Location: King Plow Arts Center, 887 West Marietta St NW, Atlanta, GA 30318
Join us for an in-depth look at the U.S. patent system. A patent is a right granted by the U.S. government to the owner of an invention that is useful, novel, and non-obvious over the prior art. The owner of a U.S. patent may exclude others from practicing the invention for about 20 years after the filing date of the application which gave rise to the patent. We will discuss what makes an invention “patentable”, as well as provide an overview of the patent application process. Come with questions!
Presentation by patent attorney, Katherine Eppley.
What is it that makes a great logo so great? It’s amazing to think of some of the most iconic logos being relatively meaningless when they were created. Take the Nike swoosh for example: the creator was paid $35 for creating the logo in 1970. Over time the company and its followers created a powerful symbol. Talk about about logos as being “empty vessels” that we are pouring meaning into!
What is a U.S. patent? A patent is a right granted by the U.S. government to the owner of an invention that is useful, novel, non-obvious over the prior art, and otherwise eligible for patent protection. The owner of a U.S. patent may exclude others from practicing the invention for about 20 years after the filing date of the application which gave rise to the patent. A patent is a common form of “intellectual property”.
What does an inventor do when he/she has an invention? One of the first steps an inventor can take to protect his or her invention is to consult with a patent attorney regarding the patentability of the invention and the subsequent steps needed to obtain U.S. patent protection by way of a U.S. patent application. Often, inventors will first file what’s called a “provisional” patent application, followed by a “non-provisional” patent application within one year of filing the provisional.
What is the difference between a provisional patent application and a non-provisional patent application? A provisional patent application is basically an optional year long place-holder until you are ready to file your non-provisional application. The provisional application is never published and it is never examined by a Patent Examiner. It simply establishes a priority date which is used during prosecution of the following non-provisional patent application to determine whether the alleged invention is patentable over the “prior art”. Prior art is basically any information publicly available before the priority date of a patent application such as scientific articles, other patent applications & patents, and publicly made presentations. In order to obtain patent protection, you must file a non-provisional patent application. Unlike the provisional application, a non-provisional patent application is published and examined by a Patent Examiner, and may ultimately lead to the issuance of a U.S. Patent.
What happens once my provisional patent application expires? When a provisional patent application expires before filing a non-provisional, the inventor simply lose the benefit of the provisional’s priority date if the inventor wishes to continue pursuing patent protection. This means that you may file another patent application, however you are unable to claim that original date. When the Examiner reviews your new application, he/she may use any prior art that is dated before your new filing date to determine patentability. There is no option to “back-date” to your provisional filing date if the provisional has expired before filing a non-provisional.
If a provisional application is completely optional, what is the benefit of filing one before you file a non-provisional? As mentioned above, the provisional patent application never ripens into a patent, however may inventors use the year-long provisional window to continue performing market research. The extra window of time can be used to make strategic business decisions as to whether to pursue the patent at all, given the fact that filing and prosecuting a non-provisional patent application is a sizable financial investment. The filing fee for a provisional patent application is comparatively very low. Using the provisional option, the inventor can secure the earliest priority date as possible, while still taking some time to decide how to proceed with their invention. The inventor cannot continue developing the invention itself and later add new inventive features into the same application or subsequently filed non-provisional application. See more on this below.
Can an inventor use the 1 year provisional time period to add new inventive features to the invention? Although the inventor can certainly continue inventing, he/she can never add what’s called “new matter” to any patent application that has already been filed and still use the earlier priority date to protect that new matter. If the inventor has developed additional inventive features for the same invention, he/she will have to file a new application which will have a new priority date.
About the Author: Katherine A. Eppley is an Ohio-licensed patent attorney and legal fellow at Georgia Lawyers for the Arts in Atlanta, Georgia.
If your business offers services, you should put together a service contract clearly setting forth what you are offering and what the client is receiving. This includes a clear explanation of whether any intellectual property rights are to be transferred by way of the service contract.
For example, a graphic artist may create copyrightable logos for its clients, however, the copyright ownership automatically belongs to the graphic artist unless otherwise agreed to by contract. Thus, unless the services agreement requires that the copyright in those logos are to be assigned to the client, or the contract otherwise gives specific permissions of use, the client will not legally have the right to unrestricted use of the logo, such as to reproduce or alter the logo.
Another type of business contract is the partnership agreement that defines your business itself and the relationship between business partners. If there are multiple owners of the business, it is important to identify every person’s roles and responsibilities and articulate these provisions clearly in a contract. If, or when, the business ultimately dissolves, having such a contract will prevent forcing the business partners to defer to the default requirements of federal dissolution law. On the contrary, the business partners would be bound to dissolve the business according to their own agreed-upon terms.
This may come up if, for example, Owner A finances the entire business, while Owner B and Owner C both are equity partners. In this case, perhaps the contract would set out guidelines for payouts according to this structure so that Owner A is repayed first.
