WHAT IS A PATENT?

The Patent as an Individual Property Right
Essential Components of a Patent
The meaning of the word patent – a brief history
Important Features of Patents
The Value of Patents
Evaluation of an Invention

Conducting a Patentability or “Prior Art” Search
Advertising and Potential Future Value:

What a Patent is Not

Not a Trademark
Not a Copyright
Not a Conveyance to Make Use or Sell – it is exclusionary only

What is patentable
Obviousness and the Patent Law
Who May Obtain a Patent ?
Timing – the key to who owns the invention
When Should One Apply for a Patent?

How to Obtain a Patent

Preparation of a Disclosure of the Invention
Preparation and Filing of the Patent Application

Prosecution of the Patent Application
Issuance of the Patent
Exploitation of Patents – What Do You do Next ?
Enforcement of Patentable Rights

Alternatives to Patent Protection

Trade Secrets

WHAT IS A TRADEMARK ?

Introduction:

The Nature of a Trademark
What a Trademark protects;
What a Trademark does not protect

Trademarks Must Be Distinctive;
Appropriate Subject Matter For Trademarks;
Appropriate Subject Matter For Tradedress;

The Benefits of Federal Registration;
How to Use a Trademark

Trademarks as Intellectual Property

Licensing
Trademark Infringement
        Infringement
        Likelihood of Confusion
        Counterfeiting

 List of References

 

WHAT IS A PATENT ?

A patent provides its owner with unique rights that cannot be duplicated by any other legal document. Only a patent can stop others - whether they have copied the invention or have done their work independently - from making, using or selling the patented invention.

The Patent as an Individual Property Right

A patent is an official document granted by the federal government conveying to the recipient, called the patentee, specific rights named in the document and in the statute authorizing it. These rights are known as patent rights and are clearly defined in the statute (35 U.S.C. 154) as: “… the right to exclude others form making, using, or selling the invention throughout the United States.”  The Key term in the statute is the word exclude, which is an essential feature of any property right. Thus, a patent is a grant of intellectual property rights by the United States, which permits the patent owner to stop other from exploiting his patented invention.

Essential Components of a Patent

A patent includes three essential components: drawings (usually but not always required); a specification, which explains the patented invention, and, finally but most importantly, claims, which define that which the patent right covers. In other words, the patent claims define the extent of the intellectual property right which is granted by the U.S. federal government.

An essential feature of a patent is its limited life, as required by the Constitution. Congress has set a time limitation of twenty years (fourteen years of shorter terms for ornamental designs) from the date of the application of the patent, at the end of which the patent right expires. In this way, the patent owner has less than twenty years (as it takes time for the application to be granted) during which he has a right to prevent others from making, using or selling the patented invention. The public benefits as well because, after the patent expires, the patentee no longer has the right to exclude anyone from making, using or selling the invention of the patent. The inventor must, however, describe the invention in the patent (full disclosure). Patents are open to all when granted, the knowledge set forth in the patent is available to everyone. This was the original intent of the first Director of the U.S. Patent Office, who also happened to be the 3rd President of the United States, Thomas Jefferson.

The meaning of the word patent: a brief history

Why are these documents called “patents"? The word patent means open, exposed, or evident. Our concepts of patents came from England and were written into our Constitution. In England, long before the American Revolution, it was an established practice and part of the law for the Crown to grant special privileges or monopolies by means of “Letter Patent, which were the documents open to public inspection setting forth such grants. Such “Letter Patent”were granted for limited times for new inventions within the realm. With passage of time, the phrase “Letter Patent”became shortened to the term patent, but both mean the same thing.

Important Features of Patents;

A patent is far more than simply a legal document. It is also a technical publication and a sales brochure. It is a technical document in that it contains a written description of the patented invention so that everyone interested in the field to which the patent pertains may learn how to make and use the invention by reading the patent. Thus, issued patents provide a wealth of technical information for the public, often unavailable elsewhere. A patent is analogous to a sales brochure because it describes what was known before, commonly referred to as the “prior art and then sets forth how the present invention is an improvement over the known state of the art. The original patent document goes to its owner and is in the form of a set of printed pages and drawings (if any) that are bound together with a blue ribbon fixed under a crimson seal. Informal printed copies of the patent are published by the government and are available from the US Patent and Trademark Office, which is a part of the Commerce Department. The mailing address of the office is Washington, D.C., 20231, but the current physical location of the office is Crystal City, VA, almost adjacent to Washington’s National (Reagan) Airport. Designated libraries in several major cities throughout the country have collections of US patents. You may consult the www.USPTO.gov website for these locations

The Value of Patents

Consider the cotton gin, the telegraph, the telephone, the airplane, the transistor, the computer and a host of other inventions, all of which were patented, and it is immediately realized that an essential corner stone of the American success story is the framework for innovation provided by the patent system. The inventor is rewarded with the grant of the power to exclude and thus is encouraged to come forth with new developments while the public benefits because, through patents, knowledge of inventions is made available to the world.

The value of the patent, however, can be no greater than the commercial value of the invention covered by the patent. It is the invention described and claimed in a patent and the market for the products or processes based on that invention that determined the value of the patent. Thus, the reward to the patent owner is closely related to the commercial importance of the patented invention. An inventor will reap a reward from a patent only if the invention ultimately meets with consumer approval.

The benefits to the public from the patent system are enormous. In addition to stimulating inventions, patents provide the right to exclusivity necessary to attract the capital and effort required to develop inventions into perfected and marketable form. Patents for inventions that pioneer new concepts often provide the foundation for entire new industries. Patents covering minor improvements of a product or process may have significant value if the improvement results in a product or process either strongly preferred over competing products or one that is less expensive to manufacture or use.

Evaluation of an Invention

Evaluation of an invention is rather speculative and somewhat subjective. However, a few tests can be applied that may eliminate some ideas from further serious pursuit. These tests relate to the product that embodies or results from the invention.

