Originally published in New Business Minnesota, October 2011
All St. Paul firefighter Jovan Palmieri wanted to do was save lives. He had an invention in mind to do that.
After talking to a number of patent attorneys, he was beginning to doubt he would ever reach his goal. Then he met Craige Thompson.
Unlike the first attorneys he met with, Craige didn’t start talking about retainers and fees or inquiring about how much money he had, recalled Jovan.
“He was interested and excited in what I had. I could see the wheels in his head turning, similar to what I was experiencing. He looked at what I had and wanted to know my story and was excited about it.”
The founder of Thompson Patent Law Office listened intently as Jovan talked about his invention that could help avert backup deaths caused by fire trucks, dump trucks and other heavy equipment that have difficulty backing up safely.
Jovan recalls his first meeting with Craige. “It was like night and day compared to the other attorneys. We hit it off right away. He was easy to talk to and I had a good comfort level. He didn’t pressure me,” says Jovan, who is the inventor and founder of BackSafe Systems.
“He gave me time to go through what my invention was and he could see that I was trying to save lives with my product and he appreciated that. When I got home, I told my wife that I found my patent attorney.”
The idea behind the invention came in 2009. Jovan had been a firefighter for about seven years, when he became a driver on one of the big fire trucks. He was constantly backing up these huge emergency vehicles in the dark, surrounded by smoke and multiple flashing lights.
“It’s tricky,” Jovan says. “I was always worried about running over one of the spotters who help me back up.”
So he started to read up on backup accidents and found that there are more than 300 deaths each year. Most of the time drivers and spotters use hand signals and shouting to communicate in a chaotic environment. Backup accidents are the most common accidents in the trucking industry. The backup alarm can help, but at a busy construction site, the alarms are so ubiquitous that they are often ignored.
Jovan’s idea was to put in the spotter’s hand a wireless wand that is linked to lights and camera monitors in the truck’s cab.
The spotter could instantly send signals for left and right, stop and go to the driver, replacing the hand signals.
When the driver shifts into reverse, the red lights go off in the cab and on the wand.
This clearly indicates to the spotter that the driver intends to back up.
“At first I didn’t even realize I was inventing something,” Jovan says. “I was just trying to make the spotter more visible. Then I realized that this could become an industry standard on trucks everywhere. I talked to my wife and family about it and they all said I should get a patent to protect the idea.
Once they started working together, Craige laid out the process. “I usually like to start by asking about goals, what they are trying to achieve, even before we get into much detail about the invention.”
Craige says that is an important step. He asked Jovan if he wanted to start a business or get the patent so he could sell or license it. Jovan says he loved being a fireman first and foremost and wasn’t interested running a business.
So Craige began pursuing a patent that would protect the idea, keep competitors away and be solid enough that investors or licensees would feel secure in participating.
Craige conducted patentability studies on the concept. Is it unique, would the product infringe another patent, does it provide an opportunity for someone else to sue? This kind of preparation can help avoid future litigation.
“You have to play offense and defense,” says Craige. “Offense is protecting your idea. Defense is protecting against those who think you are infringing on their patent in which you might be forced to redesign or pay a royalty…It’s hard to get investors or sell a license if you’re being sued.”
The quality of the patent is also critical. “We actually trademarked the term ‘Litigation Quality Patents,’” says Craige. “Sophisticated investors will have their own patent attorney check it out before they invest. That’s an audience who will scrutinize the patent, and it is a hurdle you have to get over to be successful. Then we focused on the commercially valuable choke points to protect the features competitors will want to copy.”
Aside from providing legal services, Jovan says it was invaluable to have Craige on his team. Craige is also a Professional Engineer (PE), electrical engineer and has completed substantial coursework toward an MBA.
Through his connections, Craige made arrangements through a professor friend at Minnesota State University in Mankato to have engineering students take on developing a prototype as part of their senior project.
Then Craige introduced Jovan to an electronics engineer he knew, someone in manufacturing. “Craige took on this project almost as a teammate,” says Jovan. “We had a lot of coffee meetings and phone calls along the way and he didn’t charge me for those things like a lot of attorneys would have.”
In short order, the Minnesota State University students had created a complete, working prototype for about $800 to cover parts, rather than $10,000 it otherwise might have cost.
That set the stage for the biggest opportunity Jovan has had to date. With Craige’s help and encouragement, Jovan entered his invention in the Minnesota Inventors’ Congress in Redwood Falls in 2010.
He couldn’t have entered the competition without the prototype and a preliminary patent. “I was able to compete and set up a booth to show my working invention.”
Jovan ended up winning a gold medal as one of the top five inventions. His invention was also judged to be the best of show and was awarded the Robert F. Starr Grand Prize for 2010 and $1,000 toward further developing his invention. The Inventors Congress win helped garner the attention of investors and connected Jovan with companies that are interested in BackSafe’s potential to market.
“If it hadn’t been for Craige, it wouldn’t have been possible,” says Jovan.
“Craige was very much an advisor to me. He helped me to think about how many systems I could sell, how much it would cost to build, how many fire departments and trucks could benefit.”
“I really consider him to be my friend, not just my patent attorney. His integrity and character and his background in electronics engineering brought great value to my invention. I look at my patent application and I’m just blown away.”
“When I worked in the bigger law firms,” Craige says, “the extra things – the lunches to stay in touch, the casual coffee meetings – aren’t always possible. I like the freedom to deliver a concierge service to start-up clients. I enjoy doing it. I really enjoy helping them, not just with their patent issues, but also with clarifying their goals.
“I like to work with people like Jovan who are trying to build a business around a core technology where I can be a sounding board and an advisor.”