Amazon Patent Lawyer Rich Goldstein
How to Patent an Idea & Protect Your Amazon Seller Account
LAST UPDATED ON FEBRUARY 14, 2019
In this guest episode, patent lawyer Rich Goldstein stops by to chat about:

- Amazon IP
- how to protect your Seller Central account
- how to patent an idea
- the difference between trademarks, utility and design patents
- how to deal with Amazon IP claims
- doing patent searches, and more.
Rich has built his career on working with individual inventors, product developers, brands, and product startups. Some highlights:
- Providing custom-tailored patent law representation. From this interview, you can tell he really cares.
- He has given critical advice to more than 10,000 inventors, and has obtained nearly 2,000 patents for his clients (via his law practice, here). 
- He has educated thousands more about the patent process through his seminars, educational videos, and best selling book: The ABA Consumer Guide to Obtaining a Patent.
Key Takeaways
1 Before you start selling, do a patent search (Google Patents, attorney help, etc.).

2 If you've been publicly selling your product in-market for 1 year or more, you can no longer patent it.

3 Register a trademark to gain access to Amazon Brand Registry. Easier if it's an "arbitrary" word. 

4 Forget about doing a patent yourself.

5 The most defensible IP on Amazon = Design Patents (unlike the rest of the world, where Utility Patents rule).

6 Decide if IP protection is right for you early on. If it is, pursue it. If it's not, forget about it and pursue your business.
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Transcription
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Pat: I'm here with Rich Goldstein and we met actually at the Prosper Show, the trade show for Amazon sellers in Vegas. And we got to talking about IP around Amazon products in particular. And I think with a lot of things, um, you know, a lot of products coming out of China, uh, to the markets and uh, you know, sellers trying to get every competitive edge they can get... IP is going to become increasingly important. So, Rich, thanks. Thanks for joining us on the show. 

Rich: Absolutely. Thanks for having me.

Pat: Yeah. Well first of all... these office walls. I'm not sure why they seem to pick the same off-white color for all the office walls. Just seems to happen. Not sure why they do that, but, uh, I just noticed on screen, this is... This is what we're dealing with here.

Rich: Lots of white. Yeah. To keep us from going insane, oh, we're stuck in this spot. Probably so much of our lives. So they picked the neutral colors to just try and keep our sanity amidst all the insanity that we deal with everyday.

Pat: So okay, so speaking of insanity, okay, what sort of, um, if I'm an Amazon seller in the market today, you know, what, what sort of stuff my dealing with in terms of patents and IP. I mean, this is something that some people watching may not have even thought about, uh, as an issue.

Rich: Well, I say the 2 main ways in which Amazon sellers come upon patent issues of potential patent issues is, is first of all, they get ripped off. I mean, people are ripping off all the other Amazon sellers, all the listings, all the time. And so once you, when you have a product that's going well, that it's selling well, and then you see that you've been suddenly ripped off and your sales drop, you begin to wonder, well, what can I do to prevent this? And in most cases, if it's already happened, if, if it's a listing that's already in place, it's probably too late to do anything to protect yourself. Um, but it's, it's that experience. It's that happening that has people wonder, hey, is there something more I can do for the next great product that I come up with... For the next great product that I list that, um, that could help me in the future that could prevent me from putting a lot of time and effort into developing a listing and to getting something selling well only to have all the people come in and rip it off.

Rich: Like that's just sucks. And people really want to avoid that. And so people are getting creative and using IP to, uh, to help them to maintain their market share, to help them to keep their listings exclusive. And so that's one side of it. So one side of it, as an Amazon sellers are increasingly wondering what else they can do to protect themselves. And then the other side of it though is, is they're seeing more and more IP complaints. And IP complaint is where someone else says, hey, that's my product. I have a patent on it. Um, I have a trademark on that name. And so they get, so the seller gets an IP complaint, all of a sudden that listing gets shut down. And on a lot of cases it's an unfair IP complained or it's baseless and they get shut down anyway. And it's a difficult situation, but there's a lesson to be learned here and the lesson is that Amazon has been deferring to IP owners. If you have a patent and you say, Hey, this is my patent and these all the people are infringing it, Amazon doesn't investigate heavily. They tend to shoot first and ask questions later. They tend to shut down the listing and then leave it to the parties to work it out. So the lessons to be learned from that is if, if Amazon is deferring to Ip owners than it pays to be an IP owner that would pays to acquire IP at pace to acquire a patent if it's possible to do so.

