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Episode 23: Answering all your intellectual property questions with Nichole Hayden, law firm partner (transcript)

Episode 23: Answering all your intellectual property questions with Nichole Hayden, law firm partner (transcript)

Shontavia Johnson (00:00):

What’s up, y’all. Welcome to The Shontavia Show, where my goal is to help you start a business based on your life’s vision. This ain’t gonna be your daddy’s business advice. I’m laser focused on entrepreneurship in the 21st century, vision and breaking the traditional mold. If you can get with that, you can get with me, be sure to visit shontavia.com for more episodes, blog posts, and other content. Thank you for listening. The show starts now.

Shontavia Johnson (00:28):

Hey everybody. I’m Shontavia Johnson and this is another episode of The Shontavia Show where I want to inspire you to build a brand, business and life that you love and everybody, I am so excited to have Nicole Hayden here with me. Thank you for being here.

Shontavia Johnson (00:43):

Thank you for having me.

Shontavia Johnson (00:45):

Nichole is an amazing and dynamic lawyer. I’m going to read her bio. I just had to say that first because she is wonderful and a partner at Nelson, Mullins, Riley and Scarborough, where she focuses on intellectual property law, including helping clients protect their brands and IP assets. Nichole is a registered patent attorney. Her practice involves global patent and trademark prosecution, opinion work, and strategic planning as well as licensing, transfers, due diligence and the like. In addition to her experience as a patent attorney in a law firm, Nichole has served as general counsel to a startup software company from 2012 to 2015. Welcome.

Nichole Biglin Hayden (01:29):

Thank you.

Shontavia Johnson (01:30):

So excited. You’re here.

Nichole Biglin Hayden (01:31):

I am really excited to be here.

Shontavia Johnson (01:34):

So you’ve been practicing IP law for how many years?

Nichole Biglin Hayden (01:37):

15 years, going on 16 now. I’m not sure now.

Shontavia Johnson (01:40):

So do you ever see anything new? Is it all new? Every day.

Nichole Biglin Hayden (01:43):

It’s all new, every day it’s new.

Shontavia Johnson (01:44):

…Every Day is new and different…

Nichole Biglin Hayden (01:46):

I mean I might be in a certain technology for a while until that technology shifts and you know another client comes along and you get in depth into that technology. But you know, the day to day is always different.

Shontavia Johnson (01:57):

Always different. Gosh, so 15 years, everything’s different or things are different. A lot. This sounds fun.

Nichole Biglin Hayden (02:04):

It is fun! You know.

Shontavia Johnson (02:07):

Well, I don’t know. It’s a little shaky on me, Nichole. So Nichole, why don’t we talk a little about your background, where you’re from, how did you get even into IP law? What’s your story?

Nichole Biglin Hayden (02:18):

Yes, my story is, is a weird one. I had no background in anything to do with the law. No lawyers in my family did not grow up. I mean, I knew a couple of lawyers at church, but that was about it. And when I graduated from, when I was getting ready to graduate from college, I went to Barnes and Noble and I was looking at some GMAT books in the little section for professional schools. And this retired patent lawyer was in that area, just kind of sitting, reading a book and he came up and started talking to me. Yeah. I mean this was totally random situation. And he said, you know, what’s your degree? And I said, chemistry, but I don’t, I know I don’t want to be a chemist, so I’m trying to figure out what to do next. And he’s like, well, have you ever heard of patent law? And I said, no, I have no idea. I was like, I knew what a patent was generally, but I didn’t know anything about it. So he sort of gave me the five minute spiel on it, enough that I left Barnes and Noble that day with an LSAT study guide. And I went home and I started studying for the LSAT and I thought, well if I like law school as much as I like studying for the LSAT, then this is going to be, this is going to be a good fit for me. And it turned out it was…

Shontavia Johnson (03:25):

In Barnes and Noble.

Nichole Biglin Hayden (03:27):

I’m not, I’m not kidding you. This is like my guardian angel. He’s out there somewhere or he may have passed by now. He was, he was old and retired and you know but you know, something told him to talk to me and for some reason I followed my gut and that is a story in trusting your instincts and it worked out.

Shontavia Johnson (03:44):

And you didn’t get his card?

Nichole Biglin Hayden (03:46):

I didn’t, I have no idea who it was, you know?

Shontavia Johnson (03:50):

Wow. That is really fascinating. So you started studying for the LSAT ended up in law school. Was it a huge transition from chemistry to law or was it…?

Nichole Biglin Hayden (03:58):

You know, it was scary because everybody else, well it felt like everybody else had Poli Sci or English degrees. So it was scary getting into law school because I had this chemistry degree and I was weird from, you know, weird compared to everybody else. But as it turned out, the way that you prep for law school, I feel like fit really well with the analytical nature of a science degree. So ended up, it wasn’t as bad as I thought it was going to be, but I studied my butt off that first semester cause I had no idea what to expect.

Shontavia Johnson (04:29):

I felt that way too, my background was bioengineering. I didn’t know anything. I didn’t know a plaintiff from a defendant. So I just studied harder than everybody else.

Nichole Biglin Hayden (04:38):

It works.

Shontavia Johnson (04:40):

So you went to Drake University Law School…So Nichole and I have so many weird…

Nichole Biglin Hayden (04:47):

Our paths have crossed so many times…

Shontavia Johnson (04:49):

Yeah and in so many ways. So Nichole was a student at Drake University Law School. I started my academic career as a law professor at Drake University Law School because of you actually, in part. So when I… So we worked together at Nelson Mullins many years ago too. When I left Nelson Mullins and started teaching in a temporary capacity, I interviewed at Drake, they only called one reference and I had not listed you as a reference, but you were the only person they called.

Nichole Biglin Hayden (05:20):

Oh that’s funny.

Shontavia Johnson (05:21):

And the person who’s now the Dean I think talked to you and he said, “Oh she said wonderful things about you, so we knew you’d be great.” So that is how I even…

Nichole Biglin Hayden (05:31):

It is a really small world.

Shontavia Johnson (05:32):

It is such a small world. Yes. And so when you started practicing, did you start at Nelson Mullins or did you…?

Nichole Biglin Hayden (05:38):

Yeah I did. Started right out of law school.

Shontavia Johnson (05:40):

You started at Nelson Mullins, were a great lawyer, even then.. I remember, because I was a few years behind you, I used to look at you and think, Oh, I’ll never be as good as her at any of this stuff.

Nichole Biglin Hayden (05:51):

So not true. So not true. And now, you’ve gone and done like a million other things and I’m still at Nelson Mullins.

Shontavia Johnson (05:58):

Well, you’ve done a lot of things too, right? So started at Nelson Mullins. Did you start out in patent prosecution only? Did you do other things too? What was…

Nichole Biglin Hayden (06:06):

At Nelson Mullins, as you probably remember, they kind of train you to do both. So you do a little bit of litigation, you do a little bit of prosecution, you learn both sides and then you pick your path. And so for me it worked better on the prosecution side. I enjoy the predictability of it. I enjoy knowing my deadlines six months out. I do not enjoy surprises in the respect of you’re going to be working all weekend because this litigation issue just popped up. So for me the prosecution route is a lot of fun. I enjoy helping people sort of figure out where their IP exists and then figuring out how to protect it. And yeah, that’s basically the core of my practice.

Shontavia Johnson (06:47):

Yeah. So can you explain a little more about prosecution? About what that means?

Nichole Biglin Hayden (06:50):

Right, so that’s a weird word when it comes to the law. Because everybody thinks of criminal prosecutions, but it’s basically filing, a patent application or a trademark application or copyright application for that matter. And just babysitting it through the process, going back and forth with the patent office and the trademark office and arguing in favor of your client and you know, sort of crafting the patent or the trademark to meet the requirements of the office, but also protect the person’s intention.

