IP for Startups: What to Do When You’ve Already Gone Viral

 Image result for pokemon go gameplay

The viral PokemonGo phenomenon this summer and Jet.com’s meteoric rise and brief independence illustrate that, despite the “overnight success 10 years in the making” path characteristic of most startups, success can come unexpectedly quickly.

This is both good and bad. While a hockey stick revenue curve is often celebrated by the CFO, growth can be very challenging from an intellectual property management perspective.

For the latest installment of our IP Answers series, we reached out to John Chandler, an Associate with the Toler Law Group in Austin, Texas. During an eclectic 12-year IP career, John has helped scores of entrepreneurs and companies create and evolve IP strategies and plans. He’s a perfect resource to discuss IP for startups, IP management priorities for young companies, and “Fire Drill IP Management” when growth suddenly jumps far beyond initial projections.

Note: John’s comments are his personal views, and are not representative of those of the members of the Toler Law Group. His statements should not be relied upon for legal advice in any particular circumstance or situation.

Background: IP Watch Dog recently published a review of the patent portfolio consisting of three location-based gaming patents of PokemonGo developer Niantic. Thirteen months after ecommerce titan Marc Lore launched Jet.com to compete against Amazon.com and other discount retailers, Wal-Mart acquired Jet.com and its ‘gain sharing’ retailing technology for $3.3 B. The patents of Jet.com are aready involved in patent infringement litigation.

Q: Thanks for joining us John. Most companies launch with the expectation that the road to success will be long, so a common belief is that there will be time to take care of the IP down the road.

 

A: First, it is really important to understand that surprising success – I’m not just talking about Pokemon apps or high-growth VC-funded Silicon Valley companies – can happen to even small companies.

 

One of my clients, a mostly-service franchise in the U.S., recently and very unexpectedly, took off in Great Britain. With the opportunity to protect a potential future franchise network in Britain, we looked at everything based on what she would need in the U.K., when she might need it, and what she could afford. We initially filed a PCT patent application in the US with a view toward seeking patent protection in the UK, and have planned a second patent application to be filed later this year.

 

We also did a UK trademark clearance search and researched co.uk domain name options connected with her business name. In the next year, I also expect we’ll have to find a local in-country attorney to handle business and franchise documents. None of this work or the expense figured in her 2015 business plan but the need arose very rapidly.

 

Q: What’s your role with a client like this?

 

A: When something really gets rolling, people too often forget to sit down and take a look at how to create protection in front of the business and the IP. This is my role as a business and legal counselor — to anticipate legal needs before clients see a need. A little investment up front can save many legal dollars just a few weeks or months later.

 

Especially with first-time entrepreneurs, I’ll spend a couple of hours with new clients to put out fires that they don’t know are burning. Next, I’ll identify potential business assets, and put them into what I call “Boxes.” For me, Boxes represent a legal protection available under the law. Each Box typically comes with a price tag, a deadline and action items. Clients can then easily prioritize which Box is right for their situation and budget. Also, clients can more easily understand what does not fit within any Box. If the business asset doesn’t fit within a Box, I can’t put a legal protection on it. Some Boxes are out of reach or don’t strongly fit the focus of the company.

 

In my client interviews, I first look at IP through the lens of how people and customers find my client. If you are already a viral success, people have obviously already figured out how to find you. Usually, though, I’m working with pre-viral companies, many of which don’t have any marketing experience or plan.

A domain name related to how people know you is step one. I think the domain name is really critical for a startup. It is a good lead-in to trademark protection. You want to be found often and you want people to quote you. The recent and huge expansion of available Top Level Domains means that you should be able to find a domain name that aligns with your marketing strategy and business name. If your app is called Fire, getfire.co can work. If you don’t have a really good domain name, you can instantly reserve one. Grab it before it is gone.

 

In terms of trademarks, I’ll start by looking at everything from protecting the brand and domain name, to hashtags and slogans. Understanding that trademark registration can take 5 months or more, some of these are on a slow burn, and some need immediate action for protection. It is best to commit to just a few terms initially, and use them consistently and properly over time.

 

Q: What comes next?

 

A: In terms of IP categories, it’s domain name, trademarks, then patents. The order is based on both time, or time-to-result, as well as money. Can we create any patent assets? Perhaps, but they take the longest and cost the most.

 

For patents, even taking and paying for the expedited option, getting a patent takes a year minimum. As far as cost, if the cost of a utility patent is out of reach, a workaround is a design patent. Design protection is too often overlooked, but it can be very useful if your startup is more on the creative, expressive side. If a company has something unique about their customer facing website or mobile app, I’ll look at how we can perhaps protect the user interface. This is especially useful when the computer back-end processing is not totally ironed out, new or the interesting part of the business.

 

 

Q: Do you always look at patenting in terms of product or service protection?

 

A: In my experience, there is almost always some kind of technology involved in the business that you can protect, particularly for companies that blow up. Often, the unexpected commercial success and urgency to maintain customer satisfaction can draw your attention away from protecting the core value in the underlying technology. The tech might not be 100% relevant to whatever has made your suddenly hot right now, but it may have long-term value, which is part of the pitch when seeking funding and thinking exit strategy.

 

Although a pending patent application doesn’t offer any protection until the patent issues, pending status can help during fundraising and marketing. Some tech investors are really leery of investing if they haven’t had a chance to determine whether something is patentable and could create value 5, 10 or 15 years down the road. In addition to this, if your exit strategy is a merger, or acquisition by a larger company, patents need to be part of your roadmap.

 

Q: Thinking about the relationship between a company and its customers, it is usually defined in the tech or media sectors by Terms of Service (TOS) or Terms of Use (TOU). How does IP then align with a startup’s sales model?

 

A: TOS and TOU documents are very important for categories such as software, SaaS and social media. In them, you define the boundaries of your relationships so that people understand what you do, and what you will and will not accept in terms of responsibility – yours and theirs. The obvious example is Facebook whose TOS basically say that Facebook is free to use anything uploaded to the site.

 

By way of example, if your business enables people to post and share content, warnings such as, “Don’t post stuff that’s copyrighted by a movie studio,” are standard. If you offer an API, you need to spell out limitations and expectations. Limitations in the TOS/TOU should include guidance on use of your trademarks and lots of other things. Don’t write your TOS/TOU just for litigation purposes. Think about setting expectations and shaping perceptions of your company in your TOS/TOU, along with detailing what you consider your IP and what you consider protected. If use of your website generates money for you and your end users, include details on how money is made, affiliate marketing, duration of data retention, and on and on. At least clearly define who owns what, when and how. Often, the TOS/TOU is an after thought. No one makes time to review that when your company is blowing up.

