Intellectual property, such as trademarks, patents, copyrights, and trade secrets, can be one of the most valuable assets an individual or business owns if it is properly developed, protected, and maintained. At the same time, navigating around IP that is owned by others is critical in order to avoid the expense and disruption that could be caused by claims of IP infringement. Below we provide some general information about patents and trademarks. Please keep in mind that this is for informational purposes only and is not legal advice. We would be glad to discuss particular IP needs with you.
PATENTS
What is a patent? A patent owner has the right to exclude others from making, selling, or using an invention in a country where a patent has been issued. This right is limited in duration—generally ranging from 17 to 20 years, depending on the type of patent, the filing date, and additional factors—and by the precise scope of the language in the “claims” of the patent. Patents may be “utility” patents, which cover the function, structure and/or composition of an invention, or “design” patents, which cover only the ornamental features of an object.
Why pursue patent protection? Obtaining patent protection in the U.S. and other countries can be very valuable for businesses. Patent protection can help an individual or business prevent others from profiting by copying their inventions.
Considerations for deciding whether to pursue patent protection. As an inventor or entrepreneur, obtaining patent protection for your inventions can provide much value, but applying for a patent is a lengthy, costly, somewhat unpredictable, and involved process. Receiving a utility patent can take three years or more, and because the U.S. Patent & Trademark Office (USPTO) examines applications to ensure they satisfy the necessary requirements, such as novelty and non-obviousness, there is no guarantee that an application will lead to a patent. For this reason, it is often useful to conduct a prior art search before embarking on the process of preparing and filing a patent application.
Other considerations include whether to seek patent protection in other countries, whether to take advantage of pathways that can speed the prosecution of a patent, and whether your business would be prepared to enforce a patent against infringers.
Inventorship. Anyone who significantly contributes to the development of an invention is deemed an inventor, and the default rule is that each inventor has full rights in the invention and any patents that result from it. Agreements between employers, their employees, and/or independent contractors that address who will own any inventions that are developed in the course of their work are useful for avoiding disputes about inventorship later.
Recordkeeping. It is a good policy to maintain written records that describe potential inventions. These records can prove useful for determining whether you have developed patentable technology and for discussing your invention with an attorney.
Public disclosure. Any public disclosure of an invention, such as through the sale of a product or discussions with potential buyers or manufacturers of the product (in the absence of a non-disclosure agreement), can prevent the patentability of an invention. This is particularly so if the disclosure occurs more than one year before the filing of a patent application.
Clearance/Freedom to Operate Searches. A clearance search identifies existing patents that could prevent others from making/selling a certain product (or using a certain process). These are important in order to help avoid patent infringement disputes for anyone planning to start a business based on a new or existing product or service. For instance, if another business has a patent, their right to exclude means they may be able to get an injunction to prevent others from making, using, or selling the patented invention. In addition, the cost of defending a patent infringement suit and potential damages, which can include lost profits, can be quite substantial. The risk of patent infringement can be reduced by having clearance searches conducted when appropriate, such as before launching a new product or in conjunction with the development of a new product, and/or by obtaining indemnification agreements from suppliers or manufacturers.
PATENT APPLICATIONS
Prior Art Searches
In addition to running a clearance search before developing a new product, a prior art search should be run before making a new application. In a prior art search, existing patents, applications, and other references are searched for to ascertain whether they could prevent a patent application from being allowed. Prior art searches are not required to file an application, but can help determine whether to file a patent application as well as help inform how to draft your application. Material prior art found through a prior art search or otherwise known by the applicant must be disclosed to the USPTO.
Applications
- Provisional Patent Application. A provisional patent application is essentially a placeholder for a non-provisional patent application. The USPTO does not examine it, and it cannot become a patent on its own, but it allows the owner to use the phrase “patent pending” and rely on the filing date for priority for a non-provisional patent application that is filed within one year of filing the provisional patent application (to the extent the same invention is covered).
- U.S. Non-Provisional Patent Application. A non-provisional utility patent application is examined by the USPTO to determine whether the requirements for patenting are met. The phrase “patent pending” can be used for as long as the non-provisional application is pending, but not if the application is abandoned. Simply filing an application does not prevent others from using the invention, as patent rights do not arise until the application is granted by the USPTO. It can take as long as three to five years for the USPTO to reach a final decision on an application, although the process can be accelerated. Keep in mind that once the USPTO publishes an application (which occurs unless a request not to publish is made), it can be viewed by anyone. Additionally, if a patent is granted, it will become publicly available at that time. A U.S. patent provides the owner with rights only in the U.S.
- Patent Cooperation Treaty (PCT) Application. For entities interested in pursuing patents in other countries, a PCT application may be filed within certain time limits. Once a PCT application is filed, a preliminary search report is issued identifying prior art and establishing a written opinion on the invention’s potential patentability. That report is not binding on the patent offices of each country, but it can be persuasive. A PCT application will be published after filing. The PCT application allows the applicant to file national stage applications in each country for which a patent is sought based on the PCT application if filed within 30 months of the priority date. The patent office of each country in which a national stage application is filed will have its own fees and will make its own determination on patentability.
