Entrepreneurs

How Great American Inventor Woody Norris Approaches Patents

Who should you take inventing advice from? In my opinion, there is one right answer to this question, and it’s this: Inventors who have achieved consistent success commercializing and profiting from their inventions. Elwood (Woody) Norris is one such remarkable inventor. 

Over his 45-year long career as a professional independent inventor, his innovations have produced significant breakthroughs in medicine, data storage, audio electronics, and defense technologies — helping to produce billion-dollar markets and generating $300 million in gross licensing fees. In 2005, he was awarded the $500,000 Lemelson-MIT prize for his invention of “a sonar tool to isolate different movements inside the human body.” (With his wife, he set up a foundation and gave the money away to other inventors.)

His latest invention to make a splash is the BolaWrap, a handheld non-lethal restraining device that is currently being used by nearly 400 law enforcement agencies around the world. The BolaWrap functions like a lasso, shooting out a Kevlar cord with hooks on it to detain suspects. 

With well over 100 issued patents to his name, Norris is no stranger to the patenting process. It was an honor to interview him about his approach to intellectual property strategy and patenting. 

Stephen Key: How did you come up with the BolaWrap? It’s brilliant.

Woody Norris: “Having this many patents, you come up with a routine. But in this case, the process was a little different. A third party suggested that law enforcement needed something that didn’t injure people. About two minutes after I hung up with this person, I came up with the idea that the old gauchos used to use these weighted things on the end of a big cord, and that’s how they would lasso ostriches, or whatever. And I thought, “If I could make something like that, and it was small, handheld, and not injurious, that would be cool.”

I phoned the guy back and said, “How about this? If you like it, I can start working on it.” He liked the idea a lot, so I immediately began to work on it. Like I said, the concept took me about five minutes. However, it took the better part of a year to perfect it. The version today, you cock like a gun. It uses a fractional charge blank. We experimented with hundreds of different variations to get there. We ended up choosing something that hooks, but is small enough that it will only scratch the skin and not necessarily penetrate it if the person is wearing shorts.  

Of course, the thing I did right away, which I always do, was make a phone call to my patent lawyer. So far, we’ve filed many U.S. and international patents, with 10 granted thus far and multiple pending. 

Key: I want to hear more about the minute you came up with the idea. You said it was fairly fast. Do you have a process?

Norris: I went through a number of ideas in several minutes. Then I got online, and I looked to see if there was anything exactly or even close to this thing out there, and the closest thing was a taser. What kicked me back from using a taser is that it actually impregnates your skin by a good fraction of an inch. Just beneath the surface of the skin on your chest, there’s your heart. And I didn’t want to put 10,000 or 50,000 volts into someone who may have a heart problem, who was wearing a pacemaker. So, I ruled that technology out very quickly, because I already knew that about the taser. 

The idea of the ostrich and the Bola came to me very quickly. I think that’s because most inventions are a copy or a spinoff of something that’s already out there. 

After I discovered that it didn’t already exist, I had my patent lawyer — who I have spent millions of dollars with over the past 30 years or so — do a quick search. I described it verbally to him and he thought it was a good idea. Then I set out making a prototype. 

Key: What prototyping challenges did you have to overcome?

Norris: The problem with the prototype was, how do I propel it? You can use a spring, but it isn’t strong enough, and it’s too hard to cock. You can use rubber bands, but you encounter the same problem, and rubber bands decay after a short time. I tripped through a whole bunch of ideas before deciding I needed an explosive that was a fraction of the power of a gun. And thankfully, you can buy those off the shelf — everyone who makes bullets makes blanks.

So, that was the first initial step. The product idea itself didn’t take that long to come up with, but reducing the size of it and getting it to be reliable did. The hardest part by far was designing the cartridge that holds the two pellets.

Normally, if you shoot two pellets out, as they wrap around the target, they end up smacking into each other. I came with the idea of offsetting them slightly, one just slightly above the other. That’s a big part of our first patent, because as they proceed, they separate more and more. And so, you get a nice wrap 80, 90, 100% of the time. 

Key: During the prototyping process, when you start to discover what works, is that when you start to file more intellectual property? Do you file a non-provisional patent application at first or a provisional patent application?

Norris: Well, normally, you’ll file a provisional [first] nowadays. In the old days, there wasn’t any such thing. Provisionals go for several thousand dollars, two, three, $5,000. A full-blown patent can be 20 or $30,000. So, even if you have filed a lot of patents, you’re smart to go the provisional route first. You give yourself a year to prove it out and see if there’s any interest in it.

It’s fairly rare when only one person comes up with an idea for an invention. You’ve got to file it fast, because the whole world’s out there trying to solve this problem. And so, I always put the cart a little bit before the horse, so to speak, to get it filed in a generic way. 

Now, the nice thing about provisional patent applications is that they can be fairly generic. You don’t have to write claims. You give an overall description of what you’re thinking of and how you would do it. Add some drawings in, and you file that. Now you’ve got yourself a year to really refine what you’re doing before you spend the big money. 

Key: After you filed that first provisional patent application, how soon after did you file the next one? Was it a month later, two months later?

Norris: All of the above. If you get a brilliant brainstorm, file quick. If you’ve got material that your patent lawyer says is sufficiently different, take his advice. And by the way, never write your own patents. You can go about that online nowadays, but it’s a fool’s errand. Get a patent lawyer and file a provisional.

Key: When you file multiple provisional patent applications, do you combine them when you go to a non-provisional and then later do a continuation, or do you keep them separate to have multiple patents at that time?

Norris: You have to follow the advice of a good patent attorney. It may be a Continuation in Part (CIP), if it’s generally close, which will save you some money. Or you may start over with a whole new provisional or a new utility patent. It depends on circumstance.

