Protecting Your Intellectual Property: Patents, Trademarks & Copyrights
Watch the video! For more information about Patents, Trademarks & Copyrights, view the Virginia State Bar Video Brief.
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, also known as the Copyright and Patent Clause, allows the U.S. Congress to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” 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 or the inventor’s assignee with certain exclusionary rights for a limited period of time in exchange for public disclosure of the invention. 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 improvements. 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.
A copyright allows 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.
Another section of the U.S. Constitution (Article 1, Section 8, Clause 3, also known as the Commerce Clause) allows U.S. Congress to protect trademarks that are used in interstate commerce. A trademark is a word, phrase, design, symbol or combination thereof that distinguishes the source of goods or services. Such an easily identifiable marking protects the consumer from inferior counterfeits or substitutes. It also protects the mark owner’s businesses reputation. Unlike patents and copyrights, trademark protection is available under both federal law (for trademarks used in interstate commerce) and state law.
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. Patents Do Not Grant the Right to Make, Use or Sell Your Invention
U.S. patents provide the owner with so-called negative rights, which allow the patent owner to exclude others from making, using and/or selling the invention as specified in the claims of the patent for a period of time. For example, you, as the patentee, may be prevented from making your invention if it is an improvement of another patented invention; likewise, that patent holder would not be able to practice your improvement during the active term of your patent.
A 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 during the term of the issued patent. In return for these rights, our government requires inventors to provide 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.
U.S. law provides three different types of patents — utility patents, design patents, and plant patents — each of which provide different types of protection for different types of subject matter.
Utility patents, the most common type of U.S. patent, may cover an extremely broad range of technologies and techniques. This patent requires that the invention be new and useful, and not obvious. However, laws of nature, physical phenomena and abstract ideas cannot be patented. The term of a utility patent is 20 years measured from the earliest filing date of the invention.
If you develop an article of manufacture that has a new, original and ornamental design, you are eligible to obtain a design patent. The term of a design patent is 14 years measured from the patent grant date.
Plant patents are available to inventors of new varieties of plants that have been asexually reproduced. The term of a plant patent is 20 years measured from the filing date of the application.
There is no requirement to make the invention before you apply for a patent. You need only 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. You also must include within the written description your preferred way of carrying out the invention at the time your patent application is filed.
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 risks losing the option to obtain exclusive rights to the invention, particularly in light of the Leahy-Smith America Invents Act (AIA), enacted on September 16, 2011, which changes the U.S. patent system from a first-to-invent system to a first-to-file system for patent applications filed after March 16, 2013. Under a first to invent system, in general, the first person to conceive an invention and reduce to practice is granted a patent, regardless of when the application was filed. In contrast, under a first-to-file system, the first person to file a patent application obtains patent rights, regardless of the date of invention. The new rules underscore the need to file patent applications as soon as possible.
In addition, inventors are often pressured to reveal their inventions as soon as possible. In both the U.S. and foreign jurisdictions, a disclosure not made under a reasonable expectation of confidentiality may preclude an inventor from patenting his invention. The U.S. allows a one year grace period to file an application after disclosing it to others, but many countries have no grace period and inventors are barred from obtaining any patent protection.
To address such concerns, an inventor may wish to file a provisional utility patent application. A provisional utility application allows an applicant to obtain an early filing date for a low cost and delay or avoid further prosecution costs while the commercial significance of the invention develops. Like a non-provisional utility patent application, a provisional utility patent application must provide an adequate written description and enabling description of the invention, but the subject matter need not be presented in any particular form. A patent examiner will not examine the provisional utility patent application. By filing a legally adequate provisional application, the inventor preserves the right to later file a U.S. non-provisional utility patent application and one or more patent applications in foreign countries within one year of the filing date of the provisional utility patent application. If filed within this one year period, the inventor effectively retains the benefit of the earlier filing date of the provisional utility application for the U.S. non-provisional utility and/or foreign applications without losing patent term during the pendency of the provisional utility application. Provisional patent applications are not available for design and plant patents.
Individual inventors or small or start-up companies may qualify for “micro-entity” status, which provides for a 75 percent reduction in many United States Patent and Trademark Office (USPTO) fees, or for “small entity” status, which provides a 50 percent reduction in those fees.
B. Certain Steps Are Required to Obtain Your Patent
U.S. utility patent applications are filed and examined in the USPTO. Regarding foreign protection, there is a treaty relating to patents that is adhered to by 174 countries, including the United States, and is known as the Paris Convention for the Protection of Industrial Property. 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. Inventions made in the United States require 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. Issued U.S. patents and published U.S. patent applications may be searched on the USPTO’s website. (http://patft.uspto.gov/) Take note, however, that the front page of a patent is prepared by the USPTO 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 invention may be owned by the inventor’s employer even if conceived outside normal work hours and/or on your own equipment. The USPTO 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.