- Direct Foreign Application. A PCT application often makes sense when seeking patents in several countries, but if patents are desired in only a few countries, a patent application can be filed directly in any country. These types of applications may require an examination (for a fee) to be requested within a certain time period; that is, the application may not be automatically examined by the patent office. These applications usually require annual fees to be paid regardless of whether an examination is requested or the patent is issued.
Maintenance
Once a patent has been granted in the U.S., the patent owner will need to pay fees every few years to maintain the patent. For foreign applications, maintenance fees are usually due annually as soon as the application is filed.
TRADEMARKS
What is a trademark? Trademarks are used to identify the source of a product or service. A trademark can be any word, symbol, or color, or any combination of those, used in association with a product or service.
Availability for use. Before using any mark in association with a product or service, a clearance search should be conducted to determine whether use of the mark would potentially infringe another entity’s existing trademark rights. Ideally, this should be done before making any significant investment in the mark, such as in its development or its use in advertising, packaging, or other marketing. Trademark infringement occurs when a mark used with a product or service is likely to cause confusion or mistake in the minds of the public as to the source of someone else’s products or services. This determination requires a search for and analysis of any similar marks owned by others used in connection with related goods or services.
Registering a trademark. A mark can be registered with the US Patent & Trademark Office (USPTO). Registration is not required to use a mark, but registration confers some benefits in addition to common law rights that arise simply by using a mark. For instance, a registered mark provides the owner with rights throughout the U.S., whereas an unregistered mark provides protection only in the areas where it is used. Further, registration creates an asset that usually has more value in the event of a sale or transfer of the business than an unregistered mark. Also, registering a mark makes it easier to enforce rights against others.
Choosing a trademark. There are several factors to consider when choosing a mark, including the following:
- Strength of trademark:
- The strongest type of mark is a “fanciful” or “arbitrary” mark that does not describe the nature of the goods or services being associated with the mark. A fanciful mark is a made-up mark, such as Xerox for printers and Google for search engine services. An arbitrary mark is a term that does not carry its typical meaning relative to the goods or services offered under the mark. Examples of such arbitrary marks include Apple for computers, Nike for shoes, and Tundra for trucks.
- “Suggestive” marks hint at something about the goods or services associated with the mark without being descriptive. Examples include Netflix for streaming services and Jaguar for an automobile.
- Marks that are more descriptive of the goods or services may be afforded little or no trademark protection. Therefore, “generic” or “descriptive” marks are generally avoided. Generic marks are words that are the goods or services themselves, e.g., pencil, car, or computer. Generic marks cannot function as trademarks at all, although they may be used as parts of marks in combination with other words and/or images. Descriptive marks are marks that describe an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. Some examples of descriptive marks include Salty for crackers and Texas Trailer Supply for trailer supplies in Texas. Although descriptive marks are better than generic marks, descriptive marks generally will not establish significant rights because other businesses will be able to use marks that are substantially similar.
- Goods and Services. A trademark application requires the identification of the goods and/or services the mark is to be used in association with. In order for the mark to be registered, the USPTO requires acceptable proof of the mark’s use in commerce. This requires showing that all of the goods and/or services identified in an application are used in associated with the mark.
Types of Applications. There are two types of U.S. federal trademark applications, as well as state trademark applications and an international registration system.
- Actual Use Application. To file an actual use application, the mark must be currently in use in commerce in connection with the goods and/or services.
- Intent-to-Use Application. With an intent-to-use (ITU) application, the application to register a trademark can be made before actually using the mark in commerce. In this way, an application for a proposed mark can be filed, and its registrability determined, before investing too heavily in the mark. In addition, although the USPTO will not issue a registration until after the mark is being used in commerce, the rights in the mark will date back to the filing of the ITU application.
- International Registration System. Under the Madrid Protocol,an International Registration can be filed based on a USPTO application if protection of the mark is sought in any countries that are party to the Madrid Protocol. One application may be used for multiple countries. For countries that are not party to the Madrid Protocol, trademark applications must be filed in each country separately.
- State Registration. A trademark registration may be appropriate under certain circumstances, for example where the trademark is only used within one state, or if federal registration is not available based on current federal law (e.g., certain cannabis products).
Examination
After a trademark application is filed, a USPTO examining attorney examines the application to determine whether it complies with applicable rules and statutes. If there are any objections to the application, the examining USPTO attorney will issue an Office Action, which will require a response within six months. If there are no objections to registration, or if the response to the Office Action overcomes any objections, the examining attorney will approve the mark for publication. Once the mark is published, third parties are able to oppose the registration. If no opposition is filed, or if any opposition is unsuccessful, the application proceeds to the next stage of the registration process: for an actual use application, the USPTO will register the mark; for an ITU application, the USPTO will issue a notice of allowance, and when the applicant timely satisfies the statement of use requirements, the USPTO will register the mark.
Maintenance.
Once a mark is registered, it must be maintained by making periodic filings with the USPTO. A renewal must be filed between the fifth year and sixth year after the initial registration, and then every ten years after that. To renew, the applicant must certify that the mark has been continually used in commerce.
We hope you have found this information helpful. Please contact us at info@srhlaw.com or (802) 860-1003 to make an appointment to discuss your IP needs.
