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Understanding IP law

February 11th, 2019 / By: / Feature

Advice for innovators from innovators.
Lumenus is a startup based in Los Angeles that develops smart technology for safety lighting including turn signals and brake lights on clothing and backpacks. Photo: Lumenus

Editor’s note: I asked select entrepreneurs that I’ve met to answer questions about intellectual property (IP) law and their experiences with it. They are at various stages in their careers or the course of a new enterprise, so they come from different perspectives because of their experiences and level of expertise with intellectual property management. These were the questions I asked them to consider:

  1. What do you wish you had known early on when you were first dealing with IP law/patent issues?
  2. What would you tell a new entrepreneur with an innovative technology or product to do in order to smooth the way for commercialization of their innovation?
  3. How should an innovator prepare to get the best service from their legal support?
  4. Does an innovator need to know about this, or should he/she just turn it all over to a good attorney?

 

Jeremy Wall is founder and CEO of Lumenus, a startup company based in Los Angeles, Calif., that develops technology to pioneer the future of smart clothing and wearable technology.

Jeremy Wall is a young entrepreneur who has had quite a bit of attention with his technology innovations for smart clothing and gear, but he’s had his share of struggles all along the learning curve with launching a startup.

“We have recently been granted our first patent and filed a continuation application, so it’s fairly top of mind,” Wall says. Of paramount concern is the expense involved with protecting your intellectual property, an issue that “gets you on edge about patents,” he says.

“One of the biggest things is knowing where you’re going to be, as opposed to where you’re at today. When we first applied for our Provisional in September 2015, our business was so much different than it is today,” he says. Because of that, the company has had to pay to have their patent lawyer make changes – an expense that may have been avoided.

“It was all about here and now and that just wasn’t the right thing,” he says. Rather than focusing on the first product the company built, he wishes they would have asked, “Where do we want to focus on business for growth?”

Furthermore, not all businesses need the same level of patent protection. “Get feedback on why you need a patent,” he says. “Where else could you spend $20,000?”

When you decide to pursue IP protection, you can start by asking a patent attorney, but be prepared. “Before you do anything, you should look and see what’s on the market, and see if it’s patented,” he says. “Would they think you’re interfering with their patent? Do you have only one differentiator? That’s thin. Five differentiators, for example, are better.

“You need to know enough to provide the info the attorney needs. You also need to understand the process, more than the particulars that are going to happen. I feel like I had surprises in how long things would take, [in addition to the costs]. Make sure you know what the process itself is; their job is the particulars. … Do your due diligence on your own, but you gotta trust the experts. … A patent helps you sleep at night.”

But an entrepreneur has to be prepared for the long haul, and ask at every step, “Where is the best value for the money I have to put into my business?” It’s also a matter of time, as well, and it’s not the best use of an entrepreneur’s time to be searching patent records, Wall believes.

If he had it to do over, he would have not covered as much, and in so much detail. “If it wasn’t so particular in the first version, it would be much easier than it is today. I could have more opportunities in the future, because I will have learned from the market. We had more drawings on product one, that were specific to our product at the time, than we needed.”

The company has learned and become “a much simpler business,” Wall says. “As of yesterday, [January 29] I have the new samples of our second product. I’m focusing on building a product. I’m not going for another patent until I know what people want and will pay for.”

“The market’s always changing. When it comes to IP, it’s the Wild West. It’s a lot of money, and we don’t know how it’s going to play out. We’re on a good path, with the products and with the company, so we’ve set ourselves up for future success.”


Maddy Maxey is founder and technical lead at Loomia, based in Brooklyn, N.Y. The company creates innovation in smart products and related data services to provide comfort, safety and confidence to the human experience.

Brooklyn, N.Y.-based Loomia creates innovation in smart products and related data services for the smart fabrics sector. Photo: Loomia.

Maddy Maxey has been in the smart products business a bit longer, but she, too, says “I wish I would have known how expensive it can be! Her company, as well, learned that “It’s good to be specific and narrow down your invention to the most important part.

“I wish I would have known what to capture in a patent. We tried to capture everything and that gets you a lot of push back from the patent office.”

Her advice for new entrepreneurs is to give plenty of thought to their business model and what they want to sell. “From there, make sure they patent the most relevant thing for making that sale, and once they know what they should patent, try working with a flat fee group like Run 8 Patent Group, a patent group that caters to startups.”

