PATENTS, PROVISIONAL APPLICATIONS,
TRADEMARKS & COPYRIGHTS
Patents
Patents are essential legal devices for the protection of ideas. Such ideas include both simple and complex breakthroughs in technology and often become the foundation of a profitable business. Patents are granted by a government to inventor(s) who may wish to start their own business, license or otherwise protect their invention. Large corporations often obtain patents to maintain their competitive edge in industry by protecting their exclusive use of innovative ideas or as a defensive mechanism to prevent others from making, using or selling the patented invention for any reason. Many companies obtain patent to license technologies ancillary to their core business as an additional source of revenue. Although U.S. patents must be applied for in the name of the true inventor(s), the patent rights may (and typically are) assigned or transferred to another, including the inventor's employer.
A patent protects an invention by granting the patent owner the right to prohibit others from making, using, and selling the patented invention within the jurisdiction granting the patent for a period of up to twenty years and provided any periodic governmental fees are paid. These rights are granted in exchange for full disclosure of the invention to the public. Because patents are "territorial," a patent application must be filed in every jurisdiction/country in which protection is desired. Further discussion on International protection for strategies and tools for protecting an invention in multiple countries throughout the world is required.
In the United States, inventors who wish to protect their inventions are encouraged to file patent applications for their inventions without delay. However, U.S. patent laws allow inventors a one-year "grace" period to sell or disclose their invention to the public before filing for a patent. After the one-year period, the invention is in the public domain and cannot be patented. However, this one-year "grace" period is not available in most foreign countries. Therefore, if foreign patent protection is to be considered, a U.S. patent application should be filed before the sale or public disclosure of the invention.
Before granting a patent, the Patent and Trademark Office (Patent Office) of the jurisdiction involved reviews the patent application to be certain that the claimed invention is novel, non-obvious, and clearly described in the patent application. The initial processing of a patent application typically takes two to three years from the time of its filing with the Patent Office. The patent examiner will review the patent application and make an initial determination of the invention's patenability, and will present his or her findings to the inventor's attorney. Our experience is that well over 90% of patent applications are initially rejected, at least in part, by the patent examiner.
After receiving the examiner's report, the inventor, typically through a patent attorney, corresponds and negotiates with the Patent Office (this is often called "patent prosecution") to assure that the scope of the patent rights are consistent with the prior technology, the inventor's needs and the requirements of the Patent Office and patent laws.
Assuming the required governmental patent maintenance fees are paid, Patents generally expire after twenty years from the date the application for the patent was filed. Once a patent expires anyone can make, use or sell the invention. A patent cannot be "extended" or renewed.
Although not a requirement for filing a patent application, a patentability search of known technology is a useful tool for determining the best course of business. Following the patentability search, the attorney can advise an inventor as to whether a patent application should be filed and represent the inventor before the Patent Office in the prosecution of an application. A patentability search conducted prior to filing a patent application may also facilitate the prosecution of the patent application and assist in obtaining the broadest possible scope of patent rights for the inventor.
Provisional applications
A provisional patent application (available only in the United States) is a very useful tool for obtaining a "priority date" (the effective filing date of a patent) while reducing the formal requirement and initial costs of filing a patent application. Although a full or complete patent application requires many formalities, including most notably the "claims" (which define the legal scope of protection afforded by the patent), a provisional patent application typically is not required to have any claims and has no formal requirement other than to describe the invention in sufficient detail so as to allow others to make and use the invention.
The provisional patent application may consist of a technical paper or papers, pictures, flow charts, presentations or any other printed material that fully describes the invention. While the provisional application does not require claims and is not examined, the application becomes abandoned after 12 months and therefore the inventor must file a full utility patent application (and any desired foreign patent applications) that claims priority to the United States provisional patent application within that 12-month period in order to receive the benefit of the earlier filing date obtained by the provisional patent application.
Trademarks
When a unique word(s), phrase, slogan, logo, shape, color, sound, smell or other unique element is used in conjunction with the goods or services of a business, it is entitled to trademark protection. A trademark must be distinguishable from other trademarks for similar goods and services and may not merely describe the goods or services which it identifies. Like patents, trademarks are territorial; that is, they are only valid in the country granting such rights.