“Intellectual property” describes the intangible assets derived from creative and innovative ideas. There are four basic forms of intellectual property protection that you may encounter as a small business owner: trademark, copyright, patent, and trade secret. A trademark is generally a word, symbol, or phrase that is used in association with the sale of goods or services. E.g., “Nike” & the Nike swoosh. A copyright protects original creative works such as music, art, photography, and literature. A patent is a government grant giving the owner the exclusive right to use, make, or sell an invention, typically a state-of-the-art technology or an inventive consumer product. Lastly, trade secrets are confidential proprietary information that are never publicly disclosed, such as the secret recipe for Coca-Cola.
Many entrepreneurs own intellectual property relating to their business. There are benefits to assigning your intellectual property to the business entity, rather than holding on to them individually. For example, the copyright in a song written by the owner of a record company is owned by that person individually, not owned by the company controlled by that person. One advantage to assigning all IP interests to the company is that if the company owner(s) want to sell the company in part or in whole, commercialize the company’s assets, enter into mergers, or borrow against the company, there is no doubt whether the intellectual property rights are transferred as well.
In addition, if you are in the business of creating original content that may be copyrightable, make sure you understand what a “Work For Hire” is and how that may arise for your company. Typically, the ownership of a copyright arises for the creator of that work. For example, if you are a software writer and you write an original program, you own the copyright in that work. However, if you are a formal employee of a company, and creating that software program is within the scope of your employment, the copyright ownership arises in the company and not in the creator of the work. A work created by a non-employee (independent contractor) may also constitute a Work for Hire when there is a written agreement in place stating that the work will be a Work for Hire AND that work falls within the works listed in the Copyright Act.
Do you have an invention you are interested in patenting? The first step is to conduct a patent search to determine whether your invention may be patentable and whether your invention may infringe on another patent. This FREE class is designed to help inventors navigate through several free online patent databases.
Summer Patent Search Classes @ Georgia Tech:
Tue. June 14, 1-3 p.m.
Tue. July 12, 1-3 p.m.
Tue. Aug. 9, 1-3 p.m.
Georgia Tech Library, Homer Rice Center, West Building Ground Floor
Last week I attended a seminar on Intellectual Property Rights for Artists at Georgia Lawyers for the Arts. The presentation was provided by Atlanta Attorneys Pearson Beardsley, Katie Boone, and Mark Seigel. This post is inspired by their discussion.
Why Incorporate Your Business?
When you form a corporation or an LLC for your business, you are generally removing yourself from personal liability. For example, if you own a taxi business and one of your employees gets into a car accident while on the job, the plaintiffs in that case won’t be able to go after your personal house or car to pay for their expenses.
Another critical line of defense in protecting your personal assets is to obtain business insurance. In the above-stated example, your insurance company would likely be obligated to hire defense attorneys on behalf of your company.
There are also possible tax and other savings that come along with incorporation. For example, corporations often gain tax advantages, such as savings on self-employment taxes, and deductions for health insurance premiums and life insurance. One way to ensure these savings is to have the business operate independently from its owners, with the use of its own bank accounts and credit cards.
Lastly, incorporating your business is often required by outside investors. In addition, an incorporated business also provides more security for purchasers and therefore can also be easier to sell than an unincorporated business.
LLC v. Corporation
In general, an LLC is the most user-friendly option for new business owners. Unlike corporations, your LLC will not be required to submit annual reports, have Officers and a board of directors, or shareholders. That being said, you should consult a business attorney and/or tax professional before making the decision between creating an LLC versus a corporation. Check out more on the differences here.
Wednesday @ 1 – 5 pm: Free Legal Clinic at Georgia Lawyers for the Arts. Local attorneys are generously donating their time to speak for 30 minutes with local artists & small business owners about their legal issues. Register for a space by calling (404) 873-3911.
Monday @ 6:30 pm: Cornerstones: Atlanta’s Fortune 500. Join General Assembly at Ponce City Market for a discussion on how Atlanta’s biggest companies have contributed to the growth of the city’s booming economy. Register here.
Wednesday @ 7 pm: Atlanta Millennial Mixer. Connect with other young professionals who live and/or work in Atlant & find out ways to get more connected in the community. RSVP here.
Friday @ 8:30 am: Women in Tech Breakfast. Panel discussion followed by small group discussion of the issues women face in the tech industry. Register here.
Tuesday @ 12 pm: Seminar on 501(c)(3) Formation. Georgia Lawyers for the Arts hosts a monthly seminar lead by John Eaton of The Institute for Nonprofit Management. The primary purpose of the session is to place participants in a knowledgeable posture on the legal, filing, and reporting requirements for nonprofit organizations as well as establishing best nonprofit organizational practices from inception. Click here for prices & registration.
Friday @ 12 pm: Intellectual Property Lunch Break. Join us for lunch to discuss intellectual property and the business of protecting your ideas. RSVP here.
Saturday @ 10 am: Free Presentation on Public Speaking. How to use public speaking to change your life, presented by Ariel Ghinga. Register here.