Legally Bond
Legally Bond
An Interview with Fred Price, Intellectual Property
In this episode of Legally Bond, Kim speaks with Bond intellectual property attorney Fred Price. Fred breaks down the fundamentals of intellectual property law and explains the differences between patents, trademarks and copyright. He also explains what it means to be a registered patent attorney and discusses alternative protection strategies, such as trade dress, when patents aren't available.
Hello and welcome to Legally Bond, a podcast presented by the law firm Bond Shettick King. I'm your host, kim Wolfe Price. Well, in today's episode we're talking with Fred Price. Fred is a patent attorney and a member of the firm. He practices in Bond's Intellectual Property Practice Group in the business department. He sits in the Syracuse office. Well, hi, fred, welcome to the podcast. It's great to be here.
Speaker 2:Kim, thank you.
Speaker 1:Producer Kate said you now can officially receive Legally Bond swag because you're actually on the podcast.
Speaker 2:I cannot wait.
Speaker 1:I'm really looking forward to getting a hat at least, maybe a sweatshirt too, we'll have to get some new swag, I think then, maybe, kate, all right. So I know there is a lot we could talk about with intellectual property law, or IP as it's called, and I was thinking about our talk today. I realized that maybe our listeners have heard of IP law but might not really understand what IP lawyers do. I read the basics of the practice in Compass, so, if it's okay with you, I'd like to sort of talk about those basic pieces of IP law, maybe get in a specific issue or two and, you know, leave some items for you to come back to the podcast at a later date. Sounds good, all right, good, well, first-time guests are asked when they join the podcast to start out talking about their background so that our listeners can learn more about them. Perhaps now is the appropriate time to tell the listeners that Kim Wolf Price interviewing Fred Price that Price isn't just a funny coincidence.
Speaker 2:We're like Joe and Mika. I think I'm mourning Joe, but I'm not sure if I'm Joe or Mika. Anyway, yes, nice to be on with you, kim. A little unusual, but we'll get through this. And as everyone or not everyone, but some folks listening to this may know that, we met in law school and we worked in New York City for a while until we had our first child, james. Spent a year longer in New York with James and then moved back upstate where we were both originally from you from Utica and me from Syracuse.
Speaker 1:That's right. So thank you for telling us a little bit about your lovely wife and family. And then you moved back upstate and you had another kid. I hear yes.
Speaker 2:Lucas and we had a wonderful dog, perry, and now we have a beautiful girl dog, rosie.
Speaker 1:That is correct. And then a couple of cats in New York City too, Don't forget Harley and Marshy. Marshy, of course, named Marshall after you know Supreme Court justices, because what else do law students do, Right? Very nerdy, Very nerdy. So, all right, Syracuse Law you practiced at a firm that was then called Fulbright Jaworski in New York City and it was patent law.
Speaker 2:So how did you get to Bond? So we got to Bond. We were deciding to move back upstate because we had really no family living with us and we were in midtown Manhattan. Although it was wonderful to live there, we really wanted to move back with family. So I looked upstate and Bond at the time this is 2005, 2006 timeframe was the only law firm to have a patent practice. So I reached out to George McGuire and David Nocilli and Brian Butler.
Speaker 2:Of course, Brian Butler. He was actually the first person I spoke with. He was my entry into Bond and gave me a little bit of the culture background here and I was really intrigued. So he is the one that suggested I reach out to George and Dave, and the rest is history. I was lucky to grow up working with George and Dave and now we are. At that time we were, I think, three or four registered patent attorneys and now we are, I believe, 13 or 14, stretched across four offices.
Speaker 1:That's pretty amazing. It's good growth over the time and it's still that same core group is here together, which doesn't always happen at law firms. That's right, all right. Well, thank you for sharing that uncomfortable background with the listeners. In case anyone hasn't figured it out, brad is my husband. That is true, and we actually work on the same floor in the same office of Bond. All right, so there we go, got that out of the way, feeling better. Yes, okay, I think. All right. So when I introduced you, I said you were a patent attorney. What does that mean?
