Patenting IoT means knowing your intellectual property rights. JiNan Glasgow George, Patent Attorney at Neo IP, joins the IoT For All Podcast to discuss intellectual property rights in IoT and tech. She covers intellectual property in early stage companies, the benefits of intellectual property protection, when to start a patent application, first-to-file versus first-to-use, how hard it is to get a patent, how having intellectual property boosts a company’s valuation, intellectual property in the Metaverse, who owns AI-generated content, and how IoT companies can attract investors.
About JiNan
JiNan Glasgow George has built her career from engineering to patent law and investment by transforming ideas into assets and connecting innovators to the resources they need to impact society for good. She believes that everyone has the power to create – and her work globally has focused on creating positive impact through intellectual property (IP) rights and data. A Patent Attorney and former Patent Examiner with the US Patent & Trademark Office, JiNan is an IP attorney with experience across a wide range of technology fields, serving clients in the US and internationally.
JiNan is also the CEO and co-founder of Patent Forecast, a business intelligence SaaS company that provides insights for investors and executives, serial entrepreneurs, and innovators – giving vision ahead of market data using patent data and AI.
Interested in connecting with JiNan? Reach out on LinkedIn!
About Neo IP
Neo IP is an Intellectual Property law firm that helps innovators, inventors, and entrepreneurs transform their ideas to reality and supports them with resources they need—investments, people, and connections. Neo IP does extensive work with investors and founders in the IoT space and related topics including digital twins.
Key Questions and Topics from this Episode:
(00:56) Introduction to JiNan and Neo IP
(01:50) Intellectual property in early stage companies
(04:22) The benefits of intellectual property protection
(06:37) When to start a patent application
(07:22) First-to-file versus first-to-use
(08:32) How hard is it to get a patent?
(10:53) How having intellectual property boosts valuation
(12:52) Intellectual property in the metaverse
(14:58) AI generated content ownership
(18:06) How can IoT companies attract investors?
(20:06) What are you most excited about in 2H 2023?
(21:34) 2023 Eclipse IP Futures Conference
(22:38) Learn more and follow up
Transcript:
– [Ryan] Hello everyone and welcome to another episode of the IoT For All Podcast. I’m Ryan Chacon, and on today’s episode, you’re going to learn a lot about intellectual property law, intellectual property in general as it relates to the IoT space, as it relates to the metaverse, who owns IP in the metaverse, I don’t know.
We’re gonna figure that out, and we’re also gonna be talking about why companies should be thinking about intellectual property protection when it comes to IoT solutions, technologies, products, all that kind of good stuff. And with me today is JiNan Glasgow George, the founder and CEO of Neo IP. They are an intellectual property law firm.
Before we get into the episode, we would truly appreciate if you would give this video a thumbs up, subscribe to our channel if you haven’t done so already, and hit that bell icon, so you get the latest episodes as soon as they are out. But other than that, let’s get on to the episode.
Welcome to the IoT For All Podcast. Thanks for being here this week.
– [JiNan] Thank you. It’s a pleasure. Thanks for having me.
– [Ryan] Absolutely. I’m excited to have you. This is a topic and kind of area of conversation that we have not had the opportunity to speak a lot about. So I’m excited to have someone with your experience on the show but- and I guess to dive into that experience, I’d love it if you could just give a quick introduction about yourself to our audience.
– [JiNan] Yeah, sure thing. I’m JiNan Glasgow George and recovered engineer. First career in new product development R&D, and then I migrated into patent law. I’ve been practicing intellectual property law in North Carolina and internationally for almost 24 years. Mostly focused on creating assets for clients.
I also am CEO and founder of software companies for patent research and analytics, including Neo Patents, and the current one is called Patent Forecast, like weather, but for patents, what’s going on, and I also do venture capital and angel investing. A lot in tech but tech and science agnostic.
