What can be patented?
What do the requirements that the invention be new and useful mean?
Can I lose my rights to patent after inventing?
Why should I patent my inventions?
How does one get a patent?
Can I apply for a patent without a patent agent or attorney?
Isn’t the Patent Office supposed to help patent applicants acting on their own behalf ?
How long does it take to get a patent?
Can I do anything against infringers before my patent issues?
What are the advantages of obtaining a patent as opposed to keeping the subject invention a secret?
Is computer software patentable?
Can I begin marketing my invention before I get the patent?
Do patent attorneys do patent work for a contingency fee?
What kind of trademarks can be registered?
Can I reserve a trademark?
Do I need to register my trademark?
Do I need to complete a trademark search?
Are there federal regulations governing the use of the designations “TM” or “SM” or “®” with trademarks?
How long does a trademark registration last?
Is a federal registration valid outside the United States?
What does copyright protect?
When is my work protected?
How long does a copyright last?
What is a work made for hire?
How much of someone else’s work can I use without getting permission?
Is it legal to download works from peer-to-peer networks?
Domain Disputes FAQ’s
The statute provides that whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereto may obtain a patent therefor, subject to the conditions and requirements of the patent statute. A “machine”is an apparatus such as an automobile, a television set, or a computer. A “manufacture”is an article or object that is made by manufacturing, such as a light bulb, a baseball bat, an automobile tire, a computer diskette, or a computer program stored on computer storage media. Examples of a composition of matter include a chemical compound, a candy bar, or a soft drink. A “method”is a process such as a series of steps for making soap or a computer program that transforms or manipulates a tangible item, including money (a financial product patent). There is often an overlap among these areas but all that is required is that an invention qualify under any of the above categories of invention.
First, under American law, the invention must not only be new, it must also not be obvious. All that is required for an invention to be “new”is that it is different from what is already known. An invention is not obvious if a person of ordinary skill in the field (also known as “art”) of the invention would not have known how to make or use the invention without undue experimentation. In other words, our law does not permit the issuance of patents for trivial or routine modifications of known inventions. Generally, an invention is “useful”if it works. There is no requirement that an invention be better than prior inventions. All that is required is that the invention performs some task. This is not generally difficult to establish.
Yes, first if you publish the invention in writing or make a product embodying the invention and sell it or use it publicly more than one year before filing a patent application on the invention, you have lost your right to patent in the United States. In addition, many countries have laws that provide that an inventor who publishes the invention before filing an application has lost his or her right to patent. There are other situations that may also lead to loss of rights to patent such as selling or offering to sell a product or service more than one year before filing.
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Why should I patent my inventions?
Inventors have many reasons to obtain patents for their inventions. The chief reason is to make money from an invention. In the ultimate analysis, obtaining a patent is not worth the effort or money if nobody else will ever use the patented invention. However, if an invention is successful, it will be imitated and if the invention is not patented, the inventor will not participate in the profits of his or her competitors. Investors in companies recognize this and will seldom invest in companies that do not protect their inventions.
In the United States and other countries, an inventor must prepare, or have prepared, a written application for a patent. A patent application is not a form that is filled in. Rather, the law requires that a patent application have certain sections or parts but there is much room for creativity and variety in approaches to drafting patent applications. Following the filing of the patent application before the U.S. Patent and Trademark Office (PTO), the inventor or his or her representative negotiate with the PTO on the appropriate scope of the claims, among other things. Once agreement is reached, the PTO issues a patent.
It is possible for an inventor to represent himself or herself before the PTO in obtaining a patent but if the invention is important, it is important to get professional help in preparing the patent application. Drafting patent applications is a skill like many others where one gets better at it after years of experience. Moreover, the skills useful for invention are not the same as those useful for drafting a good patent application. The principal task of a patent attorney is determining the scope of the invention and expressing that scope by drafting claims that define the invention. The inventor is usually not the best judge of the scope of the invention. Inventors should only patent their inventions if there is a substantial likelihood that others will use the invention. If that likelihood exits, the inventor should take steps to secure the best protection available. Getting a patent issued by the PTO is much easier than successfully asserting the patent against an infringer. Infringers seldom agree that they infringe. More commonly, infringers resist the patent owner’s efforts to license the patent. Thus, infringers quite commonly challenge the validity or enforceability of the asserted patent or find ways to more narrowly interpret the invention than the patent owner. The greater the stakes, the more intense are these attacks on scope and validity. Therefore, a patent must be drafted not only for issuance by the PTO but for survival from the numerous legal challenges that it will encounter if it will produce royalties or other rewards for its owner. Like it or not, patents are legal documents and as such will be interpreted and upheld or invalidated by courts or juries. Thus, seeking the services of a good patent attorney is generally the best course to take.