Shontavia Johnson (07:19):

You do that a lot, right?

Nichole Biglin Hayden (07:22):

Yes.

Shontavia Johnson (07:23):

And do you work with the small companies and individuals still or is it a lot of large companies?

Nichole Biglin Hayden (07:29):

I do have a lot of large entity work, but I enjoy the small work. We do, Oh, just, I don’t, I don’t know, like on a percentage basis, but we do a lot of the startup work. The startups are, are really exciting, because the client is really excited about the product. They’re really, you know, it’s an innovation that they’ve put a lot of research and a lot of work into and a lot of emotion and heart into. And so when one of those takes off, you know, not every single one is going to take off, but when it does, it’s great. And it’s a really, it’s a different experience to kind of go along that process with the client.

Shontavia Johnson (08:07):

So when people come to you, do they have any clue about what this looks like? So it’s not like you go to your lawyer, they file a patent application and you get it the next day. Is it a lot of education? Are there things that clients or potential clients should know when they’re reaching out to a lawyer about the whole process?

Nichole Biglin Hayden (08:25):

Yeah. So in terms of the length of time and that sort of thing, it is a long process for patents at least. For trademarks, much shorter. You can get a trademark between four months and a year to get from the point of filing to the point of registration. And the protection goes back in time to the time you file it. So trademarks are pretty straightforward. Patents are so unpredictable. It completely depends on the art unit that you’re in. The type technology that you’re in. It depends on, there’s certain ways to file where you can get to a resolution faster, which are obviously more expensive, but there are options to do that, but in some cases, two to five years, I mean, obviously we’ve had some that have gone longer than five years. The shortest is about a year and that’s usually going to cost extra to the patent office charges some crazy amount of fees, but they, they get it done. Whereas if you don’t, if you don’t go that track one it might take 18 months to two years before an examiner ever even looks at your application.

Shontavia Johnson (09:30):

Wow. So for people who have ideas or have invented something or have some brand that they want to put out in the marketplace, what kinds of things should they be thinking about before they even come to a lawyer? Or what should they be doing?

Nichole Biglin Hayden (09:45):

So documenting, number one, obviously documenting your dates of invention and all of the process that you’ve gone through and making sure that you’ve got your chain of ownership in order. To the extent you’ve involved anybody else in this process, making sure that any of the ownership issues are worked out between the two of you, which may involve getting an agreement in written form from a lawyer. Making sure you’re protected under a nondisclosure agreement if you’re going out and talking to anybody about it. First and foremost, you know, early is the best approach for patent protection. Once you have publicly disclosed it, sold it basically put it out in the public realm in any way, even public use. You’ve got one year in the United States to file a patent application and if you don’t file it within that year, it’s an absolute bar. And a lot of people don’t realize that. And so we will get questions from time to time about a product that may have taken them two or three years to get some traction on. But now it’s rolling and now they want to get a patent application or a patent on this invention and it’s too late. And that’s really unfortunate.

Shontavia Johnson (10:56):

Yeah. So if I have an invention, I have completed the invention. It’s sitting on the shelf or sitting on my laptop or whatever. At what point do I reach out to a lawyer? Is it right away? Is it before I’m finished? Is it, at what point would you suggest reaching out to a lawyer, to a law firm to talk about protecting an invention?

Nichole Biglin Hayden (11:18):

It kind of depends on your resources. In the case of the larger companies that I work with, it’s usually at the point of conception. So whenever they come up with the idea and just paper and pen, draw it out and put the idea.

Shontavia Johnson (11:32):

— They’re not even finished yet?

Nichole Biglin Hayden (11:32):

…Right. No, not even a prototype. They will come with a pen and ink drawing and we will get started on that. You may not have the resources as an individual inventor as a startup to do that right away. But certainly before you go to market, before you get into the public disclosures aspect of it, you want to talk to a patent attorney at that point in time.

Shontavia Johnson (11:55):

So how much does it cost? Can you give some broad parameters around that?

Nichole Biglin Hayden (12:00):

I mean, you know, it’s hugely variable depending on the technology. So if it’s something on the very simple end of mechanical device that’s not, not overly complicated, you may be in the $5,000 range. More complicated mechanical workings, inner workings, may be closer to the $10,000 range. When you start getting into really complicated software applications, sometimes that can get up even higher, like $15,000 range. It’s, it’s not a cheap process and that’s the, that’s the part that’s hard for startups is that you’ve, you’ve got to be able to balance that with obviously making money and in the beginning stages that’s hard.

Shontavia Johnson (12:42):

Right? And that, I think that tracks with the most recent new averages, the AIPLA that will, the association of intellectual, what is it? American Intellectual Property Law Association was recently, they do this data and research every year. And I think the average patent application in the U.S. Is like $7,500, but it’s a lot of the smaller, applications, balancing out the software patents, that kind of thing.

Nichole Biglin Hayden (13:09):

Right? It is. And there are options to get you some I won’t say protection, but to at least cover your bases like the provisional patent application. So if you can’t afford to do the $5,000 or the $10,000 application right off the bat, a provisional patent application is always a great idea because that’s really inexpensive. You can kind of scale it based on the amount of disclosure that you get from the inventor. So if the inventor is willing to put together a document that spells out how this thing works, maybe some AutoCAD drawings, whatever they’ve got in that vein, and we can package it up and file it. It basically puts a line in the sand at the patent office. We invented this as of this date. And you’ve got one year then to go out and market it and to just, you know, disclose the heck out of it and see if you get any traction. And if you do at the end of that year, you come back and say, okay, we’re ready to move forward with this patent application. We’re ready to like pay the real fees for this to really get, you know, drafted in the right way. So that’s something we do a lot with smaller companies.

Shontavia Johnson (14:14):

So provisional on average, what is the cost of a provisional? So the filing fees are the, the biggest savings there. I think you can file as a small entity. I want to say $100 is the filing fee. So if you do all the work on the front end, you as in, not the patent attorney, and your filing fees are only a hundred dollars. I mean, you’re looking at, for me, I will scale basically to whatever the person’s budget is. If you want me to spend $500 on it, we’ll do that. If you want me to spend $2,000 on it, we’ll do that and we’ll just basically do whatever we can do within that budget to get it filed. Just so you’ve got that, that line in the sand.

Shontavia Johnson (14:49):

Yeah. So that’s what you see a lot like Shark Tank. People come in and they say, Oh, we’ve got a provisional patent, but it is not a patent.

Nichole Biglin Hayden (14:56):

It is not. And that’s why I say you’re not protected. You’ve got basically like a, a place holder at the patent office, but you don’t really have any protection at that stage. But you know, if you’re willing to pursue the protection, your protection goes all the way back to that first time that you filed.

Shontavia Johnson (15:12):

Right. So we’ve been talking a lot about inventions which are protected by patent law. There are other types of IP and it sounds like you do a lot of patents, but then also some of the other types of IP. Could you walk through a little, the trademarks and copyrights, what the processes look like there?

Nichole Biglin Hayden (15:30):

Yeah, absolutely. And, one of the things I should point out too is when we’re looking at whether to patent something on the front end we also want to look at trade secrets because if your invention is something that can be easily protected by a trade secret, that’s free, there’s, there’s nothing, there are procedures that you need to go through and there’s protection internal that you need to observe, but there’s no fee associated with it. You don’t have to file anything. And a trade secret is most appropriate for an invention that cannot be reverse engineered. It’s, you know, a recipe for something or a formula for something or a method of making something that’s faster or more efficient or more economical or, or better for recycling or you know, recyclability, whatever the case may be. If it’s something that somebody can’t take apart and put back together, then trade secret may be the best form of protection. And that’s free.

