Kiteboard company says filing error cost it millions
Ocean Rodeo Sports suing law firm over patent paperwork
A Victoria ocean sports company is claiming it has lost millions of dollars due to a patent-filing error for an invention that improved kitesurfing safety around the world.
Ocean Rodeo Sports is suing the retired lawyer and law firm tasked with filing the patent for the trim-loop device, which allows kitesurfers to break free from the kite to prevent them from being dragged in heavy winds.
Richard Myerscough, the company’s president, said he and business partner Ross Harrington were involved in the pioneering days of windsurfing as youths in the 1970s. He said seeing someone use a kite while surfing in Hawaii in the late 1990s was a “hallelujah moment.”
Myerscough and Harrington cobbled together equipment for the emerging sport of kitesurfing and started their business in 2001.
Myerscough became accustomed to hearing people’s “kitemares” about being slammed into the water or lifted into the air in a sudden gust of wind, which in some cases proved fatal. The pair came up with an idea for a quick-release safety device called a trim loop or chicken loop.
“We were the first company to have a safety mechanism built into the control-bar system,” Myerscough told the Times Colonist from a trade show in Europe. “Before that point, there were no safety systems, period, in kiteboarding.”
Myerscough and Harrington wrote the provisional patent and filed it Dec. 4, 2001.
They hired lawyer Gerald Oyen of Vancouver-based firm Oyen Wiggs Green & Mutala LLP to finalize the patent application, which must be done within a year.
“This was the beginning of a new sport, so we had one of the very first patent filings in the sport,” Myerscough said. “We were way ahead of the curve.”
However, Myerscough said the law firm missed the one-year deadline to finalize the patent and the paperwork failed to adequately describe the mechanism.
This created problems in 2009, when Myerscough learned Ocean Rodeo was being sued by a Hawaiian competitor called Nalu Kai for patent infringement.
Nalu Kai filed a patent in May 2003, and because Ocean Rodeo’s patent was finalized after the one-year deadline, it was effectively null and void. The Victoria company settled out of court, agreeing to pay royalties of $7.50 per device, which has amounted to more than $100,000 in fees.
Myerscough said when the suit against Oyen Wiggs Green & Mutala goes to B.C. Supreme Court in July, his lawyers will try to convince a judge that legal mistakes by the law firm cost the company millions in profits.
In a statement of defence, Oyen claims he advised the company not to put the product on the market until the final patent application was filed.
Oyen said upon reviewing the legal documents, Myerscough and Harrington did not notice an error that said the provisional application was filed Dec. 28, 2001, weeks after the correct date.
He said the inventors are responsible for reviewing all information in the patent, including the product description.
The safety device is now being used worldwide, with the vast majority of kitesurfing brands incorporating it into their equipment.
“It was invented in Victoria. And my competitor who came up with it six months after me is claiming royalties on it because of a filing error,” Myerscough said.