Lessons from a Small Business on Intellectual Property Protection

Early in the process of designing my first product for manufacturability, I asked for guidance from people who knew more than me. In my first such conversation I was asked if our IP was solid. I remember saying something like “yes, we have that!” And then frantically googling “IP” while on the call. Note… in this context it did not mean my Internet Protocol address, as google suggested.  I eventually figured it out to mean Intellectual Property… and then eventually figured out what that meant. I liked the fact that it suggested I was an Intellectual. And that my inventions were Property that I could Own. All things that massaged my ego.

I am a fashion designer and a dentist. As a basic principle, IP does not typically exist in those worlds. One does not tend to[ patent a shirt design. But one CAN patent the technology behind the fabrication of the shirt, which is a textile engineering process, not fashion. One can not patent a dental procedure, but one CAN patent the tools used in said procedure, which is a mechanical engineering process, not dental. So it has never really been on my radar.

…Until I came up with what I believed to be the best invention in baby proofing ever (echo echo). When anyone invents anything, the amount of thought behind the most minute details, and how they combine to make something that functions as one sets out for it to, leaves one feeling like theirs is an invention that thousands will try to replicate, if they heard even a whisper about the invention (aka paranoia). But that feeling is balanced (sometimes out-balanced) by one’s excitement and impatience in sharing said idea with the world.

At least that’s how it felt for me, with the added eagerness of knowing this invention would benefit the safety of children. And it is this paranoia/impatience that laid the foundation for my IP protection projectory. Though I will say, it took me a while to develop full-scale paranoia.

I recently spoke on a podcast with an IP maven about my experience in brand protection. In this conversation I realized the layers of Intellectual Property Protection I had sought and received. In retrospect, it added up to an onion of knowledge despite being less of an organized and intentional journey than I would have hoped. So I thought I might share my onion of IP protection in the hopes that it might provide some direction on your IPP journey.

Layer 1: NDA (Non-Disclosure Agreement)

I was educated on the importance of an NDA when I meet with my first to-be mentor. While recognizing this was not something he had interest in, he advised me that every conversation on this product going forward should be protected behind an NDA “for your IP protection”, he said. This is when I googled ‘IP’.“People talk”, he said “and the opportunity for them to speak freely leaves your hard work vulnerable to those who have more access to resources than you do right now”. He was right. This was my first taste of feeling IP paranoia.

So I found an NDA online that was applicable to the state in which our company was located. And that NDA would be used about 25 times that year, replacing the name and address of the “disclosing party” as we went.

But there was a moment when I got cocky. We received our first prototype and officially filed our patent application (which is the next layer). I was just given the contact of the owner of a well known brand in the baby product industry, and he had accepted a mentor-type call with me. I was eager to gain insight in to the industry. The conversation was going really well until he asked about my product. It didn’t occur to me he would have interest. I became fairly guarded in detail realizing I did not have him sign an NDA. When he showed excitement for what I was doing and mentioned that baby safety products were not their interest, I opened up a little thinking our newly filed patent application would blanket this call and his excitement would result in further guidance.  Before the call ended he mentioned this might be a product they could be interested in. With restraint, I told him I’d love to share more, and I would send an NDA by email so we could continue the conversation. He mentioned he felt like he had a good grasp of it as we hung up the phone. Which is when my stomach jumped in to my throat.

I sent him the NDA by email minutes later. My stomach would remain in my throat for 3 weeks of silence from this individual, even after e-mails voicing my concern and vulnerability. I eventually heard back. They refused to sign the NDA. It took months for me to stop beating myself up over that encounter. That conversation was my defining moment of weakness since launching this company. I let my guard down as my ego was being stroked. A mistake of an amateur which, to my credit, I actually was.

Years later I still monitor their new listings. They lost my respect and sparked my paranoia. And both of those results made me stronger and smarter.

Layer 1 summary: In any conversation that might discuss your pre-market product, preface it with a signed NDA - it is your right and no one will be offended.

Layer 2: Patents

There are 2 views on patents . View 1: It’s an expensive facade that, when push comes to shove, you don’t have the jurisdiction or finances to apply the patent when your IP is imposed upon.  View 2: It’s an expensive cloak that either intimidates others against violating your IP, or gives you the power to defend your IP when stepped upon - keeping in mind there’s a significant cost to the process of defense. After a lot of pondering, I decided that I owed it to myself to have a leg to stand on if and when someone decides they wanted to copy and benefit from my invention.

As a founder of a bootstrapped company (aka one without external capital - a term I’ ve come to know thanks to Shark Tank), I often have to decide if it’s more fruitful for me to put my money or my time in to something. In this case, it was for my sanity that I decided to hire a patent attorney to carry out this task. And as it turns out, even with a patent attorney this process requires an ample amount of a company’s time.

Now that I decided to apply for a patent, I had to educate myself on which patent to apply for . Provisional vs Non-Provisional. Design vs Utility. Are there other countries I wanted this patent to apply to? Those were the big 3 questions.

Patents can be distilled down to getting a priority date. Who thought of it first, if you will. A provisional is easiest, cheapest and quickest to complete - and allows you to be “patent-pending” earlier. This route gives you time to see whether this product is even successful enough to be worth a non-provisional patent. But it only lasts 12 months and it just gives you a priority date to reserve your spot in the front of the line should you choose to move forward with a non-provisional. A provisional patent does not actually protect you from anything, unless you eventually get that non-provisional patent approved.