Yes, but getting a patent issued by the PTO is not even half the task of protecting valuable inventions. As mentioned above, patents must survive attacks challenging their validity and scope of protection. Accused infringers just do not “take it easy”on patents procured by the inventors on their own. Often, prior art or pre-existing technology or patents come to light until after issuance of the patent. Another example is the obligation to disclose the best mode contemplated by the inventor for carrying out the invention. A further example is the duty to disclose prior art known to the inventor as of the filing of the application. Moreover, the PTO routinely rejects claims for being too broad. We have never seen a rejection on claims being too narrow, yet unnecessarily narrow claims will often allow others to use the invention without infringing the claims. Further, claims are interpreted differently by the PTO and the courts. Thus, just getting by the PTO is not enough. An applicant for a patent must understand how the claims will be interpreted by courts and draft the language accordingly.
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How long does it take to get a patent?
It depends on various factors including the level of staffing and the workload at the PTO, but, in general, one should not expect a patent in less than eighteen months. Sometimes, it may take three to five years. An experienced patent attorney can expedite the process somewhat.
An inventor cannot do much against others using his or her invention until the patent issues. In order to sue, one must have an issued patent. However, negotiations on a license can begin before issuance.
The principal drawback to trade secrecy is that others can often legally reverse engineer a product to discover the underlying trade secrets. Another danger is that if someone else independently invents the trade secret and obtains a patent therefor, that person may be able to prevent you from making, using, selling, importing or offering the invention for sale.
Inventions embodied in computer programs can be protected with patents. Patents protect physical embodiments of inventions and methods of operation of systems. Computer programs, as any other useful articles, may or may not embody inventions which are novel and non-obvious. Thus, an invention may be principally implemented as a computer program to be loaded into a general purpose computer, converting the computer into a specialized apparatus. Alternatively, the same invention may be implemented in an apparatus that is specifically made to carry out the invention. A good patent would cover both of these embodiments, and possibly others.
Yes, but it is important to disclose ideas under a confidentiality agreement. Even when a confidentiality agreement is used there is no substitute for filing a patent application. A confidentiality agreement is not an absolute guaranty that confidential information regarding the subject invention will not be made public. For example, many patent applications are published by the Patent Office within 18 months of the patent filing. If a person receiving information subject to a confidentiality agreement makes the information public some rights may be lost by the inventor.
Some will, but generally the role of a patent attorney is not that of an investor. In most cases, patent attorneys will only accept a percentage of royalties or accept an ownership interest in a patent if the invention has great promise, and obviously, the inventor may not want to give up his or her upside for the mere cost of filing and prosecuting a patent application. The practice of accepting contingency fees is somewhat more prevalent in litigation. In any case, the inventor should select patent litigation counsel carefully.
Trademarks may be a single or a combination of words, letters, numerals, drawings, symbols, three- dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colors if those items are used as distinguishing features for goods or services. In addition to trademarks associated with a commercial source of goods or services, several other categories of marks exist. Collective marks are owned by an association whose members use them to identify themselves with a level of quality and other requirements set by the association. Examples of such associations would be those representing accountants, engineers, or architects.
In the U.S., one acquires rights to a trademark by using the mark. However, a person who has a bona fide intention to use a trademark may apply to register the mark on the principal register of the U.S. Patent and Trademark Office (PTO). After use of the mark, and compliance with other PTO rules, the mark is registerable.
Although using a trademark first in a given territory establishes some rights, there are important advantages to registration of the trademark in the principal register of the PTO. State registration of a trademark is also possible. A certificate of registration in the PTO is prima facie evidence of nationwide use of the trademark, ownership and distinctiveness of the mark, among others. An applicant can also file for a trademark prior to actually using the mark. This is an “intent to use” application but, for registration of the mark, an applicant must show use of the trademark. Such a showing requires a specimen or facsimile of the mark as used in commerce with the goods or service, and a verified statement that the mark is in use in commerce and specifying the date of first use.
We typically recommend that our clients conduct a search prior to using the mark or seeking registration. If no search is performed and you start using a mark, that use may infringe the trademark rights of another person resulting in potential monetary liability.
For “TM” or “SM,” no, but the use of “®” is limited by federal law. The “TM” and “SM” designations usually indicate that a party claims rights in the mark and are often used before a federal registration is issued. The federal registration symbol “®” may be used once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has been registered. The federal registration symbol should only be used on goods or services that are listed in the federal trademark registration.
For a trademark registration to remain valid, an Affidavit of Use (“Section 8 Affidavit”) must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant must also file a §9 renewal application within one year before the expiration date of a registration, or within a grace period with payment of an additional fee. Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term. This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.
No. However, if you are a qualified owner of a trademark application pending before the PTO, or of a registration issued by the PTO, you may seek registration in any of the countries that have joined the Madrid Protocol by filing a single application. Also, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties (the Paris Convention). You can also file individual applications in many foreign countries. As a result of goods and services sold over the Internet with the trademark, careful consideration should be given to selecting and protecting the appropriate marks in various countries.
Copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed. Original materials authorship appearing on a website may be protected by copyright. This includes writings, artwork, photographs, and other forms of authorship protected by copyright. Copyright law does not protect domain names.