C. Maintain a Detailed Record of Your Findings and Discoveries
From the outset of your work, maintain 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 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. While the AIA has largely obviated the question of when an invention was conceived for the purposes of patenting, who invented, in what order, and under what circumstances remain important inquiries. The permanent record will help provide you with the necessary factual proof:
- For patent applications filed before March 16, 2013, 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;
- For patent applications filed on or after March 16, 2013, to show first invention in the event an inventor of an earlier filed patent application derived the claimed subject matter without authorization from you;
- To rebut obviousness rejections from the patent office with superior and unexpected results; and
- Other questions of relevance in the patent system, contract law, and so on.
Detailed sketches and drawings should be included in your notebook. Include information regarding any disclosure of the invention, including discussions with potential customers, offers for sale, and sale orders and information regarding any relevant confidentiality agreements surrounding any such disclosure. Contact your patent attorney and make a full disclosure of the invention to him/her so that 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, U.S. 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.
B. Take the Initiative to Establish and Perfect Your Rights
Trademark law requires that you adopt and make use of your mark in connection with the sale of goods or services in 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.
You do not have to register a trademark for the mark to be protected. However, federal registration at the U.S. Patent and Trademark Office has several advantages including constructive notice to the public of the ownership of the mark, a legal presumption of ownership nationwide, jurisdiction of federal courts may be invoked, the registration can be used as a basis for obtaining registration in other countries, and registration may be filed with the Customs to prevent importation of trademark infringing foreign goods. 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, and forms and instructions for registering marks used in commerce in Virginia may be found at the Commonwealth of Virginia State Corporation Commission’s website (http://www.scc.virginia.gov/srf/bus/tmsm_regis.aspx). 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.
C. 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 in a fanciful, arbitrary, or at least a semi-arbitrary basis. The mark can be suggestive of the goods or services, but should not be descriptive (descriptive marks are difficult to protect until they have acquired “secondary meaning” through extensive use).
A fanciful trademark is one that had no meaning before its use as a trademark; it is generally the strongest type of mark. An example is “Kodak.” It generally is the strongest type of mark, because it is inherently distinct. Now after many years of use and successful enforcement, the mark represents substantial “good will” of its owner.
An arbitrary mark is a common word used in an unrelated context. An example is the trademark “Apple” for computers. “Apple” is arbitrary as applied to computers. A suggestive mark suggests a quality or characteristic of the good or service. A suggestive mark requires some thought and/or imagination to reach a conclusion as to the nature of the goods. An example of a suggestive mark is BAC-A-BELT for belt-backing material.
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 (at least in the United States) are “aspirin” for a pharmaceutical preparation and “cellophane” for transparent wrapping material. Finally, improper licensing or assignment of trademarks can result in loss of trademark rights. For example, a trademark licensed to a franchisee without adequate quality control or supervision by the trademark owner, could be canceled.
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.
B. 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 (as amended) provides that the term of a federal registration for any work created in or after 1978 is the lifetime of the author, plus seventy (70) years. For anonymous works, pseudoanonymous works, commissioned works or the like, the term is ninety-five (95) years from publication, or one hundred twenty (120) years from creation, whichever is shorter.
A proper copyright notice, also no longer required, 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 year of first publication of the work and the name of the copyright claimant.
As an example: © 1977 Robert P. Smith.
Sound recordings may include a similar special notice with the letter “P” in a circle on the label: ℗ 1977 Smith Recording Co.
The copyright notice does not require any advance permission from, or registration with, the Copyright Office. However, a copyright registration should be obtained as soon after publication as possible to provide the copyright owner with prima facie evidence of copyright validity. You can register online through the electronic Copyright Office at a reduced fee. If you file online, you may attach an electronic copy of your deposit unless a hard-copy deposit is required under the “Best Edition” requirements of the Library of Congress.
Prepared and issued as a public service by the Intellectual Property Law Section of the Virginia State Bar
For assistance in finding a lawyer, contact the
VIRGINIA LAWYER REFERRAL SERVICE
1 (800) 552-7977 (Statewide)
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Website for the Intellectual Property Section of the Virginia State Bar: http://www.vsb.org/site/sections/intellectualproperty
Website for the U.S. Patent and Trademark Office: www.uspto.gov
Website for the U.S. copyright office: www.copyright.gov