Pat: Okay. Okay. So, yeah, if we were, if we were to look at it initially, there's, you could head off this issue by securing some IP or early in the process before the product even launches or gets to market. So what, what does that look like?

Rich: Well, yeah, I mean that's critical, right to, it's to secure an early, before the product comes to market. Uh, generally one thing that most people don't know about pads is that you lose the right to patent by making it public before you apply. So, uh, it means a bunch of different things and it gets rather technical, but certainly putting it on sale on Amazon is considered a public disclosure. Okay. And so, um, once you do that, you immediately lose your rights. And most of the world and in the u s technically under the right circumstances is a one year grace period, which means worst case scenario, if a year goes by, but it's been public that it's absolutely too late to two patented in the US. And, um, so it just, it pays to figure out at an early stage whether it's worth patenting, whatnot.

Rich: So not everything should be patent. Not Everything can be patented. Things are going, things are going to be ripped off. Not everything that's going to be stolen or ripped off. His is worthy of protection. Um, so this is an analysis to be do this analysis to be done and whether it's even worth doing anything in terms of protection. But the critical lesson is you do it in the beginning. You do it early because too many people wait for a long time. Pete, too many people have a product that they've been selling for two years and they are doing really well with it. And they see that people are starting to rip it off of, they have a feeling that it's about to be ripped off. And then they come to me and they say, well I need to get a patent on this and I have to give them the unhappy news that it's just too late. So if you got to do it, you do it in the beginning, but, and if you decide not to do it, that's fine. And they'd go go about your business. You do everything that you can to optimize your listing and all the other hacks and tricks that I know that you love telling people about, to how to, how to really make the most of your Amazon selling experience focused on all that stuff. That's fine. Uh, so make the decision early of whether you're going to do something about protection and then don't look back.

Pat: Right, right, right. Fair enough. Okay. So under what circumstances does your product, um, qualify for some IP protection? Cause I know a lot of people are sourcing products from China and that's a pretty stock item. They may put their brand logo on it, they may make some minor physical tweaks, but at what point do you go from being something that's, that you can't protect to being something that's proprietary?

Rich: Okay. Again, a great question. And so as far as, um, and, and different types of IP protection protect different types of things. So for example, if we're talking about names and brands and branding and logos, that's trademark. So in terms of a of trademarks, if you have a distinctive name for the product, then you might want to get a trademark on that. Um, and also a logo can be protected with the trademark. What are the advantages of having a trademark with Amazon? You don't have a trademark with Amazon, but one of the advantages of having a trademark when you, when you're selling on Amazon is that you can enter the brand gating program, right, with Amazon, will effectively stop other people from using that same mark in your space. And, um, the way that you get into the brand gating program is you need to have a registered trademark.

Rich: So, um, and in order to get a registered trademark, you need to apply with the United States Patent trademark office. Um, and there are different types of trademarks and this is a very important distinction for Amazon sellers is there are, um, wordmarks at design marks. So a word mark is for the, for the name itself, for the name of the product. Um, a design mark is more toward the way in which the name is presented, perhaps with the logo. Um, the point is if you apply for a design mark from everything I've seen, Amazon won't let you into. Brand gating was a design mark. It has to be the word mark.

Pat: Okay. So not just a stylization of font or anything, but you need to, so it needs to be a trademark on the name of your brand. Um, is that okay? Is that through the USPTO?

Rich: Through the USPTO. Okay. But there's different types of marks, so you can get through the USPTO. And I'll tell you why this comes up is sometimes with, um, um, in order to get a trademark, the name has to be distinctive, um, which, which means that it's a type of name that people would associate with a brand and not just with a generic product. Um, little confusing, let me explain. So aspirin is generic. It's just, that's what the product does. It's aspirin. People think of aspirin is a brand name. It's just how you name the product. So something generic or something descriptive that's not trademarkable. And so sometimes people have a, a very descriptive trademark, uh, like, um, uh, you know, um, fitness gym, right? So that pretty much describes what it is. But maybe you, you opened the chain of fitness gyms and that's what you call it.

