capital gains on patents

Capital Gains – Intellectual Properties  

Capital Gains May Be Available For The Transfer Of Intellectual Property Rights

A capital gains tax rate for the transfer of Intellectual Property is available if the transfer of Intellectual Property rights is carefully planned.

Patent Rights are not Accorded Capital Gains Status – Unless…

26 I.R.C. 1221 – Capital Asset, in part, reads:

(a)    In General

For purposes of this subtitle, the term “capital asset” means property held by the taxpayer (whether or not connected with his trade or business), but does not include –

(3) a patent, invention, model or design (whether or not patented), a secret formula or process, a copyright, a literary, a musical/artistic composition, a letter or memorandum, or similar property, held by—

                    (A)    a taxpayer whose personal efforts created such property,

                    (B)    in the case of a letter, memorandum, or similar property, a taxpayer for whom such property was prepared or produced, or

                    (C)    a taxpayer in whose hands the basis of such property is determined, for purposes of determining gain from a sale or exchange, in whole or part by reference to the basis of such property in the hands of a taxpayer described in subparagraph (A) or (B)

Situation 1 – Patent Capital Asset

Joe was the founder of his company JoeCo. Over the years, Joe was the inventor of several Patents for the products sold by JoeCo. After 40 years in business, Joe was seeking buyers for JoeCo. AcquireCo purchased JoeCo and all assets and liabilities.

Joe can treat this transfer of Patent rights as a capital asset because the U.S. Internal Revenue code also includes 26 I.R.C. 1235. When specific facts exist, the inventor’s Patents are capital assets taxed as capital gains.

26 I.R.C. 1235 – Sale or Exchange of Patent, in part, reads:

(a)    General    A transfer (other than by gift, inheritance, or devise) of property consisting of all substantial rights to a patent, or an undivided interest therein which includes a part of all such rights, by any holder shall be considered the sale or exchange of a capital asset held for more than 1 year, regardless of whether or not payments in consideration of such transfer are—

                     (1)     payable periodically over a period generally coterminous with the transferee’s use of the patent, or

                     (2)    contingent on the productivity, use, or disposition of the property transferred.

(b)    “Holder” defined For purposes of this section, the term “holder” means—

                    (1)     any individual whose efforts created such property, or

                    (2)    any other individual who has acquired his interest in such property in exchange for consideration in money or money’s worth paid to such creator prior to actual reduction to practice of the invention covered by the patent, if such individual is neither—

                    (A)    the employer of such creator, nor

                    (B)    related to such creator (within the meaning of subsection (c)).

Situation 2 – Intellectual Property Gains

Jill was a seamstress with talent for making and selling clothing designs that generated a comfortable living for her family. Jill was a sole proprietor and over the years received two Trademark Registrations for Jill’sThings®. After 40 years, Jill sold her business to AcquiringJack, LLC with a knack for scaling small businesses. 26 I.R.C. 1221 does not prevent Jill’sThings® from being classified as capital assets. Therefore, the sale of Jill’sThings® would be treated as capital gains.

Situation 3 – Patent Capital Asset

AcquiringJack, LLC purchased all rights associated with two JoeCo Patents previously sold to a third party. AcquiringJack LLC held the JoeCo Patents for 18 months and sold the JoeCo Patents to LastMinuteCharlie, Inc. AcquiringJack, LLC’s sale of the JoeCo Patents will be treated as capital gains.

Situation 4 – No Capital Gains

Second Fiddle was an individual who was a skilled guitarist and sufficiently talented to write original music. Over the years, Second Fiddle had received Copyright Registrations for some of his musical compositions. While on a regional tour with his band, the Fiddlers, a vice president of Big Break Inc. made Second Fiddle an offer he could not turn down for his Copyright Registrations.  Second Fiddle sold his Copyright Registrations to Big Break Inc. According to 26 I.R.C. 1221, a Copyright or musical score held by the creator is not a capital asset. Second Fiddle’s sale was taxed as ordinary income.

Situation 5 – Intellectual Property Capital Gains

Philharmonic Violin was an individual who played third violin with the orchestra. Although not as musically skilled as some other violinists in the orchestra, Philharmonic Violin wrote a few concertos and was granted some Copyrights for her efforts. Philharmonic Violin assigned her Copyrights to her company, Concertos LLC. On her lucky day, Philharmonic Violin arrived early for practice and was playing some of the supporting violin portions of her concertos. Big Director, the CEO of his production company, heard the portions of Philharmonic Violin’s concertos and told Philharmonic Violin that they were perfect for the score of one of his films. On that day, Big Director wrote a check payable to Concertos LLC. Because Concertos LLC rather than Philharmonic Violin received the payment, the payment will be taxed as a capital asset.

