Wyoming Entrepreneur Blog

The American Invent Act, First to File, and Provisional Applications

This blog continues the discussion from last week about patents.

The America Invents Act, First to File, and Provisional Applications

Karen Kitchens, Intellectual Property/Documents Librarian, Wyoming State Library, [email protected]

President George Washington signed the first U. S. patent statute in 1790.  Since that time, United States patent law has uthorized the granting of rights to the first to invent a patentable
invention, contingent upon meeting rigorous terms and conditions.  This means that the date the inventor envisioned the invention is the “date of invention” – thus the date of ownership.  Generally, this date preceded the date of filing with the United States Patent and Trademark Office (USPTO).  Soon, this will no longer be the case.

As of March 16, 2013, one of the most debated provisions of the America Invents Act (AIA) will take
effect.  As of this date, the “first-to-invent” system will change to the “first-inventor-to-file” system.  This provision changes the legal ownership of a patent onto the entity that is the first to file with the USPTO, thus bringing the U.S. system closer in line with most of the rest of the world.  The new version of § 102 (35 U.S.C. § 102) declares that a person is entitled to a patent unless the claimed invention was publicly disclosed prior to the effective filing date of the patent application. The exception to this being, (1) the disclosure was made less than one year before the filing of the patent
application (by the inventor themselves) and (2) the disclosure was made by the inventor or someone who derived the inventive subject matter from the inventor. 

Once this provision takes effect, filing patent applications as quickly as possible may
be in the best interest of the inventor.  In order to stay competitive, inventors of all sizes (including small business owners) will need to file patent applications quickly in order to stay ahead of competitors.  Filing a provisional patent application may be one way to quickly get a patent
application on file at the USPTO.  A provisional application allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a later filed non-provisional patent application.  A provisional application also allows the term “Patent Pending” to be applied in connection with the description of the invention.  Provisional applications have a pendency lasting 12 months from the date the provisional application is filed.  The 12 month pendency period cannot be extended.  This means, once a provisional is filed, you will have 12 months to file a non-provisional.  A provisional patent application may or may not be the path for you.  Provisional patent applications do not mature into a granted patent without further submission.  All provisional applications automatically become abandoned when the pendency period expires by operation of law.  Thus, all potential patent applicants are encouraged to gather as much information as possible on this option.  The USPTO website is the foremost information source on provisional patent applications. 

For further updates on AIA, check out the USPTO AIA Blog. 

A Blog version of this article and an opportunity to post comments is available at http://www.wyomingentrepreneur.typepad.com/blog/.

 For more information about the services of Wyoming SBDC, MRC or PTAC, or to ask a question, please call 1-800-348-5194, e-mail [email protected] or write 1000 East University Avenue, Department 3922, Laramie, WY 82071-3922. Additional help is available on our website www.wyomingentrepreneur.biz.

 

The Wyoming SBDC, MRC and PTAC partnership
program is funded in part through a cooperative agreement with the U.S. Small
Business Administration. Additional support is provided by the Wyoming Business Council and the University of Wyoming.

America Invents Act and Fast Track Patent Examination

WYOMING BUSINESS TIPS

A weekly look at business questions from the Wyoming Small Business Development Center (SBDC), Wyoming Market Research Center (MRC) and the Wyoming Procurement Technical Assistance Center
(PTAC), a partnership of business assistance programs at the University of Wyoming.

Can you tell me more about the changes happening with patent applications?  Anne, Cheyenne.

I checked with Karen Kitchens, an intellectual property librarian to give us an update.  This week and next she is providing us some input into changes in the patent process.

Anya Petersen-Frey, MBA

Regional Director SE Wyoming

 The America Invents Act and Fast Track Patent Examination

Karen Kitchens, Intellectual Property/Documents Librarian, Wyoming State Library, [email protected]

 Fast tracking your U.S. patent application may be the right move for your small business.  Using traditional filing avenues, you can anticipate an average wait time of nearly three years until your patent’s final determination.  Such a long wait period may negatively affect the valuation of your business, as you do not have any incontrovertible rights while a patent application is pending.   Remember, the rights granted to patent holders include the rights to exclude others from making, using and selling your invention. These rights do not take effect until after the United States Patent and Trademark Office (USPTO) completes its examination of the patent application.

