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Patents

Patent Kit

Our Patent Kit is available here in two formats:

Patent Kit in pdf format ( 136k)
Patent Kit in Microsoft doc format ( 58k)

What is a Patent?

A patent is a grant of a property right by the Government to the inventor in exchange for disclosing a patentable invention. A patent does not grant the inventor the right to make, use, or sell the invention, but does grant the right to exclude others from making, using, or selling the invention. Patents are granted for a term of 20 years from the date of filing the original application, (14 years for design patents) which may be extended only by a special act of Congress. After expiration of the term, the patentee loses rights to the invention.

Some persons occasionally confuse patents, copyrights, and trademarks. A trademark protects a word, phrase, symbol or design which indicates the source or origin of goods; a copyright protects the form of expression rather than the subject matter of the writing.

Obtaining a Patent

Any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent," subject to certain conditions and legal exclusions. According to the law, only the inventor may apply for a patent, with certain exceptions. The law also specifies that the subject matter must be "useful." The term "useful" in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent. A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion. Therefore a complete description of the invention is required but the invention itself does not actually need to be in a physical embodiment.

In order for an invention to be patentable it must be new and non-obvious If the invention has been described in a printed publication anywhere in the world, or if it has been in public use or on sale in this country before the date that the applicant made his invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a valid patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he must apply for a patent before one year has gone by, otherwise any right to a patent will be lost.

Additionally, even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one material for another, or changes in size, are ordinarily not patentable.

Types of Applications for Federal Registration

An applicant may apply for a patent in three major categories: (1) Utility Patents, (2) Design Patents, and (3) Plant Patents. Utility Patents are granted to anyone who invents or discovers any new and useful process, machine, manufacture, or compositions of matter, or any new and useful improvement thereof. 'Process' means a process or method; new industrial or technical processes may be patented. 'Manufacture' refers to articles which are made. 'Composition of matter' relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. Design Patents are granted to any person who has invented a new, original and ornamental design for an article of manufacture. The aesthetics or appearance of the article is protected. Plant Patents are granted to any person who has invented or discovered and asexually reproduced any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.

A United States patent protects your invention only in the United States and its territories and possessions. Normally a license must be obtained from the Commissioner of Patents and Trademarks before you can file for a patent in another country, unless the filing in another country occurs more than six months after the filing in this country, in which case no license is necessary.

Patent Novelty Search

An applicant is not required to conduct a search for similar inventions prior to applying with the Patent and Trademark Office (PTO). However, some people find it useful in that it provides a good idea as to what the current state of their particular art is. Once an application is sent to the PTO, information not already disclosed cannot be added to the application. Therefore with the results of a patent novelty search, both the inventor and the attorney oftentimes can emphasize areas of novelty pertaining to the invention and attempt to obtain coverage accordingly. Regardless of whether a search is conducted by the inventor, the PTO in evaluating an application, conducts a search and notifies the applicant of any prior art which in their opinion renders the Applicant's invention old or obvious. The application fee, which covers processing and search costs, will not be refunded even if a conflict is found and the invention cannot be patented.

The PTO does not conduct searches for the public to determine if the invention is patentable except as noted above when acting on an application.

Other Types of Applications

In addition to patents, information can be filed in the PTO in a number of different ways. The Document Disclosure Program enables the PTO to accept and preserve for two years "Disclosure Documents" for use only as evidence of the date of conception of an invention. An inventor who may wish to refine the invention publicly can also opt to file a provisional patent application which is very similar to a patent application except that it does not require the inclusion of claims. A provisional has a lifetime of one year and can be used as a basis for a subsequent patent application. An inventor can also choose to file a statutory invention registration. A statutory invention registration provides an inventor with all the defensive attributes of a patent but does not have the enforceable attributes of a patent. In other words no one could be considered an infringer of a statutory invention registration.

Patent Pending

The terms 'patent pending' and 'patent applied for' are used by a manufacturer or seller of an article to inform the public that an application for a patent on that article is on file. These phrases have no legal effect, but only give information that an application for patent has been filed in the Patent and Trademark Office. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.

A patentee who makes or sells patented articles, or a person who does so for or under the patentee is required to mark the articles with the word "Patent" and the number of the patent. The penalty for failure to mark is that the patentee may not recover damages from an infringer unless the infringer was duly notified of the infringement and continued to infringe after the notice. Likewise, the marking of an article as patented when it is not in fact patented is against the law and subjects the offender to a penalty

Trademarks

Trademark Kit

Our Trademark Kit is available here in two formats:

Trademark Kit in pdf format ( 161k)
Trademark Kit in Microsoft doc format ( 80k)

What is a Trademark?

A trademark is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are used to refer to both trademarks and service marks whether they are word marks or other types of marks. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.

A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention.