Business Patent Law, PLLC does not provide tax counsel. The above situations are only illustrative. Changes in the facts of a taxable situation can generate different applications of Title 26 Internal Revenue Code. Advance planning for taxable situations can reduce the amount of taxes paid. For tax advice, please contact your tax advisor.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

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

The Law and Contracts in Lexington Kentucky

Questions About Contracts

Contracts Can Seem Contradictory

It’s pretty easy to understand why contracts are often confusing. After all, contracts can include clauses that allow opposing sides to make contrary assertions about the meaning of one or more of the clauses in the contract.

When a contract comes under fire, and the amount in controversy increases, so do opposing counsels’ arguments about such things as the meanings of “a,” “the” and the placement of colons, commas, semicolons and other punctuation.

Politicians and lawmakers (most of whom are lawyers) have argued over the meaning of the word “is.” In a civil trial, both sides have plausible arguments, and the jury decides who is more believable.

With this real-world reality in mind, most companies strive to provide their sales force with the best “boiler plate” contracts. However, those can pose their own challenges.

Boiler Plate Contracts

Although, our company’s “Boiler Plate” contracts have served us well – we now have a new situation…

The New Situation

Our Company’s Region 1 representative executed a contract with a new Lexington, Kentucky company for 1 MM Gizmos. We ordered 1 MM Gizmos from our supplier F.O.B. origin. The new company is refusing to pay an upfront deposit as required by our “boiler plate” contract. In addition, this new company indicated it considered all “boiler plate” contracts “null and void.”

We have an agreement signed by the new company and our Region 1 representative. We gave the Region 1 representative the authority to execute the “boiler plate” contracts for our company. Our attorneys inform us the agreement is “solid.” Our Region 1 representative tells us that he and the other signatory were in the signatory’s office on the premises of the new customer when they both signed the contract.

Is the Contract Enforceable?

For there to be a valid contract, each signatory must have the authority to bind their respective companies to the agreement. Whether the agent of a company has the authority to bind the company is factually dependent.

Corporations

  • As a general rule, the President, CEO or COO has the designated explicit authority to bind the corporation to a contract. If the customer’s signatory was a President, CEO or COO, then the contract is likely valid.
  • Agents such as the CFO and Vice Presidents can be granted actual authority to bind the corporation to a contract. If the customer’s signatory was one of these agents, the contract is likely valid.
  • Agents such as the chief of marketing or chief of engineering may have either actual authority or implicit authority to bind the corporation to a contract. If the customer’s signatory did not have actual authority, but a pattern of behaviors can prove that the customer’s agent had a history of executing contracts for the customer, the contract would likely be held valid at trial.
  • A midlevel marking manager would not likely have explicit or implicit authority to bind the corporation to a contract and the contract with the customer would be invalid.

Limited Liability Companies, Professional Limited Liability Companies, Limited Liability Partnerships

  • As a general rule, the designated Manager or Managing Member has the explicit authority to bind the limited liability company to a contract. If the customer’s signatory was the Manager or Managing Member, then the contract is likely valid.
  • Agents can be granted actual authority to bind the limited liability company to a contract. If the customer’s signatory was one of these designated agents, the contract is likely valid.
  • It is possible to prove an agent’s implicit pattern of behaviors that the customer’s signatory had a history of executing contracts for the customer. With such proof, the contract would likely be held valid at trial.

General Partnerships

  • General partners are jointly and severally liable. Each general partner can bind the partnership to a contract.
  • Agents can be granted actual authority to bind the general partnership to a contract. If the customer’s signatory was one of these designated agents, the contract is likely valid.

Do you have questions about contracts? We can help. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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

Beach Buggy Invention Tires Litigation Intellectual Property

Expert Witnesses and Legal Proceedings

The Situation

Our company is a family owned business and we supply valve stems to motor vehicle rim manufactures.  We are a named party in a class action law suit against the motor vehicle manufactures, the international tire manufacturer and the rim manufacturers that utilized our valve stems.

Allegedly, the defective tires were attached to certain models of passenger cars.  The Plaintiffs aver that the tires “blew out” at maintained speeds of 70 MPH for more than fifteen minutes when the ambient temperature exceeded 85 degrees Fahrenheit.

