How Great American Inventor Woody Norris Approaches Patents

Who do you have to take inventing recommendation from? For my part, there may be one proper reply to this query, and it’s this: Inventors who’ve achieved constant success commercializing and taking advantage of their innovations. Elwood (Woody) Norris is one such outstanding inventor. 

Over his 45-year lengthy profession as knowledgeable unbiased inventor, his improvements have produced important breakthroughs in drugs, information storage, audio electronics, and protection applied sciences — serving to to provide billion-dollar markets and producing $300 million in gross licensing charges. In 2005, he was awarded the $500,000 Lemelson-MIT prize for his invention of “a sonar device to isolate totally different actions contained in the human physique.” (Along with his spouse, he arrange a basis and gave the cash away to different inventors.)

His newest invention to make a splash is the BolaWrap, a handheld non-lethal restraining machine that’s presently being utilized by almost 400 regulation enforcement businesses around the globe. The BolaWrap capabilities like a lasso, capturing out a Kevlar wire with hooks on it to detain suspects. 

With effectively over 100 issued patents to his identify, Norris is not any stranger to the patenting course of. It was an honor to interview him about his method to mental property technique and patenting. 

Stephen Key: How did you give you the BolaWrap? It is good.

Woody Norris: “Having this many patents, you give you a routine. However on this case, the method was a little bit totally different. A 3rd celebration recommended that regulation enforcement wanted one thing that did not injure individuals. About two minutes after I hung up with this particular person, I got here up with the concept that the previous gauchos used to make use of these weighted issues on the top of a giant wire, and that’s how they’d lasso ostriches, or no matter. And I believed, “If I might make one thing like that, and it was small, handheld, and never injurious, that might be cool.”

I phoned the man again and stated, “How about this? For those who prefer it, I can begin engaged on it.” He favored the thought rather a lot, so I instantly started to work on it. Like I stated, the idea took me about 5 minutes. Nonetheless, it took the higher a part of a 12 months to good it. The model right this moment, you cock like a gun. It makes use of a fractional cost clean. We experimented with a whole lot of various variations to get there. We ended up selecting one thing that hooks, however is sufficiently small that it’s going to solely scratch the pores and skin and never essentially penetrate it if the particular person is sporting shorts.  

In fact, the factor I did straight away, which I at all times do, was make a telephone name to my patent lawyer. To this point, we have filed many U.S. and worldwide patents, with 10 granted up to now and a number of pending. 

Key: I need to hear extra in regards to the minute you got here up with the thought. You stated it was pretty quick. Do you’ve a course of?

Norris: I went via quite a few concepts in a number of minutes. Then I acquired on-line, and I seemed to see if there was something precisely and even near this factor on the market, and the closest factor was a taser. What kicked me again from utilizing a taser is that it really impregnates your pores and skin by an excellent fraction of an inch. Simply beneath the floor of the pores and skin in your chest, there’s your coronary heart. And I didn’t need to put 10,000 or 50,000 volts into somebody who could have a coronary heart downside, who was sporting a pacemaker. So, I dominated that expertise out in a short time, as a result of I already knew that in regards to the taser. 

The concept of the ostrich and the Bola got here to me in a short time. I feel that’s as a result of most innovations are a duplicate or a by-product of one thing that is already on the market. 

After I found that it didn’t exist already, I had my patent lawyer — who I’ve spent thousands and thousands of {dollars} with over the previous 30 years or so — do a fast search. I described it verbally to him and he thought it was a good suggestion. Then I set out making a prototype. 

Key: What prototyping challenges did you must overcome?

Norris: The issue with the prototype was, how do I propel it? You should utilize a spring, nevertheless it isn’t sturdy sufficient, and it’s too arduous to cock. You should utilize rubber bands, however you encounter the identical downside, and rubber bands decay after a short while. I tripped via a complete bunch of concepts earlier than deciding I wanted an explosive that was a fraction of the facility of a gun. And fortunately, you should purchase these off the shelf — everybody who makes bullets makes blanks.

So, that was the primary preliminary step. The product concept itself did not take that lengthy to give you, however lowering the dimensions of it and getting it to be dependable did. The toughest half by far was designing the cartridge that holds the 2 pellets.

