Patents
What is a patent?
A patent is a type of intellectual property (IP) right usually granted by the governments of each country to inventors. Patent protection allows its owner to exclude others from making, using, selling, offering for sale, or importing an invention in the protected country.
Is a patent valid in every country?
No. Patents are territorial rights and are granted by national patent offices or regional offices that carry out the task for a number of countries. Patent rights are only enforceable in the country or region where a patent has been filed and granted, in accordance with the law of that country or region.
Where are United States patents registered?
United States patents are registered in the United States Patent and Trademark Office (USPTO).
What are the different types of patents?
There are three types of patents in the United States. Utility patents protect the invention or discovery of any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Design patents cover new, original, and ornamental designs for articles of manufacture. Plant patents relate to the invention or discovery of a new and distinct asexually reproducible variety of plant.
How long does patent protection last in the United States?
Utility and plant patents have a life-term of twenty years from their filing date. Design patents last for fifteen years from their date of grant.
What is a provisional patent application?
The United States allows for the filing of provisional patent applications. This type of patent application has few formalities and costs less to file than a non-provisional patent application. After filing a provisional patent application, an applicant has a one-year period to file a non-provisional patent application with a reference to the provisional patent application.
A provisional patent application holds a place in line for the filing of a future non-provisional patent application. The referred one-year term provides an applicant with the opportunity to engage in additional research or improve its invention, before deciding to invest in a non-provisional patent application.
Is there an international patent application?
For those seeking patent protection in a number of countries, it is advisable to file an “international” patent application under the Patent Cooperation Treaty (PCT), which applies in more than 150 countries or contracting states worldwide. A PCT patent application provides the benefit of obtaining an early filing date in PCT contracting states by filing a single document. In most cases, an applicant will then have a period of 30 months after filing a PCT patent application to file individual patent applications in the desired PCT contracting states.
Similar to a provisional patent application, this period of 30 months holds a place in line for a future patent application filing and can be highly valuable. During this term, a PCT patent applicant can determine the possibility of obtaining patents in each country, research the viability of commercializing an invention, asses the technical value of an invention, and evaluate the continued need for protection in each country, before deciding to proceed with the filing of a patent application in any PCT country or contracting state.
Who owns the rights to an invention created by an employee?
In most countries, patent rights belong to an enterprise whenever its employee creates an invention during the course of employment. Also, it is standard practice for employers to specify patent ownership rights in employment contracts to prevent any possible confusion or dispute in the future. In certain cases, employees may hold a right to remuneration in accordance with certain legal provisions or obligations established in the employment contract.
Do you need an agent or patent attorney to prepare and file a patent application in the United States?
Anyone can prepare and file a patent application in the United States. Nonetheless, patent related documents can be highly complex. Also, technical legal skills are required in the patent application and prosecution process. Hence, it is always advisable to seek assistance from a patent attorney or agent to prepare and file a patent application in the United States.
Where can I find more information about patents?
Information about patents can be found in the patents section of the United States Patent and Trademark Office (USPTO) website, accessible through the following link: https://www.uspto.gov/patent.
Trademarks
What is a trademark?
A trademark is a type of IP protection that helps identify and distinguish the source of goods (products) and services from those of others. Trademark rights allow their owners to prevent others from offering and selling related goods or services under a confusingly similar trademark.
What is a service mark?
A service mark is a type of trademark. The terms “trademark” and “mark” are often used interchangeably when referring to “trademarks” and “service marks”. Technically, however, trademarks help distinguish the source of similar goods or products, whereas service marks help distinguish the source of similar service providers. Service marks are sometimes accompanied by the letters SM instead of TM.
What is “trade dress”?
A trade dress is a type of trademark that protects the commercial look and feel of a product or service. Trade dress protection can be obtained for various features of a good or service, for example, the distinctive décor of a store, the design and shape of packaging material, or the design configuration or shape of a product.
What can be used as a trademark?
Anything that identifies, distinguishes, and indicates source can serve as a trademark. Therefore, trademarks rights can be obtained for any source identifying word, logo, symbol, sound, color, shape of product, shape of packaging, etc., that is used in trade to offer goods or services.
What is the difference between a federal and state trademark registration in the United States?
One may file for a United States federal trademark registration if a trademark is used in interstate commerce or commerce between the United States and another country. Otherwise, a trademark owner can only apply for a state trademark registration.