Shontavia Johnson (16:24):

Like Coca Cola secret’s recipe, or KFC.

Nichole Biglin Hayden (16:27):

The most famous, yeah, KFC. KFC is a formula for their batter. Yeah.

Shontavia Johnson (16:33):

Great. So trade secret as an alternative to patent protection, which requires the inventor, the entrepreneur to take some steps. But there’s no affirmative document that needs to be filed.

Nichole Biglin Hayden (16:43):

Right. Yeah. But if you do go down that road, you do want to make sure you’re protecting your trade secrets as a trade secret. So you probably want to talk to a professional and make sure you’re taking, you’re putting the appropriate measures in place to prevent third parties from having access, to prevent employees from having access unless they have to have access, unless they, they’re on a need to know basis type of thing. Segregating who has access to certain information so that one person doesn’t have access to everything. So there are a lot of procedures you can put in place internally to make sure your trade secrets remain trade secrets.

Shontavia Johnson (17:16):

Got it. Got it. So there’s patents, there’s trade secret, trademarks, copyrights, right?

Nichole Biglin Hayden (17:22):

So basic primer: trademarks are going to protect your business name, your product line names, your product names. So that’s kind of the triage that I think of: your company name. You know, this line of products. And then the individual products themselves may each be protected by a trademark. Trademark could also protect a slogan or something along those lines. And then copyright protects the, anything that can be transformed into a tangible form. Written copy art, musicbooks, motion pictures. Yeah. Anything like that. But the copying aspect of copyright has to be verbatim. So if somebody just copied your idea, that’s not necessarily a copyright violation. They have to copy the actual text or the actual music or whatever the case may be.

Shontavia Johnson (18:15):

So with trademarks and copyrights at what point should a person come to a lawyer? Are there things they can do in the interim? I’ve talked about this a little on the show, about like with copyrights and trademarks, there’s some steps you can take that don’t cost any money. But at some point, as your business grows, as your brand grows, you should consider really taking the steps of affirmatively protecting trademarks and copyrights. So at what point should a person come to– understanding budget?

Nichole Biglin Hayden (18:41):

Right. I know. And then we are absolutely sensitive to that. The trademark is a little bit easier than patent because there is no bar to trademark from a statutory standpoint. Now, if somebody else starts using your name and they’ve got prior rights in that name, then that could bar you from getting a trademark. But there’s no rule that says once you’ve been using this name for a year, you can’t you can’t get a trademark on it. You could have been using this name for 10 years and it’s fine as long as you take the steps to register it. So that can basically be done at any point in time. If you have the opportunity to do it in the beginning, right when you’re starting your business, that would be fantastic. And the most important reason why is because you don’t know what else is out there if you haven’t done that research. And so if another company comes in right behind you or maybe was already in the market before you and you just didn’t know that your rights could be severely limited based on stuff that you just didn’t even know about. So we have that unfortunately happen a lot where you know, a gym owner or a yoga studio has been operating for a couple of years and they’re like, you know, we love this name, we’ve got the money now let’s, let’s register it and we can’t because there’s other issues out there. And so if you can come to us with maybe three to five names before your business starts, before you open up, before you spend the money on signage, before you spend the money on marketing, we can tell you very quickly, “these are the best from a trademark perspective.” And then you pick from that list based on what your personal preferences are. It makes life a lot easier. I know, I know. Not everybody can do that, but that is what I recommend all the time. Come to us with three to five names before you start your business. We can do that really cheaply. We can do that really efficiently. And then you’re not stuck in a situation where you’ve been spending money on this name for three or four years and you can’t protect it.

Shontavia Johnson (20:41):

Right. People will Google something and see, Oh nobody, I don’t find anything on Google. There’s no domain name that uses this word or whatever, so I must be fine. But there’s a lot more to it right, than that.

Nichole Biglin Hayden (20:54):

Right, right. Yeah. We, I mean there’s a federal database that we search and there may be things that pop up on the federal database that aren’t anywhere geographically near you, but they still preempt you because they filed first. So yeah, that’s the type of thing that we’d be able to find that you might not be able to.

Shontavia Johnson (21:14):

So trademarks are deceivingly complex. It’s not as easy as a Google search and kind of thing. And then with copyrights it’s similar, right? That you don’t necessarily have to take any affirmative steps, but if you do, there are benefits to doing that too, right?

Nichole Biglin Hayden (21:32):

I mean, you can’t file a lawsuit until you file a copyright…or until you receive a copyright registration. So you know, if there’s something that, that you think is going to be copied you certainly want to get a registration on that. If it’s, you know, whatever your most valued asset is, basically, if your company’s assets are copyrightable materials, then those are the types of things that you want to protect. I mean, protecting your website copy if you’re running a guitar shop might not be that important. But if you’re a musician, obviously you want to copyright, your, you want to get an actual registration for your music.

Shontavia Johnson (22:13):

And so what about the costs there? We talked about patents and the varying costs. Trademarks I know are less expensive, copyrights are less expensive, but what kind of ballpark range would you give as it relates to costs?

Nichole Biglin Hayden (22:26):

Copyrights going to be the least expensive. The registration process is pretty streamlined. There’s not a whole lot of back and forth. So you’re probably looking at less than a thousand dollars to file a copyright application. For a trademark application through registration, probably about $2,500 through the entire process. So dramatically cheaper than patents, but still a cost. And that’s spread out over years. I should say that that’s not, that’s not an upfront cost. I mean that would be spread out over at least a year.

Shontavia Johnson (22:58):

So if I’m a new entrepreneur, somebody sitting at home and wants to do something with my IP and I’m looking at the costs and I’m looking at you know, doing it myself, how would you suggest people balance those considerations? I think it’s easy particularly with like copyrights and trademarks to look at the website. So like the copyright office website or the trademark office website and say, Oh this is simple. This is something that I can, can I do myself. At what point do you think people should definitely use a lawyer? At what point might they be comfortable doing some things on their own?

Nichole Biglin Hayden (23:36):

I would say have an initial conversation with a lawyer. Find somebody you trust, have a conversation about, okay I have a limited budget. What are my absolute things I have to do or you know, highly recommended and, and kind of get the lawyer to spell out based on your technology or your invention. Because I think it’s going to be different. If it’s software, it’s going to be different from, you know, if it’s the next new gadget, it’s just going to be a different analysis. Whether you’re online or whether you’re in a brick and mortar that might make the decisions different. But if you, there’s no lawyer that’s not going to sit down and have an initial conversation with you for free or if not for very cheap and, and give you at least some of the guidelines as to number one, I would protect this. Number two, I would do the trademark search, number three and kind of go from there with what you can afford.

Shontavia Johnson (24:27):

Yeah, so great advice there, about balancing out and having an initial conversation, that makes so much sense. So when people are doing this, and maybe I don’t know you want to answer this question or not Nichole, but how do you decide on a lawyer? How do you choose someone to, you know, give what for a lot of people is a lot of money, right? To protect this intangible asset. Do you have suggestions on how to go about finding a good lawyer? Like I have thoughts about how you go about finding somebody you trust, but do you?

Nichole Biglin Hayden (25:03):

I would be interested to hear what you think after I say what I think. I mean, I think just based on anything else in my life, I go on personal recommendations. I ask my friends, I ask colleagues, I ask, you know, who should I use as an electrician? Who should I use as a plumber? Who have you used and had a good experience with? That’s how I would go about it. And you know, people if they’ve had a good experience with somebody are going to refer somebody. And so that’s how I find everybody in life. I don’t, I don’t do a whole lot of like just cold Google searches to find somebody that’s really going to have that level of impact on my business.

