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Advice for understanding IP law

Advanced Textiles, Markets | April 23, 2019 | By:

Advice for innovators from innovators.

by Janet Preus

Editor’s note: Select entrepreneurs were asked to answer questions about intellectual property (IP) law and their experiences with it. Those interviewed are at various stages in their careers.

Questions asked:

  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?
Lumenus is a start-up based in Los Angeles that develops smart technology for LED-lit turn signals and brake lights on clothing and backpacks. Photo: Lumenus.

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

Jeremy Wallis a young entrepreneur who has had quite a bit of attention with his technology innovations for smart clothing and gear; he’s also had his share of struggles along the learning curve with launching a start-up. 

“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 for Wall is the expense involved with protecting 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 [patent] in September 2015, our business was so much different than it is today,” Wall says. Because of that, the company has had to pay to have its patent lawyer make changes—an expense that might 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?”

When you decide to pursue IP protection, Wall says 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,” he says. “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.”

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

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.

Maddy Maxeyhas been in the smart products business a bit longer than Wall, but she, too, says, “I wish I would have known how expensive it can be!” She says her company has also 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,” she says. “We tried to capture everything, and that gets you a lot of pushback 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,” she says, “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 Run8 Patent Group, a patent group that caters to start-ups.”

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.”

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 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.”

She would tell new entrepreneurs to have resilience. “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,” Papadopoulos says. “Having a good road map 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.

“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.”

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

Matt Kolmes has something of an advantage: He began his career as an intellectual property law attorney. He closed his law practice in 2007, but is 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.” 

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.

A U.S. Air Force field training exercise includes simulated medical evacuations in extreme cold weather, which demands clothing and gear that will protect in these conditions, such as a cold-weather boot developed by Propel LLC. Photo: Senior Airman J. T. Armstrong, U.S. Air Force.

Clare King is president of Pawtucket, R.I.-based Propel LLC, a women-owned and run company that develops, sells and markets innovative, textile-driven technologies. 

Clare King had the advantage of once working for a company that had two patent attorneys in-house. Working closely with one in particular helped her to “understand the landscape.” 

Her company does a lot of work for the U.S. military. “Working with DoD [Department of Defense], you get a lot of training,” she says. But patenting is only one part of protecting your IP, and being a part of a Navy transition program has helped her understand a variety of IP issues: “What to make public and what not to, the difference between trade secrets, knowing how and what’s worth patenting” are among them. 

“You don’t just hand it over to an attorney,” she says. There are patent attorneys who take what you have and figure out how to patent it; others will figure out how to best maintain what you have to create the greatest value for the company. 

“Patent law is very different from any other way of thinking,” she says, and patent lawyers are expensive. “The more you can learn about how a patent is constructed, the less expensive it will be.” 

It’s also important to teach employees what IP is and how to handle it. In fact, patenting is only one part in how a company manages and protects IP. “If an employee leaves, you need to be careful that they don’t take it with them,” she says. 

Her company recently hired a new IP firm that will come in once a quarter and stay a half-day. “It’s like a time-out in your business; it makes you think differently about where the business might go next and how we would align the business, based on what we should or should not be doing,” she says.

It’s a good time to be an entrepreneur in this industry, she says. “There’s an explosion in R&D, particularly in the high-end specialty textiles business. It’s pretty exciting.” 

Janet Preus is senior editor of Advanced Textiles Source. 

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