Federal Registration of Trademarks

Federal Registration – Trademarks/Service Marks

Is Federal Registration of My Company’s Trademark/Service Mark required?

No.  However, if the company’s Trademark/brand is not registered, it becomes more difficult to enforce the company’s rights associated with its brand. If a federal Registration is not procured, then the owner of the Trademark/Service Mark must rely on State or common law precepts to prove infringement.

Federal Registration Advantages Include:

  • The symbol “®” can be placed in proximity to the Trademark/Service Mark giving notice the Trademark is registered in the United Patent and Trademark Office
  • Substantive and procedural rights attributable to federal jurisdiction (rather than using a state’s law to control adversarial proceedings)
  • Prevention of the registration of another Trademark/Service Mark in the United States Patent and Trademark Office that is confusingly similar
  • Creates a basis for international Madrid Protocol Trademarks/Service Marks
  • Constructive notice of ownership and date of first use in interstate or international commerce

Wise Business Owners Procure Federal Registration Because:

  • Over time, the Trademarks/Service Marks can mature into the company’s most valuable asset
  • Trademarks/Service Marks are foundational components of most franchise agreements
  • Trademark/Service Mark licenses can provide a royalty stream for the registrant
  • If your company does not procure a United States Trademark, another company can procure a federal Registration of your company’s Trademark and limit your company’s usage of its brand to the geographic areas in which your company’s use was prior to the registering  company’s use of your brand name
  • After five years of continuous use, your company’s federal Registration becomes incontestable, unless one or more of nine statutory defenses can be proved by the party contesting your company’s United States Trademark/Service Mark

If you have questions about your company’s Trademarks/Service Marks, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

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How To Expedite Foreign Patents

How to Expedite Foreign Patents

Will a US Patent Application Expedite Foreign Patents?

Yes, one way to expedite foreign patents is to apply for a US Patent. This approach can expedite procurement of foreign Patents in many foreign jurisdictions.

Under European Patent Office practice, the grant of a US Patent may or may not correlate with the expedited grant of its parallel European Patent.

Three General Rules for Domestic and Foreign Patents

  • The sooner the Nonprovisional Patent Application is filed, the sooner the Patent can issue
  • In most jurisdictions, the sooner the Patent issues, the less expense incurred by the Patentee
  • The sooner the Patent issues, the sooner the Patentee has enforceable patent rights, and the sooner the Patent can become a wealth-generating asset

Business Strategy to Expedite Foreign Patents (Example)

  • Regardless of the nationality of the Patent Applicant, file a Patent Application in the USPTO
  • It best for your company to originally file a Provisional, Nonprovisional or PCT Application in the USPTO — however, if the Provisional, Nonprovisional or PCT Application was first filed in another jurisdiction, a US Nonprovisional Application can be filed in the USPTO until the US statutory deadline has passed
  • If a PCT Application is not the first Application filed, a PCT Application claiming priority to a Provisional or Nonprovisional Application is filed in a PCT Receiving Office (preferably, the USPTO Receiving Office)
  • File a US Nonprovisional Patent Application shortly after the PCT Application was filed, rather than waiting until near the deadline allowed by the PCT
  • By using this procedure, it is possible for your company to receive the grant of the US Patent before parallel Applications filed in other jurisdictions are examined
  • As previously indicated, the grant of a US Patent can expedite the grant of parallel Patents in many foreign jurisdictions

If you have questions about cost-efficient business strategies for filing your company’s Patent Applications, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Foreign Jurisdictions for Patents

Patent Applications – Foreign Jurisdictions

How To Select the Best Path for Patent Applications in Foreign Jurisdictions

My company is contemplating filing Patent Applications in foreign jurisdictions. Is the use of the Patent Cooperation Treaty or the Paris Convention Treaty the better route?

Patent Cooperation Treaty vs. Paris Convention Treaty

Your business model and judgement determine the best course for the filing of Patent Applications in foreign jurisdictions. Both the Paris Convention Treaty and the Patent Cooperation Treaty routes have advantages and disadvantages.

Under each Treaty, the Applicant makes a claim to the priority application (document) that was filed in a jurisdiction other than the jurisdiction (country/region/union) which you desire to file the new Patent Application. The priority document can be a non-provisional, a provisional or an international Patent Application.