Shontavia Johnson (25:41):

I love that advice. So certainly recommendations from people I trust. Though, what I have found, at least, not even that as much now, but some people just don’t know IP lawyers, you know, like they might know a lawyer but they don’t know an IP lawyer or they don’t know there’s actually a specific type of lawyer for this kind of thing. And I think that part is hard for a lot of people. If you do have to cold call or reach out to people, I’m always interested in the response, like just even to the outreach, like how long does it take for a person to reach out to me to reach back out, right. To respond. Are they confusing in the interaction? You know, IP can be really, really complicated already. And if I’m like sitting across from you and you sound like Charlie Brown’s teacher, it’s like, okay, well maybe this is not the person for me. But I think those things, yeah, I mean obviously you’re exactly right, if you can get a good referral, certainly. But if you don’t know any lawyers and if you really are just kind of reaching out to people, cold calls, Google, whatever, then those are the things that I think are important.

Nichole Biglin Hayden (27:02):

Trust your gut basically. If you have a bad feeling from me from the start, then that’s probably not the right person.

Shontavia Johnson (27:08):

That’s right. That’s right. And with IP in particular, you referenced this, and I love that you did, that with IP, sometimes the costs are hidden or spread out over time. Like to file the application might be $5,000 or $7,000 or whatever, but then you have to go back and forth with the patent office or with the trademark office, there can be additional costs, there are maintenance costs. So is this person being forthcoming with how much you know the bill is at the end I think is important.

Nichole Biglin Hayden (27:40):

Ask those questions if you have any confusion over anything, ask those questions and expect a straight answer.

Shontavia Johnson (27:46):

Yeah, that’s exactly right. And I think, you know, some of our colleagues in the profession aren’t always that great with that kind of thing. But those are the things I typically suggest. Like if you don’t get a good referral or if you can’t get a good referral, look for some of that stuff too.

Shontavia Johnson (28:04):

Alright. So you are in a firm, you’ve been a partner now or you’ve been in the law firm for a while. You were also general counsel for a startup and startups are growing. How do you decide like when to hire an in-house lawyer? Bring somebody in, because you are at a start up, right?

Nichole Biglin Hayden (28:21):

I was, so…

Shontavia Johnson (28:22):

…Versus Just work with a firm. How do you know when the best, when to make that choice?

Nichole Biglin Hayden (28:27):

Um I think that hiring a lawyer is going to come down the road. You know, an in house lawyer, when I went to work for the company I was working for, I think they formed in 2004 and I went to work for them in 2012 so.

Shontavia Johnson (28:42):

It took time.

Nichole Biglin Hayden (28:43):

Yeah, it took time for them to get to the point. And they were beyond needing a lawyer by the time I got there. They could have used a lawyer probably two or three years prior to that. But I don’t think they knew they needed a lawyer. I was actually working for them doing IP work and I went in and basically was like, look, you guys have a lot on your plate. I can help with that. And that’s sort of how the whole thing got rolling. And sometimes, so sometimes people might not even realize that they need a lawyer or that having a lawyer in-house might make things more efficient. Especially for the C-Suite people to take reviewing contracts off their plate, to take managing litigation off their plate, to take things that maybe are overwhelming or you know, outside of their comfort zone into a place where it’s, it’s a little bit easier to manage. So.

Shontavia Johnson (29:33):

Yeah, because you know, I’ve talked to a lot of startup founders and I think you’re exactly right. They, sometimes you just don’t, when you make that switch from, “Hey I’m going to call this lawyer for this” to, we really need help. And when you find yourself reading all the contracts, googling all of these things, this is when you know, you know, you probably need more help.

Nichole Biglin Hayden (29:58):

Yeah. Yeah. And when I went in my CEO was basically like I don’t want to ever see another contract again. Got it. It’s like that’s what I’m here for. If you’re at the point where you don’t ever want to see another contract again, you might need a lawyer.

Shontavia Johnson (30:13):

Yeah, you probably do need a lawyer at that point, right. So a little bit of a different question because I think this is within your wheelhouse now, at least what I understand about your work. There are a lot of people now who are creating software based companies or app based companies, and with IP software and apps have, there’s, there’s somewhat of a chasm between what is protectable and what is not protectable. Could you speak a little bit about that? About, like if you are creating something that is app based or software based, what other things should you be thinking about? Because it’s not the traditional “should I get a patent” calculus, right?

Nichole Biglin Hayden (30:53):

It’s not, it’s a, it’s a much harder decision when it comes to software. Up until about 2014 getting a software patent was just as easy as getting any other type of patent. And then we had some cases that came down in that 2014 time frame that really changed the landscape of getting a software patent. And it kind of, it comes down to this concept called “abstract ideas” and whether your software is actually something that’s within the world of what can be patented or if your software is just an abstract idea. If it’s something that just makes a process that a human being would do more efficient or you know, more cost effective, or if it basically just introduces efficiencies that occur because of the fact that it’s happening on a machine, a computer instead of by a human with hand and brain, then that is really difficult to patent at this point in time. And the pendulum is swinging back a little bit. It’s not where it was pre-2014. It’s still difficult to get patents in the software world, but it’s getting a little bit easier. And we, and you know, if you follow this stuff, there have been bills introduced in Congress. It hasn’t gotten anywhere yet. You know, the former USPTO commissioner has spoken out against this, this issue. There’s, it’s, it’s a big issue within our world to translate it to the lay person, all I can say is it’s just more difficult. It’s more difficult to get a software patent for a lot of reasons that don’t necessarily make sense. It’s a, it’s a big question that, and honestly we get this question more than any others, is related to software, app based technology. Can I patent it? And it’s, it’s never an easy conversation because you have to get over that hurdle before you even look at whether anybody else is doing something similar. And so in those cases, if you have something really concrete, if you’re changing the way the computer works or if there’s some sort of transformation of data or you’re using some new processes internal to the software code itself then you may have something patentable. But if it’s more of an efficiency model, it just becomes more difficult. So you know, not to discourage anybody, but definitely have a conversation with a patent attorney. You may get on a 30 minute conversation and say, you know what, I’m going to, I’m going to keep pursuing this from a patent standpoint. Not to say you won’t pursue it from a commercial standpoint or I’m just going to, you know, protect my business model through other means, such as trade secret or that sort of thing. But it’s just, it’s that that analysis has changed a lot in the last, what is it, six years?

Shontavia Johnson (33:49):

Yeah, and it’s interesting because like on the other side, I’ve been in, I dunno, I’ve probably participated in five pitch competitions in the past two years, and almost say everybody wants a software based company or they’re inventing a new app or doing something with software. So it doesn’t seem like the startup ecosystem has gotten the memo that this is going to be really, really hard to protect, maybe not commercialize, but really, really hard to protect. And so I think it’s good advice to let people know up front, Hey, this might be a great idea, but it’s going to be really expensive if and or impossible to get a patent for, the patent realm.

Nichole Biglin Hayden (34:33):

And some of the advice that we can give in those types of situations where it seems like it’s really an uphill battle is, you know, marketing is going to be your, you’ve got to be the best one out there. You’ve got to be the one, the app that’s doing this that everybody thinks of when, when they think of this technology and basically you have to make your mark commercially through marketing because you’re not going to have that exclusivity. You’re not going to be able to prevent somebody from creating another app that does the same thing. So yours just has to do it better.

