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Entrepreneurship
MGT602
VU
Lesson
18
LEGAL
ISSUES FOR THE
ENTREPRENEUR
LEARNING
OBJECTIVES
1.
To
identify and distinguish intellectual
property assets of a new venture
including software
websites.
2.
To
understand the nature of patents, the
rights they provide, and the process
for filing one.
WHAT
IS INTELLECTUAL PROPERTY?
Intellectual
property which
includes patents, trademarks, copyrights,
and trade secrets
represent
important
assets of entrepreneur and should be understood
even before engaging the services of
an
attorney.
Because entrepreneurs often
don't understand intellectual property,
they can ignore steps
that
should
be taken to protect these
assets.
NEED
FOR A LAWYER
All
business is regulated by law. The
entrepreneur needs to be aware of
regulations that affect the
new
venture.
At different stages the entrepreneur will
need legal advice. The
legal expertise required will
vary
based
on factors such as type of product
and organizational status. The
entrepreneur should carefully
evaluate
his or her needs before
hiring a lawyer.
HOW
TO SELECT A LAWYER
Why
hire a lawyer?
The
entrepreneur does not usually
have the expertise to handle
possible risks associated
with difficult laws.
An
attorney is in a better position to understand
all outcomes related to any
legal action. The lawyer
may
work
on a retainer basis (stated amount per
month,), which provides office
and consulting time. This does
not
include court time or other legal
fees. The lawyer may be
hired for a one-time fee,
i.e. filing for a
patent.
Choosing
a lawyer is like hiring an
employee-The lawyer you work
with should be someone to whom
you
can
relate personally. When resources
are limited, the entrepreneur may
offer the lawyer stock in
exchange
for
his or her services
LEGAL
ISSUES IN SETTING UP THE
ORGANIZATION
There
are many options an entrepreneur
can choose in setting up an organization.
Legal advice is also
needed
to prepare the agreements necessary to
begin a partnership, franchise, or
corporation.
PATENTS
A
patent
is a contract
between the government and an inventor.
The government grants the
inventor
exclusivity
for a specified amount of time. At the
end, the government publishes the
invention, and it
becomes
part of the public domain. The patent
gives the owners a negative
right, preventing anyone
from
making,
using, or selling the
invention.
Types
of Patents
1.
Utility Patents
A
utility patent has a term of 17 years,
beginning on the date the Patent
and Trademark
Office
(PTO) issues it. NAFTA
(North American Free Trade Agreement)
establishes a
minimum
period of 20 years from the
date of filing or 17 years
from the date of the
grant.
Patents
on any invention requiring
FDA approval are extended by the amount
of time it
takes
the FDA to review the invention. The
patent grants the owner protection
from
anyone
making, using, and/or
selling the invention.
40
Entrepreneurship
MGT602
VU
2.
Design Patents
Covering
new, original, ornamental, and
unobvious designs for
articles, a design patent
reflects
the appearance of an object. These are
for a 14-year term and
provide a negative
right,
excluding others from making an article
having the same ornamental
appearance.
Filing
fees are lower than
for utility patents.
3.
Plant patents
Plant
patents are issued for 17
years on new varieties of
plants.
Patents
are issued by the Patent and
Trademark Office (PTO.) This office
also administers
the
Disclosure Document Program, in
which the inventor files disclosure of
the invention,
giving
recognition that he or she
was the first to develop the
idea.
Another
program is the Defensive Publication Program,
which lets the inventor
protect an
idea
by preventing anyone else
from patenting this idea, but
gives the public access to
it.
4.
International Patents
With
the new GATT (General Agreement on Tariffs
and Trade) that took effect on
January
1,
1996, any application by a
foreign company will be
treated equally to an American
firm.
Previously
American firms were given priority. Now
the decision is totally based on
when
the
filing companies began work
on the idea. The GATT pact
has been signed by
124
countries.
An additional 144 are due to
be included by the end of the century. China is
excluded
because of issues related to piracy.
The pact will mandate
stronger protection
for
entrepreneurs
by requiring protection for the
following terms:
Seven
years for trademarks.
Twenty
years for patents.
Fifty
years for films, music, and
software.
There
are still some problems
with international patents,
such as the attitudes in China
and
other
Southeast Asian countries toward
"knock-offs."
The
Disclosure Document
The
entrepreneur should first file a disclosure
document to
establish a date of conception. To file,
the
entrepreneur
must prepare a clear description of the
invention along with photos and a
cover letter. Upon
receipt,
the PTO stamps and returns a
duplicate copy establishing evidence of
conception. Before actually
applying
for the patent, the entrepreneur should retain a patent attorney to
conduct a patent search.
The
Patent Application
The
patent application must contain a
complete history and description of the
invention as well as
claims
for
its usefulness. The
application is divided into
sections:
The
Introduction Section contains
the background and advantages of the
invention and the nature of
problems
it
overcomes. The description
of Invention Section, this
section contains a description of the
drawings, which
must
comply with PTO requirements. A
detailed description of the invention
follows, including
engineering
specifications, materials, and
components. In Claims
Section,
Claims are the criteria by which
any
infringements
will be determined. Essential
parts of the invention should be
described in broad terms.
The
claims
must not be so general that
they hide the invention's uniqueness.
The application should contain a
declaration
signed by the inventor. When the
application is sent, the status of the
invention becomes "patent
pending,"
providing protection until the
application is approved. A carefully written patent
should provide
protection,
but is also an invitation to
sue or be sued if there is
any infringement.
Patent
Infringement
Many
inventions are the result of improvements
in existing products. Copying and
improving a product
may
be legal. If improvement is impossible,
it may be possible to license the
product from the patent
holder.
To ascertain the existence of a patent, the
entrepreneur can now use the
Internet. If there is an
existing
patent that might involve
infringement, licensing may be
considered. If there is any
doubt on this
issue,
the entrepreneur should hire a patent
attorney.
ONLINE
PATENT ISSUES
The
question of whether patents are
applicable to e-commerce has
been raised lately by stamp.com
and
Pitney
Bowes. Large corporations, like Pitney
Bowes, are suing start-up
companies to get compensation
for
their
intellectual property such as research
and development and
patents.
41
Entrepreneurship
MGT602
VU
KEY
TERMS
Intellectual
property
Any
patents, trademarks, copyright, or
trade secrets held by the
entrepreneur
Patent
Grants
holder protection from
others making, using, or
selling similar idea
Disclosure
document
Statement
to U.S. Patent and Trademark
Office by inventor disclosing
intent to patent idea
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