 

Q: PokemanGo was almost instantly global. How does geography fit in?

 

A: You can seek legal protections in other countries but the price quickly mushrooms. If you aren’t sure now about where you may need future protection down the road, you can do an initial filing with the US patent office under the patent cooperation treaty or PCT. It bookmarks your place worldwide at first. I’ve done it many times to provide my clients with flexibility. Later, you can identify where the business has really taken off and narrow down the countries where you want the long-term patent protection.

 

Trademarks are less time-sensitive, but can be started early if the revenue is there. I recommend that you let the revenue guide you on a country-by-country basis. You can built up world-wide trademark protection a little at a time. Of course, expand your domain name portfolio and add other languages on your UI on a weekly basis if possible.

 

Q: What is your advice on employment contracts and IP assignment?

 

A: IP assignment is a good segue into something I haven’t mentioned yet, which is nonetheless absolutely critical. This is the formation document. Before you even think of employment contracts, you need to make sure that IP protections are defined in the bylaws of incorporation or the operating agreement of the LLC.

 

There may only be four of you in a garage moonlighting on weekends, but everybody should be obligated to sign over their contribution – whether it’s the trademarks, the technology to be patented, media content, cash or time commitment.

 

Personality conflicts and evolving priorities among founding team members are common, and founders can sour on each other. Suppose two of the four want to leave. This scenario and succession steps need to be spelled out very carefully in the operating agreement or the bylaws of the corporation – not in a term sheet or napkin scribbles. If someone leaves, how do you value the company? What do they get to keep? If she is the technical lead or chief developer, does she have an obligation to assign over the source code? Is she entitled to a copy? Is it under password protection on a server she can still access? Does she have any rights at all to it? Will she publish the secret sauce later as part of her research? What are the pre-existing obligations?

Something aspiring entrepreneurs often overlook, as well, is the economic value of what you create regardless of commercial success. While you may have failed to create a viable company, you may may have something really valuable that you can either open source or sell as an asset. Your corporate documents must cover these scenarios.

 

Q: The employment contract and assignment language address these points for employees and contractors?

 

A: Exactly. In the rush to hire and get some revenue in the door, companies often overlook what’s in their employment agreements. Look in your contracts to ensure they include confidentiality, invention assignment, and non-compete language and clauses. Lock these down so you know that the creative aspects will remain with your startup, and former employees can’t leverage your innovation, business processes and customer databases. Or, if you want to be open and informal in the relationship, spell that out in writing so that everyone has confidence in the venture. Don’t overlook copyright assignment, either.

 

If you don’t include details in contracts, you will not have ownership and control of what employees and contractors created on your dime. I have seen this far too many times, and spoken with too many frustrated CEOs, to think it is uncommon.

Q: OK, let’s circle back to the PokemonGo example. It may not equate to the viral hit of Summer 2016, but let’s assume that my app blew up last week. I haven’t done any of the startup IP best practices you just laid out. What should I do now? What is my priority list?

 

A: First, sudden growth doesn’t always require virality. The “secret” can simply be a lot of funding. If you land enough VC funding, the road from a small scrappy team of 10 to, say, an org-chart of 100 can be a very fast ride. Whatever the cause, my catch-up IP management blueprint would be something like this: 

 

  1. Domain Registration

Review and register domain names related to your existing brands and related trademarks. Review where all domains point.

 

  1. Trademark Clearance

Update your trademark clearance results for your current and expected markets.

 

  1. Trademark Registration

Register relevant trademarks in use or soon-to-be-used with the appropriate authorities. Review proper use of trademarks throughout the company.

 

  1. Usage Contracts

Terms of Service and Terms of Use (“TOS”) define what you provide and how people use your service. Make sure the TOS, other legal notices and the functionality of your website, app, product or service comply with local and country requirements and restrictions. Privacy and data use restrictions vary widely across countries. Is a click-through mechanism needed for aspects of your website?

 

  1. Restrictions

Review import/export restrictions for the countries in which you operate. Review your existing contracts with vendors, contractors, etc. for their contractual restrictions.

 

6. Employment Contracts

Ensure that your rights are not compromised by incomplete or absent contract provisions. Make sure new employment contracts harmonize with corporate values and corporate documents. Re-sign existing employees to a new contract if the old contract won’t work. Ensure assets remain with the company.

 

7. Patent Protection

Depending on your budget, uniqueness of technology and innovations, definitely look at pursuing patent protection. Don’t hesitate to contact a professional because patent deadlines are unforgiving. There are ways to delay the relatively high expenses involved.

 

  1. Physical and Electronic Security

Review existing mechanisms to safeguard the business documents, legal documents, innovations, business reputation and financial assets. Would a quick computer security audit and operational practices review be beneficial?

 

  1. Corporate Culture

At least start with a short meeting to get all employees on the same page in terms of expectations of how you value everyone’s contributions and IP. Explain the steps being taken to protect the IP. Explain the basics of your corporate expectations of business conduct, computer use, and operating and security procedures. A quarterly update can go far to show strong leadership and vision.

 

Q: Is there anything else that a startup should think about?

 

A: In an early-stage company, don’t underestimate the basic bread and butter legal provisions or permissions. IP for startups doesn’t have to be convoluted. Have someone experienced review your documents and policies to ensure there is nothing that can lead to an easily avoidable, crushing liability or lengthy legal dispute. Don’t let a legal conflict distract the business operations. A little attention early can go a long way toward avoiding big problems later.

A big thank you to John for his time and expertise. You can reach the Toler Law Group offices at http://www.tlgiplaw.com/.

Cultivating Patent Innovation: the Case of Financial Services

Blog financial

 

Traditionally intellectual property (IP) creation was not viewed as central to the financial services sector as some others, but that has changed significantly.

At a recent conference* intellectual property leaders at well-known financial institutions discussed developing intellectual property as a strategic imperative. Their discussion touches on creating a culture of innovation, educating inventors, setting up invention disclosure programs and rewarding invention in the era of Alice.

In full disclosure, one or more of the companies mentioned is a client of IPfolio and uses our IP management software.

