To keep corporate assets and intellectual property out of competitors’ hands, look no further than a popular childhood toy for lessons in patent protection.
Larami debuted the Super Soaker, a squirt gun with a pressurized chamber, in 1990. The company sold 2 million units in 1991, and the Super Soaker entered the Toy Hall of Fame in 2015. Now owned by Hasbro and branded the Nerf Super Soaker, versions of the toy are still on the market starting at $4.99.
None of that would have happened if Larami hadn’t survived a patent infringement lawsuit filed by Talk to Me Products in 1992. The lawsuit claimed that Talk to Me’s 1978 patent covered the design of a squirt gun with a pressurized chamber.
The case came down to one phrase in the original patent, said Benjamin Roin, an assistant professor of technological innovation, entrepreneurship, and strategic management at MIT Sloan: Having a chamber “therein.”
That phrase gave Larami an opening for a design-around, said Roin, who presented on patent strategy at the MIT Industrial Liaison Program’s recent Innovations in Management Conference. As any child of the 1990s can attest, the Super Soaker’s water chamber sits on top of the toy, and not inside, detaching for a quick refill.
“When you look at a claim, you look at the language of a patent, does [the product in question] have every element listed in the patent?” Roin said in an interview. “If the patent lists A, B, C, and D, and you’re missing B or D, you don’t have the same product.”
“Any mistake … can be taken advantage of”
Roin said children’s toys make good examples for communicating lessons about the patent system: “It tends to be pretty simple technology, and we’re familiar with a toy’s purpose and what it’s used for.”
Traditional squirt guns typically stored water in the handle and contained two tubes, one leading from the trigger to the water reservoir and another leading from the reservoir to the nozzle, Roin said. Pressing the trigger squirted air into the reservoir, pushing the water out of the reservoir, into the second tube, and out the barrel of the squirt gun. If you were lucky, the water would shoot a few feet.
The Super Soaker used a piston pumper and a pressurized water reservoir to compress air within the reservoir. Here, pressing the trigger opens an air valve, and the compressed air pushes the water out. “That’s genuinely a major advance,” Roin said.
Talk to Me Products filed a patent infringement suit, claiming the Super Soaker was a copy of its squirt gun, the American Gladiator. But Larami’s design-around — putting the water reservoir, or chamber, on top — allowed it to get around the original patent.
“Any mistake in language, or the precise outer boundaries of an idea, can be taken advantage of,” Roin said. “It’s different than ‘having a chamber therein’ in the original patent.”
Include “anything that will impede competitors”
Companies in a handful of highly regulated industries, including medical devices and pharmaceuticals, benefit from what’s known as strong patent protection. In these industries, companies must receive Food and Drug Administration approval to market and sell a product, which places external constraints on design-arounds, Roin said.
At the other end of the spectrum are companies in the food and beverage industries, which are protected by trade secrecy. Here, it’s the processes happening behind closed doors — the exact ratio of the 11 herbs and spices, or the exact composition of the cream filling between the two chocolate cookies — which a competitor is unable to replicate.
Many companies are somewhere in the middle and need to protect their products from design-arounds. The Super Soaker example illustrates that the goal of a patent isn’t to protect the technology that a company’s engineers build, as creative and novel as that tech may be, but to block competitors from entering the company’s market.
“The more you foresee, the harder you make it for a competitor’s engineers to design around the product,” Roin said. Moving the housing case outside [the squirt gun] was an easy out.” But, he added, “That’s not the reason it was sold. It was sold because you can shoot 20 feet and get a real stream when you shoot someone.”
A critical and overlooked mistake, for Talk to Me Products and many others, is limiting the process to patent attorneys and engineers. Companies should not wait until it’s time to manage the portfolio of patents already acquired to bring in the business development team, Roin said.
That’s because the business team, with its knowledge of what customers need as well as what competitors are doing, can help a company define specific engineering processes or embedded mechanisms that define an innovation, rather than the innovation itself.
“The goal isn’t the most creative inventions. It’s patents that will make it difficult to come up with imitations — anything that will impede competitors,” Roin said. “What is required for competitors to enter the market? What things need to be present? Make a list of things that have to happen, and ask yourself if you get patent protection around that.”