Patents, Trademarks, and Copyrights

 

Patents

What is a patent?

A patent is a grant to an inventor from the U.S. Government to exclude others from making, using or selling the invention for a limited time.

How is a patent obtained?

Patents are granted by the U.S. Patent and Trademark Office in Washington D.C. after a written application is filed with that Office. A patent application describes the invention in detail and specifically states what the inventor believes is new and patentable. Each patent application is examined by the Office and if the invention is novel, useful and unobvious to a person of ordinary skill in the art, a patent is granted for the invention.

Are there different kinds of patents?

Yes. The most common kinds are "utility patents" and "design patents."

A utility patent may be obtained for the utilitarian or functional nature of a machine, an article of manufacture, a composition of matter, or a process.

A design patent may be obtained for the ornamental appearance of an article. A design patent protects only the physical appearance of an article and may not be used to exclude others from using the functional properties of the article.

In addition to these two types of patents, a plant patent may be obtained by anyone who develops or discovers, and asexually reproduces a new variety of plant (i.e., tree, flower, etc.).

What is the duration of a patent?

The term of protection of a utility patent begins on the date of grant and ends 20 years from the filing date of the application for patent, or sooner, if the required maintenance fees are not paid. Design patents expire 14 years from the date of the grant. Patents cannot be renewed, so after the patent expires, the invention becomes public property and then may be used by anyone.

Are all inventions patentable?

No. An invention must fall into one of four classes of "patentable subject matter" as set forth in U.S. Patent Laws. The specific classes are: machines, articles of manufacture, compositions of matter and processes. An improvement to an invention included in these classes may also be patentable.

In addition to qualifying in one of the four classes, an invention must be "useful," "new" and "unobvious." A publication anywhere in the world, which predates and describes the subject matter of your invention, may prevent you from obtaining a patent on that invention.

How can an inventor determine whether an invention is patentable?

A patentability search may be conducted to ascertain whether or not the proposed invention is patentably different from those disclosed in prior patents or publications ("prior art"). Therefore, it is advisable to conduct a patentability search within the files maintained by the U.S. Patent & Trademark Office in Washington, D.C.

Is an inventor required to conduct a patentability search on an invention prior to applying for a patent?

No. A patentability search is optional. However, many inventors desire to review the prior art before filing a patent application. For example, a patentability search may reveal a disclosure of a similar device in an earlier U.S. patent.

Additionally, if the results of the search are unfavorable, then the inventor may save the expenses incurred preparing and filing an application or developing the invention.

Does a working model of an invention have to be constructed in order to file a patent application?

Not usually. However, if the Patent & Trademark Office determines that your invention is not operable, a model may be required to demonstrate that the device works as described in the application.

Is a patent required on an invention prior to the inventor selling it?

No. However, only after a patent on your invention is granted by the U.S. Patent & Trademark Office will you have legal rights to prevent others from making, using or selling the invention.

What do the terms "patent pending" and "patent applied for" mean?

These two terms are synonymous and mean that the inventor has filed a patent application that is "active" in the U.S. Patent & Trademark Office. The patent application remains "pending" until the Patent & Trademark Office makes its final determination either to deny or to grant a patent to the inventor.

Is it too late to apply for a patent if the invention is already on the market?

That depends on when the invention was first offered for sale or public use. Your invention cannot be patented if it was in public use or on sale in the U.S. or if the invention was described in a publication anywhere in the world more than one year prior to filing a patent application with the U.S. Patent & Trademark Office. When an invention can only be tested through extensive use, experimental use may not count when determining whether an invention has been "in use" for more than one year. Experimental use, however, is when an inventor is genuinely experimenting to determine whether or not he or she has a workable invention.

Can protection be preserved on an invention before a patent is applied for?

Although you can have no patent protection until a U.S. patent is issued on your invention, the right to patent your invention may be preserved by establishing evidence of your inventive activities and by keeping your invention secret, while using diligence in perfecting your invention.

It is the first inventor who is entitled to a patent. While you are perfecting your invention (prior to filing your application) you can create evidence to prove your invention date.

Generally, there are two ways of doing this. The first method is to keep a written record of your invention which begins with its conception and includes additions or improvements. Each page of this written record should be signed and dated by you when you prepare it, should include sketches or drawings of your invention and should be signed and dated by one or more trustworthy witnesses who understand the invention, but did not participate in its development.

The second method is to utilize the Patent & Trademark Office's Disclosure Document Protection Program whereby a written description of your invention will be dated and filed (for a small fee), and will be kept for a period of two years. The Disclosure Document does not take the place of filing a patent application, but serves only as evidence of your invention at the time of filing the Disclosure Document.

