INTELLECTUAL PROPERTY OVERVIEW
Intellectual property law involves the ownership of the creations of the intellect. The ownership is designated to owners by law. It includes:
- PATENTS: limited duration property right relating to invention, granted by USPTO in exchange for public disclosure of the invention.
- TRADEMARKS AND TRADE SECRETS: property right protection or wording/design for brands names and logos used in goods and services. Note the business name registered with state register agency does not grant trademark protection. Trademark protection is requested from USPTO.
- COPYRIGHTS: Protects original artistic or literary work, including commercial arts. It is requested from Copyright Office.
PATENT PROSECUTION AND LITIGATION
Any new and useful process (industrial or technical act or method), machine, manufacture or composition of matter (chemical composition) or any new useful improvement may be patented.
- WHAT CAN BE PATENTED? The invention must have useful purpose and cooperativeness. the invention must be novel and non-obvious. Abstract ideas cannot be patented.
- WHAT PROTECTION DOES A PATENT GIVES? It is a grant to exclude others from making, using, offering for sale or selling or importing invention in United States. The right is to exclude other from acting not right to act.
The first person filing the patent wins, not the first to create the invention!Thus, any invention described in a print publication, or in public use, on sale or otherwise available to the public before the effective filing date of the invention with USPTO, cannot be patented.
- FEATURES: An application can be provisional (pending prior application search and viability analyzes) or non-provisional (permanent application). Provisional applications can last up to 12 months, after that a nonprovisional application must be filed. Nonprovisional application must be filed with a declaration of invention and disclosure statement of originality.
- TYPES: UTILITY (useful and helpful inventions), DESIGN (new and non-obvious ornamental design for an article), AND PLANT INVENTION (new distinct variety of Plant discovered or invented and asexually reproduced such as hybrid or mutant and newly discovered seed).
- WHO MAY APPLY? An Inventor or its representative. Joint inventors must apply for patent as joint inventors. A person who only contributes financially is not a joint inventor and cannot file the application.
- FEES: There are fees to pay for the search of any prior application related to the invention, fee for the USPTO examiners, and fee for the issuance of the Patent.
- APPLICATION EXAMINATION BY THE USPTO: Non-provisional application examination is performed by the USPTO technology center for the areas of technology related to the invention. The examination center will verify the compliance with legal requirements and search through U.S for patent application, publication, foreign patent documents to see if it is new useful and non-obvious invention.
- OFFICE ACTION: written notification is issued by USPTO to the applicant informing if the patent application was granted or if there is any adverse recommendation, action or objection.
- APPLICANT’S REPLY: if the USPTO request more information the applicant must comply with the request and if the USPTO denies the application the applicant may request a reconsideration.
- FINAL REJECTION: After final consideration, the decision regarding the application for patent is final. However, the decision is appealable. USPTO director reviews the appeals.
- AMENDENT TO APPLICATION: Examiners of the UPSTO may require an amendment in order to approve the application instead of rejection the application. If so, and the applicant makes proper amendment application may be granted.
- PATENT ISSUE: A fee is requested for secure the patent and it is paid throughout the term of a patent like installments.
- PATENT TERMS: patents are temporary rights to invention and as such has terms. Utility and plants patents have terms of 20 years generally. Design patents have terms of 16 years. These terms count from the time patent application is filed. Terms may be extended if proceedings get interrupted, a secrecy order is issued or appeals are filed.After the term, the invention is not protected anymore.
- PUBLICATION OF GRANTED APPLICATION: 18 months after application is filed the application must be published, unless otherwise determined by USPTO.As a result of the publication, an applicant may assert provisional rights over an invention. These rights provide a patentee with the opportunity to obtain reasonable royalty from 3rd party that infringes a published application claim.