Careful study, which is normally performed by a professional Prior Art Search should be given to the required investment for making a new product, or alternatively, to the necessary changes in existing production facilities.

Conducting a Patentability or “Prior Art Search

Perhaps the most accessible and complete library of prior art is housed in the US Patent and Trademark Office. The public is admitted to this library or “search room”. however, it is used primarily by professionals. Patent lawyers not in Washington D.C. invariably have Washington D.C. associates who make various type of patent searches and who obtain other types of information form the Patent and Trademark Office.

At ePatentManager, we can provide this service to you economically and electronically and with the assurance that your inventive concept will remain confidential until which time you provide consent to apply for a patent through the application process.

In general, the cost of a patent search depends on the time it requires. For example, a preliminary novelty search to locate the most accessible prior art for an evaluation of patentability certainly does not justify the time expenditure of a search for questioning the validity of an important high-income patent. We do not believe it is practical to forego a search before filing a patent application. Even if the subject matter is difficult to search, or the product has been scheduled for production, the inventor may already have a keen knowledge of the prior art, but it is still prudent to not forego a preliminary search.

If a search reveals that the invention is most likely not patentable, then the cost of filing an application will be saved. If the search reveals that invention may be patentable, the references located in the search can be used to provide useful background information and indicate the possible scope of potential patent claims. This is provided to the USPTO in the form of an Information Disclosure Statement (IDS).

Advertising and Potential Future Value

The advertising budget that will be required to change public buying habits to accept a new product is important. The potential size of the market also should be considered. Finally, a study should be made to predict the likely profit from the product. In sum, to determine the potential value of a patent, it is necessary to make a comprehensive business evaluation of the resulting product. Although the value of a patent depends primarily on the commercial importance of the invention or discovery, there are other important considerations. The credibility associated with a discovery is a primary factor in attracting help to exploit it. A successful inventor acquires credibility in the same fashion as a successful painter or writer. In the absence of prior success, an inventor must build credibility by proving the product of his invention or discovery. For Example, a certain amount of credibility may result from the completion of an operating model. Usually, more credibility is gained with a production prototype. A favorable sales history for a patented product builds credibility. In other words, any step that concretely bridges the gap between a conceived idea and actual commercial exploitation tends to build credibility.

Timing is another element that affects the value of an invention. The life of utility and plant patents in the United States is normally 20 years from date of filing the application. At the end of that time, patent rights in the invention expire and, usually, the invention can be freely used or worked by anyone. A variety of economic, production, and management factors may come into play to shift the period of patent protection away form the period when an invention is commercially important. For example, the marketing period for a toy is often short-lived and may have passed even before a patent is granted. In those industries change is expensive and time consuming, e.g., the automotive industry, actual production methods may lag current available technology by a period that is much longer than the life of a patent. Thus, the value of a patent can be greatly influenced by the patterns for change that exist for specific products and industries.

Unfortunately, many inventors often grossly underestimate the cost and difficulty of commercializing their inventions and overestimate market size and the chances of purchaser acceptance. Thus, an inventor must be prepared to face and overcome numerous difficulties before his invention returns a profit. The inventor must be willing to work hard to realize his/her reward.

Before proceeding to obtain a patent, it should be well known what a patent is not and, also importantly, what a patent cannot do.

What a Patent is Not

A clearer understanding of what a patent is requires consideration of what a patent is not. A patent is not a trademark or copyright, these being three distinct fields of intellectual property law that are only marginally related.

Not a Trademark

One who owns a trademark (see section in FAQ’s) has the right to exclude others from using a confusingly similar trademark in commerce in such a manner as to confuse the public as to the source or origin of goods (or services) bearing the mark. Whether the goods are patented or not has nothing to do with rights afforded by trademark law.

Not a Copyright

A copyright permits the copyright owner to exclude other from copying the copyrighted material (books, music, plays, statues, motion pictures, television programs, etc.) but copyright protection does not extend to underlying invention which might be described in the copyrighted matter. Thus, a copyright could be used to prevent others from copying a book describing an invention, but copyright could not be used to prevent someone for using the knowledge set forth in the book and then making, using or selling the invention. For example, a copyrighted book may fully describe a lawnmower but no one could be stopped from building a lawnmower as taught by the copyrighted book.

Not a Conveyance to Make Use or Sell ; it is exclusionary only

It is also important to know that a patent confers no right of any kind to make, use, or sell the invention. What is granted is strictly the negative legal right to exclude others. For example, new drugs are patented all the time, but the FDA approval is required before these patented drugs can be marketed. Furthermore, a patent is not self-enforcing. The government will not take any positive action on behalf of the patent owner to enforce the right-he can. For this reason, a patent is sometimes called a mere license to sue. The governments role is case of a suit is the provision of the federal judicial system wherein suits can be brought.

A patent may have no value. Patents simply grant rights to exclude, its value rests entirely upon the utility of the invention and the desire of others to use it or to be in possession of the right to exclude. Someone might want to buy the patent from its owner. A patent is simply a document and not an invention. The invention is that which is described and claimed in the patent. It is also important to note that a patent may describe an additional invention or inventions beyond what is covered by the claims of the patents.

A patent cannot be kept secret or “suppressed.”  An essential aspect of obtaining a patent is that a full and complete disclosure of the invention is made so that others my practice it when the patent expires (absent some superior rights in others). The only secrecy in the patent system is that by law the application for patent is maintained in confidence (not secrecy) by the Patent and Trademark Office until the patent issues. This law is now changing, as all U.S. applications that desire foreign protection will be published within 18 months of the application date according to the American Inventors Protection Act of 1999- fully effective November 29, 2000. Those U.S. applications that only need U.S. patent rights protection will remain confidential. The word patent, however, means open. The day the patent issues, copies are made available to anyone who wants them (for a modest price). Suppression of a patent, in the sense of secrecy, is simply a misconception. The most a patent owner can do in this regard is fail to commercialize the invention himself or refuse to allow others to do it by refusing to grant licenses. Inventions, of course, may be suppressed by keeping them out of use and secret, but patents can neither be kept secret nor suppressed.

