Adventures in IP
Professional inventor Bob Shomo knows IP troubles. In the 1970s, Shomo developed and patented a vibration-free tennis racket. Wilson, the largest US manufacturer of tennis rackets, was interested. Shomo met with Wilson representatives in Chicago, giving them full know-how, engineering and test data, and a dozen rackets. They settled on a royalty rate, and scheduled a final meeting.
Then the meeting was cancelled. Wilson went through a major management shakeup, and when things settled down, Shomo got back in touch with his only contact left. “Yes, Wilson’s still interested. Yes, they still have his data and his rackets.”
After several months of trying to prod Wilson into action, they said, “Well, our patent attorney thinks you have a weak patent—we’re going to go ahead and do our own version.” That version came on the market as the Wilson Air-Shell. Wilson’s design was identical, except that they used one piece for the handle, whereas Shomo’s racket used two pieces. Technically, they weren’t infringing his patent.
From “Inventor Paranoia,” by Ed Zimmer, TEN Magazine, 1994. http://TENonline.org/art/9405.htmlProtecting your intellectual property
Protecting your intellectual property can get complex—and expensive. You probably don’t want to spend endless hours sorting through legalisms with attorneys and paying huge fees to do so. On the other hand, you certainly don’t want to leave yourself legally exposed or squander a competitive advantage because you didn’t do what was legally necessary. So here are some tips for maximizing your protection at the lowest possible cost.
Patent only what is important. If patent office examiners or competing individuals or companies challenge your patent, the legal fees can soar. You must conclude first that you need the protection, and second that you will recover much more than your expenditure in additional long-term sales.
Get the best trademark protection as early as possible. Registering a trademark is a much simpler procedure than getting a patent. A trademark search can usually be done for a few hundred dollars.
Choose the right form of protection. Don’t assume that because copyright protection is cheaper to obtain than patent protection you should automatically go the less expensive route. Spend the $200 or $300 it might cost to get sound legal advice.
Warn potential violators that you are serious. You should warn everyone who has access to important information that the nondisclosure and other agreements they sign are not just a formality. If someone does violate your IP, be prepared to take legal action to set an example that will become known to others.
Plan for information protection. In the start-up phase, be prepared to make various disclosures of important information. That information may be contained in a business plan, lists of prospects, supplier names, production specifications, and various other data essential to starting your business.
From “How to Really Start Your Own Business,” by David E. Gumpert, Inc. Magazine, 1999.
http://www.inc.com/articles/1999/11/15345.html