Innovation culture & starting an invention program

For Visa a key threshold issue was determining what patent strategy would support the lines of business (LOB) — offensive, defensive or revenue generation. Encouraging invention disclosure had to work within that overarching framework.

Royal Bank of Canada (RBC) realized they needed to foster a culture of innovation and knowledge protection to create employee engagement or any invention disclosure process would flounder.  The invention culture starts day one during employee onboarding. Initially there was resistance, some stakeholders felt other priorities were more important than intellectual property.  It took time but now RBC talks about innovation and intellectual property as part of their brand, which allows them to attract talent. USAA’s new IP group also realized a few years back that they needed to foster culture of innovation with reward and recognition (R&R) programs.

As of five or six years ago, Mastercard was not filing many patent applications. A few technologists were motivated but most engineers were not submitting invention disclosures. But a new CEO directed the head of IP to make an innovation program happen and then they found a budget. Mastercard consulted widely with other companies about developing an innovation program.

TD Bank runs a lean IP operation and in the company there were proportionally few scientists and engineers as potential inventors. For their new invention reward program to develop their portfolio, TD also retained some sophisticated consultants to help them design the program rather than following a home grown route.

Education, reward and recognition

The speakers agreed that the balance between recognition as a reward for invention and financial rewards is always challenging.

TD Bank was advised that recognition of invention was generally better than financial reward. Initially TD went the other way toward financial reward, resulting in a high volume of weak invention submissions. Even if some were patentable often they were not aligned to TD’s business strategy.

When TD Bank switched emphasis to recognition they developed a stronger level of engagement from a smaller population who were true inventors. The most motivating recognition was the opportunity to share ideas with senior leaders in the LOBs. “True innovation is invention plus commercial application;” inventors wanted to see their idea recognized high up and then implemented.

USAA has a relatively new IP group and like RBC developed a multi-faceted program starting with new employee orientation.  They use an inventor portal for all employee’s submissions then an initial review by the IP group to see if an idea is viable, usually followed by a request for more work from the inventor.  At this point they may have to address Alice and adjust the focus from a business method to some technology attached to it. There are tiered money rewards at each stage including filing a patent. If the patent issues the inventor gets a prize and recognition from a listing on a prominent company-wide patent tree.

USAA located a generational issue with reward: younger employees wanted primarily recognition, older employees wanted money. Today, the reach of the program is broad and one of USAA’s most prolific inventors is a security guard.  They give innovation classes on a regular basis but avoid too much legal training. For example, they urge inventors not to act as attorneys and perform patent searches on their own. In contrast, Visa uses the smart phones patent wars as a more detailed training tool and find engineers really engage with the story.

Mastercard also concluded that focus on company wide recognition was vital, from inclusion on the public invention website to giving out awards at a CEO dinner. They found the kind of recognition that works varies culturally. So in one country money was such a motivator the result was a big spike in weaker invention submissions. Rewards were reduced and local committees established to review invention disclosures earlier. Mastercard also found that giving stock options “can cause people to give up their day jobs” so rewards can go too far.

The invention website has information about inventions, top inventors and patent applications as part of a multi-faceted recognition program that includes money.  Every employee can look into the portal and look up whatever inventions there are. Mastercard carries out varied educational efforts included events at eight offices around the world. The program has increased patent filings tenfold at Mastercard.

For Mastercard, like RBC, the issue is patent quality, relevance to the business and avoiding business method filings that collide with Alice. Visa pointed out though, you often don’t know what quality is for years, so quantity can be a good thing. There is value in `setting out traffic lights and seeing who drives through them.’

The belief at Visa is you can you recognize great ideas even if they are not patentable. They think of an innovation pyramid where some ideas at the highest pinnacle will become patentable, other ideas are not patentable but highly valuable to the bank. Consequently, Visa created two types of inventor rewards schemes accordingly.

USAA concurs and also has two separate reward programs. On the non-patentable innovation side, great ideas are uploaded into website accessible to all employees who can vote on which ones go forward.  This helps overcome inventor frustration when ideas do not go all the way to patent filing.

Harvesting & mining invention

Visa observed that financial services may not have a formal R&D process like other industries and instead ideas “just bubble up” and this may be inefficient.

Consequently, the focus today is toward ‘harvesting’ or `mining’ invention — much more proactive and complex than just creating an environment for invention disclosures.  Methods vary, RBC, for example, holds formal regular invention sessions with open office attorney hours for key groups who are doing innovative work.

For USAA, harvesting sessions now create most of what they file, not the inventor portal. The harvesting program uses seven separate tools, for example, problem statements.  USAA legal also engages with internal research and development teams dedicated to disruptive projects including ones LOBs have passed on to them. LOBs can also brainstorm with R&D to look at a particular business area. This can sometimes result in a broad concept requiring legal to follow up and help narrow it down to a useable idea.

Mastercard similarly offers challenges that pose a particular business problem and employees and employee teams submit solutions to win awards up to $150K.

Visa found a passive Recognition and Reward (R & R) program was not sufficient, their needed to be some push as well as pull. The fundamental building block at Visa is invention disclosures by LOBs and metrics around what is expected from each LOB. TD Bank finds its LOBs are now encouraged to compete against each other in innovation.  MasterCard tries to set goals and targets for LOBs but it can be challenging.  Organizing budget from each LOB for the innovation program is another area that needs careful handling.

According to Visa, cost control and accountability concerns are particularly acute at financial institutions, as one might expect. Cost per issued patent is by far the most vital metric and the prosecution budget is always under scrutiny by internal stakeholders. You need sound defensible arguments behind the program for the senior level finance people.

All identified the issue of paying for these programs and patent filings and that this is usually shared with LOBs. International patent filings in particular become expensive. However, TD Bank found LOBs actually become competitive with each other and even ask to give more money to the patent program.

Alice considerations in inventor programs

While some education about patent law is essential for their inventor community, a dilemma for all these companies is how deep to delve into the challenges around patents for business methods and Alice without deterring or confusing inventors.

TD Bank does standard patent law and section 101 training for LOBs. TD warns, however, that if employees learn too much law they can start being their own attorneys, edit themselves prematurely and not submit inventions.  MasterCard used to give a general Section 101 training widely, but now less so. Instead they give a more advanced training for technologists at innovation units around the world, like the MasterCard labs. RBC also does some minimal section 101 training just to targeted groups of likely innovators.

The speakers concurred that a central job of in-house IP Counsel is to translate invention into what is patentable.  Visa, tries to identify Alice problems early in the invention disclosure review stage and go back to inventors to try to resolve the challenges.