The Paris Convention Treaty

  • The non-provisional Patent Application must be filed before the expiration of one year following the filing of the priority document
  • For US businesses, the priority document is usually a US provisional or non-provisional Patent Application
  • If you are only filing in a few foreign jurisdictions, the Paris Convention will likely be the least expensive route to file the foreign Patent Application
  • Most foreign jurisdictions require annual maintenance fees to perpetuate pendency of the Patent Application/Patent

The Patent Cooperation Treaty (PCT)

  • The non-provisional Patent Application must be filed before the expiration of thirty months (some jurisdictions allow thirty-one months) following the filing of the priority document
  • For US businesses, the priority document is usually a US provisional or non-provisional Patent Application
  • The PCT Application can be filed as the original and priority document
  • An International Search Report is generated by the International Searching Authority of the World Intellectual Property Organization
  • When needed, the International Search Report can provide a basis for amending the claims of the PCT Application prior to entry into the national stage of a foreign jurisdiction’s Patent Office or the United States Patent Office.
  • Amendment of the claims of a PCT Application prior to entry into the national stage can result in a speedier and more cost-effective issuance of a Patent in the United States or a foreign jurisdiction
  • Most foreign jurisdictions require annual maintenance fees to perpetuate pendency of the Patent Application/Patent

If you have questions about filing Patent Applications under the Paris Convention Treaty or the Patent Cooperation Treaty, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Blue Sky Laws Securities and Smooth Sailing

Securities Laws: State Blue Sky Laws and Smooth Sailing

What Are Blue Sky Laws?

Blue Sky laws are another name for State Securities Laws. The first use of the term is unknown, but the first well-known use of the term was in 1917 by Supreme Court Justice Joseph McKenna. Justice McKenna wrote the Court’s opinion in Hall vs. Geiger-Jones Co., 242 U.S. 539 (1917), which upheld the rights of states to regulate securities. He wrote:

“The name that is given to the law indicates the evil at which it is aimed, that is, to use the language of a cited case, “speculative schemes which have no more basis than so many feet of ‘blue sky'”; or, as stated by counsel in another case, “to stop the sale of stock in fly-by-night concerns, visionary oil wells, distant gold mines and other like fraudulent exploitations.”

State Securities Laws

Unless preempted by federal law, each State regulates the securities of a company that are held by a citizen of the State. By way of example, unless preempted by federal law, the shares of an Ohio small business that are held by a citizen of Kentucky can be the subject of both the Ohio and the Kentucky Blue Sky Laws.

For a small business that has shareholders in several States it is wise to utilize a federal preemption to the registration requirements of the States’ Blue Sky Laws when possible.

Is My Small Business Exempt?

If your business has an exemption from the federal securities laws, you may be unclear on whether or not it is automatically exempted from a State’s securities laws.  Security laws are complex. Whether your securities are exempt depends on which federal exemption you use.

A Federal Preemption Strategy for Securities

When circumstances permit, Business Patent Law, PLLC prefers to utilize Rule 506(b) of Regulation D to obtain and exemption from the “Blue Sky” laws.  Use of Rule 506(b):

  • Provides an exemption from the registration requirements of the federal securities laws
  • Provides an exemption from the registration requirements of one or more States’ “Blue Sky” laws
  • Does not limit the amount of capital that can be raised from the private offering
  • Allows your company to offer a single class of stock to an unlimited number of “accredited” investors
  • Reduces governmental and attorneys’ costs associated with your company’s private stock offering

Rule 506 (b) is not the only federal preemption to the Blue Sky Laws, but it is probably a more cost-effective strategy for your small business.

If you have questions about the securities laws, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Securities for small businesses

Federal Securities Laws and Your Small Business

Small business is not automatically exempt from the federal securities laws. Depending on the circumstances of the transaction, these laws can apply to any company, partnership or organization.

What is a Security?

The Supreme Court test for determining if something is an investment contract, i.e., security:

If something is an investment contract, it is a security. In the case of Securities and Exchange Commission v. W. J. Howey Co. 328 U.S. 293 (1946), the US Supreme Court defined an investment contract as follows:

  • It is an investment of money
  • There is an expectation of profits from the investment
  • The investment of money is in a common enterprise
  • Any profit comes from the efforts of a promoter or third party

Examples of Securities Utilized by Small Businesses

Securities can include such investment contracts as bonds, derivatives, leaseholds, intellectual property investment syndicates, options, leaseholds, publication syndicates, ownership interests in limited liability companies, corporations and partnerships and stocks.

Is Your Security Exempt?

If a security is associated with your business, it will fall under the registration and reporting requirements of the 1933 and 1934 Securities Acts – unless your business has obtained an exemption from registration.

