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PATENT LAW OVERVIEW AND PRIMER

What is a patent?

A patent is a grant from the U.S. government of the right to exclude others from making, using, selling, or offering for sale the patented invention for a limited time. That is, a patent gives its owner the ability to seek an injunction through the federal court system to stop an infringer from making, using, selling, or offering for sale the patented invention during the term in which the patent is in force. Monetary damages may also be awarded for patent infringement.

A patent does not give its owner the unfettered right to make or sell the patented invention without recourse to other patent holders. In other words, one may obtain a patent on a product yet still infringe an earlier patent with claims that broadly read on the product. For example, if patent X claims elements A, B and C, someone may be able to later obtain patent Y claiming A, B, C and D. However, making a product with elements A, B, C, and D still infringes the claims of the patent X (because the product includes A, B, and C).

There are three types of patents, namely design patents, utility patents, and plant patents. Design patents protect the ornamental aspects of an article of manufacture. Utility patents protect new and useful processes, machines, articles of manufacture, or compositions of matter. Plant patents protect new varieties of asexually reproduced plants. Utility patents are appropriate for the vast majority of inventions.

What is a provisional patent application?

A provisional patent application is an invention disclosure document that is filed with the USPTO that affords the inventor a priority date without meeting all of the formal requirements of a utility patent application. For example, a provisional patent application need not include claims, nor do the drawings have to comply with the formal drawing requirements. To receive the benefit of the provisional priority date, an applicant must file a utility application within one year of filing the provisional application and claim the benefit of the provisional application.

While a provisional application is an informal disclosure document that provides a relatively inexpensive way to quickly get a priority date for an invention, care should be taken in deciding whether its use is appropriate and, if so, in how the document is prepared. Even though the provisional application need not meet all of the formal utility application filing requirements, it still has to enable one of ordinary skill in the relevant art how to practice the invention ultimately claimed in the later filed utility application for those claims to receive the benefit of the provisional priority date. Moreover, the provisional application becomes a permanent part of the record or “file history” of the final patent. As such, a provisional application disclosure should be carefully reviewed or prepared by a patent attorney to make sure it does not include statements or terms that could later be problematic when attempting to enforce the resulting patent in court.

What is the term of a patent?

The term of a design patent extends 14 years from the issue date. Generally speaking, utility and plant patents have a term of 20 years from the filing date of the underlying application, although in some cases the length of the term or the date from which it is measured may be different.

What is the standard for patentability?

In the United States, the patentability of any invention will generally depend upon the Patent Office’s decision, initially expressed by an Examiner, as to whether the invention is useful, novel, and unobvious. These requirements are set forth in the Patent Statute. In particular, Sections 102 and 103 relate to the differences between the invention and the prior art. Section 102 requires that an invention be novel in the sense that it has not been disclosed by any single prior art reference. Section 103 requires that the differences between the invention and the prior art be such that the invention would not have been obvious, at the time it was made, to a person having ordinary skill in the art.

What is a preliminary patentability search?

A preliminary patentability search involves a search of the U.S. Patent and Trademark Office’s (USPTO’s) records to find the most pertinent prior art relating to an invention. “Prior art” is the existing body of technological information against which an invention is judged to determine if it is novel and non-obvious and can thus be patented. An inventor initially discusses the invention with his or her patent attorney, who then works with a professional search agent to locate the most pertinent references from the USPTO records. The patent attorney can then evaluate whether patent protection is likely to be available based upon the located references, as well as the potential scope of the patent protection. Knowing the potential scope of patent protection allows the inventor to make an informed business decision about whether seeking patent protection is worth the investment of time and money. Moreover, the results of the preliminary patentability search are invaluable to the patent attorney in crafting claims for the patent application that can withstand the USPTO’s scrutiny during the examination process.

Can I do my own patent search?

The USPTO makes copies of issued patents and published applications available on its Web site, many of which are available for text or “key word” searching. Click here for the USPTO patent search page. The USPTO’s online database provides an excellent starting point for familiarizing oneself with the form and contents of a patent, as well as the types of patents available in a given field. However, the online search interface does not allow for the use of complex search strings, which often makes it difficult to locate and narrow down the most relevant search results to a manageable number. This is particularly true in art areas where thousands of patents and patent publications are available. Our professional search agents have access to the more sophisticated search systems in use at the USPTO and are therefore able to use their experience and expertise to quickly hone in on the most pertinent prior art.