Shontavia Johnson (35:04):

Right. And that part is hard, I mean, that’s almost as expensive as going down the route of, of trying to get the patent, maybe, because marketing is really expensive. So if I could switch gears a little. Because I think, as I was saying before, not many people know IP lawyers and how to interact with IP lawyers. So what makes a good client for you as an IP lawyer who works with entrepreneurs, startups, large companies, small companies, what’s a good client look like?

Nichole Biglin Hayden (35:37):

I mean, honestly a good client is just engaged and is, is interested in the process. As you know, reading a patent is not fun. If you’re not a patent lawyer. So if I can get you to really pay attention to what I’ve written and make sure it’s accurate, that’s a win win because you tell me what you’ve invented. I basically write it up in a language that you can barely understand, and then I give it back to you and ask you if it’s accurate. And so if you don’t read that document, I don’t know whether it’s accurate or not, you know, I’m basing it on what you’ve told me, but you know, I really…And so like if I can get a client that’s engaged that wants to make sure that this is right, that’s looking at everything and checking all the boxes, then I feel confident that we’re on the right path. And you know, never any guarantees in the world of patenting, but at least I know we’ve covered everything that we could possibly cover in this document and so, yeah, I think just engagement and being a little open-minded to the process because it’s a long process and it is. It is not it, like I said, it’s, it’s going to put you to sleep when you read it.

Shontavia Johnson (36:51):

No, that is such good advice. That’s interesting because like my own experience, I think clients feel like, well, you’re the expert. You will tell me what is right and what is wrong. But this is maybe one of few places where you really want the client to say, well what does this mean? Are you sure that this is right?

Nichole Biglin Hayden (37:08):

Absolutely. I mean the terminology, if the terminology, if the definition is not accurate, then that could have huge ramifications two or three years down the line. And so we really want you to make sure you’re not just giving me a rubber stamp that you’re actually like engaged in this process because we need you. We need, we’re defining what your invention is and so it doesn’t matter what your prototype look like, looks like. It doesn’t matter what your actual product on the shelf looks like. If we don’t define it accurately in this document, we can’t prevent somebody else from doing the same thing.

Shontavia Johnson (37:43):

So once you do all of that, once you define everything, once you file the application with the USPTO and all of that, and your client gets that approval, they get that patent from the patent office, that trademark from the trademark office, that copyright from the copyright office. What do you do with it? So what is, what good is it on your wall?

Nichole Biglin Hayden (38:07):

You hang it on your wall!

Shontavia Johnson (38:08):

I think that’s really where the work begins for a lot of people, right? You get that thing, but then you actually have to maintain it. You have to enforce it, you have to police it. So what do you suggest to people, once they get intellectual property, it literally isn’t just something you hang on the wall, right?

Nichole Biglin Hayden (38:27):

No, you’re absolutely right. I mean, there are a lot of reasons to look for IP within your company, within your organization. Being able to exclude others is probably the primary to be able to basically be the exclusive person that can make this invention, whatever that invention is, and to be able to preclude anybody else from infringing on whatever is defined in that patent. But it also adds value to your company. If you’re, if you’re looking to build a company for five or 10 years and then sell it. If you’ve got IP assets, that could be the primary value of your company depending on what type of business it is. So there’s that aspect of it too, but yes, you do have to maintain it. If you have enforcement issues out there, if there are infringements, obviously you don’t want to ignore them, but that’s another expense, right? So you know, the first step is going to be contacting that person to let them know that they’re infringing on your IP, whether that’s trademark, copyright or patent. Then maybe you get a lawyer involved to send a cease and desist letter and open a dialogue of negotiation. And if that doesn’t work, unfortunately the next step, there are some procedural steps you can take within the USPTOthat don’t involve outright litigation. There’s some post-grant procedures that you can go throughthe details of which are probably too much for your segment today. But you’re going to have to engage in some sort of enforcement mechanism, whether that’s through the patent office or through a traditional litigation means if you’ve got people out there infringing, that’s how you, that’s how you protect it.

Shontavia Johnson (40:10):

Yeah. You have to be the police too on the back end. And you know, the internet has made it interesting. Right? Because you can find people more easily, but that means you have to do something when you do find that activity and that part can be tough.

Nichole Biglin Hayden (40:27):

Right. Yeah.

Shontavia Johnson (40:28):

Well thank you so much for being here Nichole.

Nichole Biglin Hayden (40:31):

This has been fun. Really fun and good to see you.

Shontavia Johnson (40:32):

Do you have other thoughts you want to leave people with about IP or, or any other remarks about or for startups or for entrepreneurs or for, you know, anybody sitting on their couch right now as an idea.

Nichole Biglin Hayden (40:49):

I mean honestly it kinda goes back to the story I was telling you at the beginning of the segment about following your gut. And I think, I am not a person that is largely intuitive. But occasionally that intuitive pull hits me and follow it. If you feel a pull to do something, there’s a reason, you know, there’s a reason you’re supposed to be doing that. There’s a reason you’re supposed to be talking to that person. There’s a reason you’re supposed to be applying to law school or whatever the case is or starting that business or you know. Follow your gut.

Shontavia Johnson (41:23):

Awesome. Wonderful way to end the show. Thank you so much for being here. Thank you to all of you for watching and listening. If you have questions, this episode or the other episodes, please feel free to reach out to me at askshontavia@gmail.Com. Make sure you subscribe to the show. Make sure you like this episode. Please leave me some comments to let me know you’re out there and I look forward to next week’s episode. Thank you so much Nichole.

Shontavia Johnson (41:58):

Thank you so much for listening to this episode of The Shontavia Show. If you enjoyed this episode, please be sure to like, subscribe and leave a comment wherever you’re listening. You can find me on social media everywhere, Facebook, Instagram, Twitter, LinkedIn, and wherever else @ShontaviaJEsq. You can also visit me at shontavia.com to find a transcript of this episode along with other show notes. While you’re there, please be sure to subscribe to my email newsletter.

Shontavia Johnson (42:29):

The information shared in this podcast and through my other platforms is designed to educate you about business and entrepreneurship and I love to do this work. While I am a lawyer, though, the information I provide is not legal advice and does not create or constitute an attorney client relationship.

Shontavia Johnson (42:47):

The Shontavia Show is a LVRG Incorporated original. The show is recorded on site in South Carolina and produced at Sit N Spin Studio in Greenville, South Carolina. Original music and sound design is by Matt Morgan and Daniel Gregory. Mixing and mastering is by Daniel Gregory and the video is by GVL Media.

#22: Three Tips for Becoming an Academic Entrepreneur

#22: Three Tips for Becoming an Academic Entrepreneur

There are a lot of folks out here who want to get creative with their careers. Nowhere is this more true than with academics.

University professors are oftentimes perfectly situated to leverage the #sidehustlelife.

You’re doing research, already seen as an expert in your field, and regularly speaking in front of crowds–all good things when you’re looking for multiple streams of income as a speaker, consultant, or public intellectual, right?

On this #ThursdayThoughts episode of the Shontavia Show, I answer a question from a faculty member who wants to take advantage of his position to become an “academic entrepreneur” while keeping his day job at his university.

I provide three suggestions on how to do this–obviously I didn’t go through EVERYTHING but I think we covered a lot of ground.

My basic suggestions:

(1) Read your university’s conflicts of interest policy;

(2) Create an easy-to-digest message; and

(3) Position yourself as an expert on your own platform and on other people’s platforms.

