2038 – Building a Strong Intellectual Property Portfolio with Hoffman & Baron, LLP’s Daniel Scola

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1:05With us right now, it's Daniel Scola. Daniel, you are the managing partner of Hoffman & Barron LLP. Your website is hbiplaw.com. To our friend that's listening to us, just click around in your podcast app and you'll find a direct link that we have, Daniel, to your website. Thank you so much for joining us. It's nice to be here, Josh. Thanks for having me. So HBIPlaw.com, Hoffman and Barron, looks like you do a lot of work around protecting IP. Yes, that's exactly right. Yep. And essentially, that boils down to protecting people's ideas in the form of patents, trademarks, and copyrights. You know, what could be more important than people's ideas, right?

1:53Because they lead to everything. I mean, our whole society is built on people's ideas and so much IP is out there that people don't even think about. But it really fuels businesses and it protects, you know, creates barriers to entry. So you have limited monopolies for the period of time that the IP lasts. And that gives you a really quite a nice advance in your business to keep competitors out for that period of time. So it's a very important asset to have. Yeah. So when we think about like, let's say someone is at, you know, and I think that there are probably depending on what you do, I think that there's going to be some some big considerations or sensitivities to protecting your intellectual property.

2:38And then I think there are a lot of other people that probably don't think about the fact that they have, you know, processes or systems or something that they've really developed that they might say, Daniel, and I'd love your take on this. They might say, well, listen, we're just in a free market. Nothing is really truly protectable. So I just have to keep on innovating and being the best in the world. And, you know, if anyone does copy my idea, well, there's nothing really I can do. It's not worth it to enforce that or fight that. So therefore, maybe they don't prioritize kind of reviewing to what extent they should be protecting some of those patentable or protectable trade secrets.

3:27Well, the trend these days is going really towards putting up the barriers to entry and money, throwing money at stuff and trying to be the leader in the market. That's not ultimately usually the best way to do it because there's so much competition coming from abroad. You know, you'll have industries in some of the foreign countries that can do it much cheaper. The IP definitely creates barriers. It creates certainties for investors. These are rights that you can enforce. And we do it all the time. And that's part of my business. We procure it, you know, the IP, and then we enforce it for people.

4:06And I can tell you that there's many companies that I've taken from, you know, just a single inventor to public companies. And how does that happen? They have a good product or process, but they have excellent IP protecting that. So, you know, the larger companies in the midsize companies tend to respect your IP portfolio. If they look at your IP and they say, look, these are assets that can be sold, they can be licensed, they're property rights. And they tend to value your company based on how good your products are and how good they're protected. And I know people say, well, I'm not sure if I can really enforce it.

4:46Look, these uncertainties are existing everywhere. I mean, you can say that to almost anything you do. Oh, but what if I would rather have a fence around my property than no fence? And if you want to keep others out, put a fence up. I mean, can people climb over the fence? Yeah. I mean, it's possible. Sure. You got a big enough ladder if you're if you're bold enough. But, you know, I think the most around the world, most industries respect the patents and trademarks and general IP of others. That's what they do. It's interesting. It's kind of like, you know, you talk about door locks, door locks, keep honest people honest.

5:30Yeah, I mean, it's really, I mean, and look, there are certain steps that you really should take if you've got good ideas. You shouldn't sit on them. How many times have you heard someone say, even people in my family, it was like, you know, they'll walk by some product on the, you know, in the market, or they'll go see something on TV and they'll say, I thought of that 10 years ago. And here's the difference. 10 years ago, your idea was just as good as that idea is now, but you didn't do anything about it. And someone decided to do something about it. They believed in their idea. I think people sometimes don't believe in their ideas enough and they think, well, you know, I really don't know what to do.

6:13It's not that hard. It just takes effort and it takes, you know, your belief and desire to go from A to B. If you can do that, most ideas you can find you can protect somehow. Yeah. Hey, Daniel, you were mentioning something about licensing. And I'm curious if you've, just because this has been coming up in our own business, is this idea of, you know, listen, you got something pretty great here. I know that this has been your model up to this point, but you have a new play here where you can take what you've developed and you can create a whole new distribution platform a la licensing. and on that path, yeah, you're going to want to get things buttoned up a little bit if you're going to put this into the market and truly, you know, kind of broadly distribute it.

7:02Obviously, you know, you want to keep integrity there. And then of course, you know, if you're truly making it available like that, again, you want to avoid the copycats out there and certainly maintain your intellectual property strength there. But have you, can you think of any maybe client that you've worked with that that's kind of been the opportunity where they're saying, you know, we want to take this show on the road. And because of this new foray into the market, we absolutely, Daniel, recognize that this is an appropriate time to have a conversation with you about protecting our intellectual property.