Establishing Trademark Rights

Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. (See below, under "Types of Applications," for a discussion of what is meant by the terms commerce and use in commerce.) Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.

There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO's authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding. The PTO cannot provide advice concerning rights in a mark. Only an attorney can provide such advice.

Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.

Types of Applications for Federal Registration

An applicant may apply for federal registration in three principal ways. (1) An applicant who has already commenced using a mark in commerce may file based on that use (a "use" application). (2) An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application). For the purpose of obtaining federal registration, commerce means all commerce which may lawfully be regulated by the U.S. Congress, for example, interstate commerce or commerce between the U.S. and another country. The use in commerce must be a bona fide use in the ordinary course of trade, and not made merely to reserve a right in a mark. Use of a mark in promotion or advertising before the product or service is actually provided under the mark on a normal commercial scale does not qualify as use in commerce. Use of a mark in purely local commerce within a state does not qualify as "use in commerce." If an applicant files based on a bona fide intention to use in commerce, the applicant will have to use the mark in commerce and submit an allegation of use to the PTO before the PTO will register the mark. (3) Additionally, under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.

A United States registration provides protection only in the United States and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws.

Searches for Conflicting Marks

An applicant is not required to conduct a search for conflicting marks prior to applying with the PTO. However, some people find it useful. Nonetheless, the PTO in evaluating an application, conducts a search and notifies the applicant if a conflicting mark is found. The application fee, which covers processing and search costs, will not be refunded even if a conflict is found and the mark cannot be registered.

To determine whether there is a conflict between two marks, the PTO determines whether there would be likelihood of confusion, that is, whether relevant consumers would be likely to associate the goods or services of one party with those of the other party as a result of the use of the marks at issue by both parties. The principal factors to be considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks need not be identical, and the goods and services do not have to be the same.

The PTO does not conduct searches for the public to determine if a conflicting mark is registered, or is the subject of a pending application, except as noted above when acting on an application.

Other Types of Applications

In addition to trademarks and service marks, the Trademark Act provides for federal registration of other types of marks, such as certification marks, collective trademarks and service marks, and collective membership marks. These types of marks are relatively rare.

Use of the "TM," "SM" and "®" Symbols

Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, ®, may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the registration issues.

Copyrights

What is a Copyright?

Copyright is a form of protection provided by the laws of the United States to the authors of "original works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works. The Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to: (1) reproduce the copyrighted work in copies or phonorecords; (2) prepare derivative works based upon the copyrighted work; (3) distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (4) perform the copyrighted work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works; (5) display the copyrighted work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work; and in the case of sound recordings, to (6) perform the work publicly by means of a digital audio transmission.

It is important not to confuse patents and trademarks with copyrights. Patents protect ideas and trademarks protect words, slogans, or logos which identify source.

Obtaining a Copyright

Copyright protection subsists from the time the work is created in fixed form; that is, it is an incident of the process of authorship. The copyright in the work of authorship immediately becomes the property of the author who created it. Only the author or those deriving their rights through the author can rightfully claim copyright. In the case of works made for hire, the employer and not the employee is considered to be the author. A "work made for hire" is: (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

The way in which copyright protection is secured under the present law is frequently misunderstood. No publication or registration or other action in the Copyright Office is required to secure copyright. There are, however, certain definite advantages to registration. Copyright is secured automatically when the work is created, and a work is "created" when it is fixed in a copy or phonorecord for the first time. "Copies" are material objects from which a work can be read or visually perceived either directly or with the aid of a machine or device, such as books, manuscripts, sheet music, film, videotape, or microfilm. "Phonorecords" are material objects embodying fixations of sounds (excluding, by statutory definition, motion picture soundtracks), such as cassette tapes, CD's, or LP's. Thus, for example, a song (the "work") can be fixed in sheet music ("copies") or in phonograph disks ("phonorecords"), or both. Publication is no longer the key to obtaining statutory copyright as it was under earlier Copyright laws. However, publication remains important to copyright owners for several reasons including: (1) when a work is published, it may bear a notice of copyright to identify the year of publication and the name of the copyright owner and to inform the public that the work is protected by copyright; (2) works published before March 1, 1989, must bear the notice or risk loss of copyright protection; (3) works that are published in the United States are subject to mandatory deposit with the Library of Congress; (4) publication of a work can affect the limitations on the exclusive rights of the copyright owner; (5) the year of publication may determine the duration of copyright protection for anonymous, pseudonymous, and works made for hire; and (6) deposit requirements for registration of published works differ from those for registration of unpublished works.

Why Register a Copyright?

In general, copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright. However, except in one specific situation, registration is not a condition of copyright protection. Even though registration is not generally a requirement for protection, the copyright law provides several inducements or advantages to encourage copyright owners to make registration. Among these advantages are the following: (1) registration establishes a public record of the copyright claim; (2) before an infringement suit may be filed in court, registration is necessary for works of U.S. origin and for foreign works not originating in a Berne Union country; (3) if made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate; and (4) if registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.