Show Highlights

00:56 BJ’s question about establishing yourself as an academic entrepreneur

03:02 Tip #1: Read your university’s conflicts of interest policy

04:54 Tip #2: Create an easy-to-digest message

05:37 How the COMPASS Message Box can help you create a clear, public message

07:51 Leveraging TheConversation.com to get published in places like TIME, US News, Newsweek, Scientific American, and elsewhere

09:44 Tip #3: Position yourself on your platform and others as an expert in your field

For more, check out the full episode below.

Show Notes

Build a website you’re proud of in 9 steps: https://shontavia.com/build-a-website-youre-proud-of-in-8-steps/

The Message Box by COMPASS: https://www.compassscicomm.org/message-box-workbook

The Conversation: https://theconversation.com

My articles on The Conversation: https://theconversation.com/profiles/shontavia-johnson-203059/articles

The OpEd Project: https://www.theopedproject.org/

Help A Reporter Out (HARO): https://www.helpareporter.com/

Questions and Action: Building your academic entrepreneur brand

 After you’ve had a chance to watch the video, I’d love to hear from you in the comments section!

Please answer the questions relevant to your current situation:

1. Have you pitched yourself to The Conversation? If you’re wondering how to craft a successful pitch, check out The OpEd Project (link above).

2. Do you own a platform where you can showcase your work, like a website? If not, check out my article about creating a website you’re proud of to get started.

Please give as much information as you can in response to these questions. I’d be happy to share more tools and resources that help you get what you want. 

Check out the show notes at the end of this page for a few resources from this episode.

Thank you so much for joining me on this roller coaster of an experience.

I am eternally grateful that I get to do this work with creators, entrepreneurs and innovators like yourself.

                                                                  Let’s continue to make it happen,

#22: Three Tips for Becoming an Academic Entrepreneur

Episode 22: Three tips for Becoming an Academic Entrepreneur (transcript)

(00:04):

What’s up everybody. I’m Shontavia Johnson and this is another episode of the Shontavia Show, where I want to inspire you to build a brand, business and life that you love.

(00:15):

So today is Thursday and y’all know what I like to do on Thursday. I have thoughts about so many things. I hope you have questions. If you have questions, I’d love to use my Thursdays to answer your questions. If you have a question you can reach out to me at askshontavia@gmail.com.

(00:29):

So let’s hop into today’s question, which is about the faculty entrepreneur. This is a little bit of a different question and I love it because you know some of y’all know I spent many years as a faculty member and I’m excited that I get to revisit what I was doing back then and how I might be able to help folks.

(00:54):

So here’s the question.

(00:56):

Dear Shontavia, thanks so much for the work that you do. I’ve watched your rise from fellow to professor to higher ed administration with great interest. I am a new faculty member at a public university and I want to be an academic entrepreneur. I’d like to share my research outside of the ivory tower. I want to market and brand myself as a public intellectual of sorts. Think Marc Lamont Hill or Melissa Harris. Perry. Any tips? Thanks so much. BJ.

(01:33):

Alright BJ. So this is awesome. Thank you. I don’t know you, BJ, I don’t think, but thank you for the kind words. Thank you for letting me know that somebody’s watching even when I think nobody’s watching, somebody’s watching.

(01:46):

So I have a lot of thoughts about this. Like BJ mentioned I started out teaching in a temporary capacity as a fellow. I moved to a law school and did that for many years and now I sit in a higher ed administrative position.

(02:05):

And, I’ve got a lot to say about this topic. I’m gonna try to keep it brief though.

(02:09):

So if you are an academic and you want to be an academic entrepreneur or a faculty entrepreneur in the sense that you want to build a personal brand and start receiving consulting opportunities and being in national media publications and that kind of thing, this is the question for you.

(02:29):

Now, if you’re talking about using your research to spin out technology, I don’t think that’s what BJ’s asked here. Maybe I can cover that in a future episode or something.

(02:38):

But this answer is really for the faculty member who wants to brand themselves. Maybe bring in some new streams of income, maybe at some point do this kind of stuff full time.

(02:48):

So my first tip, I’ve got two or three. Let’s stick with three. I’ve got three tips that I think will be helpful when you are at the very, very start of your academic entrepreneur journey.

(03:02):

(1) So number one, please, please, please read your university conflicts policy or it might be called a conflicts of interest policy. This will tell you what you actually are allowed to do by your university or institution. And most of, I mean maybe some small schools don’t have conflicts of interest policies. Many probably do though. But a conflicts of interest policy basically sets the rules for how you can engage outside of the university and outside of your traditional teaching/scholarship/service framework that most faculty members at universities have to adhere to.

(03:45):

So universities already set up the rules to let you know what you can and cannot do. So that’s the first thing. Do that. Find your conflicts of interest policy and read it. Why is this important? Because if you don’t follow the rules, maybe you get fired, especially if you’re not tenured yet.

(04:04):

You get yourself in a lot of trouble. And, I can talk about this a little, but you don’t want to be in a position where you’re doing work and you create something really dynamic and you want to use it in your own business, but the university owns it or owns the intellectual property because you’ve done it in the scope of your employment as a university employee.

(04:29):

So that’s the first thing. Read your university’s conflicts of interest policy. If you have questions about where to find it, sometimes it might sit in like a provost’s office. Sometimes it might sit in like a research division or something. Maybe it sits, in the president’s office, who knows? But you probably have a conflicts of interest policy to look into and consider.

(04:54):

(2) Number two, create an easy-to-digest message. Alright, so to my fellow academics, I love y’all, but sometimes you are so hard to understand.

(05:05):

You have done this really dynamic, engaging research, which I love. You’ve written academic journal articles, you’ve written scientific articles, you’ve done research papers, you’ve done posters, you’ve done all this really amazing stuff, but nobody understands it out in the world.

(05:24):

And if you really want to translate your message out more broadly, you are going to have to create a very narrowly focused message. I won’t even say narrowly focused, but an easy to understand message.

(05:37):

And some of the best guidelines I’ve seen about this, when you are an academic looking to translate your work publicly, it’s something that I’ve seen Michigan State do. They have like a whole office devoted to faculty communications and helping people get their research and their ideas out more broadly outside of the academy. And some faculty members at Michigan state created something called the COMPASS Message Box and I’ll drop a link in the show notes for those of you who are interested in the COMPASS Message Box. But I’ve read it, I’ve used it myself and I think it is incredible. Because sometimes it is hard for academics to bring the message to a level that is appropriate for the public.

(06:27):

This COMPASS Message Box tool helps you do this. It’s basically a diagram with a few different parts and it walks you through what it should look like when you take academic research and translate it into the public.

(06:42):

And while I won’t go through every piece of it right here, I’ll just mentioned the categories that the COMPASS Message Box says you should consider and assess and address when you are translating your research for the public.

(06:59):

So the issue, like what is the big picture issue that people care about? Is it global warming? Is it entrepreneurship in the blockchain sphere? Is it podcasts for mommy blogs? I don’t know. Whatever the specific issue is, you start by identifying what is the thing that your target audience cares about. Then they ask you to consider what the problem is, what the solutions are, what benefits there are to your research, your approach to all of this and the “so what.” Who cares?

(07:39):

What is it that your information and advice will provide to the public? So the COMPASS Message Box, I think, is a great tool for you to start creating an easy to digest message.

(07:51):

Another tool or resource I would highly, highly recommend is something called The Conversation. theconversation.com is a digital platform. It’s a nonprofit. And The Conversation’s, frankly, one job, is to take academic research and information from professors and other people who work in universities, have those folks write public facing articles and then they publish them on The Conversation website and then push them to larger publications.

(08:24):

So like Time, CNN, Smithsonian Magazine, Scientific American, Newsweek, those types of media, websites and newspapers will look for articles to republish from The Conversation.