The geographic extent of enforcement of a US patent is limited to the fifty states and US territories and possessions. A US Patent cannot be enforced in Canada, Japan, Europe or in any other foreign country, but the importation of products from abroad which infringe a US patent may be stopped and the infringer may be sued here. Also, the United States has ratified several treaties which provide significant advantages for those wishing to seek foreign patent protection, based on a patent application filed in this country. The details and provisions of such treaties are beyond the scope of this FAQ but can be fully explained by the staff at ePatentManager. Securing foreign patent protection can be very expensive and should not be considered seriously unless a market for the patented invention abroad has been or is about to be established by the patent owner. As yet, there is no such thing as a true “international patent”. The World Patent Organization based in Geneva may have you believe otherwise, but enforceability of a WPO patent may be impossible due to the different laws within the different countries where one may pursue litigation.

The grant of a patent does not provide any assurance that the proactive nature of the patented invention will not infringe a patent owned by another. As an example, a patent might be granted for an improvement to a previously patented device, but practice of the improved invention might well infringe claims of the earlier patent on the device.

Similarly when a patent expires, it is not always true that the invention may be freely exploited by anyone. There could very well be another unexpired patent having claims that which would be infringed by one practicing the invention of the expired patent. Overlapping claims frequently exist in a patent portfolio.

Unpatentable subject matter includes: plans for doing business, business forms, perpetual motion machines, promotional advertising schemes, intended results of desired goals, functions (without apparatus), nebulous concepts or ideas, and laws of nature (as distinguished from applications of such laws). To summarize, desired functions are not patentable. It is the thing or the method that can be patented, not the result.

Other general requirements for patentability are that the invention must not be frivolous or contrary to public policy or to the public welfare.

What is patentable

Once it is determined that there is a real, potential market for a product or process, and good business judgement suggests it should be commercialized and patent protection is desirable for the invention, the question to be asked is: Can the product or process be protected from imitators after it is revealed to the public ? In other words, can the invention be patented?

Not every invention is patentable in the United States. To be patented, an invention must fall within the following categories. Patents are granted for 20 years from the filing date on new and useful inventions or discoveries of:

1.      Processes, Machines, Methods of Manufacture

2.      Compositions of matter,

3.      Processes involving new uses of known processes, machines, manufacture or composition of matter

4.      Improvements in any of the above, and

5.      Asexually reproduced plants

6.      To some extent, new methods of doing business

7.      Novel designs that are original and ornamental for an article of manufacture Design patents are granted for 14 years from date of granting.

In general, the Patent and Trademark Office is liberal in applying the limitations of theses invention classes providing that an invention is presented in a logical fashion. For example, over the years patents have been granted on: automobile parking structures, drive-in theaters, slot machines, and a host of computer software applications.

Regardless of the type of invention for which a patent is sought, these are three general requirements for patentability which are critically important. A patentable invention must be;

        New

        Useful

        Unobvious

The new and useful requirements are easily understood.

Obviousness and the Patent Law

The unobvious requirements are very difficult to comprehend. The section of the statute involved (35 U.S.C. 103) states in this way:

A patent may not be obtained, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

To determine the “obviousness”of a discovery, one must first identify the prior art. Locating the most pertinent prior art is not easy in view of widespread technological activity around the world. As a practical matter, one can never be positively certain of having located the most pertinent prior art in view of the abundance of technical knowledge and publications. However, any determination of patentability must be based upon some known prior art. With the known prior art in mind, patentability is determined by asking whether or not the invention would have been obvious to a person of ordinary skill in the field, who is aware of that prior art. To be patentable, an invention must different from the prior art in a way that is not just an obvious change or addition. That is why ePatentManager likes to provide prior art searches for each inventive concept. In considering the question, people may disagree on the abilities expected of the fictitious “person of ordinary skill," or on the content of the prior art, or on the conclusion that the imaginary person would reach. Any such disagreement is likely to result in a disagreement on the patentability of the invention in question. It remains an open question until decided by the court of last resort.

Who May Obtain a Patent ?

Patents are granted only to certain individuals. Only the first and original inventor (or those asserting his rights) can properly obtain a US patent. A person who merely recognized the commercial merits of an existing product, or who discovers it in an ancient document or in a foreign country may not properly receive a patent. The inventor must have invented it. Any entity that tries to patent another’s invention will result in an invalid and ultimately unenforceable patent. A corporation or business organization may not pursue patent protection on a development independent of the inventor. However, it is common practice for employed inventors to assign patent rights to their employers. Many employers make assignment a condition of employment.

The patent law recognizes that an invention may be made by one, two, or a greater number of persons. Accordingly, patent applications frequently name joint inventors. Problems may arise in this situation but the problems can be solved. Specifically, unless there is an agreement or assignment of the patent to one of the inventors or to a third party, each inventor has the right to exploit the invention with no duty to account to the other inventor or inventors for their actions. This is true regardless of the percentage of the patent any one joint inventor may own. One of the joint inventors does not have the right to exclude the others from practicing the patented invention due to the power of the other joint inventor or inventors to use the invention and grant license to others. Clearly then, the rights and obligations of joint inventors should be defined by an agreement or the patent should be assigned to a single entity.

Timing the key to who owns the invention

Occasionally, it two or more independent inventors come up with the same invention at about the same time. So who gets the patent? The Patent and Trademark Office has a mechanism to resolve the issue, which is known as an “interference” proceeding. In such a proceeding the question of who is the first, true, original inventor is determined. Only that inventor (or group of inventors) may obtain the patent. It is not necessarily the inventor who first filed a patent application who obtains the patent. While the first applicant has a distinct advantage in the contest, one may lose out to another inventor who has records that prove an earlier date of invention while remaining diligent in the development effort. Determining the winner of an interference involves resolution of complex factual and legal issues. For present purposes, suffice it to say that witnessed records covering the development of an invention are important, as is diligent activity and an early filing date for the patent application. This brings up the importance of timing in obtaining a patent.

