The Patent Exhaustion Doctrine - Monsanto Case on GMO Soybeans

The Patent Exhaustion Doctrine

When does the Patent Exhaustion Doctrine Apply?

In the US Supreme Court case of Bowman v. Monsanto Co., 569 U.S. 278 (2013), the Court set forth some thresholds for the application of the Patent Exhaustion Doctrine.

The Monsanto Facts

Monsanto invented a genetic modification that enables soybean plants to survive exposure to glyphosate, the active ingredient in many herbicides (including Monsanto’s own Roundup). Monsanto markets soybean seed containing this altered genetic material as Roundup Ready seed. Farmers planting that seed can use a glyphosate-based herbicide to kill weeds without damaging their crops. Two patents issued to Monsanto cover various aspects of its Roundup Ready technology, including a seed incorporating the genetic alteration.

Monsanto sells, and allows other companies to sell, Roundup Ready soybean seeds to growers who assent to a special licensing agreement. That agreement permits a grower to plant the purchased seeds in one (and only one) season. He can then consume the resulting crop or sell it as a commodity, usually to a grain elevator or agricultural processor. Under the agreement, the farmer may not save any of the harvested soybeans for replanting, nor may he supply them to anyone else for that purpose.

The Bowman Facts

Bowman, an Indiana farmer, devised an approach for his second crop of each season. Because he thought such late-season planting “risky,” he did not want to pay the premium price that Monsanto charges for Roundup Ready seed. He therefore went to a grain elevator; purchased “commodity soybeans” intended for human or animal consumption; and planted them in his fields. Those soybeans came from prior harvests of other local farmers. And because most of those farmers also used Roundup Ready seed, Bowman could anticipate that many of the purchased soybeans would contain Monsanto’s patented technology.

When he applied a glyphosate-based herbicide to his fields, he confirmed that this was so; a significant proportion of the new plants survived the treatment, and produced in their turn a new crop of soybeans with the Roundup Ready trait. Bowman saved seed from that crop to use in his late-season planting the next year—and then the next, and the next, until he had harvested eight crops in that way. Each year, that is, he planted saved seed from the year before (sometimes adding more soybeans bought from the grain elevator), sprayed his fields with glyphosate to kill weeds (and any non-resistant plants), and produced a new crop of glyphosate-resistant—i.e., Roundup Ready—soybeans.

In his defense, Bowman argued the Patent Exhaustion Doctrine.

The Bowman Court’s Holding on the Patent Exhaustion Doctrine

On Page 289 of Bowman, Justice Kegan wrote, “Our holding today is limited—addressing the situation before us, rather than every one involving a self-replicating product. We recognize that such inventions are becoming ever more prevalent, complex, and diverse. In another case, the article’s self-replication might occur outside the purchaser’s control. Or it might be a necessary but incidental step in using the item for another purpose…We need not address here whether or how the doctrine of patent exhaustion would apply in such circumstances. In the case at hand, Bowman planted Monsanto’s patented soybeans solely to make and market replicas of them, thus depriving the company of the reward patent law provides for the sale of each article. Patent exhaustion provides no haven for that conduct. We accordingly affirm the judgment of the Court of Appeals for the Federal Circuit.”

If your company needs assistance with its Patent Applications, please contact Business Patent Law, PLLC.

Ask Us Anything…about Intellectual Property!

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

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Beneficial Ownership Information Reporting

What is the Beneficial Ownership Information Report?

Beneficial Ownership Information Report

The Beneficial Ownership Information Report, which went into effect on January 1, 2024, is authorized by the 2021 National Defense Authorization (Pub.L. No. 116-283, 134 Stat. 338). It contains anti-money laundering provisions and also includes the Corporate Transparency Act.

It is the United States Department of the Treasury that enforces the Corporate Transparency Act (CTA).

Unless a company has an exemption from the CTA, the company must file a Beneficial Ownership Information Report (BOIR) with the Department of the Treasury.

What Entities Must File The Beneficial Ownership Information Report

As a general rule, reporting companies are corporations, limited liability companies or professional limited liability companies that have filed one or more documents with a State’s Secretary of State or a similar office of an Indian Tribe.

