For this exciting episode of Art of the Kickstart, we interviewed Vincent LoTempio, an intellectual property attorney who has worked with many exciting clients, including the inventor of the Selfie Stick. Tune in to learn more about different types of intellectual property, how inventors and crowdfunders can protect their intellectual property and much more.
- The difference between a utility patent, a design patent, a trademark and a copyright
- Why an inventor should file for a patent or trademark
- When an inventor or crowdfunder should file for a patent application
- How project creators can protect their crowdfunding campaigns from knock offs
- Why provisional patent applications are important for crowdfunders
- Benefits of IP Registration
- Yahoo Patent Case Against Facebook
- The Force by Don Winslow
Connect With Vincent LoTempio
Art of the Kickstart is honored to be sponsored by The Gadget Flow, a product discovery platform that helps you discover, save, and buy awesome products. The Gadget Flow is the ultimate buyer’s guide for cool luxury gadgets and creative gifts. Click here to learn more and list your product – use coupon code ATOKK16 for 20% off!
Art of the Kickstart is honored to be sponsored by BackerKit. BackerKit makes software that crowdfunding project creators use to survey backers, organize data, raise additional funds with add-ons and manage orders for fulfillment, saving creators hundreds of hours. To learn more and get started, click here.
Welcome to Art of the Kickstart, your source for crowdfunding campaign success. I’m your host Roy Morejon, president of Enventys Partners, the top full service turn-key product development and crowdfunding marketing agency in the world. We have helped startups raise over 100 million dollars for our clients since 2010. Each week I’ll interview a crowdfunding success story, an inspirational entrepreneur or a business expert in order to help you take your startup to the next level with crowdfunding. Art of the Kickstart is honored to be sponsored by BackerKit and The Gadget Flow. BackerKit makes software that crowdfunding project creators use to survey backers, organize data and manage orders for fulfillment by automating your operations and helping you print and ship faster. The Gadget Flow is a product discovery platform that helps you discover, save and buy awesome products. It is the ultimate buyer’s guide for luxury gadgets and creative gifts. Now let’s get on with the show.
Welcome to another edition of Art of the Kickstart. Today I am joined with Vincent LoTempio. Vincent, thank you so much for joining us.
Well, thank you for having me. I really enjoy this kind of thing.
So, Vincent, you are an expert on intellectual property law, and you have a key focus on patent and trademark laws. Obviously this is super helpful to all of our entrepreneurs, our businesses, our start-ups, our creators, understanding copyright and all of these other things. I definitely want to give an opportunity for you to tell our audience a bit more about your background and how you got into patent and trademark law.
I’m not your typical patent attorney. I started working for district attorney in [inaudible 00:01:51] County and at about 35 years old I went back to school and got a degree in chemistry, because you need to have a science background to take the patent BAR. I’m almost 58 years old, and I started practicing intellectual property when I was 40 in about 2000. I just didn’t want to be the person who was defending all these criminals I was putting in jail. I wanted to change myself. I basically did my own start-up, I recreated who I was. I went back to school, I got my degree in chemistry, and I started doing intellectual property law. It’s been a fun ride ever since.
I’ve done a lot of cool things. I was on the History Channel for the Million Dollar Genius Show they have on Friday nights for the inventor of the selfie stick. He actually invented it in two hours. And traveling Western New York and so he was looking for a patent attorney right across the border and I connected up with him and I ended up on nationwide television. I’ve got a couple real good corporate clients in the last 10 years and everything is kind of taken off from there. Especially with the Internet. It’s so easy to meet people from all over the world
Now that’s really cool. Obviously the selfie stick was quite a big thing. It’s still a phenomenon going on. But it’s interesting you work with the higher end corporate clients and the first time inventors that have a new idea that potentially have never, obviously, marketed it, manufactured it and everything in between. Can you talk to us and get everybody on the same page in terms of an overview of what a patent is and what a trademark is and anything in between there.