You may also file a Provisional Application prior to filing a patent application to establish a domestic priority for your invention. The provisional application provides a mechanism whereby applicants can establish an early effective filing date in a patent application which establishes a constructive reduction to practice for the invention.

If you disclose your invention to another for commercial evaluation prior to filing a patent application, you should ask the other person to agree, in writing, not to disclose your invention to anyone else. Most businesses, however, will insist that you execute an agreement under which the company does not agree that your invention is a trade secret, requiring you to rely solely upon any patent rights you may have in the invention. For this reason, it is advisable to contact a patent attorney in the early stages of the development of your invention in order to take the steps necessary to preserve your rights to your invention.

Is it necessary to hire a patent attorney to file a patent application?

An inventor has the right to prepare and file his or her own patent application, but an application is a highly technical document and a person unskilled in this specialized area of law may not be able to obtain a patent that fully protects the invention. For this reason, the inventor should seek the advice of a patent attorney or patent agent, and have the attorney or agent prepare the patent application and communicate with the Patent and Trademark Office. Only attorneys or agents who have been admitted to practice before the U.S. Patent and Trademark Office may represent others in the filing and prosecution of patent applications. The patent attorney may also assist the inventor in other ways (e.g., conducting a patentability search on the invention).

What are the official fees for patent applications?

There are fees for filing an application, fees for issuance of the patent after it is granted, and fees for maintaining a utility patent in force during its life, the amount of which is set by law. Individuals and small companies may pay half the set fee by filing proper sworn statements. If the invention is assigned or licensed to a large company, the full fees must be paid. Additionally, the U.S. Patent and Trademark Office may raise fees periodically.

May a patent be transferred?

Like personal property, a patent, or patent application, can be assigned by a written instrument. A patent, or patent application, may also be conveyed by operation of law, may be bequeathed by will or pass under the law when a person dies without a will.

An inventor or anyone owning a patent, or patent application, may assign the patent to a third party or may grant a license under the patent to make, use or sell the device covered by the patent. To be valid against third parties, the assignment of a patent should be in writing and should be promptly recorded in the U.S. Patent and Trademark Office.

 

Trademarks

What is a trademark?

A trademark or a service mark is a word, device or symbol used by an individual or business to identify its goods or services, and to distinguish them from others. Trademarks and service marks identify the goods and services as coming from a single source, and consumers rely upon these marks to locate goods and services with which they are familiar. Thus, the business utilizing a trademark builds "good will," or a reputation for quality that is immediately communicated to the consumer by the mark.

How are trademark rights obtained?

Trademark rights are acquired by using a mark on goods or services in commerce. County or state registration of a corporate or business name cannot create trademark rights in that name.

Under current law, one can file an application to register a mark in the U.S. Patent and Trademark Office based on a bona fide "intent to use" the mark. Such an intent-to-use application cannot proceed to registration until the mark is in use in commerce. Once the intent-to-use application matures into a registered mark, it will be granted national priority back to the original filing date of the application.

How are trademarks protected?

State common law protects trademark rights as soon as the mark is used, but common law protection is generally limited to the geographic area of actual use.

State registration of trademarks used in Georgia may be obtained by filing an application with the Secretary of State for Georgia. After a trademark has been used in interstate commerce, or a bona fide intention to use a mark is formed, one may file an application with the U.S. Patent and Trademark Office. Although federal registration is not mandatory, federal registration gives notice to would-be innocent infringers throughout the entire U.S., in addition to providing other advantages and rights to the registrant.

When can "®" or "TM" be used with a trademark?

When federal trademark registration has been obtained, the familiar "®" registration symbol should be placed adjacent to the trademark or service mark to indicate the mark is registered. Prior to obtaining federal registration, the symbols "TM" (for a trademark) and "SM" (for a service mark) can be used to indicate a claim of trademark or service mark rights in the mark.

What are the rights of a trademark owner?

The reputation or "good will" of a business is a valuable asset of the business.  Therefore, the law allows the trademark owner to stop others from using the same or similar marks for similar or related goods or services where consumers would likely be confused as to the true source of the goods or services. Also, in the case of very famous trademarks, protection can even extend to unrelated goods. Furthermore, an infringer can be made to pay damages to the trademark owner under certain circumstances.

What are the criteria for selecting a strong trademark?

