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How to Achieve Repeat Success Licensing Your Inventions

Award-winning inventor George Burkhardt describes how he brought his latest automotive solution to market.

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BY Stephen Key - 08 Jun 2018

PHOTO CREDIT: Getty Images

For former mechanical engineer George Burkhardt, being resourceful is a way of life. Since the Texan retired about fifteen years ago, he's achieved great success bringing his ideas for new products to life. I've had the pleasure of knowing Burkhardt for some time now, as he leads the Alamo Inventors group in San Antonio.

He's a remarkably impressive inventor-- one who has mastered my strategies for harnessing the power of open innovation and then some. When Burkhardt tells me about his latest success, he makes it sound easy. Partly, that's because he has a great attitude. He understands he's playing a game. To win, he must keep thinking one step ahead. To that end, he uses his creativity to attract the attention of potential licensees and has taught himself just about everything there is to know about patents.

This April, we were in Washington D.C. together advocating for the interests of independent inventors during a national gathering of inventor group leaders and independent inventor advocates. Inventors Groups of America, a not-for-profit I cofounded last year, hosted the conference.

I've been traveling to inventor groups for many years now. In my mind, the leaders of these groups are the unsung heroes of our industry. Most are successful inventors like Burkhardt. Every month of the year, they devote their time and energy to helping and guiding other people with ideas. If you're new to inventing and/or want to share what you've learned, please, seek out your local group. (Inventors Groups of America maintains a list.)

I was delighted to interview Burkhardt about how he licensed his latest invention for the automotive industry -- the HitchMate Grab Handle -- to Heininger Holdings. The handle is made in America, has been on the market for two months, and is available online at retailers including Home Depot, Target, Walmart, Sears, Kmart, Amazon, Tractor Supply, Newegg, Jet, a number of auto accessory stores, and even Bed Bath & Beyond.

How did you become aware of the problem your invention solves?

I first became aware of the difficulty involved in entering and exiting a truck bed when I purchased a used but relatively new pickup truck in 2014. When I watched people attempt to get in and out of newer pickup beds, I noticed they would generally lower the tailgate, sit on it, roll over in the bed, and then stand up. The process repeated itself in reverse when people attempted to exit.

People have to enter truck beds all the time because the sidewalls are too high to reach into the bed to retrieve equipment. To make matters worse, new pickup beds are even higher off of the ground. I predict they will probably get even higher due to things like the use of bigger tires to reduce rolling resistance in order to enhance fuel economy.

What did you find when you studied the market for similar products?

When I searched the market online, I found aftermarket steps that are permanently attached to bed structures. They're expensive when configured to attach to existing bolt patterns. Options more reasonable in price required installation holes to be drilled into the truck. I reasoned that these products probably had a limited market due to how expensive and inconvenient they were to install.

These products were typically sold in truck accessory stores, which the average truck owner isn't familiar with, I also noticed.

I found a relatively pricey pickup grab handle on the market that again, required permanent mounting on the truck bed via drilling holes in the bed structure.

The market would support a simple, inexpensive grab handle that could be quickly attached and removed from any truck bed when needed, I reasoned. In addition to making it easier to get in and out of truck beds, my handle could also be used to aid in the pushing and pulling of equipment in and out of the bed.

How did you approach designing a solution?

First, I studied the details of a typical truck bed, which helped me determine that a simple grab handle could be quickly connected to the tailgate latch pin and tailgate hinge.

Then I fabricated a steel prototype in my shop and kept altering it until I was certain that it would fit all mid-size and full-size pickup trucks on both sides of the bed.

While working toward the final prototype, I conducted a thorough patent search and determined that the handle I was developing was truly unique and non-obvious and therefore, patentable. Testing different prototypes helped me create a design that was more functional and efficient than current options.

What were your marketing materials and how did you create them?

After studying the market and prototyping, I created a one-page sell sheet and a video demonstrating the benefit of my handle. I made both on my own, except for the fact that I let my son-in-law do the acting on camera while I filmed.

How did you create a list of companies to approach and get in touch with them about your solution?

I used LinkedIn to identify upper management -- usually vice-presidents of marketing -- at potential licensees.

After I prepared and submitted a detailed provisional patent application later that year, I contacted a number of individuals including the vice-president of marketing at a large company with wide distribution who was very interested and requested a sample. (I had actually already met and demonstrated a prototype to this individual at a trade show in Las Vegas earlier in the year.)

This company conducted extensive focus group testing. The results were very encouraging, which was exciting.

While they were evaluating my prototype, I prepared and submitted a lengthy non-provisional utility patent application to the USPTO in 2015 that included detailed specification of the invention's various embodiments, formatted perspective drawings, 20 claims, and an abstract.

But when this company offered me a licensing agreement, I identified major problems with the royalty rate, the prosecution of infringers, liability insurance, and other issues that could not be resolved with their legal department.

So, like you encourage us to do, I kept on calling. Somehow, I remembered that I had once seen a unique trailer hitch in a SkyMall catalogue. When I did a little research, I discovered the company was seriously orientated around social media and e-commerce marketing and that it also had products in stores.

Using LinkedIn, I found the president of the company and cold-called him to say that I had a patent-pending truck accessory product that fit an unmet need in the truck marketplace (and thus, would be a good fit for his company.) After he checked out my marketing materials and requested a prototype, we began discussing a licensing agreement. The company's forward-looking approach to marketing I liked in particular.

Was your patent issued right off the bat?

No. I prepared a successful reply to the office action I received and prosecuted the patent application to patent issuance last year. With protection in hand, I was able to negotiate a better licensing agreement.

(I've met very few inventors who regularly obtain patents without the assistance of professionals. That's unusual. Read about how Burkhardt taught himself every aspect of the patent process.)

"So far, at least, I feel like choosing a licensee whose strength was e-commerce was the right decision," Burkhardt said.

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