As of September 26, 2011, the USPTO began offering a Track I Prioritized Examination Program, as part of the America Invents Act (AIA).  This program gives inventors an opportunity to have their patent application reviewed within a reduced timeframe, for a fee.  To participate in the Track I
program, the applicant must pay an additional fee to the USPTO on the same day the patent application is electronically filed.  For patent applications that have already been filed, the Track I fee must be paid upon or after the filing of a request for continued examination, but before the USPTO issues a first office action. For companies with less than 500 employees (considered a small entity), the Track I fee is $2,400.  This is a 50 percent discount on the $4800 fee for the fast track option. 

The AIA also created a new applicant status called micro-entity.  To qualify as a micro entity, an applicant must:

• 
  Qualifyas a small entity;
• 
  Have not been named as an inventor on more than 4 previously filed patent applications;
• 
  Did not, in the calendar year preceding the calendar year in which the applicable
  fee is paid, have a gross income exceeding 3 times the median household income;
  and
• 
  Have not assigned, granted, or conveyed (and is not under obligation to do so) a
  license or other ownership interest in the application concerned to an entity
  that, in the calendar year preceding the calendar year in which the applicable
  fee is paid, had a gross income exceeding 3 times the median household income.

A micro-entity is entitled to receive a 75% discount on fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.  The micro entity 75% discount will apply to fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.  Micro entity fees were included in the FY2013 fee schedule proposed in May 2012, the first fee setting by the USPTO under the authority granted by the AIA.  However, these fees might not actually be implemented until as late as March 2013.   A 17-month implementation timeline is located on the USPTO website here. 

Patent ownership is a critical factor that some venture capital companies consider when investing in entrepreneurs and small businesses who hope to grow their businesses. Therefore, prioritized patent examination may be a good investment for your small business.  

A Blog version of this article and an opportunity to post comments is available at http://www.wyomingentrepreneur.typepad.com/blog/.

 For more information about the services of Wyoming SBDC, MRC or PTAC, or to ask a question, please call 1-800-348-5194, e-mail [email protected] or write 1000 East University Avenue,
Department 3922, Laramie, WY 82071-3922. Additional help is available on our
website www.wyomingentrepreneur.biz.

 The Wyoming SBDC, MRC and PTAC partnership program is funded in part through a cooperative agreement with the U.S. Small Business Administration. Additional support is provided by the Wyoming Business Council and the University of Wyoming.

The Economic Census – Vital Data for Business

During November and December over 4 million US business and around 11 thousand Wyoming businesses will receive 2012 Economic Census forms from the U.S. Census Bureau.    This means that while many businesses will take part in the Census, not all will be asked to participate.

If your business receives a form, you will be asked for basic operating data for your business, data that is tailored to your specific industry and company size.  Information includes number of employees, payroll and value of goods or services produced in 2012.  You will be able to respond either in paper or online.  Responses are due no later than February 12, 2013.  It is important to note that all information is confidential and your compliance is required by law.

The Census is the basis for the economic indicators that are used every day in the US, like the Gross Domestic Product, monthly retail sales and producer price index.  The statistics from the Economic Census are used by businesses, local governments and investors to make smart decisions. 

Without the Economic Census and the data it provides about our US economy, businesses and governments of all sizes would be working in the dark in trying to solve the numerous challenges that our country and economy faces in the years to come.  Filling out the Economic Census form is not only a legal requirement, it’s a smart investment in growing our local, state and national economy.

If you’d like to see the type of information that the Census provides, you can go online to www.census.gov/econ/census/.  This site gives more in-depth information about what the Census is and why it is so important for all Americans.  It also gives you a look at the type of economic statistics that come out of the Census, with ideas on how you can use them in your business or community.

The Economic Census isn’t new, in fact the concept dates back to the 1810 Census, when questions were asked about manufacturing along with questions about population.  The Economic Census provides detailed statistics that are important for industries and communities.  Trade associations, chambers of commerce, and businesses rely on this information for economic development, business decisions, and strategic planning.

As the manager of the Wyoming Market Research Center, every single day I use information that is based on the Economic Census to help Wyoming businesses find out about their industry, their community and their markets.   Accurate and believable data from the Census is vital to creating sensible business plans, loan applications and for simply running day-to-day business.

 

10 Tips for Family Business Success

I recently read an article from Nation’s Business regarding this topic.  The article, written by Sharon Nelton, was several years old, but had some interesting insight into family business from David Bork, a consultant who has been advising family businesses since the late 60’s.  Here are some of the qualities he feels are essential for families in business together.

