The next three issues of Intellections will be devoted to a series of articles intended to provide guidance to the general practitioner concerning intellectual property issues.
IP GUIDANCE FOR THE GENERAL PRACTITIONER – PART I
1. Ascertain What Type of Intellectual Property Is At Issue.
When a client confronts you with a potential intellectual property (IP) matter, the first thing you need to do is determine what type of IP is at issue. Patents generally cover things that are functional, such as a piece of agricultural equipment, a hand tool, a unique type of garment, a medical device, and even a software application. In order for something to be patentable, it has to meet three criteria: it has to be useful, it has to be novel (i.e., something no one else has done before), and it has to be non-obvious to someone skilled in the art (i.e., the invention has to be something that advances the technological arts).
There are two types of patents—utility patents and design patents. A utility patent is what most people think of when they think of a patent. A utility patent covers the way something works. A design patent, on the other hand, only covers the way something looks. Design patent protection is analogous to copyright protection and even trade dress protection.
There are two ways of filing a patent application in the United States. An application can be filed as a provisional application or a nonprovisional application. A nonprovisional application is sometimes referred to as a “utility” application, but technically, a utility application could be filed as either a nonprovisional or a provisional application. A provisional application lasts for twelve months and then automatically expires. The applicant can retain his or her filing date by filing a nonprovisional application within that twelve-month period. The main reason for filing a provisional application is to add an extra year to the patent term, which is normally 20 years from the date of filing (21 years if a provisional is filed first).
Many clients are under the impression that a provisional application is a quick-and-dirty way to obtain patent protection, but that is a dangerous assumption. Even provisional applications must meet all of the patent office requirements in terms of the sufficiency and particularity of the disclosure in order for the provisional to provide any real protection. If a provisional filing contains an insufficient disclosure, and a competitor files for a similar invention in the twelve-month between the provisional and nonprovisional filings, the competitor will actually have the earlier filing date with respect to the matter that was insufficiently disclosed in the provisional.
Patents are issued by the U.S. government and by most foreign governments. Patents are awarded on a country-by-country basis only. There is an international treaty called the Patent Cooperation Treaty, to which over 120
countries belong, and that treaty allows you to reserve a priority date in all member countries for a period of two and one-half years. At the end of that period, the applicant still has to retain foreign patent counsel to “enter the national stage” in each country in which the applicant desires foreign patent protection. PCT applications are a great way for the client to preserve its options while testing the international market.
Trademarks are source identifiers. A trademark can be a word, a logo, or a slogan. In order to be registrable, the trademark must be used in connection with the bona fide sale of goods and/or services. An intent-to-use application allows the client to reserve a name for up to three years after the Notice of Allowance (which usually issues six to twelve months after the application is filed). If the client has not achieved sales during that time, then the application will lapse.
Once a federal trademark registration issues, the registration must be periodically renewed with filings under Sections 8, 9 and 15 of the Lanham Act (the federal trademark statute). With each renewal, the client must certify that it is still using the mark in connection with the goods or services covered by the application. The sales used to justify each renewal (as well as the sales used to support the initial registration) must be in interstate commerce, which means they must cross state lines.
Copyright law protects creative works such as books, photographs, movies, songs, sculptures, paintings, jewelry, and even software applications. Copyright law may also protect the physical appearance of a functional item (such as a lamp), as long as the features that are claimed to be copyrightable are not functional. With a software application, both the source code and the look-and-feel of the application are potentially copyrightable. In order for something to be copyrightable, it must be an original work, in other words, not something that was copied or derived from an existing work.
Under copyright law, the copyright owner has the exclusive right not only to his or her own work, but to all “derivative” works. A derivative work is something that is based in substantial part on the original work. (As you can imagine, this test leaves a lot of room for interpretation.) In the case of works of joint authorship (where there is more than one author), the issue of what constitutes a derivative work often arises when the authors decide not to work together anymore, and one of the authors wants to take the jointly developed work and build on it.
The fourth and final category of intellectual property is trade secrets. A trade secret is something that is kept confidential that would have value to one’s competitors if they were aware of it. A recipe of a typical trade secret, but trade secrets can also include customer lists, pricing strategies, business plans, and even employee salaries. Trade secrets must be vigilantly policed (by restricting access and obtaining signed confidentiality agreements), or they will lose their status as trade secrets.