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INTELLECTUAL PROPERTY
QUESTIONS AND ANSWERS
 Do Trademarks, Service Marks, Copyrights and Patents
protect the same things? No. Trademarks, copyrights and patents all
differ.
- A trademark is a word, phrase, symbol or design, or a combination of
words, phrases, symbols or designs, that identifies and distinguishes
the source of the goods of one party from those of others.
- A service mark is the same as a trademark, except that it identifies
and distinguishes the source of a service rather than a product.
- A copyright protects an original artistic or literary work.
- A patent protects an invention.
What Is a Patent? A patent for an invention is
the grant of a property right to the inventor, issued by the United States
Patent and Trademark Office. The right conferred by the patent grant is,
in the language of the statute and of the grant itself, "the right to
exclude others from making, using, offering for sale, or selling" the
invention in the United States or "importing" the invention into
the United States. What is granted is not the right to make, use, offer
for sale, sell or import, but the right to exclude others from making,
using, offering for sale, selling or importing the invention.
What Is a Patentable? The controlling United
States Statute is 35
USC 101 and it provides that "Whoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions and requirements
of this title."
Excluded from patent protection by judicial decision are laws of
nature, physical phenomena and abstract ideas. See the web pages on software
and business
methods for some discussion of what fits under these exclusions.
Do I Have to Commercialize My Invention?
No. You must only disclose the invention in the manner
prescribed. The Patent Clause of the United States Constitution
authorizes Congress “[t]o promote the Progress of Science and useful
Arts, by securing for limited Times to . . . Inventors the exclusive Right
to their respective . . . Discoveries."
The Patent laws enacted pursuant thereto require disclosure of the
invention in return for a right to exclude for a limited time. The
Supreme Court explained, "The disclosure required by the Patent Act
is 'the quid pro quo of the right to exclude.'" J.
E. M. AG Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S.
124 (2001). The Supreme Court later explained that it is a
"given that immediate disclosure is not the objective of, but is exacted
from, the patentee. It is the price paid for the exclusivity
secured." Eldred
v. Ashcroft, 537 U.S. 186 (2003).
Commercialization may be the means to get a return on your invention,
but it is not a part of the bargain for the exclusive rights
granted. The bargain involved in a patent is that society gains by
the addition to the public domain of a new and innovative intellectual
idea and in return grants a 20-year right of exclusivity.
Is a Novel Idea Enough to File for a Patent?
You do not have to have an actual device or a prototype to obtain a
patent. However, in order to obtain a patent you must describe the
invention in such a way so that others can make and use the invention
after the patent expires. In other words, you must describe how your
invention is made and what it does. The invention may not be obvious over
existing technology and must be useful. The invention must
accomplish a practical application. That is, it must produce a “useful,
concrete and tangible result.” You may be able to obtain a patent
even if you are using components that can be obtained commercially and
used in your invention, even though you don't know how those components
work. However, if those components are patented themselves, you will not
be able to employ your patent unless you have a license to use those
patented components.
What is Prior Art? It is a
very broad category describing what is already known. For example, it
includes any invention patented anywhere in the world or any published
information anywhere in the world. The term, "prior art" is
relevant because a patent application will be rejected, or a patent
declared invalid if issued, if someone else had described the invention in
open literature before the application was filed. In some cases, even
unpublished prior art by another may affect patentability, for example if
inventors are working on a research team and one inventor knows of another
secret invention and makes an obvious improvement to it. A patent
application for the obvious improvement to it could be rejected by the
patent office even though the other invention was secret and not
published!
What Disqualifies My Invention for
a Patent? The law (35
USC 102) can be divided into 5 broad activities or events that when
present, prevent a patent from issuing, or if one issues, for invalidating
the patent.
Essentially and paraphrasing:
1. You weren't the first to invent it as evidenced by the fact
that--
- it was known or in use in the United States before your invention
date;
- it was already patented or described in a printed publication
anywhere in the world before your invention date;
- someone else got a patent on it on their application filed before
your invention date;
- someone else filed a patent application after you but invented it
first and had not abandoned, suppressed, or concealed the invention
and exercised reasonable diligence in filing the application.
2. The following occurred, usually by your
action, more than one year before applying for a patent in the
United States---
- you patented your invention in another country;
- you described your invention in a printed publication anywhere in
the world;
- you used your invention in public in this country: typically
this means that the use was accessible to public, on display to the
public, or was a commercial use: note that public use in a
foreign country does not bar a patent;
- you sold or attempted to sell your invention in this country,
whether or not you did so subject to a confidentiality
agreement: note that activity wholly in a foreign country does
not bar a patent.
