INTERVIEWS by Stephen Ibaraki
Mei Tsang, Top IP Authority, Managing Partner and Lawyer
This week, Stephen Ibaraki has an exclusive interview with Mei Tsang.
Mei Tsang is the managing partner at Fish & Tsang LLP. Mei helped form Fish & Associates, PC with Robert "Bob" Fish in 2007, which became Fish & Tsang when she became the firm's managing partner in 2014. Fish & Tsang was awarded Daily Journal's "Top Boutiques" and Orange County Business Journal's "Fastest-Growing Private Companies" and "Best Places to Work" in 2014.
Mei's core value focuses on helping her clients, team, and communities make their dreams come true. This derives from her own story as a dream come true as a Chinese immigrant who came to this county at the age of 13 and unable to speak much English. Mei received a Bachelor of Science in Biology at Purdue University, and went on to earn a law degree cum laude from the University of Illinois. She began her legal career with the national firm Sonnenschein, Nath & Rosenthal LLP (now Dentons LLP). Mei developed her practice of holistically counseling clients with intellectual property (IP) needs by practicing patent and trademark prosecution along with litigating a variety of IP disputes.
In 2006, Mei moved to Orange County to start a new chapter in her life, where she met her now partner, Robert "Bob" Fish. Under Bob's mentorship and partnership, Bob and Mei built a team of highly qualified, passionate and dedicated professionals in Orange County and Silicon Valley. Mei and her team are committed to their clients. Fish & Tang is a full service intellectual property legal practice and provides strategic legal services and coaching by helping clients utilize their innovation and creation to build and maintain their businesses.
Mei pioneered the firm's three-step strategy for IP: Identify, Procure and Shepherd. The process helps clients approach, manage and monetize their intellectual property. She is a zealous advocate for her clients in advising and coaching them through prosecution, litigation and enforcement of their rights in the US and worldwide. Her specialty is in strategizing with her clients to think the impossible and to achieve their ultimate business goals. Mei has counseled her clients to achieve their goals by being resilient and caring. As a result, Mei earned the nickname of "Chinathreat" as she is unflappable in the face of adversity.
Mei's domestic and international clients range from start-ups to small and medium-sized companies and large Fortune 500 companies with various intellectual property needs. She has litigated many federal and state court actions involving various intellectual property disputes such as patent and trademark infringement. She also has helped clients navigate through the world of combating counterfeit goods with the assistance of the United States Custom and Border Patrol, the FBI and the LAPD. Mei is creative too as well. She launched the Rainbow Book™, which translates common IP terms into seven (7) different languages as a convenient client reference.
To listen to the interview, click on this MP3 file link
PARTIAL EXTRACTS AND QUOTES FROM THE EXTENSIVE DISCUSSION:
Interview Time Index (MM:SS) and Topic
|:00:17:|| ||Mei, you have a long success history and so many outstanding contributions. Thank you for sharing your considerable expertise, deep accumulated insights, and wisdom with our audience.|
"....Thank you Stephen and thank you so much for that warm introduction. I feel very humbled and I'm looking forward to this. Let's have some fun...."
|:00:37:|| ||Please describe your journey from your early years to the present, sharing your major milestones?|
"....I think that my journey has been quite interesting in that it took a lot of winding paths, it went through a lot of places (including across countries, different cities around the world), and I never thought I would end up where I am today so I am very grateful....I'm managing partner of this amazing place and we have some of the most dynamic, smart, wonderful, kind-hearted, creative people I have ever met. I have to say our tagline for the firm is: 'Making Dreams Come True' and for me, my dreams have come true. I never really thought this was possible and I never even dared to dream it because it just seemed so crazy as an immigrant, a Chinese woman coming here and being able to be a main partner at this amazing firm. It's even a time for reflection because I'm turning 40 on Monday and it's been a wild ride. I'm just grateful for all the people who are in my life along my journey so far who have helped me because I could not have done this alone...."