Usually, when you shoot two pellets out, as they wrap across the goal, they find yourself smacking into one another. I got here with the thought of offsetting them barely, one simply barely above the opposite. That is a giant a part of our first patent, as a result of as they proceed, they separate increasingly. And so, you get a pleasant wrap 80, 90, 100% of the time. 

Key: In the course of the prototyping course of, while you begin to uncover what works, is that while you begin to file extra mental property? Do you file a non-provisional patent software at first or a provisional patent software?

Norris: Nicely, usually, you will file a provisional [first] nowadays. Within the previous days, there wasn’t any such factor. Provisionals go for a number of thousand {dollars}, two, three, $5,000. A full-blown patent will be 20 or $30,000. So, even you probably have filed numerous patents, you are sensible to go the provisional route first. You give your self a 12 months to show it out and see if there’s any curiosity in it.

It is pretty uncommon when just one particular person comes up with an concept for an invention. You’ve acquired to file it quick, as a result of the entire world’s on the market making an attempt to unravel this downside. And so, I at all times put the cart a little bit bit earlier than the horse, so to talk, to get it filed in a generic approach. 

Now, the great factor about provisional patent purposes is that they are often pretty generic. You do not have to jot down claims. You give an total description of what you are considering of and the way you’ll do it. Add some drawings in, and also you file that. Now you’ve acquired your self a 12 months to essentially refine what you are doing earlier than you spend the large cash. 

Key: After you filed that first provisional patent software, how quickly after did you file the subsequent one? Was it a month later, two months later?

Norris: The entire above. For those who get a superb brainstorm, file fast. For those who’ve acquired materials that your patent lawyer says is sufficiently totally different, take his recommendation. And by the best way, by no means write your personal patents. You’ll be able to go about that on-line these days, nevertheless it’s a idiot’s errand. Get a patent lawyer and file a provisional.

Key: Whenever you file a number of provisional patent purposes, do you mix them while you go to a non-provisional after which later do a continuation, or do you retain them separate to have a number of patents at the moment?

Norris: You need to observe the recommendation of an excellent patent legal professional. It could be a Continuation in Half (CIP), if it is typically shut, which is able to prevent some cash. Or chances are you’ll begin over with a complete new provisional or a brand new utility patent. It relies on circumstance.

The patent lawyer I exploit in Utah expenses about one fourth the charge of patent attorneys primarily based in California, the place I stay now. 

Key: How necessary is to work with a regulation agency or a patent legal professional who actually makes a speciality of a sure space? Is that necessary to you?

Norris: Oh, completely, sure. I exploit patent attorneys who know electronics or electrical issues, who’ve a level in mechanical engineering. I used a patent lawyer one time on the similar agency who had a level in chemical engineering. 

Key: What sort of info do you present your patent legal professional with? 

Norris: There wasn’t any Zoom after I first acquired going. So, what I might do is purchase a spherical journey ticket for my patent lawyer (not top quality) to fly all the way down to Poway, California, the place I stay. I began utilizing this regulation agency after I lived in Utah. I might fly him down for a day or two and provides him an indication, make some hand drawings, give him some schematic diagrams, and so forth. Then, after I was assured that he understood it, I despatched him again residence and he despatched me a draft in per week or one thing like that.

Key: How necessary is value? Do you are concerned about it on the very starting or fear about it later?

Norris: When Normal Motors has their engineers design a automobile, value is every part. When Toyota or Honda has their engineers design a automobile, value is irrelevant. They work out value after they have a suitable design, and that is the best way I function. Price is the very last thing I consider in a common approach. But when somebody cannot afford to purchase it, who’s going to?

Key: After you’ve filed patent purposes and you’ve got a very good working mannequin, do you ever return in and do different filings for manufacturing?

Norris: Sure. There are a variety of producing strategies that have been crucial to getting the product to be repeatable, small, and acceptable, and that is additionally the place value additionally is available in. I used to get every part I had made offshore. Now, I get nothing made offshore due to automation within the U.S.

We’ve got a small 3D printer right here in our lab that value between $4,000 and $5,000 that we will make just about each prototype that we wish. We have taken the effectivity of sending it offshore, and introduced most, if not all of it, again.

Key: From a patenting standpoint, what number of filings do you do to forestall workarounds and variations, to maintain your competitors at bay?

