• Home

In an open, freely competitive society, one of your most important rights is the right to protect the product of your intellect. If you come up with a new idea, you should, in all fairness, be able to exploit that idea without fear that others could steal it, especially if they do not pay for it.

Federal law, grounded in Article 1, Section 8, Clause 8 of the U.S. Constitution, provides intellectual property protection for all people. The law is written to benefit not only the one who conceives the new and better idea, but also the public. For example, a patent provides the inventor up to a twenty-year legal monopoly for the invention in exchange for describing the invention to the public in the form of the patent. A published patent adds to the wealth of knowledge of the country and allows others to start from a higher plateau of technical understanding from which to develop their own competing concepts and ideas. After the patent expires, the invention is cast into the public domain so that everyone is free to use the patented device, method or product.

If you come up with a new name for a product or service, you should be assured that no one else can adopt your name or design for similar goods or services. Federally granted trademark registrations protect you in this way. However, trademarks also protect the consumer by allowing selection of goods by easily identifiable markings without fear of being tricked into purchasing a cheaper, or less desirable, substitute.

Copyrights allow you as a writer or artist to protect your expression by giving you an exclusive right to reproduction, for a limited period. Copyrights, too, protect the purchaser from being tricked into buying a substitute when the purchaser is trying to buy a copy of a particular original work.

The Virginia State Bar Intellectual Property section, the official State organization of intellectual property lawyers, has prepared this pamphlet to give you some basic information concerning this field of law. 

A patent does not always guarantee your right to make, use or sell your invention.

A patentee or patent owner has the right under title 35 of the United States Code to exclude others from making, using and/or selling the invention as specified in the claims of the patent for a period of time that usually expires on the 20th anniversary of when the patent application was filed. There are some circumstances that enable the patent holder to have the patent term extended beyond 20 years. The patent is enforceable in United States District Courts against infringing acts committed within the United States, and in the International Trade Commission to prevent the importation of infringing devices, as well as devices made in other countries with infringing methods. In return for these rights, our government requires from the inventor a complete and early disclosure of the invention. Thus, the patent grant is a “contract" between the inventor and the federal government, the inventor offering to disclose to the public his or her invention in return for legal rights to exclude others from practicing the invention for a finite period of time.

Patents may cover an extremely broad range of technologies and techniques, with the basic requirement being that the invention be new, not obvious, and provide a useful, concrete and tangible result.

If you develop an article of manufacture that has a new, original and ornamental design, you are eligible to obtain a design patent. Plant patents are available to inventors of new varieties of plants that have been asexually reproduced.

Laws of nature, physical phenomena and abstract ideas cannot be patented. There is no requirement that you actually make the invention before you apply for a patent. All you need to do is provide a written description of the invention that is sufficient to enable a person of ordinary skill in the appropriate art to make and use the invention, without undo experimentation.

Some inventors are faced with the dilemma of whether to pay for preparing and filing a utility patent application before they are sure that the invention will be a commercial success. If the inventor does not file an application, the inventor is at risk of losing the option to obtain exclusive rights to the invention (especially in other countries where there is no 1-year grace period between when you describe the invention to others and when you file an application). On the other hand, it may be unclear if the commercial importance of the invention warrants the effort and expense of preparing and filing a utility patent application. In these circumstances, it may be appropriate for the inventor to consider filing a “provisional" patent application. Like a utility patent application, a provisional patent application still must provide an adequate written description and enabling description of the invention, but the subject matter need not be presented in any particular form since a patent examiner will not examine the provisional patent application. By filing a legally adequate provisional application, the inventor preserves the right to later file a U.S. utility patent application and one or more patent applications in foreign countries within one year of the filing date of the provisional application. If filed within this one year period, the inventor effectively retains the benefit of the earlier filing date of the provisional application for the U.S. utility and/or foreign applications.

Certain steps are required to obtain your patent.