Rich: And so you want to do the best you can to get a trademark. Um, a lot of times the best you can do is the design work. You have a logo for it. And yes, it says fitness gym. And so fitness gym is in the, the, the, the, uh, trademark, um, in, in the mark, um, listing as it's listed in the application. But if it's filed as a design mark, um, first of all, that's how you get it through is by saying, well, I'm not really trying to protect fitness gym. I'm trying to protect this designed with the logo at all. So people get a trademark like that. And then if they went to Amazon and attempted to gate it, Amazon would say, no, you can't have it. You don't actually have the trademark on fitness gym. And I'm kind of a bad example because you're not going to sell out an Amazon, but imagine if it was a supplement and it was something like, um, um, I mean, what's a, what's a type of supplement for people take like a creatine? Uh, and so it was like, I don't know, a whole creatine. So it doesn't really make much sense. It's just very descriptive of what it is or uh, or natural creatine, right? They want to protect that mark if they did a design mark to get past the script of this problem and never going to get brand gating. So very important. Uh, if you go to do a trademark, make sure that it's a word mark.

Pat: Okay. Okay. And it helps if your brand name is something, um, creative or doesn't use sort of generic stock words.

Rich: Exactly. Exactly. If you're going to pick a brand name, pick something that's creative, the more, um, the more arbitrary it is, the more likely it is to get a, a, um, a trademark and to have a strong trademark. And a strong example of that is apple computers, right? When, when apple came up with a name for the computer company, when had apple ever been associated with the computer, it's not a term that when people are talking about computers that they use, it's not like fast CPU computers, right? It's not a descriptive term. So since apple who is so arbitrary, with regard to computers, it became a very strong trademark because the competitors don't need to use that word apple in any of this sales literature unless they're trying to confuse the public into thinking that their apple. And so, um, so the more distinctive the, the name that you come up with, the better trademark protection you're going to get. Um, and uh, so it pays to do that analysis in the beginning when you're coming up with a product is to have it not just be something which is just so blahzay ordinary, uh, because then you are going to, uh, not only run into the succinct of this problem, but you're probably going to have a lot of all the people that are doing the same thing that have similar names and you're never going to get it, get it protected.

Pat: Okay. Okay. So, uh, okay, good. Arbitrary a brandable term on the trademark and that opens the, uh, the gate to the brand registered programs. That's good to know. Um, in terms of the physical, so the physical product, right? Uh, I'm assuming that if you're sourcing something from China and there's not a lot of physical form factor differentiation, it would be hard to get a patent on that. Is that right?

Rich: Yes. And then just one thing about that too is if you're sourcing something from China and you, if finding a product on Alibaba and your about to sell it, you can't apply for a patent on that. It needs to be something that you actually invented. Okay. So white labeling a product, um, even if no one has applied for a patent on it, that doesn't give you the, the ability to apply for a patent. Uh, if you take something that exists and you have your own modifications to it, those are the things that you would protect. Those are the things that you could apply for a patent died.

Pat: Okay. So, yeah, I, I'm, I'm trying to understand where the line is because it's a change in materials or you know, a slight physical modifications. There's probably some sort of a line that you cross where it's differentiated enough where it's, it's really your own invention, but I'm not sure where that line, I guess. So,

Rich: yeah.

Pat: So you guys do this as a service, right? So I imagine people will come to you with with the product and they're looking to get protection on it. So you must have to turn certain cases away and accept other ones.

Rich: Yeah, exactly. Well, let me give you some guidelines about that in terms of where the line is, so first of all, this, there's two main types of patents that were, that we would be considering with regard to protecting your product. Okay. There's a design patent and a utility patent. Um, utility patent is when you have functional differences between things that already exist, um, and what you've come up with. And so, so basically what you're protecting is some type of structural configuration, some type of new arrangement that is for functional purpose. Okay. And, um, in terms of that and in terms of where the line is of how new it needs to be, um, it has to be different in some way that's called novel. Then also has to be not obvious. So not obvious basically means that it's kind of outside the range in which people in the field normally look.

Rich: So if someone is designing a certain type of product, like they kind of know generally what the different possibilities are. Like they know if it's a container that there's different types of caps that this a screw on cap, this is a foot type cap or sport bottle top or like there's a bunch of different types of, of a container caps that you could use. So if for example, and a certain type of container, no one has seemed to have ever used a sports bottle top before, it still wouldn't be patentable because it would be considered obvious people that designed containers, no, that there were a lot of different ways you can have a container clothes use the including screw on caps and flip tops and, and something that you break off a single time. Uh, and, uh, so then it'd be obvious to someone in the field to just adapt that flip cap onto the existing water bottle.

