Certain types of Intellectual Property rights can be lost if appropriate steps are not taken within prescribed time periods.

What is IP protection?

The term “Intellectual Property” refers to something that is produced by the mind and which is legally protectable. Intellectual Property typically includes inventions, works of authorship, and a wide variety of commercial work product such as trademarks and marketing materials. Intellectual Property is often intangible, but often can be embodied or reproduced in a tangible form that may be commercially exploited.

Most industrialized countries have legal systems that allow you to limit the use by others of your Intellectual Property. These legal systems are designed to encourage the creation of new Intellectual Property and related commercial investment. Intellectual Property laws are typically complex and unique to each country. Certain types of Intellectual Property rights can be lost if appropriate steps are not taken within prescribed time periods.

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Why do I need IP?

Intellectual Property allows you to protect your investments in product design and development, manufacturing, marketing, sales, and distribution. If you secure your Intellectual Property, you can prevent your competitors from copying innovative features of your products, your manufacturing systems and methods, and your marketing, sales, and distribution strategies.

Intellectual Property thus creates value in your company by increasing market share and preserving your competitive edge. Intellectual Property also gives you proprietary rights that can be licensed to create additional sources of revenue.

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Allow you to prevent others from making, using, or selling a product or process embodying the claimed technology.

Allow you the exclusive use of words, slogans, logos, colors, or other symbols capable of distinguishing your products and/or services from similar products and/or services of others.

Prevent others from copying, altering, or making derivatives of original works of authorship without permission; examples of copyrightable works include commercial graphics, instruction manuals, and advertising materials.

Allow you to restrict the distribution and use of confidential information if the information is capable of being maintained in confidence and steps are in fact taken to prevent unauthorized disclosure of the information.

PATENTS

Utility patents cover the functional aspects of devices, systems, formulations, methods, and the like. A utility patent can be obtained for almost any novel, non-obvious idea that provides a competitive advantage in the marketplace. Design patents cover the ornamental aspects of utilitarian devices. Plant patents cover new plant varieties.

A threshold question is whether patent protection is even available. The Schacht Law Office can have a search conducted and provide you with an opinion on the patentability of your invention. While not a guarantee that the invention will be patentable, such a patentability opinion gives you valuable information to consider when deciding whether to pursue patent protection.

Other factors to consider when deciding whether to file a patent application are the potential value of the invention in the marketplace and the amount to be invested in developing, marketing, and distributing a product embodying the patented technology.

Patent protection is obtained by filing an application with the United States Patent and Trademark Office. The Patent Office examines the application and grants a patent if the technology claimed therein meets the legal requirements for patentability.

An invention is patentable unless it was not “anticipated by” or “obvious in view of” the prior art at the time it was conceived. An invention is anticipated by the prior art if each and every element of the invention is found in a single prior art reference. An invention is obvious in view of the prior art if, at the time of conception, one of ordinary skill in the art would have concluded that the invention was simply an obvious modification to a prior art reference or an obvious combination of two or more prior art references.

A patent application contains a written description of the invention, a set of claims, and often drawings depicting the invention. The purpose of the written description and drawings is to disclose the invention in a manner that enables one of ordinary skill in the relevant art to make and use the invention. The purpose of the claims is to notify others of the scope of the patented technology.

Yes. The United States requires you to file a patent application within one year of your first sale, offer for sale, public use, or publication of your invention. If you do not file a patent application within the one-year grace period, you lose your right to obtain a U.S. patent, and your invention enters the public domain.

Most foreign countries do not provide a similar grace period; a patent application must be filed prior to any public disclosure of the invention.

Most countries have their own patent laws and maintain their own patent office. Many countries also belong to one or more multi-national organizations with a single office for examining patent applications for a number of countries. The European Patent Office has been established to examine patent applications on behalf of the member nations of the European Union.

A separate patent application must be filed in each jurisdiction where patent protection is sought. Most jurisdictions have entered into bilateral treaties that allow an application initially filed in one jurisdiction to be filed in another jurisdiction within one year without loss of priority. For example, an applicant filing an application in the United States on June 15 of one year has until June 15 of the following year to file a corresponding patent application in the European Patent Office. In this case, the priority date of the corresponding European application will be the filing date of the U.S. application.

The Schacht Law Office maintains a network of foreign associates through which we file patent applications in foreign countries on behalf of our clients.

“PCT” stands for Patent Cooperation Treaty. The Patent Cooperation Treaty is a multi-lateral treaty that establishes a system for receiving and examining patent applications. PCT applications are examined in two stages: in an International Stage, a PCT receiving office issues a non-binding advisory opinion on patentability; and in a National Stage, one or more national offices make the final determination of patentability.