Yeah, it’s quite true I worked with, I joke and I say [inaudible 00:03:36]all the way up to big corporate clients. And even the corporate clients … even the attorneys don’t know the difference between patent and trademark or copyright.
One of the things I use as an example that it’s easy for everyone to picture is the Coca Cola bottle. The Coca Cola bottle is an example of every type of intellectual property. It’s a container that holds a liquid. So if you’re the first person to come up with an ad for a bottle, you know the first cave man. You could have gone to the neolithic patent office and got a patent on the bottle for the utility of it. It’s called a utility patent. It’s a container that holds a liquid.
There’s also what’s known as a design patent. So the look of it, the sexy look of the Coca Cola bottle versus the Pepsi Cola, the 7 Up bottle. And in your mind you just picture what those different bottles were. So the design is for the aesthetic look of it. And the bottle that holds the liquid is for the use of it, the utility.
So on the outside of the bottle we have the name Coca Cola, that’s its trademark. The trademark is a source indicator. It’s a mark that you put on a product during advertising or service to indicate who the source of the product, the good or the services, you know if you’re an accounting firm or something. So that’s your trademark. You can argue probably that it’s a work of art. It’s like a statue, so that would be the copyright protection. Although I try to sneak in a couple functional things like a bottle or glass because the copyright office, they don’t let you register those if it’s a functional thing. But for this example you can think of books, cds, lyrics. Those are things you can get a copyright. A copyright essentially is just what it says. NO one has the right to copy this thing, you know, this book or this song, unless I give full permission if I own the copyright in it.
And frankly, inside the Coca Cola bottle is a trade secret. It’s like their secret recipe like with Kentucky Fried Chicken. So trade secret you keep it a secret. Just like it says. You don’t tell anybody how to make it. Since 1900 Coca Cola has kept it secret and they’ve gone through leaps to keep it secret. They actually have three separate buildings, one for manufacturing, one for marketing, and one for distribution and they’re not even allowed to talk to each other. And there’s only a few people that have the actual whole recipe together. And they break it down so when you put it together, each person’s little part, and it all becomes whole. Trade secret is another thing.
And another thing that just popped into my mind is trade dress. So the look of something, like the look of the McDonald’s restaurants, think about the Christian Louboutin shoes red bottom, the brown UPS truck. That’s a trade dress. Back in 1964 Coca Cola registered a trade dress, the look of the Coca Cola bottle. People, they think even if you sold, maybe a bottle of perfume, using the Coca Cola bottle you’d make millions and so I’m gonna try to do that. You couldn’t do that because Coca Cola has protected the look of that bottle.
So I guess that’s the short version of the difference between the different types of intellectual property.
Now that’s a great overview Vincent. So, for all the inventors and entrepreneurs that we work with or that listen to this show, give them the pitch on why they should file trademark or patent or copyright applications for their idea or invention.
Well the first place, let’s talk about the copy law versus the statutory law. So, when you file your registration for patent, trademark or copyright, you’re getting statutory federal protection. The federal government, basically, has the right to rule on individuals in the states based on the commerce clause. There’s commerce between the states. So if you file your trademark and you register it, you’ll get nationwide protection. Whereas, if you just try to say “look I’m the first one to use it, I have common law rights in it” you could only have local geographic rights as to where you’re actually using it. So if you’re just using it in your locality, you’re not gonna get national coverage.
With copyright, it’s very difficult to prove damages. You know, if you fall and break your leg in front of somebody’s house, the local attorneys they’ll do personal injury. They’ll have a broken leg is worth x number of dollars, a broken arm is worth this number of dollars. But when somebody copies your book or your pamphlet and they sell one product, how do you define what your damages are. So the good thing about filing your registration is that you get statutory damages, $150,000 statutory damage for one infringement. So you have to prove your damages. So it’s very important for that reason alone.