Expert Witnesses and Adversarial Proceedings

Can our company use expert witnesses to defend against legal claims made against us?  Yes.

Can we use engineers, lay people and others as expert testimony to prove that the class action suit against our company is without merit?  It depends, in the federal system, an expert witness’ testimony is controlled by the federal rules of evidence.

Some Relevant Federal Rules of Evidence:

Rule 701. Opinion Testimony by Lay Witnesses

If a witness is not testifying as an expert, testimony in the form of an opinion is limited to one that is:

    • rationally based on the witness’s perception;
    • helpful to clearly understanding the witness’s testimony or to determining a fact in issue; and
    • not based on scientific, technical, or other specialized knowledge within the scope of Rule 702.

Rule 702. Testimony by Expert Witnesses

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:

    • the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;
    • the testimony is based on sufficient facts or data;
    • the testimony is the product of reliable principles and methods; and
    • the expert has reliably applied the principles and methods to the facts of the case.

Rule 703. Bases of an Expert

An expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed.

Can our Legal Team use the following as Expert Witnesses?

  1. The Director of our engineering department who has twenty years experience of overseeing quality control in the manufacture of our valve stems to prove that our valve stems were not defective. Yes – would qualify as an expert.
  2. The Director of our engineering department who has twenty years of experience of overseeing quality control in the manufacture of our valve stems to prove that the tires were not defective. No – would not qualify as an expert.
  3. Our vice president of sales to prove that 75% of the rims associated with the alleged defective tires did not utilize our valve stems.  Yes – would qualify as an expert, and if challenged should be allowed to give a lay opinion on the issue.
  4. The lead investigator of an insurance company’s automobile accident reconstruction team to prove that the tires were not defective. Yes – would qualify as an expert.
  5. An independent one-man shop seller of new tires with thirty years of experience of removing worn passenger car tires and installing new replacement tires to prove that the tires were not defective. Via news reports, the tire seller observed that seals for the alleged “blow out” tires did not contact their rims in accordance with industry protocol – outward and inward sides of tires were reversed when installed on their rims. Yes – would qualify as an expert.
  6. The above one-man shop seller observes that many “beach buggy” owners asked him how to reverse the tires on their cars. The witness testifies that social media was instructing “beach buggy” owners to reverse the inward and outward sides of the tires for a better “beach experience.” The witness opines that the reversed tires caused the tires to “blow out.” No – would not qualify as an expert to give opinion on the cause of the blow outs. However, the witness could testify as a layman regarding his interaction with “beach buggy” owners and social media.

If your enterprise needs legal assistance procuring/managing/enforcing your intellectual properties, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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

foreign nations and US LLCs and tax law

Foreign Owner – US Limited Companies

Can United States Limited Liability Companies be Owned by Foreign Members?

Yes. The United States allows citizens of foreign countries to own a US Limited Liability Company (LLC). A foreign owner can own an equity ownership interest of one hundred percent or a fractional interest.

Is it Advantageous for a Citizen of Foreign Nation to Own a US LLC?

Yes. Ownership of a US Limited Liability Company (LLC) allows a foreign citizen to participate in the largest single economy on earth.

For the purposes of this post, what is referred to as a US LLC is, in fact, a LLC created under the laws of one of the Fifty States or the District of Columbia. Some States allow the formation of a Professional Limited Liability Company (PLLC). A PLLC is a specific type of LLC.

Taxation of US LLCs

Business Patent Law, PLLC does not provide specific tax counsel for its clients. However, we can offer some general principles regarding foreign ownership of US LLCs:

  • Most nations tax the income of their citizens, regardless of jurisdiction where the income was generated.
  • Under US federal tax law, LLCs are considered “pass-through entities” for tax purposes.  This means that profits and losses are passed through to the owners of the LLC.
  • As a general rule, most LLCs are required to pay some type of taxes and/or fees in the State of the LLC’s organization and any other State in which the LLC does business.
  • State law taxes and fees vary from state to state and are usually less than US federal taxes.

Does the US Participate in Tax Treaties with Other Nations?

  • Yes.
  • Before purchasing ownership in a US LLC, a potential foreign owner should seek legal and tax counsel in both the owner’s home nation and the United States.
  • The United States has enacted tax treaties with different nations.
  • Different tax treaties produce different tax consequences for the foreign owner of a US LLC.
  • Among other things, the tax treaties can control what is taxed or is not taxed and payment of taxes in the United States and the foreign owner’s home nation.