Does a favorable preliminary patentability search guarantee a patent?

Not at all. While the USPTO is an excellent source for determining what technical information is in the public domain, prior art is not limited to patent documents. Prior art may also include publications (articles, papers, etc.), sales of an invention, or even uses of the invention in public, none of which are covered in a typical preliminary patentability search. Moreover, patent applications currently are maintained in secrecy by the USPTO until they are published, which occurs sometime after the application has been pending for eighteen months. For these and other reasons, a preliminary patentability search is not a perfect representation of all of the art that may be applicable to a given invention. Even so, the publicly available repository of patents and published applications at the USPTO is one of the best single sources of prior art documents available. Moreover, this is the primary source of prior art the Examiner will use when he or she performs a search of a patent application. As such, the preliminary patentability search is a relatively inexpensive way to gain a great deal of information about the current state of the art.

What are the next steps when the preliminary patentability search is favorable?

If the preliminary patentability search results are favorable, this is when the patent attorney prepares the utility patent application. When the initial draft of the application is complete, the draft is provided to the inventor for his or her review to make sure the application is technically accurate and complete. The inventor’s comments are carefully considered in the preparation of the final draft, which is presented to the inventor for review prior to filing. The USPTO requires that each inventor sign a Declaration when the application is filed in the USPTO acknowledging a duty to disclose information of which he is aware and which may be considered to be material to the examination of the application. Such information may possibly include devices, products, publications, etc. which are similar to the invention and which were publicly known before the invention, and it may also include any public disclosure, commercial use, or offer of sale of the invention more than one year prior to the filing date of the application.

A utility patent application typically includes the following parts: background of the invention, summary of the invention, brief description of the drawings, and detailed description of the preferred embodiments, the claims, and an abstract of the disclosure. Of these, the claims are the heart of the application in that they define in words the scope of the invention for which the applicant seeks a limited monopoly from the government. The background sets forth the state of the relevant technical art and defines the need that the claimed invention fulfills. The abstract is a very brief summary of the claimed invention, and the summary section summarizes the claimed invention in further detail. The drawings illustrate the various elements of the invention recited in the claims, while the brief description of the drawings quickly orients the reader of the patent to what each drawing illustrates. Lastly, the detailed description of the preferred embodiments is where the elements of the drawings are described in further detail and various examples and embodiments of the invention are fully elaborated.

When can I use “patent pending”?

Once a utility (or provisional) patent application is filed with the USPTO, the inventor may then begin marking any products covered by the claims of the application as “patent pending,” so long as the application is actually pending before the USPTO. The “patent pending” indication serves as a warning to others who might otherwise make, use, or sell an identical product that patent protection is being sought from the USPTO.

What happens during the examination process, and how long does it take?

Once an application is filed with the USPTO, it is assigned to the relevant technology area or “art unit,” and ultimately to the individual Examiner who will examine the application. The Examiner reviews the application to make sure it complies with the numerous USPTO rules and requirements, and he or she also performs a patentability search based upon the claims that are included in the application. Initially, the Examiner typically issues an Office Action report rejecting at least some of the claims and detailing the reasons for the rejection and the prior art upon which the rejection is based. It typically takes more than a year (and often two to three years) to receive a first Office Action from the USPTO depending upon the backlog of applications they have to examine in a particular art unit. Currently, the average patent application pendency is 27.6 months (Source: “Fiscal Year 2006 Performance Plan” available at www.osec.doc.gov.

When an Office Action is received from the USPTO, your patent attorney (who receives correspondence from the USPTO on your behalf) studies the rejection set forth therein and advises you how best to proceed. Usually this involves preparing and filing a written response including arguments as to why the claims are patentable over the prior art cited by the Examiner and/or amendments more clearly defining the claims over this prior art. In some cases multiple Office Actions and responses are exchanged by the USPTO and applicant before a patent is ultimately granted or the application is abandoned.

What happens when the patent application is allowed by the USPTO?