When Should One Apply for a Patent?

Time is important both as it relates to the activities of the inventor and the discoveries of others. Considering the possible history in the discovery of the wheel may help explain some of the time limits for patentability.

Initially, the first inventor of the wheel may have merely gone unrecognized and problems associated with moving large loads on rolling logs (prior art). With only the recognition of the need for a better structure, a patent application would not yet be timely; a patentable invention had not yet been made. A patent application is not proper until a working form of an invention has been fully conceived. At a time when the complete invention is mentally pictured, that is, fully conceived in an operating form, the inventor may properly pursue patent protection.

Continuing with the example of the wheel, quite independent of any effort to obtain patent protection on the wheel, the inventor might have published a description of the invention or may have built a wagon and gone into the moving business. Such activities would raise another question of timing. A patent application must be filed within one year after the invention first is described in any publication, placed on sale, sold, or used publicly. The general rule is based on the philosophy that inventors abandon all patent rights if they do not file a proper patent application within one year from discovery. Typical of the law, there are exceptions to the rule, as in the case of legitimate experimental use to perfect or develop the invention.

As another timing consideration, any publication or public use of an invention that takes place before the filing of an application in the United Stated may block the inventor from obtaining a valid patent in some foreign countries, most of which do not provide the one-year period of grace we have in the United States.

An inventor may keep the invention secret for a long time and still obtain a patent. However, a long delay in applying for a patent may result in the loss of all patent rights, which may go to a second independent inventor who acts more promptly.

Generally it is wise to keep careful records of the invention and its development, which should be signed by a witness. Always file an application for a patent at the earliest practical time, preferably before any public description, or commercial development or public use of the invention.

How to Obtain a Patent

The steps involved in obtaining a patent include:

        Conducting a patentability search on the invention

        Preparing a disclosure of the invention

        Preparing and filing a formal patent application in the US Patent and Trademark Office

        Prosecuting the application in the office

        Finally, hopefully issuing the patent

Inventors may obtain a patent without the assistance of a patent lawyer or agent if they wish. However, ordinarily this is an unwise course of action. Patent law and procedure are complex and valuable legal rights can easily be lost if the patent application and prosecution of that application are not handled carefully by one skilled in such matters.

Patent lawyers and patent agents who are registered to practice before the Patent and Trademark Office may prepare and prosecute patent applications. Patent agents are not lawyers and cannot provide legal advice and assistance beyond preparing and prosecuting patent applications. In order to be registered, patent lawyers and agents must take an pass an examination given by the Office. A roster of patent lawyers and agents registered to practice before the US Patent and Trademark Office, listing the individuals alphabetically, is available at uspto.gov

The major cost of obtaining a patent is the lawyer/agent’s charges. Ordinarily this will be based upon the amount of the lawyer or agent's time involved in preparing and in prosecuting the application. Of course different patent lawyers/agents may charge different fees and some lawyers or agents may consent to preparing a patent application for a flat fee after they sufficiently understand what the invention is and basically what the preparation of the application will entail. In any case, an inventor should not be hesitant about inquiring of the lawyer/agent what his estimate might be as to the total fees of obtaining the patent if the patent is prosecuted through the Patent and Trademark Office in a fairly routine way. He will also advise the inventor of problems that could necessitate significantly greater costs, such as an appeal or an interference.

Preparation of a Disclosure of the Invention

Lawyers and agents charge for their time and patent lawyers/agents are no exception. Therefore, an inventor can save a great deal of time and money by making the lawyer/agent's job easier. A few hours spent by the inventor at the beginning may result in hundreds of dollars of savings and a better application in the end. At ePatentManager we are eager to assist you in these savings. By maintaining low overhead and a virtual presence on the web, the savings are directly passed on to our clients. We have designed the site so that it is relatively easy for the typical inventor to organize materials, and the inventor can help themselves by preparing a written description, drawings, and perhaps a model, if practical. At a minimum, the disclosure should include a description of known relevant prior art inventions and a detailed description of the best mode of practicing the invention. If there are some likely alternative embodiments of the invention, those should be described also. The inventor does not have to detail each and every remotely possibly embodiment, but describing alternatives or modifications helps reduce time and allows the ePatentManager staff draft claims adequate to provide good protection for the invention. The disclosure should be clear.

A good disclosure is not necessarily long. If the inventor isn’t sure whether something should be included in the disclosure, it should be put it in and ePatentManager will decide if it should be made part of the patent application. If the invention has relevant prior art documents, copies of these should be provided along with a description of their possible relevance to the new invention. Drawings prepared by the inventor should be clear and sufficiently detailed. It is good practice for the inventor to number the various parts of the invention and to key the number in with the written disclosure. If alternative embodiments of the invention are described in the disclosure, then drawings should be submitted illustrating them.

If a model of the invention exists, it should be shown to our staff. If it is not practical, photographs of the model may be used. Above all, conceal nothing from whomever will prosecute the patent application. Lack of full disclosure will only cause loss of the validity of the patent and/or an unenforceable patent at your expense.

Preparation and Filing of the Patent Application

A patent application is a document filed in the Patent and Trademark Office for the purpose of obtaining a patent. Because there are significant limitations on making changes in the application after it is filed in the Patent and Trademark Office, a strict rule against “new matter”, it should be prepared with care. Both the inventor and attorney/agent have legal obligations to insure that the various parts of the application are correct and, to the best of their knowledge, are not misleading.

It is not necessary to construct a working model before filing a patent application. However, the effective preparation of that document is a demanding project requiring full knowledge of a completely conceived invention. The patent application must disclose the best mode contemplated by the inventor for practicing the invention. Also, there is a duty to disclose all knowledge of pertinent prior art. That is, as part of the application, the inventors must sign an oath or declaration stating they have revealed all known pertinent information. The patent application provides the foundation for defining the proper scope of patent protection that is to be granted.