I have a checklist of all the benefits of registering and if anybody wants it they can go to my website at LoTempiolaw.com. Or even send me and email Vincent@LoTempiolaw.com and I can send it to you. But those are a couple of major reasons why you want to register a patent, strike that, a trademark or copyright.
For a patent, a patent doesn’t give you the right to make something. A patent gives you the right to stop other people from copying your thing. So it’s possible you could get a patent on something and not even be allowed to make it. And that sounds a little funny. I use an example of a pencil. So say you are the first person to invent the pencil. You worked in a lumber yard and you took a small piece of lumber, you made a cylindrical bore hole through it and you put a piece of graphite in the middle, and you invented the pencil. You’re the first person to make the pencil.
And your wife, she works at L and M Rubber and she’s been using your pencil. And she gets the patent on the eraser, she found this little piece of rubber works very well for erasing pencil marks. I buy your pencil and her erasers, but I always lose them. So I decide I’m gonna get the patent on the pencil with the eraser on the end. So, even though I have the patent for the pencil and eraser, I can’t make pencils because somebody else has that patent. And I can’t make erasers because somebody else has that patent. So nobody really can make that pencil with the eraser. So what do I do? Cross places. Or I buy your pencils and I buy your wife’s erasers and I make them myself.
So the patent itself doesn’t give you the right to make it, it gives you the right to stop others from making it. And I guess that’s the question for startups and entrepreneurs. What’s the worst thing that can happen? You can start thinking one end and all of a sudden someone is copying your intellectual property. That’s the danger.
There was a thing I saw on 60 Minutes, they cover a [inaudible 00:11:04] Massachusetts, I wish I could remember his name off the top of my head. But he was the first person to invent those sweatshirts, the little fluffy sweatshirts, like Gore Tex or something. Everybody raved about them when they first came out. And he didn’t get a patent on it. And he had thousands of people in his hometown working for him and then people started copying him and he couldn’t keep up with the big competition. And thousands of people in the entire city lost their jobs. All because he didn’t spend $10,000 to get a patent.
I always say if you’re not making money, spending $10,000 to get a patent might as well be a million. But if you have the potential to make millions of dollars on something, spending $10,000 is not a lot of money.
I’m glad you brought up the cost of it. Obviously for some of these startups that are listening 10,000 is a hefty expense. At what stage, let’s say in the product development process, should inventors file for this application or do you think it’s something that once they launch their crowdfunding campaign and they’re seeing success they file it at that point? What are your thoughts there?
But honesty rules. If you’re offering for sale, use it in public, or publish it anywhere, like in a magazine or website, give it one year from that date to file your patent application. If you don’t file it, you lose all your patent rights. I’ve written a blog post, if you went and just typed in Facebook and my name LoTempio and you read the blog post where Facebook was sued by somebody for copying their idea, some part of the Facebook page. And they went to trial and the jury came back, and the jury found that there was actual infringement. But they also found that the person offered his idea for sale more than a year before he filed his patent application and they knocked his application completely out. That’s the danger of not filing.
The other part is the rules are now different than they were just a few years ago. It used to be the first inventor gets the patent. So, if you came to my office on January 1st and you filed it on February 1st, and then somebody else filed it on January 15th, we can put together what’s called the swearing back affidavit and swear that you were in my office on January 1st and you had this idea and we didn’t file for February 1st date we want to swear back to that January 1st date. But that’s all gone now. The rule is that the first inventor to file the application wins the race to the patent office. If you wait, you could lose your patent rights. If you don’t file and make it public you have a chance of losing your patent rights. It’s a race to the patent office.
So Vincent we’ve had a client in the past that we worked with on their crowdfunding campaign, Josh Malone. We ran the Bunch o Balloons crowdfunding campaign years and years ago. Got massive success. About a million dollars on the campaign. And then an infringer came along, Telebrands came off and basically knocked off his patent, his product and everything and rushed to the market with all their knockoffs. Now Josh basically had to fight to the tune of 17 million in terms of what his patent has cost to fight it. What are your thoughts there for these crowdfunding campaigns that see great success and some of these other companies just go and knock them off? What can they do to potentially protect themselves?