Speaker 2:Well, I could go in a number of directions here, but I think we should always start at the beginning, which is the US Constitution, specifically Article 1, section 8, clause 8, which grants Congress the power to promote the progress of science and useful arts by securing, for limited times, to authors and inventors the exclusive right to their respective writings and discoveries, and inventors the exclusive right to their respective writings and discoveries. And from the Constitution, the US Congress set forth several different statutes one covering patents, one covering copyrights and the other covering trademarks.
Speaker 1:And so to be a patent lawyer, you got to one up us, right. The rest was just take some state oath, but you're in the federal constitution. But in that state oath we do promise to uphold the constitution of the United States too. So, but you're a lawyer, right. So you had to pass the bar that all lawyers pass. But then you had a second test you had to take. Is that right?
Speaker 2:That's right. So specifically for practicing patent law, which means reviewing invention disclosures from inventors and turning that into a patent application and filing that and then working with the patent office in order to obtain a registered patent, you have to pass a specific test to become a member of the patent bar. So it's the patent bar exam you have to take. Not only that, but you have to have a specific background, typically a science background, in order to even sit for the exam.
Speaker 1:Well, yeah, and we didn't mention where you went to undergrad, so you went to Le Moyne. When you were there, you have a biology degree, chemistry minor, of memory serves. And did you know you wanted to be a patent attorney then?
Speaker 2:I didn't. I didn't. I was looking more at pre-med actually, and after I graduated I worked as an EMT for a while and I also worked in an inorganic chemistry lab and shadowed several doctors. And then I, after doing that, getting an education, I figured I wasn't sure that life was for me. And then I turned and someone at one of the doctor's get togethers I met a patent attorney and he turned me on to oh, maybe I can use my background in law and maybe that would actually open some more doors. So then I applied to law school and went to Syracuse University, and the reason why I picked Syracuse one of the biggest reasons is that they had a technology transfer program that allowed students to work with local technology companies and research patents and provide them advice with respect to their products and that sort of thing. So that was a great experience.
Speaker 1:So you've been nerding out on patent issues since second year of law school, or so.
Speaker 2:Yeah, really first, yes, yes, All right, that was a long time ago.
Speaker 1:It was just yesterday, just moments ago, all right, you look the same, by the way.
Speaker 2:Well, hey, thank you. All right, nice.
Speaker 1:Could you say that again for the audience? Even more beautiful today, hey, thank you. All right, nice, could you say that again for the audience?
Speaker 2:Even more beautiful today than I met you. All right Perfect.
Speaker 1:All right. So we said we'd talk about these terms and maybe we should start with the broadest one, which is intellectual property law. I'm sure everyone thinks they know what it means, or sort of thinks they know, but what is it? What falls under that category?
Speaker 2:Right. So intellectual property are a set of rights and they're considered intangible assets. And I took a look, I saw this graph 10 years ago now and I took a look to see what it says now. And the S&P 500, the worth of the S&P 500 is made up of 90% intangible assets, 10% tangible assets.
Speaker 2:And intangible assets are those intellectual property rights and what does that mean? What do they include? They include patents, trademarks, copyrights, trade secrets and all of those. That sort of bundle of rights rewards creators for creating something and it provides those creators with a right to exclude, which really means those creators as long as they meet certain obligations and certain tests, like novelty, for example, they're provided with a limited monopoly from the government to exclude. In other words, they have exclusive rights to exclude others from making, using, selling their invention, under patents, for example. And how is that a benefit? Well, obviously, if you can exclude others from making your product and that intellectual property covers your product, that can give you the exclusive right to a product and keep others out of the market for, again, a limited period of time.
Speaker 1:So these can be invention software. Your name, your logo, your motto, all of those different things can fall under that.
Speaker 2:Yes. Intellectual property yes.
Speaker 1:So, like many patent attorneys, while patent is in the name of what you do and on your business card maybe it's primarily what you work on day to day is the patents. You also work in all of the other areas of intellectual property as well, like copyright and trademark right.
Speaker 2:Yes.