A reporting company can be a domestic or a foreign jurisdiction company and must file a BOIR.

What Entities Are Exempt From Filing The BOIR

There are some business entities who are exempt from filing the Beneficial Ownership Information Report. They include:

1 Securities reporting issuer

2 Governmental authority

3 Bank

4 Credit union

5 Depository institution holding company

6 Money services business

7 Broker or dealer in securities

8 Securities exchange or clearing agency

9 Other Exchange Act registered entity

10 Investment company or investment adviser

11 Venture capital fund adviser

12 Insurance company

13 State-licensed insurance producer

14 Commodity Exchange Act registered entity

15 Accounting firm

16 Public utility

17 Financial market utility

18 Pooled investment vehicle

19 Tax-exempt entity

20 Entity assisting a tax-exempt entity

21 Large operating company

22 Subsidiary of certain exempt entities

23 Inactive entity

When Must File The BOIR Be Filed

For a company created before January 1, 2024, the BOIR must be filed by December 31, 2024. For a company created after January 1, 2024, the BOIR must be filed with 90 days of the company’s creation.

If your company needs assistance with its BOIR, please contact Business Patent Law.

Ask Us Anything… about Intellectual Property!

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

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

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Trademark Examiner's Amendment

Should You Accept a Trademark Examiner’s Amendment?

Trademark Examiner’s Amendment of Application

A Trademark Examiner’s amendment is sometimes suggested and/or required during examination a US Trademark Application*.

Some Examiner’s amendments will alter the scope of rights associated with a future Trademark Registration. Other Trademark Examiner’s amendments will not modify the scope of rights associated with a future Trademark Registration.

Whether or not to accept the Trademark Examiner’s amendment is a business decision.

Potential Consequences of an Amendment

Applicant’s acceptance of the Trademark Examiner’s amendment generally results in Trademark Registration for the Applicant.

Failure to agree to the Examiner’s amendment can result in:

  • Legal arguments that the Examiner’s suggested amendment is inappropriate
  • A refusal to register the Trademark and the loss of long-term federal rights associated with a US Registration
  • An appeal to the Trademark Trial and Appeal Board where the Applicant can lose the appeal
  • Filing a new Application to register the Trademark, where the new Application is modified from the previously filed Trademark Application

About Section 707 – TMEP – Examiner’s Amendment*

Examples of Section 707 relevant procedures for Trademark Examiners include:

  • An Examiner’s amendment should be used whenever appropriate to expedite prosecution of an Application
  • An Examiner’s amendment is a communication to the Applicant in which the examining attorney states that the Application has been amended in a specified way
  • Except in the situations listed in TMEP §707.02, the amendment must be specifically authorized by the individual Applicant, someone with legal authority to bind a juristic Applicant 700-20 October 2010 (e.g., an officer of a corporation or general partner of a partnership), or the applicant’s qualified practitioner
  • Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the Applicant, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the individual Applicant, someone with legal authority to bind a juristic Applicant, or the Applicant’s qualified practitioner by telephone, e-mail, or in person during an interview. Cf. 37 C.F.R. §§2.62(b) and 2.74(b)
  • If the Applicant has a qualified practitioner, the examining attorney must speak directly with the practitioner
  • If the Applicant is pro se, the examining attorney must speak directly with the individual Applicant or with someone with legal authority to bind a juristic Applicant (e.g., a corporate officer or general partner of a partnership)
  • For joint Applicants who are not represented by a qualified practitioner, each joint Applicant must authorize the examiner’s amendment

*Along with Trademarks, the USPTO Trademark Manual of Examining Procedure (TME) also applies to Service Mark Applications.

If your company needs assistance with its Trademarks/Service Marks, please contact Business Patent Law.

Ask Us Anything… about Intellectual Property!

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

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

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Post Trademark Registration Junk Mail

Post Trademark Registration: Beware Fraud, Scam & Junk Mail

What is a Post-Trademark Registration Junk Mail Barrage?