Does a Foreign Owner of a US LLC need to register with the IRS?

It depends on the Tax Treaty between the foreign owner’s home Nation and the United States.

As a general rule, a foreign owner owning 25% or more of the US LLC will need to register with the US Internal Revenue Service (IRS). When the foreign owner is required to register with the IRS, the foreign owner must secure a Foreign Taxpayer Identification Number (FTIN). It can take several months for the IRS to issue the FTIN.

Under some tax treaties, an owner of less than a 25% equity interest in the US LLC may not be required to register with the US IRS.

Under some tax treaties, an owner of less than a 25% equity interest in the US LLC may not be taxed on the owner’s profits from the US LLC. However, the foreign owner will likely be taxed on the LLC’s profits in the foreign owner’s home Nation.

If the US LLC should file certain documents related to foreign ownership and does not file the documents with the IRS, the IRS will financially penalize the US LLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you have questions about equity ownership of a US LLC, please contact Business Patent Law, PLLC and we will discuss possibilities for your business.

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

Business Taxes in 2019

Your Business Income Taxes

In the United States, businesses pay income taxes

For millennia, governments have taxed businesses and individuals. Payment of taxes on income generated by business is a quarterly/annual requirement in the United States. For as long as the business remains active, it will pay taxes. The filing of returns and the payment of income taxes can sometimes overwhelm small businesses owners.

As a small business owner, it may be possible to minimize taxes, by using a different business structure.

Select the way your company will be taxed

Some options for your business include:

  • C-Corporation (Inc.)
  • C-Corporation – Subchapter S
  • Limited Liability Company
  • Sole Proprietorship
  • Partnership

Selecting your company’s jurisdiction

Where you choose to incorporate or organize your company will impact your taxes.

If your company does business in several States, they will usually require you to pay taxes on income generated in each State.

Companies can, however, “shop” for States that do not have an income tax. In 2019, South Dakota and Wyoming do not impose State corporate income taxes or State individual income taxes.

Some jurisdictions give more favorable tax treatment to businesses incorporated/organized in that state which also have their principal office in the State, as compared to those formed in another State.

But, beware, in some States, lower State business income taxes may increase the total amount of Federal business income taxes.

Product logistics, the availability of qualified employees, energy costs and natural resources can sometimes dictate which State you select to incorporate or organize your business.

Federal Income Taxes for C-Corporations

C-Corporations are taxed on profits.  A shareholder receiving a C-Corporation’s profit distribution will also pay income tax on the profits received.

The Tax Cuts and Jobs Act of 2017 capped the maximum tax rate for income generated by a C-Corporation at 21%.

Federal Income Taxes for Pass-Through Legal Entities

Subchapter S Corporations, Limited Liability Companies and Partnerships are known commonly as “pass through” entities.  Profits and losses generally pass through to the owners of the legal entity, so this income will be declared on the owners’ individual income tax returns.

With some exceptions, the Tax Cuts and Jobs Act of 2017 allows a Qualified Business Income Deduction of up to 20% of Qualified Business Income for sole proprietors and pass-through entities.

What is Qualified Business Income?

Qualified Business Income is the net amount of qualified items of income, gain, deduction and loss from any qualified trade or business. Only those items included in taxable income are counted and these items must be effectively connected with a U.S. trade or business. Items such as capital gains and losses, certain dividends, and interest income are excluded from Qualified Business Income.

Most growing companies eventually reach annual revenues where the combination of business counsel and tax counsel can improve the bottom line for your company.

Business Patent Law, PLLC does not provide tax counsel for specific matters, but does provide business counsel for businesses.

If you have questions about your company’s business structure, please contact Business Patent Law, PLLC, and we will discuss possibilities for your business.

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

Types of Confidentiality Agreements for Business

Confidentiality Agreements

Should Your Business Use Confidentiality Agreements?  

Should your company use confidentiality agreements?  If your business has information it needs (or wants) to keep out of the public domain, then yes. Information of this type may include:

  • Certain types of intellectual properties
  • Company information disclosed to potential investors and investors identities
  • Customer lists
  • Employee salaries
  • Independent contractor identities
  • Research and development assets
  • Suppliers identities
  • Tax returns
  • Trade secrets, etc.

As a general rule, once information enters the public domain, you can’t make it private. You have to be proactive.