Words, slogans and drawings which merely describe characteristics or functions of goods are available for all to use and usually cannot be trademarks. The strongest marks are coined, arbitrary terms that have no descriptive meaning with respect to the product or service.  Terms that suggest a product or a quality of the product can be protected as trademarks, but are generally not given as broad of a scope of protection as are arbitrary terms.

If, however, someone has been the sole user of a heavily advertised descriptive term for a substantial period of time, the term may then develop a "secondary meaning," in that consumers view the term as an indication of the source of goods or services and be protectable as a trademark.  "Secondary meaning" can never exist for the generic or common name of a product such as "automobile" for cars.  Trademark rights may be lost if the public adopts a trademark as a generic name for the product. This is exemplified in the former trademarks "escalator" for moving stairways and "aspirin" for pain pills.

Because selecting and protecting trademarks involve various legal requirements, an attorney familiar with trademark law should be consulted before a mark is first used.

How can it be determined whether a particular mark is available?

A search should be conducted before a word is used as a trademark to see if the proposed trademark is likely to cause confusion with someone else's trademark. Trademark searches should cover the existing federal registrations and pending applications in the U.S. Patent and Trademark Office.

May a trademark be transferred?

A trademark registration or trademark application is like personal property and, along with the good will of the business in which the mark is used, can be assigned or licensed by a written instrument. However, intent-to-use applications are not assignable until use in commerce begins  and proof of use has been filed in the pending  application in the U.S. Patent and Trademark Office. The assignment of a registered trademark or service mark should be promptly recorded in the U.S. Patent and Trademark Office.

Copyrights

What is a copyright?

A copyright is a federally granted right to protect the owner of original works of authorship from unauthorized copying or performance.

 How do you obtain a copyright?

Although copyright arises automatically when the work is created, a notice of copyright may be placed on the work when published. For example, the copyright notice on a book or work of art would include:  the word "Copyright" or the symbol "©," the year in which the work was first published, and the name of the copyright owner. An example of an appropriate notice is: Copyright 1996 Sam Doe. Notice of copyright is not required for works published after March 1989, and the failure to give notice will not forfeit the copyright.

When does a copyright need to be registered?

The copyright can be registered either before or after the work is published. The copyright must be registered before a suit for copyright infringement can be brought and, for maximum protection, should be registered within three months after first publication.

If it is registered within five years of first publication, some acts of publication without notice can be corrected.

How do you register a copyright?

Registration is obtained by applying to the Copyright Office at the Library of Congress. This procedure requires filing an appropriate application with the Copyright Office, along with the required fee and copies of the work.

What type of things can a copyright protect?

Copyright protection is designed to protect "original works of authorship." The protection of the author goes to the "form of expression" embodied in the work and not to the "concept" or "idea" which the "expression" embodies. Ideas, names, titles and unoriginal works cannot be copyrighted. Some common examples of authorship include writings such as books, computer programs, written articles, catalogs, advertising copy and compilations of information. Visual works such as graphic art, paintings, photographs, prints, maps, charts and technical drawings are also subject to copyright protection. Other examples of authorship include performing arts works in the nature of plays, songs, dance and motion pictures; and sound recordings such as phonograph records and tapes.

When does an employer own the copyright?

When a work is created by an employee within the scope of employment, the employer owns the copyright. The copyright in a commissioned work or a work created by an independent contractor, however, is generally owned by the creator of the work.  If it is not clear whether a work is "commissioned" or "made for hire," the parties should initially enter into a written agreement as to the ownership of the copyright.

What is the duration of a copyright?

For works created or first published on or after January 1, 1978, the term of protection is the author's lifetime plus 50 years. The duration of a copyright on certain works, such as works made for hire, is 75 years from publication or 100 years from creation, whichever is shorter.

For works first published before 1978, the term of protection has been extended to a maximum of 75 years from first publication. Renewal, however, may be necessary to enjoy the full term.

May a copyright be transferred?

A copyright is like personal property and some or all rights may be assigned to another. The assignment, however, must be in writing. A copyright may also be conveyed by operation of law, may be bequeathed by a will or pass under the law when a person dies without a will, although there are rules which give certain designated heirs rights which may not be varied by will.

An author or anyone who owns one or more of the rights in a copyright may transfer that right by a written contract. While the transfer may be recorded in the Copyright Office, it is not required to make the transfer valid. It may, however, be desirable to record the transfer in order to protect  rights against third parties or to show legal title for enforcement of the copyright.

This pamphlet is published as a public service by the Intellectual Property Law Section of the State Bar of Georgia.  It has been issued to inform, not to advise, and is based on laws in effect at the time of publication.  For your specific situation, you should always seek counsel from an attorney.