Interview with Casey Chan, co-founder and CEO of WizPatent

We are honoured to have Casey Chan, an orthopedic surgeon and adjunct professor from NUS, to share with us about his journey as an entrepreneur and his latest company, WizPatent.

SGE: How did this venture begin? What made you start WizPatent?

Casey: Wade Fallin, co-founder of WizPatent, and I have been in product development for the past 15 years. As such, we are aware that the early stages of any product development project requires the need to conduct patent due diligence. This involves searching through patents, downloading patents, organizing patents and managing patents. Organizing and sorting patents is vital for the efficacious review of patents in an efficient manner, so that one could make quick decisions for the Freedom to Operate.

The process of determining Freedom to Operate has to be done manually as currently there are no tools or software in the market to automate this task. Having filed a number of patents ourselves, we are very familiar with patent due diligence. Hence, we had an extremely good concept of what we wanted from a productivity software program. With the software as our main product, we set up WizPatent Pte Ltd.

SGE: As we understand, your product is created as a solution to the problem that people encountered during patent due diligence. Can you elaborate more on the problems that you have encountered during patent due diligence?

Casey: Patent documents are public documents where Patent Offices such as the United States of Patent and Trademark Office (UPSTO) and European Patent Office (EPO) provide them as a service to the public. It may be easy to search and download large number of patents using the search engines from these Patent Offices but one of the drawbacks is the review of these large numbers of patents and obtaining all of the patents relevant to your current work.

Another problem is the process of determining Freedom to Operate, as this cannot be automated because one has to personally review the claims and interpret the scope of these claims.

SGE: How was the developmental process for your product, WizPatent Manager?

Casey: Having done many patent due diligence, we have a developed best practice process to efficiently complete tasks in a timely and reliable fashion. We felt that this process can be done more efficiently if we could develop a productivity tool to speed up the process. Having founded a previous software company, we embarked on this project using the lessons that I have learned from my previous venture.

We felt that the architecture of the software is the key to the development of a successful and robust product. Wade and I spent one and a half years conceptualizing and refining the architecture of the software before a single line of code was written. We also developed a user interface mock-up and user specifications in detail prior to the start of coding.

In addition, we have been involved in the development of medical devices for the past 15 years. One of the key aspects in this is the Standard Operating Procedures (SOPs) in product development to ensure a robust and reliable end-product. As opposed to other software companies, we used the medical device development protocol and applied it to our software development.

SGE: That is interesting, so what are the most important features of your product that distinguishes itself from your competitors?

Casey: We believe that we have a superior search interface that will allow the user to search from both USPTO and Espacenet as both use a common interface. The search rules were studied intensively in both USPTO and Espacenet and these search rules were incorporated into Bubble Help and Error Traps.

If you entered a query using the search engines of USPTO or Espacenet, you would not know if your query was right until it was sent out. In WizPatent Manager, we have included Bubble Help entries for each field, citing examples of valid and invalid search entries.

If an invalid entry is made, the validation engine will immediately prompt the user of a potentially erroneous entry. In this way, the user can adjust the entry prior to sending the search query out to USPTO or Espacenet.

We have studied the search rules in great detail so that the end-user does not have to study two different sets of search rules for USPTO and Espacenet. In fact, some of these rules were not documented on the USPTO and Espacenet websites but these rules were incorporated into our software.

Our unique and sophisticated Boolean operation feature, which we filed a patent on, allows the user to combine the results from multiple searches. We have also created a simple Drag and Drop feature in our Boolean Operators. Our software is able to download both text and image files in the form of pdf files for free, otherwise you may have to pay $3 per patent from some commercial sites. As we know, patent due diligence requires one to review the claims of a patent.

Another patented feature we have in our software is the Construction of the Claim Tree from the text file. The Claim Tree shows independent claims and their elements and the display of the dependant claims is user-selectable. This enables the user to make a timely decision whilst reading the Claim Tree and Patent Document at the same time.

SGE: What were the greatest difficulties?

Casey: The greatest difficulty is management and retention of good staff.

SGE: How important (if at all) was the entrepreneurs’ skills at building relationships (e.g. with potential customers, investors or suppliers) for the success / failure of the venture? If s/he were to give you two tips for effective relationship building skills what would it be?

Casey: The entrepreneur’s relationship building skills are very important, especially when it comes to getting to know insiders of the industry he is going into. The insider will be able to give tremendous help and insights in the industry.

SGE: What were the most important personal lessons learned by the entrepreneur?

Casey: Cash is king.

SGE: On behalf of our team, we thank Casey for sharing his story with us here in SGEntrepreneurs.

About Casey Chan: Casey Chan is the CEO and CTO of WizPatent. Besides being a course instructor with IP Academy, Singapore, where he teaches the structure and analysis of patent claims, he is also an Adjunct Professor at the Department of Orthopedic Surgery and the Division of Bioengineering at the National University of Singapore. He teaches the third year engineering students a course in Bioengineering Design as well. Prof Chan has 15 years experience in product development and in patent filing. He is also an inventor and a consultant to several orthopedic equipment manufacturers in the U.S.. A bone cement mixing system he designed is widely used in joint replacement surgery in the United States. He has 35 U.S. patents in the area of surgical devices and has 10 other patents pending. He is trained as an orthopedic surgeon. He also has a Master degree in aerospace engineering and he was an engineering consultant for the Institute for Aerospace Studies, University of Toronto. He was the former Director of Orthopedic Research at Montreal General Hospital, McGill University. He participates in angel investing and advises a number of biotech start-ups in the U.S.. He is co-founder and former CEO of a successful e-learning company called WizLearn.

About WizPatent: WizPatent is an independent software and service company. The company provide intellectual property support for technology companies, patent attorney firms, legal firms and venture capital companies. The company is established in May 2004 and has two offices which are located both in Logan (Utah, USA), and in Singapore. The founders are Casey Chan MD and Wade Fallin who have more than 70 issued U.S. Patents between them.

Editor’s Note: Some questions of this interview posed by SGE overlap with those in an earlier interview with Casey published in WizPatent. We reference the answers to this original article in the WizPatent website.

Comments