In part, the post-Trademark Registration junk mail barrage is a type of direct mail marketing. (In the US, the estimated response rate for direct mail campaigns is 3.5% to 4.24%. Thus, direct mail can be an inexpensive way to obtain a customer and/or make a sale.) Direct mail campaigns continue to creep into postal boxes, some of which are honest and aboveboard and others that are not.

Following your Trademark Registration, your company may receive legitimate-looking “bills” or “invoices” by mail that appear to be related to your trademark registration. Those may be a scam. Here’s what you need to know:

A Trademark Registration Scenario 

Trademark Registrations are part of the Public Record.

Our marketing department initially filed three US Trademark Applications. About a year after filing the US Trademark Applications for the “Yes,” “No,” and “Maybe” Marks, our Louisville Company received three Trademark Registrations from the United States Trademark Office. Marketing and sales quickly added the ® to our labels and continued marketing and selling our products.

Our company’s protocol has been that the mailroom sorts the incoming mail and sends anything appearing to be an invoice to accounting for payment. Accounting was trained to look for suspicious invoices.

Within weeks of receiving our US Trademark Applications, unbeknownst to management, accounting paid several invoices that appeared to be related to United States Trademark Office business.

Those invoices appeared to be associated the US Trademark Office, but were not.

Types of Post Trademark Registration Solicitations

As a general rule, the US Trademark Office will not utilize the postal service to solicit payments from the Trademark Owner.

Under Title 15 of the United States Code, USPTO post Registration fees become due at five years, nine years, nineteen years, twenty nine years, etc. Any USPTO fee requested by a third party not associated with these dates is suspicious.

Solicitations attempting to induce the Trademark owner to pay fees may come in many ways. (Some third parties solicit the transfer of funds outside the United States, others solicit funds to roaming US postal box locations and some have apparent legitimate street addresses.)

  • Some solicitations are for actual services, albeit not those likely needed by the Trademark owner. (These are like the old yellow page ads for a regional rather than a local telephone book.)
  • Other direct mail campaigns induce the Trademark owner to actually pay for something in a country outside the United States while making the payment appear to be for something in the United States.
  • Still others encourage payment for some service in the United States, where the service is not actually needed to maintain the Trademark Registration in full force and effect.

If you have a question about the post-Trademark Registration barrage of mailed materials and junk mail, please contact Business Patent Law, PLLC., for guidance.

If you have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

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.

 

Legal licenses and licensing agreements

Licenses: What You Need to Know

Licenses Defined

We can define licenses as, “an owner giving permission to a legal entity or a real person to make, produce, or use an owner’s tangible and/or intangible property.” Almost anything can be the subject of a License. It is best to have a written document for any License agreement.

Types of Licenses

There are exclusive and nonexclusive Licenses.

When the owner grants an exclusive License, it means that the owner will not grant another License to a third party.

Whether an exclusive or a nonexclusive License is granted can impact the bargaining power of the Licensor or the bargaining power of the Licensee. For example, a multinational franchisor may not grant exclusive Licenses while a start-up may be happy to grant an exclusive License.

What to Include in a License Agreement

  • As long as it is legal, a License may contain any type of clause or section related to the owner’s tangible and/or intangible property as well as the duties of each party
  • Definitions regarding the meanings of specific words used in the License
  • Grant of permission to make, produce, or use an owner’s tangible and/or intangible property
  • Specific description(s) of the licensed tangible and/or intangible property
  • Description of each geographic territory covered by the License and the term of the License
  • Obligations to commercialize the licensed tangible and/or intangible property and milestones payments
  • License fees and running royalties
  • Licensee’s progress reports, records and audits
  • Banks and currency used for payments and timing of payments
  • Ownership of jointly created tangible and/or intangible property related to the licensed tangible and/or intangible property
  • Confidentiality and trade secrets
  • Licensee’s guarantees to comply with governmental regulations in all jurisdictions where Licensee is using or selling the licensed tangible and/or intangible property
  • Dispute resolution
  • Termination and wrap-ups
  • Continuing obligations after termination

The above are just some sections and clauses that can be included in Licenses.

License Agreements can be complicated contracts. If your company needs assistance to prepare its Licenses or your company needs help to determine if it is advantageous to execute a License, please contact Business Patent Law, PLLC.