- INFRINGEMENT LITIGATION: unauthorized using, making, offering for sale, or selling patented invention during the term of the patent allows the patentee to sue the infringing party for relief.Remedies available are: Injunction to prevent future infringement and damages (reasonable royalties or lost profits). Punitive damages may be available for willful infringement.Defenses: patent invalidity (ex. Prior art/invention) and declaratory judgement of non-infringement.
- TREATIES AND FOREIGN PATENT APPLICATION: rights granted by U.S patent extend only throughout the United States territory and has no effect in a foreign country. An inventor must apply for patent in each county where he wishes to secure protection. There are treaties that facilitate the foreign application for the countries who are members of such treaties.
- FOREIGN APPLICATN TO U.S. PATENT: A foreign inventor has the same rights as a U.S. citizen to apply to a patent.If application to patent is submitted abroad prior to U.S. application, the U.S filing, must be done within 12 months from the first application(abroad) if application for utility and within 6 months if application for design patent.
TRADEMARK PROCESS AND LITIGATION
Trademarks protects brand names and logos used in goods and services. Business name or public domain (internet address) do not give a person trademark protection. The trademark protects the wording or design of a brand and must be registrable.
To be registrable the trademark must strongly identify the foods or service as a unique identity. It also must be not in use by anyone else. The USPTO performs a search in its data base for such determination.
COPYRIGHT PROCESS AND LITIGATION
Copyrights protects owner’s original creative work such as book, music, research, and other forms of creative expression, including symbols, paintings, photographs, sculptures, films and novels, advertisements, maps, computer programs and technical drawings.
It extends only to the expression not the idea, procedure, methods of operation or mathematical concepts.
Many people believe that you must register your work before you can claim copyright. However, no publication, registration or other action in the Copyright Office is required to secure copyright. Copyright is secured automatically when the work is created, and a work is “created” when it is fixed in a “copy or a phonorecord for the first time.” For example, a song can be fixed in sheet music or on a CD, or both. Although registration with the Copyright Office is not required to secure protection, it is highly recommended for the following reasons:
- Registration establishes a public record of the copyright claim.
- Registration is necessary before an infringement suit may be filed in court (for works of U. S. origin).
- If made before or within 5 years of publication, registration establishes prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.
- If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.
- Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies.
WHAT RIGHTS WILL COPYRIGHT GIVE ME?
- ECONOMIC: derivative financial reward from use.
- MORAL: non-economic interest such as authorship and right to oppose changes to a work to avoid creator’s reputation harm.
- Reproductions of the expression such as printed publication or sound recording;
- Public performance of art such as a play or musical work;
- Recording of the expression;
- Broadcasting of the expression by radio, cable, satellite;
- Translation of the expression to another language
- Adaption of the expression such as a novel to a film screen.
CAN I REGISTER COPYRIGHTS?
There is no need to registration under the Berne Convention, but registration facilitates the exercise of copyright and related rights making it easier to establish authorship.
There are national registration and recording systems which assist the holding of valuable information on creativity. Certificates of registration and certified copies of registry document. It provides information of work, authorship history and status through documented chain of transfer.
HOW REGISTERING WORKS?
Copyright office is the agency with authority over filing. The filing of the copyright provides:
- Right to statutory damages
- Makes easier to license expression and generate revenue from original work
- Makes it easier to exclude counterfeits and seek criminal charges against infringing party.
How long does copyright protection last?
The length of your copyright depends on when the work was created, published, and/or registered. Duration also depends on whether the work was created by an individual, more than one individual, or as employee or at the direction of another person or company. For works created by individual authors on or after January 1, 1978, copyright protection begins at the moment of creation and lasts for a period of 70 years after the author’s death. In the case of “a joint work” (prepared by two or more authors) the term lasts for 70 years after the last surviving author’s death. For works made for hire, and for anonymous and pseudonymous works, copyright protection generally lasts for 95 years from publication or 120 years from creation, whichever is shorter.
Substantial similarity between works will trigger copyright litigations. A copyright registration must be filed before the lawsuit can be filed.