So, this is the USPTO website, so now if you click on patents, and you search patents,
under search patents, if you actually search that, if you look under patent number search
here, and you typed in that number, paste, delete, and you see how nothing shows up?
You see that?
I'm going to make it bigger so everybody can see this, zoom, plus, plus, plus, okay.
See how it says nothing showed up, right?
Well, we know it's a patent, I mean, I'm sure they spent a decent amount of money on this,
so we don't want a situation where they're not actually receiving something, so we're
pretty positive they have a patent.
So now, if you go down, you go back to the main screen, you click on patents, and then
you go to search for patents, you scroll down, you'll see there's patent applications right
here.
See this?
Patent applications.
And then you see publication number.
That's what you're looking at.
And then when you paste that, I would get rid of the US thing, and I would get rid of
the number of the letters at the end.
Now all of a sudden it pops up, you see?
There's the patent, okay?
So if you ever get like a published patent application, and you're thinking, whoa, I
don't see it, where is it, I don't understand.
It's there, it's just listed under something different, that's all.
So I'm going to show you a secret to the USPTO website, though, that a lot of people don't
know about, that's going to help make your life a lot easier.
If you go back to the main screen and you just type on the search bar, PAIR, when you
type in the word PAIR, P-A-I-R, all right, so I'm going to type that here, P-A-I-R, you
type that in, you'll come to this screen here.
And you see the very first link, it says, check the filing status of your patent application.
If you click on that, you'll see private PAIR and public PAIR, okay?
Go into public PAIR, you click on that.
Now I'm going to show you something very cool, all right?
You can determine the status of anybody's patent application as long as it's been at
least 18 months since they filed the application.
So in this case, I click on publication number, let me make this a little bigger so everybody
can see it, right?
And then what I'll do is I'll put in the number here, paste, get rid of this stuff here, let's
see, delete that, get rid of the ending, and search.
Now watch this, look at this, all the information about their patent.
Now I'm learning about, here's Amy, I can see all the other inventors on the case, I
can see when it was filed, when it was published, I can see that actually was issued as a patent.
There's the issuance date right underneath it.
It tells you the publication, when it was published, like everything on it, right?
In fact, I can click, and you may not know this, but you can actually click image file
wrapper here and see every document she ever filed with the United States Patent Treamark
Office.
Do you see that?
So why am I showing you this?
Because this is what your competition is going to do, Amy.
When they look at your patent, this is what they're going to do.
They're going to want to know what exactly does the patent mean, what happens, what exactly
do you own, right?
So now I took a look at your patent, so I'm going to give you my own kind of, this is
not legal advice.
We always start every single session with this.
This is not legal advice.
I'm just telling you, like if I was a professor at law school, which I am, I'm just going
to tell you in general what I see.
So let's look at the patent itself.
So this is the issued patent here, and you determine the strength of a patent by looking
at the claims of the patent.
So what I'm going to look at is this link here that says published documents.
It's going to connect to the patent.
So there I click published documents, and there it is, the US patent.
So I just click on view, and boom, there it is.
There's Amy's patent, okay?
If you click on the thing called images right here, this link that says images, there is
a view of her patent, right?
So now let me make this bigger so everybody can see it.
And I'm going to go directly to the claims, because I am a patent attorney, so I know
from experience that the strength of a patent depends upon the claims, right?
So I can write a patent on a bicycle, but if the claims say, at least in my case, say
These two wheels rotatably connected to a center mass
I'm going to write a patent on a bicycle, I'm not going to write a patent on a bicycle.
where each wheel has exactly 42 10 inch spokes
I'm not going to write a patent on a bicycle.
that are made of a black carbon that weigh exactly 0.0.
I mean, that means that that patent essentially is worthless
because to get around that patent,
all you have to do is have one thing different.
That's it.
Then you don't infringe.
So what we're gonna do with your permission, Amy,
is do that analysis.
You're okay with that?
All right.
So I'm gonna click on your claims
and these are your claims.
So here's your claim.
