A. Intellectual property is an asset that is owned by individuals or businesses which has the nature of a “right” as contrasted with real property that one can see and touch.
A. Patents, trademarks, copyrights, and trade secrets are the main types of Intellectual Property (“IP”).
A. Patents provide the right to exclude others from practicing the invention (making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States) claimed in the patent for a limited term of twenty years from filing date (utility patents and plant patents) or fourteen years from the issue date (design patents).
A. A patent must be applied for by submitting a patent application document (consisting of a specification, claims, and necessary drawings) to the United States Patent & Trademark Office (“USPTO”) and by successfully prosecuting the patent (i.e. convincing a USPTO examiner to allow the case). During the course of prosecuting the patent, the claims of the patent can be amended, as long as the specification and drawings of the patent provide support for the amendment.
A. The patent right to exclude others starts only when the patent is issued by the USPTO.
A. In addition to differences in the term as stated above, design patents protect the ornamental appearance of an invention, while utility patents are directed to functional and useful aspects of an invention.
A. The law provides that any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof can be patented.
A. A utility patent application must contain how to make and use the invention. It is helpful to provide the attorney with this information, along with attributes of the materials that are preferred and alternative materials that will work in fabricating the invention, sketches or drawings of the invention, and any prior art that is known.
A. Each invention is deemed to be one of the “useful arts.” The body of knowledge and literature which was known prior to the invention is generally referred to as prior art.
A. The laws of the United States relevant to patents are codified in Title 35 of the United States Code. An invention must be useful, novel, and non-obvious to be entitled to a patent. Section 101 of Title 35 sets forth the utility requirement, Section 102 the novelty requirement and Section 103 the non-obviousness requirement. If an invention is fully known to the world due to disclosure in the prior art (usually a prior patent or publication) it is not novel. Non-obviousness is a more difficult concept, but generally is a circumstance where an invention is deemed to be derivable by one of ordinary skill in the relevant art from the prior art as a whole.
A. A pre-filing patent search may provide you with an indication of the prior art in your inventive field.
A. A patent search is not required, but it is often desirable for various reasons. In addition to on-line resources for patent searching, there are individuals and companies that provide such services for a fee.
A. You should use caution in any pre-filing activities that disclose your invention to others. While there are a number of exceptions that will not count against an inventor, under present U.S. law, an inventor has one year to file a patent application after certain pre-filing activities. However, many foreign countries do not grant the one year grace period.
A. There is no such thing as a single world-wide patent. However, most important countries in the world have patent systems and one can apply for patents in those countries. A convenient way to apply for such patents is through the PCT which stands for “Patent Cooperation Treaty.” One can file a single application to apply for a patent in countries that are members of the PCT. The PCT procedure has an international phase and a national phase. In the international phase, a search is conducted and a preliminary report generated concerning possible patentability of the claims. The patent applicant then has the option to enter the application in the national phase of the process. At this time, the patent application review is taken over by the individual countries in which the national phase is filed. There are some regional patents that cover more than one country. A major system is the European Patent system. If a country is not a member of the PCT, then any patent application must be filed directly in that country.
A. Generally, any foreign patent application or PCT is due within 12 months of the first US filing date. Because calculation of due dates can be tricky, it is best to obtain professional advice on this matter.
A. A provisional patent application is a utility patent application that is often less formal than a non-provisional or regular application. A provisional patent application establishes a filing date for all it discloses. Within one year of filing the provisional patent application, one must file a regular application claiming priority to the provisional application, or the provisional application will expire.
A. Provisional applications are useful in many situations, and a discussion as to what type of filing is right for you should be made in consultation with your attorney.
A. This is a separate category of patent concerning invention or discoveries related to asexually reproduced distinct and new varieties of plants, other than a tuber propagated plant or a plant found in an uncultivated state. If granted, this type of patent protects the inventor’s right to exclude others from asexually reproducing, selling, or using the plant so reproduced. Please note that some plants and plant-related inventions may instead qualify for utility patent protection.
A. Patent pending is a designation which one who has filed a provisional, regular or design patent application may communicate to others.
A. The U.S. requires periodic maintenance fees to be paid to keep utility patents in force for the entire twenty year period from the priority filing date. At present, design patents do not require maintenance fees.
A. The claims of the patent measure the metes and bounds of the intellectual property right to exclude others. To determine if another party is infringing a patent, one must determine the proper meaning of the claims, called claim construction. After the meaning of a claim is determined, the next step is to determine if each element in the claim can be found in an accused product or process, either literally or according to the doctrine of equivalents.
A. The possible remedies are an injunction and damages. An injunction will stop the other party from continuing to infringe. Damages, which are calculated either as a reasonable royalty or lost profits, may be awarded as well.
A. Generally, courts are reluctant to do so. However, in certain cases of willful infringement or vexatious litigation which amount to an exceptional case, a court may award up to triple damages and attorney fees.
A. Some attorneys do take certain cases on a contingency basis. Under such an arrangement, the lawyer may take his or her compensation as a percentage of funds you obtain as damages if you win the case, or funds that you obtain should the case settle prior to trial.