In the case of our first product, Watch Your Mouth USB charger safety covers , I decided to start small with a provisional patent. With the success of the product we quickly realized applying for a non-provisional was necessary and worthwhile. In the case of our second product Shut Your Face outlet covers , we knew that this was another exciting innovation in definite need of protection. So we skipped the engagement and went straight to the marriage with a non-provisional patent application. If you know you’re going to need a non-provisional, you’ll save time and money jumping in head first.

In between the provisional phase came the decision to as to whether to extend the application internationally, called a PCT (Patent Cooperation Treaty).

A PCT can be applied for within 12 months of first filing a patent application. It allows you 30 months from the date of your original application, called “priority date”, for your application to be held in a priority position for foreign filing. Meaning according to 157 countries, you thought of it first. Nana nana boo boo. So in those 30 months, if anyone in these countries copies your product, you can go forward with your patent application there, and if granted, wave those cheaters goodbye.

And yes, cheaters are just what they are. Those who skip the whole “intellectual” part, the part that requires knowledge, creativity, time and money, and just sit in their mother’s basement in another country and reap the rewards of someone else’s work. Like that jerk who copied your answers on the final exam. Sorry Ben, not this time!

Where was I? Ah yes, PCT. It was a minimal investment to give me 18 more months to decide from what other countries I wanted intellectual property protection.

Here’s a spicy bit of information: Did you know that once you file your patent application, all of your product’s art (design drawings), and even design variations that you add to the art, are posted for all the public to see? Not long in to this process I received a message from a friend who noticed a similar concept of a product on Amazon . It had launched a good 6-8 months after ours had. I found it fascinating that their design was identical to one of our design variations in our patent application. This alarmed me. I then scrolled to find that they actually duplicated one of the listing slides that our art director had custom made for us. This infuriated me. With my vested paranoia, I assumed someone from the patent attorney office leaked it. When I spoke with our patent attorney, I learned about the publication (to the whole world) of our patent drawings and description, which included its variations.  I also learned I had no leg to stand on until I am granted a non-provisional patent. This was brand new information to me. And I suddenly felt incredibly vulnerable again.

There was one toe I had to rest upon, and that was the fact that they plagiarized our art work, which was copyrighted. Amazon was quick to move them in to violation (note: Amazon, unlike some other large online marketplaces, does a great job of defending registered brands.) This copycat “company” also did a crappy job of copying our product. Their material was cheap and un-researched for the properties required, and the details that made our product child-proof and adult-friendly were not controlled on their product. Oh yes, they also made it too small, so it was a choking hazard. A child safety product was a choking hazard! I was livid. It was a China-based company, so these things were not surprising. We are proudly designed and made in the USA. Not long after being in violation, the entire listing was removed as a result of poor ratings.

Now, as I write, this, I’m feeling the satisfaction of finally being granted a patent. It’s so shiny. And satisfying. And I feel hugged by the strong arm of the law.

Layer 2 summary: If it’s financially feasible, at the very least set yourself up with a priority date (aka provisional patent) that places you first in line for ownership of your intellectual property. Use that time to assess whether further protection is warranted.

Layer 3: Trademarks

In the process of designing the second version of our package, my packaging designer asked if I had trademarked the name of our company ‘Geddy’s Mom’ and the name of the product we were designing the package for, ‘Watch Your Mouth’.  I said “Crap! Give me a week.” And I got back to googling: “how to trademark a brand name” .

Again, as a small bootstrapped company, wherever I had the capacity to self-educate and complete a task, I did. And do. And not hiring someone to do my trademarks was an easy and cost-saving decision. It truly is a simple process. Patents, on the other hand… no.

My only failure in this layer was thanks to Ellen Degeneres . Apparently Watch Your Mouth is too similar of a product name to the strange salivary board game she made famous called Watch Ya Mouth.

We have had our company trademarked for just over 2 years now… and, embarrassingly, I didn’t realize that there’s a difference between ™ and ®. We were able to add the ™ to our brand name once the application for a trademark was in. ™, as it turns out, is simply proof of intent to trademark something. And applying for the trademark is proof. ®, meaning Registered Trademark, is the symbol to use once you have been granted said trademark. Not common knowledge, but simple knowledge. And as of recently, has been updated in our marketing.

Layer 3 summary: Trademark everything you can and do it early on. It’s cheap and easy.

The Sprinkles:

URL ownership, copyright website statements, logo marks, online content. Intellectual property protection can be a full time job. I like to think I scooped up what we needed to stay efficiently protected. I learned things the hard way, but sometimes I learned things the easy way, through the google and the one-on-one conversations with people who know more than me that were nice enough not to charge for their time.

I recently learned about the dark web, which is terrifying information for business owners (if you’d like to be frightened, talk to my friend Jason Daniels , protecting companies from the villains of the dark web on the daily).

I’m still thoroughly confused by the acronyms of business ownership and am ignorant to some of the details behind a lot of what I mentioned above.  IP protection is a never-ending process for companies like mine. So I’m sure there will be more layers, and I’m also sure there will be nightmares of the dark web from time to time.

I hope this piece helps make your IP protection process more organized and intentional than mine was.

Stay Safe (intellectually),

Sarah