The Spectrum of Intellectual Properties
The Congress shall have the power “to promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
[Article 1, §8, Clause 8]
Patents
Q. What are the types of patents?
A. Utility, Design and Plant. A Design patent protects the non-utilitarian, aesthetic, ornamental appearance of a product - the way it looks, not how it functions. A Utility patent protects the way an article is used or works – the functional advantages of its structure or composition. A Plant Patent protects a distinct and new variety of plant, other than a tuber-propagated plant or a plant found in an uncultivated state, invented or discovered and asexually reproduced.
Q. What protection does a patent afford?
A. Patents give their owner a negative right: They enable their owners to prevent others from making, using, selling, offering to sell or importing the claimed invention. Patents do not necessarily enable their owners to make, use, etc. the claimed invention because someone else may have superior rights to do that.
Q. How long does patent protection last?
A. When a patent expires, that which was claimed is free to be used by anyone:
- Utility patents: 20 years from first filing date
- Design patents: 14 years from issue date
- Plant patents: 20 years from first filing date
Q. What is patentable?
A. An article of manufacture; composition of matter; machine; processes, including business methods; and living creatures from microbes to monkeys – but not humans.
Q. What is not patentable?
A. Printed matter; natural substances; inventions that violate the laws of physics; scientific principles; laws of nature; mental processes.
Q. What are the criteria for a patentable invention?
A. It must be new; useful; unobvious to one of ordinary skill in the art.
Q. How many patents have been issued?
A. According to the latest data available:
- 7,568,237 utility patents issued (as of 7/28/09)
- 597,275 design patents issued (as of 7/28/09)
- 485,312 patent applications filed in 2008
- 185,224 patents granted in 2008
- 6,055 patent examiners in 2008
Q. How do I obtain a patent?
A. An application must be filed with the U.S. Patent and Trademark Office within one year of first public use, offer for sale, sale, disclosure or publication. To obtain foreign patent protection, an application must be filed before first sale, public display, public use or publication of the invention.
Q. What needs to be included in a patent application?
A. An application should include:
- Information Disclosure Statement – This shows an understanding of the prior art (inventor’s starting point; work of associates; work of competitors; commercial products; scientific journals, prior patents; publications; novelty searches) and an assessment of problems with the prior art and the advantages of the invention.
- Specification – This detailed description of the preferred embodiments includes the best mode of use or manufacture in sufficient detail for others to make and use the patented item.
- Claims – The least common denominator of inventive elements or steps for the invention is specified in order to define what is to be protected from copying.
- Declaration – A statement that this is an original, first, sole or joint invention and that the applicant has read and understood the application and has disclosed the closest prior art.
- Drawings – They illustrate every claimed structure and structural relationship and are necessary to understand the invention and its preferred embodiment.
Q. What is the U.S. Patent Office procedure after receiving an application?
A. If the application is filed electronically, a serial number is immediately assigned; otherwise, if it is paper filed, it will take four to six weeks for a serial number. Six to 18 months after the application is filed it will be examined. This will trigger a first Office Action assessing the merits of the application. Within three months, an amendment may be filed that revises the claims but cannot introduce new matters. This amendment is considered by the Examiner and may trigger a Second Office Action; or allowance or rejection of claims. If allowed, within three months the applicant has to pay publication and issue fees and then, approximately 4 months later, the patent issues.
Q. What is "infringement" of patent rights?
A. An infringer is anyone who, without authority, makes, uses or sells any patented invention in the U.S. during the term of the patent. There are 2 types of infringement:
- Literal infringement of claimed invention
- Doctrine of equivalents
Q. Who will the patentee have a case against?
A. A direct infringer; someone who is inducing infringement; or someone who is a contributory infringer.
Q. What are an infringer’s defenses?
A. The product is non-infringing – There is no literal infringement; it is not equivalent; it should be considered repair, not remanufacture.
Invalidity –The item was known or used in the U.S. before its invention by patentee; it was patented or described in a printed publication anywhere before invention by patentee; it was used or sold in the U.S. more than one year before the application was filed; it was patented or described in a printed publication anywhere more than one year before application filing date; or it was described in patent filed in the U.S. before this invention. Other arguments or defenses are the “experimental use exception” for experimental testing by patentee; anticipation; obviousness; and unenforceability due to
- Misuse
- Laches
- Estoppel
Q. What are the remedies for infringement?
A. An injunction and/or monetary damages based on reasonable royalty or lost profits. Note, however, that a failure to mark bars recovery for pre‑notice damages. Also, willful infringement can result in an award of treble damages. The defenses against willful infringement can be a non-infringement opinion of counsel based on study of the file wrapper, references, claims or an invalidity opinion – preferably based on art not before the examiner.
Trade Secrets
Q. What is a trade secret?
A. Almost anything useful or advantageous in a business activity that is not generally known. Specifically, this is defined to include:
All forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically or in writing.
[18 U.S.C. § 1839]
The owner has to take reasonable measures to keep such information from being available to persons other than those selected by the owner to have access thereto for limited purposes, and the information derives independent economic value from not being generally known by the public.