You have one claim.
In general, that's not the best situation
when you only have one claim,
but let me kind of give you an assessment of,
here we go, now it's big enough.
Anybody to infringe this patent
must have every single limitation in this claim,
every single one.
Like if one limitation is missing,
they do not infringe, okay?
Really important to understand that.
So one of the things that I look for as a litigator
is I look for numbers.
You see how it says less than 20 inches,
the degree, it says 80 to 100 degrees.
I look for those kind of limiting things, right?
But the one thing that jumped out to me with your patent
was I don't understand why this happened,
but you have a method patent.
I don't understand why.
You have an apparatus, you have a device, it's a product.
So why did they file claims on a method I don't understand?
Because to infringe this claim, it requires a person
and it requires a person performing a specific action.
And what do I mean by that?
Look at the claim here.
It says a method of protecting a beverage
from weather elements, but look at the limitations.
It talks about the shelter.
It has all the limitations of the shelter,
but then come down here,
placing the shelter adjacent to a pool.
So if somebody places it on a picnic table,
not next to a pool, they don't infringe?
Like why, I don't understand why they made that
a limitation of your patent.
That to me, as a litigator, that doesn't make sense.
And then separate from that,
positioning a beverage within the shelter
so that the beverage is shielded from sunlight.
Again, it's an unnecessary limitation, right?
Like you have an apparatus, it's a great apparatus.
So the claim should have, what the claim should have said
was an apparatus for protecting a beverage
from weather elements or just an apparatus
for sheltering a device holding a beverage
or whatever it is, but this adding the elements
of placing next to a pool and positioning the beverage,
that means if I'm at Target and I sell these things,
well, Target's not at a pool, Target's not,
Target doesn't actually take the beverage
and put it inside of the shelter itself.
Like they're not doing any of that stuff.
So is Target infringing by selling a thousand units?
Well, that walks you into a whole assessment
of what's called indirect infringement.
And is it really, is this a situation
where you're having inducement of infringement or not?
And you don't wanna play that game.
Like you, look, I've got a device, this is a device.
It's got a circle on a top, it's got rotund body,
it holds a substance, there's a rim and there's a ridge
for a cap to be rolled on it, period.
To say, I've got a method of storing a liquid
for drinking by a human being,
it makes the patent less, it has less strength.
The reason for that is because,
well, what if somebody put marbles in it?
What if somebody put sand in it?
What if somebody, you know, put a smoothie in it?
Like, is a smoothie a liquid?
Is it not?
I mean, so now it's, those are unnecessary limitations
that are added to your claim, which are,
that's something that you need to be aware of
as you look at potential enforcement, all right?
Why do I say that?
Again, if Target says, hey, construction guys,
are you tired of having your beer get hot in the sun?
Purchase this new, you know, beverage shelter.
And there's the beverage shelter, it's not next to your pool
and so it doesn't essentially infringe the patent
because it's not next to a pool.
So that's an unnecessary limitation that's in the claim.
So if I were trying to do the assessment on your claim,
I would say, right.
Every single element here, you know, a frame,
including a plurality of supports.
Yup, that's great.
A base, each of the supports being attached to the base.
Yup, that's great.
Supports being pivotally coupled to the base.
That's fine.
Being positioned in a deployed condition,
extending upwardly.
Yup, that makes sense.
From the base in a collapsed condition,
lying on the base.
That's all fine.
Now we start to get into dimensions.
I have problems with dimensions.
I don't think they're necessary.
It says the frame having a height, length,
and width, each being less than 20 inches.
Why?
So if somebody does it 21 inches, they don't infringe?
Like, why?
Like, why did they have to say 20 inches?
I mean, it's not necessary.
Unless they're aware of prior art,
that, which might be the case.
It may be that your lawyer did a search
and said, you know what?
The claims kind of look similar to a shed.
And so we might have to make it really clear
that this is a small, portable thing.
So I might have to throw some limitations in there.
That might be part of it.
Part of why-
I'll jump in here just really quick.