7:38Yeah, absolutely. Look, I have clients who sometimes don't have the wherewithal, the money, even the knowledge base to actually go into manufacturing and production of something that they've come up with, right? So for say for an invention, it could be a medical device, for example. I do a lot of medical devices. And one approach they have is to get the intellectual property. They can get it constructively. You don't actually have to make the actual product itself. You don't have to reduce it to an actual model. You can do it on paper. as long as it's well done on paper, file, get your patent on file, and then you can license that.

8:21It's called a constructive reduction to practice. And they follow the model of licensing what their IP is. And we get it on file and let the licensee do the manufacturing, not the licensor. That's one model that has worked very well. I mean, I had this one series of doctors come to me. um they were you know they were researchers out of uh san diego um and uh you know they had this great idea about how to cure afib and we we went to town on the ip i mean we really created you know hundreds of patents that dealt with their ip and they were able to sell that ip to avid for 250 plus million dollars.

9:10Wow. I mean, it happens. These things do happen. You know, it's not the only, you know, example I give you. I could give you many. But I think the key that you have to understand in the beginning is that if you really want to create an asset, you need to take certain steps. You need to protect it. You need to get a non-disclosure agreements are important. Don't I have this little little saying I like to say, you have to sell

9:39to sell, but you must protect to collect. So if you're going to make any money on it, you've got to have it protected. So before you go out and start to tell about it and sell it, get it protected because the way the patent law works is that once you put it in the public domain, it's gone. We went to a first-to-file system some years ago. So this is the way the rest of the world follows the same rule. So people will say, well, I had this great idea, and I went to talk to six manufacturers about it, and I went to a marketing person, and I told them all about it, and everyone's excited. And I said, well, that was not the best thing to do first.

10:19If you don't have nondisclosure agreements in place, you could have lost that entire thing. And the chances are that they just didn't understand they had to do that. They thought, well, I better go talk to people. You should get things under a non-disclosure agreement before you go do that. I mean, it's a very basic thing. And I would be careful about that. I would be very precise. And then go talk about it. But get your IP on file early because then you have more certainty as to what's going to potentially be the asset. Once it's filed, you know what you have. Investors love that. I can tell you that so many of the young people have this one really interesting doctor that came to me.

11:10And he his whole idea was, you know, I have burn patients and I have patients who their wounds won't. You know, they have, you know, some some sort of disorder. A lot of it is diabetic related and they can't, you know, their wounds won't heal. Well, he came up with a process that not only is it healing, it's done at the bedside and it's great for insurance and all that kind of stuff. And I said to him, we need to get this on file before you go out and talk to him. And how now people are clamoring to get at this. And I'm talking large companies with not tens of millions, but more, because the idea is so good and it's protected.

11:47It's we've got a really nice fence around it. And it's sort of a concentric circle type of fence. You know, you get some a little fence here and then you make a little bigger fence around that fence and a little bigger fence around that fence. So, you know, there's a whole bunch of fences to get over before you you get to the. So, you know, that's that's sort of the strategy. That's kind of a nesting type of strategy. But I mean, you know, look, the trend is going to share more and more information and that creates more risks as to the ideas being stolen. Better to, you know, mark your place with IP and get it filed before you do that.

12:26Yeah. So I'm on your website right now and that's HBIP, well, HBIPlaw.com. I'll say it like that. Yeah. HB, which stands for Hoffman and Barron, HBIPlaw.com. And so under technologies, and it looks obviously doing a lot of work, pharmaceutical, biotech, chemical, mechanical, medical devices, electrical and telecommunications, those ones I think we think of all the time, but business methods. Oh, yeah, absolutely. Actually, that's actually a bigger trend right now, especially when you have the ability to do a lot of software and integrate software into all kinds of procedures. Now, it's harder to get a business method patent unless you position it well up front.

13:15There's guidelines you need to follow. The patent office has put out their guidelines. There's a lot of case law that you need to be aware of. But I've had a lot of success with people doing apps on all kinds of apps. And if you if you have a really nice app with good IP protection, I'll tell you what, that's that's golden for your business. If you can really mark, you know, corner that, that way of doing it. And it's been quite successful. It's, it's a little more difficult. So it requires a little more, you know, good communication between the attorney and the client and working with the software engineer and making sure you understand what's really happening there.