In the era of Alice the speakers agreed you generally need to add as much technology around or instead of the business method. Business processes are still patentable if you can integrate technological components in the inventions. Focus on technical improvements and put that in spec so you can cite it to the USPTO. To succeed, avoid broad claims and get inventors focused on developing and disclosing the four or five ways of doing something to help support independent claims.

If claiming technology improvements, it is key to have IT involved as well as product people because you need the right expertise and information to follow through to a patent application. On the other hand, while TD found technologists submit more inventions sometimes these can be incremental. General employees can be more adventurous, sometimes more business relevant and the results more valuable.

On the whole there needs to be a bigger, internal multi-stakeholder discussion now around invention disclosures because of Alice.

Regardless of the challenges, encouraging innovation and invention is vital to the business of modern financial institutions.

 

*13th Annual Patents for Financial Services Summit, New York.

Creating a Global Patent Strategy: Advice from Silicon Valley

We have an amazing and diverse customer base at IPfolio that ranges from Fortune 100s to dynamic technology startups in the Silicon Valley and the north island of New Zealand.

The vast majority have already established themselves across the globe or are certainly looking at markets beyond their home countries. Not surprisingly, creating a global patent strategy and evaluating foreign filing opportunities and options are part of the internal planning and budgeting activities inside many of their IP departments.

plm-global-bom-supply-chain

As foreign filing and patent protection is an expensive and resource-demanding process, we asked one of our customers for thoughts and tips on how he approaches foreign filing and prioritizes a finite IP budget. We agreed to cloak him or her in impenetrable anonymity.

Thank you for the time. Let’s start with the issue of timing: When do you go global? When is the right time?

Going global needs to be part of your discussion with the executive team. It must reflect and support your global business strategy and implementation roadmap, both in terms of geos and timeline. You need to tailor your foreign filing strategy to business goals to ensure freedom to operate, while maximizing return on investment.

 

Where do you specifically start? Start with why. Is there a business need? Ultimately, IP helps secure and ensure your company’s key financials. Freedom to operate connects to revenue, net income and profit. Where these metrics are dependant on specific countries or markets, what IP assets do you need to secure to protect them?

In my case, my company sells hardware components basically everywhere on the planet. My rule of thumb is if a particular product line in a given country doesn’t generate at least 3-to-5 million dollars in revenue, it’s probably not worth patenting in that country.

 

Are you considering cost when making this decision?

Not exactly, but in my experience the basic cost to get a simple patent family filed across five countries is probably about $150,000 over the 20-year life of the patents. This is a general estimate based on a very efficient prosecution practice, and a lot of money, particularly for young companies.

 

Although we all know that complex patents can cost substantially more than this number, I’m assuming prosecution without doing any appeals or anything like that.

 

What’s the sales strategy to pitch executives?

There are really two approaches to developing creating a global patent strategy and selling it:

 

The No-Plan or Faith-Based Approach is a very short, usually overly-enthusiastic exercise in guesswork. It may or may not work out, but “hey, this is going to be a great country, we should file in China now” isn’t a great foundation on which to build a successful career in IP.

 

The Strategic Plan is really the only way you’re going to tilt the odds in your favor. If you go ask for a foreign patent budget – particularly if you are a small and growing company – you won’t have infinite resources. Where do you spend your limited money? How do you get more money?

 

Create a good strategic plan built on a financial foundation and model that the CFO can understand. Start with the business unit, look at the cost benefit for the patents, and map how everything leads to enhancing the value of your business assets and your recurring net income.

 

Do you distinguish between offensive and defensive patents?

Absolutely. You can go global for defensive reasons. Let’s say that you need to secure manufacturing rights in a country. While you may not be selling in Taiwan, you may be contracting out manufacturing with someone there. If so, you better think about whether you have the protection needed to keep manufacturing in Taiwan. Where do you see your product or service revenue going in the future? This is an important evaluation of market evolution. Are there areas where you are likely to have IP wars in the future?

 

You can also go global as an attack strategy. For example, being strategic about licensing can be massively beneficial. Cross-jurisdictional arbitrage is a sophisticated strategy that I have used in the past and continue to use whenever possible. It starts by considering “where am I going to need to defensively cross-license or if I am in that mode to monetize?”

 

Can you give us a real world example of the kind of thinking needed?

Let’s begin with IP in China: In China, there are two kinds of patents, invention and design.

 

Design patents can only be hardware, you can get them in about six months, no damages and they can only be enforced for an injunction. There is only an examination of basic patentability and it’s not a complete exam. It’s kind of a half-patent, if you will, but you can get one in six months and get an injunction.  

 

Here’s a specific real-life example. It began with company A facing an assertion from company B. Company A had no patents they could use to fight back with so A filed a design patent in China. Company A really didn’t have any relevant business in China with this technology, but knew  company Bdid all their product line manufacturing there.

 

As soon as A got the patent, A went back to B and said ‘let’s talk about that a cross-license in the United States. If you want to keep manufacturing your other product in China, we need to reach an agreement.” The alternative for them was that A could have secured an injunction in China within six months.

 

Why did A file for a patent that wasn’t central to their core product lines? Because A needed a tool against company B that also had a similar business that they were making in China. It was just a way to arbitrage across borders to secure a reasonable global settlement.

 

Another reason, of course, to use such a strategy is licensing for money. Good luck getting a license if you have two or three weak patents in the United States. You can’t leverage weak patents in the United States to secure and enforce injunctions, and your ability to extract a license becomes substantially reduced as a result. However, if you have a nice German patent and your target company has business in Germany, then you have something to consider licensing in that family on a global basis.

 

In terms of licensing, this is very strategic, very big picture thinking and execution yes?

It really is. If you are going to do licensing, it is becoming vital to think about when creating a global strategy and who your likely competitors are. It’s only half of the battle, though. After you have identified where you might want to think about patenting, what are you going to patent? How much is it going to cost you? What’s the cost-benefit of doing it? These questions form the second half of the equation.

 

What’s the potential value of getting a patent? Even if you think “China is a place where we might want to be for some reason, or Germany is a place we might want to be,” can you get a patent that you can enforce there? If you do, what can you enforce it for? If you can only enforce it for injunction, and you are in the business of making licensing revenue, it’s not going to matter. In fact, if you are not in the business of making license revenue, but protecting your freedom to operate, injunction might be a good thing for you. How much does it cost? is it really worth the effort

 

Arriving at these answers, assessing foreign patent systems, and doing it in a way that you can sell it to your CFO and get money can be very hard

 

Any recommended methods to convince the CFO?

