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.

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.

Rental Property and Intellectual Rights

Real Estate Rental, Tangible Property and Intellectual Property Rights

Relationship Between Commercial Rental Property and Inventories

Landlords own the real property rented by tenants (rental property). Tenants have an interest in the use of that real property. A commercial landlord rents square footage to the tenant and grants the tenant permission to operate a business from the rented space. Under most commercial leases, inventory remains the personal property of the tenant. Landowners may also operate their own businesses from commercial real properties.

Real Property Cases: Traditionally Matters for State Courts, However…

For centuries, disputes involving real property and rental property contracts have fallen under the law of the jurisdiction where the real estate is located. Each State has its own version of its real property laws. However, in today’s world, federal laws can influence a State’s real property laws.

Intangible Patented Inventions as Tangible Personal Property

A Patentee can sell tangible widgets that include intangible patent rights for the circuitry, processor, and memory that cause the tangible widgets to operate differently from unpatented widgets. Patent infringement of the patented widget can result when someone who did not purchase the patented widget from the Patentee makes, uses, sells or offers to sell the patented widget without the permission of the Patentee.

Under United States law, Patent infringement cases have exclusive jurisdiction and venue in federal district courts.

When Patented Widgets are Offered for Sale on Consignment

Possible interactions between the real estate owner or the commercial tenant (hereinafter Commercial) and the Patented Widgets Owner (hereinafter PWO):

  • As long as Commercial and PWO meet the terms of the consignment agreement, both parties are probably happy.
  • When Commercial refuses to pay PWO according to the consignment agreement, the PWO could sue the Commercial for breach of contract in a State court.
  • When Commercial refuses to honor the consignment agreement and subsequently gives the patented widgets to a third party who thereafter uses the patented widgets in the third party’s plant. Under the Supreme Court’s Impression Products, Inc. v. Lexmark International, Inc., 581 US 1523 (2017) case, because there was no sale of the patented widgets by the Patentee, PWO can sue both the thirty party and Commercial in a federal district court for patent infringement. Any case by PWO for breach of contract by Commercial would likely be joined with the patent infringement case in federal court.

The commercial tenant (hereinafter Tenant) and the PWO:

  • When Tenant sublets a space for a booth to PWO and PWO fails to pay rent to Tenant, the Tenant can sue PWO in State court for collection of unpaid rent.
  • In a State that provides for commercial landlord lockouts and seizures of personal property, Tenant fails to pay rent and the landlord locks out and seizes all inventory including PWO’s patented widgets. Under the lease, Tenant did not have a right to sublet space to PWO and the landlord is unaware that PWO’s patented widgets are not part of Tenant’s inventory. After seizing PWO’s patented widgets, the landlord sells PWO’s patented widgets to a third party who resales the patented widgets to a fourth party who destroys the patented widgets and sells the junked parts to a recycler. Under Impression Products, Inc. v. Lexmark International, Inc., 581 US 1523 (2017), because there was no sale of the patented widgets by the Patentee, PWO could sue the commercial landlord, the third party and the fourth party for patent infringement in federal court. For the landlord, the third party and the fourth party, reliance solely on real estate law is insufficient to prevent a patent infringement lawsuit in federal court.

Have More Questions About Intellectual Property?

Contact Business Patent Law, PLLC  to get your questions answered and to 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.

Personal Property Assets and Real Property Assets

Assets – Real – Personal

Personal Property Assets versus Real Property Assets

Most companies have both personal property and real property assets. As general rule, real property includes the land, building(s) attached to the land and fixtures attached to the building(s). A personal property asset is any asset other than real property.

The Relationship Between Real Property and Personal Property

Buildings, Structures and Fixtures are Tangible Real Property

By way of illustration, your plant’s building and its fixtures (such as cooling fans, ductwork and pipes) are generally considered tangible real property. Real property assets are tangible and can become tangible personal property assets. When an old cooling fan is replaced with a newer more efficient cooling fan, the new cooling fan becomes a tangible fixture and the old fan becomes tangible personal property.

Real Property Boundaries

A deed sets forth the boundary lines of the real property. Without permission of the land owner, anyone who crosses over the boundary lines of the real property may be charged with trespassing.