The patent lawyer I use in Utah charges about one fourth the fee of patent lawyers based in California, where I live now. 

Key: How important is to work with a law firm or a patent attorney who really specializes in a certain area? Is that important to you?

Norris: Oh, absolutely, yes. I use patent lawyers who know electronics or electrical things, who have a degree in mechanical engineering. I used a patent lawyer one time at the same firm who had a degree in chemical engineering. 

Key: What kind of information do you provide your patent attorney with? 

Norris: There wasn’t any Zoom when I first got going. So, what I would do is buy a round trip ticket for my patent lawyer (not first class) to fly down to Poway, California, where I live. I started using this law firm when I lived in Utah. I would fly him down for a day or two and give him a demonstration, make some hand drawings, give him some schematic diagrams, and so on. Then, when I was confident that he understood it, I sent him back home and he sent me a draft in a week or something like that.

Key: How important is cost? Do you worry about it at the very beginning or worry about it later?

Norris: When General Motors has their engineers design a car, cost is everything. When Toyota or Honda has their engineers design a car, cost is irrelevant. They figure out cost after they’ve got an acceptable design, and that’s the way I operate. Cost is the last thing I think of in a general way. But if someone can’t afford to buy it, who’s going to?

Key: After you have filed patent applications and you have a really good working model, do you ever go back in and do other filings for manufacturing?

Norris: Yes. There are a number of manufacturing techniques that were critical to getting the product to be repeatable, small, and acceptable, and this is also where price also comes in. I used to get everything I had made offshore. Now, I get nothing made offshore because of automation in the U.S.

We have a small 3D printer here in our lab that cost between $4,000 and $5,000 that we can make pretty much every prototype that we want. We’ve taken the efficiency of sending it offshore, and brought most, if not all of it, back.

Key: From a patenting standpoint, how many filings do you do to prevent workarounds and variations, to keep your competition at bay?

Norris: Every time we file an application, particularly when I have a sit-down session with my patent lawyer on site, we will spend a great deal of time thinking, “How could I get around this? What would someone do to do this a different way?” So, often, we will file an application on a way that is maybe not so convenient, maybe not the optimal way to file it, but do it nonetheless. A few times in my career, I’ve found that those pay off quite well.

Key: Is there such a thing as a bulletproof patent?

Norris: Yes. They’re rare, I will say that. You either have a bulletproof patent or you surround your idea with a whole variety of patents to box it in to get the competitors out. And then, by doing that, you’ll get it to be more or less bulletproof. 

You also want to make sure you don’t tempt someone to steal it. I’ve licensed a great number of patents to other companies. I had a head full of other inventions, so I was interested for most of my career in licensing to someone else. Be reasonable in what you expect to get from it. Most inventors, it’s the only invention they may have. They price it to the sky, to where it becomes more profitable for some company to steal it. 

Make it so that they aren’t tempted to steal it.

Key: And you can do that by being reasonable and having a wall of patents protecting yourself. Is that correct?

Norris: The more patents you file, the bigger that wall becomes, if the patents are worth their salt, so to speak.

Key: How do you know who to share it with and who not to share it with? Is it your gut? Do you have them sign a non-disclosure agreement (NDA)? Do you do a background check?

Norris: I have to tell you, when I filed my very first patent, which was 40 years ago, I had everyone I showed it to sign an NDA, but as I went along, I filed a provisional application first, and then I could show it to anybody.

Key: Are you looking at the market at the very beginning and asking, “How big is this going to be?” 

Norris: Oh, absolutely. Early on. You have to look at all the factors before you decide to spend time and money, and time is money.

Key: When did you get the input from law enforcement confirming that you really had something?

Norris: There were some cops locally who I knew and a couple who I didn’t know that were referred to me by other cops. When I brought them in to see if they liked the idea, they loved it. 

A month after conceiving the idea with the help of a design firm that cost us a lot of money, a company in Los Angeles that had contacts with the police set up a meeting for us with two retired policemen. We took our prototype and shot it — we lassoed them with it, so to speak. And they said, “This could be a billion-dollar product.” And I said, “Maybe, maybe not.”

I learned along the way that every time a police officer shoots someone who dies, the department can look forward to spending a million dollars in legal fees. So, that’s a great motivation for police departments to use something that is not lethal. And it encouraged me that I was going down the right avenue.

Key: Have you ever been in federal court defending your patents?

Norris: Yes, for the FlashBack recorders. The company that I sold that to and was the largest shareholder was EDigital. They licensed that intellectual property to probably at least 25 or 30 companies. One of the companies that they sued for patent infringement took us to court. I had a patent lawyer who didn’t know much about electronics, and he wrote some things in the one main application that really hurt us. Because he didn’t know what a digital integrated circuit was, it cost us a couple of million dollars. 

He had written a definition that was totally incorrect. And so, the company — not me personally — lost some money on that that they could have made. They didn’t go broke over it, but they did leave some money on the table. 

Key: Let’s talk about negotiating licensing agreements. Do you handle any of that yourself, or do you have a licensing attorney? What is your strategy?

Norris: Very early on, I found a partner in the law firm who was an intellectual property negotiator. We’ve privately discussed, what do you think this is worth? Interestingly, for several of the big patents (like the one to Jabra to make headphones), they made an offer of several million dollars right out of the gates. That’s very rare.

If you’ve got really good ideas, I think you have to be a good salesman.” 

These days, anyone can tout themselves an expert online. I see it all the time in my industry. There are inventors giving advice who have licensed just one product onto the market. There are inventors leading inventor groups who have spent 10 years failing to commercialize the same invention. 

The question of who should you trust for inventing advice is, unfortunately, well worth asking.

 

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