Allison Conti and Michael LaBrie discuss Protecting Your Intellectual Property in this article I wrote for the Oklahoma Venture Forum.
Founder and CEO of Watkins-Conti Products, Inc., Allison Watkins-Conti is a recognized leader, inventor, and speaker. Raised in an entrepreneurial environment, she witnessed the formation and creation of sustainable businesses and has experience in many facets of business management. In 2015, Conti conceived the solution for an issue that affects an estimated one in three women. She designed, patented, engineered, and manufactured, Yōni.Fit, a nonsurgical, intravaginal device for women suffering from stress urinary incontinence. The device is entering the FDA approval process. Her company was awarded Most Promising New Venture of the Year through the Oklahoma Venture Forum.
“We’ve done clinical trials at Stanford and NYU and Thomas Jefferson University, and I’ve filed intellectual property utility patents,” said Allison Conti. “Right now, I have five utility patents issued in the United States, and those have been filed in 17 countries. Then I have got three trademarks and two design patents as well.”
Speaking on the business side of intellectual property, Conti compared having these protections to owning real estate. They increase the value of your business and set up a picket fence around your idea so that nobody else can steal it.
Mike LaBrie is a shareholder with McAfee & Taft in Oklahoma City. He has been practicing intellectual property law since 1994 and was a mechanical engineer for Schlumberger before attending law school. LaBrie is active in patent prosecution, patent portfolio management, trademarks, copyrights, and software and is the leader of the firm’s Intellectual Property Group and Biotech Industry Group.
“The key to monetizing the idea or the invention is to protect it,” said Mike LaBrie. “Otherwise, if there’s no intellectual property protection and you roll the product out, then anyone can copy it and basically take it and commercialize it themselves. And so, the intellectual property, it creates obstacles for competitors, and it provides long-term protection so that you can commercialize it, go through the FDA process, license it, sell the product, those sorts of things.”
“If you have to raise money, people want to ensure that whatever their funding is protected,” Conti added. “Jenny Martel is the head of Global Brand Protection for Colgate Palmolive, and she sits on my board, and she’s just constantly talking about trademarking and how important it is because even if you roll a product out in the United States, and it’s, for example, not trademarked in China, they can go and counterfeit your goods and pretend they’re you.”
LaBrie agreed with Conti and added he had seen increased problems lately, especially in China and some other countries, and trouble can arise in several different situations.
“One is where you have customs issues,” said LaBrie. “If you have a product manufactured in China, for example, but you don’t have a trademark registered in China, then you can have difficulty exporting it out to the United States, in addition to people just registering your trademark in China and manufacturing and selling goods under that name.”
One of the biggest mistakes an entrepreneur can make is rolling the product out or disclosing the product without first filing a patent application, said LaBrie.
“In the United States, you have one year from the first public disclosure to file a patent application,” said LaBrie. “Other countries require what’s called absolute novelty, meaning you have to file a patent application before the first public disclosure or commercial sale. So, if you disclose it too early, you may miss the one-year bar in the United States, but you may also be prohibited from filing foreign patent applications in other countries.”
“I think that founders really make a mistake of trying to do everything themselves and not hiring the best lawyers,” said Conti. “For me, it’s non-negotiable. I’m going to hire the best lawyers for every contract.”
Even if entrepreneurs do not have the funds to protect their intellectual property fully, LaBrie said they should have a strategy. They should know what they are going to do, when they will do it, and when they will file for the patent and trademark applications.
Conti and LaBrie will speak to Oklahoma Venture Forum Power Lunch members on Wednesday, December 14, 2022. The event will be held at The Venue at Crew in Downtown Oklahoma City from 11:30 am to 1:00 pm and will be open to members and guests both in-person and virtually via ZOOM. Both Conti and LaBrie recommend attending the monthly event.
“I’ve met a lot of different companies that I do business with now through the Oklahoma Venture Forum, so it’s a great networking opportunity,” said Conti. “And even if we didn’t do business, I’ve learned a lot from people in the conversations and met a lot of new, interesting businesses and different vendors that can help. For example, an insurance company that I work with now that it’s hard to get clinical trials insured, that I was connected through the Oklahoma Venture Forum. I highly recommend attending all of the luncheons for those reasons.”
“I think something that stands out at OVF is the diversity of backgrounds. You have entrepreneurs, you have service providers, you have funders, you have a lot of different resources that can be valuable regardless of what your company does,” said LaBrie. “I think the diversity of backgrounds will help make people successful and great contacts.”