Leadership In Law Podcast

S02E66 Sciences & Intellectual Property with Daniel Scola, Jr.

• Marilyn Jenkins • Season 2 • Episode 66

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A scientist's stolen notebook sparked Dan Scola's passion for intellectual property law. Now a managing partner at Hoffman Baron LLP, Dan reveals the essential yet often misunderstood world of IP protection on this episode of Leadership in Law.

Dan explains that inventors must balance sharing their ideas to sell them with protecting those ideas to profit from them. Using real estate analogies, he clarifies how patents set boundaries for innovations and highlights the key differences between patents, trademarks, and copyrights. He also emphasizes the importance of timing in intellectual property strategy, using the recent expiration of Disney’s original Mickey Mouse copyright as an example. 

Dan emphasizes that for startups, building a strategic intellectual property (IP) portfolio is essential to increasing company valuation. He outlines how to identify inventions, differentiate them from existing technologies, and create protective “thickets” around key innovations. This strategy demands a deep understanding of both the scientific landscape and legal processes, especially as AI adds new layers of complexity to IP rights. 

The conversation weaves through personal stories, cautionary tales about digital-age confidentiality, and practical tips for navigating the world of intellectual property. Whether you're building a tech startup, creating content, or just curious about how ideas are legally protected, this episode delivers valuable insights on turning innovation into secure, high-value assets. 

Reach Dan here:

Twitter: @hbiplaw
Facebook: @Hoffmann & Baron, LLP
Linkedin: @Hoffmann & Baron, LLP

This episode is sponsored by Wealthy Woman Lawyer® 

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Speaker 1:

Welcome to the Leadership in Law podcast with host Marilyn Jenkins. Cut through the noise, get actionable insights and inspiring stories delivered straight to your ears your ultimate podcast for navigating the ever-changing world of law firm ownership. In each episode, we dive deep into the critical topics that matter most to you, from unlocking explosive growth to building a thriving team. We connect you with successful firm leaders and industry experts who share their proven strategies and hard-won wisdom. Just starting your journey as a law firm owner, the Leadership in Law podcast is here to equip you with the knowledge and tools you need to build a successful and fulfilling legal practice.

Speaker 2:

Welcome to another episode of the Leadership in Law podcast. I'm your host, marilyn Jenkins. Please join me in welcoming my guest, dan Scola, to the show today. Dan is the managing partner of Hoffman Barron LLP and also manages the chemical, pharmaceutical, biochemical and medical device practice group in the New Jersey office. He has extensive experience in polymers, pharmaceuticals and medical devices. He also has vast proficiency in obtaining protection for software-related inventions. He specializes in building IP portfolios and designing strategies to protect and enhance company value. He also practices extensively in post-grant proceedings at the USPTO and has argued post-grant proceedings at the appellate level before the CAFC. Prior to earning his law degree, scola was a chemist with a particular experience in material science, including polymers, adhesives, biodegradable approaches to material science and engineering. He was a scientist at Pratt Whitney Division of United Technologies. I'm excited to have him here, dan. This is exciting, oh thanks for having me.

Speaker 3:

Thank you, marilyn, appreciate it.

Speaker 2:

Absolutely so. Okay, having a scientist going to becoming an attorney, I love it. What's here in the journey?

Speaker 3:

Well it began. I've always had an interest in science, but also there's also been a very creative aspect to my. You know my personality and there's a really important interplay between science and creativity and you know the ideas that come out of science and some of the more creative inventions have come out of. You know just being able to take ideas and put them in tangible form through this. You know the scientific mediums and you know all these ideas should be protected in some way because they're all important and they all end up being. We create ideas every day and we create intellectual property, which most people don't think about.

Speaker 3:

Ideas are assets in a sense, and when you reduce them to something that can be a product or a process or something that can be productive for society, it is a protectable asset and it does. It serves as an engine for this. You know economy, so I'm interested in it largely because, you know, my father was a scientist and he was quite creative and he went, he took his ideas, before he had protected them, to a manufacturing company and I saw that the manufacturing company stole some of his notebooks which ended up being in products they made, and it was one of the first modular you know, marble-like polyamide polyester, rather modular bathroom facilities like sinks and oh wow, things like that.

Speaker 3:

That was very early on, before they made any of these, and he had these formulas that work extremely well. There, I know, I did the testing for him as his technician, so to speak, and he couldn't protect them and he didn't have the wherewithal, he didn't have the money, he had the interest, but he just lost that. And those were among many ideas that he had and that spurred me on to thinking well, there's got to be a way to do this. So that's where my interest initially began in IP quite early on, and it was not a sexy area to go into. People thought back then that intellectual property they thought of sort of the warmed over engineer with the pocket protector, walking around with eye shades on, bumping into walls, you know sort of not, and the sleeve protectors, exactly. So it wasn't an area of law. That was, you know, at the forefront and of course, as technology developed it became so.