– [Ryan] Very cool. Very cool. So, I know we wanted to talk about a lot of different things, and one of those main areas is around IP and as it relates to IoT companies, IoT technologies, things like that that you’re seeing. So, let’s kick it off by having you just talk a little bit about what you’re seeing with IP filings and in early stage or even just general IoT companies across the board related to different technologies like digital twins, edge computing, things like that that connect to the IoT space. What you’re seeing, what trends you’re seeing, that kind of thing.
– [JiNan] Yeah, of course. It’s a happening area. I’m always amazed, a lot of early stage companies, which are fast movers, sometimes I get the comment that like, we don’t need IP, we don’t need patents, everything is open source, but if you think about open source, it’s actually solidly built on the foundation of intellectual property rights.
It’s the copyrights assignment and license agreements that makes everybody contribute and play by the open source rules depending on the agreement that you have. So I want to disavow anyone of the thought that also software is not patentable. A lot of IoT inventions and innovations that we’re seeing today do fall under patented applications.
And it’s not just of course in things that are small B2C, but a lot in B2B. Like we are seeing, of course, in automotive and transportation, in areas of inventory. It’s pretty impressive, but with all of it, what we’re seeing is an increase in filings from huge companies like you would imagine, Red Hat, SaaS, Microsoft, IBM, Google, et cetera, but down to smaller companies who are active. So in your audience, if there are any early stage companies, don’t think that patents don’t apply to you because of course they do. If the big companies are filing them, it means they value them as assets. So we’re seeing across this space, digital twinning is a huge area of patent filing in the last couple of years in particular, but last five for sure.
Last 10. Super rapid growth, not just in the US but globally. We’re seeing a lot of applications for digital twinning, of course in the metaverse, but also in real life, like the Neon City in Saudi that’s completely digital twin already. So those are a couple quick talking points to start.
– [Ryan] Very cool. And for our audience who may not be as familiar with the role intellectual property protection has in any industry in general, can you talk about just from in the IoT space what the benefits are for a company to be exploring, protecting IP, what- how does this help with maybe de-risking investments?
What- how does it help with the valuation of a company potentially? Just those kinds of things I think are important for people to understand.
– [JiNan] Sure. That’s a great question. So any company obviously develops some value with the money that’s invested, whether it’s private or public capital, you expect a return on that investment. Intellectual property is just another kind of asset to invest in. Why? What does it do for you? Number one, it gives you the right to keep others out of your space.
So intellectual property assets are rights to exclude. If you could have a limited monopoly in the area of your business, wouldn’t you want that? Of course you would. And so if you think about IP rights as giving you that limited monopoly, how would you leverage it? The number one way to get a return on your investment in IP assets for IoT, for software, for everything is keeping other competitors out of your space.
You have to play by the rules, of course, but if you do, and if you let it be informed by data, then you can have a big multiplier effect on your business. So that’s beyond your revenue, your profit, it’s beyond your number of users, it’s beyond the data assets you have. In fact, data assets are IP assets, right?
You have to think about them all in advance. So once you’ve been offering for sale or publicly using, it’s too late for applying for patents. With regard to data, you need to have contractual rights to the data. Data is often governed, not just by contracts, but of course with consumer data.
There’s privacy, other regulations, there’s a lot of healthcare related apps for IoT devices and all of that, you have to navigate both the legal contracts as well as the regulations. It’s a little complicated.
– [Ryan] You mentioned something I wanted to ask you a little further on was about the- when to apply for or file for protection. What- at what stage should this be actively pursued and is there a point where it is too late to go back and retroactively apply?
– [JiNan] Yeah, I hate to give you the lawyer answer. It depends, but it depends on the kind of IP protection you’re going for. If you’re going for trademarks- and well for anything generally, sooner is better. It’s always a race to be filing because that’s when the public has notice. Priority filing dates are really important. For trademarks, you can begin using your mark and then go after it later, right? You can file it later.
– [Ryan] I’ve heard like first-to-file versus first-to-use kinds of things in the past. Is that, how does that kind of- what is the- is it, is one, I guess is which one is applies?