It certainly is scary and it’s not[inaudible 00:14:47] to the courthouse and you still have to be able to afford the cost once you’re there. If they didn’t have that patent there wouldn’t be any type of lawsuit. It would just be copy so I don’t know the details with the Bunch of Balloons suit. But at the end of the day, if you don’t have the patent there’s nothing you can do. I know it’s a big expense. One of the things early on in the process is a simple thing, is provisional patent application. It’s meant for startups and people, not the big corporate clients that can’t afford to pay for the patents.
So the idea is that you can file a patent application and preserve the filing date and the [inaudible 00:15:35] filing non provisional. And there’s not as many[inaudible 00:15:38] requirements in the cost. The actual government fee is a lot lower. I actually can put one out at $1500 to file it. I really want to put $45 in [inaudible 00:15:51] to make it look like a real patent application. I’ve seen things on the Internet where they’ll file a provisional for $69 and I’m like “what the hell are they doing?” They’re probably not doing anything for you. They’re probably just filing whatever you gave them. You want to make sure that there’s enough in that provisional application that’s gonna cover when you go to file a non provisional.
That gives you a hear and see appeal. You’re getting some sort of traction. You’re getting some sort of money to protect it. I think these lawsuits, in that they run into millions of dollars to defend, at the end of the day, it’s probably a good thing for you. Because if you weren’t making any money, you weren’t selling anything nobody would be copying you. You wouldn’t have anything. I think no matter what it turns out to be a couple years ago it was a big thing to [inaudible 00:16:40] to start up these yogurt stands. And now next thing you know a couple people made money and then there’s 57 of them and they start draining the whole market and now most of them are out of business.
It seems like if anything makes money, people come out of the woodwork and try to copy it.
Absolutely. So what would you say are some of the problems that inventors that you work with commonly face when dealing with intellectual property law?
The first thing is identifying what it is to see why at times even my corporate clients we meet with a committee. We call it the IP committee, with the vice president and the research and development guy and maybe a marketer. And we try to just go over what are the things we are doing that we haven’t done before and let’s try to identify it to see if it actually is intellectual property. Is it patentable subject matter? Is it … should we register a trademark? What are different ways we should register the trademark? Should we just do the name alone? Should we do the logo? Do we have our own Nike Swoosh that we want to protect?
I think the first step is identifying. What do we have? Let’s see what we have and what’s the most cost effective way to protect it? A lot of these app developers now, it’s very difficult to protect them with patent. There’s a lot of these patents where they want it to be tied to real world, then they say it’s mostly abstract ideas and they’re not allowed to get a patent. But what are the things that Steve Jobs did when he first started Apple? And Steve Wozniak … they couldn’t afford patents. So what did they do? They used the copyrights. The algorithm of the actual software is its own language in itself. And you can protect that with copyright. It’s a lot cheaper to protect it with copyright now. The problem with that is it doesn’t protect the functionality of it and the way it functions. It just protects the copy of that exact code. So if somebody rewrote the code to do the same thing, which is a difficult thing to do, it’s kind of a hindrance to people copying that and stopping them from just flat out just copy your thing.
So same thing with trademark. A lot of the artwork that you create, the logos that you create. The minute you put something in tangible form, you own the copyright in it. The common law rights, we talked about the difference before but just to make it clearer someone said “I want to trademark this” or “I want to copyright this.” I say to them “you’ve already done that as soon as you started using it.” As soon as the minute you use it, you copyright it. Now you want to register that copyright, or you want to register that trademark with the federal government to give you added protections, and the reasons why you do it.
