Intellectual property (IP) is often a company’s and individual’s valuable asset, yet it is often overlooked.
The most common forms of protection for IP are patents, trade secrets, trademarks and copyrights.
In Simple and Concise Language
To visualize these forms of IP protection, consider a container of household cleaning fluid. This single product could have a variety of intellectual property protections.
- A utility patent on the combination of ingredients constituting the fluid.
- A design patent on the shape of the container.
- A trademark on the name of the product or an associated logo.
- The process steps in making the fluid kept concealed as a trade secret.
- A copyright on an artistic label or on an original advertisement for the product.
Jacobson and Johnson LLC considers the value of each type of protection and advises our clients regarding the best and most cost-effective manner of protection, enabling the client to arrive at a well-considered decision
A patent on an invention allows the patent owner to prevent others from making, using or selling the invention throughout the U.S. without the patent owner’s consent and, therefore, is a precious business asset. In return for suitable compensation, the patent owner can sell (assign) or license (allow its use) the patent to another party.
The U. S. Patent Office issues two types of patents, namely a utility patent and a design patent.
A utility patent protects the function(s) and/or construction of an invention and signifies new and useful improvements to devices, processes or compositions of matter and has a life-term of 20 years from the filing date of the application for patent.
A design patent protects the overall appearance of an invention and is for new, original and ornamental design for an article of manufacture. It has a life-term of 14 years from the date of issuance.
Two types of patent applications exist, namely, provisional and non-provisional (or regular).
A provisional patent application can be viewed as an informal description of an invention and is not required to follow the guidelines needed for a regular patent application; However, the provisional application can establish priority rights to an invention if filed in the U. S. Patent and Trademark Office.
The U. S. Patent and Trademark Office does not review provisional applications. One of the benefits of filing a provisional patent application is that the cost is considerably less compared to a non-provisional (or regular) patent application. However, to retain the protection afforded by a provisional application, a regular patent application must be filed within one year of the filing date of the provisional application.
Recent significant changes to the U.S. Patent laws resulted in the U. S. Patent Office giving priority to the party, which first files a patent application (first-to-file) as opposed to the first to invent. Therefore it may be advantageous to file a provisional patent application.
Regular patent applications must meet all the specific formal requirements of the U. S. Patent Office, including a written detailed description, an abstract, a set of claims and formal drawings. A patent is obtained by filing the patent application, along with the required government fees, in the U.S. Patent Office where it undergoes a close and somewhat lengthy patent examination process.
While preferable, it is not essential that the inventor constructs a model or prototype of the invention a regular patent application is acceptable if the information about the invention meets the U.S. Patent Office requirements.
An inventor may require assistance to complete the invention such as: drafting or technical help, or a fabricator to construct a part or produce a model or a prototype. In that case, the inventor should ensure, with signed documentation, that the party providing the assistance acknowledges the inventor’s ownership of the invention and promises not to reveal the invention to anyone without the inventor’s consent.
A trademark or service mark usually comprises a word, a phrase, a logo, a design
or combinations thereof relating to the goods or services to the provider.
A trademark can become a valuable intellectual property asset of a Company or Business. While patents and trademarks protect different types of intellectual property, a significant difference between patents and trademarks is that a patent provides protection for a limited period, while a trademark registration provides protection for as long as the mark is in use.
U. S. Federal trademark rules prohibit obtaining rights to a generic or well-known descriptive name or phrase for a product or service. An arbitrarily selected term or logo or phrase is preferable.
Before adopting a trademark, a party should search trademarks to ascertain conflicting marks. At the least, one should conduct a trademark search of federally registered trademarks, not only for an identical mark, but also for similar marks for comparable types of goods or services.
While most states provide statewide trademark protection, obtaining federal registration for nationwide protection is preferable. U. S. Patent and Trademark Office rules require use of a mark in interstate commerce before federal registration, can be obtained but current rules and regulations also allow a party to apply for a federal registration in anticipation of using the mark. This is referred to as an “intent-to-use” (or ITU) trademark application. The ITU application process provides an opportunity to obtain priority for federally registering a trademark as well as allowing one to start the registration process before the sale of a product or a service.
After adopting a trademark and before federal registration it may be advisable to emphasize the mark as a trademark by various means, such as capitalizing or italicizing a word mark; using TM or the word “trademark” in association with the mark; underlining, etc. Anything that may be construed to indicate that the mark is federally registered, for example, the symbol®, before it is registered, may cause the trademark office to deny registration for the mark.
Copyright is protection of an idea, such as works of music, literature, drama, choreography,
graphics, audio-visual, architecture, sound recordings and more.
Copyright protection arises upon recording or documenting the works in a tangible medium. Under the U.S. Copyright Act, the works are placed into various categories.
Although under current law placement of a suitable notice of copyright is not required, use of a notice, where possible, is preferable. That notice should take the form of an encircled © (or suitable variation) along with the year that the works were published and the copyright owner’s name placed in close association with the works. Additionally, a party should apply for federal copyright within a short time after publication of the works.
Under the U.S. Copyright Act, a copyright owner may be able to obtain compensation from violators of the copyright protection. Also, the owner can license use of the copyrighted material.
Post Patent Grant Proceedings
Protection after the patent.
Post-Grant Review is a relatively new procedure used to attack an issued patent through the U.S. Patent and Trademark Office instead of through the US Court System. Post-Grant Review applies to patents that have an effective filing date on or after March 16, 2013. A Post-Grant Review must be brought within nine (9) months after the issue or reissue date of a patent.
One of the benefits of Post-Grant Review is that Post-Grant Review allows challenges to the validity of a patent on a multitude of grounds compared to previously available procedures. Another benefit of Post-Grant Review is that the process is relative fast in that the U.S. Patent and Trademark Office has a statutory deadline of one (1) year to complete its review although this period may be extended up to six (6) months for good cause.
Inter-Partes Review is also a relatively new procedure used to attack an issued patent through the U.S. Patent and Trademark Office instead of through the US Court System. Inter-Partes Review may be filed for any currently issued patent although for patents that have an effective filing date of March 16, 2013 or thereafter, Inter-Partes Review may be initiated after nine (9) months from the grant of a patent or after completion of Post-Grant Review of the patent.
The main difference between Inter-Partes Reviews and Post-Grant Review is that under Inter-Partes Reviews a challenge to the validity of a patent can only be brought on grounds that a patent is invalid due to anticipated or obviousness based on patents and printed publications.
Similar to Post-Grant Reviews , the process Inter-Partes Review is relative fast in that the U.S. Patent and Trademark Office has a statutory deadline of within one (1) year to complete their review although this period may be extended up to six (6) months for good cause.