Settlement Reached on Licensed Inventions
In 1998 and 1999, I licensed 5 invention designs (flanges and valves for use as accessories to hot water circulators) to Taco, Inc., a manufacturer of heating components located in Rhode Island. (See, “Lessons in Invention Development” blog post, and links below.) Shortly thereafter, I discovered what appeared to be a production run of commercial versions of the “Freedom Flange” in Taco’s Cranston Factory while I was introduced to the VP of Engineering by the Residential Products Manager. Judging by the looks on their faces, the manager did not intend for me to see the room full of commercial flanges.
When the next royalty report came there was no mention of the commercial flanges that I saw that day, so I asked the manager why, to which he simply stated, “We’re not doing anything with those.” The company denied making and selling commercial flanges of any sort, despite the fact that I’ve bought them.
Long story short, a battle raged on since 2000, and finally settled 8 years later, on April 4. In the meantime, numerous other manufacturers copied and produced variations of my valves and flanges. The good news is I’m done with all of them and I feel freed so I can move on to more productive endeavors.
I am grateful to Michael J. Persson, my IP lawyer, who was with me since the beginning with Taco, and has been available for counsel on many instances. My investor, Mary Sayer, with her generosity, enabled my modicum of success, and because of her backing the HVAC industry has better hot water heating flanges and valves, which have replaced the ones that I “scraped my knuckles” on more than once.
The following links are to sites that market my flange and valve inventions/independent creations, or aberrations thereof. Also, see my original prototypes that were created in the 1990s, by clicking on the “Inventions” tab on the navigation bar.
http://www.taco-hvac.com/en/products/Freedom+Flanges%26trade%3B/products.html?current_category=159
http://www.taco-hvac.com/en/products.html?view=ProdDetail¤t_category=159&Product=32
http://www.webstonevalves.com/
http://www.watts.com/pro/whatsnew/whatsnew_pipf.asp
http://www.ravenproducts.us/hydronics.htm#mfcf
Tags: Flanged Circulator Valves, Freedom Flanges, Raven Products, Taco Inc, Watts
May 9th, 2008 at 8:42 am
Congratulations, John, on closing this chapter in your career as an inventor!
I have enjoyed working with you and thank you for your kind words. I have learned a number of valuable lessons working with you over these many years. In fact, I have often used the story of when I tried to talk you out of patenting the nut flange that eventually resulted in you making hundreds of thousands of dollars, to teach the three most important lessons that l learned working with you. First, always look for a simpler solution to the problem that you are trying to solve. The tools that you developed prior to your development of the nut flange were not as simple a solution as merely changing the flange, but it took the rejection of the tool product in the marketplace to drive you to think of the simpler solution. Second, keep on inventing even if your first, second, or third inventions, are not successful. You spent years and thousands of dollars on your first round of tool inventions, but it was your later invention that made you money. Finally, always follow your gut, even if others advise you against it. I was a young patent attorney a few years out of law school when I tried to talk you out of patenting your nut flange invention. My thought was that the invention was so simple that it would be difficult, and costly, to get through the patent office, that you wouldn’t be able to license it even if a patent did issue, and if you did license it, it would kill the market for the tools that you had already spent thousands of dollars to patent. You had other thoughts and your perseverance paid off. I look forward to continuing to work with you and, even though I am now a seasoned patent attorney with over 10 years experience, I know that I will continue to learn from our interactions.
All the best, Mike. http://www.laconialaw.com