Yeah, because there were some of those issues.
Yeah, so I totally agree.
And the original patent application was filed
with that claim number one being a beverage assembly, okay?
Oh, that's nice.
Because there was prior art,
you know, we've had to narrow this
to what we ended up with here.
Why did they go to a method though?
Did you have any apparatus claims
in your original files?
There were some apparatus claims,
but none of those survived the prosecution.
We did have one method claim
and that's what survived here.
Okay.
Yeah, so then that's,
what you just said is precisely the issue
that you're going to run into with enforcement.
I don't know if, can you see my screen right now
where I'm looking at your prosecution history?
Yeah.
All right, I'm gonna show you something real quick
and then we'll jump to your other questions
and then we'll start taking
some other questions here as well.
So let me just show you something.
Here's your non-final office action right there.
Non-final rejection.
That was your rejection that you received.
Yep.
So I can see claim 20 was allowed right out of the bat.
And I'm assuming that was probably your method claim.
Yes.
Yeah.
And so as you look through,
you can see the prior art that was cited.
Oh, so somebody had a beverage shelter assembly.
Yeah, there were some out there when we did the searching.
When I did the searching, I found some
and our patent attorney did some searching.
He found some and that's where I think we tried
to weave it in there that we could get that,
at least that segment of the market.
That's good.
All right, so here's your amendment.
So you did amend the claims.
Yep, you amended the claims right off the bat.
Yeah, and there's your non-final.
And then you got another non-final rejection.
Yeah.
And there's your claims again.
And so if I look at, let me look at your final claims.
Yeah, you canceled them all.
Yeah.
Yeah, that's why you don't have anything else.
Okay, so let me stop sharing the screen
to so people understand what I'm doing here.
All right.
Any of you that are creating a method
that you're gonna try to protect by patent
or a product that you're gonna try to protect by patent,
any of those things,
if you're going to build a company,
you want to think of the point of enforcement, right?
Like who am I potentially going to be enforcing
this IP against?
And then you want to determine,
when you look at the claims, who is that person?
So just like when we looked at the method claim,
we saw in the claim, it said there was a pool.
It said that you had to have substance inside the thing.
Well, if you're not in a pool
or you're not next to a pool, you really don't infringe.
And so this may be the best thing in the world,
but if somebody uses it outside of a pool,
they don't have an infringement issue.
So, because that's a natural limitation of the claim.
So you've got to think, you've got to think to yourself,
okay, when I try to enforce this,
do I want to stop people that are using this
at a soccer game?
You know, how many moms and dads are going to soccer games
and this is an issue?
Like they have their drink or whatever
and they put it in the chair, but it still gets hot.
So they want something to kind of cover it, you know,
cause they're stuck.
All right, this is pains that I'm going through myself.
Like they're stuck at this event for six hours
on a Saturday when they could be doing any, no, anyways.
So, you know, their drink's getting warm, okay.
Did that really, did it just come out?
I feel better now.
I think that was heart healing.
I think I feel better.
All right, so that's something to keep in mind,
but that person doesn't infringe this patent
and that's not necessary.
And so that those limitations are not things
that you want to have.
All right, the other part,
when you have your patent issuing,
you want to do what's called a continuation application.
What do I mean by that?
My patent's ready to issue.
Once my patent issues, I can't modify.
a patent. It's over. Prosecution is over. It is issued. I can't
make it broader. I can't make it more narrow. I can't do
anything. It is issued. It is over game over. What you got is
what you got. Okay. Yep.
Can I jump in right there? Absolutely. We were really
excited that we got because there's other patents out there
on shading things that shade. So that's where we're like, hey, we
got this segment. And then once you have that in the patent,
then what we were told by our attorney and then other
manufacturing when we're doing the test market is let the
consumer find the use. Because you're not infringing on
yourself, right? And then they'll find it, they'll take it
out to soccer places and things like that. So other people may
try to knock that off, but at least you're first to market. I
don't know if that's I know by your face, it might not be.
Yeah, it doesn't really that part doesn't.
