Patent, Trademark & Copyright : Law Office of Kloss, Stenger & LoTempio

What Inventors Need to Know...

Tom Demitry is an entrepreneur, an inventor, a salesman, a marketer, a man of ideas and as he will tell you first and foremost a father and a man of God. He is constantly coming up with new ideas and new ways to reinvent himself. His passion and enthusiasm are endless.

I met Tom about 10 years ago when I first became a patent attorney and he was looking for someone to help him file a patent application and get a patent for his invention, the PaintMat (PDF). Little did he know that he was my first client! It was the beginning of a long term working relationship and friendship.

Although that product never really became a financial success, Tom took the PaintMat idea across the country selling the product he had patented, manufactured and marketed and learned a lot of lessons in the process.

Since then he started a new endeavor selling baseball caps and various styles of hats with a Christian theme and marketing the hats under the registered trademark (.PDF) SpiritDomes®. This time it seems that Tom is on his way.

I thought a blog post about him might give inspiration and guidance to other inventors and entrepreneurs who are starting out. Here are a couple questions and answers from our interview:

How did you establish a national brand and hat line in this difficult economic climate?

I have 30 years experience in the head-wear business and I received my vision in church on one fateful Sunday. I was thinking of ways I could spread the word of God and had an awesome idea that was very unique in the industry. 

The idea is to imprint a quote from scripture on the under-visor of my product and design the artwork for a hat around the particular quote from the bible; a "SpiritDome".

No one in the world was doing this so I wanted to establish my own unique niche. Being different than everyone else is what helped the brand really take off. The key is to be different and it is what our target consumer, the youth of today want to be- unique and different!

What have you done to protect your idea?

I thought the best way to protect my brand was by filing for a registered trademark. I filed a trademark application with the United States Patent and Trademark Office (USPTO) through KlossLaw and SpiritDomes was a registered trademark within one year of filing. I believe a registered trademark is the best protection available because no one can ever use it in business. It's also versatile in that I can create product line extensions with the brand and the new products would carry the same protection.

What else do you do to build brand recognition?

I've always felt that if a brand was started at the grassroots level and done consistently over a long period of time, that would be the greatest protection of all. Next, all consistent marketing done to promote building the brand such as signage, promo cards, websites, Twitter, facebook, Linkedin, labels, etc. helps to shape the brand properly as well. What's great about the times we live in is that network marketing to get the word out is affordable and effective. The internet is amazing!

Another thing we're doing is partnering with producers, directors, musicians, speakers, etc. to spread the word about our brand.  The value of word of mouth really adds up. We also label our products with SpiritDomes.com to promote our website so that the public knows of and has a direct link to us. The web page is the easiest way to learn more about what we do.

What is the value of Trademark and brand recognition?

Building a profitable company is what we all try to do. The company builds equity in assets like inventory, real property and cash which have a value or net worth. The beautiful thing about brand building is that the brand name itself has what you call Brand Equity. The brand and goodwill in the company itself has value that can be sold for profit depending how famous it becomes.  Just like real-estate appreciates in value when people recognize the great location, the brand gains in value as more people know and recognize the name and associate it with a company that provides a quality product.

"A patent is limited by time but a trademark can last forever if the brand is built consistently and properly over time."

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Recently I met with Ron Roberts, President of Rolite Manufacturing. Rolite is a roll forming manufacturer that produces metal products of all shapes and sizes for large and small companies.

I toured their manufacturing facility and was amazed at how a compact roll of sheet metal can be stretched, cut, pounded, bent, stamped, shaped and sized into a variety of configurations.

Take a look at the video I uploaded to Youtube of all the different ways they can manufacture metal products.

Ron told me that every product they make must be made to have the right  "Form, Fit and Function."

• Form: the look of the product projects the presentation the inventor intends;
• Fit: the product meets all the requirements necessary; and
• Function: the product must work the way it was intended.

Here are few questions and answers from my interview with him:

Can you help inventors make prototypes to use as a sales prop?

Many times we’re able to work with the inventor and help figure out the manufacturing details. We can gear their idea to existing equipment and help them lower startup costs. We help inventors in the process of manufacturing, we call it "engineering time" it's kind of like a research and development of the product without actually stepping on the toes of the inventor.

