Antoinette M. Tease Montana Patent

This newsletter is the second part of a three-part series of articles intended to provide guidance to the general practitioner concerning intellectual property issues. 


2. Consider Registration and Filing Options.

A patentable idea is only protected if it is the subject of a pending patent application or an issued patent. If a client comes to you with an idea that may be patentable, the client should be referred to a patent attorney for an assessment as to the patentability of the invention. Typically, a patent search is the first step in that process. If the idea appears to be patentable, then the next step is to get the patent application on file. The patent attorney will discuss various filing options with the client. Those options include filing a U.S. provisional application, filing a U.S. nonprovisional application, or filing a PCT (international) application. There are various deadlines implicated with each type of filing, a discussion of which is beyond the scope of this newsletter.

During the pendency of a patent application (before the patent issues), the client should include the words "patent pending" on the products covered by the patent application. Once the patent issues, the patent number should be indicated on the product. Maintenance fees are payable three times during the 20-year term of a utility patent, and if a maintenance fee payment is missed, the patent will go abandoned. Design patents

last for 14 years and do not require any maintenance fee payments.

Trademarks can be registered on the state, federal and international levels. Unlike an international patent application, an international trademark application is an actual application (not just a reservation of a priority date) in the relevant countries and can result in registration in those countries without having to hire any foreign trademark attorneys. The international treaty that allows U.S. citizens to file international trademark applications is called the Madrid Protocol. Currently, there are over 60 member countries in the Madrid Protocol, and that number is growing, making international trademark applications an attractive and cost-effective option for clients doing business overseas.

Copyright registrations can be obtained for copyrightable works. Copyright applications are subject only to superficial review; the Copyright Office does not conduct any examination into authorship or originality other than what is stated in the application. Thus, copyright registrations are fairly easy to obtain. The applicant must submit one copy of the work to the Copyright Office if the work is unpublished and two copies if it has been published. In this context, the term "published" means made available to the public. For software applications, the applicant need not disclose the entire code base; instead, only the first 25 and last 25 pages of code need be filed.

There is no registration process for trade secrets.
Patent Law for the New West
The information in this newsletter is provided for informational purposes only and should not be considered legal advice. Please consult a qualified attorney for advice on a specific legal matter.

2006 Antoinette M. Tease, P.L.L.C. All Rights Reserved.


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