U.S. utility patent applications are filed and examined in the U.S.P.T.O. Regarding foreign protection, there is a treaty relating to patents that is adhered to by 140 countries, including the United States, and is known as the Paris Convention for the Protection of Industrial Property (PCT). It provides that each country guarantees to the citizens of the other countries the same rights in patent and trademark matters that it gives to its own citizens. This right means that, on the basis of a first application filed in one of the member countries, the applicant may, within a certain period of time, apply for protection in all the other member countries. These later applications will then be regarded as if they had been filed on the same day as the first application. Under United States law it is necessary, in the case of inventions made in the United States, to obtain a license from the Commissioner of Patents and Trademarks before applying for a patent in a foreign country. Such a license is required if the foreign application is to be filed before an application is filed in the United States or before the expiration of six months from the filing of an application in the United States.

When considering what to include in a patent application, it may be helpful to review a few published patents. Take note, however, that the front page of a patent is prepared by the U.S.P.T.O. and thus need not be included in your patent application. The content of a typical patent application includes a title, description of background material, summary of invention, list of drawings, the drawings on separate pieces of paper (i.e., not embedded into the text), detailed description of the invention, claims, and a one paragraph abstract of the invention.

It is the patent claims that define the scope of legal rights granted to the inventor by the federal government, so help from a patent attorney to draft the claims is usually a prudent course of action. The legal rights granted by way of a patent originally vest in the inventor. Frequently, the inventor assigns or licenses the patent rights to someone else, perhaps the inventor's employer. The U.S.P.T.O. does not intervene in assignment contracts or license agreements, so inventors, as well as employers, should seek competent legal counsel in assisting and/or reviewing documents that transfer rights from the inventor to another party. 

Keep a detailed record of your findings and discoveries.

From the outset of your work, it would be prudent to keep a bound notebook with signed, dated entries that record your daily thoughts and developments regarding the invention. Of course other equivalent techniques may be used as well, the goal being to provide reliable evidence regarding when you conceived of the invention and your efforts to reduce the invention to practice. If you chose to use a notebook, a witness or perhaps two witnesses who are able to understand your entries in the notebook should also sign and date each page of the notebook, so as to corroborate your entries. The permanent record will help provide you with the necessary factual proof of your conception of the invention and your diligence in reducing the invention to practice, in the event that someone else working independently comes up with the same invention at about the same time. Sketches and drawings should be included in your notebook, or equivalent, in as much detail as possible at each step along the way. As early as practical, you should contact your patent attorney and make a full disclosure of the invention to him/her so that the he/she can help you prepare the patent application.

A registered trademark can help you in marketing your patented (or unpatented) item.

A trademark may be a word(s), name or logo, or a combination thereof, providing your particular goods or services with an identification and/or distinctive package appearance over the goods or service of others. This “identification badge" assures you as a business person that people seeking your particular goods or services will be able to find you in the marketplace. Your customer, the consumer, is protected against an unscrupulous merchant who would engage in “unfair competition" by trying to sell different goods or services disguised as yours.

You may enforce your trademark rights in state court in Virginia or in the U.S. District Courts under Title 15, United States Code. The right to enforcement is enhanced by obtaining a federal certificate of registration that is issued for ten year renewable periods as long as the trademark is in continuous use in interstate commerce, or obtaining a state registration that is issued by the State Corporation Commission for five year renewable periods under Title 59.1 of the Virginia Code, provided the trademark continues to be used in Virginia commerce. 

Take the initiative to establish and perfect your rights.

The trademark law requires that you actually adopt and make use of your mark in connection with the sale of goods or services in interstate or foreign commerce to establish your exclusive rights. At the federal level, this use must be by actual attachment of the mark on the goods so as to accompany the goods as they are shipped or sold across a state line or to a foreign country. At the state level, the actual trademark use may be restricted to use in connection with commerce within Virginia.

As with patent grants, you must submit an application for federal registration and a fee to the U.S. Patent and Trademark Office and successfully convince the Trademark Examiner that your mark is distinctive and that your use has been proper. A similar process and similar requirements exist for Virginia registration. Your trademark attorney can advise you as to the availability of a particular mark before you actually use it and then can assist you in preparing the application.

