|
|
|
|
 |
 |
 |
 |
 |
 |
 |
 |
 |
 |
 |
 |
 |
 |
 |
 |
 |
 |
 |
|
|
Frequently asked questions about intellectual property What is intellectual property (IP) law? What is a patent? What kind of inventions can be patented? Why should I get a patent? What are the steps to getting a patent? What do you mean by negative responses? What do patent attorneys do? Are there any special requirements to be a patent attorney? How do I make money from my patent? What are the parts of a patent application? What is a trademark? What is a servicemark? Why should I register a trademark or servicemark? What is a copyright? Why should I get a copyright? How do I copyright my works? Why should I register my copyright? What is a trade secret? What is trade dress? What are mask works? What is meant by infringement? What is unfair competition? What is due diligence? What do antitrust laws have to do with intellectual property? What is an IP audit? As a law firm, what kind of clients do you want to have? What is the path of the solo inventor? What is the path of the inventor turned entrepreneur? What is the path of the established business relying on new ideas? What is intellectual property (IP) law? Intellectual property law is the broad category that patent law belongs to. All IP law deals with the protection of ideas or expressions of the those ideas. Here are the major subcategories of IP law: For an understanding of each of these areas, see the answers to other questions. Go to top. What is a patent? A contract between the U.S. government and an inventor that gives the inventor a limited monopoly for, in most cases, 20 years. This monopoly allows the inventor to make money from his or her invention so that people are encouraged to come up with new ideas. During the monopoly period, no one other than the inventor can make, use, or sell the invention. In exchange for being granted this monopoly, the inventor must disclose the complete invention to the public. This disclosure, in turn, allows the public to improve on the original invention so that an even better invention may be produced. Much of our modern way of living is as a result of rewarding people for their inventions. At one point or the other, almost every device we see around us was covered by a patent: automobiles, refrigerators, computers, and cell phones, just to name a few. In addition, less obvious improvements to these devices are also patented; for example, the computer chip in your automobile that improves gas mileage, the refrigerant in your refrigerator that’s less dangerous to the environment than freon, the faster bus in your computer that allows us to measure computer operations in nanoseconds instead of microseconds, or the better antenna on your cell phone that gives your phone a greater range. Go to top. What kind of inventions can be patented? There are three types of patents: utility patents, design patents, and plant patents. Most of the time when we think of something covered by a patent, it’s probably covered by a utility patent. Utility patents apply to— In general, an invention must meet three requirements before it can receive a utility patent: It must be (1) new, (2) useful, and (3) non-obvious. Some things can’t be patented—since they are considered obvious: Depending upon their nature, some computer programs are patentable and some aren’t. If a computer program isn’t patentable, it can usually be protected by obtaining a copyright for the program. Less well known is the design patent, which covers the appearance of a device. To receive a design patent, an item must be (1) new, (2) original, and (3) ornamental. For example, when we speak of a patented silverware pattern, we are talking about an item protected by a design patent. Perhaps the least well-known patent is the plant patent, which can be awarded if a person invents, discovers, or asexually reproduces any distinct plant (a new variety of rose or a strain disease- resistant corn, for example). Go to top. Why should I get a patent? Simply put, to make money from your invention. In more elegant terms, to be rewarded for your hard work, creativity, and intelligence. In the less obvious case, to protect your market position for a product you already have. For example, if you already have a device on the market and come up with an improvement to that device, you will probably want to protect your market position by immediately securing a patent for the improvement so that your competitors don’t come up with the same improvement and use it to take away your share of the market. Go to top. What are the steps to getting a patent? 1. Come up with the idea. (Naturally, this may involve experimentation, the manufacture of a prototype, and testing, as well as any number of other steps.) 2. Do a search to see whether your idea is patentable. (If it’s not original, you don’t need to waste any more money!) 3. Prepare your patent application and submit it the U.S. Patent and Trademark Office (USPTO). This requires you to define in specific ways the claims that you have. In other words, you have to state why your device is new, novel, and non-obvious. 