13:57You're not, you're not protecting code, by the way, when you do that sort of thing, it's not that it's, it's steps. There's an algorithm somewhere built in there. And if you have an algorithm, you don't even have to disclose the full algorithm, you know, in terms of like writing it straight out in math. But what creates what's created by the algorithm, that's how you do it. I mean, it's it's a really it's a fun thing to do because there's so many different business methods that are, you know, are out there now. So it's a very fertile area. Yeah, yeah. Yeah. What does the process, like if someone's not hired an IP, intellectual property attorney in the past, what is that process usually like?

14:43Well, you know, if you have an idea and you've done some research on it and you think it's pretty novel, there's really three things we have to show from a patent standpoint, from a legal standpoint, to get something allowed at the patent office. It has to be useful. Well, almost everything has a use. So that's a real, you know, very low, a low hurdle. The next one has to be novel, which means it hasn't been done exactly before. And that's usually pretty easy to overcome, too. And the third one, that it can't be obvious in view of what's been out there before. That's the more difficult thing. That's where you have to position it well, because the patent office will look at anything it can find and say, I have A, I have B.

15:30All you've done is combine A and B in a rather obvious way. And if you can, you have to anticipate that as being what they're going to come back with. And if you can do that and position it well, you'll get a pad. Yeah. So that's kind of what happens. Yeah. Yeah. And I know that you've got some resources. I certainly, you've created some great content around protecting intellectual property. But do you mind maybe just sharing to our friend that's been listening to us maybe some other ways that they can kind of get to know the work that you and your firm do and like who you work with? And certainly if there's anything that they can kind of dive into maybe prior to an initial call, what you'd recommend?

16:20Sure. Yeah. You know, one thing you could do is you could look, go to the United States Patent Office website and do a search using Hoffman Barron's name. And you'll see a whole series of patents that have come up that we have been responsible for. we drafted, filed, prosecuted. We've also done a lot of due diligence on sales of companies and what goes on when you're trying to evaluate how much something is worth. Companies have these huge portfolios or small portfolios, and what is that really worth in the marketplace? Well, I can tell you that there's a number of companies that have gone public.

17:09You could look up a Questive, you know, that's a pharmaceutical company that I took from a one-person idea, and that's a public company. um you know abbott bought this company that was just two people topera they bought that and spent a huge amount of money on it uh back in around 2015 or 16 i think it was um that was a medical device uh company uh you know so there's you you could just look at some of the uh work on the patent office website, or you can look in the blog and see some articles. I'll tell you, here's an interesting story, though. This is a perfect example. I have a client who is about to give a presentation, and he was not familiar with patents or trademarks, but he's a doctor with dry eyes.

18:08Now, I prefer to work with small companies because I can be on the ground level. I can put together the strategy of creating the portfolio because you can create your own barriers to yourself if you're not careful, you know, because everything that publishes now becomes prior art, which you have to get over to get the next patent. So so sort of working with the researchers to plan that out. So this this this doctor is a terrific he's a leader in dry eyes, you know, country leader, really very, very high visibility. And he came to me and he said, I'm very excited. I'm giving a presentation tomorrow and, you know, I'd like to show it to you.

18:49And I said, yeah, no, I'm glad you told me. Let me see it. And I said, you can't do it. You have to take these slides out. These slides, we have not procured any protection for you on these slides. You give that presentation, you're giving the show away. You are. And, you know, he took them out and it was the next day. So thankfully, and he called me just because he was excited. He didn't realize. So I was very grateful for that because, you know, it's important that you get good communication with your clients in time. Yeah, your website, hbiplaw.com, to our friend Daniel that's been listening to our conversation.

19:34And hey, they've got an idea. They definitely want to explore if this makes sense to get things protected, maybe for their next big play. Or maybe they've just recognized that they've had some risk that's been out there. It's in their threat box. Someone could come along and completely steal their concept, and then that would be devastating to shareholders. So, Daniel, next steps for someone who's pretty serious about having a conversation. Well, I mean, it's best to contact, you know, attorneys early enough. Early on, I say get your IP framework in place early. You know, cost is always an issue with people.

20:14It's like the chicken and egg thing. But take it in stages. You know, take it in small bites and do what you can afford, but do something. And and get have a good nondisclosure agreement in place with anybody that you're talking to. Don't sit on things. That's people sit on things. That's the number one and two mistakes are they disclose things without confidentiality and they sit on things because of the either the fear or the lack of money. Find money somewhere. Someone else is going to come up with that idea and you will be very sorry that you didn't act on it. Daniel Scola, managing partner at Hoffman and Barron LLP, your website, hbiplaw.com.

21:01Daniel, thank you so much for the conversation. Thanks, Josh. Pleasure to be here.

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