1)       Shared values – Your family should share similar values concerning people, work, and money.  This way you can have a shared vision for the future of the business.

2)      Shared power – Not the same as “equal” power.  It refers to mutual respect for each other.  Respect of their talents and abilities among generations, spouses and siblings.  Decisions should be deferred to the person with expertise in that area of business.

3)      Traditions – The family should foster new and renew old traditions that bond the family together and sets them apart from other families.

4)      Willingness to learn and grow – The family should be open to new ideas and new approaches to solving problems within the business.  Problems are only new opportunities to learn and grow together, even when you might have differing opinions.

5)      Build relationships – Take time away from the family business to have fun together. The enjoyable times can help you survive the hard times and will help sustain family relationships.

6)      Genuine Caring – You should express your feelings of concern for family members openly, to let them know that you do care about them.  Sometimes it’s the little things you do that will say that you “really” care about another family member.

7)      Mutual respect – You must have respect for one-another to be able to do business together.  Knowing that your family can depend on you and that you can depend on others builds trust and mutual respect.

8)      Support for each other – Even if a family member is having struggles, family members should assist and support one another.  During times of grief, pain or even shame, you should be supportive of family members.

9)      Respect privacy – When you are in business with family members there is a lot of togetherness.  Be respectful of one another’s individual privacy and that of each family unit within the extended family.  Don’t step over the line.

10)  Interpersonal boundaries – A common family business related problem is conflict between two family members.  Resist getting caught in the middle of a conflict that really needs to be resolved between the two family members.

According the Bork, understanding which of these traits you have, or need to work on, will help strengthen your family bonds and the success of your family business. What do you think?

Intellectual property and small business

WYOMING BUSINESS TIPS

A weekly look at Wyoming
business questions from the Wyoming Entrepreneur Network, a partnership of
business assistance programs at the University
of Wyoming.

Intellectual Property and Small Business

Karen Kitchens, Intellectual Property/Documents
Librarian, Wyoming State Library, [email protected]

Knowledge and ideas have always been a powerful force in economic development.  As a small
business owner, Intellectual Property (IP) is a key consideration in your day-to-day business
decisions.  IP is an important component of the United States economy, and the U.S. is an acknowledged global leader in the creation of IP.  According to the Office of the United States Trade Representative, “Americans are the world’s leading innovators, and our ideas and intellectual property are a key ingredient to our competitiveness and prosperity.”[1]

Unfortunately, businesses often fail to protect their valuable IP because IP is not tangible property.  IP has no physical form.  Examples might be a method of doing business, an Internet domain name, or a company’s marketing material.  Often, this intangible property is more valuable than real or personal property. The commercial value of IP comes from the ability of its owner to control and exploit its use.  

The term “Intellectual Property” might sound a bit pompous.  But in reality, it is a very
good description for the proprietary interests of individuals and businesses, protected by the laws of IP.  The United States Patent and Trademark Office defines IP as, “Creations of the mind -
creative works or ideas embodied in a form that can be shared or can enable others to recreate, emulate, or manufacture them.”  Globalization of the world’s economies has significantly increased the need for information about IP.    

There are four ways to protect IP - patents, which pertain to pragmatic innovations; trademarks, which relate to commercial symbols; copyrights, which concerns artistic and literary works; and trade secrets, which consist of valuable business information that is not generally known and is subject to reasonable efforts to preserve confidentiality.  Some IP rights – copyrights and trademark rights are granted automatically upon creation or use of the IP assets without any action needed by the creator.  Other IP rights, such as patents, require action on the part of the creator in addition to considerable expense. 

This series will review the four types of IP rights and how each may affect your business.  For example, developing and protecting your IP assets and rights can give you an edge over the competition by discouraging unscrupulous competitors, developing new revenue sources, and increasing the
value of your company.  IP is a valuable business asset that must be managed and protected like any other asset.

 

For more information about the
services of Wyoming Entrepreneur, or to ask a question, call 1-800-348-5194,
e-mail [email protected] or write 1000 East University Avenue, Department 3922,
Laramie, WY 82071-3922. Additional help is available on our website www.wyomingentrepreneur.biz.

 The Wyoming
Entrepreneur partnership program is funded in part through a cooperative
agreement with the U.S.
Small Business Administration. Additional support is provided by the Wyoming Business Council and the University of Wyoming.