Speaker 2:

So and he, he probably I'm sure many inventors followed in his sets just by having that happen to them, you know, not knowing to protect their, their ideas, before actually going to manufacture. So I'm glad that you were able to, you know, protect other people in the future from that that's how I was.

Speaker 3:

Well, I have this saying that that it's it bit catchy, I think. But you tell me it says you know you have to tell to sell. In other words, you have to tell people something to sell it.

Speaker 3:

But, you have to protect it to collect. So it's tell to sell, protect to collect. And it's really true. Most people are so excited about their ideas that they go out and they tell everybody and it works against them if they don't have protection. In most countries, once you've disclosed it, it's in the public domain and you can't really get back your IP, especially in the patent area. So you've got to protect it first. And it's a chicken and egg thing. I know people sort of say well, I don't have the money to protect it, so I tell me someone so they can give me the money. There are ways around it, obviously, but that's one of the things people go wrong when they're disposing their ideas before they protect it.

Speaker 2:

I see, yeah, and it's so interesting. I was in an adventurer's class years and years ago and yeah, and it's so interesting.

Speaker 3:

I was in an inventor's class years and years ago and that was one of the things that were. You know, you keep your notebooks, you do all of this stuff, but the patent pending was one of the things that made it then your ideas to give you enough money to get started, because otherwise people want some certainty. So an investor wants a certain amount of uncertainty. He's going to invest in an idea he wants to know. Yeah, I know it's invaluable, but how is it going to be detectable to me, how am I going to be able to capitalize and get my money back? And if you have some sort of protection on it, that gives them a certain amount of certainty, some security. In fact, many of them take security interests in the patents when they get their money and they make those of record and so if someone goes to try to buy it or infringe it, they have rights to it.

Speaker 2:

So Well, I've watched enough. You know, drag is Dan and Shark Tank and that seems to be one of the questions that comes up on products is, you know, do you have a patent?

Speaker 3:

It's very true, you know it's funny because there's you. Funny because people think that they get confused about what patents might really cover and what they're about. They're nationally based, so every country has its own. They only go as far as the boundaries of that country, so the US patents only cover. You know there are different kinds of patents and sometimes people say, well, I have a patent so I don't have to worry, I can do whatever I want. And that's not really true.

Speaker 3:

Patents cover what you have. They're a boundary around what you own, but don't allow you to walk anywhere you want because other people have other boundaries boundaries and you could. You know it's almost like well, I have a piece of land. If you think of it in the real estate analogy, it's pretty easy. If I have a fence around my piece of land and that's my patent, basically that piece of land I can walk anywhere in that piece of land because it's my patent. But if I go outside my patent and I run into someone else's piece of land, I can't just walk there because they have the patent on that.

Speaker 3:

So you have to understand what a patent covers and the US law and most countries follow this allows you to get another piece of land within a bigger piece of land. So if you have an improvement on an idea, for example, you can't use your improvement because it falls within the larger piece of land. So someone might have this and you have. Well, I found a better way to do that. It's this and you can't use that, but everyone around that piece can use that bigger. You know, whoever is licensed for that larger piece gets to use that, but not the piece that. That's the improvement, for that larger piece gets to use that, but not the piece. That's the improvement vice versa. So you end up cross-licensing in a situation like that. But it's just that there's a basic, I think, lack of understanding and if people understand what patents and trademarks and copyrights are, they realize that it's everywhere. It affects everything they do. Every time you touch a product, it's got one of those IP things connected to it somehow. It's really true, wow.

Speaker 2:

And, of course, with more and more things coming out. Like you said, there's ideas every day. Wasn't there an anecdote that in 1851, the USPTO said nothing would ever be invented again?

Speaker 3:

Yeah, Everything is old, and it's funny because it's true that everything is a combination almost of things that have been invented before. But that's what spurs things on and that's why the law has developed with, you know, protecting improvements and, you know, trying to get the engine of innovation going by giving you certain rights that allow you. It's a limited monopoly. It's, you know, patents are not good forever. You know what is really good though. You know trademarks are renewable as long as you're using them. That's very, very powerful.