– [JiNan] Yeah. A lot of that confusion’s around patents. So the US patent system has always been exceptional in the world, but there’s been a lot of harmonization, a lot of standardizing in the last 10 years or so. And so now in the US, it is the first inventor to file, which keeps it as a race to filing, right?
So there’s still this rush to file, not only who used it first or who invented it first. If someone is using it ahead of your filing, you’re gonna be blocked. Public use ends up being a block for patents. For trademarks, you want to be getting ahead of competition for filing, but you can file after you use it.
Copyrights, you have those in common law from the moment you write the code, from the moment you create it. But you can contractually pass those on. And this is why open source has its own sphere of operation. Yeah.
– [Ryan] And how hard is it for companies to get protection? I know there’s an investment involved. It’s obviously a process that you go through, so I’m sure that- there’s companies out there who are very hesitant to go down the path and invest the time and money into something they may not get protected or be approved at the end of the day.
How- so what does that look like as far- what do you tell people when they come to you and say, Hey, is my idea or is my technology, is my offering something that can be protected or maybe not?
– [JiNan] Yeah, sure. The number one question I get on inventions, is it protectable? Is it? Can we get it? And the- I always have to give that lawyer answer again, it depends. And it depends on data. It’s whoever came before you. This is what the patent office in the US and around the world, they do is compare to whatever is published or public use ahead of you.
And so the way that you de-risk that choice about should I file for a patent or not, is it likely to be successful or not, is based on data. So we use our Patent Forecast software to judge that we want to see what’s the patent office likely to do before they do it, right? And that’s public information.
You can Google patent, you can go to uspto.gov, search it up for yourself. But most of the time, the mistake that companies make is not doing that research in advance. So they just blindly file and it’s wildcard, are we gonna get this or not? The way an examiner judges it is on this data, and so that’s the way you should do it, right?
Check and see what’s there and then contrast and compare. Differentiate. Differentiate from prior art.
– [Ryan] Fantastic. I’ve gone through the patent and trademark process a few times in the past and know others who have and a lot of the advice you are giving is similar to what I’ve heard, so I definitely recommend our audience to really listen closely here because it’s gonna help save you tons of headache as you go down the process.
– [JiNan] Not just headaches, but time, energy, and money. It’s expensive. Yeah. So if you don’t get it right at the beginning, you could go round and round and round for nine, 10 years and not get anything. Don’t do that. Check it up front.
– [Ryan] Agreed. Prior- I wanted to shift in a second to talking about the metaverse that you mentioned earlier, AI as well. But before we do go into that, what advice do you have for early stage companies in the IoT space who are thinking about IP. Why should they really care and focus on that?
And just to round out this part of the conversation.
– [JiNan] I guess the first question is why should you care? You should care because you plan to be acquired in the future, right? And so who’s gonna acquire you? A larger company. What are they doing? Are they filing patents? Oh, you bet they are. So check and see what they’re doing, right? We often contrast and compare for clients, not just this prior art I talked about a second ago, but what are these companies that you think are most likely to acquire you?
What do they do? Google, Amazon, Apple, Facebook all the big guys file quite a lot of patents, Microsoft. So the big mistake I see is that companies just say, Well, we don’t need to file patents. Software is impatentable. That’s a huge mistake. Don’t do it. The second thing is inventory. What do you have?
What are your IP assets? It doesn’t have to only be patents. Trade secrets could be appropriate, but only if you can keep it secret. Which means you have to have confidentiality agreements and take reasonable steps to keep it secret as a minimum. But this inventory thing, one of the things that I know is software experts in particular, the experts who are really cutting edge on IoT and other areas, they tend to discount and be like, Ugh, that’s nothing.
That was so easy for me to solve. That’s not the standard for IP. The standard is not expert. It is differentiated from ordinary skilled art, what’s in the public domain. So inventory and let someone who’s a professional help you judge it. Get a strategy, don’t file everything. File strategically in alignment with your business and what these big competitors are doing who may ultimately be your acquirer.
It may motivate acquisition.
– [Ryan] I wanted to change topics a little bit to something you mentioned early in our conversation, which was the Metaverse. It’s a very interesting space we’ve been following for quite a while now. When it comes to IP, how does that work in that virtual world? Who owns IP?