|:14:10:|| ||What should we know about IP?|
"....From the moment you wake up everything you touch, from your toothbrush, your hairbrush, the phone that you reach for and the car you drive, that's all Intellectual Property....Let me give you some specific things that I think in the legal world serves to protect IP. Number one you have patents. Many people ask me, 'How do we know we have something that's worth protecting?' If you're there to solve a problem and nobody has solved that problem before, it's most likely that you have something that has to be protected via a patent....Beyond that you have trademark, which is very essential in today's world. There are now so many apps; how do we distinguish those apps, many of them may not be protected by patents, but they all each have to have a logo and they all each have to have a name attached to that logo and that's branding. Differentiating yourself so that, for example, the consumer can recognize very quickly by the 'little white bird' that that is a Twitter account, versus an 'S', versus a Facebook account, so branding has become very essential especially in today's world....There is also copyright. Many people think copyrights are just there to protect movies, songs or artistic endeavors. However especially in this area, I think people should know that software can be protected by copyright as well. It can be a very powerful tool because oftentimes it might not be protected by patents but at least there is some protection we can get with copyrights. Copyrights actually carry much greater penalties so to speak when there is infringement to be found....In addition beyond patents, trademarks, copyrights there is also trade secret. What I really like about trade secret is that for a patent to work it has to be something new, it has to be invented. For a trademark it also cannot really infringe on other people's rights and there has to be some eligibility to pass. It cannot be too descriptive, it has to be whimsical, suggestive in order to get some protection. Copyright, sometimes you want to protect something but it's just functional and you can't get copyright protection. What's beautiful about trade secrets is you can protect a lot of things including financial data, client information, your specific policies and procedures on how things are done that are unique to your company, and of course anything that's created in the process of creating some IP rights....So I would really advise anyone if they have a dream, if they really want to make that come true, invest (this is an investment) in a great IP professional that you feel can help you really understand what's going on. It really is a long term relationship...."
|:28:40:|| ||What are the trends you are seeing in IP law?|
"....Number one is that IP law is very complicated and we are in some interesting waters. Quite a few years ago (at least in the US), we had what was called the business software patent (business method patent), and the business method patent allowed almost any software to get a patent. What ended up happening was that there were so many patents granted and once those were granted what you see is increased litigation so everybody was getting sued on very simple things....There are some key monumental cases that came out in these last two years to the Supreme Court. One of the most important ones, especially for the audience here, is the Alice case. The Supreme Court came down with this decision, but as often happens there was a lot of ambiguity in terms of the specifics when it comes to specific patents. What we are seeing right now is a lot of case laws at the Federal District levels until we figure out what is eligible, what is patentable from the software perspective. So the law is complicated. That's definitely a major trend and requires heavy monitoring....There's a lot of legislation that is coming down too that is being floated around. We already had a sweeping change with the America Invents Act, which changed this country's patent law from a First To Invent (which was one of the few countries left in the world that had that system), to a First to File; in addition now there's multiple legislation that are pending in Congress trying to curb the litigation from the patent trolls. This is all new and uncharted, but beyond that what we are also seeing in the IP world is a lot of filing from a global perspective....Another trend which ties back into my number one point is that for filings you really have to be inventive, there has to be something to really differentiate yourself. I think this works both in the IP world and really in the business world. I think companies and everybody have to be more creative, have to really figure out what is it that they are offering that makes them a differentiator in order to extract more value out of their IP...."
|:36:08:|| ||What if someone in the audience says there is all this about Big Data and now I have a new method of analyzing the Big Data in some way (what I think is proprietary and unique and I have encapsulated that in a piece of software), how can I protect that? |
"....It doesn't really matter if it's in software, it's mechanical or if it's in aerospace, if there is something that you are doing that is different, there is a way to protect that. I don't want people to think that is a software patent, it is not. We continue daily to take in clients that have new concepts in that area and we continue to get patents even with today's landscape and there are different ways of going about it. One thing people need to understand; if you disclose something on a patent, really you are kind of showing it to the public. You are basically telling the public, this is what I created and I have a little monopoly over this, here's how it works, so if you want to use this you've got to get permission from me so I have to allow you to use it. That's really what a patent is. So when companies come to us and they have what I call "the secret sauce" to do certain things to analyze the data in a certain way, we sit down with them and figure out which portions of that should be disclosed in the patent and what portions of it (if any) we should keep a trade secret. A little bit of my trade secret that I'm about to divulge is that there are ways to do both. There are ways to keep the real essence of something as a trade secret and still go forward with a patent application that discloses things that allow there to be a patent. There is also another secret weapon which we call a submarine patent. A submarine patent is where you request a non-publication and it allows you to go back and forth with the patent offices but at the same time you are not making this public....This is where you really need to work with a very sophisticated IP professional to help you charter these waters...."