Once an Examiner decides that an application is in condition for allowance, the USPTO issues a Notice of Allowance informing the applicant that the issue fee and publication fees are due. After issuance of the patent, the applicant is required to pay maintenance fees 3½, 7½, and 11½ years after the issue date to keep the patent in force. Click here for a list of current government patent fees.

TRADEMARK LAW OVERVIEW AND PRIMER

What is a trademark?

A “trademark” is any word, name, symbol or device adopted and used by a manufacturer or merchant to identify goods or services, distinguish them from those of others, and indicate their source. Trademarks include the brand names of goods, such as “COKE tm”, “GM tm”, and “GE tm”.

What is the difference between a Trademark and a Service Mark?

The term “trademark” is a general term that can be used to cover marks applied both to goods and to services. When a distinction is made, the term “service mark” is used to refer to marks used in the sale and advertising of services, as opposed to goods. Familiar examples of service marks are “MCDONALD’S tm” and “BURGER KING tm.”

How are trademarks protected?

The value of a trademark depends on the degree of recognition and goodwill associated with that mark by the buying public, i.e., potential customers of the relevant goods or services. Do your customers recognize the mark and do they identify it with your goods or services, as opposed to the goods and services of others?

The best way to protect a mark (i.e., the best way to ensure that people recognize it and give it value) is to begin using the mark (properly as a mark) as soon as possible in connection with actual sales of your goods or services. As a general rule, the first one in a particular area to use the mark for certain goods or services will have a right of priority over later adopters of the same mark in the same area for similar goods or services.

What about registration?

Trademark law is a branch of the law of unfair competition. That is, it is unfair for someone to pass their products or services off as yours, to trade (for free) on goodwill you spent time and money building up, or to try to diminish the value of your mark. Trademarks can therefore be protected even in the absence of registration. Registration does provide significant benefits, however, so should be seriously considered.

In the absence of registration your mark can be protected only in the particular geographic area in which you do business, and you have the burden of proving the extent of that area. With Federal registration, your area of coverage may be extended to ­the whole country.

Also, though you may still be able to pursue “common law” unfair competition rights, registration will give you additional, statutory rights and remedies against infringers. Moreover, registered marks enjoy many procedural advantages in the courts. For example, instead of having to prove that you own and have a right to use the mark, such preliminary matters will be presumed.

How do I register a trademark?

The United States has a dual registration system. This means that you can register your mark with either one or more states, or with the Federal Government, or both. Your mark is eligible for Florida registration as soon as your have sold your goods or advertised your services using the trademark in Florida. Your mark is eligible for Federal registration after the mark has been used in interstate commerce (commercial dealings in one or more States, or between two States, or a State and a foreign country).

Under present U.S. trademark law, you may apply to register a mark based on either actual use in interstate commerce or upon a bona fide intention to use the mark in commerce. If an application is based on intent to use, actual use must be shown within 6 months after the mark has been approved for registration by the U.S. Trademark Office before the registration will actually issue, unless an extension of time has been obtained.

Federal registration is valid for successively renewable 10-­year terms from date of issuance of the registration; Florida State registration is also valid for renewable 10-year terms. Federal registration will be cancelled unless an affidavit that you are still using the mark (commonly called a “Section 8 Affidavit”) is filed between the fifth and sixth year after registration. A “Section 15 Affidavit” asserting that the mark has been in continuous use for five years, with no adverse decision or pending challenging proceeding, may be filed at the same time to render the mark “incontestable” except on very narrow grounds. There is no affidavit filing requirement for Florida registrations.

To register the mark Federally, you must file an application along with prescribed filing fees, identifying the owner of the mark, the goods or services for which the mark is used or will used and if the application is based on actual use, the date first usage of the mark anywhere, the date of first usage of the mark in interstate commerce, and samples of the mark as actually used in connection with the goods and services. The latter three requirements must be met for applications based on intent to use after use in interstate commerce has been made. Registration normally takes 12 – 24 months for applications based on actual use. Applications based on intent to use will take varying amounts of time depending upon the date when actual use is established, but in no case sooner than applications based on actual use.

