Intellectual Property Law

How can I get a patent?

A patent may be obtained on any new and useful man-made invention. In other words, anything under the sun made by man which is new and not obvious in view of what has been known or done in the past is patentable per the United States Supreme Court. In order to obtain a patent, the invention must not only be new but also not obvious in view of what has been done in the past.

There are several types of patent applications that may be filed including: Utility Patents, provisional patents and design patents.

What is a Utility Patent Application

What is normally referred to as a patent application is sometimes referred to by patent practitioners as a Utility Patent Application. Such an application may be filed for any new and useful process, machine, manufacture or composition of matter. The term of a patent issuing on such an application is twenty years from the filing date.

What is a Provisional Patent Application

A Provisional Patent Application may be filed for the same subject matter as a Utility Application. However, a Provisional Application is never examined by the U.S. Patent and Trademark Office and never issues as a patent. It automatically expires one year after its filing date. However, it is a useful means of establishing an early filing date, particularly where the inventor may be about to use, sell or disclose his or her invention in such a manner that it could become a prior art problem either with respect to the inventor filing a U.S. application or a foreign application. The Provisional Application is also useful in establishing an early filing date where there is a “race” to the Patent Office regarding the development of new lines of technology in a particular industry. A regular Utility Patent Application may be filed within one year and claim the benefit of the early filing date of the Provisional Application.

What is a Design Patent Application?

A Design Patent Application is useful for protecting the ornamental aspects or the appearance of an article of manufacture. A Design Patent does not protect functional concepts. An example may be the filing of a Design Application to protect the ornamental appearance of a new chair, but not a functional feature such as improved back support or adjustability.

A patent resulting from a U.S. Application only provides protection in the United States. If protection is desired in foreign countries, an application must be filed in the foreign countries in which protection is desired directly, or through the Patent Cooperation Treaty (PCT) route. If such an application is filed within one year of the U.S. filing date, the U.S. filing date may be accorded to the foreign application. In other words, it is possible to get the benefit of your U.S. filing date, if certain steps are taken and an application is filed in a foreign country either directly or by means of a Patent Cooperation Treaty Application within one year of the U.S. filing date.

What is a trademark?

Trademarks, service marks and trade dress protect the use of a “mark” in connection with goods and services.

Trademark rights in the United States arise through use of a mark in commerce. In many foreign countries the first to register the mark is considered the owner of the mark.

Do you need to register your trademark?

Federal registration of trademarks in the United States is a critical step in brand protection and enforcement.

A federal trademark registration on the Principal Register is prima facie evidence of the owner’s exclusive right to use the mark in commerce for the goods or services set forth in the registration.

Another advantage of obtaining a federal registration is that the trademark Examiners in the Patent and Trademark Office become a first line of defense against others attempting to register your exact mark or even confusingly similar marks.

Further, many internet sites like Amazon, Etsy, eBay, iTunes the App Store are more likely to take action (or will only take action) against infringers if your mark registered.

What are the penalties for trademark infringement?

The penalties provided for infringement of a federally registered mark are quite substantial and can include recovery of profits made by the infringer, damages, costs, attorney fees and even the trebling of the damages found to have been incurred by reason of the infringement. Further, the court may order destruction of infringing articles and issue an injunction to forbid further infringing activity. A registered mark can also enhance the ability to stop the importation of goods bearing an infringing mark.

How do you protect your trademark in foreign countries?

The obtaining of a federal registration provides protection for the mark in the United States. If protection is desired in foreign countries or regions such as Europe in the form of a community trademark (CTM), the mark must be registered in those countries or regions. An international treaty called the Madrid Protocol offers a very efficient and cost effect means of obtaining trademark protection internationally.

What kind of trademarks can be registered?

Any word, name, symbol, device, or any combination, used to indicate the source of the goods or services can be registered as a trademark. An interesting example is smell as a trademark. Verizon Wireless, for example, owns U.S. Registration No. 4618936 for the “flowery musk scent” they plan to pump into some of its marquee stores.

However, certain marks may not be initially registerable on the Principal Register of the United States Patent and Trademark Office (and in many foreign countries), but may be registered only if they have acquired secondary meaning. Examples of such marks are marks which are merely descriptive, primarily merely a surname or geographically descriptive of the goods or services. It is often advisable to select a mark that is immediately protectable such as a “suggestive” that suggests something about the goods or services rather than a “merely descriptive” mark that immediately describes the product.

Do you have to do anything to maintain a trademark registration?

A U.S. Trademark Registration must be renewed every ten years. There is also a requirement that an affidavit be filed in the Patent and Trademark Office certifying that the mark is still in use between the 5th and 6th year after registration. Failure to file a renewal application or an affidavit of continued use results in the Patent and Trademark Office automatically canceling the registration.

What is a Copyright?

Copyright protection may be utilized to protect all of the writings of an author. Writings can include various forms of work other than text including artistic works such as sculptures, paintings and photography. Even software and computer programs are protectable by copyright as the writings of an author.

What is the term of a copyright?

The term of a copyright is the life of the author plus 70 years in the case of an individual. In the case of a corporation, the term of copyright is 75 years.

Do you need to use the copyright notice?

Although a copyright notice is not technically required to avoid a waiver of copyright rights, it is recommended that the copyright notice be placed on any work to be published or otherwise disseminated.

Do you have to register the copyright in your work?

Copyright rights exist immediately upon creation of a work of authorship (or in lawyer talk, immediately upon fixation of the work in a tangible medium of expression). In other words, registration is not required to have a copyright.

However, it is recommended that the copyright in any work of any substantial value be registered promptly. Certain additional remedies and advantages flow from the registration of a copyright, particularly where such a copyright is registered prior to copying by an infringer. Such rights include the right to recover damages provided by statute where proof of actual damages may be difficult. Other advantages include the ability to recover attorney fees as the prevailing party.