Three Types of Confidentiality Agreements 

1)        Confidentiality Agreement

This agreement can be used when the involved Parties agree to hold the information disclosed in “strict confidence.” When the Parties become adverse or one of the Parties is seeking to avoid the terms of the Confidentiality Agreement, the Parties may argue over:

  • What was the information disclosed in “strict confidence?” (It is helpful to specifically identify the information covered in the Confidentiality Agreement itself)
  • What the Party receiving the disclosed information must do with the information
  • Which State’s law controls the provisions of the Agreement
  • Where the venue and personal jurisdiction will be, should litigation become necessary

2)        Confidentiality and Evaluation (CE) Agreement

Potential Patent rights (or Patent rights) can be the subject of a CE Agreement. A CE Agreement specifies that the subject matter disclosed is to be held in “strict confidence” and that the information is provided solely for the purpose of evaluation.  In the event one Party is dissatisfied with the CE Agreement, the same issues as identified in the above (Confidentiality Agreement) section will apply here. Additionally, this type of agreement will need to specify:

  • Is audible disclosure a disclosure to be held in “strict confidence?”
  • Is visual disclosure a disclosure to be held in “strict confidence?”
  • What happens when the Party receiving the disclosure evaluates the audible or verbal disclosure outside the jurisdiction where the Parties are domiciled?

This matters because any public disclosure related to potential Patent rights (prior to the filing of the Patent Application) can bar any future Patent related to the disclosed information

3)        Confidentiality, Evaluation and Noncompetition (CEN) Agreement

As with the two agreement types above, almost anything that one Party wants to be kept in “strict confidence” can be the subject matter of a CEN Agreement. Along with Confidentiality and Evaluation, a CEN Agreement also includes a Noncompetition (anywhere in the world) provision for the Party receiving the information. Whenever possible, Business Patent Law, PLLC recommends its clients use a CEN Agreement.

In the event one Party is dissatisfied with the CE Agreement, the same issues as identified in Sections 1) and 2) above, may also be grounds for argument between the Parties.

An example of when a CEN Agreement might be used: Private/nonpublic companies often have corporate bylaws that require shareholders to execute CEN Agreements before shareholders can be issued stock.

If a Business Fails to Use Confidentiality-Type Agreements 

Unless some type of Agreement between the Parties is executed, the disclosing Party has minimal legal recourse against the receiving Party repeating publically the disclosed information or using the disclosed information for another reason.

Here are a few ways such disclosures could become a problem:

  • Public disclosure of the company’s private information will likely temporarily disrupt the company’s operations
  • What would happen if all the company’s employees were aware of each employee’s salary?
  • What would happen if the company’s competitors were aware of the company’s research and development information?
  • A trade secret disclosed publicly is no longer secret and the secret is lost forever

What You Need To Know About Confidentiality Agreements

  • Confidentiality Agreements between trustworthy Parties can improve profits for both companies
  • The bargaining power of the Parties tends to influence the type of Confidentiality Agreement executed  (A publicly traded company will likely have a Confidentiality-type Agreement that is more favorable to the publicly traded company when contracting with a business having annual sales of $2M)
  • Bad actors tend to exploit the other Party to a contract (Character of the Parties matters)
  • Agreements executed between Parties who were not represented by legal counsel may be unenforceable
  • Confidentiality Agreements that were drafted for a first purpose may not be acceptable for a second (but similar) purpose
  • Without the advice of legal counsel, parties my draft contracts for almost anything they feel is important at the time the contract was allegedly executed (Some of these contracts may be enforceable, some may not)
  • If the alleged contract is only partially in writing, there may be issues when memories fade ten years later  (Get it in writing)
  • Perspective matters (Three different eyewitnesses can witness the same event and three distinct testimonies may be offered into evidence)
  • Written, properly executed agreements can minimize business disruptions

If you have questions about intellectual properties or agreements, please contact Business Patent Law, PLLC. We are here to help you grow your business and protect 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.

Representing Yourself for Trademarks and Patents

Representing Yourself for Patents & Trademarks: Going “Pro Se”

Pro Se USPTO Representation

Pro se” is a Latin phrase meaning “for himself.” Under United States law, an Applicant can represent himself/herself/itself before the United States Patent & Trademark Office (USPTO).

Can a pro se Applicant achieve favorable results from a USPTO Examiner? Maybe. Maybe not. Success may depend on the legal skill of the Applicant.

What is a “Favorable Result” for a Pro Se Applicant?