4. If the USPTO responds negatively to your application, file the appropriate appeals and any other necessary paperwork to get your patent. Go to top. What do you mean by negative responses? Once your patent application reaches the USPTO, it will be examined by a patent examiner. There can be a number of negative responses (or office actions) the examiner can take. For example, the examiner may request additional information, drawings, or even a working model. Of course, a worse negative response can be to reject the patent application altogether. In this case, however, all is not lost—for you may file an appeal. In fact, the process of rejection and appeal may continue several times and finally lead to (1) the issuance of a patent or (2) the patent examiner issuing a final rejection. In this later case, you may appeal to the Board of Patent Appeals and eventually to the federal court system. Go to top. What do patent attorneys do? In the steps outlined above, a patent attorney is critical for steps 2, 3, and 4. Steps 2 and 4 are almost exclusively carried out by the patent attorney. During step 3, the patent attorney and the inventor usually work together very closely. You may hear patent attorneys refer to steps 2, 3, and 4 as “patent prosecution." However, the role of a patent attorney is not limited to simply helping an inventor get a patent! Patent attorneys also help with numerous other challenges, especially with those challenges that companies face when they have already received a large number of patents. Whether you are a one-time inventor, an inventor turned entrepreneur, or a well-established business determines which set of challenges a patent attorney may be able to help you with. But in the broad terms, the chief areas in which patent attorneys assist clients have to do with— These areas, in addition to patents, are often referred to as “intellectual property law," sometimes called “IP law." Since all of these areas have significant business implications, patent attorneys are often key advisors in many other aspects of business: Go to top. Are there any special requirements to be a patent attorney? Yes, more so than for other areas of IP law or for law in general. Patent law requires special training and expertise. The primary reason is the patent statute’s requirement the patent specification (or description) provide sufficient detail so that a knowledgeable person can read the specification and make the invention (or carry out the described process) without undue experimentation. Keep in mind that part of the rationale for awarding the patent is that other people should be able to understand the invention and make improvements to it so that technology is continually improved. Others can’t do that if they can’t understand how to “reinvent" the described invention. Furthermore the specification must describe the best mode of “practicing the invention" known to the inventor at the time of filing the application. So patent law is the only field of United States IP law that is not open to any lawyer. Although the inventor himself or herself may apply for a patent, a lawyer may only apply for patents on behalf of the inventor if the lawyer has been registered to practice before the USPTO. In addition to good moral character and basic training in scientific and technical matters, a lawyer must pass a special examination before he or she can be registered to practice before the USPTO. One interesting point: It is possible for someone with good moral character and scientific and technical training to take this examination and be registered to practice before the USPTO without being a lawyer. This person is referred to as a “registered patent agent," not a “registered patent attorney." Of course, registered patent agents aren’t eligible to assist clients with the other areas of IP law, and they cannot appear in court to represent clients when patents are litigated. Go to top. How do I make money from my patent? The most obvious way is to start your own business , making the item you’ve invented. However, you can also make money by assigning or licensing the patent to someone else. When you assign (or “sell") your patent, the assignee (“buyer") gets the exclusive right to make, use, or sell the invention. It’s also possible to assign a part interest in the patent or to assign the right to make, use, or sell the invention in a geograpraphical region of the United States. The assignment also contains one more important aspect: It allows the assignee to sue any infringers. This right to sue is referred to as the right of enforcement and is critically important to protecting the right to profit from the invention. When you license at patent, the licensee gets one or more of the rights (of making, using, or selling), but not all of three rights to the invention. For example, the licensee may be able to make and use the invention, but not sell it. Or the licensee may get the right to incorporate the invention into another end product, which the licensee then sells to the public. A license may also be limited in terms of geography, time, and right of enforcement. When you assign or license a patent, you may receive a one-time lump-sum payment, be paid royalties, or be be paid a combination of a lump sum and royalties. Royalties are usually calculated on the basis of the number of times the invention is used or sold. For example, if you license a computer chip, you may be paid a percentage of the net sales price of each computer chip sold. Go to top. What are the parts of a patent application? A patent application has two essential elements that define your rights as a patent holder once the patent is issued: the specification and the claims. The specification describes the complete invention. The claims define what makes the invention (1) novel, (2) useful, and (3) non-obvious. In short, the claims explain why your invention is unique and deserves to have