The main distinction between both registrations is that a federal trademark registration in the United States provides its owner with enforceable trademark rights throughout the entire country. In contrast, a state trademark registration grants its owner enforceable trademark rights only in the state where registration is obtained. Many other benefits are acquired from a federal trademark registration which are not provided for a state trademark registration, such as the right to include the famous ® symbol next to the trademark and bring lawsuits against infringers in United States federal court.
Is trademark registration mandatory for protection in the United States and Puerto Rico?
No. United States and Puerto Rico trademark “common law” recognizes unregistered trademarks and it is not mandatory to register a trademark to obtain trademark rights in the United States or Puerto Rico. However, it is always advisable to register trademarks as registration increases trademark protection rights and adds value to a business.
Where are trademarks registered in the United States and Puerto Rico?
In the United States, trademarks can be registered at the federal or state level. Federal trademarks in the United States are registered in the United States Patent and Trademark Office (USPTO). State trademarks in Puerto Rico are registered in the Puerto Rico Trademark and Trade Name Office, a division of the Puerto Rico Department of State.
How long does a trademark registration last in the United States and Puerto Rico?
A trademark registration can last forever, so long as the trademark is used in commerce by its owner and renewal documents are filed on time.
What is a “declaration of use”?
For a trademark registration to remain active in the United States and Puerto Rico, a declaration of use must be filed between the fifth and sixth year from its date of registration. Subsequent declarations of use must be filed one-year before the end of every ten-year period after the registration date.
What is an “intent to use” trademark application?
An “intent to use” trademark application serves as a reservation of a trademark for a limited period of time. After an “intent to use” trademark application is approved, an applicant will be required to file a “statement of use” and begin using the trademark in commerce to obtain its registration. Otherwise, the trademark becomes abandoned.
Is a trademark attorney required to prepare and file a trademark application?
In the United States, a foreign-domiciled trademark applicant must be represented by an attorney who is licensed to practice law in a state or territory of the United States. On the other hand, a trademark applicant domiciled in the United States or its territories can file and prosecute a trademark application without being represented by an attorney.
Nonetheless, it’s important to recognize that some mistakes in the trademark application process can cause an applicant to end up with an invalid or null trademark registration without even recognizing it. Hence, hiring a trademark attorney to manage the process right from the start is strongly recommended.
Where can I find more information about trademarks?
Information about trademarks can be found in the trademarks section of the United States Patent and Trademark Office (USPTO) website, accessible through the following link: https://www.uspto.gov/trademark.
Copyrights
What is a copyright?
Copyrights are a form of IP protection granted by law for original literary, artistic, graphic, dramatic, sculptural, architectural, and musical works which are fixed in a tangible medium of expression.
When is a work protected by copyright?
A work is protected by copyright from the moment it is created and fixed in a tangible medium of expression, perceptible either directly or with the aid of a machine or device.
What protection is granted by copyright in the United States?
United States copyright law provides six exclusive rights that govern the use and distribution of a copyrighted work. A copyright owner has the power to:
1. reproduce the work,
2. create derivatives of the work,
3. distribute copies of the work,
4. publicly display the work,
5. publicly perform a work, and
6. publicly perform a works by means of digital audio transmission (in case of sound recordings).
Is copyright registration mandatory for protection?
No. However, copyright registration is highly recommended for a number of reasons. For example, registration is required before a copyright infringement suit is filed in United States federal court. Moreover, registration establishes prima facie evidence of copyright validity and the facts stated in the certificate of registration when made within five years of publication of a work. Also, a copyright owner is eligible for statutory damages, costs, and attorneys’ fees when registration is made prior to infringement or within three months after publication of a work.
Where are copyrights registered in the United States?
United States copyrights are registered in the United States Copyright Office, a division of the Library of Congress of the United States.
Can someone be sued for using somebody else’s work?
Yes. A copyright owner can bring an infringement action against anyone who uses a copyrighted work without its permission. Under the fair use doctrine, there are circumstances where a copyrighted work may be used without permission. However, said situations are limited and it is always recommended to obtain authorization from the copyright owner before using any copyrighted work.
What is “fair use”?
“Fair use” is a legal doctrine that permits, in certain circumstances, the use of a copyrighted work without the need to request authorization from its owner. The purpose of the doctrine is to promote freedom of expression and the dissemination of ideas.