Note: The U.S. (1 year), Australia (1 year), Canada (1 year),
Russia (6 months), and Japan (6 months) are the only major countries that
offer a general grace period for disclosures before filing an
application. Portugal (1 year) and Spain (6 months) offer a grace
period in specific instances.
Almost all the others have no grace period for non-abusive
disclosures prior to filing for a patent. For example, if the
applicant willingly discloses the invention before a patent application is
filed in Europe, such disclosure will disqualify the invention for patent
protection in Europe, with a limited exception of a 6-month window for
displaying the invention at an official international exhibition falling
within the terms of the Convention
on international exhibitions.
3. You abandoned the invention.
4. Someone else shows they actually invented it and not
you. This covers the situation where you lied when you claimed you
were the inventor and also includes someone showing that the inventive
entity is you plus someone else.
5. A patent or certificate issues in a foreign country on an
application you filed more than one year before the filing date of your
U.S. patent application.
I Want to Proceed, What Do I Do Next?
- For a patent, you may telephone
or email Louis Ventre, Jr. and find additional patent
information by clicking here. You will get a free initial
consultation. Attorney Louis Ventre, Jr. may not be able to
represent you because of potential conflicts of interest, or for some
other reason. However, if you and Attorney Louis Ventre, Jr.
agree on representation, you will be sent a retainer agreement to
sign, which will formally establish a lawyer-client
relationship. After you and Louis Ventre, Jr. both agree on
representation, you'll get a free preliminary patentability
determination, with your money back if you then decide not to proceed
with the patent application.
- For a trademark, you may telephone
or email Louis Ventre, Jr. and find additional trademark
information by clicking here. You will get a free initial
consultation. Attorney Louis Ventre, Jr. may not be able to represent
you because of potential conflicts of interest, or for some other
reason. However, if you and Attorney Louis Ventre, Jr. agree on
representation, you will be sent a retainer agreement to sign, which
will formally establish a lawyer-client relationship.
- For a copyright, you may telephone
or email Louis Ventre, Jr. and find additional copyright
information by clicking here. You will get a free initial
consultation. Attorney Louis Ventre, Jr. may not be able to represent
you because of potential conflicts of interest, or for some other
reason. However, if you and Attorney Louis Ventre, Jr. agree on
representation, you will be sent a retainer agreement to sign, which
will formally establish a lawyer-client relationship.
- For other intellectual property
requirements, you may telephone
or email Louis Ventre, Jr. You will get a free initial
consultation. Attorney Louis Ventre, Jr. may not be able to represent
you because of potential conflicts of interest, or for some other
reason. However, if you and Attorney Louis Ventre, Jr. agree on
representation, you will be sent a retainer agreement to sign, which
will formally establish a lawyer-client relationship.
How Long Does a Patent Last? The term of a new Utility
and Plant Patents
is 20 years from the date on which the application for the patent was
filed in the United States. The term of a new design patent is fourteen
years from the date of patent grant.
Filing a provisional
patent application first and then a non-provisional patent application
can have the effect of extending patent protection an additional year.
However, patent protection lapses if the owner fails to pay maintenance
fees due 3.5, 7.5 and 11.5 years from the patent issue date. Also, when
the Patent Office delays a the grant of a patent because of appeals,
interferences, or the placement of secrecy orders, patent term extensions
or adjustments may be available.
Is a U.S. Patent Honored in Other Countries?
U.S. patent grants are effective only within the United States, U.S.
territories, and U.S. possessions. See the page on PCT
applications for more information on international patent protection.
On your PCT page, you said it is easy to make
deadline mistakes; can you give me an example? Yes. WIPO published
(March, 2005) this "practical advice" question and answer, which
I reproduce here in its entirety:
Time limit for submitting a formal response to a written opinion of the
ISA where a demand for international preliminary examination is being
filed.
Q: I intend to file a demand for international preliminary examination,
as well as a response to the written opinion of the ISA (in the form of
arguments), including amendments under Article 34. I will file the
demand within the new time limit under PCT Rule 54bis for filing demand.* However, that time limit will expire very shortly
and the response to the written opinion is not ready yet. Does the
response to the written opinion have to be filed at the same time as the
demand, or can it be filed later, and if so, what is the time limit for
doing so? Can the time limit for filing the response be extended? What
happens if the response is submitted late?
A: At the earliest, a formal response to the written opinion of the
International Searching Authority (ISA) and/or amendments under PCT
Article 34 may be submitted by the applicant to the International
Preliminary Examining Authority (IPEA) together with the demand. At the
latest, such responses may be submitted until the time when the examiner
at the IPEA starts to draw up the international preliminary report on
patentability (Chapter II of the Patent Cooperation Treaty) (IPRP
(Chapter II)) (PCT Rule 66.4bis).
