Bourque and Associates, P.A.
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 <U>before</U> 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.
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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.