Speaker 3:

And copyrights go, you know. Now they go for the life of the copyright. To first, you know, not inventor, but the copyright owner, the life of that plus, you know, 70 years. So that's a pretty high. So you can guess what Disney does. Disney, for example, they like copyrights and they like trademarks. They can keep renewing the trademarks as long as you're using them and the copyrights go for, like trademarks, you can keep renewing the trademarks as long as you're using them and the copyrights go for a very long time. So that's you know. I believe the original copyright on Mickey Mouse is just recently.

Speaker 2:

Yeah, I think it was the Steamboat Willie character, because he has formed into Mickey Mouse or something like that.

Speaker 3:

Yeah, the original Steamboat. Yeah, exactly.

Speaker 2:

That had to be disastrous for them because they couldn't do anything about losing that they can't run it.

Speaker 3:

No, it is yeah.

Speaker 2:

Wow.

Speaker 3:

Yep.

Speaker 2:

So you import in your bio so that you help build IP portfolios and design strategies to protect and enhance company value? I'm very intrigued. Can you expand on that? How do you help do that?

Speaker 3:

Yeah, sure. Well, if I take the easiest way to explain it, I'll take the sort of the startup company, because that's where I feel I can give tremendous amount of value, because they know very little, almost nothing, about the IP. Usually they just know they've got this great idea, I want to take it to market and develop it. So one of the things you need to do is, like you said, there's got to be a strategy involved, because you need to know what has been done before you need to position. Let's say, it's a patent area, okay, so it's an invention.

Speaker 3:

You need to position that invention, find out what the invention is. What is the invention? You know? You speak to the, to the research people, and they're you know. One of the things I realize is you don't have to be the smartest person in the room. It's better to get smarter people around you and ask questions, and they will. They will teach you. So most of the time I deal with very bright people and that's a lot of fun because you learn so much and usually they're very willing to tell you what they know, and then you can position the invention.

Speaker 3:

You can understand the invention and it's a nice back and forth repertoire, back and forth, a repartee, back and forth. And you then take that invention as you reduce it to words. They call them claims in the patent sense. It's claims I claim and you write down. You try to describe the invention in words, not easily done many times. And then you have to take that and position it against what has been done in the past, anything that's been done in that area in the past. So you have to know sort of the landscape of that particular area of technology. If it's a pharmaceutical area, it could be a pharmaceutical drug. You're trying to get it against. If it's a mechanical or medical device area, you look at, let's say, you look at all of the vascular graphs or all of the different types of hypodermic needles or whatever the particular invention is, and you say, well, the differences in what the invention is and what has been done before is not an obvious leap in science. It's a change that would not have occurred but for this invention Inventor. So you have to make that argument to the patent office and they don't always buy it and that's the job of the attorney to convince the patent examiners that in fact there's an invention that should be protected. So you then build a series of patent applications that hopefully get prosecuted into patents, and you've got to be careful how you build it and the timing because you could set up barriers to yourself Because every time something publishes it then becomes in the public domain for use against other inventions. So you compare it to what's in the public domain Well, that's the same as my invention. I'm not going to get that as a patent because it's the same. So you can't. You know if it's been done before or something that's obviously you know. In view of what's done before, you can't get a patent.

Speaker 3:

So it's building those sorts of things and recognizing the best. So it's a lot of creativity is what it amounts to how you create a nice pathway from A to B where there's lots of landmines and pitfalls, with other people doing similar things. So you have to sort of negotiate way through it and say I think we can get coverage on this area, but not this area, or this area and not that area. So and that's, and you build that. That whole series of it's like a thicket of fence or or an area where you. There's a bunch of landmines you have to walk around. Those are your. You put those patents in those areas. People can't just do whatever they want. They, they, they say well, I love this idea, let's do it. Then they run into your patent. It covers that particular thing they want to do. So that's a long way of saying it.

Speaker 2:

Well, that's excellent. I like the way you're talking about spacing it out so that you are protected for the long term, and so all those are sellable assets. Obviously, when you're ready to sell them, sell the business, or you can sell a patent itself.

Speaker 3:

Yeah, they're certainly considered intangibles, but they're assets that could be sold. You assign the rights to them and you can sell them, and then, if you have the rights to them, anything that's made under it also comes, so it could be products that are made under the rights. But yeah, in fact, portfolios sometimes are what allow IP. Portfolios are what allow people to go public. I've been involved with many, many startups which have gone public based on the fact they have a big portfolio that we've been able to develop. Now they have some products too, of course, because no one wants to buy a company that doesn't make anything you know, make his money at all but they have to have some sort of assets IP in the background.

Speaker 2:

Now, in thinking of that term, what about apps? Absolutely.