Additionally copyright registration allows the owner of the copyright to record the registration with the U.S. Customs Service for protection against the importation of infringing copies.

Types of Applications for Federal Registration

There are many different copyright application forms, each is designed to register a different type of work. Your attorney can provide you with the right form for the work you wish to register.

There is, however, no such thing as an "international copyright" that will automatically protect an author's writings throughout the entire world. Protection against unauthorized use in a particular country depends, basically, on the national laws of that country. However, most countries do offer protection to foreign works under certain conditions, and these conditions have been greatly simplified by international copyright treaties and conventions. The United States belongs to both global, multilateral copyright treaties--the Universal Copyright Convention (UCC) and the Berne Convention for the Protection of Literary and Artistic Works. An author who wishes protection for his or her work in a particular country should first find out the extent of protection of foreign works in that country. If possible, this should be done before the work is published anywhere, since protection may often depend on the facts existing at the time of first publication. If the country in which protection is sought is a party to one of the international copyright conventions, the work may generally be protected by complying with the conditions of the convention. Even if the work cannot be brought under an international convention, protection under the specific provisions of the country's national laws may still be possible. Some countries, however, offer little or no copyright protection for foreign works.

Copyright Notice

For works first published on and after March 1, 1989, use of the copyright notice is optional, though highly recommended. Before March 1, 1989, the use of the notice was mandatory on all published works, and any work first published before that date must bear a notice or risk loss of copyright protection. Use of the notice is recommended because it informs the public that the work is protected by copyright, identifies the copyright owner, and shows the year of first publication. Furthermore, in the event that a work is infringed, if the work carries a proper notice, the court will not allow a defendant to claim "innocent infringement"--that is, that he or she did not realize that the work is protected. (A successful innocent infringement claim may result in a reduction in damages that the copyright owner would otherwise receive.)

The use of the copyright notice is the responsibility of the copyright owner and does not require advance permission from, or registration with, the Copyright Office.

Trade Secrets

What is a Trade Secret?

A trade secret generally is "any formula, pattern, device or compilation of information which is used in one's business, and which provides an opportunity to obtain an advantage over competitors who do not know or use it." The information or idea must have present value and be likely to be used "continuously" in the claimant's business.

In other words, private information that gives the company an advantage over its competitors is called a trade secret. Some examples are customer lists, formulas, manufacturing processes, cost information, sources of supply, market studies, and compilations of financial data.

There are generally six factors for determining whether certain information or ideas constitute a trade secret. First, how widely is the information known? The information must be "substantially secret", however, the claimant need not prove that it is completely unknown to outsiders. Second, who within the claimant's company knows the secret? The claimant must exercise reasonable caution in disclosing the information, even within the company. Disclosure should be limited to those employees having a "need to know". Third, what measures has the claimant taken to preserve the secrecy of the information? The claimant should anticipate ways in which the information might be leaked and take precautions against these sources. Fourth, how valuable is the information to the claimant and to the claimant's competitors? The information must provide a commercial value giving the claimant an advantage over its competitors. Fifth, how much effort and money has the claimant expended in developing or acquiring the information? The information must be of some real value before the law will allow the claimant to prevent general access to it. Sixth, how difficult would it be for others to properly acquire or duplicate the information? If it would be easy to "reverse engineer" the information from the product, it may not qualify as a trade secret.

Establishing and Maintaining Trade Secret Rights

Unlike patent, trademark, and copyright law, state laws protect trade secrets against infringement. The trade secret owner may be able to obtain damages or an injunction if a competitor or ex-employee steals trade secrets. However, the owner must always take several steps to protect the company's trade secrets. All employees should be required to sign a non-disclosure agreement, preferably when they are hired, though they can be required to sign one later. When an employee leaves, the owner should require that all company documents containing trade secrets, such as customer lists and manuals be returned. At such time, the employee should also be reminded not to violate the confidentiality obligations in his or her non-disclosure agreement. Your lawyer can help prepare a non-disclosure agreement and advise you about establishing effective procedures for enforcing it.

Another important step during the course of business is to control access to documents containing trade secrets to prevent "leaks". A list of confidential or sensitive documents should be prepared. Both the list and the documents should be stored in locked cabinets with access limited to authorized personnel.

To protect against inadvertent disclosure to outsiders, employees should be required to obtain approval of their supervisors before publishing articles or giving speeches that might include unintended disclosure of trade secrets. Also, visitors and tours of the company offices and plants should be carefully monitored to ensure that outsiders do not obtain access to areas where trade secrets might be discovered. In addition, information provided to suppliers, customers and consultants should be protected by requiring the signing of non-disclosure agreements before releasing sensitive information.

Simply put, the trade secret owner or claimant must take reasonable steps to keep the information secret.