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| F.A.Q. Q: What is Intellectual Property (IP)? A: Intellectual Property includes patents, trademarks, copyrights, trade secrets, a number of subsets of those topics, and a variety of license agreements associated with those rights. In general, patents relate to "utilitarian” or useful inventions; trademarks or service marks relate to designations used with services or products; and copyrights relate to expressions of ideas that are not limited to writings.
Q: What is a Patent? A: A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.
There are three types of patents:
1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
Source: www.uspto.gov Note: While patents are of three types, design patents, utility patents, and plant patents, as noted above, In 1995 two new concepts were added to U.S. patent statutes, “provisional” and “nonprovisional” patent applications. Utility patents relate to an overall concept, design patents to ornamental designs, and plant patents to reproduced plants.
On June 8, 1995, the GATT Treaty introduced the concept of a "provisional" patent application. Provisional applications allow filing “disclosures,” without the necessity to include “claims,” to be followed within one year by a non-provisional patent application. An applicant should only resort to filing a provisional application in rare circumstances. A patent grants the right to an inventor to exclude others from making, using, selling, and offering for sale the invention from the date the patent issues. Patent rights last until twenty years from the earliest effective filing date of the application. However -- and this statement is critical -- obtaining a patent does not guarantee that practicing the invention of that patent will not infringe someone else's patent, or that someone may not try to circumvent the patent.
Q: What are Trademarks and/or Servicemarks? A: A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks.
Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the USPTO. The registration procedure for trademarks and general information concerning trademarks is described at www.uspto.gov at “Basic Facts about Trademarks” (www.uspto.gov/web/offices/tac/doc/basic/).
Source: www.uspto.gov
Q: What is a copyright? A: Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.
The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress. Source: www.uspto.gov See also: www.loc.gov
Q: What can be patented? A: The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.
In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.
The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon 42 U.S.C. 2181 (a).
The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.
Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.
A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.
Source: www.uspto.gov
Q: What does a Patent cost? A: Legal fees for utility patent applications are negotiable, but generally range from $6,000 to $12,000 to prepare. Complex applications, however, and those requiring a number of claim sets to capture the invention, may cost more, and very simple applications may cost less. It is important to understand that patent applications do not involve completing a preprinted form provided by the Patent Office. Rather, like any writer, a patent lawyer begins with a blank sheet of paper on which the patent application is created. The process is quite time consuming, difficult, and based on a language unique to the patent practice.
Design patent applications are used by a number of companies who manufacture luggage, sports equipment, lighting fixtures, and a host of other products, to protect the design of products and packaging. Fees for filing design patents range between $1,500-$4,500, depending on the number of related design patents that may be appropriate to claim an item.
The costs of a draftsperson who prepares drawing figures accompanying the application also add to the total costs of both utility and design patents. Typically a draftsperson charges $100-$150 per page or an hourly rate of $40-$100 per hour. Your patent attorney typically has a business relationship with one or more draftspersons and will arrange for their services as part of the representation. However, if you have a relationship with a draftsperson who is familiar with patent rules, you are more than welcome to indicate a preference for a particular draftsperson. Please note that the above costs are for an application. Additional fees are incurred during what is typically called "prosecution"--the exchange between your attorney and the Patent Office over the substance of the application. Responses to an Office Action (an argument provided by the Patent Office's Examining Attorney) typically cost between $1000 and $3000, but can cost as little as $300 or as much as $5000 depending on whether the Office Action is made only to a small technical request or to large substantive rejections. NOTE: It is TYPICAL to receive at least one Office Action during the prosecution of an application, especially with the Patent Office's more recent approach to examination. Two or three office actions are not atypical. Further, there are issuance costs and maintenance fee costs should a patent make it to issue. More information about these can be had upon request.
Q: What is the cost for a Trademark? A: The federal (online) filing fee for each product or service class is $325. Legal fees typical for uncomplicated registrations are between $600-$1200 to file the trademark application. Additional costs will likely be incurred during the prosecution phase. Typically $300-$500 per office action response will be incurred. As with patents, at least one office action is typical for trademark applications.
Q: Are there specific dates when I must file a Patent? Or--when are patent rights lost? A: Deadlines, called bar dates, are dates after which a patent application may not be filed. For example, any public use or sale in the United States, or any publication of the invention anywhere in the world, more than one year prior to filing a patent application, bars issuance of a patent in the United States. In many foreign countries, the deadline for filing for a patent is before the actual date of use, publication, or sale. So, if you believe you would like patent protection in foreign venues, you need to discuss this up front with your patent attorney before the use, publication, or sale of any product. | |
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