Running shoe startup Vimazi recently obtained a patent for its pace-specific running shoe concept, but only through the Australian Patent Office.
Patents aren’t applicable internationally, and every country has its own standards for filing a patent. While they hope to have patents in Canada, several European Commonwealth countries and, of course, the United States soon, co-founders John Zilly and Scott Tucker said that Vimazi’s growth in Australia and the Scandinavian region have shown them the importance of protecting their IP internationally.
“The U.S. is no longer the center of the universe, we have this global market out there, and the international protection is as important as domestic protection,” said Tucker.
The principle behind Vimazi's shoes is that the faster the runner, the more force they generate. The footwear reacts to the force runners generate at their personal pace, providing better cushioning and efficiency.
Patents don’t necessarily mean much to the average consumer, but they matter for protecting an original concept as well as to investors, said Tucker. The reason the company decided to apply for patents around the world was to increase its market share potential, charge higher prices for their products and prove its concept further.
Since the company is based in the U.S., it applied with the United States Patent and Trademark Office first in Spring 2019. But a rule within that office is what spurred Vimazi, Tucker said, to apply to several other countries as quickly as they could.
“You have … two years or something like that, after you make your application in the U.S. to apply internationally. Otherwise, if you don't do it, then your own patent application becomes prior art against you,” said Tucker, meaning Vimazi's own utility patent could be considered an existing idea and prevent international patent offices from issuing a new one.
That’s not something either of the men knew, but their IP lawyer did. That, plus the differing paperwork Vimazi had to file in various countries, is why Tucker suggested other startups interested in patenting their products find a seasoned IP lawyer.
Tucker also suggested companies be cautious with how much they want to spend on patents and if it really is in their best interest to do so. Tucker estimated that Vimazi spent a total of $40,000 in application fees and lawyer payments throughout its entire patenting process.
“You can easily spend a lot of money getting patents and it doesn't do you any good at all,” Tucker said. “So you really have to be mindful that you're going to be spending a bunch of money, and the business reasons for it should be really clear in your mind, and separate from your personal desire to just have that brick and plaque.”
Companies must also be ready to defend their patents, Tucker said, and accept the costs that could come with that sort of legal battle. While in Vimazi’s instance, the pros outweigh the cons, Tucker said it might not be for everyone.
As for Vimazi’s U.S. patent application, Tucker said the two are still going back and forth and he is unsure of when they’ll receive the official patent. Vimazi only launched its first six pace-tuned running shoes in March, but Zilly said they hope to release several more models, including two trail running shoes and a walking shoe, in the coming year.