Something I’ve done in the past is to build detailed overviews by creating matrices of each country of interest that I identified. For each country, I create a color-coded matrix. I assess government policies and practices, and try to assess the patent office expertise, speed and transparency. I also try to assess whether the country patent bar has sufficient experience implying that we can actually get it done. Finally, I include costs and enforceability.

 

By doing this extensive research, I aggregate information and data that help me understand whether I can get a patent and enforce it, whether the enforcement actions will mean something and whether I can even afford to invest in a remedy. What are the current available remedies? What may change in five years when I actually have that patent in Germany, China or another country. Will I need it in a decade? Will my business even be there anymore?

 

What do you say to those that say it sounds speculative?

I understand. Some people reading this are probably saying “yikes, how in the world can I do all this work?” While nobody is an expert, I have found two companies that create reports that help me paint the big picture picture. I use them to fill in details for the people I need to convince. For me, they are helpful to answer questions from my boss such as “Why are we wasting time filing patents in China?’ I use the data to discuss where China is today, and where experts and market research suggest it will be 5 and 10 years in specific areas.

 

When you have third-party information and research, you can say “Don’t take my word for it; here is data from experts based on market surveys and extensive local research. Let’s talk about the value of the patents we might have, their enforceability and where the Chinese patent system is going.”

 

It’s an imperfect methodology but it’s a way to look at the cost-benefit of going global. I really encourage IP professionals thinking about creating a global patenting strategy, and the intricacies of budgeting to access market reports as part of their tactical planning.  

 

Thank you so much for your time and some fascinating wisdom on avoiding mistakes when creating a global patent strategy.

Everyone should understand that there is no infallibility in IP. Hindsight and looking backward will inevitably throw light on decisions that proved wrong. Although 100% success is 100% unlikely, extensive research and methodical planning will increase your odds.

The IP of the Fourth of July

Patriotism is on full display in the United States every July 4, and Independence Day is the highlight of summer for millions of Americans. The day is typically celebrated with parades, red and white bunting, Revolutionary War imagery and lots of food and drink.

As you would expect, intellectual property is found throughout the day’s festivities. We thought it would be fun to research the IP of the Fourth of July and look at some of the patents and trademarks that are part of what we do, drink, eat and enjoy together on this day.

 

1. BBQ grill scraper

 

The Great Scrape Woody Paddles scraping a grill clean

 

Patent Number: US 8741068 B2

Granted: Jun 3, 2014

Have you ever met anyone who actually enjoyed cleaning a barbecue? Whether gas or charcoal, barbecues and grills get filthy. Accordingly, the USPTO includes several patented inventions to help ease the task.

This invention, now marketed as The Great Scrape by Thompson Brothers and Company LLC., is modestly billed as The Ultimate BBQ Cleaning Tool, and an alternative to metal wire brushes. Available in three sizes, it is described as “a barbeque grill scraper and related methods of use that utilize a scraping end formed of a heat-responsive material to remove char and other debris from the grilling surface.” The Woody Paddle, the largest of the three models, is available for $34.95. Judging from very positive online reviews, it seems to work as described in both the patent application and marketing copy.

Additional Reading:

Examiner.com: The Great Scrape Woody Paddle BBQ Tool Review

Amazon.com Listing: New All Natural BBQ Grill Scraper by The Great Scrape

 

2. Frozen confectionery

Patent Number: US 1505592 A

Granted: Aug 19, 1924

“It is among the objects of the invention to provide a method or process for making a frozen confection of attractive appearance, which can be conveniently consumed without contamination by contact with the hand and without the need for a plate, spoon, fork or other implement.”

Rapid advances in manufacturing and refrigeration technology in the early-20th century enabled the American food industry to create myriad new cold and frozen food products. Ice cream and popsicls were two of the fastest growing categories.

In 1905, Frank Epperson left a syrupy drink containing a stir stick outside on a cold night in Northern California. He awoke the next day to find the original popsicle. In the early 1920s, he revisited the frozen-drink-on-a-stick idea, partnering with Loew Movie Company employees in 1923 to create the original Popsicle Company. Popsicles were an immediate hit at amusement parks and beaches that summer. Despite the success, Epperson waited a year to file for a patent, which was granted just before Labor Day. Hot summer days and nights, as well as decades of Fourth of July celebrations have been much more enjoyable as a result. The oldest patent on this list, our IP of the Fourth of July would be incomplete without it. 

Additional Reading:

NPR: How An 11-Year-Old Boy Invented The Popsicle

National Archives’ Prologue: The Frozen Sucker War: Good Humor v. Popsicle

The Atlantic: Don’t Use the P Word: A Popsicle Showdown

 

3. Water recreation device

Patent Number: US US8292681B2

Granted: Oct. 23, 1012

More commonly known as a wakeboard, the ZupTM board became an instant success in the watersports industry because it enabled anyone, including “Individuals who could not ordinarily partake in the activity of towed water boarding” to have fun. In its first year, it became the best-selling product in the history of Overton’s, the largest watersports dealer in the world. The reasons are easily seen in this customer review on Overton’s website; “We had 10 people go with us, and all 10 stood up, and it was cool to see the look of triumph and fun all wrapped up in one instant.”

Additional Reading:

IP Watchdog: Patented Wake Board Made in America by Inventor Company

Zup Board listing at Overton’s

 

4. Surfing Device

 

 

Patent Number: US 7261050B2

Granted:  Aug. 28, 2007

Note: Our IPfolio offices are located in Berkeley, CA, less than a mile from the shores of the San Francisco Bay. While sailing, surfing and kiteboarding aren’t part of the July 4th experience for Midwesterners, they are for Californians.

This patent provided the IP foundation upon which Sven and Rouven “Bufo” Brauers developed their Bufo and Hydroflex brands in Oceanside, CA.

Their invention enabled them to provide surfers with reliable, high-performance surfboards built without wooden stringers. Stringer-less surfboards promise greater customization options to tailor board design to the individual surfer’s preferences, lower wear rates, and longer service life. Watch the videos below to see the commercially available products.