A. Trademarks and service marks identify and distinguish indicate the source or origin of proffered goods or services. They are possibly perpetual in duration.
A. In the United States, rights are acquired through use. In many other countries, rights are acquired through registration. In the latter situation, the first to file an application will have an advantage over the first to use.
A. Federal registration of trademarks and service marks provides notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
A. Yes, the USPTO provides an on-line filing system that permits trademark owners to file their own applications. However, there are many nuances to presenting the trademark and the goods and services and prosecuting the application so you may want to seek professional advice. There may or may not be opportunities to amend an application after filing, depending on the desired amendment.
A. Conducting some type of trademark search is usually desirable. There are various ways to search a mark, and various levels of expense depending on the client’s objectives.
A. Trademarks and service marks are classified by the US and other countries throughout the world by the goods and services they are used in connection with. The fees charged for the application are per classification or class.
A. The time varies, but since the application will be assigned to an examiner from the USPTO to determine if the requested trademark is entitled to registration, the time period may be six months to a year or longer.
A. Yes. The USPTO provides for both intent to use and use based applications.
A. No. You may only use ® next to a registered trademark. However, it is permissible to use ™ or SM adjacent an unregistered trademark or service mark.
A. The United States is a member of a treaty called the Madrid Protocol. The Madrid Protocol may be used to register a trademark in numerous countries. Europe has a regional trademark called the Community Trademark, or CTM. In addition, applications may be presented to individual countries. If the country is a member of another major treaty system called The Paris Convention, the country will recognize the U.S. filing date as its filing date if the mark is filed in the country within six months of the U.S. filing.
A. We have contacts with numerous reputable firms throughout the world that conduct business with the various trademark offices on behalf of our clients.
A. You may be entitled to enforce your trademark rights in federal court whether your trademark is registered or unregistered. An IP attorney can advise you with respect to these matters.
A. The basic test of trademark infringement is whether an accused designation is likely to cause confusion with a registered mark. Many courts have decided cases over the years which may have a bearing on your case. Again, this circumstance should be brought to the attention of your legal counsel.
A. A copyright protects an original artistic or literary work.
A. The United States Copyright Office is housed within the Library of Congress. Information and on-line registration is provided at www.copyright.gov. Unlike patent and trademark applications, copyright applications are often completed by the owners who follow the instructions provided.
A. No. A copyright exists in a work when it is fixed in a tangible medium. For example, when a singer records a song, the performance is fixed in a tangible medium, such as a record or CD. When a writer puts words on paper, the words are fixed in a tangible medium, the paper. At that time, the creator may use the © symbol. A copyright notice is the symbol, the year, and the name of the owner, e.g. © 2011, Jane Doe Corporation. While it is not necessary to provide the copyright notice, it may be desirable.
A. A copyright should be registered if one wishes to use the federal copyright laws to enforce the copyright in a United States court of law and to obtain statutory damages.
A. Trade secret law is defined under state law. In Texas, whether a trade secret exists is governed “by weighing six factors set forth in the original Restatement of Torts in the context of the surrounding circumstances:
(1) the extent to which the information is known outside of the business;
(2) the extent to which it is known by employees and others involved in the business;
(3) the extent of measures taken to guard the secrecy of the information;
(4) the value of the information to the business and to its competitors;
(5) the amount of effort or money expended in developing the information;
(6) the ease or difficulty with which the information could be properly acquired or duplicated by others.” See Tewari De-Ox Systems, Inc. v. Mountain States/Rosen, L.L.C., (5th Cir. 2011)
A. Trade secrets provide an advantage to the owner over competitors that do not know or use such secrets. The information should be guarded, and employee policies set in place to maximize the possibility that such secrets will be kept internal to a company.
A. After establishing (1) that there was a trade secret, you must be able to demonstrate (2) that the trade secret was acquired improperly, through either a confidential relationship or under an obligation not to disclose it. See Hyde Corp. v. Huffines, 314 S.W.2d 763, 769 (Tex. 1958) (“One who discloses or uses another’s trade secrets, without a privilege to do so, is liable to the other if (a) he discovers the secret by improper means, or (b) his disclosure or use constitutes a breach of confidence reposed in him by the other in disclosing the secret to him.”) and (3) use without authorization from the plaintiff.
A. They can be. For example, a business may choose to try to keep a formula secret forever rather than disclosing it in a patent in exchange for a limited time of exclusivity. Whether to pursue a patent instead of maintaining a trade secret is a decision point. If a product or formula can be “reverse engineered” or otherwise properly discovered, the trade secret no longer exists and the owner may have no cause of action against another that uses it.
A. An audit of your company’s employment documents, confidentiality agreements with vendors and other parties, and procedures may help to reduce the chances that your trade secrets will be compromised.
For additional information on patents or trademarks, please see www.uspto.gov.
For additional information on international patents and trademarks, see www.wipo.org.
For additional information on copyrights, please see www.copyright.gov.