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http://www.ipaustralia.gov.au/smart_start/case18.htm

Hot shoe shuffle

Name: Jack Goldberg

Business: Rotasole

Industry: Clothing (footwear/headwear)

IP smart since: January 2000

A new patented shoe that lessens the likelihood of sports injuries has significant market potential.

As a doctor of sports medicine, Jack Goldberg has treated scores of patients for knee injuries over the years.
However, watching his children and their team mates damage their knees playing sport proved to be a career-defining experience for the Melbourne GP. It was the catalyst for him to question, “How can we stop such injuries?”
Today, Dr Goldberg and his son Brian, a trade mark attorney, are marketing the ‘Rotasole’, a sports shoe that has a flat rubber disc inserted into the ball of the sole, which swivels when the wearer pivots or turns.
“Shoes were originally made for straight-line running,” explains Goldberg. “They grip the ground, causing the knee to be the first point of give. So our thinking was ‘hang on, what if the shoe had the first point of give that took the strain away from the athlete?’”
With up to 70% of knee injuries in sport occurring as a result of landing and twisting, the Rotasole creators are targeting sportspeople in codes such as basketball, tennis, squash and netball – activities that each take a considerable toll on knees.

Value of protection
Goldberg says although coming up with an innovative idea is exciting, it is important to get sound IP advice at any early stage.
“Seeing a patent attorney and getting it protected was the most valuable advice we got early on, because once the world has seen it, you can’t secure the patent in many cases.”
Searches conducted by patent attorneys found that the Rotasole was a unique concept – a crucial assessment if the technology was to gain IP protection overseas.
“Hence we were able to get Australian and subsequently patents in a number of overseas countries,” says Goldberg. “So officially there’s nothing out there that exists like it, or conceived like it, and that’s why we could secure the patents for the product.”
The Rotasole trade mark has also been registered in Australia and 15 other countries.
“The value of trade marking, I believe, has increased dramatically in the past few years and we’re seeing some brand recognition through the testing and so on that we’ve been doing through our trade mark,” says Goldberg.
“Most important is that it’s both patented and trade marked in overseas countries to give it potential. For us, with sports played in every country, there’s a truly international market for sports shoes, so it was important that the standard of the patent and the standard and quality of the trade mark coming from Australia was world class.”

Laying the foundations
The Goldbergs are licensing the technology to Australian footwear company Betts and have taken out patents and trade marks for protection in the national and international markets. Betts launched a range of childrens basketball, netball and tennis shoes under the Rotasole brand, with plans to develop a much broader range for both adults and children. The Goldbergs then hope to strike deals with shoe companies in the US and Europe, where it is likely to be sold under an established brand that features the disc technology as a distinguishing sales feature.
“What we’ve done at the moment is make sure, as with anything new, that the foundations are there,” says Goldberg.
“We’ve also done university testing, we’ve brought out an exclusive range of Rotasole shoes that we’ve provided to many professionals, sportspeople and authorities in sport that have been doing their own testing.”
He says there is no similar product on the market, and feedback has been positive – from mature-age tennis players to an 18-year-old elite rookie who says the Rotasole assists his game courtesy of quicker turns and easier movements.

Worth the cost
The insurance policy has not come cheaply; the inventors have spent hundreds of thousands of dollars to protect the Rotasole’s intellectual property.
“If you take your technology and the market value and you do your research and you find that it’s valuable, then it’s something that you’ve got to budget for,” says Goldberg.
Jack and his son are confident the investment will pay off. The only losers, Goldberg quips, are likely to be physiotherapists and knees surgeons as Rotasole help to cut down the number of sports injuries.
“They’ve had it good for a while … so if we can give them a bit more time off I’ll cop that.”

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