Our goal is to have cheaper startup costs for the inventor. Truthfully, independent, individual inventors are a small percentage of our business. Typically they don't have the financial wherewithal and know how to take it to the next level and we try to help them bridge the gap.

What are some of the biggest problems that inventors have that you are able to resolve?

We think outside the box, we have tooling and the presses that are capable of shaping and bending any piece of sheet metal into almost any position. We try to do it as simple as possible and we often design ways to make products inexpensively as possible. We also work with other companies to make a product, for example we've recently made a metal product which needed an attachment combination of a piece of cloth material and small brass fittings which were produced by outside sources and attached by our company.

What can you do to make a salable product better than a company located overseas?

Others need to find a manufacturer overseas in places like China because of cheap labor. We can do it better than an overseas company because we can:

• Produce a high quality product (Assembly and manufacturing is done locally).
• Avoid Secondary and third operators.
• Provide a short response time to customers problems and queries.
• Take care of quality issues as soon as they happen. If you're using somebody in China and there's a problem they would say “maybe we'll implement it on the next run” with us we fix it now.
• We deliver on time because there is not an ocean we have to ship across.
• If there's a legal problem outside the USA what legal recourse do you really have?

What considerations do you take into account before making a product?

"What are the fixed costs? How much is it to make? Can it be sold for a profit at every level? If not we can’t make it."

There are a five tiers of cost on any product:

1. Manufacturer
2. Distribution representative
3. Wholesaler
4. Retailer
5. Final Customer cost

What steps do you take to preserve the rights of your clients?

"With us it is mum's the word, we do our best to keep everything confidential. We have an in-house Nondisclosure Agreement (NDA) which is fair and protects both the inventor and our company. If the inventor has their own NDA we will sign it if it is fair and reasonable."

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What is happening with regard to the Patent Reform Act of 2010?

Recently I asked this and other questions to first term Congressman Chris Lee, who represents New York's 26th Congressional District.

I think it's important to note that Chris Lee, true to his pro-entrepreneurial stance, has taken the initiative to advocate for Research and Development by introducing legislation in Congress. As evidence of his commitment to inventors and the need to continue to develop new products and technologies, he introduced legislation that would make the R&D tax credit permanent (H.R. 1545).

Here are a few questions and answers from the interview with Congressman Lee:

1. What will it take to get the patent reform bill through both the House and the Senate?

Versions of the bill have been introduced in both the House and Senate (H.R. 1260 in the House, S.515 in the Senate). The Senate Judiciary Committee has passed the bill and the House Judiciary Committee has held hearings on it. It will need to pass both committees and both chambers of Congress for it to be sent to the president.

2. Do you think it can be accomplished anytime soon?

It looks like the bill is moving forward. On March 4, 2010, Senators Patrick Leahy (D-VT), Jeff Sessions (R-AL), Orrin Hatch (R-UT), Chuck Schumer (D-NY), Jon Kyl (R-AZ), and Ted Kaufman (D-DE) released a statement saying that they’re moving forward on an agreement that, according to the release, “makes changes to first-window post-grant review, inter partes review, willfulness, interlocutory appeals, Patent and Trademark Office funding, and supplemental examinations.” According to the Senators, the proposed “agreement retains several critical improvements in the Committee-reported bill, including the transition to a first-inventor-to-file system, the gatekeeper compromise on damages, the new district court pilot program, and more.”

3. Does the entire bill have to pass or can parts of it be pushed through?

The Chairmen of the House and Judiciary Committees can choose to move forward the entire bill or split it into parts, however an identical version of the bill must be passed by both the House and the Senate. According to the March 4 statement, it appears as though the Senate Manager’s Amendment makes changes to makes changes to first-window post-grant review, inter partes review, willfulness, interlocutory appeals, Patent and Trademark Office funding, and supplemental examinations as they are stated in the Senate-introduced version of the bill.

4. What do you think about patent reform and its importance in protecting and advancing technology in the United States and the world?

Having run a manufacturing business before coming to Congress, I understand how much time, money, and resources are required to develop new products and technologies. I fully understand the need to protect the ownership rights for the development of these items. Without an adequate time frame to recoup your investment the development of Intellectual property could be dramatically curtailed.

