Inventors Eye | Tripping the Light Fantastic

Inventors Eye | Tripping the Light Fantastic
Inventors Eye
Inventors Eye. The USPTO's bimonthly publication for the independent inventor community. December 2013, volume four, issue six0

The USPTO's bimonthly publication for the independent inventor community

Left side: the inventor of the LightKeeper, Richard W. Frederick, right-side: the LightKeeper tool

Tripping the Light Fantastic

An Interview with W. Richard Frederick

Any of us who has hung holiday lights has dealt with a string that goes dark because of one burned-out bulb. We might be tempted to simply throw out the string when it proves difficult to identify the bad bulb. That is not a problem with technology created by W. Richard Frederick, a self-taught engineer and inventor of the LightKeeper (U.S. patent No. 6,480,001). This device keeps holiday light strands or pre-lit Christmas trees bright. His practical little device works by forcing the electrical current to bypass burned-out bulbs. Mr. Frederick was kind enough to chat with Inventors Eye about his invention and career as an independent inventor.

Inventors Eye: You are a named inventor on 24 patents and you have quite a bit of experience developing inventions and bringing products to the marketplace. How did you come by the idea for the LightKeeper?

W. Richard Frederick: It's a long story. I assigned one of my earlier inventions to a company that employed me. In return, I received a small equity stake in the company. The market potential for the invention was huge. If it paid off, I would have received a seven-figure payment, enough to retire in style. Things didn't work out. One day, the other investors and I were called into a meeting and told that the funding was pulled. Our stock was worthless. The company could not afford to keep us, and we were fired. In order to pay the bills, I took a job working in a metal shop. The pay wasn't good and the working conditions were "difficult." I quickly started looking for a way out of the situation.

IE: So, what spurred you on was the need for a better job?

WRF: Yes, the need for a better job was my primary motivation, but doing something I knew a lot about and loved was important. My wife and I love Christmas. Every year, we put out over seven thousand outside lights and decorations, including some that I invented. The town trolley made our house a stop on its tour.

IE: What was your experience with finding financing for your idea?

WRF: I took a list of Christmas inventions to a trade show and began the difficult process of trying to find an investor who was willing to develop them. One dealer was actually insulting, but I kept going down the aisles and finally a vendor said, "Maybe." The vendor called a few days later and we met again to decide which products he might be interested in selling. He told me a device that fixed lights was at the top of his list. The vendor didn't have contacts that could make this type of product and suggested I consider finding someone who could manufacture the product for me. The skillset of a good inventor is not usually the same as a good businessman, and especially not a good salesman. A lot of inventors make that mistake. It's okay to love the invention, to make and use it yourself, but can you sell enough of them? There's a lot more involved in running a business. For starters, you need to comply with all safety and regulatory issues. You need to ask yourself and be honest: can I do this, can I sell this, or what portions can I do? Finally, you have to ask yourself: just because I can do this or that, will I love doing it?

IE: How did you develop the idea into an invention?

WRF: Development was tough. I still needed to work in the metal shop to pay the bills. I would work an 8-hour shift and then come home and work another 4-6 hours on the LightKeeper. I set up a used desk in the corner of the family room. My work bench was an old door set up in the laundry room. Most weekends were spent at that desk. My wife would sometimes bring me meals so I could work without stopping. Edison was wrong when he said invention is 1 percent inspiration and 99 percent perspiration; mine was more like .01 percent inspiration and 99.99 percent perspiration.

IE: So, did you decide to make the LightKeeper yourself or did you find someone to manufacture it?

WRF: I decided that I would own and keep the patents. The vendor I met at the tradeshow would be my exclusive sales and marketing agent, and we would set up the manufacturing to make sure the product was made to the highest quality and worked to our specifications. The patents, design, and manufacture would be my active part. I got a good lawyer to draft the patent application.

The president from my previous job-who was also fired in that same meeting-suggested a manufacturer. He is a real nuts-and-bolts guy with manufacturing connections in China, and he was still looking for a job. We paid him to help set up production in China. We tried having the LightKeeper manufactured in the U.S., but we just couldn't meet what we thought was a realistic retail price. At this point, I've taken so many trips to China I can eat peanuts with chopsticks.

IE: What lessons have you learned from your experience as an inventor that you would like to share with others?

WRF: Many people just want a patent and believe it is their golden ticket and will protect them from anything. What they don't realize is that a patent is only as strong as the claims. If you don't claim your invention in a specific way that makes workarounds difficult for infringers, you'll lose. Read and understand your patent and its claims. Help draft them if you can.

It is also very important to know and obey the rules when filing for a patent. It is your responsibility to tell the patent examiner all the information and prior art that you know about that relates to your invention. This can save you later down the road. For example, after the LightKeeper had become successful and was in almost every hardware store, a few larger companies did a knockoff. They changed the shape and color, introduced a tooled product at a major tradeshow, and began taking orders. My patent attorney was great. I don't know what I would have done without him. He wrote them a "nice" letter explaining our position. The big companies said there was a factory light set tester used almost exclusively in China. They claimed we probably knew about it or should have known about, and in a backwards way it was relevant prior art, meaning it could invalidate my patent. That was the justification for introducing their similar product.

I did actually know about this tester from my trips to China. I had an English version of the operator's manual. I had submitted this manual to the USPTO when the LightKeeper's patent application was still pending with a clear explanation why this was not applicable prior art. My patent attorney reminded the large companies to check the patent file, where they would see that this other technology had already been disclosed and reviewed by the examiner. The companies withdrew their product without an expensive court fight.

IE: That's a great story. Do you have any last advice for readers?

WRF: Your goal isn't to just get a patent-it should be to get real protection for products that make you money. A really successful product, one that lasts for years instead of being a gimmick, is an invention based on values. This creates a revenue stream instead of a single spike. Also, I always follow the golden rule: treat others the way you would like to be treated. I had an overshadowing design goal: do your work as if you are doing it for God, and He will reward you. It really works.

Finally, don't take shortcuts or be penny-wise and pound-foolish. Have you ever wondered who is the most expensive patent attorney? Well, it's the one that doesn't do the job that needs to be done when it needs to be done.

Anthony Knight : Office of Innovation Development