John Eastman talks with Mike Marks, inventor and business owner, about developing and patenting products.

I wanted to talk to you first about the reference on your website in which you mention your years of experience with patents and trademarks and other forms of intellectual property. Could tell me about that experience?
MARKS: WorkTools, Inc. is my first company which I started it with my brother Joel. What’s been interesting is seeing a product go through the entire cycle of patent issue, the product launch, patent expiration. We’ve gone through the full cycle. I’ve experienced it in two general ways. Especially in the United States, they’ll make any legal efforts to work around patents that they’re aware of. That’s a broad statement, but that’s certainly been our experience. U.S.-based companies don’t egregiously knock you off — they might do it because they’re unaware of the patents that are pending, or patents that are about to issue. But if they’re aware of a patent, they will do what they think is appropriate to avoid explicitly violating its claims. Whereas companies in Asia, whether by request from a foreign company or on their own, have on occasion knocked us off very explicitly, imitating our tool to a tee.

When you say that companies specifically copied your product, do you mean that they sought out your patent and examined its contents, examined your product, and re-engineered it?
MARKS: I don’t think that a lot of companies even bothered looking at the patent at all, they just saw the product and said oh, this is an item that is being sold and we’re going to just copy it explicitly. Maybe they were unaware of intellectual property laws. I don’t think companies are quite that bad about it today, but 10 or 12 years ago that was definitely the case.

Even though we have enforceable Taiwanese and Chinese patents issued, we have had no success in stopping any Asian companies. We even won at court in Taiwan, and it really did no good whatsoever. Perhaps it would be a little different for us if we were a Taiwanese company. More recently, we have become engaged in litigation with a US-based company that knocked off another product of ours. I believe we’re going to prevail.

Even in the United States, where our laws are impeccable … you need a lot of money to cover yourself because the government doesn’t defend you.

MARKS: I think it’s common. For example we may not have patents in Venezuela. We don’t have patents in South Africa. We might not have a patent in Brazil, although in a lot of cases we do. But let’s just say a lot of companies don’t. It’s a lot of money to get all this international work done. If I don’t have a patent in these countries, then the companies can take my exact, precise design, and legally, without violating any business laws, make an exact copy of my product in Venezuala and sell it to Brazil. No issue there. Where it gets heavier is when you have that patent issued in China, and in theory, they shouldn’t make that thing in China. That’s very hard to enforce. Even in the United States, where our laws are impeccable, if you get knocked off in the US, you need a lot of money to cover yourself because the government doesn’t defend you.

Now with so many ideas originating in the U.S. and products then being manufactured via outsourcing to Asian companies — even with a sound U.S. patent — is one at risk for having a product getting knocked off overseas?
MARKS: Not by the company you’re doing the deal with. If you have a good Chinese partner, you’ll never find anyone better to do business with. So the company that you go to for contract manufacturing, you have a relationship that you can pretty much bank on.

I want to talk to you about how you’ve managed to set up a timetable for the invention process. When should engineering and drawings be done? Should you produce a product sample early on and should that be documented? When is the right time to patent?
MARKS: The first area I think you need to address is what kind of product is it. What’s your life cycle? How much profit potential does the product have? How are you going to market? You need to address all of these things before you can have an intelligent patent strategy. And to take an example, let’s say you have an idea like the pet rock. And you say, well, I’m going to file a patent on the pet rock. How can you do that? Well, your patent might be something like putting a cardboard box around a rock, or something. You’re actually patenting the package, you would say. You couldn’t patent the rock, but you could trademark the name and perhaps patent the methodology for, say, putting paint on the rock if you painted the rock. If you did some action on the rock. If you grade the rock or cut the rock in some manner, you could probably get a patent on that. But on the rock itself, there’s no patent. There’s no patent on the idea of the pet rock itself. The point is that the pet rock isn’t worth patenting for two reasons. First, the life cycle is short so you’ll probably be getting out of the market when knockoffs appear. Second, even if you could get a patent it would be unable to stop knockoffs that effectively copy the core concept.

If you take something — whether it’s an iPod or the Gator-Grip Socket or a staple gun — designed things, our tools, and office product type things, do have life cycles of 20 years. So getting a patent sheet on those is really, really useful. Especially tools that we make our money from licensing. Large companies won’t give you licensing deals — really, with any major corporation — unless you have a patent.