Trademark rights in United States and other British common law countries are the result of use of the mark in connection with certain goods or services. Therefore, it is important to remember that an individual or company may have trademark rights even though they have never obtained a federal or state trademark registration. In other countries, trademark rights come from registration meaning that the first person to register the mark has the sole right to use it. U.S. Federal trademark registrations are available to those individuals and businesses who are actually engaged in interstate commerce. It is, however, possible to file a trademark application based on a bona fide intention to use the mark in commerce. It should be noted that a registration certificate will not issue until the applicant proves use of the mark in interstate commerce. Federal trademark registrations prohibit others from using identical or confusingly similar trademarks for similar goods and services. The registration of trademarks, like patent prosecution, involves correspondence and negotiation with the U.S. Patent and Trademark Office. However, unlike a patent, trademark rights can be enforced indefinitely unless the trademark is abandoned or becomes generic.
A trademark registration may be applied for in the name of an individual or individuals, partnership or corporate entity. Once the trademark application is filed, the trademark office will examine the application against other pending or registered federal United States trademark to determine if there is a likelihood of confusion with another pending or registered mark. This first examination typically takes approximately 6 months. Once the US trademark office approves the application, the trademark will be published for opposition by third parties who feel they might be damaged in some way by registration of the subject mark. If no opposition is filed, the trademark registration will subsequently issue. Assuming no problems or delay, it typically takes 12 to 13 months from the filing of a trademark application based on use to the Government's issuance of the trademark registration certificate. Trademark registrations last 10 years in the US and subject to periodic proof of use requirements, may be renewed forever, as long as the mark is still in use.
Copyrights
Copyrights are used to protect the tangible (physical) form of original works of authorship. The types of work that can be protected by copyright include, but are not limited to, musical compositions and lyrics, recorded musical performances, literary works such as books or poetry, business advertising materials and computer programs, motion pictures, sculpture, paintings and other works of visual art, and architectural works.
Copyrights do not protect the "ideas" underlying these works but rather, protect the specific expression of those ideas that are embodied in the works themselves. This means that the holder of a copyright has the right to prevent others from using the particular copyrighted work without permission, but cannot stop that person from using the underlying idea or facts to produce their own work on the same idea or topic.
Unlike patents and trademarks, copyrights extend nearly world wide, and without any special registration requirements for the most part. Copyrights arise automatically when the work is created in a tangible medium, but, in the case of U.S. authors, should be registered with the Register of Copyrights to maximize the author's rights if, later, there is an instance of unauthorized use. Although not required by law, every work should bear a copyright notice, which consists of © (or the word copyright), the year of publication, the copyright holder's name and the words "All rights Reserved". For example: © Copyright 1776 George Washington, All rights Reserved. A work that is created (fixed in tangible form for the first time) on or after January 1, 1978, is automatically protected from the moment of its creation and is ordinarily given a term enduring for the author's life plus an additional 70 years after the author's death. In the case of "a joint work prepared by two or more authors who did not work for hire" the term lasts for 70 years after the last surviving author's death. For works made for hire, (as in the case of an employee preparing a work during the normal course of his/her employment) and for anonymous and pseudonymous works (unless the author's identity is revealed in Copyright Office records), the duration of copyright will be 95 years from publication or 120 years from creation, whichever is shorter.
A copyright gives its owner several exclusive rights, which only the owner can exercise. Unless the rights are licensed by the owner to another person, the copyright owner is the only person who can make copies (reproductions) of the copyrighted work. The owner is also the only person who can adapt the work, for example, by preparing a film script based on the owner's copyrighted book. In addition, the copyright holder has exclusive control over public distribution, performance, and display of the work.
BOURQUE & ASSOCIATES, P.A.
Bourque & Associates, P.A. provides full-service Intellectual Property counseling and advocacy to businesses and individuals in the United States and Internationally. The Firm's practice is centered around patent, trademark, copyright, trade secret law, as well as related licensing and litigation matters. The Firm has experience in a wide variety of technologies including computer software and hardware and electronics in general.
Daniel Bourque
DAN BOURQUE founded the firm in 1992 after having practiced intellectual property law in Boston, Massachusetts since 1987. Prior to attending law school, Dan was a computer hardware and software design engineer with an international computer company. Dan therefore is experienced in preparing and prosecuting patent applications in electronic and electrical technologies including computer hardware and software, as well as a wide variety of other technologies including telecommunications, radar and acoustics. Dan also advises the firm's clients with their trademark, copyright and technology licensing needs and assists the firm's clients, as well as other attorneys both in the U.S., and around the world, with litigation support in intellectual property disputes.
Dan is a frequent lecturer and author on issues concerning intellectual property matters. Given that Dan is fluent in French, he is often called upon to lecture to and represent French speaking clients in foreign countries.