Q. What are examples of trade secrets?
A. Key inventions and processes
- Technical information (test data, research materials, details of manufacturing techniques, details of products, tolerances and specifications, know-how)
- Business information (customer list, sales information and selling techniques, purchasing information and supply sources)
- Planning information, projected growth, new market development, new products);
- Financial and legal information (financial data, costs, profits, margins, projections; minutes of financial and corporate planning sessions; legal documents; existence of lawsuits,)
- Corporate information (books and records, employment practices, corporate policies)
Q. What procedures are required for a trade secret?
A. Obviously, secrecy; identify and mark; treat everything as secret; limit access, need to know.
Q. What protection is available for trade secrets?
A. The right to prevent others from disclosing or using the secret.
Q. What are the advantages of trade secrets vs. other protection?
A. Indefinite duration; ready enforcement; freedom from competition; continued employment with a strong, profitable company.
Q. What are the disadvantages of trade secrets vs. other protection?
A. Susceptible to reverse engineering; can be easily lost; restrictions on business and employees; employee cannot work for competitor; trade secrets would inevitably be disclosed.
Q. What remedies are available for misappropriation of trade secrets?
A. Theft of a trade secret is a third degree felony in Ohio. Civil remedies (O.R.C. §§ 1333.61 – 1333.64) may include:
- Injunction
- Damages
- Award of attorney’s fees
Trademarks
Q. What is a trademark?
A. It can be a business nom de plume; good will, reputation; or identification of the source or sponsorship associated with a product or service.
Q. What are examples of identification of source?
A. These can be words (e.g. DIRT DEVIL; VISION; COKE; GENERAL ELECTRIC, etc.); logos; slogans (e.g. "Put the power of an upright in the palm of your hand." "Two all beef patties special sauce lettuce cheese pickles onions on a sesame seed bun." "Plop, plop, fizz, fizz. Oh what a relief it is!" "The king of beers," etc.); product configuration; package design; color (confined to a shape or configuration or per se [not confined to a shape or configuration]); sound (e.g. the notes G - E - C, etc.) or fragrance.
Q. Are there other types of marks?
A. Yes, there are membership marks (e.g. Masons, Shriners, etc.) and certification marks (e.g. Underwriters’ Laboratories; Good Housekeeping, etc.)
Q. What types of marks can you use for trade or service marks?
A. They can be fanciful or coined (e.g. KODAK; EXXON; POLAROID; CLOROX; SANKA, etc.); arbitrary (e.g. APPLE; SUN; SHELL; ROYAL, etc.); suggestive (e.g. COPPERTONE; 7-ELEVEN; HANDI WIPES; CHICKEN OF THE SEA; VISION, etc.); descriptive (e.g. RICH 'N CHIPS; CHAP STIK, etc.); laudatory (e.g. ORIGINAL; GOLD MEDAL, etc.); geographic (e.g. BANK OF AMERICA; CONTINENTAL; NATIONAL; PACIFIC, etc.); surnames (e.g. GALLO; MRS. SMITH, etc.) or generic (e.g. TRACTOR; VACUUM CLEANER; CANDY; ASPIRIN; ESCALATOR, etc.).
Q. How should you select a mark?
A. The more descriptive a mark, the more difficult it is to stop competitors. Favored mark should suggest a positive attribute about the product or service. The more distinctive a mark, and the more well-known a mark, the wider its scope of protection. Avoid selecting famous marks in other fields (dilution).
Q. What should you look for in researching a mark?
A. You don’t want new mark to be confusingly similar to another’s. Search for similar marks; similar goods/services; or similar trade channels.
Q. How do you establish rights to a trademark?
A. Through use (rights would be limited to geographic scope of use) or by federally registering (provides nationwide scope). If filing federally, you need to file based on actual use in commerce and based on bona fide intent to use.
Q. What’s the advantage of registering?
A. You get a national priority upon filing that creates a presumptive evidence of validity and owner’s right to use mark. It also enables Customs to stop infringing or counterfeit goods and provides Federal courts with jurisdiction, which can trigger possible criminal penalties or increased damages.
Q. How should I indicate my trademark or service mark?
A. If not registered, use TM or SM after your mark. If your mark is registered, you would use ®, or "Reg. U.S. Pat. & TM Off." Follow proper use rules of thumb: If trademark is used as a proper name, CAPITALIZE; use generic words with marks; do not pluralize singular marks; do not make possessive; do not use as a verb; be consistent in how mark is used.
Q. Can I lose rights to a trademark or service mark?
A. Yes, you can do it formally by abandon with no intent to resume use; or by licensing to others without quality control; or by failure to police against misuse; or by becoming a generic term like cellophane, aspirin, and escalator.
Trade Dress
Q. What is trade dress?
A. All the elements making up the overall image that serves to identify the product presented to the consumer. Components of trade dress might include size, shape, color or color combinations, texture, graphics, or sales techniques.