The main components of an application are;

        a background and prior art discussion

        drawings (if necessary) to aid in understanding the description

        a detailed description of the invention

        and the claims.

In the background and prior art discussion, problems or shortcomings that have been experienced in practices or products known in the prior art are described.

Many patent applications include drawings as part of the invention description, usually to illustrate the best embodiment of the invention. Patent applications on chemical compositions are a noted exception to that practice. The drawings of a patent application must conform to established standards and are made by professional draftsmen. The style and technique for the drawings are quite different from the formats used in industry. As a consequence, specialists who work under the direction of ePatentManager and are familiar with the requirements of the Office make patent drawings.

The written description of the invention, usually called the “specification" must include adequate technical information, taken with the drawings, to permit one having ordinary skill in the art to carry out the invention. Details about every part of the invention may not be required as long as such details are well known or consist of standard, commercially available parts.

The written description should include alternatives and equivalent structures which will also work in the invention. While claims are placed last in the patent application, their importance is first, since perfection in the rest of the application will be of little value if the claims do not properly cover the invention. This is not to say that there may not be remedies for imperfect claims under the right circumstances, but it is important that properly written claims of appropriate scope be present in the application. Most of the patent prosecution is devoted to having the claims written in acceptable form.

Usually, the most effective patent application results from a joint effort between an inventor and the inventor’s choice of agent/lawyer. Of course, there are exceptions and it is possible for a person to act on his own behalf. When an application is prepared by ePatentManager working with the inventor, there should be complete and effective communication. Specifically, it is important that ePatentManager be given all the relevant information for the job.

The preparation of a proper and useful patent application can be compared to making a desirable cake. Considerable assistance can be given to a cook by premeasuring the ingredients, laying out the tools, and preparing the oven; but usually it is best for the cook to mix the ingredients. Somewhat similarly, in the preparation of a patent application, the inventor should provide the information but allow ePatentManager to compose and draft the complex document. Drawings, photographs, written material and oral discussions all may be helpful to educate our team, depending on individual circumstances. Patent applications on complex subject matter normally should include at least one meeting between the inventor(s) and the ePatentManager personnel.

After a draft of the application is prepared, the inventor is required to review it carefully to determine if there are corrections or changes to be made before it is placed in its final form for execution and filing in the Patent and Trademark Office. The formal papers (petition, oath or declaration, power of attorney) are prepared for the inventor’s signature, or execution. The complete application signed by the inventor is then sent or delivered to the Patent and Trademark Office along with the appropriate filing fee. As of November 2004 it may be possible to use the ePAVE system and file electronically. Once the application is on file, the invention, if marketed, may be marked with the notice “patent pending”, although the right to prohibit use of the invention by others does not mature until the patent is granted. Use of that notice before filing is illegal.

A patent application is not to be confused with the mere filing of disclosure documents in the Patent and Trademark Office, a practice instituted several years ago which has led to some confusion. Under that practice, the Office merely acts as a record keeping agency with respect to these documents, taking no further action. Such documents will be discussed later.

Prosecution of the Patent Application

Patent applications filed in the Patent and Trademark Office are given serial numbers in chronological sequence. The filing date is also part of the identification for an application. That date may become very important if the application becomes involved in an interference or future litigation.

Within the Patent and Trademark Office, patent applications are assigned to examiners with specialized technical expertise. The examination of applications normally occurs in the order in which they are received by the examiner. Every effort is made by the Office to attain a uniform and fair treatment of patent applications; however, communications with the Office must meet certain standards and formalities.

In a typical case, the patent examiner first reviews the patent application for compliance with formal requirements. Then they consider the invention as claimed. With an understanding of the claimed invention, they research earlier patents and publications (the prior art) to determine whether the claims of the patent application define subject matter that is patentable over the prior art. Traditionally, examiners are conservative, if not skeptical, in recognizing patentable subject matter. After determining their position, the examiners prepare a report of Examiner’s Action, stating their position for communication regarding the patent application. Usually, few if any claims are allowed in the first office action. If the applicant has a patent agent/lawyer, the Office Action is mailed directly, and only, to the agent/lawyer.   It is the duty of the agent/attorney to then advise the inventor of the Action and request the inventor’s assistance and instructions for responding to the examiner’s position. For example, the inventor may be asked to review the prior art cited by the examiners and express resulting opinions. The applicant is given a period of time for responding to the office action. Normally 90 days, but less time could be allowed if it is a second or later action. The response might take the form of an argument seeking to change the examiner’s position, with or without an amendment modifying the claims of the patent application.

After receiving the response to the Office Action, the examiner again considers the case and reviews his position. Although the matter may not be concluded at that stage, there are usually no more than two or three actions and responses before the question of patentability of the claims is resolved. Of course, the examiner may determine that the application simply is not directed to a patentable invention. Alternatively, the examiner may recognize the existence of a patentable invention and agree with the form and scope of the claims. A greater possibility is that the examiner concedes the invention to be patentable but disagrees with the scope of the claims which should be granted. Failing an agreement on any aspect, an appeal can be pursued. However, frequently an agreement is reached whereupon the patent application is ready to mature into, or “issue” as a patent. A “notice of allowance” results.

Issuance of the Patent

After the “Notice of Allowance” is issued, a “final fee” must be paid. About three or four months after payment of the final fee, the patent issues. From filing to issue, the average time a patent application is pending is more than eighteen months.

Due to a long standing tradition, patents are always issued on a Tuesday. Also on each Tuesday of each week, the Office publishes the Official Gazette abstracting all of the patents issued on that day. Patents are issued in numerical order.

The original of the patent will be sent to the agent/lawyer who then forwards it to the inventor(s) or assignee(s). Additional copies of the patent may be obtained from the Office for a fee, but the original patent is an important document which should be kept with other, similarly important papers.

The issuance of a US patent puts the inventor in the company of Edison, Ford, and the Wright Brothers, and other inventors who have held US patents for their inventions and is an occasion that rightfully brings respect and admiration to the inventor(s). At the same time, public benefits by having the inventor’s disclosure of his new and useful discovery results.

