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Archive for the ‘Intellectual Property’ Category

How a Cool Food Product Lost an Important Marketing Advantage-and Died

Saturday, August 15th, 2009

by: Geoff Ficke
Recently I was interviewed by a national small business magazine about a topic that is all too real; and very problematic for small businessmen. The author of the story was trying to solve a simple problem that many of us have faced, and face every day. How to protect a product concept that cannot be protected by patents or copyrights? Here is the problem and some thoughts on the best ways to protect your work product.

The product in question in this case was a cake. A simple food product that virtually anyone can make by following the instructions on a cake batter box is not something that typically enjoys patent protection. This cake was a bit unique, however. The cake’s designer had crafted a cake in the shape of a baby diaper and posited the delicacy as a morsel to be consumed at baby showers. Even with the diaper profile and the baby shower franchise patent attorneys had advised that there was no legal protection to be had to keep competitors away from possible duplicity.

Our cake entrepreneur began to sell the diaper/baby shower cakes in his local area. He enjoyed some initial success until, lo and behold, one day he walked into the bakery department of a store that carried his food product and next to his confections was a cake in almost the same design as his diaper shaped concoction. He was immediately overcome by a series of emotions ranging from mad to very scared. What could he do to protect the franchise that he felt he had created?

I have never met the cake designer who was now in this conundrum. My only knowledge of the situation was conveyed to me by the lady reporter assembling the story for her monthly publication. However, I have known many entrepreneurs, inventors and small businesses that have found themselves in similar spots.

The reporter wanted to know what marketing steps, strategies or options the cake maker could have taken to protect his first to market advantage. Was it too late to re-establish his advantageous position as the creator of the baby shower confection?

In the consumer product marketplace, if a product is unique and successful, it will almost always be duplicated in some form or other. The goal of the copycat is to get as close to the original as possible without infringing on patents or trademarks. The commercial goal of any serious product cloner is to sponge off the consumer awareness and excitement created by the original product and siphon revenues.
Food products are particularly difficult to formally protect. Secret recipes and trade secrets are often utilized to create a mystery barrier between the creator/owner and the idea thief seeking to replicate the taste and appearance of a foodstuff. The best method to utilize in protecting a products position in the marketplace is to develop a pre-launch marketing strategy that closes the door on competitors as much as possible by enhancing the natural “first to market advantage” that any original item enjoys.

My marketing consulting firm is regularly approached by product developers who have web-sites, appear on local television and radio and have promotional articles written about them and their ideas. They very often have no inventory, no sales model, no business plan and no source of supply fully vetted and ready to manufacture. They are simply advising the public, and prey artists that are always prowling for new opportunities, that they are ripe for exploitation. They are full of themselves and only shoot off their big toe while embellishing a product that is not commercially available.

The cake designer in question tried to run before he was ready to walk. He placed an unprotected design in the marketplace and allowed competitors to pounce. His retail footprint was too small to enable him to brand his cake design as the “Cadillac” of the category, a category that he had created and should have been able to reap long term benefits from.

The wise course of action would have been to pre-sell the marketplace with a coordinated, scheduled product launch date. Book orders from as many retailers as possible in the marketplace. Give the retailers a sell-through program, sampling, sales collateral, signs, coupons, a small cable television media buy, and media publicity generated through targeted press releases announcing the stores and dates the shower cakes would be available. A customized decoration feature could also be utilized to enhance the unique features of the service. Up-sell products such as cookies and cupcakes might have provided the brand with more attractive retail potential and further differentiate the cakes from competitors.

These and other steps should have been taken BEFORE the entrepreneur introduced his product to consumers and competitors. If the market had been pierced with multi-store distribution and a small, but vigorous support program, the “alpha” inventor would have been cemented as “the” vendor in town for shower cakes. Expansion to wedding showers and other special event parties through themed cakes were natural line extensions available to keep the business growing, creatively fresh and identifying significant unique points of difference from the copy cats.

Rather than owning the towns market for shower cakes, the creator of the concept now finds himself playing second fiddle to a larger baker. He is losing shelf space and distribution points. He is discouraged and frantic.

“You only get one chance to make a great first impression” is not just words, but a hard fact. Entrepreneurs must move aggressively to strike the market before competitors. However, they must move with a plan that covers all contingencies and makes them appear larger, stronger and more virile than they might actually be. Remember David was the underdog to Goliath, but he was able to slay the giant using guile and stealth. Successful entrepreneur’s must think more like David.

The “Intermittent Wiper” Lesson For Creating Convergent Inventions

Friday, October 10th, 2008

by: Geoff Ficke

This weekend my wife and I took in a movie. The film was preceded by a movie trailer touting a soon to be released production based on the invention of the “intermittent windshield wiper”. Such a topic for a big budget Hollywood movie would seem to be awfully mundane. However, the trailer was a very interesting glimpse of a subject that has deep meaning for every entrepreneur, inventor or dreamer.