  • Obtaining an exemption from the 1933 and 1934 Securities Acts is important – most small businesses cannot afford the costs of registering the security
  • Violations of the 1933 and 1934 Securities Acts can bankrupt most small businesses
  • Be cautious in accepting any risk capital investment from a potential investor who is not an “accredited investor” as defined in SEC Rule 501 of Regulation D
  • Be cautious in accepting any risk capital investment from a potential investor where your business has not first provided the potential investor with a private placement memorandum
  • Exempted securities can be an excellent source of capital for your company, partnership or organization

Before your company accepts the at risk investment capital, contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Patent Portfolios Increase Profits

Patent Portfolios Increase Profits

Patent Portfolios – A Way to Reduce Inventories And Increase Profits?

By using a Patent Portfolios business model, entrepreneurs, start-ups and established companies can:

  • enhance profitability
  • reduce inventory
  • decrease product liability risks

A Nontraditional Business Model utilizing Patent Portfolios

After spending years in your market space, you invented an improved Widget. Actually, it was the genesis of a long line of better Widgets. Instead of plodding along with the traditional business model of raising capital, building a sales staff and increasing inventory, you opted for the “brain rather than brawn” marketing strategy. To be sure this business model is not for everyone, but for a select few, here is what can happen…

Implementation of a Nontraditional Business Model can include the following:

  • Develop and test several prototypes to determine the best prototypes.
  • File as many Patent Applications as is economically feasible.
  • Patent, Patent, Patent as many improved Widgets as possible!
  • After the Patent Applications are filed, advertise as best fits the company’s budget.
  • Take the line of Widgets to trade shows to demonstrate the improved Widget line for potential manufactures.
  • When one or more manufacturers appear interested in the Widget line, offer reasonable royalty rates and license agreements to keep the manufacturers coming back – don’t be greedy, when the manufacturers profit, you will too.
  • Purchase intellectual property insurance to protect and preserve your Widget Patents, if the need arises.
  • Sell your company’s services to assist the manufacturer with the advertising, making and selling of the Widget Line.

Licensor of Patent Portfolios instead of Manufacturer

As a licensor rather than a manufacturer, you can eliminate all or at least most of the following expenses: inventory, transportation, property taxes, regulatory and labor. You also have the potential to perpetuate your company’s Patent monopoly for decades.

Business Risk

With each new endeavor, there is the risk of failure. However, if your licensor business model should fail, your monetary losses would likely only be a small percentage of the losses associated with the traditional model of scaling up your Widgets for sale.

This nontraditional business model is not for every company, but if your company is interested, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

when do patent rights expire

When Do Patent Rights Expire?

Patent rights do not last forever, eventually patent rights expire. A recent Supreme Court decision reviewed the conditions under which patent rights expire and one justice explained why they should. Here’s the information you need to know:

On May 30, 2017, in the case of Impressions Products, Inc. v. Lexmark International, Inc., 581 US ______(2017) 15-1189, the Supreme Court of the United States answered the decade’s old uncertainty regarding the “exhaustion of patent rights” doctrine.(https://www.supremecourt.gov/opinions/16pdf/15-1189_ebfj.pdf)

Impression Products, Inc., Petitioner v.  Lexmark International, Inc., 581 US _____(2017) 15-1189 

In the Lexmark International opinion, the Supreme Court of the United States held that a Patentee could not use patent rights to control the use or sale of the patented article once the Patentee or a licensee of the Patentee had sold the patent article to another.

35 United States Code Section 154(a) – Patent Rights

In the Lexmark International opinion, the Supreme Court wrote, “A United States patent entitles the patent holder (the “patentee”), for a period of 20 years, to “exclude others from making, using, offering for sale, or selling [its] invention throughout the United States or importing the invention into the United States.” 35 U.S.C. § 154(a). Whoever engages in one of these acts “without authority” from the patentee may face liability for patent infringement. §271(a).”

The Supreme Court’s Illustration Supporting the Opinion

Chief Justice Roberts wrote, “But an illustration never hurts. Take a shop that restores and sells used cars. The business works because the shop can rest assured that, so long as those bringing in the cars own them, the shop is free to repair and resell those vehicles. That smooth flow of commerce would sputter if companies that make the thousands of parts that go into a vehicle could keep their patent rights after the first sale. Those companies might, for instance, restrict resale rights and sue the shop owner for patent infringement. And even if they refrained from imposing such restrictions, the very threat of patent liability would force the shop to invest in efforts to protect itself from hidden lawsuits. Either way, extending the patent rights beyond the first sale would clog the channels of commerce, with little benefit from the extra control that the patentees retain. And advances in technology, along with increasingly complex supply chains, magnify the problem. See Brief for Costco Wholesale Corp. et al. as Amici Curiae 7-9; Brief for Intel Corp. et al. as Amici Curiae 17, n. 5 (“A generic smartphone assembled from various high-tech components could practice an estimated 250, 000 patents”).”