Speaker 3:

We have a number of clients that we've done apps for and those are also very protectable Because they involve computer science and they have to have some kind of an algorithm-based Math itself is not protectable, but how you use the math in combination with other mechanical things or tangible things, so a software system, for example. So we have a client that, for example, they build these large communities and they plan these communities, and when you want to go and live in one of these communities, it's like a little city, so it has everything. It has a movie theater, it has banks, but it's a well-defined area. You know thousands of acres but houses, and you want a certain house with a certain color, certain types of appliances, facing a certain way, and you want to know if you can buy that house, and if you can, you'll buy it today.

Speaker 3:

Well, in real time there wasn't a way of doing this, because the builders would be doing things in one part of the community and then someone else would be at the same time saying I want something very similar across the street and they don't want cookie cutter looking communities. So they weren't in a way of saying, well, how do we get it so that this community does not look like we. Just like you know, in the 40s and 50s, when they came back from the war, they just built, you know, rows of houses and they were all the same. That's not what people want anymore. So they came up with a way, an algorithm, of which they built into a computer app which allows anyone to request what they would like at that time and it will tell you if it's available and anyone can form. So you know, out of thousands of homes, whether I can have a red roof and maybe I can't, because there's a red roof across the street and they don't want an antimonopoly type of algorithm, right? Not one Monopoly.

Speaker 2:

Front door.

Speaker 3:

Monotony Right Anti-monotony.

Speaker 2:

I love that and that's so creative because, you know, some of these developments are just massive.

Speaker 3:

Yeah, they are yeah.

Speaker 2:

Being able to drive through them and not go. Hmm, this is a development. It's what we used to call in the 80s. Yeah, exactly they were all boxes right.

Speaker 3:

Yeah, exactly yeah, so apps can be done. There's very few things that cannot be put into some sort of IP asset, straight math, for example. Okay, no, you can't. The statute defines these things. You know gravity, gravity, no. Things that natural you know, things that exist cannot be. You know nature can't be part of you know, because it's a limited monopoly. You can't monopolize something that is already in the public domain.

Speaker 2:

And you can't. I'm sure that AI falls into that as well. That's not something that you could go and open a patent on.

Speaker 3:

The problem right now is people don't know what AI is. Everybody has their own definition and they're trying to get their hands around. How do you actually police AI in any meaningful way? The Patent Office of the United States has said that AI is not a person and only people are entitled to patents. So that's a good step, because I think AI could file a patent every 30 seconds if it wanted to Think about it. So it's good that AI itself can't be. Now you can get patents that use AI as part of the invention, but AI is not the inventor. It's the inventor. People or person does the invention.

Speaker 2:

Well, we were having a conversation, I think, last week, about how you also can't trademark an AI product or something that was written or created with AI, because it's based on so much test data and it's reading all of these source materials that you can't say that it was yours.

Speaker 3:

Yeah, that's true. All of these source materials that you can't say that it was yours yeah, that's true. I mean, the one thing I always caution my staff, my attorneys, about is the use of AI in the public. Because if you put someone's idea which is confidential when they come to you with ideas as a patent attorney, it's confidential Until you end up filing at the patent office. I mean you don't want someone to steal that Until you end up filing at the patent office. I mean you don't want someone to steal that so you don't put it into a GPT chat machine and it becomes into the whole public arena.

Speaker 3:

That is not a good idea. That would be, in my view, a violation of not just confidentiality but the attorney ethics code. So you got to be careful. I mean, ai is very hyped up and there's a place for ai, but I don't see it as being. You know everyone, if you put ai next to a product right now, people think it's like brand new. Machine learning has been around a long. It's just you know when they first came out with ways to translate your voice into words and once you learn it, all they're doing yeah, they're teaching the machine. When, when you hear this sound. This is the what you write, and you do it over and, over and over again.

Speaker 2:

The machine just finally gets it right now, it's pretty good well, remember all the hype when the first remote for a tv came out, that you could speak to the remote and it would do.

Speaker 3:

You know that was like yeah, yeah, I know I know well a lot of this stuff is is it's not as new as everyone says it is. I think it's been around a long time. You just see lots of ideas in my business all the time when I was inside counsel I used all the ideas that people would send into the company would come through me and I have to say there were not many good ideas that came in. There were lots of crazy ideas because it was a pharmaceutical company. But occasionally there was a good idea and you know if that idea could be championed up through the marketing people and the marketing people then could talk to the business people and you know, every once in a while they would take an idea and they would say, yeah, let's have this person come in and let's speak to them about what their business plan is and so forth. But it wasn't very common. It was the not invented here syndrome for most of these large companies Interesting.