Rich: So things that are obvious to people in the field that's not patentable. So that's where the line is. Now, is it a bright line? Probably not. What I mean by that is type of thing that people can different opinion on. Sometimes it's like, well, is it obvious or is it not obvious? But usually just changing the materials of something. Um, we're changing the size. I'm selling something in a small size where it's never been offered in a small size that's going to be obvious. So we quote textbook obvious because it's just in almost every case. Um, but a lot of times that's what I give clients guidance on this as well. Is this something that's going to likely get past that obvious and this requirement? And now in order to figure out if something's obviously not, what we really need to do is find it one of the closest things to it.

Rich: Because until we know what the closest things to it, it's like obvious compared to what. So you see what other people have done that's close to it. You say what is different about it? And then you say, well, is that difference obvious and not. So, uh, that's typically the analysis we're doing when we're looking at a project to see if this is something that's patentable. We do research to see what's close and then we can decide whether it's obviously not. And that's also the thing that we often argue with the patent office about is we'll submit something and they'll say it's obvious. And we taught me to argue and show them that it really isn't. Okay. So that's on the utility side of things. Um, and again, so utility patents when you have a functional difference with something, so it's got a different functionality to it.

Rich: And, uh, and that's what we're seeking to, to protect. And in most arenas other than Amazon, utilities tend to be the most valuable. Pat's because they protect the concept rather than just a specific look for something. Uh, and Amazon, it's actually reversed. And I'll, I'll explain why in a few moments. Um, so now there's the other type of patent, which is a design patent. And a design patent is just for the physical shape of an object. It's for the ornamental appearance of it. Um, so you have a product which is, it's just a container, right? There's nothing different functionally about it, but maybe it has these wavy lines and it, and it has a certain overall shape to it. This could be the subject of a design patent and it probably is. Uh, and so now a design pattern is just for the appearance of the product.

Rich: And so now traditionally tell clients it's always better to have a utility patent because utility pipe protects the concept design patent. They changed the way that it looks that it's not going to be infringing the patent and it's not going to give you much room to stop your competitors on an Amazon. It's different because, um, let's take a look at how things work on Amazon. You, if you create a product that has a, uh, kind of distinctive shape to it, you apply for design pad, you get a design patent for that shape. And then you see competitors with similar products. You send, um, you send the Amazon and IP complaint and you say, Hey, that's my design and here's my design path. Amazon looks at it and you know, they don't give it a high level analysis and you don't have patent attorneys reviewing these IP complaints.

Rich: They see it and they see your product and they say, wow, looks the same. Shut down the listing. So Amazon will shut down a listing for a design patent that looks similar. Um, sometimes they go a little bit too far with that. I mean as well. Often they do. Um, and though it pays to be the guy with the design patent because they're not doing the high level of analysis on it. And this thing, it looks similar. Therefore, um, we'll give the IP owner the benefit of the doubt. We'll give the patent owner and the benefit of the doubt. So if you were the patent owner, that works in your favor. Um, on the other hand, if you have a utility patent, uh, Amazon isn't so quick to shut down, uh, the listing. And now it's interesting because utility paths are typically more valuable. Utility patents typically cover more of the concept.

Rich: The only thing is, again, you don't have people at Amazon with that level of experience to um, review these IP complaints. So they typically won't shut down listing based upon a utility patent without some pretty clear evidence, which may be an actual judgment in court or um, or a consent judgment. Um, but essentially it's, it's not as easy with the utility paths. So like you said, it's kind of flipped in the real world. It's usually better to have a utility patents. In the Amazon world, it tends to be better to have a design patent and the bonuses that design patents are a lot less expensive to get that utility paths like utility patents are labor intensive. And when I write a utility patent application, it's like a 30 page document with maybe 10 drawing sheets that are explaining every detail of the invention and how it's different from things that have been done before and why it's worthy of a patent.

Rich: And so that's expensive. A design patent is all about presenting a drawings, following all of the patent office rules. Um, and so it's mostly about presenting the drawings and this judgment that goes into how we present it and what we show and what we don't show and things like that. Uh, but still it's a lot simpler, so it's a lot less expensive. So, um, I tell a lot of sellers, if you have a product that's innovative, it pays to do with design patent might not pay to do utility patents. Uh, but it pays to do a design patent for something that you think is going to be a good seller listing.