It remains to be seen what the final version of the bill will be, should it be brought before the House for a vote. In the United States, we need to continue to develop new products and technologies, and I’ve introduced legislation that would make the R&D tax credit permanent (H.R. 1545). If individuals and companies invest in these technologies they must be able to realize the benefits of their investments. Therefore, I believe it’s critical that any patent reform legislation must effectively protect the ownership of patents. 

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What inventors need to know...

How does an inventor take a good idea and then develop it into a new product? Recently I asked this and other questions relating to invention development to the affable forward thinking Justin Aiello. His company Aiello Designs takes ideas and turns them into reality. Here are a few questions and answers from the interview:

What do you do?

In general, I help independent inventors, start-ups and small companies take new ideas from concept to production. This includes Design, Engineering, Prototypes and Production Sourcing. I do not offer services with regards to funding, sales, marketing or licensing.

What makes an idea good or bad?

"I have seen great ideas fail and bad ideas succeed in the marketplace. What makes a successful product is good marketing, sales, design and manufacturing. What is right in one case is not necessarily right in another. You know you are right if it makes money and wrong if it doesn't."

How much information do you need to create a working prototype of product?

People come to me from all walks of life with different levels of expertise. Good ideas are not limited to the experts. Here are a few examples:

• The inventor comes in with just the idea. The inventor recognizes a problem and does not have an answer. Our company figures out a solution and designs a product to solve the problem.
• The inventor has a detailed drawing of a patented or patent pending product and we make a prototype.
• The inventor has a prototype and we make additional refinements. The process of developing a prototype is an ongoing series of tests and refinements.
• The inventor has a prototype completed without any need for refinements and we work out the mass manufacturing details.

How can the independent inventor with a new idea without "deep pockets" capitalize on a good idea?

I have found an independent inventor's path is somewhat limited:

1. Manufacture and sell it through a buyer to a mass retailer. Here the inventor will likely need investors.
2. Obtain a royalty agreement and license the rights to sell the product. Here, the inventor is in a better bargaining position if they possess a patented or patent pending product and a prototype.

"If you invented a new "Pet Nail Clipper" then go to the aisle in the pet store where they are selling these devices and investigate each one. Learn the names of 10-20 companies that will be able to produce, distribute and manufacture your product. Find out who in the company you need to talk to in order to sell your idea. Get yourself in the door with a patented or patent pending product and a prototype and then maybe you will make a deal."

How would you describe the ideal client/inventor candidate for product development?

• 50+ years old, having the "entrepreneurial spirit."
• Has high disposable income.
• Not risk adverse.
• A person that can enjoy the process. Even if the product doesn't sell, they had fun with it.
• Good business contacts. The inventor needs to understand one person cannot do everything. You need help with manufacturing, distribution and marketing. "An inventor who has an in at QVC or brother-in-law who is a buyer at WalMart has a better chance to succeed."
• Good business sense:  a. Inventor knows where they want to go with a product;
                                               b. There is a business plan to get there (road map); and
                                               c. Knows when to call it quits. "Don't throw good money after bad."

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As a father of four, Richard P. Conway was helping one of his children learn how to ride a bike and while trying to hold on and run behind the bicycle, he thought, "there has to be a better way."

From there his journey as an Inventor to new product developer began. He has since received a United States Patent, registered the trademark (pdf) and brought his first invention the "Balance Buddy" to almost every national retailer in the country. Now he is helping other inventors do the same thing. To share his success, Richard founded, Ingenious Products Inc. to help other inventors bring their ideas to market.

He agrees it wasn't an easy road and he learned a lot of lessons the hard way, that's why he hopes to help other inventors avoid some of the same pitfalls. He graciously agreed to answer a few questions about what inventors need to know...

Tell me a little about you and how did you get started as an inventor? 

I got started solving common problems around the home. I was so excited and passionate about my inventions I immediately began presenting my inventions to companies that could sell my product. I quickly realized this was a huge error because I had not taken the necessary steps to properly protect my idea from being ripped off by others. That is exactly what happened. Because of those bad experiences.I now make sure each product has the necessary protection.

What is the first thing a new inventor should consider? 

I encourage all inventors to first take a hard and detailed look at their invention. At the idea stage it is very critical to determine there is a  large enough market/need to sell the product. Without  demand there is no retail/license opportunity. Most inventors rush into this process because of their passion and enthusiasm and overlook the real importance of their target market.  Remember it is all about selling your invention! Long-term financial success is market dependent. 