The time when the IPEA starts to draw up the IPRP (Chapter II) depends
on the inner workings of the IPEA and is therefore difficult to monitor
for applicants; at the earliest, it should not normally be before the
time limit under PCT Rule 54bis.1(a) for filing the demand (that is,
within 3 months from the date of transmittal of the international search
report (ISR) and of the written opinion of the ISA, or within 22 months
from the priority date, whichever expires later) (see PCT Rule 69.1). It
is more likely to occur very shortly after the expiration of that time
limit where the first written opinion (established by the ISA) is used
by the IPEA as its own first opinion (PCT Rule 66.1bis(a)). One rather
exceptional situation which may result in the IPRP (Chapter II) being
drawn up before the expiration of that time limit would be if both the
demand is filed early, before the international search has started, and
if the ISA also acts as IPEA, in which case the international
preliminary examination may start at the same time as the international
search (see PCT Rule 69.1(b)).
Note that if the IPEA is not the same as the ISA, and the IPEA has
notified the International Bureau under PCT Rule 66.1bis(b) that the
written opinion of the ISA will not be considered by the IPEA as its own
written opinion (the European Patent Office is the only Office which has
made such a notification-see PCT Newsletter No. 01/2004, page 4), you
will receive an additional written opinion established by the IPEA (Form
PCT/IPEA/408), and will therefore be given an additional opportunity to
respond to the written opinion within a time limit fixed by the IPEA.
That time limit may be extended upon request (see PCT Rule 66.2(e)).
If the IPEA does consider the written opinion of the ISA to be its own
written opinion (PCT Rule 66.1bis(a)), and you intend to file a response
to that written opinion with the intention that it be considered by the
IPEA, but are not in a position to submit it with the demand, and
especially if you are in danger of missing the time limit under PCT
Rule54bis.1(a), you could try and delay the establishment of the IPRP
(Chapter II) until your response has been received by the IPEA by:
- asking the IPEA to wait until a formal response has been received
before it starts to draw up the IPRP (Chapter II), either by a
letter filed with the demand, or by phone with the examiner in
charge of your case (but bear in mind that, if the time limit under
PCT Rule 54bis.1(a) has expired, it will be at the discretion of the
IPEA whether it will wait for your formal response); or
- checking Box No. IV, item (1), on the Demand Form to indicate that
you wish the international preliminary examination to start on the
basis of the description, claims or drawings as amended under PCT
Article 34. If you do not submit such amendments with the demand,
the IPEA will invite you to submit the amendments within a time
limit fixed in the invitation (see PCT Rule60.1(g)) and should not
start the international preliminary examination before it has
received the amendments or before the time limit fixed in the
invitation has expired, whichever occurs first (see PCT Rule
69.1(e)). Note that, apart from the situation where the IPEA issues
its own written opinion (see third paragraph of this answer), this
is the only situation in which the IPEA will invite the applicant to
submit the amendments- it will not issue any reminders otherwise.
In order to be certain that your amendments and arguments will be
taken into account by the IPEA, it is therefore in your best interest,
wherever possible, to respond as soon as possible to the written
opinion of the ISA, preferably, at the time of filing the demand, or
at least not later than at the expiration of the time limit under PCT
Rule 54bis.1(a). When this is not possible, however, your best option
is to follow one of the two alternatives mentioned above.
Note that this item relates specifically to formal responses under
Chapter II to the written opinion of the ISA, and that informal
comments under Chapter I on the written opinion of the ISA are dealt
with separately in the "Practical Advice" in PCT Newsletter
No.10/2004. For further information on responses under Chapter II to
the written opinion of the ISA, see PCT Applicant's Guide, paragraphs
393 to 394. For general information on the new search and examination
system, see the "Practical Advice" in PCT Newsletter No.
12/2003.
*The demand must still be filed within 19 months
from the priority date where the applicant wishes to enter the
national phase (rather than the regional phase) in those States which
have not withdrawn their notifications of incompatibility of PCT
Article 22(1).
What is Patentable? Any new and useful process,
machine, article of manufacture, or composition of matter, or any new
useful improvement thereof, is patentable. The Patent Office classifies
this type of patent as a "Utility
Patent." Software
inventions are filed as utility patent applications.
Also, one can patent a new, original, and ornamental design for an article
of manufacture. The Patent Office classifies this type of patent as a Design Patent.
A design patent protects only the appearance of the article and not its
structural or utilitarian features. Also, see this Law Firm's page on design patents.
A design patent is a relatively inexpensive and effective method to
protect against knock-offs that use non-infringing technology, but
nevertheless attempt to outwardly look like a patented product. The
subject of a design patent application must be distinctive and must not be
dictated solely by function.