Pat: Okay. What does it cost, um, for each of those? Plus if, I mean, if you could, um, sort of itemize it with the cost with interfacing with the government, but also, you know, what it would cost to have a, you, um, work on the project for them.

Rich: Yes. And so utility patent, typically the cost is north of $10,000. I mean, on the simple side, it's going to be $10,000 to apply for a utility patent.

Pat: right.

Rich: Yeah. Just to apply. And the majority of that is attorney's fees, the government fee, uh, around four to $800. It's relatively so just figured north of 10,000 for utility patents, design patents, typically a few thousand dollars, and I'm dumping fee, a few hundred dollars again, so about a third to a quarter of the cost of utility patents. And uh, again, if it's a product that you see some real potential in and it has a distinctive appearance, then it probably pays to do with design pat.

Pat: Okay. Um, okay, so let's just, so say we say we do, um, now in terms of fighting things on Amazon later on, like as it designer is, you know, the most value you'll probably get out of the design patent then, um, then utility, then where does we're just trademark fall in, in terms of importance on Amazon? We'd explained it, I just don't know how important it is. Yeah.

Pat: Well, I guess it depends on what the tendency is for people to do when you feel. So if you think people are going to kind of rip off your product and just sell something just like it, um, but they don't care about the name and the branding isn't that important. Uh, I mean, I don't really know to what extent, um, like copycat products care about copying the name. It's like, you know, typically if they, if they can get their listing to show up alongside size yours and it's just, you know, whatever it is, whether it's like, you know, like reading glasses or something and they look similar, then, um, the consumer, in my opinion, doesn't care too much about the name. Yes. Especially on Amazon. Yeah.

Rich: Yes. But if it's a certain product that may be the type of product that people buy repeatedly and want to look for the same product in like maybe supplements or things of that nature where they're looking for the same supplement that they bought last time, then the branding becomes very important because you want to make sure that all the people can't start selling. I'm selling supplements with a name that's going to confuse the public into thinking that they, you know, they think that they're coming to make a repeat purchase and they ended up buying your competitors. That's not good. Alright. Alright. So I would say is you kind of try to imagine what the consumer might think, what they might be, what they might care about. Is it the name or is it, um, is it the product? The way the product looks.

Pat: Okay. Okay. Yeah. And it also, um, slipped my mind for a second there, but to the, uh, the trademark is necessary for brand registry, so that's probably something you need to, you need to do anyway.

Rich: Exactly. If you want the Brand Registry, and again, I think Brand Registry becomes important when people are likely to copy the actual name of the product. When it's, when it's less likely that they're going to do that in your niche, then it's less important.

Pat: Okay. Uh, pricing on the trademark there.

Rich: A couple thousand dollars. Okay.

Pat: Yeah. Okay. Okay. So you'd be looking at maybe between if you wanted the, the essential oils, right? Or are, you know, uh, of legal protection, at least you want to trademark, uh, you want the design patent, you're probably looking at between attorneys fees and government fees still under $10,000 for both of those. Could be yes. Right, right.

Rich: I want to say about trademarks to, so first of all, when it comes to patents, don't ever try and do a patent on your own. It's like, it's just, it's not going to work. I worked with some very intelligent and accomplished successful people that try to write their own patent applications. And I look at it and I say, well, this isn't really a patent application, but it'll be helpful to me to understand what I, uh, want to betray about your, um, so when it comes to patents, it's gotta be done by patents hurting. There's no question when it comes to a trademark, it's somewhat possible to do it on your own. And a lot of people do successfully do trademarks on the road. So, um, but there are also ways in which you can go wrong with it. Um, if you do the trademark on your own plus your few hundred dollars and government filing fees when considering whether you're going to do it on your own.

Rich: Um, there's, um, I think the biggest thing to consider is that there's a bunch of ways to do it incorrectly. And when you do it incorrectly, you're going to waste you waste your time. And, uh, and I've been a bit of money whenever you painted quietly fees or what have you, uh, but you might find out a year down the road that you have to start all over again and then maybe at that point you end up hiring an attorney to help you with it. Uh, so, so the point is that it pays to, if this value at stake and if it is actually valuable for to issue in due course. In other words, not hit some really unexpected or, uh, unfortunate hitches that really delay the process and that pays to hire someone to do it. Um, statistics I've heard is that about 30% of the applications that are done by individuals are successful.