The primary use of the PCT process is to delay the expense associated with the filing of patent applications in a number of national offices for approximately eighteen months.

Generally speaking, utility patents expire 20 years from the filing or priority date of the application. Design patents expire 14 years from the issue date of the patent. Plant patents expire 17 years from the issue date. Utility patents can expire earlier if maintenance fees are not timely paid. Exceptions to these general rules exist, however, and a patent attorney should be consulted to determine the exact expiration date of a particular patent.

TRADEMARKS

A trademark is anything that is capable of identifying the source of goods or services. Trademarks are typically words or phrases but may also be formed by or include other features such as graphic elements, colors, a sequence of musical notes, and architectural features.

Consumers make purchasing decisions based on the reputation of the supplier of the goods or services. A trademark allows consumers to purchase goods and services from a desired or trusted supplier. Trademarks also allow suppliers to protect investments in product innovation, quality control, technical support, and advertising that establish good will with customers.

Trademark protection is automatically created by being the first to use a trademark in commerce in association with the sale of a particular product or service. Without federal registration, trademarks are protected by state law under what is referred to as “common law” trademark rights. Common law trademark rights are limited to the geographical area in which a trademark has actually been used.  Trademark protection can be enhanced by registering the trademark with the United States Patent and Trademark Office.

Federal registration establishes constructive use of the trademark throughout the entire United States. A trademark that has been federally registered for five years also can become incontestable. In addition, registered trademarks are published in a form that can provide notice of your trademark rights to others who are considering adopting a similar trademark. Federal registration can thus help to avoid trademark disputes that might otherwise arise when another party unintentionally adopts a trademark that is confusingly similar to your trademark.

AA trademark owner seeking federal registration files a trademark application identifying the mark and the goods or services in association with which the mark is used. An Examining Attorney at the Patent and Trademark Office examines the application to determine if the mark satisfies the basic requirements of a trademark. In particular, the Patent and Trademark Office will not register a mark if the mark is generic, descriptive of the goods or services, or geographically misdescriptive, or if the registration of the mark would otherwise be against public policy.

The Examining Attorney also searches the office records for previously registered trademarks that are likely to be confused with the applicant’s mark. The Patent and Trademark Office will refuse registration of a mark if the Examining Attorney determines that the mark is likely be confused in the marketplace with a previously registered mark.

The United States has adopted a trademark classification system that contains forty-two classes or categories of products and services; each of these classes or categories is referred to as an International Class. All products in an application are placed into one of these classes. An application containing more than one product may contain products in more than one International Class. In the United States, the classification of the products in a trademark application is significant because the Patent and Trademark Office charges a separate filing fee for each International Class in the application.

An intent-to-use trademark application is filed based on the applicant’s bona fide intent to use a mark in commerce in the future. An intent-to-use trademark application is the only way a trademark owner can establish rights to a mark without use of the mark. The rights obtained by an intent-to-use trademark application are temporary and must be perfected by subsequently using the mark and filing a Statement of Use with the Patent and Trademark Office.

Trademark rights do not expire and can be maintained in perpetuity.  However, trademark rights are enforceable only if the trademark owner maintains continuous and uninterrupted use of the mark in commerce with the associated goods.

The process for obtaining registration of trademarks in foreign countries is similar to that of obtaining registration in the United States. An application containing the mark and the goods

The Schacht Law Office maintains a network of foreign associates through which we file trademark applications in foreign countries on behalf of our clients.

COPYRIGHTS

The owner of the copyrighted work is the author of the work except if the work is a work made for hire. A work is work made for hire only under two situations. In the first situation, the owner is the employer if the work was created by an employee within the scope of his or her employment.

In the second situation, ownership is transferred from the author to another if the parties agree in a written instrument that the work shall be considered a work made for hire. The requirement of a written instrument is strictly enforced. An attorney should also be consulted if a work is intended to be a work for hire and no employer/employee relationship exists.

TRADE SECRETS

Trade secret protection applies to almost any confidential information if the information is capable of being maintained in confidence and if reasonable steps are taken to keep the information confidential. Trade secret protection is commonly applied to a wide variety of commercial information such as customer lists, vendor lists, manufacturing know-how, product formulations, and software source code.

Trade secret protection is maintained by taking reasonable steps to keep confidential information in confidence. What constitutes reasonable steps depends upon the nature of the information. At a minimum, employees with access to confidential information should be required to sign a non-disclosure agreement. Employee ID cards, computer passwords, and security systems may be appropriate to restrict access by unauthorized persons to locations where trade secrets are developed and kept.

Trade secret protection lasts as long as the confidential information is kept secret.

Questions? Please contact our office. We’re happy to help. CONTACT