Robert Kearns was a university professor and an engineer with a passion for tinkering. He had lost the sight in one eye when a champagne cork had popped squarely into his eye. In 1963, while driving in a heavy rainstorm he noticed that the steady, constant pace of the wiper blades sweeping water from the windshield caused his sight to lose focus.

At that time windshield wipers only worked at a single rate of speed. As mist, or light rain occurred the driver had to manually tune off and on the unit to control the speed of the blades. Kearns had stumbled into an opportunity to address a fairly basic, but needed improvement to an already existing automobile safety feature.

At home in his workshop, Mr. Kearns created a prototype of his “intermittent windshield wiper” system. Once perfected, he filed for patents and began to approach the major American car companies seeking to license his invention. He demonstrated the unit for Chrysler and Ford, and provided each with proprietary data on his device. After internal discussion both advised Robert Kearns that his device was of no interest and they would pass on the opportunity to license.

Much to Mr. Kearns shock and chagrin, he was amazed to discover that in 1969 the Ford Motor Company began to sell an “intermittent windshield wiper” as a featured accessory on their new models. The technology was remarkably similar to his prior art. Thus began a legal odyssey that would consume Robert Kearns life, his fortune and his health.

This is where this tale has ongoing importance to anyone seeking to commercialize a new product or invention. The invention of the original mechanized windshield wiper was the birth of a “divergent product”. The invention of the telephone, the television, the radio, or the internal combustion engine gave birth to “divergent products”. They created alpha opportunities. The addition of color to televisions, answering machines to telephones and clocks to radios are examples of “convergent products”. “Convergent products” are simple product enhancements that are often extremely valuable as wealth generators. Robert Kearns “intermittent windshield wiper” is a wonderful example of a “convergent product’.

He had not invented the windshield wiper but had created simple performance elements that motorists found would add safety, comfort and simplicity to driving in varied climatic conditions. Unfortunately, he had not fully insulated his invention from predatory commercial vultures.

Patent law is an extremely specific practice. There is a reason patent attorney’s typically handle no other categories of legal work. The Kearns vs. Ford Motor Company patent suit was arduous and tortured. The patent law principal of “obviousness” was the center of the dispute. Ford claimed that the Kearns invention was “obvious”, a device made up of pre-existing components. Simply put, Kearns argued that it was his organization of these elements that was truly novel and that his unit was not “obvious” until he invented it.

It took until 1995 for Robert Kearns to prevail. The case is considered a landmark. The instance of a single person taking on a huge, international corporate behemoth, and winning, was amazing, exciting and myth shattering. Ford paid Mr. Kearns $30 million. Robert Kearns spent $10 million on legal fees to fight the case to successful conclusion.

There are many lessons here for inventors seeking to commercialize their ideas and products.

  • Protect your intellectual property

              Utilize Non-Disclosure Agreements

              Seek professional legal assistance to file patents, trademarks, copyright

              File Trade Secrets

  • Lay down a paper trail

             Detail every meeting and phone call with a written re-cap to each person attending

Save every dated receipt for FedEx, phone log, etc.

  • Build a production quality, working prototype of the invention-DO NOT CUT CORNERS HERE!
  • Include 3D Computer Assisted Design Art (CAD) with all legal filings
  • Always assume that others are working on similar inventions and protect your interests

We look at hundreds of inventions and new product submissions each year in our consulting business. A fair percentage of these presentations have real commercial value and could be successfully marketed. Most however, will never see a store shelf because the creator will not take appropriate steps to protect and commercialize their opportunity.

Robert Kearns did. He had a simple idea for a “convergent product”. He took appropriate steps to protect his invention. When he was ripped off, he took up the fight. Because of his success and courage, it is now much easier to fight and win against the “big guys”.

Each of us sees or experiences opportunities almost everyday, in our work or personal environment. Most of us aren’t paying attention or do not recognize opportunity when it appears. For the few that do, and have the courage to act, will be rewarded by a marketplace that craves new products and concepts.

I can not wait to see the movie.

Patents, Trademarks, Copyrights, Trade Secrets Protect Your Invention

Thursday, October 9th, 2008

by: Geoff Ficke

Patent numbers are issued sequentially, beginning with the number one. Patent number one was issued to Samuel Hopkins on July 31,1790. It took 75 years for the United States Patent and Trademark Office (USPTO) to issue patent number 1,000,000. Patent number 7,000,000 was issued February 14, 2006. It took only seven years for the USPTO to move from issuance of patent number 6,000,000 to 7,000,000.