Pat: This is trademark, patent, or both?

Rich: Patent? Forget it. Just forget about doing your own patents. I can tell you the reasons why in detail, but suffice to say, the point I'm trying to make here is more is less about patents and more about that. Yes, trademarks, it is somewhat possible to do with your own, but if this value would stake than it, then it pays to hire someone to do it. If you're starting a new business that is very speculative and I'm not even sure if you're going to use this brand name, uh, then you might just file it on your own and see what happens. But, uh, but that's really the, uh, the point is, um, value at stake. Make sure it's done right from the beginning.

Pat: Okay. Okay. Yeah, I guess my, I mean, my last question in this domain and then we can sort of move on to when you're playing on Amazon and protection around that. Um, do you feel that, uh, say you say you are, you know, it's early days in, in your company and you're not sure if you're going to use the brand, you're not sure if you're going to use this form factor for the product long term. Um, you'd mentioned a year, um, uh, in public at, at which point, you know, you can't probably file for a patent anymore. Design or Usability, right? Does the same apply for a trademark or, you know, I guess...

Rich: oh no, it's different. Let me explain. So with trademarks there, there is no kind of a whore in terms of patents. It's, it's cool to borrow a statutory bar with the statute of law actually prevents you who you from getting a pat. When it comes to trademarks, there is no such bore. And so you could apply for trademark five years after you're using it, and that's fine unless someone else gets in before you. So it's kind of like, um, uh, and, and this actually happens quite a bit is as I see brands that I've been selling products for years and they've never done the trademark. And then we go to look and someone else actually got the trademark like last year. And so now, um, what would have been relatively simple process of applying for a trademark now involves canceling the existing trademark. So it's probably, um, you know, what could have been a $2,000 registration now has become a 10 to $50,000 problem.

Rich: So once you know that you're going to use a brand that pays to, to apply, but you won't actually get shut out of, of getting the trademark, uh, just by you using it like you do over on the patent side where you might get shut out. Um, you know, the other thing that happens too is that, uh, when, um, um, as time goes on, all the people tend to get into the field whether they get their own trademark or not, but you get a bunch of all the people that are using that same or similar name, it then becomes too late because it's no longer a distinctive. People are no longer associating the brand name with one particular company. And so now, um, now that it's not distinctive anymore, it's really not protectable or it's not protectable. And then these strong way, and this is leaving Amazon, that was a world for a moment.

Rich: But, um, if you ever have a business that you're considering, franchising, getting a trademark is absolutely critical. I've seen so many companies have develop, uh, develop themselves into a potential trade franchising model where they've, they've built multiple stores, they have a great model. So we want to franchise this, but at this point that the point of which they go to get the trademark, they realize that they can't actually get a trademark on it. And if you can't own the name, it's really impossible to franchise something. So, um, you know, if your are businesses one that you are considering franchising and at any point in the future, absolutely critical to get good trademark protection.

Pat: Okay. Okay, good. Okay. So let's say we've gone through the process, we've protected some of our IP and the product selling on Amazon and we get that first complaint. And from what you're saying, um, what I'm hearing is that Amazon will often defer to the IP holder rightfully or not, and they shut down your listing. Uh, what did he do then?

Rich: Okay, well, first thing to figure out is whether it's a legitimate IP complaint or not. In other words like, Oh, you really infringing, would you really be infringing if you really would be infringing? Then I think, um, I mean you could try and maneuver out of it, but it seems like it pays to cut your losses if you're actually an infringer. Um, in other words, if you were in the wrong in the situation, um, if you are not infringing, then recognize that again, things are not being reviewed by, uh, by IP attorneys, with judges at Amazon, if it's dealing with things in very simple terms. So you've got to make it black and white. You've got to make whatever arguments you make to get past that, um, that shutdown. It's gotta be so clear that a third grader would say, well, yeah, clearly it's not.

Rich: It's, it's clearly this is a, this is a bogus complaint. And so let's reinstate the listing. So it's got to be crystal clear. Um, now one of the, you know, one of the best ways to get past an IP complaint when it has to do with a design patent is my quite not coming up against, uh, the actual patent itself that's being thrown at you, but by looking at what came before it. So here's a principle. So I mean, first of all, it can be very difficult to analyze a patent and what a patent stands for. So this is a shortcut, but my favorite shortcut is that whatever, um, whatever was patented at the time that this person got the patent, it couldn't be what already existed. So even if you're looking at this bottle and he said, well, I don't know, like my looks kind of similar to it.