To register the mark with the State of Florida, you must file an application identifying the owner of the mark, the goods or services for which the mark is used, the date of first usage of the mark anywhere, the date of first usage of the mark in Florida, submit specimens (samples) of the mark as actually used in connection with the goods and services, and pay the required filing fee. Florida State registration can normally be completed in several weeks.

COPYRIGHT LAW OVERVIEW AND PRIMER

What is a copyright?

A copyright is a form of protection provided to authors of “original works of authorship,” including literary, dramatic, musical, artistic, architectural and certain other types of intellectual works.

What does copyright protection provide?

The United States copyright law generally gives the owner of a copyright the exclusive right to do and to authorize others to do the following: reproduce the copyrighted work; prepare derivative works; distribute copies by sale, rental or lease; and perform or display the copyrighted work publicly. It is illegal for anyone to violate any of the rights provided to the owner of a copyright, subject to certain limitations such as “fair use” and, for some works, “compulsory license.”

Copyright protection exists for “original works of authorship” from the time that a work is first fixed in a tangible form of expression. The fixation does not have to be directly perceptible, so long as it may be communicated with the aid of a machine or device. There is no requirement that the work be new or non-obvious, only that it be original.

Among those works which are copyrightable are: literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic and sculptural works; motion pictures and other audiovisual works; sound recordings; computer programs and architectural works.

Materials which are not generally copyrightable include: works that have not been fixed in tangible form of expression; titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere listings of ingredients or contents; ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration; works consisting entirely of information that is common property and containing no original authorship. (Note: patent or trademark protection may be available for some of these.)

How is copyright protection obtained?

Copyright protection is secured automatically when a work is created (i.e., fixed in a copy or recording for the first time). It is an incident of the process of authorship. Publication is no longer a requirement for statutory copyright ­protection, but in order to enforce a copyright, the work must be registered in the U.S. Copyright Office.

What is a notice of copyright?

When a work is published under the authority of the copyright owner, a notice of copyright may be placed on all publicly distributed copies or recordings. Under the Berne Convention, a copyright notice is no longer required in the United States for works first published on or after March 1, 1989. However, it is recommended that a copyright notice be placed on all copies of a copyrighted work. One advantage in using a copyright notice is that it prevents a party who is sued for infringement from asserting a defense of innocent infringement. A notice is still required on any works published before March of 1989.

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. The copyright notice generally includes three elements:

How is copyright ownership determined?

The copyright in a work of authorship immediately becomes the property of the author or artist who created it, and only the author or those deriving rights from the author can rightfully claim copyright. Co-authors are generally considered co-owners of the copyright.

In the case of a work made for hire, the employer and not the employee is presumptively considered the author. A “work made for hire” is: (1) a work prepared by an employee acting within the ­scope of employment; or (2) a work (but only certain types of works) specially ordered or commissioned according to a written agreement that designates the work as one made for hire.

Any or all of the exclusive rights, or any subdivision of those rights, of the copyright owner may be transferred, but the voluntary transfer of exclusive rights is generally not valid unless that transfer is in writing and signed by the owner of the rights conveyed. Transfer of a right on a nonexclusive basis does not require a written agreement.

Present copyright law generally permits the termination of a grant of rights after 35 years under certain conditions by serving written notice on the transferee within specified time limits.

What is the duration of a copyright?

For works by individual authors, the term of © copyright is the life of the author, plus 70 years after the author’s death. The term of © copyright in works for hire or corporate-owned works is 95 years from the first publication, or 120 years from creation, whichever is longer.

What is copyright registration?

In general, © copyright registration is a legal formality intended to make a public record of the basic facts of a particular © copyright. Registration is not normally a condition of copyright protection. Registration does, however, offer significant benefits, among which are:

  • Registration establishes a public record of the © copyright claim;
  • Registration of a U.S. work is necessary before any infringement suits may be brought in the courts;
  • If made before or within five years of publication, registration establishes a presumption in court as to the validity of the © copyright and of the facts stated in the certificate; and
  • If registration is made within three months after publication of the work and prior to infringement, statutory damages and attorney’s fees are available to the © copyright owner in court actions. Otherwise, the © copyright owner may seek only actual damages and profits.

Registration may be made at any time within the life of the © copyright. Usually, two copies of the work must accompany the application.