where if you filed before June 8, you got a longer potential patent term than if you file June 8 or after. And we had a client where our philosophy as a firm is you filed the day before if you can, the day before the deadline. So we went in being so close to the patent office, we hand-carried our patent applications to the patent office, got our filing date, got our patents eventually, life was good. Our client's competitor had essentially the same technology. They use a courier service because they were based up in Boston. The courier service came down to the patent office, it being the day before the law changed. There were many, many, many people waiting in line to get their applications and file. courier service looked at the line said I could come back tomorrow, no big deal. We had rights by one day that one day mattered. We got the patent. The competitor didn't.

Jay Kingley 24:25

Josh, you alluded somebody I want to just hone in a little bit, which is my second question. Talk to me about what makes you and your firm great at what you do.

Joshua Goldberg 24:38

In addition to all the things, I talked about our international experience, our ability to get new patents quickly. Where, unlike most lawyers, I know that we genuinely want to know what the business is of our clients. We're in this for the long term. We turn down work right and left from clients who come to us get me a patent. Do this do that. Well, what's the business purpose behind this? Well, I don't know. But it's something new that's out there. So let's do it. You need to give me a little more, come on. Come on wire. Is there a product here? Is this a defensive reason where you know somebody else is working in the same area? Why are we doing this? I am not somebody who wants to take my client's money just to take their money and maximize my billings. I want to be a true partner with my clients.

Jay Kingley 25:36

I encourage everybody to go to LinkedIn, lookup, Josh, understand all the different things he's done in his career. And by the way, he's far from done far from over. But Josh, I want to know what would happen in life, personal professional, that took a fellow pizon on chemical engineer. And now you are a named partner in a top intellectual property firm. So how did that happened?

Joshua Goldberg 26:08

Well, Jay, like you, I have my chemical engineering degree. And like you, I started working in the industry. And I went to school in St. Louis at Washington University. And I had my job at a very small company out in St. Louis, where we did drug delivery work. So what does drug delivery work mean? It doesn't mean I call somebody in half an hour later, a bunch of cannabis shows up at my door. What it means is that the big pharma boys, people like Pfizer or Merck, who develop these new drugs, new active ingredients, would come to us and say, Okay, we have something to treat your stomach or to treat cancer or to treat your heart, we need to make sure it gets to the part of the body that needs to get to please help us. So I was running spray dryers and coming up with solutions. How do you tablet this? How do you capsule this? How do you code it. So if it needs to dissolve in the intestines versus the stomach, versus something where you keep it in your mouth and it dissolves in your mouth? I did that for two years. It was a great experience, I would never turn it down. I would also never want to replicate it. You know, it taught me if nothing else, I was not put on this earth to be a bench scientist or a bench chemist. So I look around. Okay, this is not for me. What else do I do with my chemical engineering degree? And while I was at university, I had a professor, not my major. He's actually taught a class called the internal combustion engine because I also like cars. And he would like to tell us stories to his class that his patent lawyer buddy had his private ranch in Colorado that he took his private helicopter to, with his half a dozen or so fancy cars. Now I'm thinking to myself, gee, you know, I can do all these things. This might not be a bad career move for me. So I came back east came to Washington, DC to go to law school here GW University, George Washington University, thinking, well, all I have to do is go to law school, and I get all these things great. Life didn't quite turn out that way. I don't have a ranch in Colorado. If I had a helicopter to take me there, I'd probably be too scared to get into it because I have a fear of heights, and my fancy cars and Mini Clubman. So if you consider that fancy, I guess I have the fancy car, but I can't complain. It's been a very good journey. And I like what I do. I love what I do. I get to work with new technology every day, but do not have to make it myself.

Jay Kingley 28:50

Right. That is terrific. Josh, you have really, I think, enlightened me enlightened our audience, in giving us a different way to look at the patent process. And not a you know, it's that proverbial light at the end of the tunnel. But more than that, it's the fact that you have figured out how to shorten that time, which is really attractive. I'm going to guess there are plenty of people out there that are saying, I need to learn more about this. I want to continue the discussion with Josh. So Josh, how best for people to reach out to you.

Joshua Goldberg 29:27

Of course, I am on email like everybody else is I'm on email constantly. You can email me at jgoldberg@nathlaw.com I also spend a lot of time on LinkedIn where I'm Joshua B Goldberg, all one word, so it's very easy to find me either way.

Jay Kingley 29:46

Well to make it even easier. We're gonna put Josh's contact information in our show notes in the video. I really encourage people reach out He is amazing when it comes to not just understand the law, but he's a good human being, and we can use all of those that we can find. So Josh, thank you so much for being on The Best Kept Secret to all of you guys. Let's continue to crush it out there. Until next time