Navigating Patents – A Chat With Julian Gonzalez, Esq.

RED BANK, N.J. – Are you facing a patent infringement violation on Amazon, or is someone trying to copy your product? As an associate intellectual property attorney at New Jersey-based Goldstein Patent Law, Julian Gonzalez, Esq. (pictured below) heard these concerns at Prosper Show 2024 earlier this year in Las Vegas.

As online sales continue to grow, patent concerns have come out of the shadows, gradually taking center stage as the differences between products become ever more subtle. Back in 2021, the Prosper Show blog (How To Check Patents On Amazon ) garnered a lot of views. The Prosper Show Newsletter sat down with Gonzalez to revisit the topic and get the latest on intellectual property (IP) and patents.

Prosper Show: What were you hearing from Prosper Show 2024 attendees?

Gonzalez: A lot of attendees were facing some form of infringement violation on Amazon. Many were also interested in preventing copycats from coming onto the platform and stealing their ideas—which ultimately takes away from their sales. They wanted to know; How could they prevent that? A lot of conversation involved the APEX [Amazon?Patent Evaluation Express] program—the evaluation procedure used to enforce utility patents on Amazon. Some sellers were dealing with some form of IP complaint on the trademark side or the patent side.

Prosper Show: Whose responsibility is it to ensure that IP rights and/or patents are not infringed?

Gonzalez: It’s the seller’s responsibility. Sellers must be aware of their competition and who is copying their products. In a few circumstances, the sellers themselves may have a watch-dog service that is searching to see if there are similar products out there. These services can help in determining whether competitors are infringing or copying their products—or using similar words to sell their products—which is a trademark issue.

Prosper Show: How large of a problem is infringement?

Gonzalez: Infringement requires that there be a patent or other IP in existence. But the fact is,?not?a lot of sellers have patents. So there is a lot of copying, but not necessarily a lot of infringing. In other words, there is not a lot of copying that anyone can stop. There?could?be a lot more infringement, and ability to shutdown copycats, however, if entrepreneurs and sellers were more proactive about getting their patents and other IP, and they considered it more from the outset.

Prosper Show:?How often do you help clients with getting IP — Patents/Trademarks/Copyrights?

Gonzalez:?That is primarily what we do. We specialize in the procurement of patents, trademarks, and copyrights. There are firms that primarily offer patent prosecution. There are firms that primarily offer patent litigation, and some firms do both. We offer patent prosecution and also infringement counseling. We also help people enforce their IP on some platforms, such as Amazon.

We are IP Amazon specialists. We know how to navigate IP issues on Amazon to help our clients enforce, defend, reinstate listings, and deactivate other listings based on infringement or non-infringement of products under the listings. However, we primarily help clients procure patents and trademarks in the US as well as abroad, and provide strategic advice.

Prosper Show:?Why is it so important to do it correctly from the start?

Gonzalez:?You want to increase the value of your company for that future exit. As entrepreneurs, that’s pretty much what you’re considering from the outset – how to increase the value of my company, or get a higher multiple, upon exit.

You want to sell a lot of products to establish yourself; but you also want to corner the market and prevent copycats. Patents and trademarks help you do that. Patents and trademarks are intangible assets that add value to your company.

The process involves shoring up your brand with trademarks and building an IP portfolio and obtaining patents of varying scope—design patents and utility patents. Making sure that you have these protections in place will substantially increase the value of your company.?

Prosper Show:?Why do patents/IP contribute so much value?

Gonzalez:?People who may buy your company want to decrease risk and make sure they’re buying companies who have crossed their T’s and dotted their I’s. They do that by making sure that you’re protected with patents and trademarks so that they can prevent others from entering the market with similar ideas. Having these IP rights dramatically increases the value and desire of someone to want to buy your business. While you own the company, you can exclude others from using, making, selling, manufacturing, or importing the product that is protected by your patent. You want to be the only one selling your product. If your product is a hot ticket item, then others are going to inevitably copy you.

Prosper Show:?How would you describe the copycat culture?

Gonzalez:?Everyone is mindful of what is selling so top-selling products are inevitably copied. If you don’t have a patent, anyone can enter the market and start competing with you. If you have a patent protecting your product, then no one can enter and you will dominate the market.

Prosper Show:?Why should sellers get help with the patent/trademark process?