What does this mean? Simply, there is more creativity now that at any time in history. The old saw that “there is nothing new” is completely wrong. There has never been so many people and entities creating novel, unique products, technology and services, and so driven to commercialize these inventions. More patents and entrepreneurs attempting to market their products is indicative that there is more competition for successful placement.

It is essential that entrepreneur’s protect their inventions. This is a form of insurance. To attempt to market an invention without covering the work with the shield of patent, trademark, copyright or trade secret protection indicates a frivolous approach that will not succeed. Investors, licensees, and investors demand the protection that these intellectual property products afford. Even if the entrepreneur is going to self-market the invention, protection is essential in order to fend off competition.

A pharmacist in Atlanta, at the beginning of the 20th century, created a formula for syrup that he sold at the soda fountain in his pharmacy. John Pemberton mixed the syrup with soda water and sold drinks of the concoction as a wellness beverage to cure aches and pains. Mr. Pemberton had created Coca-Cola. He never anticipated that Coke would become an international comfort product, the soft drink. The smartest thing John Pemberton ever did, besides inventing Coca-Cola, was to handle the secret formula for the syrup as a Trade Secret. To this day, the Coca-Cola Bottling Company zealously protects the ingredients and chemistry involved in producing the base syrup that is the essence of classic Coca-Cola.

Big Boy Restaurants protects the recipe for the tartar sauce that goes on their sandwiches, and that many customers buy by the bottle and take home. McDonalds doggedly protects the process their restaurants utilize to cut, cook and season their French-fries. William Wrigley was just as manic in keeping secret his technique for delivering powerfully flavored, long lasting, chewing gum.

Trade Secrets typically are not able to secure patent protections. The novelty of the Trade Secret is in the blending, chemistry or chronology utilized to deliver the finished product. If you have such a recipe you will want to keep this knowledge very near, as it can become very dear. If the public knew the formula for Coca-Cola, quite possibly there would be a lot of consumers keen to blend their own drink at home. Coke would not like that!

If your product has the potential and necessity to become a Trade Secret you will want to follow several very basic steps. First, write down every event related to the development of the formula. Keep a logbook with the data, dates and details of your work. As you finalize your development work memorialize all of the steps essential to delivering the finished product you wish to keep secret in a recipe or summary document. Then store in a very secure place (a safety deposit box, or safe) all of the work product and the recipe or formula.

The Trade Secret gains incredible asset value when your product becomes a market success. Selling a business built around a fully protected Trade Secret exponentially increases the value of the company. Coca-Cola, Betty Crocker, Duncan Hines, Oil of Olay, Schlitz, Dom Perignon, Ben and Jerry’s and Estee Lauder’s Youth Dew are only a few examples of famous brands built around a Trade Secret.

A Trademark is important in developing brand awareness for a product. Use a Patent Attorney when approaching the highly specialized area of seeking Trademark protection. I have never seen an entrepreneur successfully navigate the very complex workings of the USPTO. I HAVE seen many attempts to handle the process, all resulting in complete failure.

The content of a Trademark can include a customized, identifying icon, stylized brand name and a branding statement. Nike uses the famous slash (icon) the Company’s name (recognizable stylized font) and “Just Do It!” (branding statement). Include all of the elements that the public will recognize in your Trademark application.

Look around at local, regional, national and international companies and brands that you see every day. Pat’s Cheese Steaks in Philadelphia is a local business that has gained great fame and brand recognition and protects their brand with a trademark. It is a destination for visitors to Philly. Chanel, the French haute couture brand, is internationally revered and the classic “C” that adorns every unit of Chanel product is one of the most recognized brand icons in the world. Truly Nolen, the national pest removal service, trademarks the mouse ears seen on every piece of sales collateral, advertisement and service vehicle the Company uses.

Owning a Trademark confers an obligation to police and protect the assigned mark. The inclusion of ™ on every unit of product is essential. Again, consult an attorney. Trademarks can inadvertently become vacated and lost.

Copyrights are utilized to protect intellectual property. Movie content, poetry, music, books and plays are copyrighted. We have worked with clients on a number of video and board games. We always copyright the rules and/or the play features of the game.

Recently, Dan Brown, the writer of the wildly successful book the “The Da Vinci Code”, was suited for plagiarism by the British authors of a book about the search for the Holy Grail. The search for the Holy Grail is central to the plot of the “The Da Vinci Code”. There are full library shelves devoted to the search for the mystical Holy Grail. And yet, during the run-up to the movie release of “The Da Vinci Code” a legal action involving this intellectual property was commenced. Brown and his publisher vigorously defended their rights under their Copyright protection. They won full vindication from the court.

