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Patent Lather

When you create a product with broad commercial potential, be sure to protect your interests by patenting the products in a way that keeps the competition at bay.
June 1, 2000
URL: http://www.entrepreneur.com/article/27864

While a student at Massachusetts Institute of Technology in Cambridge, 22-year-old Ronald Demon created the technology behind the ThinkShoe, high-tech footwear that adjusts its cushioning to the wearer's activity. If you're playing basketball, for instance, air pressure will push fluid into the cushion to provide extra comfort. "Everybody started calling me when the news of my invention first came out in the media," says Demon. "I was approached by Nike, Adidas and Reebok, among others, to see if I was interested in licensing my technology."

Demon, however, has different ideas-he's decided to introduce the product himself. At press time, the product, named Raven, was scheduled for a 13-city test run this summer. Demon believes the initial success will expedite the final licensing agreements and help him negotiate a better royalty rate.

Essentially, Demon's long-term success depends on his patent, which will prevent competitors from snagging his idea. His original patent offers broad protection, he says, but he's filing additional patents to broaden the claims even further. Any time you have an invention like Demon's with broad commercial potential, you'll want to follow his lead and try to patent the product in a way that keeps the competition at bay. That's easier said than done, especially on a product like Demon's, where similar products-like Reebok's air pump sole-are already on the market. But it can still be done, as long as you're willing to go the extra mile to cover every design variation.


Don Debelak (dondebelak@uswest.net) is a new-business marketing consultant who has been introducing new products for more than 20 years. He is the author of Bringing Your Product to Market (John Wiley & Sons, $19.95, 800-225-5945).

Details, Details

According to Donald Grant Kelly, director of the Office of Independent Inventor Programs at the U.S. Patent and Trademark Office (PTO, www.uspto.gov), broad vs. narrow is really an issue of establishing barriers to market entry by competitors. The issue relates to a patent's claims, which are the heart of a patent.

A patent claim presents details of the invention. Just how precise those details are determines whether a patent is broad or narrow. For example, says Kelly, broad claim language would be a phrase like "container of fruit," while narrower claim language would be "a bowl of apples."

The problem for Demon and other inventors is that the PTO doesn't like to issue patents with broad claims. "When an inventor succeeds in gaining a patent on an invention, this means that the other 250 million Americans will be excluded," says Kelly. "There's an important line that must be drawn by the patent examiner [that] delineates the inventor's right to a newly developed and precisely defined invention and the right of the general public to freely enjoy that which is already in the public domain. If the inventor's claim is too broad, it will impinge on that technology that is already owned." Since the concept of cushioning shoe soles was already known, the patent office is going to restrict Demon's patents to specific claims.

Counter Attack

Demon wanted to be sure to do everything he could to protect his technology. On his original patent, he had to define his product in detail-with a list of features for his main claim. He also had a variety of additional, or secondary, claims. "Secondary claims continue to define an invention with increasing specificity," says Kelly. "If a patent is challenged in court, a judge might find that certain claims are invalid and the patentability "line" will fall somewhere between the broadest and narrowest claims." In other words, secondary claims can narrow the scope of a patent's protection.

Demon's strategy was to patent many different variations of the shoe to get broad coverage. His original patent had 15 claims. Demon also has several additional patents pending that would cover even more options on how his technology could be produced. Demon's aim is to patent every manufacturing option so that a competitor can't design around his patent. Demon's strategy isn't as effective as getting a patent with a broad claim, but it can come pretty close if Demon is able to identify every possible design configuration.

The drawback to this strategy is the cost-the first three claims are free, but each claim after that will cost you $39 (unless you have 21 or more claims, in which case they're $9 apiece). That's on top of the $345 filing fee for a utility patent. Then there are patent attorney fees, which could easily run $15,000 or more. But in Demon's case, that money is a fraction of what he might earn on licensing agreements. Demon's already signed a deal with major retailers in southern California to distribute his shoes, further pumping his product's value. So if you're going to make the investment in a patent, be sure to get one that provides meaningful protection. If you can't get a patent with a broad claim, try to sew up the idea by patenting as many product variations as possible.

Runnin' Down A Dream

Inventors can always strike a better licensing deal if their products are already successful in the market. In some cases, it can even double the final negotiated royalty rate. Ronald Demon has decided to introduce the Raven, a sports shoe with his ThinkShoe technology, in 13 cities nationwide (including Los Angeles, Boston and Seattle) where there are high percentages of runners who have been known to embrace new shoe technology. Demon has also arranged for some of the top runners in the Boston Marathon to wear the Raven shoe. Demon selected a smaller market for three reasons:

1. He doesn't have the funds to promote the product nationwide.

2. He wants the product to be a big success in its early sales so he can strike licensing contracts with better terms. Going to markets with a large number of early adopters should improve his chances of having a successful introduction.

3. Demon's limited-introduction strategy-pre-selling his product in 13 target markets-is the best approach for most inventors. Potential licensees just want to know the product will sell, and selling it in 13 markets reduces the chances of the product flopping in markets where it wouldn't receive the proper marketing and pre-sale support.

Contact Source

VectraSense Technologies Inc. (maker of ThinkShoe), (978) 232-9778, www.thinkshoe.com