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.

Patent Law

Notice of Allowance – Patents

The Question

Our Company received a Notice of Allowance on our Nonprovisional Patent Application. What are our next steps?

Consider: If the invention claimed by the Nonprovisional Patent Application is a “core” technology or a money maker for your company, it is wise to keep an Application pending.

More information you need: 35 United States Code 151 gives the Applicant a maximum of three months from the date of mailing of the Notice of Allowance for the Applicant to pay the Issue Fee. (Note: If the Issue Fee is not paid, the Patent Application will be abandoned.)

Tech Sufficiently Different

If the newer technology is sufficiently different from the structures of the pending Nonprovisional Patent Application, a Provisional Patent Application can be filed. (Inventions can consist of biological, chemical, electrical or mechanical structures or combinations thereof.)

Tech Sufficiently Similar

If your newer technology is sufficiently similar (or incorporates many of the structures of the pending Nonprovisional Patent Application) and certain conditions are met, a Continuation-Type Application (claiming priority to your pending Nonprovisional Patent Application) can be filed with the United States Patent and Trademark Office.

The Law

35 U.S.C. 151, in part, reads:

(a)     In General.—

If it appears that an applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant. The notice shall specify a sum, constituting the issue fee and any required publication fee, which shall be paid within 3 months thereafter.

There are Two Continuation-Type Applications (in USA)

  • A Continuation Application – this claims priority to the pending Nonprovisional Application, utilizes the Specification of the Nonprovisional Patent Application, and includes new claims.
  • A Continuation-in-Part Application – claims priority to the pending Nonprovisional Application, adds “new matter” (structures) to the Specification of the Nonprovisional Patent Application, and includes new claims.

Child Patents Used to Broaden a Parent Patent

Seasoned Applicants frequently file a Child Patent Application claiming priority to the Parent Application. If you opt to use this procedure, make sure you file the Child Patent Application before the Patent flowing from the Parent Application is granted. If the Patent is granted before the Child Patent Application is filed, Patent Examiners may be able to use the Parent Patent to prevent the Child Patent Application from succeeding.

The Law

35 U.S.C. 102, in part, reads:

“(a)Novelty; Prior Art.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…”

Terminal Disclaimers and Your Patent Application

Use of Continuation-Type Patent Applications may require that any future Patent granted be limited by a Terminal Disclaimer. As a general rule, a Terminal Disclaimer causes the term of the Children Patents to expire on the same day as the Parent Patent.

The Law

35 U.S.C. 120 reads:

“An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385, which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this section.”

Don’t Delay Your Response to a Notice of Allowance!

You should not delay initiating your company’s strategy, since a Notice of Allowance requires your action, as an applicant.

  • Issue Fee must be paid within three month of the Notice of Allowance – There are no time extensions
  • Grant of Patent can be delayed as much as 4 months from date of Notice of Allowance
  • It can be quite time-consuming for your Attorney to prepare the Continuation-Type Application or the Provisional Patent Application, so don’t delay
  • Assembling the required inventor’s declarations and assignments can also be time-consuming (even more so when when inventors in different time zones and multiple jurisdictions are involved
  • Preparing the required USPTO documents that accompany the Continuation-Type Application can be tedious
  • A Continuation-Type strategy can often be used for several years before it is no longer cost-effective for the Company

Questions? We Can Help!

If your company is developing a post Notice of Allowance strategy, we can help. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact us.

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.

Likelihood of Confusion trademarks service marks

Likelihood of Confusion – Trademarks

“Likelihood of confusion” is a legal test. It is applied by the courts and administrative agencies to contested Trademark/Service Mark proceedings and by United States Patent and Trademark Office (USPTO) Examiners during the registration process for Trademark/Service Mark Applications.

Likelihood of Confusion – What Law Applies?

Before a federal Trademark is granted, an Applicant must prove to the USPTO that the Trademark was used on goods and/or services in commerce that the U.S. Congress may lawfully regulate. The geographical limit for a federal Trademark registration is the geographical boundary of the United States and its territories.