United States copyright law provides a framework for determining whether fair use of a work is applicable and identifies certain situations which may qualify as fair use, including criticism, parody, comment, news reporting, teaching, scholarship, and research. Also, when evaluating a question of fair use, the following four factors must be taken into consideration:
1. Purpose and character of the use, including whether the use is of commercial nature or for nonprofit educational purposes.
2. Nature of the copyrighted work and how the work relates to the purpose of copyright law, which was established to encourage creative expression.
3. Amount and substantiality of the portion used in relation to the copyrighted work.
4. Effect of the use upon the potential market or value of the copyrighted work.
A court may also consider other factors whenever weighing a fair use question. Contrary to popular belief, there is no formula or determinant factor that serves to ensure that a specific amount of a work may be used without requesting permission from its owner.
What is a “work made for hire”?
Under the “work made for hire” legal doctrine, a person hired to create a work transfers all of its copyrights to the person that hired them. United States copyright law defines a “work made for hire” as either:
1. a work prepared by an employee acting within the scope of its employment position; or
2. a work specially ordered or commissioned for use as a contribution to a collective work, part of a motion picture or other audiovisual work, translation, supplementary work, compilation, an instructional text, test, answer material for a test, or 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.
How long does copyright protection last in the United States?
In the United States, works created on or after January 1, 1978 are generally protected for the life of its author plus an additional seventy years after its death. For works with multiple authors, the term lasts for seventy years after the last surviving author’s death. Copyright protection for anonymous works, pseudonymous works, and works made for hire typically lasts for 95 years from the date of first publication or 120 years from the date of creation, whichever term is shorter.
Where can I find more information about copyrights?
Information about copyrights can be found in the United States Copyright Office (USCO) website, accessible through the following link: https://www.copyright.gov/.
Other Topics
What falls into the category of “confidential information”?
The term “confidential information” includes nearly any information which can be considered confidential, such as secret recipes and client contact information.
What is a “trade secret”?
A trade secret is a subset of confidential information which includes secret practices and processes that give a company an economic advantage over its competitors. The unauthorized disclosure, use, or acquisition of such information by others is regarded as an unfair practice and a violation of trade secret protection.
Should you hire an attorney to draft a non-disclosure agreement (NDA)?
Drafting a NDA without legal knowledge can result in an unenforceable document, so it is highly recommended to hire an attorney with specialized knowledge for the drafting of this type of agreement. Moreover, poorly drafted documents can sometimes result in unnecessary expenses and superfluous litigation. Hence, it is crucial to have carefully outlined agreements in place whenever IP rights are involved.
How do you reply to a cease and desist letter?
Cease and desist letters can include legal jargon with claims against an alleged infringer which sometimes appear intimidating. After receiving a cease and desist letter, it is always advisable to consult the situation with an attorney and not respond directly. An experienced attorney provides a better chance of avoiding litigation, offers advice as to whether compliance with a request is necessary, and aids in managing any possible negotiation between the parties.
Is IP knowledge important for a business?
IP related concepts can be highly confusing and sometimes smart business decisions can only be made with the help of an IP specialist. Understanding the core principles of IP is essential for anyone developing, managing, or protecting any type of IP.
What is IP commercialization?
IP commercialization is the process of getting IP to the market or creating new revenue streams, whether through licensing agreements or assignment (sale).
What is an IP licensing agreement?
An IP license agreement is a contract between an IP owner (licensor) and a third party (licensee). In a typical agreement of this type, a licensor grants a licensee the right to apply a brand to goods, manufacture and sell products, or use a proprietary technology owned by the licensor. In return, the licensee generally agrees to make payments known as royalties to the licensor and is bound by a number of terms related to the use of the licensor’s IP.
Almost any provision can be included in an IP licensing agreement, such as how the licensee will use the IP, the purpose of its use, any geographic limitations, the duration of the license, the nature of the license (exclusive vs. non-exclusive), scalability terms, project milestones, and other matters as agreed between the parties.
What is the difference between a licensing agreement and an assignment?
The main difference between a licensing agreement and an assignment is that a licensing agreement is for a fixed term and the licensor retains ownership in the licensed IP. Conversely, in an assignment the assignor transfers to the assignee all of its rights in the IP being assigned.