Doctrine of Patent Exhaustion and the Patentee’s Rights

In the Lexmark International opinion, the Supreme Court stated, “For over 160 years, the doctrine of patent exhaustion has imposed a limit on that right to exclude. See Bloomer v. McQuewan, 14 How. 539 (1853). The limit functions automatically: When a patentee chooses to sell an item, that product “is no longer within the limits of the monopoly” and instead becomes the “private, individual property” of the purchaser, with the rights and benefits that come along with ownership. Id., at 549-550. A patentee is free to set the price and negotiate contracts with purchasers, but may not, “by virtue of his patent, control the use or disposition” of the product after ownership passes to the purchaser. United States v. Univis Lens Co., 316 U.S. 241, 250 (1942) (emphasis added). The sale “terminates all patent rights to that item.” Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617, 625(2008).”

Conclusion – Patent Rights Expire Stateside and Abroad

In the Lexmark International opinion, a majority of the Supreme Court Justices concluded that the patent exhaustion doctrine applies to both domestic and foreign sales of the patented article, unless the patented article was not purchased from a Patentee or the Patentee’s licensee.

If you have questions regarding Impressions Products, Inc. v. Lexmark International, Inc., 581 US ______(2017) 15-1189 opinion, or when patent rights expire, please contact Business Patent Law, PLLC and we will discuss how the Lexmark International opinion may or may not affect your business and your intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Intellectual property as collateral for small businesses

Can Intellectual Property Be Used As Collateral For A Loan?

Can your company’s intellectual properties be used as collateral for a loan? Yes, under certain situations. For instance, if a specialized insurance policy is used to establish a value for the intellectual property, the property can be used as collateral for loans from commercial banks.

Sources of Quick Cash

Occasionally, your company may need a quick influx of cash that exceeds your balance sheet’s liquid assets.

Traditional Sources for Cash Include:

  • Commercial Bank Loans
  • Government Grants
  • Small Business Administration Loans
  • Sale of Stock or Bonds

Other Sources of Cash: Angel Investors

Other potential sources of quick cash for your company are “angel investors.” Angel investors generally take greats risks when in investing in a startup or a company with few sales and expect large returns for their investments in return.

Beware of using Angel investors since the terms of “angel contracts” can cause companies to cease doing business.

Quick Cash for Publicly Traded Companies

You may have heard, “When you don’t need a loan, the bank is ready to lend more than you need!” If you do need a loan and your publicly traded company needs quick cash, you may consider:

  • Prime Rate Loans from Large Commercial Banks
  • Lines of Credit
  • Sales of Stocks or Bonds

Quick Cash for Private Companies

Private sales of stocks or bonds are an excellent source of capital for companies not traded in the public markets, but this is not usually an option for quick cash.

Before offering or issuing stocks or bonds, a privately traded company must be careful not to violate the Securities Laws of the United States or the “Blue Sky” laws of the state were buyers reside.

Disputes over the dilution of equity for current stockholders is a serious deterrent for using the sale of stock or bonds to raise capital.

SBA Secured Loans

Currently, the Small Business Administration will not guarantee an intellectual properties secured loan.

Collateral Protection Insurance for Your Company

Some startups or smaller and medium-sized companies have valuable intellectual property portfolios. These same companies frequently encounter cash flow difficulties.

Although intellectual properties are valuable assets for companies, most commercial banks are ill-equipped to determine the fair market value of the intellectual properties.

If you decide to leverage your company’s intellectual property portfolio, you can purchase a collateral protection insurance policy from a commercial insurance carrier. The collateral protection insurance policy establishes the value of the company’s intellectual properties (which can be used as collateral for the loan) and insures the lender against default on the loan.

Is An Intellectual Property Secured Loan Right for My Company?

This quick cash strategy is not for every company, but if you want to learn more about this option for your company, contact Business Patent Law, PLLC . We can discuss possibilities for your business and your intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

manufacturing and business strategy

Business Strategy: Patent Portfolios and Holding Companies

Is it a prudent business strategy for a holding company (Company H) to own the patent assets used by Company A in manufacturing products sold by Company A?

Perhaps, let’s consider the following scenario:

Manufacturing/Distribution Considerations

  • Company A has been in business for several years and has an impressive twenty percent market share for its Widget.
  • The Widget generates one-half of Company A’s profits.
  • Company A has a superb engineering staff that has patented various improvements of the Widget invention creating a profitable patent portfolio for Company A.
  • Company A also generates royalties from its patent license agreements with other companies.