Rich: Um, uh, you know, it has those ridges in there and, and so I could see that it couldn't be infringing, but maybe I am and maybe I'm not. But then if you find a patent from 20 years earlier that showed that the thing that really makes you as similar to theirs existed 20 years ago, like, so there was a design patent that had a bottle that, that had that similar feature that had those wavy in dentures in it. Then that's your get out of jail free card because now you're showing like, hey, like my might look similar to the patent that's being thrown at me, but it looks most similar to something that was in the prior art, something that existed before that pat. So when they'd granted this guy, his patent, it couldn't have been about that because that was old. So that's the best trick I've seen to getting around this, this problem with Amazon is, um, is to, is to find something that black and white shows that the thing that is similar about it wasn't theirs to begin with an existed before that.

Pat: Right. Okay. Are Most of these claims on the, uh, uh, well I guess when, when, when another seller approaches you with a claim, do they have to specify if it's designer utility or it's just, it's just a complaint in general? There's one IP complaint umbrella.

Rich: Well, they should be listing numbers. Complaint is based on it. So looking at the patent immediately, you can tell whether it's a design pattern utility, the design patent numbers start with a d for One. And then if you open up the document, it starts with, uh, uh, I mean it says on the top design patent, so...

Pat: okay. Oh, I guess I'm, so this is skipping back to the beginning of the chronology, but it is something you said reminded me of it. Is there, um, do, do you check Google Patents or any sort of database for things that could cause trouble later on? Uh, just as you're sourcing [inaudible]

Rich: yeah, it absolutely pays to do that is to check Google. Um, there's, um, there's a methodology that I, that I use for this and, and it's, it's based upon this principle that, um, um, that I, I mentioned a moment ago is that when you're looking at a bunch of patents, it's often difficult to tell what the patent stands for. So if you're sourcing a product and you see a patent number first thing, you absolutely want to look, look up the patent number. I see too many people just stop when they see a patent number. A lot of times the patent's expired. And so, um, once the patent expires, it's public domain mean that anyone is free to do exactly what's in that patent. So first of all, check the patent number. It may be expired and they just still have the patent number on that because it tends to scare people away.

Rich: If they see a path number, they say, well I can't do this, but if the patent has expired, then um, then it's, it's public domain. The other thing to do is you could start looking at, when you look at a patent, when you on Google patents, especially, it says patent citations. And so these are all the patents that the, uh, the patent office considered when they were deciding whether to grant this person, they pat. And um, so all of those are inventions that are relatively closely related in all of the things that came before. So if you look through those references cited and on Google patents orphan, you can click directly through to them. And if you see that it's um, that if some of these older patents show those critical features that are really got the essence of what you want to make in your product.

Rich: And then that gives you the, uh, the, the safety. It gives you a green light to know that, hey, I want to make a bottle that has ridges like this, like hand. So it gets pretty complicated to figure out when you're infringing or not. But again, when you're sourcing and you're wondering like, hey, um, do products like this, could someone have a patent on it? I give up if I want to make staplers and like is this someone has a patent on the stapler? Well, if you find examples of patents that are more than 20 years old, then you know, right off the bat that no one has a patent on the sprinkler, they might have a patent doing some type of unique feature or some type of release button that, that, that releases staples that are jammed. And I don't know how many people really use staplers anymore, kind of dating myself even with this example. But, uh, the point is when you're able to find examples of the concept you want to do, then at least you know that no one has the rights to the concept itself. Right? And you have to be most careful about making more direct copies of products that exist.

Pat: Okay, that makes sense. Um, okay. Uh, right. So that's when you, that's when you get a complaint. Um, how about, um, if you have your eyes open and you see a seller who could be infringing on, uh, on your patent or trademark, what does that look like?
Rich: You mean the, the process of making an IP complaint?

Pat: Well, I guess, yeah, I suppose we were on the defense before with someone else, like a complaint against us. If we notice that someone else is doing that, um, or you know, those are just a rogue seller. I'm Scott, some of our inventory or, or here's a good one. Even, I don't know if you see these cases, but it's pretty common to have, um, uh, you know, listing hijackings. Right. Um, yeah. So, uh, uh, any, any thoughts on the hijacking or um, you know, just protecting your, your IP on Amazon?