Your work is protected under copyright law the moment it is created and fixed in a tangible form that it is perceptible either directly or with the aid of a machine or device. You will have to register, however, if you wish to bring a lawsuit for infringement of a U.S. work. Registered works may be eligible for statutory damages and attorney’s fees in successful litigation. Finally, if registration occurs within 5 years of publication, it is considered prima facie evidence of ownership and authorship in a court of law.
The term of copyright for a particular work depends on several factors, including whether it has been published, and, if so, the date of first publication. As a general rule, for works created after January 1, 1978, copyright protection lasts for the life of the author plus an additional 70 years. For an anonymous work, a pseudonymous work, or a work made for hire, the copyright endures for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first. For works first published prior to 1978, the term will vary depending on several factors.
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What is a work made for hire?
Although the general rule is that the person who creates the work is its author, there is an exception to that principle; the exception is a work made for hire, which is a work prepared by an employee within the scope of his or her employment; or a work specially ordered or commissioned in certain specified circumstances. When a work qualifies as a work made for hire, the employer, or commissioning party, is considered to be the author.
Under the fair use doctrine of the U.S. copyright statute, it is permissible to use limited portions of a work including quotes, for purposes such as commentary, criticism, news reporting, and scholarly reports. There are no legal rules permitting the use of a specific number of words, a certain number of musical notes, or percentage of a work. Whether a particular use qualifies as fair use depends on all the circumstances.
Uploading or downloading works protected by copyright without the authority of the copyright owner is an infringement of the copyright owner’s exclusive rights of reproduction and/or distribution. Anyone found to have infringed a copyrighted work may be liable for statutory damages up to $30,000 for each work infringed and, if willful infringement is proven by the copyright owner, that amount may be increased up to $150,000 for each work infringed. In addition, an infringer of a work may also be liable for the attorney’s fees incurred by the copyright owner to enforce his or her rights. whether or not a particular work is being made available under the authority of the copyright owner is a question of fact. But since any original work of authorship fixed in a tangible medium (including a computer file) is protected by federal copyright law upon creation, in the absence of clear information to the contrary, most works may be assumed to be protected by federal copyright law. Since the files distributed over peer-to-peer networks are primarily copyrighted works, there is a risk of liability for downloading material from these networks. To avoid these risks, there are currently many “authorized” services on the Internet that allow consumers to purchase copyrighted works online, whether music, ebooks, or motion pictures. By purchasing works through authorized services, consumers can avoid the risks of infringement liability and can limit their exposure to other potential risks, e.g., viruses, unexpected material, or spyware.
Domain Disputes FAQ’s
Domain names are the human-friendly forms of Internet addresses, and are commonly used to find web sites. A domain name also forms the basis of other methods or applications on the Internet, such as file transfer (ftp) or email addresses – for example the email address rkain@ComplexIP.com is also based on the domain name ComplexIP.com.
The domain name system is essentially a global addressing system. It is the way that domain names are located and translated into Internet Protocol (IP) addresses, and vice versa. A domain name such as ComplexIP.com is a unique alias for an IP address (a number), which is an actual physical point on the Internet.
A gTLD is a generic top level domain. It is the top-level domain of an Internet address, for example: .com, .net and .org. In addition, seven new gTLDs were also selected by ICANN (the Internet Corporation for Assigned Names and Numbers) on November 16, 2000. These are: .aero (for the entire aviation community); .biz (for business purposes); .coop (for cooperatives); .info (unrestricted); .museum (for museums); .name (for personal names); .pro (for professionals).
Domain name disputes arise largely from the practice of cybersquatting, which involves the pre-emptive registration of trademarks by third parties as domain names. Cybersquatters exploit the first-come, first-served nature of the domain name registration system to register names of trademarks, famous people or businesses with which they have no connection. Since registration of domain names is relatively simple, cybersquatters can register numerous examples of such names as domain names. As the holders of these registrations, cybersquatters often then put the domain names up for auction, or offer them for sale directly to the company or person involved, at prices far beyond the cost of registration. Alternatively, they can keep the registration and use the name of the person or business associated with that domain name to attract business for their own sites. Domain name disputes are usually subject to the Uniform Domain Name Dispute Resolution Policy (UDRP). In addition, most of these new registry operators have developed, or are in the process of developing, specific dispute resolution policies designed to resolve disputes occurring during a start-up, or “sunrise” phase.
A domain name is either transferred or the complaint is denied and the respondent keeps the domain name. It is also possible to seek cancellation of the domain name. There are no monetary damages applied in UDRP domain name disputes, and no injunctive relief is available. The accredited domain name registrars – which have agreed to abide by the UDRP – implement a decision after a period of ten days, unless the decision is appealed in court in that time. The panel decisions are mandatory in the sense that accredited registrars are bound to take the necessary steps to enforce a UDRP decision, such as transferring the name concerned. However, under the UDRP, either party retains the option to take the dispute to a court of competent jurisdiction for independent resolution.