Patent pain

A B.C. entrepreneur discovers patents only go as far as your wallet.

With a shrug of his muscled shoulders, James McBride can lift more than 330 kilograms. Now, if only his business could shoulder the burden of bigger competitors.

Over the past five years, McBride has slowly built up World Standard Fitness, a Vancouver-based fitness accessories business, largely on the basis of a new kind of strap that helps weightlifters lift more by giving them a better grip. It’s been a battle every step of the way: he spent his last $1,000 in savings to do a patent search, and borrowed startup funds to bootstrap his venture, then stayed awake at all hours to cold-call potential retailers and put the finishing touches on the products before packing the boxes. Gradually, though, more than 200 specialty retailers and gym shops in North America picked the now-patented product up. “I’ve made it further than a lot of people said,” says McBride, a 31-year-old former amateur weightlifting competitor. “But I’m glad I got this far, and this strap will be the dominant product in 10 years time.”

But by then, his rubberized lifting strap may no longer be the top brand. Comparable products are already popping up in the market. Although McBride believes these products are similar to his, he discovered that it’s a moot point. That’s because he doesn’t have the financial resources to launch a legal challenge even if there was an infringement& — keep in mind, no formal accusations have been made. “A lot of places have taken notice of my company because of this patent,” says McBride.

Unlike many first-time inventors, McBride carefully developed and tested his product in the privacy of his home. By keeping it to himself until he filed for patents in Canada and the U.S., he avoided early disclosure of his invention, which could have invalidated his IP rights if he’d waited too long to file.

That part he did right. But he slipped up two years ago by drawing attention to his need for larger companies to take his product to the next level and his desire to get back to product development. After sending out samples, discussions with various parties went nowhere. While McBride was upfront about the patent in his negotiations, he also openly discussed his struggles as an entrepreneur, the market share of the strap, and that he only had two other products at the time. “They knew it was a popular product,” says McBride. “But they knew I wasn’t very big.”

Such disclosure can be a critical mistake, says Jason Howg, a partner at Borden Ladner Gervais LLP in Calgary who specializes in patent and trademark law. “When you go into a business deal, you don’t open the kimono and tell the other side absolutely everything about your negotiation position,” he says. “You have to be very guarded about what information you tell another party.” McBride also had neither legal counsel, nor did he insist on a non-disclosure agreement or a term-sheet with non-competition clauses, which can be crucial even if you have a patent, says Howg. More ammunition is always better in court, particularly if you need a lawyer to take your case on a contingency basis. But, “If you can’t follow through and commence litigation,” admits Howg, “then you’re up the creek.”

Yet McBride continues to grind it out. His product line is expanding, which is slowly helping to grow his retail network. One of his new products, a lifting-and-dipping belt, has a patent pending, but he doubts it will do any good. “I’m starting to consider abandoning the patent route,” says McBride. “One thing I’ve learned is that it might not be worth the time and expense. And unless you have millions to fight it, you don’t really have any protection.”