Favorable results include attributes such as:

  • Defensibility against an allegation of unpatentability
  • The durability of the patent or trademark
  • Enforceability
  • The scope of rights granted by the USPTO to the Applicant

Three Primary Types of USPTO Representations 

An Applicant can be a large company, a small company, a partnership, a trust, an individual, or another entity.

Large Businesses

Many large companies have “in-house” intellectual property attorneys who represent the large companies before the USPTO. If an “in-house” attorney fails to meet management’s objectives, the large company usually will hire another attorney who will meet the large company’s objectives.

For legal matters before the courts or other tribunals, large companies usually hire one or more “outside counsels” to represent the company. Sometimes, these intellectual property cases can have more than a billion dollars in potential damages.

Small Businesses with Resources

Small companies with sufficient revenues usually retain smaller intellectual property law firms to represent their company before the USPTO and the courts or other tribunals. The USPTO defines a small business as a legal entity with 500 or fewer employees.

Small Businesses, Start-ups or Individuals on a Tight Budget

Sometimes, small companies, start-ups or individuals opt for pro se representation before the USPTO, based solely on their budget limitations. Pro se representation by a non-lawyer may achieve favorable results for the Applicant. According to the USPTO database, it appears that favorable results tend to be more closely associated with Trademark Applications than with Patent Applications.

Be aware: if the pro se Applicant’s results are not favorable, the expense of hiring an intellectual property attorney in an attempt to achieve better results will likely be much more costly than it would have been to retain an attorney at the beginning of the process. Unfortunately for the Applicant, sometimes the facts associated with the Application are so unfavorable that issues with the Application cannot be corrected.

What if the USPTO Says No?

What can a pro se Applicant do when an Examiner refuses to approve the Applicant’s Mark for registration? What does the pro se Applicant (and now owner of a federal Registration) do when a USPTO Opposition or Cancellation Proceeding is initiated against the owner’s Federal Registration?

Business Patent Law’s Recommendation:  seek the advice of an intellectual property attorney who has experience practicing before the US Trademark Office. The experienced professional may be able to correct or resolve the Trademark Application issues and preserve the Applicant’s procedural and substantive rights.

What if an Examiner makes your Patent Application Rejection Final? 

The Patent Applicant’s options can include filing one of the following:

  • An Appeal
  • A Request for Continued Examination
  • A Continuation Application
  • A Divisional Application

An Applicant may also allow the Application to go abandoned.

Business Patent Law’s Recommendation: seek the advice of a patent attorney who has experience practicing before the US Patent Office. There is no substitute for a seasoned patent attorney representing the Applicant before the US Patent Office.

Meeting USPTO deadlines       

When seeking an intellectual property attorney to commence representation of a previous pro se Applicant, it is essential that an attorney be contacted with adequate time remaining before the USPTO deadline.  A well-seasoned intellectual property attorney will likely refuse to take on a previous pro se matter when notified only days before the deadline.

If you have questions about intellectual properties and representation before the United States Patent & Trademark Office, 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.

Warranties as Effective Marketing Tools

Warranties: An Effective Marketing Tool

Warranties May Be Automatic

When a business sells goods, under the various State versions of the Uniform Commercial Code (UCC), implied warranties attach to the goods sold – unless the UCC’s implied warranties are specifically disclaimed in writing. If your company sells goods to customers in various States and some defective goods were discovered subsequent to the sale, one or more State’s version of the UCC’s implied warranties will apply. In the event of litigation, attorneys for each party will argue for the most favorable jurisdiction and venue. You, as the seller, could be forced to defend a legal action in the buyer’s home venue.

As a general rule, warranties are not applied to services supplied by the company supplying the service. For instance, no warranty is implied by law for a business that assists customers with the purchase of insurance policies, unless that business makes a warranty to the customer.

The Legal Aspects of Implied Warranties

Merchantability

The UCC’s Implied Warranty of Merchantability, in part, reads: “(1) Unless excluded or modified (Section 2-316), a warranty that the goods shall be merchantable is implied in a contract for their sale if the seller is a merchant with respect to goods of that kind. Under this section, the serving for value of food or drink to be consumed either on the premises or elsewhere is a sale…”

Fitness for a Particular Purpose

The UCC’s Implied Warranty of Fitness for a Particular Purpose reads: “Where the seller at the time of contracting has reason to know any particular purpose for which the goods are required and that the buyer is relying on the seller’s skill or judgment to select or furnish suitable goods, there is unless excluded or modified under the next section an implied warranty that the goods shall be fit for such purpose.”