a patent. Once your patent is granted, the claims establish the basis for not allowing someone else to make, use, or sell your invention. Consequently, you can see why drafting your claims is a very important task. Another typical element of a patent application is a drawing of the device to be patented, but a drawing is only essential when needed to understand the invention. A patent application also contains some other “paperwork requirements": an oath that you, as the inventor, are the original and first inventor of the invention and a power of attorney so that your patent attorney can act on your behalf before the UPSTO. Go to top. What is a trademark? The first proud artisan probably used the first trademark, some distinctive symbol or mark to tell everyone else he or she had made the item in question. And simply put, that’s exactly what a trademark is. Another example of a trademark is the three big, bold, and blue letters that indicate “IBM." If we see these letters on a package, box, or item, the letters let us know that IBM is the source of the product we are buying. The primary purpose of the trademark is let the public know that the item in question is genuine; that is, the article is really made by manufacturer or artisan the mark represents or is really offered for sale by the seller the mark represents. Trademarks may be more than mere graphic symbols; for example, the following are also trademarks: Go to top. What is a servicemark? Some people don’t sell things (goods or products); they sell services. The servicemark does for the service provider what the trademark does for the manufacturer, artisan, or seller: It let’s the public know the service is being provided by the genuine service provider the servicemark represents. Go to top. Why should I register a trademark or servicemark? First, it clearly establishes that you own the mark. Second, it gives you the exclusive use of that mark in commerce. Suppose that two companies—one in California and the other in Alabama—both decide to start using their initials to represent the name of their companies. Since one is called A Big Company, it uses “ABC." Since the other is called A Better Company, it also uses “ABC." Further suppose that both companies depict these initials in almost exactly the same way. Both are using a trademark and have a trademark, but once both companies begin to market nationally—rather than restricting their marketing to either California or Alabama—the question of ownership will almost surely arise. Generally, the company that registers the trademark first is going to be presumed to be the owner of that trademark and will mostly likely be able to force the non-registering company to cease using the trademark. Federal registration gives you the right to put an ® after the trademark and puts others on notice that they shouldn’t use the mark without expecting unfortunate legal consequences. Keep in mind your right to force others to stop using your trademark or any other mark that is likely to confuse the consumer is what helps the consumer know that he or she is buying the genuine article from you! Go to top. What is a copyright? Just as inventors are allowed to have a limited monopoly through patents for their inventions, authors, poets, playwrights, screenwriters, songwriters, composers, musicians, artists, photographers, filmographers, and others in similar pursuits are granted the right to control the copying, reproduction, performance, display, distribution, or adaption of their works. Just as the patent monopoly encourages the inventiveness of inventors, a copyright encourages the creativeness of artists and performers. But copyrights aren’t limited to printed materials, sheet music, phonograph records, or films. Other items common in our everyday life may also be covered by copyrights—computer programs and computer games, for example. Copyrights may cover other things that one might not immediately think of as being copyrightable: pantomimes, choreographic works, sculptures, maps, works of artistic craftsmanship (such as a lamp base), artistic jewelry, enamels, glassware, tapestries, dinnerware patterns, Christmas decorations, dolls, three-dimensional plastic models designed for scientific or technical use, architectural drawings, advertisements, fabric designs, and characters in works of fiction. Go to top. Why should I get a copyright? If you are an artist, performer, or similar creative and inspired person, a copyright (literally, the right to copy) is what guarantees you get paid for your work. To demonstrate this point, let’s consider the plight of the computer programer who develops a software program to help computer-manufacturing companies keep track of their component parts. The programmer went to college and spent long hours of studying to learn how to write that program. He probably did much research to determine what the needs of his customers were. Next, he applied the seat of his pants to the seat of his chair and spent long hours writing code. Chances are pretty good the code didn’t work right the first time he tried the program. So he debugged the program, and he rewrote the code—most likely several times. He puzzled over how to make the program meet a multiplicity of needs of many different computer-manufacturing companies. After he perfected the program, he then spent hours marketing the program—by calling, e-mailing, advertising, and going to trade shows. In short, he spent time, money, and effort developing and marketing the computer program. He