Additional Reading:

Company Website: Hydroflex Supercharger Technology

Video: Bufo Hydroflex Technologies. Bufo gives Board Riders Review a behind the scenes tour of Hydroflex Technologies (March 2010)

Video: Bufo Hydroflex Surfboards: Bufo Brauers of Hydroflex Surfboards gives Board Riders Review a sneak peak at a few of his surfboards. (March 2012)

Video: Steve Ford tests a Bufo “Hydroflex”. Surfer/Shaper Steve Ford gives Board Riders Review a small peek at the secret “Bufo Hydroflex” surfboard, (March 2010)

 

5. Neck entry wetsuit

Patent Number: US 5898934

Granted:  May 4, 1999

In 1952, Jack O’Neill opened one of California’s first surf shops in his San Francisco garage where he sold early versions of wetsuits. More than 60 years later, O’Neill is the best-selling wetsuit brand in the world, the result of a steady investment in R&D. This patent, a continuation of two earlier applications, “discloses a neck-entry wetsuit with an expandable collar formed by a gusset insert that folds in on itself, but which allows both the collar and the neck region to expand when unfolded.” It is marketed as the Z.E.N. ZIP System Entry system. Consumers and product reviewers love it:

“The Psycho’s best trick, though, is the Z.E.N. back zip closure, which uses an internal layer—O’Neill calls it Barrier 2—that pulls over the head to channel away any water that manages to get inside the super-short zipper and Double Super Seal neck. Drain holes along the bottom of the Barrier 2 let the water drain out of the suit, so it never actually gets to your skin, where it can suck away heat.” Backcountry.com

Additional Reading:

VIDEO: O’Neill Psychofreak Wetsuit

 

6. Solar powered umbrella table

 

DSC_0811-464x485

 

Patent Number: US 20110265694

Granted:  Nov. 11, 2011

American inventors Matthew Portis and Obadiah Hampton developed an outdoor table to convert solar energy into DC voltage so that electrical devices and appliances could be plugged in and charged using electrical outlets installed directly on the table. The application also included a moisture detector to detect unsafe moisture levels and turn off the electricity in response. Portis and Hampton continued to develop their ideas into a company, and have now commercialized their vision using the SolGreen SmartTable brand. If you want to provide party guests with the ability to recharge their iPads and smartphones while they’re eating ribs, this is the table for you.

Additional Reading:

Video: SolGreen Evodia Mini SmartTable Outdoor Solar Table

Press Release: Sustainable Spartans Bring Solar SmartTable to Michigan State University

Georgia Southern University: New solar-powered tables funded by student sustainability fees

 

7. Grease drip pan and gas tank blocker for a barbecue grill

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Patent Number: US 8347874 B2

Granted: Jan 8, 2013

Weber is synonymous with grilling and summer barbecues. Since introducing its first charcoal kettle to the post-war barbecue market in 1952, the Weber-Stephen Products Co. has continually evolved and improved its product line. This invention, protected by one of the 270 patents assigned to Weber, is an advancement in product safety; “the inventions disclosed herein relate to frame assemblies for gas barbecue grills which incorporate structures for preventing a consumer from storing replacement fuel tanks on the grill, in order to minimize fire and tipping hazards.” US patent 8347874 is used in Weber’s Genesis grill line.

Additional Reading:  

Weber Kettle Club: How to determine the age of your Weber charcoal grill

Law 360: Weber, Sears near settlement In grill patent suit

 

8. Dispensing valve with trampoline-like construction

Patent Number: US 4991745 A

Granted: 1991-02-12

A self-sealing valve is provided for fluid dispensing packages and the like, of the type which are compressed and decompressed to dispense therefrom liquids, pastes, powders and other similar flowable materials.” And thus the era of the upside down ketchup bottle began.”

In the early 1990s, Michigan inventor Paul Brown tried to figure out how to transform liquid silicon into flexible, one-piece precision valves. By working with a mold-maker, he arrived at a unique valve design:

“A little silicone dome with right-angled slits cut in its top. When the sides of the bottle were pressed, the dome’s slits opened, reminiscent of a flower’s petals, and the contents would be released. When the pressing stopped, however, the air would be sucked back into the dome, causing it to retract and the slits to close.” Davision blog

After Brown licensed his invention, Heinz introduced the upside down ketchup bottle to make summer barbecues more enjoyable and tidier. A year after the bottle’s debut, Heinz ketchup sales rose 6 percent, while the overall ketchup category increased only 2 percent.

Additional Reading:

Pittsburgh Post-Gazette: Heinz, Hunt’s battle over who’s first with upside-down ketchup bottles

Daily Mail: Heinz squeezed me out: Inventor sues company for ‘stealing his ketchup container idea’

 

 

9. Apple tree: Honeycrisp

 

 

Patent Number: US PP7197 P

Granted: Mar 20, 1990

“This invention is a new and distinct variety of apple tree. It was discovered by Applicant in September 1974 as part of the University of Minnesota apple breeding program to develop winter hardy varieties with high fruit quality.”

What is more American on Independence Day (or any other day) than apple pie?

The business of apples is built on IP innovation, patents, trademarks and brands. Get them right and you’re looking at decades of profits. With a long history in agricultural innovation, the University of Minnesota got it very right when it patented the Honeycrisp apple in 1990.

A standard plant patent, US PP7197 P protects “one of the five all-time highest-earning inventions at the university” according to a lawsuit later filed against the university. Before the patent’s expiration in 2008, the school received $1.30 for every honeycrisp tree sold by approved growers. Revenues continue, however, because the university continues to own the Honeycrisp trademarks and brand.

Additional Reading:

Fruit Growers News: Honeycrisp patent expiration not expected to change sales

Esquire: Why are honeycrisp apples so damn expensive?

NPR: If you want to grow these apples, you’ll have to join the club

 

10. Fireworks projectile having combustible shell

 

 

Patent Number: US 5526750 A

Granted: June 18, 1996

Harkening back to that original “bombs bursting in air” celebration, fireworks are probably the most identifiable part of July 4th festivities. They – the engineering behind the explosions – have been also been patented and protected via the USPTO since the mid-19th century.

If you have ever seen the Disneyland fireworks display, which takes place nightly in Anaheim, CA, you know the Walt Disney Corp. knows fireworks. This patent is noteworthy because it focused on “a new method and system of presenting precision fireworks displays with a decreased environmental impact” and described potential applications in the accompanying images that included the ability to illuminate the night sky with Mickey Mouse ears.