In preparing to work with an attorney, she says clear communication is the key. “Your legal group can’t help you if you don’t have clear drawings, images and thoughts about your investment.”

It’s also good for an innovator or entrepreneur to “make sure they understand the patenting process or they will end up spending a lot of extra money,” she cautions. “It can take years for your patent, and if you aren’t sure where you are in the process, you may not budget properly to complete the process. 


Despina Papadopoulos is founder and CEO of Principled Design, a design and development studio based in New York City specializing in wearable technology and e-textile solutions.

Despina Papadopoulos didn’t realize, in the early stages of her company, that IP protection is a long process, and it’s one that has different stages. “We were lucky to have two great lawyers, one corporate and one patent lawyer, who really understood our work and were able to guide us and represent us when we were having conversations around partnerships and sharing IP and when we were filing for patents,” she says. “Finding the right people, that you can connect with and that really understand what your work is about is crucial, as it can be a stressful process that has many different facets (business, legal, the market and so forth).

Advice for a new entrepreneur she thought was a great question, but a hard one. “The main thing is to have resilience,” she says. “Really believe in your product or invention and understand where it fits in the overall ecosystem, which means understanding the market, partnerships you can make and finding trusted collaborators that will help you bring your product to market. Having a good roadmap on how to go from prototype to production is very important, as well as testing all aspects of your product at each step of the process.”

To get the best support from an attorney, “Do your homework,” she says. “Look for what is already filled in terms of IP, understand the process, the language used, be as clear as possible about the innovation, both in terms of technical detail and market opportunity.

“At the end of the day only you know how great your invention is and all the details, and the better you can communicate them to the legal team, the better they can represent you,” she says. “You can make more informed decisions and have a sense of the road ahead.

“As the space we operate in (wearable technology and e-textiles) is rather complex from an IP point of view and demands understanding of various disciplines, it is important to be able to communicate to the nuances of the innovation. Having said that, a good attorney is essential and in important part of the team.”


Matt Kolmes is CEO of VOLT Smart Yarns, a division of Supreme Corp., a producer of highly conductive yarn for smart textiles. The company is based in Conover, N.C.

Matt Kolmes, CEO of VOLT Smart Yarns and Supreme Corp. since 2014, has something of an advantage. He was first an intellectual property law attorney. He closed his law practice in 2007, but he’s still in a unique position to offer advice to innovators in the textile industry.

First things first: “Even if you are on a tight budget, file that Provisional application immediately before you show your idea to anyone, or talk about it with anyone,” he cautions. “Then always leave 50 percent of the invention a trade secret so that when the patent runs out your idea cannot be duplicated.”

But “only protect what is protectable,” he says. “If you made something new and great, but it is really simple to copy, you probably do not want to file for patents everywhere on it, unless you have the capital, and the intention to defend that invention.”

Kolmes also urges entrepreneurs to do their homework in preparation for working with an attorney. “Have all data, testing, diagrams, photos prepared in advance,” he says. “Be ready with a Dropbox link with all the collateral ready to go. Be responsive to your lawyer’s requests for additional documents and or testing. As an owner and inventor you need to know everything you can about the process.  When you leave it up to someone else, even a highly competent attorney can only ask you your intentions, and give you advice.  They cannot make up your mind for you.

“Sometimes you get a rejection, especially in a foreign jurisdiction and it is the same application that was granted in the USA and in other places.  Listen carefully to what the foreign attorney is saying and be flexible. Sometimes what is novel on one jurisdiction is considered obvious in another. Do not throw good money after bad. If you are striking out overseas, sometimes you just have to walk away and call it a day.”

Should you find yourself in an IP law dispute, it’s good to know that there are law firms that will take an IP law dispute case on contingency, “if you have a really good case,” he says. “There are not a lot of them, but there are some out there that will, if you have documentation and evidence of your claim. People always perceive that you can’t fight a ‘Goliath,’ but I also know it to be true that Goliaths sometimes fall from a well-placed rock, or a good case in the hands of a competent plaintiff’s attorney.”

Kolmes adds that his company, Supreme Corp., has 95 current patents and another 15 pending, an IP portfolio that he has been overseeing since 2009.

 

Janet Preus is senior editor of Advanced Textiles Source. She can be reached at jlpreus@ifai.com.

Part II of “IP law for innovators” and an article by patent attorney Mareesa Frederick will be available on this site February 26.