What is a patent?
A property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.
What can be patented?
“Anything under the sun that is made by man.” New and useful process, machine, article of manufacture, composition of matter, or any new and useful improvement thereof. But, there is further levels of analysis required…for an invention to be patentable it must be: Novel, Useful and Non-obvious to one having ordinary skill in the pertinent art at the time the invention was made.
What cannot be patented?
Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter. A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.
What do the terms 'patent pending' and 'patent applied for' mean?
They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the U.S. Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.
When should I use patent marking and patent pending?
A patentee who makes or sells patented articles, or a person who does so for or under the patentee is required to mark the articles with the word “Patent” and the number of the patent. The penalty for failure to mark is that the patentee may not recover damages from an infringer unless the infringer was duly notified of the infringement and continued to infringe after the notice. The marking of an article as patented when it is not in fact patented is against the law and subjects the offender to a penalty. Some persons mark articles sold with the terms “Patent Applied For” or “Patent Pending.” These phrases have no legal effect, but only give information that an application for patent has been filed in the USPTO. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.
Who can apply for and own a patent?
The actual inventor(s). According to the law, only the inventor may apply for a patent, with certain exceptions. If a person who is not the inventor should apply for a patent, the patent, if it were obtained, would be invalid. The person applying in such a case who falsely states that he/she is the inventor would also be subject to criminal penalties. If the inventor is dead, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is insane, the application for patent may be made by a guardian. If an inventor refuses to apply for a patent or cannot be found, a joint inventor or, if there is no joint inventor available, a person having a proprietary interest in the invention may apply on behalf of the non-signing inventor. An inventor may transfer all or part of his or her interest in the patent application or patent to a legal entity by an assignment. An assignment is a transfer of ownership of a patent application or patent from one entity to another. Assignments should be recorded with the USPTO Assignment Services Division to maintain clear title to pending patent applications and patents.
What is a provisional application for a patent?
Since June 8, 1995, the USPTO has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Claims and oath or declaration are NOT required for a provisional application. Provisional application provides the means to establish an early effective filing date in a patent application and permits the term “Patent Pending” to be applied in connection with the invention. Provisional applications may not be filed for design inventions.
The filing date of a provisional application is the date on which a written description of the invention, drawings if necessary, and the name of the inventor(s) are received in the USPTO. To be complete, a provisional application must also include the filing fee, and a cover sheet specifying that the application is a provisional application for patent. The applicant would then have up to 12 months to file a non-provisional application for patent as described above. The claimed subject matter in the later filed non-provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application. If a provisional application is not filed in English, then any non-provisional application claiming priority to the provisional application must have a translation of the provisional application filed therein. See title 37, Code of Federal Regulations, Section 1.78(a)(5).
Provisional applications are NOT examined on their merits. A provisional application will become abandoned by the operation of law 12 months from its filing date. The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application.
A surcharge is required for filing the basic filing fee or the cover sheet on a date later than the filing of the provisional application.
If two or more persons work together to make an invention, to whom will the patent be granted?
If each had a share in the ideas forming the invention as defined in the claims - even if only as to one claim, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.
How long does patent protection last?
Utility and plant patents are granted for a term which begins with the date of the patent and usually ends 20 years from the filing date, subject to the payment of maintenance fees. The term for Design patents is 14 years from the date the patent is granted, no maintenance fees are required for a design patent. PCT application reserves right to file patent in over 100 countries for up to 2.5 years from U.S. filing date.
Are there any state government agencies that can help me in developing and marketing of my invention?
Yes. In nearly all states there are state planning and development agencies or departments of commerce and industry which seek new product and new process ideas to assist manufacturers and communities in the state. If you do not know the names or addresses of your state organizations you can obtain this information by writing to the governor of your state.
What is a trademark or servicemark?
A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks.
Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office.
Do I have to register my trademark?
No, but federal registration has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
What are the benefits of federal trademark registration?
1. Constructive notice nationwide of the trademark owner's claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in foreign countries.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Is a federal registration valid outside the United States?