Note: If you have ever wondered about the systems and methods for creating the pyrotechnic displays, basically how firework shows are created, the Background of the Invention section is well worth a read.

Additional Reading:

IP Watchdog: The business of patenting fireworks

IP Watchdog: Celebrating the Fourth of July with fireworks patents

Patent Puzzle: Fireworks are patentable

 

11. Squirt gun

 

 

Patent Number: US 4591071

Granted: May 27, 1986

“There are maybe three inventions I have that I rank as my top inventions that I’m most proud of. The robot I built in high school, the memory-protected circuitry for the Galileo and the Super Soaker.” Popular Mechanics

It’s July, it’s hot – really hot – in some areas of the country, and not everyone is close to a beach or pool. Kids and adults need to cool off. Since its introduction in 1990, the SuperSoaker has provided high-pressure fun for Americans of all ages. Invented by a real rocket scientist, Lonnie Johnson, it’s a lot more than “a toy squirt gun which shoots a continuous high velocity stream of water.” With sales close to $1 billion, The toy is ranked by TIME on its list of all-time great toys.

Additional Reading:

IPfolio blog: Individual Patents that Built Empires

Popular Mechanics: 7 Questions for Super Soaker Inventor Lonnie Johnson

Individual Patents that Built Empires

Whether addressed from a strategic or tactical perspective, few topics in IP receive more attention than the patent portfolio. Yet, for all the conference sessions and chatter about managing the aggregate, much of the value of any portfolio often resides in a few key individual patents, something Workday’s Head of IP Lisa McFall refers to as “gems.”

In this post, we’re looking at a handful of patents so valuable that they’re not simply gems; they’re the IP world’s equivalent of the Hope or Cullinan Diamonds. While our previous look at patents that launched billion-dollar empires focussed almost exclusively on Silicon Valley portfolios, we’ve cast a wider net beyond just the Apples and Facebooks to find individual patents that built empires for enterprising inventors who could execute or partner with someone who could. The first one is the origin of something you use every day

1. Improvement in Telegraphy

Granted: March 7, 1876; Patent Number: US 174465; Inventors: Alexander Graham Bell, Thomas Watson

The patent for the telephone is often considered to be the most valuable patent in history. By restricting competition during a time of massive economic growth, geographic expansion and adoption of technology, it provided the monopolistic foundation for the rise of Bell, one of the most dominant brands in American business. That Alexander Graham Bell was even granted the patent is the result of a long series of serendipitous events, much-litigated decisions, and chance. (Telephone Patent Follies is a detailed account).

Rapid expansion of the telegraph in the 1870s drove inventors to address the common problem of scalability – how to send multiple signals across one wire. Bell’s solution for sending multiple tones via a wire ultimately evolved into human voice transmission. Submitted on February 14, 1876, the patent was granted just three weeks later. Within a year, the patented invention was transformed into a business when seven shareholders incorporated the Bell Telephone Company. In 1878, the first telephone exchange opened in New Haven, CT. In 1899, the Bell Telephone Company was acquired by its subsidiary AT&T, which continued as a veritable monopoly until its forced breakup in 1982.

Bell the inventor could certainly see the future. In 1878, he wrote: “I believe in the future, wires will unite the head offices of telephone companies in different cities, and a man in one part of the country may communicate by word of mouth with another in a distant place.”

Portrait

Alexander Graham Bell’s Telephone Patent Drawing. Records of the Patent and Trademark Office, National Archives and Records Administration

Additional Reading:

Understanding how phones work 

Inventing the telephone

Chronological list of telephone and telegraph patents

 

2. Two-cone drill bit

Patent Number: US 930758, Granted: Aug. 10, 1909, Inventor: Howard R. Hughes

To a large degree, dozens of movies, the building of large portions of Las Vegas, the building of the world’s largest airplane, and, most importantly, oil drilling as we know it today, were made possible because of Hughes Tool’s revolutionary drill bit – and the creative mind that spud the idea.”

OilPro.com

Hughes two-cone drill bit  is an invention whose profound effect transformed oil exploration, enabling companies to drill through bedrock and drop holes thousands of feet into the Earth. A century after the patent grant, the invention was designated a Historic Mechanical Engineering Landmark by The American Society of Mechanical Engineers.

Until Hughes revolutionized the industry, the history of drilling into the earth had not changed much since the advent of the spring pole method. The discovery of commercial quantities of oil in 1859, however, launched an industry. New methods for searching for oil were needed and the next 50 years saw the gradual development of steam-powered rotary rigs. Cable-tool drilling using fishtail bits worked in soft and sandy soil, but was only marginally useful when encountering bedrock.

Enter Hughes, a Harvard dropout drilling for oil in Texas. In 1908, he paid $150 to acquire a roll bit patent that inventor Granville Humason had been unable to commercialize. Hughes and partner Walter Sharp improved the design and demonstrated the new dual-cone rotary drill bit in 1909. In front of astonished oilmen, they were able to drill down through 14-feet of hard rock in Galveston Bay, which no prior equipment had been able to penetrate at all.

The bit’s ability to crush and powder medium and hard rock ten times faster than any previous bit revolutionized the oil and gas drilling industry. Hughes and Sharp immediately launched the Sharp-Hughes Tool Company, which was inherited by Howard Hughes Jr. in 1924. For much of the 20th century, he was considered one of the richest men in the world. Roller-cone drill bits used worldwide still rely on the design principles introduced by the Hughes two-cone drill bit.

drill bit

Additional Reading:

Hughes Two-Cone Drill Bit: Designated a Historic Mechanical Engineering Landmark by The American Society of Mechanical Engineers

The History of Oil climaxed when the salt dome gusher, known as Spindletop, spewed Black Gold 150′ in the air!

Texas Primer: The Hughes Drill Bit (This is the invention that found most of the oil in Texas)

 

3. Method for node ranking in a linked database

Patent Number: US 6285999, Granted: Sept. 4, 2001, Inventor: Lawrence Page

Long before AdWords, Google Glass, Android and self-driving cars, Google’s original vision was to improve the quality of search results. PageRank was developed in 1996 by Stanford grad students Larry Page and Sergey Brin based on the idea of citations. The basic idea was that information on the World Wide Web could be catalogued or ordered in a hierarchy by “link popularity”; the more links a page had, the more popular it was, and thus should be ranked higher. US 6285999 is Google’s famous PageRank patent.

