Q
What constitutes "intellectual property"?
|
A
Intellectual property is intangible property that is created by the mind. Four well-recognized types of intellectual property rights are copyrights, trademarks, patents and trade secrets. Like tangible real or personal property, the law recognizes the right to own and to sell intellectual property.
top
|
Q
What are the steps to getting a patent?
|
A
The steps to getting a patent are as follows:
- Development - At this stage, the creator of the intellectual property should keep it confidential, or require that those who must be privy to the creation sign nondisclosure agreements.
- Disclosure - At this point the inventor provides a complete disclosure about the invention, so that its patentability can be measured.
- Patent application - If the patentability search is favorable, and the client decides to proceed with securing patent probation, a patent application is drafted by the patent attorney and submitted to the inventor or client for final approval.
- Patentability search - typically taking two to six weeks this search determines if prior art exists that would render the invention unpatentable or would otherwise affect its patentability.
- Filing date - The date the patent application is mailed to the Patent and Trademark Office (PTO). This is the filing date and the date from which the term of the patent is measured. The PTO assigns a serial number to the patent application. At this point, the patent is said to be "pending."
- Office Action - The PTO examines the application and typically responds six to 18 months from filing. The patent claims may be objected to, rejected, or allowed, and are detailed in writing in Office Actions, which also set deadlines for a response to be filed. The patent attorney may respond by amending the claims and submitting legal arguments in a written brief as to why the claim should be allowed. If the claims are finally rejected, the final rejection may be appealed to an Appeals Board. Decisions can be appealed, or be modified and re-submitted.
- The patent is issued - Upon payment of an issue fee and publication fee, the patent issues. Once the patent has issued, the patent holder can pursue legal actions against infringers until the patent expires.
top
|
Q
How long is a patent good for?
|
A
A patent typically is in force for 20 years, after which others may use the technology.
top
|
Q
Should I patent or keep a trade secret?
|
A
Patents and trade secrets each come with trade-offs. As a general rule, if your intellectual property can be reverse engineered, you probably need the protection of a patent, which gives you the right to use or license your invention and act against infringers. But, it also means that your invention will be publicly disclosed, and eventually the patent expires. A trade secret may be theoretically held forever, but it is only as good as the ability to keep it. A notable example of a trade secret is the formula for Coca-Cola, which has not yet been reverse engineered and has been around for over a century. Whether to opt for a patent or keep a trade secret is a choice best made with the assistance of an experienced intellectual property lawyer such as you will find at CVMS.
top
|
Q
What can I do if someone infringes my patent?
|
A
Bring the matter to CVMS right away. Since waiting too long may create legal defenses for the infringer.
top
|
Q
How do I know I'm not infringing someone else's patent?
|
A
One key advantage of using an intellectual property law firm is that its attorneys are experienced in researching that possibility, to protect you from a potentially costly patent infringement lawsuit.
top
|
Q
Why should I consider getting a federal registration for my copyrighted works?
|
A
Copyright protection is available for "original works of authorship fixed in any tangible medium of expression, now known or later developed." The owner of a copyright has exclusive rights to do or authorize the following: reproduce the work, prepare a derivative work, distribute copies of the work to the public, and to perform or display the work to the public. If someone is infringing your rights you must have a federal registration on your copyrighted works before you can initiate a lawsuit for infringement. In addition, you cannot claim damages for infringement that occurred prior to the date of the registration. Statutory damages are available if the work was registered within three months of the date of first publication. Statutory damages can be significant and eliminate the need to prove actual damages at trial. A federal registration also allows a copyright holder to be awarded attorney fees if successful at trial. The registration process is both simple and inexpensive. The filing fee is $30 per work and the forms with complete instructions for filing are available at www.copyright.gov/reg.
top
|
Q
How do I apply for copyright protection?
|
A
The creators of original materials - including software, instruction manuals, novels, music, sculptures, paintings, and dramatic works - already have implied copyright protection if they can demonstrate that they are indeed the creator. CVMS can help secure those rights through the copyright registration process, giving the creators exclusive rights to reproduce, adapt, publicly distribute, publicly display, and perform their copyrighted works. Once the rights are secured, CVMS assists the copyright owners in enforcing and licensing those rights.
top
|
Q
How does someone establish rights in a trademark and what is the difference between ® and ™?
|
A
In the U.S., rights in a trademark are established by using the mark on or in connection with particular goods or services. This is different than most of the rest of the world where trademark rights are established by registering the mark. The ™ symbol simply means that something is considered to be a trademark by the person using it. The ® symbol, on the other hand, can only be used if the mark is registered in the U.S. Patent and Trademark Office. While registration is not required in the U.S. it does provide several advantages in addition to the right to use the ® symbol. A mark must actually be used in order to obtain a registration, but it is possible to file an application to register a mark before the mark has been used based on the applicant's intent to use the mark on commerce. If an intent to use application is filed, the applicant's effective date of first use is the application date rather than the actual date of first use.
top
|
Q
If I register a trademark name, do I have to go after anyone who infringes the trademark?
|
A
A registered trademark name implies that the mark has brand value. Trademark infringement may diminish the value of the brand identity you have created and invested in. Generally, a registered trademark name is an asset worth protecting and the best way to do that is through an experienced trademark attorney such as you will find at CVMS.
top
|
Q
My company has updated the appearance of an older product. How can I protect this new product design?
|
A
A design patent may be just what you need. While a utility patent can protect the way something works, a design patent is significantly less costly, yet can provide valuable protection in the marketplace for the ornamental aspects of the appearance of a manufactured product. A design patent can protect designs for items as varied as household appliances and utensils, food products, clothing and machines, if the design features are not functional, even if the products function in well known ways. A design patent can also protect the ornamental design of just a part of a product, such as a sole of an athletic shoe. Furthermore, a design patent can be asserted against a product that is too similar in appearance even if there was no actual copying involved. In short, a design patent often can provide valuable protection for ornamental design features that may be the key to making a product attractive to purchasers.
top
|
Q
May a company's own activities prevent it from obtaining a U.S. Patent on its invention?
|
A
Most CEOs know that if their company-owned invention is published more than a year before attempting to file for a U.S. Patent, the company will be barred from obtaining a patent on the invention. The same is true for a company's public use of or sale of or even a mere offer to sell the invention in the U.S. But what about non-public or secret activities?
Even if the company's use of the invention is secret in the sense of not being accessible to the public, U.S. patent law forbids obtaining a patent on the invention if the secret use is for commercial purposes and occurred more than a year prior to attempting to file for a patent. The same rule applies to a secret sale or mere secret offer to sell the invention, and this rule is extended to situations where the invention is not yet in production and not even ready for commercial marketing.
top
|
Q
How do I pick a good domain name?
|
A
The preferred domain name extension is .com (short for "commercial"), but many names are already registered. First, try your company name, a shortened version of your name or an identifiable and easy to remember acronym. The shorter the better, but make sure that it is memorable. If one of these is not available, pick two words and combine them. Consider a suggestive term that relates to your business, products or services, such as "gardendelight." Pick an English word with a positive image. A domain name will be registered if the exact same domain name is not already registered. However, make sure that your proposed name (without the extension .com) is not similar to an existing trademark. Nothing is worse than becoming involved in a trademark infringement dispute and changing your domain name after it has become established. Search on the Internet to see if anyone is using your proposed domain name as a trademark. Consider having a trademark attorney conduct a trademark search, especially if you plan to establish a new corporate web site or invest substantially in the web site launch. Finally, once you have adopted a domain name, consider trademark protection for your name.
top
|