Producers of intellectual content properties (movie studios, record labels, book publishers) are very hesitant to accept unsolicited proposals for review. “The Da Vinci Code” saga is the reason. Legal action is rife in the area of intellectual property. We all remember things that we saw, heard or experienced from the distant, but dim past. Regurgitating a variation of that experience may find its way to the written page. Voila, was this material plagiarized?

Mattel and Hasbro will not review ANY outside toy submissions. Is it not coincidental that there has not been a breakthrough toy introduction in years from Hasbro or Mattel? This is one of the unfortunate byproducts of a litigious society, the limits placed on needed innovations. Protect your intellectual property with a Copyright.

I recommend to my clients, before spending a dime on a patent attorney, that they perform a cursory search at the USPTO.Gov website by providing all obvious key words applicable to their invention. If a number of patented products come up, and they are spot-on their idea, the item might not be a candidate for a filing. If the field seems open and clean, then I advise hiring the patent attorney to conduct a professional, thorough search. The in-depth search will confirm the potential for successfully obtaining patent protection.

Patents are the preferred style of protection for most inventors and entrepreneurs. Patents (utility) are very powerful agents of defense against predators, thieves and knock off artists. Not to be a boor, but, again, utilize the services of a patent attorney. I am always amazed and amused at how many people think they can successfully write, provide highly specific 3-D CAD art, file, handle USPTO objections and move the patent through the labyrinth of a Federal Government bureaucracy. Go Figure! They waste time and money, and usually negate any opportunity to have a re-filed patent successfully obtain a patent number.

The Provisional Patent filing is basically a letter that is placed on file with the USPTO. The Provisional filing advises the USPTO of the description of the product you are attempting to develop. The letter has a one-year life cycle and must be extended with a formal patent filing (Utility or Design) or the product is vacated forever.

We utilize the Provisional Patent as a fully legal way to state that a product in early stage development is Patent Pending. This filing is also very inexpensive relative to a design or utility patent. A Provisional Patent filing also enables the entrepreneur to have a one year time window to test and gauge market response to the invention. If reaction is positive, then it reinforces the necessity of continuing to devote assets to further development of the opportunity.

The Design Patent simply covers art features noted in the application. This is the weakest form of patent protection. A competitor only needs to change a design element, cosmetic feature or add an artisan variant to overcome a Design Patent. However, for products that have real commercial potential, but can not overcome prior, existing product art to obtain a Utility Patent, the Design Patent offers one potentially important benefit: the option to keep a product suspended in ongoing Patent Pending status.

We have done this on a number of occasions. A simple amendment to the initial filing means that a bureaucrat at the USPTO must find the file, pick it up, insert the amended filing detail and re-log the filing. As a result the filing goes to the back of the line and we gain months more Patent Pending protection.

Why go through all of this? When a product is in Patent pending mode it has ultimate protection. When a patent number is issued the clock starts ticking on the effective life of protection and details of the novelty of the patented product become public knowledge. Your product is obviated. It can be amazingly simple for the less than scrupulous knock off artist to engineer around your inventions unique features and benefits.

By keeping a product in Patent pending limbo we keep the features shrouded from any public awareness. This often leads to a first to market advantage and competition is only aware that there is a Patent pending. The added time that the product obtains, to build and extend sales traction, and begin the branding process is exponentially more valuable than the legal fees required to keep adding elementary addenda to the Design filing. You want to be first to market, and have as much time as possible to stand-alone in a market.

The Utility Patent is exceedingly valuable, both as a protective shield against competition and as a business asset. The invention that receives a Utility Patent number from the USPTO is potentially of interest to licensees, partners, investors and venture capital. Most patented products (Utility), however, never make it to market. We often see inventions that are novel, and thus patent possible, but not commercial, or needed, or beneficial. We all know a mad scientist or two, with endless designs, inventions and patents, none of which are ever going to be a market success.

The Utility Patent protects the novel features and benefits that the application describes in great detail. The patent attorney will narrate the unique aspects of your invention. They will also mention other patents near your space but painstakingly note the differences inherent to your invention. In addition, a great deal of effort will be devoted to creating 3-D Computer Assisted Design art that portrays your product from every possible angle and graphically depicts the uniqueness of your product.

Utility Patent filings rarely sail though the USPTO without being challenged. A competent patent attorney often anticipates the weakness in a filing and has a sheath of retorts ready to address the examiners concerns and questions. This re-directs the file back into the bureaucracy at USPTO. I tell my clients that they can expect up to an 18-month wait before receiving notice of the USPTO decision. However, on several complex filings, I have seen the process take up to six years.

Believe me, it is worth the work, the wait and the investment if a successful outcome from the USPTO is achieved. A Utility Patent conveys gravitas. The invention has stood up to the most stringent scrutiny and been accorded the most highly desired verdict: this invention has import.