Q. What are some examples of trade dress?
A. The appearance and decor of a chain of restaurants like Chuck E. Cheese's; the overall design of a sports shoe; the "Marlboro Man" western cowboy motif; a fish-shaped cracker; the "G" shape of the frame of a Gucci watch; the distinctive performing style of a rock group; the design of a flashlight; a magazine cover design, etc.
Q. Can trade dress be registered?
A. Yes, if the elements of trade dress are capable of being listed and defined.
Copyrights
Q. What is copyright protection?
A. Established by the Constitution, copyright protection subsists "... in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced or otherwise communicated."
[17 U.S.C. 102(a)]
Q. What are copyrightable subject matter?
A. Literary works; musical works and accompanying lyrics; dramatic works and accompanying music; pantomimes and choreographic works; pictorial, graphic and sculptural works; motion pictures and other audiovisual works; sound recordings. The presence or absence of copyright notice does not have any significance.
Q. What is not copyrightable?
A. Works not fixed in a tangible medium (e.g., unrecorded choreographic works, unrecorded or unwritten improvisational speeches); titles, names, phrases, slogans, symbols, mere listing of ingredients/contents; ideas, procedures, processes, systems, methods of operation, concepts, principles or discoveries; works that are entirely common property and have no original authorship.
Q. What rights are associated with copyright?
A. Copyright is a property right. It allows the owner to:
- Reproduce the work in copies
- Prepare derivative works
- Distribute copies to the public by sale, lease or other transfer
- Perform the work publicly
- Display the work publicly
Q. Who owns the copyright?
A. Copyright vests in the author or authors of the work. Copyright begins at the moment a work is created or fixed in a tangible medium.
Q. What are "works made for hire"?
A. A work prepared by an employee within the scope of his or her employment; or a work specially ordered or commissioned.
Q. What is the term of copyright protection?
A. If the work was created after 1978, protection exists for the life of author plus 70 years (whether published or not). In the case of works made for hire, protection is 95 years from first publication or 120 years from year of creation, whichever is earlier. If created pre-1978, protection is 95 years from publication with proper notice and timely renewal request.
Q. How do you "notice" copyright?
A. By adding the copyright symbol (©, Copyright, Copr.) to the work and including the name of copyright owner and year of first publication. For example:
- © Jane Doe 2002
- © ABC Corp. 2002
Q. Is notice required?
A. As of March 1, 1989, notice is not required; however, notice is recommended as a deterrent against potential infringers and as an aid against a defendant’s claim of innocent infringement.
Q. Is registration required?
A. No, but registration becomes important if there are any infringers. Registration is required before an infringement suit can be brought in Federal Court. Also, registration prior to three months after first publication entitles registrant to possible statutory damages ($750 to $30,000). Registration later than three months subsequent to first publication entitles registrant only to actual damages.
Q. How do I register my copyright?
A. By completing an application form, downloadable from http://www.loc.gov.copyright, paying a fee (currently $30), depositing one complete copy for Unpublished works or two complete copies for Published works and submitting the application, fee and deposit to the Copyright Office. The registration date will be the date the materials are received.
Q. Do I need permission to use copyrighted work?
A. It’s always a good idea to obtain permission from the copyright owner if you copy work. Without permission, you may face liability and damages, which will be greater if you are held to have willfully copied.
Domain Names
Q. What is a domain name?
A. It is the address where an individual or business can be found on the Internet. The two levels to a Domain Name are the top-level domain (its extension, i.e., .com) and the secondary-level domain (your chosen name, i.e., FaySharpe).
Q. What extensions are or are not available to the public?
A. Extensions available to the public* include:
- .com (commercial for-profit organizations)
- .biz (solely for businesses)
- .net (network infrastructure machines and organizations)
- .org (non-profit organizations)
- .edu (colleges and educational institutions)
- .info (sharing personal or company information)
- .uk, .de, .jp (country extensions such as United Kingdom, Germany and Japan)
Extensions not available to the public* include:
- .gov (U.S. government)
- .mil (U.S. military)
- .int (international organizations)
*Domain administrator must verify entities are what they say they are
Q. How do I find out if a domain name is available?
A. Conduct an online search at the Internet Corporation for Assigned Names & Numbers (ICANN) approved domain administrator’s website:
- .com, .net and .org – operated by Verisign Global Registry Services
- .biz – operated by NeuLevel
- .name – operated by Global Name Registry
- .info – operated by Afilias Limited
Q. How do I choose/register my domain name?
A. The Basic Rules for a domain name are: use only letters, numbers or hyphen; don’t put a hyphen at end or beginning of the name; the name must be less than 63 characters. After choosing a name that is available, register it by paying a registration fee to the appropriate domain administrator (approximately $35/year).
Q. How are domain name disputes resolved?
A. A lawsuit can be brought under The Anticybersquatting Consumer Protection Act, which is intended to prevent registration of domain names identical or confusingly similar to a distinctive or famous mark with bad-faith intent to profit from that mark. Uniform Domain Name Dispute Resolution Policy (UDRP) is an arbitration process conducted before the ICANN-approved UDRP administrator.