Exploitation of Patents What Do You do Next ?

The need for creativity does not end with the issuance of a patent. Whether the inventor seeks to license the development or directly market the resulting product, success usually requires an innovative and intense effort. The process is likely to be difficult and chances for success are statistically poor. This is true for the established businessman as well as the unknown independent inventor. The mere availability of the basis for a new product, even an exciting one, may not stimulate much interest from serious investors or purchasers. Develop credibility, use imagination, and make effort. Thousands have been successful, but rarely without initial setbacks and disappointments. At ePatentManager, we have the experience and skills to advise you how to proceed. In some cases we may be able to provide you with the necessary connections to acquire working capital for your invention.

Because of the difficulties in marketing new inventions, independent inventors have sometimes turned to promoters for help. These promoters have variously identified themselves, for example, as invention developers, idea brokers, and technology or marketing consultants. Unfortunately, many invention promoters offering services to independent inventors have preyed on the unwary, making promises which they are incapable of keeping, then charging exorbitant fees. Financial loss and heartbreak have taught many inventors, dealing with the unscrupulous promoters, the lesson of caution.

Licensing Policy: Our policy regarding licensing is that as members of LES (Licensing Executive Society) we can provide assistance to firms and inventors but have no interest in equity positions.

Patent licensing offers a variety of possibilities. A license can be limited to a single company (exclusive) or nonexclusive licenses can be granted to several companies. Other aspects of licensing include the responsibility for enforcement, conditions of termination, foreign rights, related trade secrets, know-how, and the very important royalty payment. Licenses are common which provide for either:

1.      a single lump sum royalty payment;

2.      a royalty of a specified amount for each product produced under the license; or

3.      a royalty in the form of a percentage of the receipts from the sale of the licensed subject matter

Although royalty percentage rates are the most common form of license payments, the rates vary widely from fractional percentages to double-digit percent figures, depending on the nature of the industry, production costs, the significance of the invention, and so on.

There are prohibitions on licensing, violation of which can amount to patent misuse or antitrust violations. For example, a licensor should not fix prices, require the purchase of unpatented products, regulate the use of the patented product, or require royalty payments beyond the life of the patent. Again, the law in this area is complex so the objective here is merely to indicate the possibility of danger. Similarly, a patent holder should be aware that the details of a license can have profound consequences on the tax aspects of royalty payments. Patents may also be sold outright.

Enforcement of Patentable Rights

Many conflicts involving patents are settled by negotiation. Failing the settlement of a conflict, suit may be brought in a federal district court located where the infringer resides or where infringement occurs and the infringer has a regular and established place of business. The objectives are usually damages (as from loss of sales or royalties) and an injunction against further infringement.

It is also possible for an alleged infringer to initiate legal action to attack your patent. This usually happens after you have charged infringement of your patent. Usually in patent litigation, the rights granted to the patentee are reviewed and the infringement of such rights determined.

The ultimate infringement suit is a very involved and expensive proceeding that may take several years. Pretrial procedures are liberal in allowing the parties to obtain very detailed information from each other. Perhaps as a result, high percentages of such cases are settled and recent experiments with novel settlement procedures have been encouraging.

Alternatives to Patent Protection

 Trade Secrets

Some inventions can be commercially exploited while being kept secret. For example, a product may not reveal a chemical process that is used to make the product. Also, in some instances, agreements for secrecy have been used successfully, as in the protection of computer software. However, outside these possibilities, trade secrets (like all secrets) are difficult to keep. In general, one who learns a trade secret without wrongdoing (as by his own discovery or analysis) is free to use the knowledge.

The Patent and Trademark Office will accept and preserve for a limited time an informal description of an invention known as a “Disclosure Document, which was referred to previously. Such a document can be prepared and filed by an inventor, but it does not provide any form of legal protection. This document is simply to provide evidence of the date of conception of the invention disclosed. The Disclosure Document will be destroyed after two years unless it is referred to in a separate letter in a related patent application within two years.

Trademark and copyright protection simply do not cover inventions, as is explained under the appropriate FAQ’s section..

A patent agent is not a lawyer and cannot file trademark applications. Therefore this information provided for your convenience and it may be necessary to hire an attorney to perform this service.

 

WHAT IS A TRADEMARK ?

Introduction:

Two hundred years ago, trademark protection was known as the “poorer cousin”  with respect to the patent and copyright system. Protection of an inventor’s discovery or an author’s writing was the subject of a constitutional mandate, but trademark protection was left to common law. According to a 1925 article reviewed by Kitch and Perlman there was reportedly little public interest in trademark protection.1   Today, trademarks may be protected under state and federal statutes, as well as by common law. There are many marks for consumer products including foods and beverages, which are estimated to be worth between tens and hundreds of millions of dollars. Public interest in trademark protection is now very high.

The Nature of a Trademark

What a Trademark is;

The Trademark Act of 1946 is often referred to as the Lanham Act and defines a trademark as follows:

The term “trademark”includes any word, name, symbol, or device of any combination thereof-

(1)       used by a person, or

(2)       which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.2

What a Trademark protects

A trademark can include several functions. The primary function is identifying the origin of the

goods to which the trademark is affixed. Thus the statutory phrase “to identify and distinguish.”  It is not required that the purchaser know the identity of the source of goods as long they recognize that all goods bearing a particular trademark originate from a common, albeit anonymous, source. For example, while most people probably do not know that 9 Lives Plus cat food is made by Star-Kist Foods, Inc., it is likely they believe that all cat food labeled Nine Lives Plus comes from a single source.

Trademarks also provide quality assurance. For example, when a consumer dines at a particular franchised fast-food restaurant, he or she expects that the nature and quality of the food served will be the same as that served at other restaurants bearing that name. A trademark includes the supplier to maintain a content level of quality.