But there's other patents out there that we've
Sure, sure. Yeah. Yeah. And that can happen. Like you can enter
into a market that's really busy. But you still want to be
able to have a patent number on there, because it's going to
scare a lot of the competition, regardless of whether or not
they assess the claim itself, right? Because most people in
the market don't actually realize, oh, you can analyze the
claim and see whether or not you infringe. So just having a
patent number usually will scare people, right? So it's a good
tactic anyway. But so once your patents about the issue, if you
file a continuation application, then what happens is like in
this situation, I'd be able to go in there and see if there's
anything that you can salvage to try to get an apparatus
claim, right? But since the patent is issued, the case is
over. Like you can't go back and try to like reopen the case.
It's it's now over. Now there is a thing called a broadening
reissue. That's really cool. It has to be done, I believe,
within two years of the when did you patent issue?
19. I think it's 20. It says on it. Where is it? I think it's
2019. Yeah, 19. Let me see. Oh, no, it's 20. It's 2020. Okay.
Okay. Now you might be outside. Yeah, you're outside the room.
Okay, so there's this thing called a broadening reissue.
What you can do is file a you can surrender your original
patent and go after something broader. It's it's a incredible
incredible tool in the patent office that most people don't
know about. If you ever get to a situation where, where you've
got a product and you've got protection and people are
infringing upon it and you want to stop them, but your claim is
too narrow. Remember broadening reissue, and you file for that
you try to get a broader coverage. Chances are you're
going to still be able to get what you already have. But
you're trying to get something bigger. And if you get that
something bigger, you can literally take over an entire
market. It's a very powerful tool. Alright, so that's kind of
to talk about, you know, your claims and what they mean. And I
mean, it's not the best situation, but, but I totally
understand the strategy that you're using. And so, yeah, so
now to go to some of your other questions. So let's start
digging into some of the other questions that you have. So just
let me know what what are the other ones that you had?
Signing a non compete with the manufacturer.
Okay, so non compete with a manufacturer. I definitely would
would do it. Most manufacturers won't sign one, quite frankly.
The reason why is because they're in the business of
manufacturing. And so you know, they're, they're not going to
sign off. Most of them are not going to sign off on a non
compete with somebody who's a startup and shut down their
potential of working for somebody who's exponentially
larger later, just because, you know, somebody is doing 100
users to 1000 units, they may be get be able to get 50,000
units for a competitor. And so the way they see it is, I'm not
competing with you. I'm just making the product. I'm not
selling it. I'm just manufacturing it. So why should
you be able to shut me down from making something that's that's
your issue with somebody else's making a product, not your issue
with me. I'm just, I'm running a machine. That's it all day long.
I just run a machine. And I send out your products. Now if you
can get it, absolutely. You can get an NDA and a non compete.
That's great. But what you should at least get is an NDA.
Like because, you know, so you may not be able to get a non
compete. But you should at least be able to get an NDA a non
disclosure agreement, which means you're just you're, you're
letting them see the technology schematics, you're giving them
the layouts, right. And so you want to lock them in from taking
that exact schematic and then calling up your arch rival and
saying, Hey, these guys just came out with the coolest
thing. I'm gonna you know, I'm willing to actually start
selling you some prototypes. I'm not locked into any agreement
here. So if you want to start making this stuff, you know,
I'll take 10% off of what you make
on this deal.
And so, you know, they'll do that without you even knowing.
So I would at least get a non-disclosure agreement in place.
Non-competes, again, for manufacturers, very hard.
Cause number one,
they don't want to be locked out of
working with other people.
But number two,
they don't know who your competition is in many cases.
They're just making the product.
Like they didn't analyze your market.
They don't know.
They don't know that your shelter is like in competition
with Target and Home Depot and they don't know that.
So they're not going to spend the time researching that.
So it becomes, I'm not saying you can't get it.
I'm just saying it's very difficult.
Okay.
Yeah, that's right, Helene.
Two years.
Yeah.