---

[1]Special
301 Report Finds Continued Progress But Significant Improvements Needed. 2004.
Office of the United States Trade Representative Archive. 30 May 2012 <http://www.ustr.gov/archive/Document_Library/Press_Releases/2004/May/Special_301_Report_Finds_Continued_Progress_But_Significant_Improvements_Needed.html>.

 

 

 

 

Why Family Businesses are Special Today

Family-owned businesses are stable and optimistic, even in times of economic uncertainty. A recent national study by Kennesaw State University, the American Family Business Survey of family-owned businesses, studied the strengths, challenges and changes since a previous study done in 2002. It found that family business owners:
1 | Are optimistic about future growth - Even during some generally depressed business conditions, family business owners express optimism. Figures confirm that family businesses are better able to weather economic hardship and stabilize the economy than their non-family counterparts.
2 | Lack a sense of urgency about retirement and succession planning - Family businesses face some significant succession challenges. Over forty percent of business owners expect to retire in the next ten years, but many are less certain about retirement. Almost one third have no plans to retire, ever. Nearly another third report that retirement is eleven or more years away. This means that many owners plan to die running their business, which is not beneficial to their family, the business, its employees or its customers. Furthermore, nearly one third have no estate plan beyond a simple will.
3 | Select women as leaders - There has been an almost five-fold increase in the number of women leaders in family businesses in the last decade, far more than the increases seen in non-family businesses. The trend indicates that increased female leadership of family businesses should continue.
4 | Hold themselves and their employees to a higher ethical standard - Since family businesses are family and relationship oriented, they operate more ethically. Family owners have a major influence on their business and their values are emphasized in the business. Family orientation seems to translate into more ethical behavior and the resulting actions contribute significantly to their family’s identity in their communities.
5 | Expand on traditional management - There is a misconception that due to the relational nature of family businesses they are less professional. In one way this may be true, with only a few businesses having a written strategic plan or formal planning process. This is only one higher level of professional behavior. Despite the lack of formal strategic planning, they use other types of planning tools. Buy-sell agreements, business valuations, boards of directors, formal recruiting, performance appraisals, and benefits administration indicate their professionalism.
6 | More unified family values - Family unity and cohesion are critical to family business success and an important goal. Family members that agree on values, attitudes, and beliefs exhibit that unity and cohesion. The practice of these values result in increased levels of employee loyalty, commitment, and organizational citizenship. Similarity of values between family members in business and their customers can also improve relationships and foster economic stability.
7 | Place their trust in family members as key advisors – Overwhelmingly the business owner’s spouse is seen as their most trusted advisor, followed by their accountant, a business peer, parent, lawyer, and financial advisor.

They just opened a business incubator in Rawlins and I’ve seen these around the state. What types of businesses use them?

First, there are different kinds of business incubators often suited to the industry you are in.  For example, some focus on food, technology, manufacturing or retail operations and have equipment and space suited to those needs while others offer office space and services more suited for professional service industry companies.  They often pool resources, such as administrative staff, utilities, and equipment common to the incubator clients providing better facilities for their needs and for lower cost than if they went elsewhere. 

Beyond the facilities, incubators more importantly offer assistance to help businesses.  Start-up and emerging businesses are usually the most vulnerable and most likely to benefit from support and guidance incubators provide.  Common benefits for incubator clients include:

• One-on-one advising/business counseling:  Having extra help to ensure that the fundamentals are in place for a business to be successful can help make sure a business will be viable and profitable.  These fundamentals include assistance with marketing, financial planning, operations.  With proper assistance, individual business’ weaknesses can be discovered and remedies can be applied so that they won’t prohibit a business from being successful.
• Being held accountable:  Small early stage businesses they are only held accountable by themselves whereas incubator clients are required to report regularly to an advisory board where goals, problems, and progress is shared with others who can then provide corrective/suggestive action.
• Business Community Resources: By working with the business incubator staff and alongside other incubator businesses a business is part of an important support business network in their community ranging from financial resources to developing their workforce or even successful advertising methods.

In Wyoming we have a number of business incubators and the best method to find out if there is one near you is to contact your local economic development office, your local chamber of commerce or of course, contact us at Wyoming Entrepreneur as Wyoming Entrepreneur is closely involved with incubators in several of Wyoming’s communities.  If you are starting a business or are a home-based business ready to take the next step and would like some help along the way, moving into a business incubator might be the right thing for your business’ success.