Supply Chain Problems

  • For several years, SupplyCo provided Company A with 99% pure Critical Composition to manufacture its Widgets, but due to temporary utility power supply limitations, Company A was able to deliver only 96% pure Critical Composition to Company A.
  • To meet pressing needs of its customers, Company A shipped 20 tons of Widgets made with 96% pure Critical Composition.
  • During the subsequent six week period, due to the number of injuries to the users of the Widgets manufactured with 96% pure Critical Composition, a national recall of the 20 tons of Widgets was initiated by Company A.
  • Unable to weather the recall and the pending lawsuits, Company A was forced to declare bankruptcy and the Widget patent portfolio was eventually sold in liquidation by the bankruptcy trustee.

Could the Sale of Company A’s Patent Portfolio been Avoided?

Generally – Yes – as long as the transactions between Company A and Company H are arms’ length dealings.

To minimize devaluation of an intellectual property portfolio, management can use one or more holding companies in their business strategy, such as limited liability companies to stabilize the value of the portfolio in the event the “unthinkable” occurs.

Advantages of Using a Holding Company for Intellectual Property

If Company H had owned the Widget patent portfolio and granted Company A an exclusive license to make, use and sale the patented Widgets, then:

  • The Widget patent portfolio would not have been part of Company A’s bankruptcy and liquidated by the bankruptcy trustee.
  • Company H would remain in business and could grant an exclusive license to Company X to make, use and sale the profitable Widgets.
  • Company H could sell the valuable Widget patent portfolio to Company Y.
  • It is likely that royalty income to Company H would be deemed as passive income.
  • It is probable than any sale of the Widget patent portfolio to Company Y would be determined to be a long term capital gain.

Other Considerations for Using a Holding Company as a Business Strategy

  • Better supply and manufacturing quality control – thereby avoiding the Widget recall and the ultimate demise of Company A.
  • Remove Company A’s engineering department from Company A and setup Company E to do business with Company H, identified above, to better take advantage of the tax code’s provisions for intellectual properties.
  • Company E can provide special enticements for its engineering staff to better retain and recruit the best engineering staff that will create subsequent generations of better and more profitable Widgets for licensing by Company H to Company A.
  • Special enticements for the engineering staff apply only to Company E – not Companies H or A.
  • Company E can be easily located in an area where Company E takes maximum advantage of governmental tax incentives.
  • Regardless of what happens to Company A utilizing this business strategy, Companies H and E remain viable entities.

As you can see, there are many different business strategies which o utilize corporate structures to maximize profits and reward the best efforts of employees. This illustration provides only a few of those options.

Contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

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Provisional Patent Applications: The road to securing your patent rights

Provisional Patent Applications?

Business owners, investors and bankers consider national and foreign Patents and the goods and services associated with those Patents to be both intangible and tangible assets. Provisional Patent Applications are viable options for augmenting a company’s intellectual property portfolio.

Potential Patenting Pitfalls

There is a road you must travel  from inventor’s inspiration to the successful marketing and sales of the patented product, system, method, etc. That road must have well engineered bridges to successfully navigate the ravines that can otherwise destroy market share and Patent rights.

For example, the 2011 America Invents Acts includes a “limited grace” period to file a Patent Application – provided the conditions of 35 United States Code 102(b) can be fulfilled. However, is it prudent to rely on 35 United States Code 102(b), when an inadvertent public use of the invention can forfeit both national and international Patent rights for the invention that was inadvertently disclosed?

Provisional Patent Applications

Subsequent to the 2011 America Invents Act, the sensible business owner or CEO should consider filing Provisional Patent Applications to preserve future Patent rights.  Broad scope Provisional Patent Applications:

  • Provide substantive and procedural rights for one year from the filing date.
  • Permit the enterprise to make improvements to the invention disclosed in the Provisional Application which can subsequently be incorporated into a Nonprovisional Application and filed in a Patent Office before the expiration of the twelve month filing period.
  • Prevent public use, public disclosure, offers for sale and for sale bars to future Patents.
  • Allow the business to test-market the invention.
  • Allow the company the time to discern the real “inventive genius” of the invention.
  • Allow use of the Provisional Application as the priority document for national, foreign and international Patent Applications.
  • Encourage American inventors and engineers to quickly adjust to the worldwide “first to file” systems and to file the Patent Application, soon as possible, in at least one Patent Office.
  • Make it easier for the company to determine the relevant pool of capital for investment.

Provisional Applications Are Not The Only Solution

Changes happen slowly for some inventive segments of the global economy. For such inventions, the marginal costs of filing a Provisional Patent Application before filing the Nonprovisional Patent Application may not be warranted. However, if management has any doubt, it is wise to file the Provisional Application and be “safe” rather “sorry!”

Contact Business Patent Law, PLLC and we will discuss your business and Intellectual Property essentials.

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