Federal Jurisdiction

Federal jurisdiction of Trademarks/Service Marks (hereinafter Trademarks) can be controlled by the precedent of the US Supreme Court or one of the thirteen federal circuit courts sitting beneath the US Supreme Court.

Each of the thirteen federal circuits has its own case law precedent for adjudicating “likelihood of confusion” for contested Trademarks.  Although the case law precedent of the federal circuits is similar, it is not identical.

State Jurisdiction

When a Trademark is granted at the State level, the law of that State controls court and agency proceedings. The laws of the several States are variable on the standards for “likelihood of confusion.” The geographical limit for a State Trademark is the border of the State.

Likelihood of Confusion – USPTO Trademark Applications

For the USPTO, the “likelihood of confusion” precedent for Trademark Examiners is set forth in the case of In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). Today, the Court of Appeals for the Federal Circuit has jurisdiction over appeals from USPTO agencies and adopted the du Pont case as precedent.

On page 567 of the du Pont case, the court stated:

“In testing for the likelihood of confusion under 15 U.S.C. § 1052 Sec. 2 (d), the following, when of record, must be considered:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  2. The similarity of dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  3. The similarity or dissimilarity of established, likely-to-continue trade channels.
  4. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. care, sophisticated purchasing.
  5. The fame of the prior mark (sales, advertising, length of use.)
  6. The number and nature of similar marks in use on similar goods.
  7. The nature and extent of any actual confusion. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
  8. The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
  9. The market interface between applicant and the owner of a prior mark… (e.g., have the interested parties executed a contract to proclaim there is no confusion?).
  10. The extent to which the applicant has a right to exclude others from use of its mark on its goods.
  11. The extent of potential confusion, i.e., whether de minimis or substantial.
  12. Any other established fact probative of the effect of use.”

If the Examiner or the USPTO determines there is a “likelihood of confusion” between Applicant’s Trademark and a prior Registration or pending Application, the USPTO will refuse to register the junior Applicant’s Trademark.

Observations

With regard to the “likelihood of confusion” test, each of the federal circuit courts have adopted precedent similar to the test set forth in the case of In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). When possible, parties to an infringement will attempt to try the case in a venue most favorable a party’s evidence and arguments.

Have Questions on Your Trademark?

Business Patent Law, PLLC assists companies and individuals with the procurement and management of their Intellectual Property portfolios.

If your enterprise needs legal assistance procuring/managing/enforcing your Patent Applications, Patents, Copyrights or Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses of all sizes.

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Patent Infringement Cease and Desist Letter

Patent Infringement: The Cease and Desist Letter

What is Patent Infringement?

Patent infringement is similar to trespassing on private real estate. A deed for real property determines the real property’s boundary and what constitutes a trespass. In a similar vein, Patent claims define the intellectual property boundary of the Patent and what establishes an infringement.

Patent infringement is defined in United States Code Section (U.S.C.) 271. In part, Section 271 reads:

“Infringement of Patent (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”

Patent Infringement Damages

Patent infringement damages are defined in U.S.C. 284 which, in part, reads:

“Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d).”

What Happened to Our Business was Surprising

We received a letter from the legal department of Company ABC demanding payment of damages for our alleged sales of Company ABC’s patented gadget. Prior to receiving the letter, our business was not aware that Company ABC’s gadget was patented. What can we do?

How To Defend Against Allegations of Patent Infringement

  • Contact an experienced patent attorney.
  • Determine if the patent is in full force and effect and is owned either directly or indirectly by Company ABC. The USPTO Assignment Database gives notice to the world of ownership rights in assigned Patents.
  • Determine if the gadget was identified by the patent number as set forth in 35 U.S.C. 287(a). In part, 35 U.S.C. 287(a) reads, “In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”
  • Calculate the expiration date of the Patent. The USPTO website includes a Patent Term Calculator to assist in determining if a Patent remains in full force and effect. Practicing the claimed subject matter of an expired Patent is not an infringement.
  • If there is no settlement agreement with company ABC, make no payments to Company ABC.
  • In this scenario, receiving a letter from the legal department of Company ABC instead of a law firm is unusual.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need legal assistance procuring and managing your intellectual property assets, please contact us.

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.

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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.

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