|:43:20:|| ||What are the top considerations for patents?|
"....People should really know why they want to do this, why they want to file something. Beyond that they really need to know what sets their thing apart....It is expensive to get an application and it takes a long time to even get an examiner to look at your invention, your application....There are accelerated programs today that allow you to get it much faster but it's really important to figure out from the get-go what's out there. I don't know how many times people come in here and they say I've got something new, I searched the internet, I'm in the industry and I know there is nothing like it. What they don't realize is especially when it comes to something where you need to get a patent it's not just in the US, it's not just English language that they need to look at. The first thing is we help people figure out is there something else already out there? We need to search worldwide....I tell people we always can back something that is similar if not exactly on point. We bring them in and we say, usually you have a reason for doing this so what can you do better on these things than what's already out there? Going back to teaching them how to invent and how to think, I think that's really important. Develop a strategy, it's really important to figure out what are the short term and long term plans....Another thing is to think of your IP portfolio as an asset....Building that portfolio is very important and also to actually do something with it once you build it - go make those patents work for you. That sometimes takes a lot of courage and it can be scary, but again with the right professionals next to you, to teach you and to guide you, can really be key for a company to succeed....You have to be aware of who you show this to. You also have to be aware of putting anything online, going to any tradeshows; a lot of times when you do anything public you cannot recover the light, especially internationally....Another thing is be careful, there is a lot of crowdfunding now, there's a lot of joint ventures and I cannot stress enough how ownership of IP is such a big issue for a lot of folks....Different IP assets, patents, trademarks, copyrights the ownership, authorship of an applicant can vary and can really be important...."
|:55:52:|| ||You described some really great caveats for people considering protection in some way and how to strategize about that. You also talked about cost and time and overall trends. I want to drill a little bit deeper into that. What is the cost range for protecting? Also a time range in terms of the different ways you can protect things from the inception of the idea and getting in contact with your group to the time that you feel you are protected. The next question is related but broader stroke - comments about global trends beyond the ones we already discussed? |
"....Cost is always a consideration, especially for start-ups it can really be challenging. Cost for a patent application really varies geographically and I think a lot of that is industry-driven (so Silicon Valley price is a little bit different than your Texas price and East Coast price is also a little bit different than Midwest price). But generally I think for a patent application for someone to look at it, brainstorm with you, to do some searches and then to write an application (not to get a patent, but just to put something on file), is usually somewhere between $8000 $15,000. I heard in Silicon Valley these days it can be $15,000 $30,000 because most of those are in the software industry and that can get really complicated. However I want to tell people about a vehicle called a provisional application - we almost always recommend this for most companies that are starting new or have really new concepts that haven't been fleshed out. The US is the only country that does this, that allows you to file an application that is basically a bare bones, much less formal application than what the utility application is; it does not get examined by Patent office, it's a placeholder. I do not recommend these days people doing it on their own or doing something really cheap. It should at least be $3500 $5000. If you really think you have something, you have to at least invest in that much from the get-go in order to protect yourself....Time is really important. I always tell folks that from the time you file, to get examined it's a few years. You really should think about coming to see us; when you are ready to do some serious pitching, come to see us before that big pitch. It takes us and I think most firms a few weeks to come back (sometimes sooner) to see if there is anything like it, so you could avoid some landmines. That's generally the situation in terms of patents. Internationally, think of doubling everything in time and in price....When it comes to trademarks the cost is much lower, but what people need to realize is that they do at least some searching for trademarks (it is similar to patents), that they can feel that they can feel comfortable will get through. The timeframe for examining trademarks is the same procedure. The cost goes down dramatically, usually a trademark application you could do for $2000 from the search to filing and then to getting that trademark. The timeframe for is usually about a year to year and a half. Also the same thing with trademarks is you could file that internationally; they are a little bit pricier but not as expensive as patents. There are also copyrights which are probably one of the cheapest things to file and is something that you can even do on your own, but again there are some guidelines...Trade secrets, usually the cost with that is some agreement work (that's a few thousand dollars), and then it's making sure the company has internal structures to have a refresher every so often, so the employees remembering that....You asked about the overall trend. Beyond what we discussed already (that is to file internationally), there's a lot more licensing going on....Design patents can be huge....Another one is trade dress....How does this apply in the computing world? Your GUI, if it's unique enough, can be subject to both a design patent and a trade dress and that can give you a lot of legs. What I also love about trademarks and trade dress is that patents have a shelf life. In the US it's 20 years for utility patents, 15 years for design patents, but trade dress can last forever.....I think overall you have to be more creative, you have to talk to people who know about this in order to figure out how to protect yourself...."
|:01:10:38:|| ||You described trademarks in some detail, but do you have any additional tips on trademarks?|
"....Number one rule, do not get emotionally attached to any one trademark....An additional consideration is register your mark. There are common law rights in the US where trademark protection which means you don't have to register federally or statewide, but nonetheless you should go get that protection because it gives you so much more benefit....Make sure to also put notices on your mark especially if you haven't got a registration. Put ™ (if you haven't got a registration) next to the mark, ℠ for anything you are offering as a service and then once you get a registration put the ® on there. Another consideration in your marketing materials is to make sure you use the mark correctly. It should be used as an adjective. It needs to be sort of a possessive noun rather than just on its own. Watch how the trademark is used when you have either licensees or vendors. You want to make sure you have quality control over the trademark. If you don't police how they are using it the mark can lose its value, so be aware of that. Also with social media that might be hard to do, but you need to have someone monitoring that...Enforce your rights once you get them. I don't know how many times people have acquiesced on the rights they have and then later on there are more people using their rights and then it gets much harder to enforce...."