Warranty of Title and Against Infringement

The UCC’s Warranty of Title and Against Infringement reads, “(1) Subject to subsection (2) there is in a contract for sale a warranty by the seller that (a) the title conveyed shall be good, and its transfer rightful; and (b) the goods shall be delivered free from any security interest or other lien or encumbrance of which the buyer at the time of contracting has no knowledge.  (2) A warranty under subsection (1) will be excluded or modified only by specific language or by circumstances which give the buyer reason to know that the person selling does not claim title in himself or that he is purporting to sell only such right or title as he or a third person may have.  (3) Unless otherwise agreed a seller who is a merchant regularly dealing in goods of the kind warrants that the goods shall be delivered free of the rightful claim of any third person by way of infringement or the like but a buyer who furnishes specifications to the seller must hold the seller harmless against any such claim which arises out of compliance with the specifications.”

How to Eliminate Implied Warranties

In the majority of instances, the only way to eliminate the application of the various States’ versions of the Uniform Commercial Code to the sale of your company’s goods is to specifically disclaim the UCC’s implied warranties in writing.

Warranty Use as a Marketing Tool

Patented Product vs. Generic Product

As CEO of your company, you believe that invention is the lifeblood of the company and you have budgeted ten percent of annual sales for development, improvement and Patent procurement for the company’s new products. The company’s engineers have developed the third-generation widget which is patented and has also just received FDA approval. The company’s second-generation widget’s Patent expired years earlier and is currently manufactured by generic company competitors. Users of the second generation widget love the operation of the second generation widget manufactured by your generic competitors. Those users also like the price that is several thousand dollars less than what your company sold the second generation widget for before the Patent expired. Other than the UCC’s implied warranties and any other warranty required by law, the generic manufacturers offer no other warranties.

Competing with Generics

Your company’s patented third-generation widget includes radio frequency capabilities, memory, processing means, sensors, etc. not included in your second generation widget. FDA testing revealed that over a span of years, the patented third-generation widget is more durable than the second generation widget. The third generation widget performs healthcare functions impossible for the second generation widget to perform. Costs of the patented third-generation widget to the user are thousands of dollars more than the generic second-generation widget. Your company struggles to have its patented third-generation widget regain and improve its former market share previously achieved with its second generation widget.

Improving Market Share With Warranties

To improve the company’s market share of its patented third-generation widget, the CEO took instruction from the motor vehicle industry. The CEO opted to provide a ten year “bumper to bumper” warranty and commenced advertising that the patented third-generation widget was sold under warranty. The advertisement touted a limited ten-year warranty and superior performance compared to other widgets. Over the years, the marketplace has revealed that for high “price point” goods, generous warranties can improve sales.

Limited Warranties in Lieu of UCC Warranties

A business can offer a limited “bumper to bumper” warranty for its new product while expressly disclaiming the States’ Uniform Commercial Code’s implied warranties and other conditions. Depending on the type of goods and other facts, it is also possible for a business to expressly place limits on liability.

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

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Physician Sunshine Laws and Your Business

Physician Sunshine Laws And Your Business

Physician Sunshine Laws and Small Businesses

Does 42 U.S.C. 1320a-7h, known commonly as the “Physician Sunshine Laws-Open Payments” apply to a small business?  Maybe. If Physician Sunshine Laws (Open Payments Laws) are applicable to your business, you may also be surprised how these laws can be applied to your company.

Some States have their own version of physician sunshine laws. In some cases, the State version may apply when the federal version does not.

Many Business Patent Law, PLLC’s clients are involved with the provision of medical devices, supplies, etc. For most Business Patent Law clients, the Physician Sunshine Laws apply to an “applicable manufacturer” that “provides payment or other transfer of value” to a “covered recipient.”

Who Administers Physician Sunshine Laws?

CMS.gov (Centers for Medicare & Medicaid Services) is the Federal Agency that Administers Physician Sunshine Laws (Open Payments). 42 U.S.C. 1320a-7h (b) sets forth penalties for failing to file a required report to CMS.gov.

Who Needs to Report to Under Physician Sunshine Laws?

Subchapter S Company Examples

Does a Subchapter S Company that Manufactures Surgical Sponges for Use in Operating Rooms and Gives Samples of the Surgical Sponges to Medical, Surgical and Dental Practices Need to Report to CMS.gov?

Yes, according to 42 U.S.C. 1320a-7h (e) which reads:

(2) Applicable manufacturer

The term “applicable manufacturer” means a manufacturer of a covered drug, device, biological, or medical supply which is operating in the United States, or in a territory, possession, or commonwealth of the United States.