Like how is that even- I mean, this is something that’s relatively new, and I imagine it’s been a very interesting thing to follow in the legal world.
– [JiNan] Yeah, it is. It can make your brain hurt a little bit, right? Like, where is the Metaverse? I had a conversation earlier today that people were talking about patented trademark and copyrights in outer space, and how do you sue and subpoena? We’re not there yet, but it’s coming. Think of the metaverse like this.
You have to be participating in the IP systems in the real world to have rights in the virtual. And one of the big cases, I think that’s maybe really interesting. People have of course heard of NFTs on the show, the non-fungible tokens. We think about Hermés. For ladies out there in IoT who like that bag from Hermés, the Birkin, right? Well, Hermés’s Birkin bag, over a billion dollars of real products sold in the us. Obviously trademark, registered trade dress, et cetera. But the trademark is very strong in the bag. There is a gentleman named Sonny Estival, I think, aka Mason Rothschild, who decided he was gonna offer the Meta Birkin NFTs in the Metaverse, over $1 million dollars traded, right? Well, what happened? He argued it’s art. It’s really fair use except Hermés disagreed. Trademark dilution, cyber squatting. And they won. So I think that it’s important to think about who is the reasonable customer in the metaverse. If they’re going to be confused about the mark that you want to use versus someone in the real world, don’t do it.
You’ll pay later, right? Litigation’s expensive. You don’t want it. It will litigate in the real world about the virtual, right?
– [Ryan] And when it comes to- another interesting topic is around the generative AI space, ChatGPT, DALL·E, all these other tools out there now that you’re creating art from it, images, graphics, content. So how have you all in the world you live in been thinking about that or what have you seen happen when it comes to who owns the content created by these generative AI tools?
– [JiNan] It’s so fascinating to think about generative AI and especially in IoT. It’s analytics, it’s predictive about the data that you have, right? But it’s interesting on the legal side, how this has changed very recently and rapidly because it’s just going like crazy. OpenAI, who owns the ChatGPT, obviously they’re dealing with Microsoft now. They had a Terms and Conditions. Remember contract applies here. It’s just like the open source in that way. So they had an agreement through February or as of February 21st of 2023. Their rule said to help OpenAI provide and maintain the services to you, you agree and instruct that they can use your content to develop and improve the services.
That means you don’t have any privacy rights with the- ChatGPT or OpenAI under that rule. And so you think your prompts are private? No. They can use it. The output private, no. You have certainly the ability to use it. They’re not claiming any IP rights, but they’re certainly claiming the ability to use it.
That all changed March 14th. And I think the current terms as of this podcast still says that we do not use your content to provide or receive anything from our API. So that’s a big walk back, right? There are privacy concerns in California and other states, of course outside the US, the UK, Europe, et cetera.
Privacy in consumer is a big, big deal. But you- generally speaking, the output from the AI generated content, whether it’s text or visuals, it is not gonna be IP protectable. You can use it, but there’s not, you can’t register copyrights in it if it’s AI generated. There’s a lot of question about whether or not you can use any of it for other forms of IP, but so general rule, confidentiality, privacy, don’t expect it.
Consider it as non-data security. Don’t think about it. Right of publicity, maybe there’s some issue there, but it’s interesting whether or not they can even use everything you have to train the models. If you agree to it, it’s out there. So be watchful over that. OpenAI, ChatGPT, and any generative AI, there’s- that’s not gonna be where your IP rights lie, but just think of it as wild, wild west, it’s a free for all.
– [Ryan] Yeah, I was, I’ve been very curious about that. Like we’ve been talking about it internally, just about what’s gonna happen when people are using these tools to create graphics and art. Where’s the protection? If there is any protection. So yeah, I don’t know, it’s super interesting.
So let me ask you, this is unrelated to what we’ve talked about. You talked about your investment experience. What do you look for when you invest, and especially if you can relate it to the IoT space, that would be even better. But just maybe generally speaking in the tech world, what kind of stuff stands out to you?
