FREQUENTLY ASKED QUESTIONS
INTELLECTUAL PROPERTY QUESTIONS AND ANSWERS
Why should I seek a patent? The reasons given most for seeking a patent are: (1) potential investors say that patents are important to their investment decisions; (2) owners and investors want to maximize their avoidance of costly infringement lawsuits by others having the same invention; (3) owners and investors want have a patent of their own to provide leverage in cross-licensing negotiations with others that may have similar patents; (4) owners and investors want to display “signals” of business competency in owning intellectual property that is the foundation of their business; and, (4) investors want to see a patent so there could be some marketable asset if the company fails in the market.
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 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” under 35 U.S.C. §154(d) 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.
The right to collect damages from publication to issuance are termed “provisional rights” because they are dependent upon conditions being met. An important condition is that but liability depends on actual knowledge of the infringer of the published application.
Also, such provisional rights may not be available if a substantive change has been made to a claim during patent prosecution after publication. “Although not a per se rule, “it is difficult to conceive of many situations in which the scope of a rejected claim that became allowable when amended is not substantively changed by the amendment.” Id. at 1348. Where a substantive change has been made to a claim, the allegedly harmed party has no provisional rights to assert.” Pandora Jewelry, LLC v. Chamilia, LLC (D. Md., August 8, 2008)
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 name the inventor. Where there is more than one inventor, all must be named. Each inventor must state his or her address. 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 country of residence patent office. See https://www.lventre.com/foreign 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. The U.S. Copyright Office publishes a phamphlet providing fair use examples. 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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LOUIS VENTRE JR
REGISTERED PATENT ATTORNEY
2483 OAKTON HILLS DR
OAKTON VA 22124-1530