Rich: Know what I mean? When I do this, I refer to an attorney that handles that. I don't actually do shut downs. And I advise a lot of clients when they get shut down about whether this really p claim or not. But the nuts and bolts of handling the, the who shutdowns and the fence with Amazon is a specialty will in itself. Yeah. There was some, some great guys that do that. And um, I, I refer people to tell the attorney said to do that portion of it. Um, and again, um, do a lot of times it's like when, when a client of mine has a potential issue with no, the seller that they're wondering about too, when you shut down the wondering if, if they can shut it down, I'll take a look to see if it's infringing to see if they have religion plane. Right. And then from there we'll have someone else handling good nuts and bolts of it. Right.

Pat: Alright. Okay. Yeah, it makes sense. Yeah. It's, um, I guess we've, we've found the, uh, the end of the scope there because that's, that's Amazon platform specific thing. Um, less, less IP, more. Yeah. Okay.

Rich: Yes, it's very, it's very paperwork intensive. So the, the best people that do those are people that do a lot of the handle, a lot of Amazon speeds. Yeah. Because they have the system set up with paralegals and other people that can do the non lawyerly stuff last expansively more efficiently. I'm not the, I'm not the, the, uh, the cheapest option for any of that. So, um, so I, I typically recommend to clients that they go to someone who has a system to do that efficiently and inexpensively.

Pat: Well, yeah. As I tell people coming into our service, yeah. You get what you pay for.

Rich: Yeah. And you specialize in what you do. I mean, my specialty is his patents and trademarks and understanding where people can be protected and whether they should be protected and advising my clients and taking appropriate action to get them protected. Um, and uh, so that's what people want to be paying me the big bucks for. But the other stuff, um, you know, there were better options.
Pat: Okay. Okay. Um, yeah. Rich to do it. And did you want to, uh, on that note, I guess, did you want to tell people where they can find you or how they can get ahold of you, um, for a, for their IP needs on Amazon?

Rich: Yeah, yeah. Well we can find me as a lot of Amazon and e-commerce related events. Um, I, um, I like, uh, speaking at masterminds in particular for smaller, smaller groups of Amazon sellers and helping them understand IP and how that works and then speak at bigger events as well. And I attend a good amount of, of conferences in this field. So that's where you can find me. Um, in terms of learning more about the patent process, a couple of things. They wrote a book, the American Bar Association asked me to write a book explaining patents in plain English and that's what I did. It's called the ABA Consumer Guide to Obtaining a Patent and you can get it on Amazon and it's pretty inexpensive. And also if you want to learn more about patents through videos, I, uh, I have a lot of great videos on my website that really break down the process. And my website is goldsteinpatentlaw.com. Yup. And that's probably a great place to go. And of course if you need help with any of this, go to goldsteinpatentlaw.com And, and you can talk to my staff and find out if it's a match for us to work together.

Pat: Yep. Yeah, it's a, yeah, it's a very clean, well-polished site and a, yeah, it's a, was on it just now. Um, yeah, I guess. Uh, so that, uh, that sounds great. And, uh, so that's where Rich'll be, I won't see you at Prosper this year, but uh (I may have let someone else from the team have their turn) but I'll, I'll, I'll see you around, I'm sure.

Rich: Awesome. Speaking at SellerCon, I'll be speaking at a few other events to the spring and so we'll bump into each other, I'm sure.
Pat: Okay, nice. Um, yeah, Rich, any, uh, so I guess a last words for, for sellers on their, on their way out the door here. Hey, uh, parting advice or things that you'd like to leave them with?

Rich: I'd say probably the thing I most want to leave them with is, is, um, people are going to copy the things that you have and sometimes you can do something about it. Sometimes you can, and it really pays at an early stage. Should figure out if you have something that's worthwhile is it was a different enough that you're going to get a patent that's worthwhile. Is it a patent that's going to be useful to you in, um, and shutting down your competition, uh, and to make that determination at an early point. And then as I said before, then move on, then focus on the things that are really going to make your business work well and uh, so protected when it pays to protect it. And if it does and if it doesn't pay, then then just focus on your business and Rock 'n' Roll.

Pat: Okay. Rich, Goldstein Patent Law. Thank you so much for coming on the show.

Rich: Oh, thanks so much. Thanks for having me.
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