Speaker 3:

Changing now, I think, but yeah.

Speaker 2:

Yeah, when you say about taking your ideas, that someone brings you an idea and you have to be careful not to put it in chat, gpt or anything like that, because you need to protect it until it's filed. The one thing that I saw about six months ago and I turned it off on my own is Microsoft Word did an upgrade, that there's a checkmark that's default, that you're allowing all of your documents to be used in a large language model training.

Speaker 3:

Crazy, crazy.

Speaker 2:

And I was surprised that it was turned on by default. You had to go in and check.

Speaker 3:

Yeah, see, I don't like that, that's just not. You know, I don't even care if you give notice. That should not be an option.

Speaker 2:

No, I agree. I mean many authors write their books in Word. Yeah, I mean, where else would you write it for the most?

Speaker 3:

part. The whole copyright area, I think, is going to be thrown on its head because of this whole AI stuff and people. You know, did you write it? Oh well, let's do a search to see if anyone wrote those exact words. Well, you know, if you wrote those exact words, but they were your own origin and it's possible. You're entitled to copyright as long as you're not stealing it. If you're not stealing it, it's not a violation of copyright. You're entitled to copyright as long as you're not stealing it. If you're not stealing it, it's not a violation of copyright.

Speaker 2:

Well, the same string of words could mean yeah, it's.

Speaker 3:

I mean, I'm talking about paraphrasing. I mean, yeah, I agree, you can say things in a hundred different ways and they mean the same thing. But if you're not copying it and you're coming up like the same thing, but if you're not copying it and you're coming up like I, I was a very I was not in law school when this happened, but when george harrison was accused of copying, you know, my sweet lord, from you know a song that he had heard and he lost that case. You know they, they, he lost it. You know they I forget who it was that sued him for copyright infringement. But I thought that was a terrible decision Because he had, yes, had he listened to the song? Yes, a few times, but it wasn't like I didn't think there was enough evidence to show that he was so influenced by it that he was borrowing it. Now the law has developed where you can borrow a little bit.

Speaker 3:

It's really a question how much did you borrow to create what you created? Because if we talk to her, I mean, is there a series?

Speaker 4:

of words that have never been put together in the English language.

Speaker 2:

I don't know, I wouldn't know that that's interesting. I mean, I read a statistic one time that the Sunday edition of the New York Times has a maximum of 600 words in it. Now, this was back in the 90s, because it's written at a certain grade level. So to have your article in the Sunday paper, it can't be using Wall Street Journal words.

Speaker 3:

Really, I didn't know that.

Speaker 2:

That was quite interesting, but this has didn't know. I didn't know that that was pretty interesting, but this has been really exciting. I love hearing your stories and the differences and I think everyone's going to pick something up about in this episode. It's been a pleasure to chat with you, dan. Yeah, if anybody wants to reach out to you and connect with you, where's the best place for them to do that?

Speaker 3:

Well, they can certainly look at the website. It's the Hoffman and Barron website. It's hoffmanandbarroncom or hbiplawcom, or they could just find the phone number there as well. But that's probably the easiest way Just go to the website.

Speaker 2:

Excellent. We'll make sure that that's in the show notes and gosh. Thank you so much. This has been entertaining and very informative. I appreciate your time.

Speaker 3:

Yeah, thanks, same here, marilyn. Yeah, it was very nice Appreciate being on.

Speaker 4:

Thanks for joining me today for this episode. As we wrap up, I'd love for you to do two things. First, subscribe to this podcast so you don't miss an episode, and if you find value here, I'd love it if you would rate it and review it. That really does make a difference in helping other people to discover this podcast. Second, you can connect with me on LinkedIn to keep up with what I'm currently learning and thinking about. And if you're ready to take the next step with a digital strategist to help you grow your law firm, I'd be honored to help you. Just go to lawmarketingzonecom to book a call with me. Stay tuned for our next episode next week. Until then, as always, thanks for listening to Leadership in Law podcast and be sure to subscribe wherever you listen to podcasts so you don't miss the next episode.

Speaker 1:

Thanks for joining us on another episode of the Leadership in Law podcast. Remember you're not alone on this journey. There's a whole community of law firm owners out there facing similar challenges and striving for the same success. Head over to our website at lawmarketingzonecom. From there, connect with other listeners, access valuable resources and stay up to date on the latest episodes. Don't forget to subscribe and leave us a review on your favorite podcast platform. Until next time, keep leading with vision and keep growing your firm.

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