probably experienced a great deal of frustration, in addition to some degree of tension and stress. He stayed up late some nights and didn’t get to spend time with his family. If you were that computer programer, don’t you think you’d deserve to be paid for all that effort? It is the computer programmer’s copyright on the software that stops—or should stop—a person from simply copying the program from a friend’s computer. The copier (copyright violator) doesn’t reward the programmer for his work. If the programer isn’t rewarded for his work, he is unlikely to write any further programs or improve the program he’s already written. By the way, to copy a copyrighted work without the permission of the copyright holder is both a criminal offense and a basis for a civil lawsuit. Go to top. How do I copyright my works? In the most elemental way, you put your name, the © symbol, and a date on your work. However, simply doing this does not completely guarantee the protection of your work. For example, the act of putting your name, the © symbol, and a date may not be sufficient to protect our international copyrights. And just because you don’t have your name, the © symbol, and a date on your work doesn’t mean that your work is always unprotected! Copyright law is far too complex to be explained in only one paragraph. Go to top. Why should I register my copyright? Registration allows you to institute a lawsuit against those people who violate your copyright. If you win your lawsuit, registration will also allow you to collect statutory damages and attorneys’ fees from the infringing party. Damages are the money the infringing party must pay you because of violating your copyright. Since it is often difficult to prove actual damages caused by a violation, the statutory damages are frequently the only meaningful damages the copyright holder receives from an infringement. Registration also provides better proof of exactly when your work was first published. The date of first publication becomes important because a copyright is a time-limited right. Once your copyright expires, your work will enter the public domain and may be freely copied by anyone. Go to top. What is a trade secret? A formula, process, method, technique, device, program, pattern, or other business information that is kept confidential by a business so that the business has an advantage over its competitors. To be protected, trade secrets (1) can’t be generally known or readily ascertainable by others and (2) must have been subject to some reasonable efforts to keep them confidential. Trade secrets aren’t covered by patents because to get a patent, the keeper of the trade secret must completely disclose its nature! The primary way to protect your trade secrets is to have confidentiality agreements and non-competition agreements with your employees. Go to top. What is trade dress? The way a product looks in the marketplace. For example, if you see a Campbell’s soup can, you immediately recognize it as a Campbell’s soup can because of the way it looks. If you were Campbell’s Soup Company, you wouldn’t want a competitor company selling its soup in a can that looked like the Campbell’s soup can. The consumer could become confused and buy the “wrong" product—the competitor’s soup. If trade dress is distinctive and non-functional, it may be protected by trademark law. Go to top. What are mask works? In the production of computer chips, a mask work is what allows the manufacturer to reproduce the chip over and over. In essence, it’s the template for the chip. It’s valuable intellectual property. Should it be protected by copyright? or by patent? or as a trade secret? Since none of these forms of protection seemed to quite fit the bill, Congress passed the Semiconductor Chip Production Act of 1984 to specifically address the issues of protecting intellectual property in the form of mask works. Go to top. What is meant by infringement? Any type of intellectual property can be infringed. For example, if you hold the patent on the design of a faster computer bus and if someone else begins to manufacture computer busses with your design without your permission, the other party is said to infringe on your patent. Or if you have written and copyrighted a novel and if someone else prints and sells copies of your novel without your permission, the other party is said to infringe on your copyright. Or if you sell a line of clothing and always put a little horse (your trademark) on your clothing and if someone else begins to sell a line of clothing with a similar little horse on it, the other party is said to infringe on your trademark. Go to top. What is unfair competition? Usually, unfair competition has to do with may be loosely termed “counterfeiting" a product. Sometimes, unscrupulous individuals or companies may affix your trademark on their products and sell them as your products. This is perhaps the most blatant case of unfair competition. Other more subtle ways may also be employed: the use of a similar name, size, shape, or other distinctive characteristic of an item or its packaging. But unfair competition may also arise as a result of unintentional similarity in products. For example, your company may come up with a design for a computer case that’s similar to another company’s computer case without realizing it. The unintentional nature of the unfair competition doesn’t make it less unfair, and certainly doesn’t lessen the desire of the other company to protect its trade dress. Go to top. What is due diligence? A