Norris: Each time we file an software, notably when I’ve a sit-down session with my patent lawyer on web site, we’ll spend a substantial amount of time considering, “How might I get round this? What would somebody do to do that a special approach?” So, typically, we’ll file an software on a approach that’s possibly not so handy, possibly not the optimum solution to file it, however do it nonetheless. Just a few occasions in my profession, I’ve discovered that these repay fairly effectively.

Key: Is there such a factor as a bulletproof patent?

Norris: Sure. They’re uncommon, I’ll say that. You both have a bulletproof patent otherwise you surround your idea with a whole variety of patents to box it in to get the competitors out. After which, by doing that, you will get it to be kind of bulletproof. 

You additionally need to be sure to do not tempt somebody to steal it. I’ve licensed a large number of patents to different firms. I had a head filled with different innovations, so I used to be for many of my profession in licensing to another person. Be affordable in what you count on to get from it. Most inventors, it is the one invention they could have. They value it to the sky, to the place it turns into extra worthwhile for some firm to steal it. 

Make it in order that they don’t seem to be tempted to steal it.

Key: And you are able to do that by being affordable and having a wall of patents defending your self. Is that right?

Norris: The extra patents you file, the larger that wall turns into, if the patents are price their salt, so to talk.

Key: How are you aware who to share it with and who to not share it with? Is it your intestine? Do you’ve them signal a non-disclosure settlement (NDA)? Do you do a background examine?

Norris: I’ve to inform you, after I filed my very first patent, which was 40 years in the past, I had everybody I confirmed it to signal an NDA, however as I went alongside, I filed a provisional software first, after which I might present it to anyone.

Key: Are you wanting on the market on the very starting and asking, “How massive is that this going to be?” 

Norris: Oh, completely. Early on. You need to take a look at all of the components earlier than you determine to spend money and time, and time is cash.

Key: When did you get the enter from regulation enforcement confirming that you just actually had one thing?

Norris: There have been some cops domestically who I knew and a pair who I did not know that have been referred to me by different cops. Once I introduced them in to see in the event that they favored the thought, they cherished it. 

A month after conceiving the thought with the assistance of a design agency that value us some huge cash, an organization in Los Angeles that had contacts with the police arrange a gathering for us with two retired policemen. We took our prototype and shot it — we lassoed them with it, so to talk. And so they stated, “This could possibly be a billion-dollar product.” And I stated, “Perhaps, possibly not.”

I realized alongside the best way that each time a police officer shoots somebody who dies, the division can look ahead to spending 1,000,000 {dollars} in authorized charges. So, that’s an amazing motivation for police departments to make use of one thing that’s not deadly. And it inspired me that I used to be taking place the suitable avenue.

Key: Have you ever ever been in federal court docket defending your patents?

Norris: Sure, for the FlashBack recorders. The corporate that I offered that to and was the biggest shareholder was EDigital. They licensed that mental property to in all probability at the very least 25 or 30 firms. One of many firms that they sued for patent infringement took us to court docket. I had a patent lawyer who did not know a lot about electronics, and he wrote some issues within the one foremost software that basically harm us. As a result of he did not know what a digital built-in circuit was, it value us a few million {dollars}. 

He had written a definition that was completely incorrect. And so, the corporate — not me personally — misplaced some cash on that that they may have made. They did not go broke over it, however they did depart some cash on the desk. 

Key: Let’s discuss negotiating licensing agreements. Do you deal with any of that your self, or do you’ve a licensing legal professional? What’s your technique?

Norris: Very early on, I discovered a accomplice within the regulation agency who was an mental property negotiator. We have privately mentioned, what do you assume that is price? Apparently, for a number of of the large patents (just like the one to Jabra to make headphones), they made a suggestion of a number of million {dollars} proper out of the gates. That is very uncommon.

For those who’ve acquired actually good concepts, I feel you must be an excellent salesman.” 

Today, anybody can tout themselves an skilled on-line. I see it on a regular basis in my business. There are inventors giving recommendation who’ve licensed only one product onto the market. There are inventors main inventor teams who’ve spent 10 years failing to commercialize the identical invention. 

The query of who do you have to belief for inventing recommendation is, sadly, effectively price asking.