Patents are Usually Intangible Personal Property Assets

The claims of a Patent “stake out” the legal boundaries of the Patent. An analogy is the 1849 California Gold Rush where miners staked out their “gold fever” claims in the Sierra Nevada Mountains.

When the Patent claim remains valid, anyone who invades the space claimed by the Patentee without permission may become a defendant in an infringement suit. Staking your Patent infringement claims can be a “rough and tumble” adventure for both the plaintiff and the defendant. Under some select circumstances, that legal tousle may result in the defendant paying treble damages.

  • A few US Patents have been issued for real properties (e.g., building components attached to land), but most Patents are valuable intangible personal property assets.

Goods Covered by Patent Claims are Tangible Personal Property Assets

As noted above, Patents are generally intangible personal property assets. However, the widgets manufactured by your company that are covered by one or more claims of your Patent(s) are tangible personal properties which could also fall under the parameters of the Several States Uniform Commercial Codes. And if your widgets are medical devices, FDA approvals of the tangible personal properties are required before the widgets can be sold for medical use in patients.

Simultaneous Multiple Property Types

What happens when a situation arises where there are simultaneous real property, personal property and intellectual property issues? This will be addressed in a future post, so stay tuned!

If you have questions about intellectual property, tangible or intangible assets, 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.

LLC friendly states

Organizing Your LLC Intellectual Property Startup

Limited Liability Company – IP Startup

One or more Limited Liability Companies, can be be beneficial for Intellectual Property startups. As indicated in a prior blog, it is prudent for companies owning Intellectual Property rights to hold the Intellectual Property in a holding company and to have the goods/services associated with the Intellectual Property owned by a separate manufacturing/distribution company.

LLC Organization and Tax Law

Should organizers of a Limited Liability Company seek the advice of a tax professional prior to organization the LLC?  Yes.

Business Patent Law, PLLC does not provide tax counsel. However, with the ever-changing tax codes, organizers should consult with a tax professional. If an inappropriate jurisdiction is initially selected for the organization of the LLC, it may not be cost-efficient to redo the LLC’s organization in another jurisdiction.

Limited Liability Companies are Legal Entities

Limited Liability Companies are legal entities of the state (or District of Columbia) in which the LLC is organized.

For a Limited Liability Company with all members domiciled in the same jurisdiction, some states offer more owner friendly in-state taxation and fees to the citizen-members than other states.

You should review a state’s securities laws (and jurisdictional fees associated with the capitalization of the LLC) to determine if a state other than your home state may be better for the organization of the LLC.

As a general rule, a Limited Liability Company is treated as a pass through entity for federal income taxation purposes.

Where Should I Organize my LLC?

Where Should the Organizers Organize a Limited Liability Company? It depends

  • The nature of the LLC’s business can affect which jurisdiction is more favorable, e.g., some jurisdictions provide favorable state and local tax preferences for certain businesses
  • Some jurisdictions are more organizational, fee and tax-friendly than other jurisdictions
  • Management of an LLC can find it advantageous to organize in a first jurisdiction and locate the LLC’s principal office in a second jurisdiction
  • Some jurisdictions require out-of-state members to pay jurisdictional taxes in the jurisdiction where the LLC is organized or conducts business while other jurisdictions do not tax out-of-state members

Business Patent Law, PLLC has a history of working with tax professionals to optimize the organizational structures of LLCs. Because of our experience with different jurisdictions, Business Patent Law, PLLC (in conjunction with a trusted tax professional) can create a workable organizational structure for LLCs.

If you have questions about the organization of a Limited Liability Company or  Intellectual Property matters, 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.

Patent Maintenance Fees & Annuities

Patent Maintenance Fees and Annuities

In most jurisdictions, utility-type Patents require that periodic patent maintenance fees or annual annuities be paid to maintain the Patent. These payments are usually made to the appropriate governmental body. Most jurisdictions, other than the United States, also require the payment of annual annuities.

United States Patent Maintenance Fees

Title 15 of the United States Code requires the owner of a utility US Patent to pay maintenance fees at three and one-half, seven and one-half and eleven and one-half years subsequent to the issue date of the US Patent.

What Happens if the US Patent’s Maintenance Fee Is Not Paid?