Okay. And you had one other question
before I go to the next one.
What was your other?
There was, there was one,
I know we hit the manufacturing issue.
We hit the, the patent issue.
And then we just hit the,
that other issue just talking about with regard.
Oh, maybe it wasn't you.
Somebody was asking about,
how do you know which entities should hold the IP?
All right.
As a matter of fact,
there was more than one person actually asked that.
I know, I believe Jody.
Yep. Jody was one of them.
I think there was another person
who asked the exact same question.
Crystal, was that one of yours?
Yeah. Yeah.
And it's a really good question.
This is a strategy issue
that you need to talk to a lawyer on.
All right.
So this is not,
there's not IP,
not, not legal advice.
What I'm saying is exclusively,
April, do you remember?
I don't know if you remember as an aside,
somebody said there should be a drinking game
every time Peter says not legal advice,
but don't drink alcohol.
Don't do, not alcohol.
You can drink like another beverage.
Literally everybody should go like this.
Every time I say this is not legal advice,
it would make me laugh hysterically.
Yes, exactly.
So,
that's too funny.
So what I would do
is I would try to find an entity
that is in an area that has a lower tax bracket, right?
When it comes to intangible assets.
And this is why you should speak to your lawyer
and speak to your tax person.
Because when I do that,
like I have some companies
who have actually created entities in the United Kingdom
and in other places,
cause they have a lower tax bracket.
And so now they take all the IP assets
and they place them in that entity.
So now it's being taxed at a lower tax bracket.
So now they're getting,
they're not spending as much money,
you know, as a corporation.
But one of the things that we talked about before
that's really important for you all to understand is,
you know, your ownership rights.
If you're gonna start transferring rights
to your IP into a corporation,
you better make sure you control that corporation.
All right?
Cause I've heard many nightmares.
I mean, many nightmares where people will say,
well, you know,
I wanna transfer the rights to this over to X corporation.
I'm on the board of X corporation.
And then the next shareholder meeting comes up
and they're voted out.
And now their IP is gone.
Like it belongs to the corporation
and they're no longer on the board.
So they have no decision power.
And the result is it's gone.
And now they wanna sue the corporation.
You're done.
It's over.
So make sure that there are ways around this
through like licensing your IP to the corporation
is one way.
But I know a lot of people like to make sure
the IP belongs to the corporation
just for liability purposes,
which is very,
it's a good strategy just to kind of make sure that
if somebody sues the company because of the IP,
you wanna kind of say,
well, it's not my IP.
Look, it belongs to the corporation.
Sue the corporation, not me personally.
So that's a good strategy.
But just keep in mind,
you gotta make sure if you're trying to maintain
control of the corporation
and the IP is the way to do that,
you can't relinquish full rights.
Cause if you do it, it's gone.
So Jody, does that answer your question in some respects?
Cause I know you were talking about like the larger entity
and then there's a subsidiary
and then there's like under this subsidiary,
do I have the assets in the holding company
or do I have it in the subsidiary
or do I have it in this entity?
You really should talk to a lawyer about that
because it's the strategy.
It's your specific strategy for your specific scenario
that's gonna dictate where you want that.
I've had some companies that place the assets
in this subsidiary over here
so that the mothership never gets touched.
They're like the mothership is worth millions,
if not billions of dollars
and they don't want the mothership getting touched.
Like, look, you wanna take out a leg, that's fine.
But the rest of the body is still functioning.
And so they put the IP rights in this entity over here.
And in fact, I just had a scenario where one of my clients got sued.
And in that lawsuit, they filed a lawsuit against the mothership, right?
The big, big billion-dollar corporation.
And I had a field day with it.
I just responded to him and said, who?
And they said, well, you know, this company, like it's a big, big company.
They're liable for this, this, and this.
I go, really?
How?
And I mean, I'm not just playing dumb.
Well, I was kind of playing dumb.
But at the same time, I'm kind of leading them on.
And they said, well, look, you're selling this product.
I go, no, we're not.
Yes, you are.