|:01:19:35:|| ||What are some additional tips on infringement?|
"....Here's the thing on infringement, especially in the US, where pretty much anyone can sue anyone. It's really something you cannot avoid if it's going to come your way, and like many things in life you cannot live in fear. The fact is, usually when people are suing you or where there is cease and desist, I always see that as what is that other entity's or person's end goal to be? Is it there in this marketplace and they don't want you to be in this marketplace? Is it that there is some IP that they want to extract value in and I want to make sure my client understands if you are encroaching on somebody's rights what are you going to do about it? Is it essential for your business? Can we let this go? Or is it something that maybe you want to strike up a dialog....You can't say 'I know I'm right'. Being right could be very expensive and costly both in money and time and your mental space. A lawsuit is very challenging because it's contentious, it's ugly, they want to dig information from you, from your company. I always ask what are some of the ways we can resolve this without going to a full-blown war? Sometimes that's inevitable, sometimes you have to defend yourself because this is your livelihood and they have patents that don't hold up and you have to fight it, you have to have certain battle to win the war, but you have to be smart about it. If you do the homework right in the beginning you should know some of the key players that are in your field or that might come after you. You should monitor that, monitor your competitors and see what they are doing. Once the lawsuit starts, depending on which district you are in there are some really comprehensive and quick deadlines that you've got to meet. You've got to demonstrate why you think the other side infringed, why you don't infringe. That's not something you can do on your own, you really need a good IP litigator next to you who knows the ins and outs of how to work it. Your attorneys should give you the confidence that you feel like we are going to get this done. But also don't expect the attorney to work miracles. Sometimes, you know what, you infringed. I think that's really important. Selection of counsel right from the get-go is so important for you to succeed. Know their motivation (why do they want to take on this case), do they want to make more money or do they have your best interest at heart...."
|:01:30:00:|| ||You have spent some time discussing the legal aspects of IP and provided some great tips and best practices. We are switching directions now to get a better sense of some of your other interests. I myself am surrounded by different kinds of computers and devices. From a technology standpoint, do you have any opinions on those kinds of things?|
"....There are different ways we have to learn and adapt to interact. I'm looking forward to seeing Windows 10 and the Surface tablets and what they can do in order to help us have more ways to connect with our clients...."
|:01:35:30:|| ||Do you feel computing should be a recognized profession on par with accounting, medicine and law with demonstrated professional development, adherence to a code of ethics, personal responsibility, public accountability, quality assurance and recognized credentials? [See www.ipthree.org and the Global Industry Council, http://www.ipthree.org/about-ip3/global-advisory-council]|
"....There is this age of enlightenment almost when it comes to computing so with that there needs to be regulation, there needs to be sort of an upleveling of that profession besides the conventional nerds and geeks. When you listed accounting, medicine, law - all of those things now need computing. So with that I think that it is important to have those things, a Code of Ethics, some personal responsibility. ....I think we are in that beginning stage, but it definitely should be on par as a recognized profession.... "
|:01:38:24:|| ||From your extensive speaking, travels, and work, can you share a story (perhaps amusing, surprising, unexpected, amazing)?|
"....I'll share this story of a recent travel. I went to China with a client to help them source factories in China. While I have advised a lot of people, I don't usually go to China to source factories. This was my first time and I am humbled by what China has done. I fondly remember the China I knew when I was living there and I felt so happy to see the progression and the hard work that these folks are putting in. These conditions have improved from the years ago that I was there but its still hard. These people are still living a really hard life....And you forget sometimes. You forget when you're living in Orange County and there's so much wealth in these areas and in Silicon Valley, you forget the things you touch, the stapler that's on your table is made by somebody and that's their livelihood. I looked at some of those ladies and I knew that's what they were going to be doing for the rest of their lives because they are trying to better their kids. It really humbled me and made me realize not to get ahead of myself and always remember where I came from and where people are. We really should remember everything we touch in life, it takes a whole network of people to make it happen...."
|:01:42:12:|| ||Mei, with your demanding schedule, we are indeed fortunate to have you come in to do this interview. Thank you for sharing your substantial wisdom with our audience.|