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    HOW TO RECOGNIZE AND PROTECT YOUR INTELLECTUAL PROPERTY

Patents / Trademarks / Copyrights / Trade Secrets / Conclusion

 

Intellectual property, may be protected by one or more legal devices, including patents, trademarks, copyrights, and trade secrets. The following will briefly describe how to recognize, protect, exploit and enforce each of these four primary mechanisms for protecting intellectual property.

PATENTS

A patent is essentially a contract entered into between an inventor and the United States. The patent contract serves two mutually beneficial purposes -- one for the inventor, and one for the United States. The patent gives an inventor/owner the right to exclude all others for a limited time from making, using, selling or offering for sale the patented invention in the United States, or importing the patented invention into the United States, without the owner's permission. In exchange for this right to exclude, the inventor/owner is obligated to fully disclose to the public how to make and use the invention. Therefore, the inventor's duty to disclose the invention to the public benefits the United States by enabling the public to research and study the patent and use its teachings to design around and make improvements on the patented invention, thus promoting new ideas and advancing the technology. The public, however, may not make, use or sell the invention without the inventor/owner's permission. One who does so without the owner's permission is liable for patent infringement and may be sued for money damages and enjoined from further infringing activity. Therefore, obtaining a patent on an invention is a powerful tool in protecting one's invention from use by competitors, or, if the patent owner prefers, they may "license" another to practice the invention in exchange for a fee or "royalty".

 

There are essentially three types of patents:

1. Utility patents - cover inventions relating to processes, machines, articles of manufacture, compositions of matter, and certain living organisms.

2. Design patents - cover inventions relating to the ornamental design of articles of manufacture.

3. Plant patents - cover inventions relating to asexually reproduced plants.

As mentioned above, obtaining a United States patent on an invention enables the patent owner to exclude others from making, using, selling or offering for sale the patented invention in the United States, or importing the patented invention into the United States for a period of years -- up to 20 years for utility and plant patents, and 14 years for design patents.

To obtain a United States patent, a patent application must be filed in the United States Patent and Trademark Office. Such an application must include a full and complete description of the invention, including formal drawings where appropriate, and one or more claims that legally define the invention. In addition to other requirements, the inventor must sign an oath or declaration stating that they believe they are to be the original and first inventor and must acknowledge that any false statements relating to inventorship may result in a fine, imprisonment, or both and the potential invalidity of any patent issuing therefrom.

Upon filing a patent application, the application will be assigned to a Patent Examiner. Usually this Patent Examiner will have experience in the area of technology that relates to the application. The Examiner will search the Patent Office files to locate any references, including both foreign and domestic issued patents that depict technology related to the invention claimed in the patent application. These references are called prior art. Once the prior art is gathered, the Examiner will consider whether the invention, as claimed, satisfies the requirements for patentability of an invention. First, the Examiner determines if the invention falls within the subject matter identified above for the particular type of patent being sought. Second, the Examiner determines if the invention satisfies the "novelty", "utility", and "non-obviousness" requirements for patentability. "Novelty" requires that the claimed invention be "novel" or new, in that the invention can not have been previously patented by another or known or used by others in the U.S. or a foreign country more than one year prior to filing the patent application. "Utility" requires that the claimed invention serve a useful purpose. "Non-obviousness" requires that the claimed invention can not be merely an obvious variation or modification to an already existing invention. After making a decision on whether these requirements are met, the Examiner will report to the inventor's attorney by means of an official letter called an Office Action.

Often, some or all of the claims will be rejected by way of the first Office Action. For example, if the claims are written too broadly, in that they "read on" or encompass existing inventions, so that the claimed invention is not novel or is considered obvious in view of the prior art, the claims will be rejected by the patent Examiner. The inventor's attorney may then officially respond to the Office Action by amending those claims not allowed, arguing the incorrectness of the Examiner's position, or both. Depending upon the situation, other responses may be appropriate as well. The Examiner will then reconsider the application and again report a decision to the inventor's attorney.

Depending upon the complexities in a given case, the Examiner and the inventor's attorney may correspond back and forth many times. Generally, the Examiner will deem the examination to be concluded after the second review and will issue a "final" Office Action. If some or all of the claims have been found allowable, a patent may be allowed to issue containing those claims. If one or more of the claims still remain rejected, the Examiner's decision may be appealed. If the appeal is successful, the issuing patent will contain the claims found allowable on appeal, as well as any that were found allowable prior to the appeal.

As discussed previously, once obtained, an issued patent may be exploited in many ways. For instance, a manufacturer may simply use the patent to prevent competitors from utilizing the invention, thereby gaining an economical and/or technical advantage over those competitors. On the other hand, the inventor may license or sell the patent to anyone who will pay for those rights. Many times the payments for such a license or sale are made in the form of royalties. The rights bargained for and the amounts payable are typically subjects of negotiation, though attention must be paid to legislative and judicial restrictions regarding such agreements.