Gonzalez:?Sellers try to do it themselves, and they often submit patent or trademark applications incorrectly. Unfortunately, they don’t know enough. They’re not professionals and they don’t have the time. They’re focusing on their business and the intricacies and difficulties of running a business. During prosecution—also known as the examination of the patent/trademark—something may be wrong with the original submission—or they didn’t do a proper patent/trademark clearance search. When that happens, there could be other patents/trademarks out there that essentially block them from getting a patent or trademark. They waste time, money, and resources if that happens.

In other situations, they don’t have the time to manage the communications and actions by the United States Patent and Trademark office. It ends up being costly in the long run when it’s not done properly from the beginning. Many clients come to us after the fact saying, ‘I did this, can you help me?’ They either had poor advice at the beginning or did not see the value in hiring an IP attorney to help from the outset.

Prosper Show:?Why don’t more sellers have patents?

Gonzalez:?They are not necessarily thinking about patents or the rights afforded by them until they experience someone either asserting a patent against them or blatantly copying them. They say, ‘There’s a copycat. What do I do?’ And suddenly they need to get a patent to prevent these copycats. Some sellers don’t have a patent because they are just unable to obtain a patent because there’s too much that’s been done before that would render their product non-patentable. Remember, patents have to be novel. Sometimes a patent attorney will do a search and find prior patents that are too similar. In that situation, sellers are advised to not move forward with a patent application because they would waste resources.

Prosper Show:?What’s the process for checking patents?

Gonzalez:?In one situation, sellers may ask; ‘Is my invention patentable over what’s been done before?’ In another situation, they may ask; ‘Am I infringing on something?’ With respect to the patentability question, you can search the United States Patent and Trademark Office for prior published patents that are either still in force, or those that are expired—that are similar to your invention. That way you get a feel for the lay of the land of all patents related to your device, and you can render an analysis and compare the invention with what’s been done before. That’s the patentability question.

With respect to infringement, you do a search for all patents, but the only thing you’re concerned about are those patents that are issued and in force – not expired. Remember, patents have a 20-year patent term so you only care about those that are still within that term, or not expired. Those non-expired patents are the only ones that can be enforced against you. Once you find those, the process is pretty complex and expensive because you must find all those that are similar and you have to do an infringement analysis on each one. You have to compare the product in question to the claims of each patent. It’s a detailed and time consuming analysis, because you must review the patent in fine detail, which are lengthy documents, as well review the examination history of each patent which can include thousands of pages of documents.?

Prosper Show:?Does the system work well in the real world?

Gonzalez:?Definitely, if taken advantage of. I think it works especially well on Amazon, with the expedited process provided by the Amazon Patent Evaluation Express (APEX) Program. We’ve handled a variety of cases where our clients have patents, and we have successfully enforced them on Amazon. We’ve gone through APEX and proved that there is likely infringement. We’ve shut down a variety of listings, including consumer products, such as tables, kids’ toys, sunshades, remote controls, and filters. It essentially requires asserting a particular claim of the patent and briefing/showing, with various images of the infringing product, how the features recited in the claim are present in the infringing product to prove infringement. We’ve done both where we’ve helped clients assert their patent as well as defend against an asserted patent.

Prosper Show:?How satisfying is it to get wins for clients?

Gonzalez:?It’s an amazing feeling, because we met the goal of our client and that’s always our objective. When a competitor is infringing and cutting into our client’s sales, revenue, and profits—we’re happy to help them assert their patent against these copycats and nefarious actors who are blatantly taking advantage and trying to get a buck off of our client’s hard work. It’s always satisfying to get that win.

Prosper Show:?How difficult is it to get a design patent?

Gonzalez:?I would urge people to at least go for a design patent. They are easier to get, less costly, less time consuming, and easier to enforce, especially on Amazon. With a design patent you don’t need to go through APEX, rather you simply report that a listing is infringing your design patent and then Amazon does the analysis in house. Also, they could potentially get you as much damages as a utility patent could, and that’s why design patents are a no-brainer.

Prosper Show:?How about a utility patent?

Gonzalez:?Utility patents are more difficult. They are harder to prepare because they are much lengthier documents and the examination phase is typically more difficult. But we’ve searched the patent and cleared it after comparing it to what’s been done before—and said, ‘You have a pretty good likelihood of success,’ it’s typically not as difficult to get because we know to a pretty good extent what we’re going to be dealing with in examination.

Prosper Show:?How long does it take to get a patent?

Gonzalez:?The utility patent takes between two and a half to three years on average. The average turnaround for a design patent is approximately 18 to 24 months. However, note there are ways to expedite the examination of both utility and design patents.

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