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.
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.
3. Advise Your Client About Disclosure
and Use Issues.
There are very serious consequences under the patent laws if a client discloses an invention before getting a patent application on file. In the United States, an inventor has one year after the public disclosure of an invention in which to file a patent application, but in most countries, there is no one-year grace period. Instead, in those foreign countries that are "absolute novelty" jurisdictions, once an invention is publicly disclosed, the invention is in the public domain, and the inventor no longer has the right to file for patent protection.
The issue of what constitutes a public disclosure varies by country. Non-disclosure agreements help but are not necessarily definitive. In the United States, the only exception to the public disclosure rule is "experimental use." For example, if an invention has to be publicly disclosed in order to be tested, or if the disclosure is to someone on the
research and development team, then the one-year grace period is not triggered. If an invention has been publicly disclosed, patent counsel should be contacted immediately to consider the ramifications of the disclosure and its impact on foreign and U.S. filing deadlines. For more information on public disclosure rules as they pertain to patent law, please click here.
There are similar "disclosure" issues under copyright law. If a copyright registration is not obtained within three months after the first public disclosure of the work, then the copyright owner loses the right to ever recover statutory damages or attorney's fees in the case of infringement. It is critical in the area of copyright law to consult with a knowledgeable attorney so that the timing of the filing with respect to any public disclosure can be controlled to avoid waiver of remedies.
In the area of trademark law, clients must understand that they cannot tie up a trademark without actually using it. In this regard, the mantra in trademark law is, "Use it or lose it." Even after a registration is obtained, the client will not be able to renew the registration if the client is no longer using the mark. If a mark is not used for a period of three years, the law presumes that the mark has been abandoned.