Finally, one can patent any distinct and new variety of plants that can be
asexually reproduced. The Patent Office classifies this type of patent as
a Plant Patent.
Other types of intellectual property protection for plants are also
available.
A provisional
patent application may provide added benefits, if filed prior to a
non-provisional utility patent application.
How Do I Know Whether I Need a Design or Utility
Patent? In general terms, a "utility patent" protects the
way an article is used and works, while a "design patent"
protects the way an article looks, that is, the novel, ornamental
features. Both design and utility patents may be obtained on an article if
invention resides both in its utility and ornamental appearance. While
utility and design patents afford legally separate protection, the utility
and ornamentality of an article are not easily separable. Articles of
manufacture may possess both functional and ornamental characteristics.
However, a design for an article of manufacture that is dictated primarily
by the function of the article lacks ornamentality and is not proper
statutory subject matter for a design patent.
What is a Disclosure Document Filing? This
filing is no longer available. The U.S. Patent and Trademark Office
announced that its Disclosure Document Program was discontinued as
of February 1, 2007.
When it was in effect, a Disclosure Document filing was an
inventor-signed paper disclosing an invention. The date of the Disclosure
Document's receipt in the United States Patent and Trademark Office
was evidence of a date of conception if it is referenced in a
related patent application.
A Disclosure Document was not a patent application, and the date of its
receipt in the Patent Office did not become the effective filing date of
any patent application subsequently filed.
One final caution: mailing yourself a sealed letter with invention
documents enclosed is not an accepted method of proving your invention's
conception date to the United States Patent and Trademark Office.
Are patent applications published by the Patent
Office? Utility patent applications filed on
or after November 29, 2000 are published after 18 months. Design patent
applications are not published. Publication provides provisional rights to
obtain a reasonable royalty during the period beginning on the date of
publication of the application by the United States Patent and Trademark
Office and ending on the date the patent is issued. An application may be
published earlier than the end of such eighteen-month period at the
request of the applicant. The applicant can prevent publication if an
applicant makes a request upon filing the application certifying that the
invention has not and will not be the subject of an application filed in
another country, or under a multilateral international agreement, that
requires eighteen-month publication.
Can a Citizen of a Country Other than the United
States Apply for a Patent or a Trademark in the United States? Yes.
Anyone in the world may apply for a United States patent or trademark. A
patent application must be in the name of the inventor.
Where there is more than one inventor, all must apply. Each inventor must
state his or her address and citizenship. A word of caution is
advised: Many countries make it a criminal offense to file for a
patent in another country without obtaining a license from the home
country's patent office. See http://www.lventre.com/foreign.html
for more information.
Some trademark service providers state that they may
consult with the United States Patent and Trademark Office before they
submit an application: Is that true? Be very wary of claims such as
this. The United States Patent and Trademark Office will answer process
questions, but under no circumstances will any employee comment about
whether a mark is eligible for registration.
Trademarks in Other Countries? Trademark
offices in many countries register marks without comparing them with
existing trademark registrations and applications received earlier. They
leave it to competitors to give notice of opposition once the mark or the
application has been published/registered. Therefore, obtaining trademark
registration in such countries is no guarantee that the trademark will not
be infringing on the rights of others.
What is "Fair Use" in
terms of using copyrighted material? Fair use is a defense to
copyright infringement. One might think that such a defense would be
clearly defined. While it is a part
of U.S. Code, fair use is highly specific to the facts of a use. For
example, a backup copy of a CD for one's personal use clearly fits into
this definition. Other situations are not so clear and often involve
the evaluation of eight factors. Pierre N. Leval, now a Judge on the
Second Circuit Court of Appeals, explained in his article
"Commentary: Toward a Fair Use Standard" in the Harvard Law
Review. 103 Harv. L. Rev. 1105 (1990) that fair use "must be of a
character that serves the copyright objective of stimulating productive
thought and public instruction without excessively diminishing the
incentives for creativity." The
notes accompanying U.S. Code include some of the Report from the House
of Representatives, which is a good part of the background on the fair use
defense. Judicial decisions add considerably to the U.S. Code.
One of the better on-line analyses of fair use is at a University of Texas site. While this site discusses it
in terms of course materials, it is useful to understand the factors
involved. If you would like an opinion for a definitive situation, please contact
The Law Firm of Louis Ventre, Jr. for a free initial consultation.
What is a "compulsory
license" in terms of using copyrighted material?
Compulsory licensing applies to the making and distribution of
phonorecords of nondramatic musical works. The law provides that, once
phonorecords of a musical work have been publicly distributed in the
United States with the copyright owner's consent, anyone else may, under
certain circumstances and subject to limited conditions, obtain a
"compulsory license" to make and distribute phonorecords of the
work without express permission from the copyright owner.
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