stock broker is expected to exercise caution before selling someone stock in a company. If the broker talks someone into buying stock without revealing the risks involved, the broker may be liable to the buyer for the price of the stock. When a stock broker carefully investigates the company selling the stock before he or she brokers the stock to the public, he or she is said to be exercising due diligence. Any buyer of stock is likewise expected to exercise caution when buying stock. A company buying the stock of another company to facilitate a merger must therefore exercise due diligence so that the buyer knows what is being bought. As with any other business pursuit, if you buy stock in a company (and therefore buy its assets, including its intellectual property) without investigating exactly what you going to buy, you may buy something that is worthless. Go to top. What do antitrust laws have to do with intellectual property? Antitrust laws prevent the public from being subjected to restraint of trade, illegal monopolies, price fixing, and price discrimination. Any business practicing these activities usually causes the public to pay more for goods and services. Some of these activities drive competition out of the marketplace and thus drive up the price of goods and services. Patent owners may run afoul of the antitrust laws in any number of different ways. For example, a patent owner may want to try to buy up the patents for all inventions similar to hers. Or a patent owner may want to require that a licensee charge a certain price for the invention when the licensee resells the invention. At one level, either of these approaches may appear to be a perfectly legitimate business purpose to someone not particularly savvy about antitrust laws. Of course, when consulted, a good patent attorney will be able to warn you about the dangers of such practices and prevent needless and expensive litigation. Go to top. What is an IP audit? Depending on circumstances, an IP audit has a wide range of meanings. Perhaps the best way to understand both the term itself and the range of meanings is to name a few of types of IP audits. Probably the most frequent and typical IP audit is occasioned by a sale of assets, an acquisition, a merger, or a stock transfer. This is typically called an acquisition audit and is related to the acquiring company doing its due diligence. The purchaser wants to know exactly what is being bought. An IP audit may also be initiated as the result of a lawsuit. For example, your company may be accused of violating another company’s patent. In this case, the IP audit will be an investigation into that accusation. An IP audit may be caused by management’s desire to make sure everything is okay when it comes to intellectual property. This can be a good idea for a well-established business that perhaps has never before realized the value of its intellectual property. It can also be a good idea of a fastgrowing high-technology company that has recently come to a realization of the value of its intellectual property. In either case, this type of IP audit resembles taking an inventory: identifying and listing all the patents, licenses, trademarks, and copyrights. It may also reveal items or processes that should be patented and licensed, but are not; or trademarks and copyrightable items that should be registered, but are not. It may identify other types of intellectual property such as trade secrets and investigate both the processes and contracts a business has in place for protecting those trade secrets. Finally, such an audit may identify possible infringements by your company on the intellectual property of other companies, a source of potential lawsuits. Indeed, some companies realize the value of a periodic IP audit, sometimes called the “improvement IP audit." Go to top. As a law firm, what kind of clients do we want to have? We are pleased to serve a variety of clients—from the client who thinks she has invented an improved electronic circuit to the large business that must continuously improve its products and patent them. When it comes to patent and other intellectual property work, we can identify at least three basic types of clients: Each of the these basic types presents unique challenges for a patent attorney, which are pointed out on the linked pages listed above. More important, we are keenly aware that the individual circumstances of each client can vary. So the LFSP Patent Attorneys are committed to meeting the individual needs of each client, regardless of where they may be in the invention and business cycle. Go to top.
Go to top. Once you invented the device and secured the patent, you may go into business making and selling the device. If you follow this path, some of the challenges you’ll face include the following: Because the LFSP Patent Attorneys are part of a full-service law firm, your LFSP patent attorney will be able to quickly refer you to one of his or her associates who will be able to help you with each of these—and many other—challenges in starting your own business. Go to top. Once you invented your first device, secured its patent, and gone into business making the device, you will probably want to expand your company, grow your market share, and increase your profits. Your goal will probably be to own a well-established, successful, growing, and profitable company. Such a well-established company also faces even more complex challenges that patent attorneys are uniquely equipped to handle: Go to top. |
 |
|