Or I guess, what should companies be thinking about to become, to be investible, I guess is what I should say? I’d love to hear that.
– [JiNan] Yeah, sure. So for me personally, like I am always looking at early stage companies, innovation heavy companies. We always, just as any investor, want to know about the management team, like their experience, their track record. I think we’re always looking at some key areas. I invest a little bit more in tech than any other area, including software.
But I think we’re often looking at IP or intellectual property rights because you can keep others out and because it has a multiplier effect on the business valuation even early on. I think, and again, it can motivate the exit, that’s how I tend to look at things. My thesis is run by our Patent Forecast software.
I want all the context and data around it, right? Give me data, help me make a decision. So that’s a lot about how I look at my own investments. When I’m looking at what’s, what are the trends and what helps in IoT, I think the digitization, the electrification, obviously autonomous things, autonomous vehicles in particular, healthcare applications. I think there’s going to be more sensors everywhere.
And so that drives a little bit of trend outside of the cloud computing into the hybrid cloud and edge computing. So definitely look at those areas where there is compute storage. Cybersecurity I think is another area that we will see every investor having a little appetite for from now until forever.
So they do apply to IoT, but I think in particular, those are trends to be watchful for for investment.
– [Ryan] Absolutely. Fantastic. So let me ask, one of the question I wanted to ask you before we wrap up here is, what are you most excited about as we head into the second half of, or we’re in the Q2, but now as we get into the second half of 2023 into the future, just what stands out to you the most?
– [JiNan] I think, one of the things I have to mention, if I can drop it, is our own Eclipse IP Futures Conference, this is our 10th year. So we’re having a big anniversary this year, and our theme is beyond extraordinary. So we’re focused on AI, data valuation, also longevity in healthcare, and how tech and innovation is supporting that.
But we’re gonna have some pretty amazing speakers there, a lot of investors. That’s held in the Raleigh, North Carolina area in the Fall. So I’m pretty excited about that. But also I was really inspired by a recent trip to Dubai and to Riyadh in the Middle East. The growth that’s happening there in tech and IoT, I mentioned the Neon City, it’s pretty incredible. And the- I mean just the economic engine that’s there, the youthfulness there and how international things are, and I think IoT is a global opportunity. The investment, the tech innovation, the solutions applied anywhere, I think are, at the moment, that hockey stick that all investors are looking for, so go for it, IoTers.
– [Ryan] Sounds good. And before I let you go here, I know you have, I guess it’s a conference coming up, the Neo IP Eclipse Future Conference. What is that? I’d love to hear a little bit more for our audience.
– [JiNan] Yeah, so we’ve always brought together, this is what I just mentioned, we’ve always brought together investors, entrepreneurs, business leaders, executives, and even students really to have an intimate but really inspired and extraordinary bit of content for collaboration, like creativity, creative courage, and collaboration, and really helping people connect with each other.
So the Eclipse Conference has been 10 years happening in the Triangle, but attracting people from all over the world. It is invitation only. So if you have viewers who wanna reach out for that to us, feel free to do it at info@neoipassets.com. Happy to entertain requests to be invited.
– [Ryan] Fantastic. Thank you so much for your time. For our audience who wants to learn more about the topics we talked about today, connect with you, talk with your company, what’s the best way they can reach out, learn more, engage after they hear this?
– [JiNan] Sure. LinkedIn is great. That’s probably the easiest way to reach out to me. JiNan Glasgow George. My law firm website I just mentioned. You can reach out to us at info@neo n e o ipassets.com and our software is patentforecast.com. But LinkedIn’s probably a good place to start.
– [Ryan] Fantastic. Thank you so much for your time. Really appreciate it. Excited to get this out to our audience because this is a topic like I said at the beginning, we haven’t covered a lot of, but I think it’s super valuable to be able to provide these kind of insights and expertise to our audience.
So thank you for your time.
– [JiNan] You’re welcome. Lot of change happening. It was fun. Thanks.
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