What should a new inventor do after they have determined the target market?

Determine sale price. Before a product can be manufactured you must estimate early on whether your target market can afford to purchase the product.

Determine the cost to manufacture the product. The cost estimate needs to be as accurate as possible. Underestimating the cost will lead to financial ruin! Some factors that enter into the equation and are often over looked by inventors: manufacturing materials; assembly; customs charges; freight-case boxes; barcodes-graphics; work-packaging design, packaging costs; inventory; warehousing; processing orders; fulfillment; logistics and much more…..

What are things an inventor should avoid? 

Most inventors rush into this process because of their excitement and passion. STOP everything and seek professional advice from a patent attorney first. This professional will be able to give you valuable insight and guidance early on whether your invention has initial merit. Then the inventor must answer some very critical questions: Who is going to manufacture their product? Can I afford to have the product made? How am I to sell the product? Is the target market big enough to make selling it worth while? What is the true cost of the invention? Will retailers be interested in the product? Can retailers make money selling the product? And much more…. 

How did you finance your business, and how have your finances changed as you've grown your business?

I was be able financed my business initially through my personal savings however it took much more than I had ever expected. Like most inventors capital is limited so deciding early on the direction you want to go is very critical to be successful in the whole process.

 There are only 3 options to this step: 

1. You fund the process totally by yourself (including family and friends) 
2. You sell or license your invention to a company that specifically handles that type of product for a very modest or low royalty. 
3. You partner with a company that has a variety of products and is interested in adding your invention /product to the products it currently sells. This is basically a hybrid of option1 &2. Here you still get a royalty however it is typically significantly higher.

Why is it higher you should ask? It is really quite simple, the company is interested in expanding into a new product segment/market to increase their sales and take market share from current competitors. Make no mistake about it, these are the only 3 options available. 

Are you selling your products, and what sorts of licensing deals do you have in place?

Yes, our company focuses on seeking out new innovative products that are potentially in demand in large markets. Product demand first and foremost. We nearly exclusively prefer to partner with inventors and their products where we provide the depth and resources needed to develop and sell a product in national and international markets. We  have placed products with most of the major national retailers targeted to the mainstream consumer. We seldom target niche markets or the specialty retail segment.

For for the rest of the interview, see after the jump.

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What Inventors Need to Know...

An inventor does not need a prototype to file for patent protection. Many inventors incorrectly believe they need a working prototype in order to file an application for a patent. The law requires that a patent application include a description of the invention so that somebody skilled in the art can make and use it. However, prototypes can be useful to prove whether the invention will work properly.

I spoke with Merry R. Constantino, a former Product Design Manager at Fisher-Price and currently the president of a "new product development company" called Product Logic and she said that,

A common problem when making a prototype after a patent application has been filed, is that all of the bugs have not been worked out of the product and often the 'end product' that we produce is not the same thing that was described in the patent.

Inventors should know that no "new matter" can be added to a patent application after it is filed.

There are many manufacturing and marketing factors that an inventor should consider in the initial idea stage. Here are a few of the things that Product Logic brainstorms when making a prototype:

• Human Factors/Ergonomics
• How can it be made with the fewest possible number of parts?
• What is best way to mass produce (labor sensitive)?
• What is a cost-effective way to produce?
• Can it be made in a way that others cannot easily copy?
• What is the best material it should be made from?

Another thing that an inventor should know is that when working to prepare a prototype with a new product development company is that if the company makes changes which improve the product it is possible that the company becomes a co-inventor.

Merry stated that "our company assigns all rights over to the inventor for any product that we work on." It's important to understand that when an inventor retains the services of  a company to produce a prototype there is a risk of loss of intellectual property rights unless a written assignment of rights document is prepared and executed by the parties.

If an inventor plans to license or sell their "patent rights" to an invention,  it may be necessary to build a prototype to demonstrate  to a potential licensee how great it works. In order to mass produce a product it may be necessary to design a working prototype as a model of reference for the manufacturer to duplicate.

Although an inventor does not need a prototype to get a patent, working out all the potential manufacturing issues before filing appears to be a logical step in the invention process.

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