(4) Covered device

The term “covered device” means any device for which payment is available under subchapter XVIII [Medicare] or a State plan under subchapter XIX or XXI [federal or state plans for medical assistance] (or a waiver of such a plan).

(6) Covered recipient

(A) In general…“covered recipient” means the following: (i) A physician [is a doctor of medicine or osteopathy, a dentist, a doctor of podiatric medicine, a doctor of optometry or a chiropractor – as defined by 42 U.S.C. 1395x (r).] or

(ii) A teaching hospital.

LLC Examples

Does a Limited Liability Company (LLC) Manufacturing and Selling Scalpels Need to Report to CMS.gov?

  1. If the LLC makes quid pro quo sales to dentists, physicians and hospitals? No. (There is no transfer of value or gift.)
  2. If the LLC supplies lunches for the surgical office and the employees? Yes. (The lunches were a transfer of value.)

Does an LLC (having one or more covered recipients holding a minority equity ownership interest) that manufactures radio frequency devices for treatment of the human body need to report equity ownership Interests to CMS.gov? 

It depends.

  1. If a dentist owns 5% equity in the LLC? Yes.
  2. When the wife of a surgeon owns 10% equity in the LLC? Yes. ***
  3. If a pharmacist owns 5% equity in the LLC? No.
  4. When a physician’s assistant owns 5% equity in the LLC? No.

***42 U.S.C. 1320a-7h (a) reads:

(2) Physician ownership

In addition to the requirement under paragraph (1)(A), on March 31, 2013, and on the 90th day of each calendar year beginning thereafter, any applicable manufacturer or applicable group purchasing organization shall submit to the Secretary, in such electronic form as the Secretary shall require, the following information regarding any ownership or investment interest (other than an ownership or investment interest in a publicly traded security and mutual fund, as described in section 1395nn (c) of this title) held by a physician (or an immediate family member of such physician ([immediate family member] as defined for purposes of section 1395nn (a) of this title)) in the applicable manufacturer or applicable group purchasing organization during the preceding year:…

Determining what you need to do in these situations, and what you are legally required to do, can be difficult. If you have questions about your whether your company needs to file reports with CMS.gov, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

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Entrepreneurs Small Business Startup Advice

Advice for Entrepreneurs and Small Businesses

Entrepreneurs and Small Businesses

In the United States there are approximately 29,000,000 small businesses. Most of these small businesses are founded by one or more entrepreneurs. One US Small Business Administration (SBA) measure for defining a small business is: a small business has 500 or fewer employees. According to the SBA, of these 29 million small businesses, approximately 23,000,000 small businesses do not have any employees.

In the United States, approximately one-half of all jobs are supplied by small businesses, so there is a correlation between more small businesses and increased availability of jobs.

Entrepreneurs Create Small Businesses

First, the entrepreneur conceives the invention/product/service and/or business model. Then that entrepreneur will develop a method to commercialize the invention/product/service. According to the SBA, each year more small businesses “are birthed than die.” Over the years, BPL has witnessed entrepreneurs who fail to realistically approach the problem of anti-commercialization forces that result in the death of small businesses. At the same time, those entrepreneurs who do persist can create small businesses that have 100 or more employees with annual sales of 200 million dollars or more.

The owners of a $200MM small business usually have a group of trusted advisors in place, but what about startups?

Entrepreneur Advice and Startup Considerations

If you are one of the 23 million small business owners, entrepreneurs or start-ups, you should:

  • Think and rethink the invention/product/service
  • Discover competitors and discern how your invention/product/service is different – your market niche is likely narrower than you originally thought
  • Determine how to make a profit in your niche market
  • Seek and listen to the advice of other successful small business owners
  • File Intellectual Property Applications – if your market and price point(s) justify the filings
  • Patents owned by startups provide the owners a limited monopoly to prevent others from making, using, offering for sale or selling their patented invention
  • Investors appear to like small businesses with Intellectual Property portfolios
  • Prepare a business plan
  • Commence assembling your team of trusted advisors – mentors first – then accountants, attorneys, engineers, insurance professionals, investors, lenders, and scientists, etc.

Many small business owners reap large financial rewards when the small businesses are sold to a third party.

Get Help With Your Small Business Venture

Business Patent Law, PLLC would like to assist you with your small business or Intellectual Property needs.  Please contact Business Patent Law, PLLC and we will discuss possibilities for your business.

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