Like, I've seen it.
I know you are the manufacturers.
I go, prove it.
And they said, well, it's, well, all right.
Here's the product.
And you're selling it there.
I've seen it.
And I know you're making the money from it.
And I go, OK, who sells the product?
And their response was, well, it's such and such GMBH.
I go, exactly, GMBH.
That's right.
Remember that.
Do you know what GMBH stands for?
Do you know why it's a GMBH?
Because you can't touch this big corporation.
That's why.
So if you want to go after the GMBH, go after it all day long.
That's fine.
You're going to probably get maybe $2 million max.
But you're not touching the billions of dollars.
You're never getting to it.
So what happened?
Case settled.
They dropped the case.
Why?
Because of the way that we structured the IP.
All right.
And because of the entity that was selling the actual product.
So for this reason, as you're growing, as you're starting to
establish these larger corporations and you have holding companies and
subsidiaries, use strategy.
Who's holding the IP?
Who's actually selling the product?
Don't have the mothership sell the product.
If really, it should be sold by the subsidiary.
Because you can set up these like little holding companies and make
it so that people can't get at your assets.
You know, like cover your assets.
Okay.
Make sure you cover them.
It's very important to cover your assets.
There's a really funny joke, which I'm not going to say right now,
which had to do with God sitting with Adam as Adam was naming all the animals.
It is hilarious.
I came up with it.
It's really funny.
I have to tell you all this one other time.
Well, I'm not using up your important time here.
I'll tell you the joke later.
So, all right.
Did you get my question about if you move your business and your address changes?
Because I did catch that on my patent that it's.
Yeah.
Do you switch?
Do you update that?
Yeah, you can actually file.
There's a form with the USPTO website.
You have to file that form so that it updates your records.
And it's really actually very important to do.
Because if there's a lawsuit associated with your patent, the federal district
court will send a notification over to the patent holder, right?
Because the court takes that litigation.
They forward it to the USPTO.
Now, your records will be flagged.
It'll be real nice to know that there's a lawsuit that has something to do with your
own patent that you may not know about.
You know, the way that they reach out to you is by your address and everything.
Yeah.
And what happened is now licensing companies are contacting us and they're having problems
like they're good.
The mail is getting forwarded.
I'm like, oh, and that's what.
Yeah.
And there's going to be a lot of sharks, too, that will reach out.
That's just what they do.
I mean, I filed my own trademarks and had no less than like 10 people reaching out to
me going, oh, you have to foreign file by the state.
You have to do this.
But now I'm like, yeah, I know I'm a lawyer.
That's why I filed the application.
All right, John or Jennifer, is either one of your questions a follow up to what we just
were talking about?
Yes.
All right, John, go ahead.
So when you file that scenario of the intellectual property being under a separate
subsidiary for the holding company, when you file the patent or the trademark, the
owner of that is going to be that subsidiary slash corporation, correct?
Yeah, depending.
And this is why, again, I encourage all of you to speak to your lawyers and find out
what makes sense and which entity should hold it.
But once you actually figure that out, when you file your application, that's the entities
that should be listed on your patent application itself.
Don't don't list like the big entity and then say, well, what I'll do is I'll transfer it
later.
No, there's no need for that.
Filed on the name of the subsidiary right from the start.
And same for trademarks and copyright as well.
Yeah.
Yeah, you can do that right off the bat.
Yeah.
So when you file as you're filing your trademark applications, your patent applications, you
can file it under the.
Do you remember when we did on day?
a two. Yeah, on day two and VIP, we walked through the listing
the owner, right. And right underneath that, there was an
option for the corporation and then the DBA, all that stuff.
That's where you should be listing that who was actually
the one who wanted. Now something that that you want to
look out for guys is you as the creator are the technical holder
of things. The corporation does not technically own Jack or
Jill, you need to have some kind of assignment of all right title
and interest to the corporation, right? So if you're gonna like
if you're filing a patent application, and you're the one
who came up with the idea, like Amy and Joel came up with the
idea, right?