An early prototype of the Google search engine was then unveiled in 1998, after which Google Inc. was founded. The greater relevance or “accuracy” of search results soon convinced then-dominant Yahoo! to use Google to provide its search results, and people became habituated to the search results. Google was able to leverage when it launched its own self-branded search engine.

While it’s one of many factors that determine the ranking of Google search results, PageRank continues to provide the basis for all of Google’s web search tools. The patent is assigned to Stanford University but exclusively licensed to Google. Stanford received 1.8 million shares of Google in licensing fees, which were sold in 2005 for $336 million. Interestingly, a similar site scoring and page ranking method was patented in 1999 by Robin Li, founder of China’s dominant search engine Baidu.

US06285999-20010904-D00003

 

Additional Reading:

1997 abstract of in-development PageRank research paper

A very short history of Google’s origins

 

4. Safety razor

Patent Number: US 775134; Granted: Nov 15, 1904; Inventor: King Gillette

The future of shaving changed forever on December 3, 1901 when a salesman from Brookline, MA filed a patent based on a claim that he had “invented certain new and useful Improvements in Razors.”

The patent application detailed a revolutionary way of shaving:

“in which the necessity of honing or stropping the blade is done away with, thus saving the annoyance and expense involved therein……I am able to produce and sell my blades so cheaply that the user may buy them in quantities and throw them away when dull without making the expense thus, incurred as great as that of keeping the prior blades sharp.”

The first Gillette razors and blades were ready for sale in 1903. A Gillette Safety Razor Co. razor and one blade cost $5, and 20 replacement blades cost $1. An aggressive advertising campaign and retail distribution model were implemented, which put the razors into local drugstores throughout the country. Sales steadily grew until the company arranged with the United States military to provide every enlisted World War One soldier with a Gillette shaving kit. Sales immediately tripled. In 1918, 3.5 million razors and 32 million blades were sold.

Gillette’s patent enabled the company, to which he had assigned it and several later patents, to prosecute patent infringement cases against competitors. By the time of is expiration in 1924, Gillette was ready – much like pharmaceutical companies today whose blockbusters drugs are coming off patent – to leverage traction and brand affinity to pursue successful product and pricing tiers, in addition to introducing new category products.

safetyrazor

Additional Reading:

When King Camp Gillette introduced the first disposable safety razor

Gillette sues Dollar Shave Club for patent infringement

Gillette’s strange history with the razor and blade strategy

 

5. Squirt gun

Patent Number: US 4591071; Granted: May 27, 1986; Inventor: Lonnie Johnson

“There are maybe three inventions I have that I rank as my top inventions that I’m most proud of. The robot I built in high school, the memory-protected circuitry for the Galileo and the Super Soaker.”

  • Popular Mechanics

“A toy squirt gun which shoots a continuous high velocity stream of water.” A Super Soaker is so much more than this. It’s been the weapon of choice for kids on hot summer days and nights since it was introduced in 1990 with its original Power Drencher name. (The Super Soaker brand replaced it in 1991).

The story of the Super Soaker begins in the mind of its inventor Lonnie Johnson. A lifelong tinkerer, Johnson invented a 4 foot tall, remote-controlled robot in 1968 while in high school, He later worked on the Stealth Bomber program as a US Air Force (USAF) officer, then as a systems engineer at NASA’s Jet Propulsion Laboratory on the Galileo and Cassini missions. By 1982, he was back at the USAF and tinkering on the side at night. While working on the design of an environmentally friendly heat pump using xwater instead of freon, he realised the propulsive applications of his design.

Commercializing it was a much longer journey. Without the means to produce and distribute it, Johnson pursued licensing. Between 1985 and 1987, Johnson worked unsuccessfully with Daisy to develop a product line. He then signed a licensing deal with Entertech, which lasted until it declared bankruptcy two years later. Despite these false starts, he was able to improve the design-for-manufacture of his prototypes by incorporating blow-molding. Finally,  he signed an agreement with Larami Corporation in March 1989 to manufacture and distribute his invention.

In its first two years on the market, the Super Soaker generated over $200 million in retail sales, and became the number one selling toy in America. In 1995, Hasbro Corp., the second largest toy manufacturer in the world, acquired Larami Corporation. TIME later ranked the Super Soaker 91 out of 100 on its list of all-time great toys. Overall Super Soaker sales have totaled close to one billion dollars. Lonnie Johnson earned over $100M royalties.

 

ss_prototype

Additional Reading:

7 Questions for Super Soaker Inventor Lonnie Johnson

Alvin Davis, 78, businessman behind the Super Soaker

Super Soaker creator awarded $72.9M from Hasbro

 

6. A pantyhose undergarment and method for manufacturing

Patent Number: WO 2001076398; Granted: Feb. 14, 2002; Inventor: Sara Blakely

“Spanx founder Sara Blakely was getting ready for a party when she realized she didn’t have the right undergarment to provide a smooth look under white pants. Armed with scissors and sheer genius, she cut the feet off her control top pantyhose and the Spanx revolution began.”

The world of shapewear hasn’t been the same since a young sales rep who was then selling  fax machines door to door in Florida wanted to look better for a social evening. Inspired, she started working with $5,000 in seed capital on the project as a side gig, researching patents and visiting clothing manufacturers on weekends.

Two years after the “Spanx revolution began,” she landed Neiman Marcus and Saks Fifth Avenue. The she sent some samples to TV host Oprah Winfrey. Oprah was smitten, loving them so much that she proclaimed Spanx as her product of the year for her popular “Favorite Things” episode. Why did Oprah, and why do millions of women love this brand? As the patent describes, “the overall design provides the user with a smooth, tight appearance when worn under clothing, without causing discomfort.”

Blakely couldn’t afford the full services of a patent lawyer so she visited the Georgia Tech library to learn all she could about patenting and IP. Although she hired a lawyer to write the monopoly claims, she handled the rest herself. Her mother created the patent drawing, and she filed for other IP protections including trademarks and copyright (she even registered her own name).

The first patent and early publicity from Oprah created one of the fastest growing clothing brands this century. With an adoring customer base, and total ownership of the company, Sara Blakely was named the youngest self-made woman on Forbes’ 2012 Billionaires List.

spanx

Additional Reading:

Sara Blakely and her Spanx® underwear invention

Spanx v. Yummie Tummie – Design Patent Lawsuit Takes the Fashion World by Storm

An ode to the Spanx design patent duel

Video: Sara Blakely: How She Started Spanx