No. However, if you are a qualified owner of a trademark application pending before the USPTO, or of a registration issued by the USPTO, you may seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application," with the he International Bureau of the World Property Intellectual Organization, through the USPTO. For more information about the Madrid Protocol, Also, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. The laws of each country regarding registration must be consulted.
Where can I conduct a trademark search?
You may conduct a search free of charge on the USPTO website using the Trademark Electronic Search System (TESS). If your mark includes a design element, you will have to search it by using a design code. You may also conduct a trademark search by visiting the Trademark Public Search Library, between 8:00 a.m. and 5:00 p.m. at 2900 Crystal Drive , 2nd Floor, Arlington , Virginia 22202 . Use of the Public Search Library is free to the public. You can also conduct a search at a Patent and Trademark Depository Library near you.
What works are copyright protected?
Copyright protects “original works of authorship” that are fixed in a tangible form of expression. Copyrightable works are categorized as follows:
1) Literary works
2) Musical works, including any accompanying words
3) Dramatic works, including any accompanying music
4) Pantomimes and choreographic works
5) Pictorial, graphic, and sculptural works
6) Motion pictures and other audiovisual works
7) Sound recordings
8) Architectural works
What works are not protected by copyright?
Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.
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. However, registration is not a condition of copyright protection. Even though registration is not a requirement for protection, the copyright law provides several inducements or advantages to encourage copyright owners to make registration.
How long is the term of a copyright?
The Sonny Bono Term Extension Act, amends the provisions concerning duration of a copyright protection. Effective immediately, the terms of copyright are generally extended for an additional 20 years. Specific provisions are as follows:
For works created after January 1, 1978 copyright protection will endure for the life of the author plus an additional 70 years. In the case of a joint work, the term lasts for 70 years after the last surviving author’s death. For anonymous and pseudonymous works and works for hire, the term will be 95 years from the year of first publication or 120 years from the year of creation, which ever expires first.
For works created but not published or registered before January 1, 1978 the term endures for life of the author plus 70 years, but in no case will expire earlier than December 31, 2002. If the work is published before December 31, 2002 to the term will not expire before December 31, 2047.
For pre-1978 works still in their original or renewal term of copyright, the total term is extended to 95 years from the date that copyright was originally secured.
Are copyrights transferable?
Yes. Like any other property, all or part of the rights in a work may be transferred by the owner to another.
What type of entity should I form?
There are various types of entities to form – a corporation, a limited liability company, a partnership – our business attorneys will work with you to determine which entity is right for your business.
What is a professional limited liability company / a professional corporation?
Designated licensed professionals, such as doctors, architects, engineers, lawyers and accountants, may form a professional limited liability company or a professional corporation. Such entities enjoy the benefits of limited liability companies or corporations; however, investors are limited to those licensed in the profession.
What should I consider before taking on investors?
Investors provide outside capital, which enable your business to grow. However, their investment needs to be examined, and then codified in a written agreement to ensure both parties know what is expected, and how the investment and investor’s participation in the business will affect the business moving forward.
What happens if my business is sued?
If not handled properly, a lawsuit against your business could significantly damage the finances and reputation of the business. When a lawsuit is commenced against your business, a summons and complaint will be served upon an officer of the company. It is vital that these documents are forwarded to your attorney immediately, in order to preserve your business’ right to answer the allegations and file any relevant counterclaims.
What precautions do I need to take when hiring employees?
In addition to conducting thorough due diligence on all potential employees, it is vital all employees sign an employment contract laying out the terms of their employment, including salary, benefits, non-compete limitations and term of their employment. Our attorneys will work with you to draft agreements that ensure fair terms, while offering protection for your business.
How can I protect the name of my business?
Your business’ reputation and goodwill are arguably its most valuable assets. Trademarking the name of your business is essential to protecting these assets. Our intellectual property attorneys will assist you in obtaining a trademark that will allow you to market and promote your business with a federally registered trademark.
Can I use personal assets in running my business?
It is important to keep your personal and business assets separate. Once you form your business, you should also set up a separate bank account, as well as obtain a tax identification number for the business.
Are there restrictions on what I can name my business?
All names must meet the approval of the Department of State. Additionally, names of professional limited liability companies and professional corporations must be approved by the board which licenses the profession.