Dan holds A.S. and B.S. degrees in computer science and computer engineering, and received his JD degree Cum Laude from Suffolk University Law School, Boston, MA.
QUESTION: To understand correctly, does a U.S. patent only offer protection in the U.S.? In other words, another country can duplicate the product and sell it anywhere in the world except the U.S.?
ANSWER: You are correct. A U.S. patent allows the patent owner to prevent another from making, using and selling the patented invention in the U.S.
QUESTION: Additionally, if someone wanted to get international protection for an invention, what would be the process? Is it even possible?
ANSWER: Yes certainly but it is expensive. You eventually have to file for and obtain a patent in each country of interest.
QUESTION: Can you protect a logo?
ANSWER: Yes, a "logo" may mean different things to different individuals but it is in essential a "look" unique to the business. It might be words in a stylized font or color; an image or drawings; or a combination of the two. All these "logos" are protectable, potentially, as a "trademark".
QUESTION: We are looking to trademark our logo. I am familiar with the process a little and have researched a bit on my own but I would like to inquire with you about how it will protect us from other companies in our industry that may copy some of the marketing avenues with a similar logo.
ANSWER: A trademark can be an image, one or more words, or a combination of an image and word(s) that serves to identify and distinguish your services from those of your competitors. How you use various parts of your trademark will dictate what trademark registration you might be able to obtain. For example, if you always use the image portion of your logo in connection with certain words, you may have to register the entire combination as your trademark. Such a registration and use may slightly diminish your ability to enforce either the image part of your logo or the word part of your logo independently against third parties. If you can and in fact do use the image portion alone and also use the word portion alone and obtain registration for each portion independently, this will give you more to enforce against third parties who might use a nearly identical image with different words or nearly identical words with a different image.
QUESTION: As the computer age roars onward, how is the patent law adjusting to protect software and programming, which, as algorithmic expressions of mathematical fact, aren't generally in the strictest terms patentable material? How does the process differ from protecting more classically patentable material, and in cases where patents aren't granted, how can one protect one's intellectual
property?
ANSWER: The courts and the patent office have accepted computer software as patentable since the early 80's. Patenting computer software typically involves expressing the software in terms of either a series of steps or acts involved in a "method", or by giving software more of a "hardware" like appearance by laying out a series of "black boxes" each having a function that is performed by software. Regarding patenting a mathematical formula, you are correct that in a pure sense, a mathematical formula in and of itself is NOT patentable, but as part of a method or an object that transforms an object or electrical signals, a formula is patentable.
In an early court case, the Court of Appeals For the Federal Circuit applied the following two-step test: first, determine whether a mathematical algorithm is recited directly or indirectly in the claim; if it is, then determine whether the claimed invention as a whole is no more than the algorithm itself.
Thus, if the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process, the claim is non-statutory. "However, when the mathematical algorithm is applied to one or more elements of an otherwise statutory process claim ... the requirements of [the statute] are met."
Since the Federal Circuit considered that the process at issue was a mathematical optimization procedure and thus a mathematical algorithm was implicit in the claim, the court addressed the second step. The Court found that there was nothing about the steps set out in the claim that reflect a physical change, effect or result and, since the second step of the test was not met, the method was unpatentable.
Finally, it is important to remember that computer software can be covered by BOTH patents and is automatically protected as a copyrighted work.
QUESTION: If a business has a patent for 20 years and was successful and well known for that invention, why can't they renew their patent?
ANSWER: Excellent question. You need to remember that the United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries". The operative words for your question are "for limited times". Since a patent is a monopoly, the idea is that the patent owner is granted this monopoly for a limited time in exchange for a complete disclosure of the invention. After the limited time, anyone is free to make use of the patented invention. This is designed to promote the useful sciences by allowing others to improve on the patented technology. A company who has a patent and is selling a patented product should look at other possible IP measures (especially trademarks) as a way to further protect their ideas by using the first 20 years to develop brand recognition in the patented product, then the trademark rights can continue on beyond the patent expiration.
QUESTION: Why is a patent necessary for each jurisdiction rather than one being sufficient for all jurisdictions?
ANSWER: Patent rights are monopoly grants from a particular government or country. Each country wants to control what rights are granted; under what conditions; and how long they exist. This is why it is a country by country basis. There are a few regional patents, but not many. A European wide patent has been talked about for some time and we may see this in our lifetime. There is already a European wide Trademark registration so this tells you how difficult and territorial countries are with respect to their patent granting systems