Speaker 1:And you so. Would you walk us through each of those in any order that you want to start, like because you'll hear people say, oh, I'm going to trademark that, but that's not actually something that can be trademarked. You know we use these terms so incorrectly. I think it might be helpful for listeners to hear really what each of these is.
Speaker 2:Yeah, so I was thinking about this a little bit today, and you know what example can I use? Let's use a light switch, and specifically a light switch that you can wave your hand in front of to turn on and turn off.
Speaker 1:You've spent time with those.
Speaker 2:I have, yes, so let's talk patents. So a utility patent would cover the mechanics of how such a light switch worked, the mechanics, interior mechanics, such as the mechanical aspects and the electrical aspects, and the software aspects inside the switch itself and how that switch hooks up to the rest of the room and building. So that would be a utility patent. It would cover again the structural, mechanical and electrical and software aspects. And someone who came up with the invention of how that, the functionality of that light switch, how it works, how it's configured, can write up a disclosure file that with the patent office. If it's new and not obvious, meaning nothing else has come before, or can be combined to show that, then they're able to get a limited monopoly right on that and prevent others from making that. So they can be the exclusive maker, user, seller of that. In the US and I want to stress, these intellectual property rights are jurisdictionally based. So if you get a patent in the US it doesn't mean you have the same right to exclude elsewhere. You have to actually obtain a patent in another country in order to do the same there. That's a utility patent. Design patent would be. What does this light switch look like on the outside, of course it's going to have an eye that looks like Hal from 2001, possibly. But it can also be shaped like a face, or it could be the part of the face's mouth or the eye, some kind of ornamental feature design. That's really non-functional. More ornamental, you can obtain a design patent on that and that can prevent others from making, using, selling something that looks very similar to that for a specific period of time. So that's two types of patents, one design, one utility.
Speaker 2:Trademarks would be a logo for that. So Legrand, for example, is a name of a company that makes electrical wiring devices, and that name signifies a certain group of goods versus another competitor's group of goods. So the purpose of a trademark is to distinguish a certain company's goods versus another. A stronger trademark is one that's either made up, like Xerox, for example, or that is used on goods that are not really related, such as Apple for computers. Those are the strongest. The weakest are descriptive terms and we try to avoid using those. So that's patents and trademarks. Copyrights cover expression, so someone's how they express themselves in either books or let's go to manufacturers who use marketing materials the selection and arrangement of words, pictures, graphics, that selection and arrangement, how someone shows how to put that on a marketing piece can be covered by copyright. How they express themselves with that marketing piece, not the ideas or the logos themselves, but how they selected and arranged those things thank you.
Speaker 1:There's so many other pieces to this too, right, it's brilliant. Yes, you know where did you create this, right? So if you're in a higher education institution, who does it belong to? Those are other pieces of things that you look at and look into. And then certainly there's also the infringement piece, right, where you may have this, but someone decides they're going to go ahead and make it anyway. That's right.
Speaker 2:That's right. That's where your right to exclude comes in, and typically we have clients informing us of a knockoff product either the product itself or the trademark and we review the same and if we agree legally that they have a case or reasonable case, then we suggest they send a letter or file a lawsuit, depending on how aggressive they would like to be.
Speaker 1:And that's a little different for our firm, because typically we're defense lawyers, but in these instances we're sometimes the plaintiff saying, hey, cut it out.
Speaker 2:That's correct. It can certainly go both ways. And that's what makes it fun because we can learn both sides and it helps us. The more experience we get, you know, the more observant we can be and, you know, provide the right answers for our clients, because we know how the other side is thinking, because we were just there.
Speaker 1:Yeah, and your team also does the litigation pieces of it which in IP law can be different and have. It has different portions to it than standard civil litigation sometimes.
Speaker 2:That's right, and I also want to note that, even though we need the patent bar to certainly practice in front of the patent office, but we have some litigators here that do a great job helping us out, that are not patent attorneys, but they help out with the aspects of the litigations that we have.
Speaker 1:Yeah, both on the patent side, like Jessica Copeland, or the trademark side, liza Magli. They have the litigation experience that way, that's right, and you guys come in with the substantive IP law. Yep, all right, so you started talking about this. But why are these intellectual property protections so important? Why is it so important if you have something to make sure you get a patent, a copyright or a trademark?