Jim Drever

Process mapping?

By Anya Petersen-Frey, Regional Director, MBA, PhD (abd), Certified Global Business Professional

What exactly is process mapping?    Bob,  Torrington

This is a great question, and timely, since I just finished a process mapping project with a local organization.  Here is a very brief overview.

Process mapping is usually considered a quality management tool with an overall goal of improving a process by looking for gaps in service, waste (time or product) or other issues. You may have heard terms such as "Six Sigma", "Lean Six Sigma"  or the Malcolm Baldrige National Quality Program all which provide tools geared toward maximizing efficiency while maintaining control over a process - be it manufacturing or service related.

Process mapping provides business leaders the opportunity to clarify how processes are actually being performed. It reveals problems such as bottlenecks or variations in how the process is carried out by different groups or individuals.  Put simply, process mapping strives to improve business performance by optimizing the efficiency of connecting activities in the creation of a product or service.

A process map is a tool - a means to an end, not an outcome in its own right.

The final output will, hopefully, be an  improvement in the way that the business process works.

 There are two main process models:

• The "current"  model which outlines the current process as it is performed now
• The "future" state model which defines the way the process will look when changes or modifications have been implemented - or the way it is desired to be.

The goals of completing this process are to create value for the customer and to reduce costs for the company

There are many ways to approach creating a process map.  Optimal is to have people at all levels of the organization involved, even in a very small firm. The starting point is to identify and map out a particular process for a "current" state.  If you don't know where the gaps or delays in a process are it can be difficult to identify and correct them. 

For example:  Imagine you own a carpet store that sells carpet as well as offers delivery and installation.  What is the process, from the customer perspective, of purchasing and having carpet installed?  The starting point might be "customer comes into store to look at carpet". Then what?  What questions are asked that direct the next step?  Walk the steps as though you are a customer including communication, time involved, etc. Note where delays occur, or where decisions have to be made.  This can be a messy process as different input creates a map with many divergent paths.  That is ok. 

This may be a simplified example but can give you a hint of how to take a step back and objectively view your business process.  It is important to understand what each person does - so ask them.  The map should have no personal names but rather only list the processes and the differences in how different people handle them.

There are many flow chart and process map examples on the Web as well as software to help you build your final map.  You will notice some standard symbols used to delineate "decisions", or "delays" - these can be helpful but the map can be created in a way that meets the needs of your organization.

It can help to have an objective facilitator guide the original data collection using input from various people in the particular process to get an accurate view of what is actually happening, but again, a business owner can begin the process on his own.

The key goal in using this type of tool is to maintain a competitive edge.  Don't become complacent and fall into the age-old "this is the way it has always been done" trap.  There are times when the an original method is still the best; but many times it is time to re-evaluate and institute more efficient processes.

Wyoming Cottage Business Food Law

The state of Wyoming now allows food products that are not potentially hazardous to be made in home kitchens. These food products can be prepared for sale or use only at farmers’ markets, roadside stands, private homes and at functions including, but not limited to those operated by not-for-profit charitable or religious organizations. It is recommended to contact the Wyoming Department of Agriculture or local health departments as to the foods that are allowed. View WY Cottage Food Business Requirements document.

Non-potentially hazardous foods means any food that does not require time or temperature control for safety to limit the pathogenic microorganism growth or toxin formation.  Some examples of non-potentially hazardous foods, but not limited to, would be baked breads, cookies, muffins, double crusted pies, dried cake and seasoning mixes, jams and jellies that are not low sugar or made with artificial sweeteners. The private home kitchen is exempt from licensing and inspection.

Food Safety training is recommended and good sanitation practices must be followed. Questions can be emailed Linda Stratton [email protected] or Dean Finkenbinder [email protected].   

Some Good Economic News

A newly released study by INSEAD (a leading European business school) ranks 130 countries on innovation in their economies.  The US ranks as number one, followed by Germany, Sweden, the UK and Singapore.  The data used is based on performance in 2006 and 2007, so there is no telling what the economic downturn's impact might have been.  For a link to the study, go here:

http://www.insead.edu/facultyresearch/centres/elab/gii/GII%20Final%200809.pdf

What are your thoughts?  Do you see the US continuing as the leading innovative economy?