So those are some of the basic things that you need to do right away. Identify what you’re thinking of. Try to figure out the most cost effective way to protect it. And then file it the right way the first time. I always say, filing a trademark especially, people always try to do it themselves, it’s more than just filling out the forms. It’s understanding the legal requirements that go behind it and what you need to do. A lot of people don’t get that and even lawyers have tried to file it on their own. And if you screw it up there’s chances that you can lose it forever and you have to refile it and it can’t be fixed once they get a hold of it.
Got it. So let’s tie this all back together Vincent. What would you say is the number one piece of advice for someone thinking of launching and marketing their invention? Either through crowdfunding like Kickstarter, Indiegogo or through other means.
Well, I think the first thing, before you put it up there is at least get a provisional patent application. Or at least a search to see if it’s patentable subject matter or something that you can protect. And then it’s pretty much, the way most patent searches work. It … I call it stop the blowing stages. If you do a patent search, and there’s different types of patent searches. There’s infringement searches, there’s patentability searches. Can I get protected? And there’s freedom to operate searches. Am I gonna get sued by somebody else for making this thing?
At the beginning, the beginning stages is to determine do I own this, is this mine and how do I protect it? Should I protect it with a provisional patent application if I can’t afford to pay for a full blown patent application? But, yeah, I think that’s a first step especially if you’re going to go out there and publicize, because you could risk losing on your rights if somebody else copies it and patented it themselves. I mean, what would be the worst thing? The worst thing would be if somebody else gets the patent and tells me I can’t invent the thing that I invented.
That would be terrible. Thank you Vincent. Alright this is gonna get us into our launch where I rapid fire questions at you. You good to go?
Sure, I’m ready.
So what inspired you to work with entrepreneurs?
I just want to help people make the world a better place.
If you could have coffee with any entrepreneur or inventor throughout history, who would it be?
I think Tesla. I wanted to see if you really could make simple electricity without wires?
So what would be your first question?
That would be it. I would try to get him to be a better businessman.
Do you have a favorite patent?
Well, I guess it’s got to be the selfie stick. It got me on nationwide television.
Gotta love that. What book is on your nightstand?
On my nightstand right now. I listen to audio. I always have books I probably listen to positive books for at least 20 years. But right now I’m listening to The Force.
Nice. Last question. What does the future of crowdfunding look like?
I think it looks very, very, good. I think it’s … I have a lot of clients that have been very successful using it. And it’s certainly a way to get money out there from countless sources. I think it’s good.
Well Vincent this has been an awesome interview. This is your chance to give our audience your pitch. Tell them what you’re all about, where they should go, and where they can find you.
I’m sure they have a main page but it’s not set up yet. You can find me at LoTempioLaw.com or you can email me at Vincent@LoTempiolaw or call me at 716-853-1111. And mention the show I’ll give you a 20% discount on our rates and try to work with you. I’m always very easy to work with, very approachable, and you can call me anytime on my cell phone and talk to me directly.
I really appreciate being on this podcast. I really enjoy just meeting people every day and finding their new inventions and trying to make the world a better place.
Awesome. Well thank you Vincent. Thank you audience for tuning in. Make sure you visit artofthekickstart.com for all the show notes, the transcript, links to everything we talked about today. And of course thank you to our crowdfunding podcast sponsors the Gadget Flow and Backer Kit.
Vincent thank you for being on the show today.
Thank you and it was a pleasure meeting you.
Thanks for tuning in to another episode of Art of the Kickstart. The show about building a business, world, and life with crowdfunding. If you enjoyed today’s episode awesome.
Make sure to visit artofthekickstart.com and tell us about it. There you’ll find additional information about past episodes, our Kickstarter guide to crushing it. And of course if you loved this episode a lot leave us a review at artofthekickstart.com/itunes. It helps more inventors, entrepreneurs, and startups find this show and helps us get better guests to help you build a better business. If you need more hands on crowdfunding strategy advice please feel free to request a quote on inventuspartners.com. Thanks again for tuning in and we’ll see you again next week.