When Windsurfing's president discovered that his product had already been invented, he applied for a new patent. But 20 competitors are betting it can't be enforced.
One day in 1965, Hoyle Schweitzer and Jim Drake were sitting around comparing the virtues and shortcomings of their favorite pastimes -- surfing and sailing. Suddenly, out of the California-blue sky, inspiration struck: Two sports would be better than one. Why not combine them?
Within a year they had figured out how to mount a sail on a surfboard and steer the device without a rudder. In March 1968, they drew up the specifications of their invention and applied for a patent. Twenty-two months later, in January 1970, U.S. Patent #3,487,800 was issued. It covered a "wind-propelled apparatus in which a mast is universally mounted on a craft and supports a boom and sail." The apparatus was the simple 12-foot-or-so plastic platform with the traingular sail that today abounds wherever there's enough water to float it. The two inventors called their creation a sailboard.
In concept, sailing a surfboard seems as unlikely as rowing a dining-room table. When Schweitzer and his wife first introduced their Windsurfer at boat shows in the early '70s, some practical jokers outfitted the sailboard with a huge steering wheel and a portable toilet. But the joke was on the jokers. Largely because the Schweitzers have been so dogged in promoting it, boardsailing has become the world's fastestgrowing sport. In Europe, where by the end of 1981 nearly 1 million boards had been sold, the sport is second only to skiing in the number of participants. According to Boardsailing U.S.A. figures, 50,000 sailboards were sold in this country in 1981, and the BUSA projects 50% to 75% annual sales growth for the next five years.
It should have been smooth sailing for Hoyle Schweitzer and his company, Windsurfing International Inc., of Torrance, Calif. (Co-inventor Drake was bought out in 1973 for a reported $36,000.) After all, Schweitzer had a patent, which bestows a 17-year virtual monopoly on its holder, and sailboards now retail for as much as $1,800.Windsurfing also won patents in Germany, England, Japan, Australia, and Canada.
But the problem with Windsurfing's patent was that the sailboard had already been invented -- a complication Schweitzer didn't discover until six years later. The existence of "prior art," as it's called in patent parlance, opened the gates to hoards of copiers and put Windsurfing's back against the wall. There, like a swashbuckler in a movie, it has challenged intruder after intruder in defense of its market dominance. But the challengers keep coming, and whether Windsurfing will emerge as the victor will soon be decided in federal courts. If Windsurfing succumbs, it won't be for not having put up a tough fight.
Windsurfing has so far spent half a million dollars on attorneys' fees in defense of its patent, says Schweitzer, 48, the company's president. He doesn't disclose much about his closely held corporation's financial status, but he acknowledges that the competition is so fierce that presently the company "is not making money." As a measure of that competition, the 1979 International Marine Trades Exhibit & Conference had only 2 sailboard companies; the next year it had 30. As of July 1981, 35 different sailboards were being marketed in the United States -- nearly all of them alleged infringers on Windsurfing's patent.
Overseas, there are now over 100 sailboard makers, most of them doing business without a Windsurfing license. Forty of them operate out of France, where, to Windsurfing's later regret, the company chose not to apply for a patent. In Germany, where patent laws are considerably tougher and patents more carefully drafted than in the United States, Windsurfing has won 40 suits against infringers. In England, it has sued 24 alleged infringers. And by the end of 1981, the company had named 20 manufacturers or distributors in patent infringement suits in the United States.
Schweitzer's opponents accuse him of crippling the growth of boardsailing in the United States so that his product, the Windsurfer, could take over the market completely. But that is, in fact, what a patent does. It enables a company to behave any way it wants. What ordinarily might be considered restraint of trade -- granting a license to one firm while denying it to amother -- is tolerable under patent law. And Windsurfing would have the market sewn up if it weren't for a 53-year-old sign painter and sometime inventor from Wilkes-Barre, Pa., named S. Newman Darby.
To appreciate Darby's importance in Windsurfing's history, you need some background in the U.S. Code, Section 101-103 of Title 35. To be granted a patent, an invention (1) must be a new and useful process, machine, manufacture, or composition of matter; (2) must not be known or have been patented by others nor have been published or publicly used by others for more than a year before the patent was applied for; and (3) must be sufficiently different from prior art -- that is, any similar product or process already in existence. Windsurfing found its patent being challenged on all three counts.
Much of the confusion over Windsurfing's patent stems from the way patent applications are handled in the U.S. Patent and Trademark Office. The process is entirely secret. All matters are thrashed out between the applicant and the patent examiner, a bureaucrat who may or may not possess the necessary expertise in the technology involved. (Not all patent examiners are duds: Albert Einstein was once a patent examiner.)
Only after this private ritual are outside parties made aware that an invention has been patented. Until recently, there was no provision for protest except to test the enforceability of the patent granted by infringing on it. So it's been a dictum among patent lawyers that an American patent is little more than a license to litigate.