(08:40):

And one of the things I learned doing articles for The Conversation–I’ve probably written, I don’t know, 10 to 20 articles for The Conversation–is they always require that you write to the level of a smart high school student, like a 10th grader or an 11th grader.

(08:58):

And even when you write the articles they make you write it within a software program that tells you if you’re writing too smart or if your writing is not in that sweet spot.

(09:09):

And it really helped me frame all of the work I’m trying to do for the public. Because I would start out using these big words that, you know, people outside of universities don’t care about, even if they know those words and know what they mean. It helped me really start to create a public facing message.

(09:29):

So when all else fails, when you’re talking and speaking and writing publicly, write to a level of smart high-schooler. And take a look at that COMPASS Message Box. So that’s my second suggestion, creating an easy to digest message.

(09:44):

(3) And then the third message or the third suggestion I have is to start positioning yourself online on your own platform, and other people’s platforms, as an expert.

(09:57):

So I mentioned The Conversation. They’ve been amazing for me. Like I’ve appeared in just about every major publication in the US and a couple abroad.

(10:06):

I’ve been interviewed in some Australian news groups. I’ve been interviewed by a Russian entity, was interviewed by a couple of different news organizations in the UK.

(10:22):

I actually, a couple of years ago, was headed to the UK for a completely unrelated thing. I got there and apparently I’d been on the radio that morning and the people who picked me up had heard me on the radio, the people who picked me up from the airport.

(10:34):

So you know, The Conversation really has been amazing for me. It led to my TEDx talk. It led to me being invited to present on a panel at SXSW a couple of times. So I’d recommend positioning yourself through not only The Conversation, The Conversation is amazing, but also on your own platform.

(10:54):

So if you don’t own your name.com, whatever your name is or whatever catchy phrase or whatever you want to use, I would recommend buying that domain name and starting to put yourself out there that way.

(11:08):

And, trying to appear on other people’s platforms. If it’s The Conversation, if it’s, you know, other entities or agencies start positioning yourself as an expert.

(11:20):

I’ll drop a link in the show notes to some links, some other suggestions of places where you can find opportunities to position yourself as an expert. Because there are a couple out there where you can really start to position yourself as a public–you mentioned BJ–public intellectual.

(11:39):

So I hope that answers your question. I hope for the other academic entrepreneurs out there, I’ve given you some some things to think about. To everybody else, I hope that it gives you also some things to think about.

(11:53):

If you have questions about this, if you’d like my thoughts about something else, reach out to me at askshontavia@gmail.com. Thanks for listening.

#21: Why you need a tax ID number and how to get one

#21: Why you need a tax ID number and how to get one

So this won’t be the most exciting episode of the Shontavia Show, but it definitely one of the most important for your business! The Internal Revenue Service (yes, the IRS) does not play about it’s money, and I want to make sure we both stay out of trouble with them!

The IRS uses a code called an employer identification number (“EIN”) to identify businesses/employers who are required to file various business tax returns. This is kind of like a social security number for a business.

Some businesses are required by law have them, while others don’t have to have them but can opt in to receive one.

Don’t play with Uncle Sam

This episode is about how to decide whether you need a tax ID number and where to go file your application to get one.

The basics are that sole proprietors and single-member LLCs without employees don’t generally have have a tax ID number, though there are some exceptions to this rule that I cover in the episode.

In addition, even if you don’t have to have a tax ID number, I talk about multiple reasons why you might want to consider getting one, even if you’re a sole proprietor or an LLC of one (you) without employees.

Here are some highlights from the episode:

01:24 Why you probably need a tax ID number – thoughts from my conversation with a business law expert

05:14 How to determine when the law requires you to get a tax ID number

06:22 The benefits of having a tax ID number, even if the law doesn’t require it

10:32 How to get a tax ID number (it’s free and you can probably do it yourself!)

 For more, check out the full episode below.

Show Notes

Choosing a Business Structure: https://shontavia.com/choosing-a-corporate-structure-advice-from-a-business-law-expert/

How to get a tax ID number for your business: https://shontavia.com/tax-id-numbers-biz-better-have-my-money/

How and Why to Avoid Commingling Personal and Business Funds: https://blogs.findlaw.com/free_enterprise/2017/03/how-and-why-to-avoid-commingling-personal-and-business-funds.html

Do You Need an EIN?: https://www.irs.gov/businesses/small-businesses-self-employed/do-you-need-an-ein

Apply for your Tax ID number/EIN online: https://sa.www4.irs.gov/modiein/individual/index.jsp

Paper Application for Employer Identification Number (Form SS-4): https://www.irs.gov/pub/irs-pdf/fss4.pdf

Questions and Action: Decide whether you need a tax ID number

 After you’ve had a chance to watch the video, I’d love to hear from you in the comments section!

Please answer the questions relevant to your current situation:

1. What kind of business structure do you have? Are you required to have a tax ID number?

2. Even if you aren’t required to have a tax ID number, are you comfortable with sharing your personal social security number with business partners, collaborators or strangers?

3. Do you plan to open a business bank account? Does your bank require you to have a tax ID number?

Please give as much information as you can in response to these questions. I’d be happy to share more tools and resources that help you get what you want. 

Thank you so much for joining me on this roller coaster of an experience.

I am eternally grateful that I get to do this work with creators, entrepreneurs and innovators like yourself.

                                                                  Let’s continue to make it happen,

#21: Why you need a tax ID number and how to get one

Episode 21: Why you need a tax ID number and how to get one (transcript)

(00:00):

What’s up, y’all. Welcome to The Shontavia Show, where my goal is to help you start a business based on your life’s vision. This ain’t gonna be your daddy’s business advice. I’m laser focused on entrepreneurship in the 21st century, vision and breaking the traditional mold. If you can get with that, you can get with me, be sure to visit shontavia.com for more episodes, blog posts, and other content. Thank you for listening. The show starts now.

(00:28):

Hey everybody. I’m Shontavia and this is another episode of The Shontavia Show, where I inspire you to build a business based on the vision you have for your life. Today’s episode is a topic that is about as dry as it comes, tax ID numbers, but tax ID numbers are a necessary part of your business, y’all, and so we are going to talk about it today.

(00:52):

Let me preface this though by saying I am not a tax lawyer. I am not a tax professional. My goal here is to help you understand how a text ID number works and some considerations for when you should get one for your business. Everybody’s case is different. So if there’s something special or unique or different about you, or if you have really nuanced questions about your specific type of business, you really, really need to find a tax professional, talk to your accountant or somebody like that.

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But let’s get into it because tax ID numbers really do support a lot of the things you’re going to do in your business so long as you’re making money. And I want to make sure you have all the right information and education about that. So a little while ago I interviewed a friend of mine who is also a business law expert. Her name is Carliss Chatman. Shout out to Carliss wherever she is right now.

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She is a dynamic lawyer, dynamic advisor and counselor for small businesses. She is an expert in this space and we talked about the types of business entities and business structures people need and how all of this works with respect to your money and what happens to your money when you operate in a business.

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Carliss has been doing this work a long time. I’ll drop the link to that discussion in the show notes. It has been a really popular video for me and it’s been really popular with my clients who are thinking through a lot of different things and Carliss has been doing this work in the U.S. And around the world. She’s got just amazing expertise and her general opinion–we had about a one hour discussion–her general opinion was that if you are selling anything to anybody at any time, you need a registered business and a tax ID number, and I agree with her.

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I feel exactly the same way and that is because you’re protected from liability if things go wrong and it helps with record keeping when, like every American in this country, you’re filing your taxes, I figured it would be a good idea to take a step back and have a shorter conversation on the show and through the podcast about tax ID numbers and how you can get one for your business and when you need one.