What a Trademark does not protect

The term “trade name”, according to modern usage, applies to names used to identify a business, such as a legal corporate name or a fictitious trade style (or “dba”).3Trademarks are associated with goods while trade names identify businesses.

Trademarks Must Be Distinctive

A trademark must be distinctive, or recognizable as a mark, to serve its identification function. The degree of distinctiveness has important implications. Marks are typically classified as (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic.4 An arbitrary or fanciful mark bears no relationship to the associated goods. It follows, therefore, that such a mark is inherently distinctive and readily distinguishes one merchant’s goods from those of another. A fanciful mark is typically composed of coined words, while an “arbitrary” mark uses words that are in common use but bear no relationship to the associated goods. Fanciful marks include CLOROX,5 KODAK,6 and POLAROID.7 Arbitrary marks include IVORY8 soap and NOVA9 as applied to an educational television series.

           A “suggestive mark suggests some quality or character of the associated goods, but not so explicitly that no imagination is needed to determine the nature of the goods. Suggestive marks include CONTACT10 for self-adhesive shelf paper and UNCOLA11 for a non-cola soft drink. Suggestive marks, like arbitrary and fanciful marks, are inherently distinctive and readily registrable as trademarks.

           In contrast, a “merely descriptive mark, which identifies a characteristic, quality, purpose, or some other aspect of a product or service, is not inherently distinctive. A descriptive mark is not registrable unless it can be shown that consumers have learned to associate it with a single source. This learned association is called “acquired distinctiveness” or “secondary meaning.”  Marks found to be descriptive include CHAPSTICK12 lip balm, RAISIN BRAN13 breakfast cereal, and VISION CENTER14 for a business offering optical goods and services. The statute provides that a showing of exclusive and continuous use of the mark in commerce by the applicant for five years is prima facie evidence of distinctiveness.15

           A generic term is a common group or class name, such as “beer” “shoes” or “automobile” to which a particular product belongs, e.g., MICHELOB, JOHNSTON & MURPHY, or PORSCHE CARERRA. A generic term can never be a trademark. Examples of terms held to be generic include “shredded wheat”16 for cereal and “super glue”17 for a rapid-setting permanent adhesive.

           A term, which is generic for one product, can be arbitrary when applied to another. For example, the word “trumpet” is generic for a type of musical instrument but would be arbitrary if used to designate an automobile. Furthermore, a term that is not initially generic may become so, if consumers come to believe that a mark is the generic name for a type of product. Marks that have become generic include “aspirin”18, “cellophane”19, and “escalator”.20

Appropriate Subject Matter For Trademarks

Virtually anything capable of indicating the source may serve as a trademark. A few examples are listed below;

Letters and numbers may be used as marks. For example, ABC, CBS, and NBC are readily recognizable as the service marks of major radio and television broadcasting networks. Alphanumeric combinations such as V-8 vegetable juice and 7-ELEVEN convenience stores are also familiar marks.

Slogans can function as marks. For example, INTEL INSIDE indicates the source of microprocessor chips used in personal computers. Similarly, GM used the slogan SO NEW FROM THE INSIDE OUT, EVERYTHING ELSE IS HISTORY as a trademark for its 1994 CHEVY S-Series trucks.

A color or combination of colors may function as an indicator of source and be registered as a trademark.21 Musical notes, and other sounds, have been federally registered. The combination of notes “G, E and C” used by the National Broadcasting Company, were originally registered by the General Electric Company.22 A federal registration has even been granted for a particular fragrance, reminiscent of plumeria, used to identify sewing thread.23

Appropriate Subject Matter For Tradedress

A product’s “trade dress, which includes product features such as shape, texture, size, color, and packaging, may also be protected if it is “nonfunctional.”  A feature is functional if it is necessary for a product's utility, or affects its cost and/or method of manufacture.24 However, if other physical arrangements can perform the same functions without sacrificing a functional advantage, the design may be considered non-functional.

The Benefits of Federal Registration

The law protects trademarks based on bona fide commercial use in commerce subject to

Congressional regulation.25 Registration does not create a trademark. Nonetheless, several very significant advantages are available to a trademark owner who registers a mark under law.

How to Use a Trademark

A trademark or service mark can be identified by placing the designation TM or SM adjacent to it.

These designations do not indicate the mark is federally registered. Rather, they indicate that the trademark rights are claimed. Alternately, an asterisk may be used instead of the TM designation, with an explanation that the mark is a trademark of a particular entity.

The statutory notice indicates that a mark is federally registered.26 Other forms of statutory notice include the words “Registered in U.S. Patent Office” or “Reg. U.S. Pat. Off.”  Using the statutory notice constitutes constructive notice of registration.

When it appears in print or other textual media, the trademark should be distinguished from the surrounding text by use of a different type size or style (e.g., all capitals) and the appropriate notice (TM) . The trademark should be used in conjunction with a generic term or descriptive work for the goods or services to emphasize the “brand” aspect of the mark. The mark should never be used as a noun. In fact, the word “brand”is often used with the mark to emphasize that the mark is a trademark, not the common name of a product. An example of this usage is “Post-itTM Notes” for adhesive-backed paper pads sold by the 3M Company.

Trademarks as Intellectual Property

A party has an interest in the goodwill of its business, and a trademark symbolizes that goodwill. As a property right, a trademark exists only in connection with its associated product. A trademark cannot validly be transferred apart from the goodwill it symbolizes. A valid trademark assignment involves the transfer of the goodwill of a business. If the product associated with the trademark requires proprietary knowledge or equipment, otherwise unavailable to the assignee, those assets must be transferred. If the assignee can produce the product without obtaining knowledge of the equipment from the assignor, there is no need for an asset transfer. The assigned trademark must be used on a product that is substantially similar to the product with which the trademark was formerly used by the assignor.

Licensing

Licensing Policy: Our policy regarding licensing is that as members of LES (Licensing Executive Society) we can provide assistance to firms and inventors but have no interest in equity positions.