The Patent will expire if the fee is not paid prior to the expiration of the fourth, eighth or twelfth year subsequent to the issue date of the Patent.

An Example Case: Unpaid Patent Maintenance Fees

Due to a Programmer’s Error, Company A did not Generate the Payment for the Seven and One-Half Year Maintenance Fee for Company A’s US Patent for “Gizmo.”

At this point, Company B approaches Company A regarding a license of the “Gizmo” Patent. Is it possible for Company A to enter into a Valid License Agreement with Company B?

Scenario 1

Seven years and nine months subsequent to the issue date of the Gizmo Patent, Company A discovers the maintenance fee was not paid:

  • Pursuant to 37 CFR 1.362(e), by paying the maintenance fee and the surcharge during the “grace period,” Company A and Company B can enter into a license for the Gizmo.

Scenario 2

Nine years subsequent to the issue date of the Gizmo Patent, Company A discovers the maintenance fee was not paid:

  • Pursuant to 37 CFR 1.378, by filing a petition with the Director of Patents stating that the failure to pay the maintenance fee was unintentional, paying the USPTO fee for the petition and the required maintenance fee, the Director may reinstate the expired Gizmo Patent. As a general rule, the Director usually reinstates an expired Patent as long as these above mentioned conditions are met before two years subsequent to the expiration of the Patent.  Subject to any intervening rights, Company A and Company B can enter into a license for the Gizmo.

Scenario 3

Ten and one-half years subsequent to the issue date of the Gizmo Patent, Company A discovers the maintenance fee was not paid:

  • Pursuant to 37 CFR 1.378, by filing a petition with the Director of Patents stating that the failure to pay the maintenance fee was unintentional, paying the USPTO fee for the petition and the required maintenance fee, the Director may reinstate the expired Gizmo Patent. As a general rule, after two years subsequent the expiration of a Patent, the Director exercises more discretion in reinstating any expired Patent. Subject to favorable decision by the Director to reinstate the Patent and any intervening rights, Company A and Company B can enter into a license for the Gizmo.

If you have questions about your company’s Patent maintenance fees or annuities, 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.

Multijurisdictional Patent Infringement World Patents

Multijurisdictional Patent Infringement

Patent Cooperation Treaty Patent Applications have the potential to mature into Patents in most nations, but currently, there is no enforceable World Patent. Unaddressed Patent infringement can reduce your company’s profits.

Patent Rights in Multiple Jurisdictions

Many companies own patent rights in at least some of the jurisdictions in which they conduct business.

What If We Don’t Own Patent Rights in Jurisdictions Where We Do Business?

A frequent multijurisdictional situation is:

My Company owns ten US Patents, three European Patents, five Chinese Patents and three Japanese Patents. The Patents cover the company’s fifth most profitable product.

At a tradeshow in Singapore, our regional vice president discovers that a Vietnamese company has duplicated our invention and is exporting the duplicated invention to Australia, Canada and Japan. Further, the Vietnamese company intends to export the invention to Germany and the United States.

What Can You Do About “Knock offs” of Your Product Overseas?

As a general rule, Patent rights are only enforceable in the jurisdiction that granted the Patent.

  • In Australia and Canada, your company owns no Patent Rights and cannot stop the importation and use of the knock off in those jurisdictions
  • If Germany is one of the European nations covered by the European Patents, then your company can utilize European counsel to assert its Patent rights in Germany
  • In Japan, your company can use Japanese counsel to enforce its Japanese Patent rights
  • In the United States, your company can utilize US counsel to enforce its Patent rights that can include a court order to stop the knock offs at the port of entry

In the global economy, when another determines that your Company’s product is profitable, it is almost inevitable that someone will attempt to “bend the rules” and trade on your Company’s market share and goodwill for their own financial gain. Without Patent rights, you have little to no recourse in most jurisdictions.

What Should My Company Do To Prevent Patent Problems?

It is astute to procure Patent rights in all jurisdictions where your business plan, business model, actual and projected market forces justify the procurement of intellectual property.

A small front-end investment in intellectual property can reap increased future multijurisdictional sales.

If you have questions about your company’s multijurisdictional intellectual properties, 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.

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.

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.

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.

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.