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Getting a tax ID number is pretty straightforward. It’s a lot more straightforward than people think, but we’re going to start from ground zero assuming you know nothing at all about this stuff.

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So once you’re committed to creating a business, the first thing you have to decide is, or one of the first things really, is where you’re going to incorporate and whether you’re going to incorporate or register. So incorporate or register your business with the secretary of state or the equivalent office in the state that you choose.

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If you decide to file an application to register or incorporate your business as I think you should, it shouldn’t take long for you to hear back about whether your application is approved. So in the state where I live in South Carolina, it’s all done online and you hear back automatically if there are no issues with your application, unless you’ve made some glaring error or whatever, voila.

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At that moment you are now the owner of a business. You’re officially a registered business owner and once you do that, the next step is pretty straight forward in getting a tax ID number. You also see that referred to as a tax EIN or a TIN tax employer ID number. And you get that from the IRS.

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So you might hear me say tax EIN or tax ID number talking about the same thing. So the tax ID number is kind of like a social security number for business. It lets the IRS know where it needs to go to collect it’s tax dollars. And y’all know the IRS wants its money, don’t play with them y’all. But you do need one to ensure again, that you’re protected from liability through your business and for recordkeeping purposes. And definitely to ensure that you’re not running a foul of any IRS laws or rules that can get you in trouble later.

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So how do you know when you need a tax ID number? Because it’s not required for everybody. There are a couple of different situations where you have to have one, a few different situations where you don’t have to have one. But from my perspective it would helpful to consider having one just about all of the time.

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So let me talk a little bit about what the considerations are and then how you can start to make the decision about whether or not you need one. So a tax ID number is not required if you operate a sole proprietorship. So if you haven’t incorporated or registered your business and you’re just out there operating in your own name, you’re a sole proprietor, you don’t need a tax ID number unless you have employees.

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Same with an LLC. If it’s just you who is registered an LLC with the secretary of state or the equivalent office, you don’t have to have a tax ID number, particularly if you don’t have any employees, you just use your own own social security number as your tax ID number.

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Now this can be a little bit of a challenge. So this happened with me a few months ago. I was speaking at a university and they sent me a form, and the form was like a vendor form or something and I had to give them information because they were going to reimburse me for my travel expenses and they were going to pay me some amount of money.

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And there was a question there that said, you know, if you have an employer ID number or tax ID number, please put that here. Or if you don’t give us your social security number. And they wanted me to email the form back to them, or fill it out online or fax it back to them. So you know, I didn’t want to put my social security number on this form that I’m just going to send back to somebody by email or fax or whatever.

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Thankfully I have a business where, you know, when I travel I do this stuff as part of my business, so I used my, my tax ID number and I didn’t have to share my social security number by email with a stranger.

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So having that tax ID number was really helpful for me in that situation. Even though at that time I was an LLC, just a single member LLC by myself. It’s not so true anymore. I don’t have an LLC anymore, but I did at that time.

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So, if you are a sole proprietor or an LLC with no employees, you don’t actually have to go out and get a tax ID number. A tax ID number is required even if you’re a sole proprietor or not, whether your sole propriety or not, if you have employees, if you have a solo 401k retirement plan or a Keogh retirement plan, if you’re going to buy or inherit an existing business, even if you operate as a sole proprietor, if you buy or inherit a business, you need a tax ID number.

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If you incorporate or form a partnership or an LLC when you have employees, if you file for bankruptcy, you’d need a tax ID number under those sets of circumstances. And like I was saying, even if it isn’t required, there’s some times where you probably still want to have one and I’ll give you just a couple of examples.

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The first was mine where you know, maybe you’re out speaking, you’re going out doing things, even if it’s just you and an LLC by yourself or as a sole proprietor. You don’t want to email your social security number all around. Some other reasons: oftentimes banks require you to have an EIN, a tax ID number before they’ll let you set up a bank account. Sometimes you can’t get a business credit card without a tax ID number. That is more and more the case. It’s also helpful to have a tax ID number when you’re applying for business permits and licenses and you know, keeping that social security number private.

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That is, you know, a big one because you don’t want to be handing out your social security number all the time. You want to protect your privacy.

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Also, and this is something I’ll drop a link in the show notes with the conversation with me and Carliss, another thing you really have to be careful of is not mixing your business money with your personal money. You want to keep your personal funds and your business funds separate for a number of reasons that go a little bit beyond the scope of the discussion here, but definitely in that conversation I had with Carliss that I mentioned. So for other legal reasons, keep your business money and your personal money separate.The tax ID number, will help you do that.

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So again, if you’re a sole proprietor or an LLC with no employees, you don’t have to have a tax ID number. Corporations, partnerships, LLCs with employees do have to have a separate tax ID number and it’s a good idea to do it even when it’s not required.

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So how do you get one? Once you’ve decided you need one or you want one, how do you go out and get one? So the IRS has a website where you literally just go, it takes 15 minutes or less. In fact, you only have 15 minutes from the moment you click that you want to apply for a tax ID number online.

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You just fill out an application online that’s got some questions. And most people I would say, or maybe many, I don’t know about most, but a lot of people feel comfortable doing this on their own, applying for a tax ID number on the IRS website by themselves. There’s some basic questions you have to answer, including your name, the name of your business entity and mailing address when the business started, the type of business you have, there are a few questions about employees, the closing month of your accounting year, what you’re selling…

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And they’re just basic questions like that. And again, it can literally only take 15 minutes. There’s a fee at least as of the recording of this podcast, which is at the end of 2019, you have 15 minutes to complete it and you can’t save the application and come back later.

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So you really have to be ready to do it at that time. Once you do that, within minutes you get an email from the IRS saying, here’s your new tax ID number. You download and save everything and then you’ll get a letter in the mail confirming everything. So this online process is available to all entities with the principal office or place of business or legal residence in the United States and in U.S. Territories. If that is not you, then you can apply online, but there are a couple of other ways fax mail, and if you are, you know, not comfortable with fax and mail, you can actually do it by phone and there’s a form that you fill out.

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I’ll drop a link in the show notes so you can see what it looks like. And just the other final thing to notice, you are limited to one EIN per responsible party per day. Responsible party just means the person who owns or controls the business.

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And that’s it. That is it. Voila. Once you’ve done that, you are well on your way to having a legitimate business. You’ve got a registered or incorporated business, you have a tax ID number.

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If you have questions about this whole concept of tax ID numbers, head over to shontavia.com, leave a comment, ask a question about this episode. You can engage with me and other entrepreneurs who are also engaging on the site. Read more about this topic related to businesses and incorporation and registration and that kind of thing and find other resources. Thanks.

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Thank you so much for listening to this episode of The Shontavia Show. If you enjoyed this episode, please be sure to like, subscribe and leave a comment wherever you’re listening. You can find me on social media everywhere, Facebook, Instagram, Twitter, LinkedIn, and wherever else @ShontaviaJEsq. You can also visit me at shontavia.com to find a transcript of this episode along with other show notes. While you’re there, please be sure to subscribe to my email newsletter.

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The information shared in this podcast and through my other platforms is designed to educate you about business and entrepreneurship and I love to do this work. While I am a lawyer, though, the information I provide is not legal advice and does not create or constitute an attorney client relationship.

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The Shontavia Show is a LVRG Incorporated original. The show is recorded on site in South Carolina and produced at Sit N Spin Studio in Greenville, South Carolina. Original music and sound design is by Matt Morgan and Daniel Gregory. Mixing and mastering is by Daniel Gregory and the video is by GVL Media.