Though a patent owner may ultimately enforce a patent against an infringer by initiating a lawsuit, pre-litigation negotiations are quite often successful. The remedies available in litigation include court orders to prevent the infringer from making, using selling, and/or offering for sale the claimed invention in the United States, and/or importing the claimed invention into the United States. Such remedies provide a useful framework for carrying out negotiations. The owner may also seek damages for any unauthorized uses of the invention. In defending an accusation of patent infringement, an alleged infringing party will often attempt to prove that the claimed invention is not new or is obvious and that therefore the patent is invalid. This defense also usually includes an inquiry as to whether the inventor complied with the various rules for obtaining a patent. For this reason, the inventor should strictly comply with the instructions of the attorney to ensure that the patent application file remains unblemished.

As mentioned previously, the claims legally define the invention, and therefore, these claims are very important as they control the scope of protection afforded by the patent. If the claims are written too narrowly, in that they include unnecessary limitations to define the invention, others will be able to easily design around the claimed invention thereby avoiding infringement and/or the necessity of licensing the patent. Consequently, the value of the patent is diminished. On the other hand, if the claims are written too broadly, in that they "read on" or encompass existing inventions, so that the invention is not new or is obvious in view of the prior art, the claims will be rejected by the Patent Office or later held invalid in a subsequent patent infringement suit.  Patent attorneys, therefore, strive towards gaining allowance of claims that grant the inventor the broadest patent protection available in view of the prior art.

 

TRADEMARKS

A trademark or service mark is any word, name, symbol or device, or any combination thereof used to identify or distinguish one's goods or services from the goods or services of others. Registering such a word, name, symbol or device with the United States Patent and Trademark Office affords the registrant nationwide protection of the mark with the ability to exclude others from using the same or a confusingly similar mark.

Trademark protection exists because trademarks and service marks are associated with the goodwill of a business. A purchaser makes decisions based upon perceptions of economy, reliability, quality and safety of the goods or services identified by the mark. When a business has a reputation for providing such advantages, this reputation constitutes a valuable property right. Allowing others to use the same marks would cause customer confusion and allow others to unfairly capitalize on the name or product recognition of others. Trademarks and service marks will therefore be protected by the courts to not only protect the rightful owner of the mark, but also to protect the consuming public.

Registration of a mark is usually not obtainable for geographic names or surnames, nor is registration of a mark usually obtainable for words, names, symbols or devices that are merely descriptive of the merchandise or service unless such a mark has acquired "secondary meaning". Secondary meaning is achieved when the owner uses the mark for so long that the public comes to recognize and associate the mark with the particular individual or business using the mark. Only after secondary meaning is achieved may a merely descriptive, geographic, or surname mark be registered as a trademark or service mark. Registration of a mark may never be obtained for words, names, symbols or devices that are deceptively misdescriptive.

Although an application for registration of a mark may be filed based on an "intent to use" in the United States, trademark rights exist only when the owner has actually used the trademark in the sale or offering for sale of goods or services. Therefore, no trademark rights will be presumed for a particular word or symbol until the word or symbol has actually been used in commerce in connection with goods or services.

To be maintained, a trademark must be used. Furthermore, a trademark owner must be reasonably diligent in preventing others from using the trademark. If a trademark owner allows other businesses to use the trademark for the identification of similar goods, then the trademark may lose some or all of its capability of identifying the owner as the source of those goods. Furthermore, if the trademark in question is allowed to become the common generic name by which that product is known, then trademark protection may be lost. This occurred with both the trademarks "Aspirin" and "Cellophane".

The protection and maintenance of trademark rights are usually non-separable. The trademark infringer causes damage to the trademark owner and gains profit, while also weakening the trademark. To protect the trademark and preserve it, the trademark owner may seek a court order enjoining the infringer from using the trademark, and requiring the infringer to pay appropriate damages.

Trademarks are protectable on a number of different levels. Trademarks will be protected by the common law within the specific geographic areas where the trademark has actually been used. Further, state trademark registrations may provide somewhat broader protection. Federal registration of the trademark, however, will usually afford the greatest protection on both a nationwide and local basis.

A trademark will usually be exploited by the business that uses the trademark in the sale of its products or services. Trademarks are also often sold or licensed. Since a trademark and the goodwill it represents cannot be separated without destruction of the trademark, care must be taken to transfer the goodwill along with the trademark itself.

COPYRIGHTS

Copyright is a legal device to protect original works of authorship fixed in a tangible medium or form, including: literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works.

Only the owner of a copyrighted work has the exclusive right to (1) reproduce the copyrighted work, (2) prepare derivative works based upon the copyrighted work, (3) distribute copies of the work to the public by sale, rental or lease, (4) perform the work, or (5) display the work. Under copyright law, in the case of an individual, these exclusive rights exist for the life of the author, plus an additional 70 years.