A valid licensing arrangement requires that the licensor maintain control over the nature and quality of the goods sold using the trademark. The quality assurance function protects the buying public. If a licensor fails to maintain the quality of the goods, loss of trademark rights can result. Provisions should include, at a minimum, acknowledgement of the licensor’s right to control the nature and quality of the goods and the right to inspect the licensee’s operation, as well as the licensee’s duty to provide samples of the goods bearing the mark upon the licensor’s request.

Trademark Infringement

        Infringement

Using a mark that is likely to confuse the relevant public into thinking that the goods associated with that mark originate from the same source as those of another person’s mark, constitutes infringement. While an infringer’s wrongful intent may be evidence of infringement and may also affect the quantum of damages, wrongful intent is not required for a finding of infringement. The interest in protecting the public from confusion as to source is sufficient to trigger liability independent of an infringer’s intent to deceive.

        Likelihood of Confusion

In a trademark infringement action, the plaintiff must prove by a preponderance of the evidence that defendant’s use of the alleged infringer’s mark will create a likelihood of confusion, mistake, or deception in the minds of the relevant public.

A number of factors are analyzed in determining whether there is a likelihood of confusion, including the strength of the plaintiff’s mark, the similarity between the plaintiff’s and defendant’s product, the degree to which the plaintiff’s and defendant’s product or services are related, the likelihood that the plaintiff will expand its business into the field of the defendant, the defendant’s good faith in adopting its mark, evidence of actual confusion, the sophistication of the buyers, and the quality of the defendant’s product. In any case, some factors will weigh more heavily than others. Proof of bad faith can be decisive since one who has set out to deceive may be presumed to have succeeded, no matter how inept the attempt.

        Counterfeiting

The Lanham Act distinguishes between a mark, which is a “colorable imitation of a registered mark. The former is defined as a mark which “so resembles a registered mark as to be likely to cause confusion, mistake or to deceive.27 A counterfeit mark, by contrast, is a “spurious mark which is identical with, or substantially indistinguishable from a registered mark. 28

Goods associated with a counterfeit mark are typically imitations of a well-known article associated with the registered mark. The goods associated with the counterfeit mark are usually priced significantly lower and are of lower quality than the genuine article. Under the Lanham Act, damages for infringement are ordinarily trebled if a party intentionally counterfeits a registered mark. Under the Customs Act, any articles imported into the U.S. bearing a counterfeit mark are subject to seizure and forfeiture.29-30 Under the Trademark Counterfeiting Act of 1984, a person intentionally trafficking in goods or services who knowingly used a counterfeit mark in connection with those goods or services may be fined $250,000 and imprisoned for five years. An organization may be fined up to $1,000,000. For repeat offenders, the sanctions are even greater.

List of References

1.            Kitch & Perlman, Legal Regul, of the Comp. Process, 3rd (1986) The Foundation Press, Inc. See also Schechter, The Historical Foundations of the Law Relating to Trademarks (Col. Univ. Press 1925) or historical underpinnings.

2.            15 U.S.C sec. 1127

3.            15 U.S.C sec. 1127

4.           The phrase “generic mark” while widely used, is an oxymoron; a generic term is really not a mark at all.

5.                  Clorox Chem Co. v. Chlorit Mfg. Corp., 25 F. Supp. 702 (D.C.N.Y. 1938).

6.                  Eastman Kodak Co. V. Radkow, 739 F. Supp. 116 (W.D.N.Y. 1989).

7.                  Polariod Corp. v. Polaroid, Inc., 319 F.2d 830 (7th. Cir. 1963).

8.                  Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2nd 4, 9 n.6 (2nd Cir. 1976).

9.                  WGHB Educ. Foundation, Inc. v. Penthouse International, Ltd., 453 F. Supp. 1347, (S.D.N.Y. 1978) (aff’d without op. 598 F.2d 610 (2nd Cir. 1979).

10.              Stix Prod. Inc. v. United Merchants & Mrs., Inc., 295 F. Supp. 497 (S.D.N.Y. 1968).

11.              Coca Cola C. v. Seven-Up Co., 497 F.2d 1351 (C.C.P.A 1974)..

12.              Morton Mfg. Corp. v. Delland Corp., 166 F.2d 191 (1948).

13.              Skinner Mfg. Co. v. Kellog Sales Co., 143 F.2d 895 (8th Cir. 1944).

14.              Vision Center v. Optics, Inc., 596 F.2nd 111 (5th Cir. 1980).

15.              U.S.C. sec. 1052(f).

16.              Kellogg Co. v. Nat’l Biscuit Co. 305 U.S. 111 (1938).

17.              Locite Corp. v. Nat’l Starch & Chem. Corp., 516 F.Supp. 190 (S.D.N.Y. 1981).

18.              Bayer Co. v. United Drug Co., 272 F. 505 (D.N.Y. 1921).

19.              Dupont Cellophane Co. v. Waxed Prod. Co., 85 F.2d 75 (2d Cir. 1936).

20.              Haughton Elev. Co. v. Seeberger, 85 U.S.P.Q. 80 (Comm’r Pats. 1950).

21.              Qualitex Co. v. Jacobson Products Co., 1995 WL 128239, 1995 U.S. LEXIS 2408, ___S. Ct. ___ .

(Mar. 28, 1995).

22.              In Re General Electric Co., 199 U.S.P.Q. 560 (T.T.A.B. 1978).

23.              In Re Clarke, 17 U.S.P.Q. 2d 1238 (T.T.A.B. 1990).

24.              Inwood Labs., Inc. v. Ives Labs, Inc., 456 U.S. 884n.10 (1982).

25.              15 U.S.C. sec. 1051.

26.              15 U.S.C. sec. 1111.

27.              15 U.S.C. sec. 1127.

28.              15 U.S.C. sec. 1116(d).

29.              19 C.F.R. sec. 133.23(a)(b). Forfeiture occurs in the absence of written consent of the trademark owner.

30.      18 U.S.C. sec. 2320(a).

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