You can apply the above pointers equally as well when a service mark, a mark representing services rather than goods, is involved. An advertisement of your service, such as in a publication or on your service vehicle, across a state line usually provides the enabling use for federal registration. For a Virginia registration, such use within the state should be sufficient. Examples of a service mark well known to Virginians would be “United" or “American" to identify airline services.

Provision is also made to register collective membership marks in order to identify groups and their membership, such as school groups, labor groups, fraternities and sororities. An example of such a mark is “DECA," an acronym of Distributive Education Clubs of America, used to identify members in the national organization headquartered in Reston, Virginia.

Certification marks can also be registered to provide identification of goods and services that have met certain qualifications, such as the well known “UL" used by Underwriters Laboratories on electrical consumer products. 

Actively maintain your proprietary right.

Prior to completion of the registration process, the owner of the mark may indicate his or her proprietary rights and interest by placing a notice “TM" or“SM" adjacent to the mark. After the federal registration process has been completed, the notice “®" should be used.

Generally, the most effective marks are those that have been thought of or coined by the owner on an arbitrary, or at least a semi-arbitrary basis. The mark can be suggestive of the goods or services, but not descriptive.

An example of an arbitrary mark would be “Coca-Cola" to identify the well known soft drink. This is a strong mark since it was originally arbitrarily coined by the owner. Now after many years of use and successful enforcement, the mark represents substantial “good will" of its owner. An example of a suggestive mark that is equally as strong in its field would be “Xerox" to identify a machine for making copies by a xerographic process.

Once the mark has been adopted, used and registered, the owner must continue to use and effectively enforce its right of exclusive use. If a trademark-holder ceases use of the trademark, the mark may be deemed “abandoned," resulting in a forfeiture of the holder’s rights. Or, if a manufacturer allows its trademark to be used by competing manufacturers, the trademark significance is lost and the term can become generic. Examples of marks that have been lost in this way are “aspirin" for a pharmaceutical preparation and “cellophane" for transparent wrapping material. 

A copyright protects you if you are an author or artist.

A copyright covers written works and artistic endeavors and allows the owner to exclude others from reproducing the work. To be copyrightable, the material must be original and possess a minimum level of creativity.

In addition to literary works, music, dramatic works, dances, pictures, graphic art works, computer programs, motion pictures and sound recordings can be protected by copyright. 

You need a copyright registration to perfect your right.

Although an author’s copyright arises automatically upon creation and fixation of the work in some “tangible medium of expression," registration of the copyright provides numerous benefits. Copyright registration must be done at the federal level through the U.S. Copyright Office. The Copyright Act of 1976 provides that the term of a federal registration for any work created in or after 1978 is the lifetime of the author, plus fifty (50) years. For commissioned works or the like, the term is seventy-five (75) years from publication, or one hundred (100) years from creation, whichever is shorter.

A proper copyright notice should be placed on the work prior to publication, and each copy distributed must bear the proper copyright notice, which properly comprises the symbol “©," the word “copyright" or the abbreviation “copr." as well as the name of the copyright claimant, and the year of first publication.

As an example: © Robert P. Smith, 1977

Sound recordings must include similar special notice on the label: © Smith Recording Co., 1977.

A copyright registration should be obtained as soon after publication as possible to provide the copyright owner with prima facie evidence of copyright validity. The registration is obtained by submitting a properly completed application plus a $30 registration fee, and two (2) copies of the work being protected, if the work has been published, or one (1) copy if it is unpublished.

updated 11/00 

Prepared and issued as a public service by the
Intellectual Property Law Section of the
Virginia State Bar
Eighth & Main Building
707 East Main Street, Suite 1500
Richmond, VA 23219-2803
(804) 775-0500

For assistance in finding a lawyer, contact the
VIRGINIA LAWYER REFERRAL SERVICE
1 (800) 552-7977 (Statewide)
(804) 775-0808 (Richmond, VA)
(804) 775-0502 (Voice/TDD) 

Web site for the Intellectual Property Section of the Virginia State Bar: www.vsb.org/sections/ip

Updated: May 03, 2010