It should be understood that a copyright will not protect the idea represented by a work. Rather, the copyright will only serve to protect the particular expression used by the author to convey the idea. For example, an individual would likely not infringe a copyrighted book that described a new method of valuing real estate by simply practicing those teachings. However, if that same individual retypes or photocopies the book and distributes copies of the book for sale without permission of the copyright owner, such acts would likely infringe the copyright.

Prior to January 1, 1978, certain works were copyrightable pursuant to federal statute, and other works were protected by the states through common law copyright. All works that were completed on or after January 1, 1978, however, are uniformally protected by copyright throughout the United States. As mentioned previously, to qualify for such protection, the work must be fixed in tangible form, and the work must be an original creation of the author.

Copyright law protects works whether published or unpublished. Unpublished works are protected from the moment the work becomes fixed in a tangible form. A work is generally considered unpublished when copies of the work have not yet been distributed to the public. Once published, copyright protection may be diminished unless the work has been published with an appropriately located copyright notice. Such a notice will typically include a copyright symbol, the year of first publication and the name of the copyright owner; e.g., 2007 John Doe.

Prior to March 1, 1989, failing to include such a notice on a published work caused the copyright to become abandoned, except for certain circumstances when curative steps could be taken to save the copyright. After March 1, 1989, however, failure to include such a notice on a published work no longer causes the copyright to go abandoned. However, under some circumstances, the ability to recover money damages for copyright infringement may be limited if no copyright notice appears on the published work.

A claim to copyright may be registered with the United States Register of Copyrights. Such registration only operates to record claims to copyright and does not create copyright protection, since such protection arises the moment the work assumes tangible form. However, the copyright owner of a work originating in the United States may not sue for copyright infringement, until the claim to copyright has been registered. Such a claim to copyright may be registered for both unpublished and published works at almost any time. It should be noted, however, that registration within three months of a first publication will provide the greatest breadth of protection.

By registering late, a copyright owner may be denied his right to both statutory damages and attorney's fees in an infringement action. Also, other important advantages may be gained by registering a claim to copyright within five years following a publication of the work. Such advantages include the right to assert the registration as prima facie evidence of the validity of the copyright.

In general, a copyright owner may bar others from copying the protected work without authorization. A certain amount of copying may be allowable in some circumstances, however, pursuant to the "fair use" doctrine. Typically, a copyright owner may turn to the courts for both injunctive and monetary relief.

A copyright interest may be retained by the copyright owner, or it may be licensed or sold. It should be noted that a copyright owner may segregate the various rights involved. For instance, the artist of a syndicated comic strip may sell moving picture rights to one party and magazine publishing rights to another party.

TRADE SECRETS

A trade secret is typically defined as information that relates to one's trade or business, that is not generally known, and that provides an economic advantage over one's competitors. Thus, trade secrets are typically comprised of unpatented inventions, formulas, patterns, customer lists, recipes, methods of doing business, processes, machines, or other forms of commercial information.

Trade secrets are protected by state law, therefore, the laws governing trade secrets may vary from state to state. However, all states require that for information to be protected as a trade secret, the information must actually be a secret before a court will offer protection. Therefore, the trade secret owner must place a high premium on confidentiality and security. Typically, any and all precautions that tend to preserve the secret will be useful to create and sustain a protectable trade secret. Such precautions should generally include a limitation of access to the secret by others. Often, such security may be both obtained and evidenced by the use of written agreements to bind employees and business visitors to obligations of confidentiality. In addition, the trade secret owner should require the use of visitor passes and escorts, should control document dissemination and availability, and generally should maintain plant security with the appropriate use of restricted areas.

Although a patent may be used to prevent even an innocent party from infringing the invention, a trade secret may not be used to prevent other persons from using the secret when they have discovered the secret through their own independent efforts, such as reverse engineering. In addition to risking eventual public disclosure, a trade secret owner must also assume one other risk. If a third party independently invents and patents the trade secret, the third party may stop infringements of the patent - including use by the original trade secret owner.

Trade secrets are typically exploited by the person or company that creates them. Trade secrets can also be sold or licensed, but precautions must be observed to bind all parties in confidentiality, thereby assuring the preservation of the secret.

A trade secret may be enforced by initiating a lawsuit and requesting the court to enjoin any unauthorized disclosures or use of the trade secret in question. Damages may also be sought in an appropriate case. In addition, some states, and now the federal government under the Economic Espionage Act make the theft of trade secrets a punishable crime.

CONCLUSION

Each of the areas of intellectual property described above are associated with their own complex set of laws. The material above seeks only to provide the reader with a general overview and information regarding various options that may be available to protect intellectual property. The reader should be further cautioned that the principles of law outlined herein are broadly stated of necessity and that a given factual situation may dictate results that could vary from the general conclusions offered herein. Specific questions should be directed to your legal counsel.

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