Speaker 2:Well, you could you know, as an example, if we have companies that we work with that would possibly like to acquire another company or assets that the other company may have, the IP attorney comes in and will do a valuation of the patents that they have. Okay, what are these patents? Are they still live? What do they cover, what does the prior art really look like, what are the competitors out there and what's the scope of their patents, meaning, how broad is it and how easily attackable is it? Just to give the purchaser a valuation, like I said, of the intellectual property asset, so they know, okay, is this worth going into this deal with this other company? And what are we really getting here? Again, 90% of the value of the S&P 500 are these intangible assets. So doing a valuation is obviously very important to a potential purchaser and a seller.
Speaker 1:Yeah, that's why IP here is part of our business department, even though there are litigation aspects, because it's so important to all of those other pieces.
Speaker 2:Correct, that's right. Great, great point.
Speaker 1:All right. So IP is often a large part of the assets. It can be anything right. It can be a patent on a device, or the name or the logo, but there's more to IP law than that, and I know that a couple of weeks ago. Well, bond is a very successful Tuesday webinar series for people who might want to tune in and watch those episodes, and you recently spoke about trade dress as part of the webinar. Do you want to give us sort of a highlight reel of what trade dress is?
Speaker 2:Sure For that webinar. I put this presentation together because I really wanted to let companies know that they may be time barred, for example, from filing a patent, and we could certainly do something on patents alone for another webinar. Like you said, there's a lot that goes into this, but just for now you could be time barred from filing a patent or the patent could be expired. So what other types of protection can you get for products? And trade dress could be one of them, and it can protect the non-functional look and feel of a product's design shape. Protect the non-functional look and feel of a product's design shape or 3D configuration. So think of the shape of a Coke bottle, for example, and it's kind of a similar analysis to design patents.
Speaker 2:Certainly, the Coke bottle is going to be functional, but it's not purely functional. It could be any shape. It could be the shape, again, of someone's face, or it could be the shape of a football or a basketball. It could be any shape and perform the same function, but that shape is ornamental and it can be covered by trade dress. The only difference is with patents it has to be novel and non-obvious. With trade dress, in order to get protection, it has to within the mind of a consumer. It has to within the mind of a consumer, it has to indicate to them a particular manufacturer or source. So you have to sell for a while, you have to market for a while, the particular trade dress to get to the consumer and get them to recognize that particular shape as emanating from a particular source, like of course, the Coke bottle no-transcript Right.
Speaker 1:So if anybody wants the full version of that, thank you. They can listen to the Tuesday webinar, which is on our website. But those are all important pieces that people may not know about different ways that they can protect themselves.
Speaker 2:So I guess the question then is if I'm a business can be time barred, especially with any public disclosure of your idea, can start the clock ticking in the United States and you could potentially be barred from filing anywhere outside the United States if you publicly disclose your idea and your potentially patentable invention. So call your lawyer. Call your lawyer, yes.
Speaker 1:All right, so well. I think you might need to come back and talk about patent infringement or cease and desist orders or all the other phrases I've heard you say all these years. I mean, I suppose you could even come back and talk about Markman hearings if you'd really like to. What do you think? That would be my absolute pleasure. I would love to do that. I suppose you could even come back and talk about Markman hearings.
Speaker 2:if you'd really like to, what do you think? That would be my absolute pleasure. I would love to do that Well.
Speaker 1:I have to say on behalf of producer Kate and myself, Fred, thank you for joining us today on Legally Bond and actually being our first patent attorney guest on the podcast.
Speaker 2:I am honored. Thank you so much.
Speaker 1:Of course and no one can claim favoritism, because we've celebrated our fourth anniversary and you're on the podcast for the first time. But seriously, I really do hope that you'll come back. No problem Will do this episode of Legally Bond. If you're listening and have any questions for me, want to hear from someone at the firm or have a suggestion for a future topic, please email us at legallybond at bskcom. Also, don't forget to rate, review and subscribe to Legally Bond wherever podcasts are downloaded. Until our next talk, be well.
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