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A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the U.S., U.S. territories, and U.S. possessions.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.
An inventor should be aware that the disclosure of an invention to others before filing a patent application can have adverse effects on patent rights. Indeed, the right to obtain a patent in many foreign countries is lost immediately if the invention is disclosed to others anywhere in the world before filing a patent application in those countries. In the United States, a patent application must be filed within one year following any public use, sale or printed publication concerning the invention or else it is barred.
If it is necessary to disclose an invention to another party, it is important to obtain a written commitment by that party to maintain the confidentiality of the invention. In many countries, though not all, this will preserve patent rights.
When one intends to disclose an invention to others, it is often highly desirable to file a United States patent application first. The United States has treaties with many foreign countries, though not all, which permit the subsequent filing of the same patent application therein and obtaining the same filing date as the United States filing date, provided the foreign applications are filed within one year of the United States filing date. This procedure avoids the loss of patent rights which would otherwise be caused by disclosures of the invention which may have occurred after the United States filing date. It must be emphasized, however, that if the foreign patent applications are not filed in such countries within the one-year period, following the U.S. filing date, this privilege is lost. Also, please note that this procedure is not available for every country and you should discuss the specifics of your plans with counsel before disclosing your invention.
A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks.
Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office.
Generally speaking, a trademark may be registered on the Principal Register in the United States Patent and Trademark Office if it is not confusingly similar to other marks. In making the determination of registrability, the Office considers a number of factors, especially, (1) similarity between the applicant’s mark and other marks and (2) similarity between the applicant’s goods and the goods identified by other similar marks. Marks not registrable on the Principal Register may be registrable on the Supplemental Register. While a registration on the Supplemental Register does not provide all the legal advantages afforded by a registration on the Principal Register, it is often beneficial and very worthwhile.
After an application for trademark registration on the Principal Register is filed, the Office will conduct a search for similar marks. After that, the applicant will be informed through his attorney as to whether the mark is approved for publication. Very often, the Office will require certain changes in the application or may cite similar marks against the application. The attorney must then prepare an appropriate response. This process continues until the mark is approved for publication or finally rejected. If approved, it is published in the Official Gazette for opposition. Within the next 30 days, anyone who wishes to oppose this registration of the mark may file papers stating his objections. An Opposition Proceeding would then follow to determine whether registration should be granted. In the usual case, however, no Opposition is filed and registration of the mark is granted after the thirty-day period. The entire process takes from 12 to 24 months in routine cases, depending upon how the application is treated by the Office, and longer if anyone opposes the registration.
Often a trademark registrability search will reveal similar marks that are not federally registered. These include pending trademark applications, marks which were once federally registered but have since been canceled, marks which are used as business titles, and marks which appear in various trade directories or other publications. When making a decision concerning the registrability of the applicant’s mark, the Patent and Trademark Office only compares the applicant’s mark with federally registered trademarks. Therefore, these unregistered marks would not be cited as a grounds for refusing the applicant’s registration. However, these unregistered marks are significant in that they serve to warn the applicant of companies or individuals who may have obtained certain legal rights to continue using their mark if it is similar to the applicant’s mark. In some situations, an unregistered user might oppose the applicant’s registration. For these reasons, where an unregistered mark may be confusingly similar with the applicant’s mark, it is advisable to investigate the unregistered mark to determine whether a conflict is likely.
Trademark registrability searches typically involve a search of the records of the United States Patent and Trademark Office and the Offices of the Secretaries of the State of the 50 states, as well as a number of trade directories, telephone directories and a computer database containing several million business titles and names. Although these searches are reasonably comprehensive they cannot be totally exhaustive because of the expense that would be involved; also, they are not necessarily totally free from error. The search of the Patent and Trademark Office records depends, for example, upon the accuracy of those records and errors occasionally occur. Also, it should be noted that trademark searching is highly subjective in nature. Consequently, there is always some risk that a registered trademark is not revealed by a search or that one or more unregistered trademark users are not identified. Nevertheless, we believe that it is not only prudent, but necessary, to have a search done before a mark is adopted. Although the risks of conflict with another party or a refusal of registration by the Patent and Trademark Office cannot be totally eliminated, those risks are reduced substantially.
Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.
The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress.
Literary works, Visual Arts, Performing Arts, Sound Recordings and Serials.
Literary works normally include: fiction, non-fiction, poetry, prose, textbooks, cookbooks, catalogs, ad copy, speeches, software codes and computer programs;
Visual Arts includes paintings, drawings, photographs, sculpture, maps, graphic designs, art reproductions, cartoons, unique package designs, technical drawings and architectural works;
Performing Arts includes musical compositions, dramatic works, scripts, choreography, motion pictures, and other multimedia or audiovisual works;
Sound Recording protection should be used to protect published and unpublished recordings of musical, dramatic, or literary works to protect the sound recording itself, in addition to any copyright in the underlying work;
Serials are literary works published in a series of installments, such as magazines, newspapers, bulletins, journals and digests.
In the case of works made for hire, the employer and not the employee is presumptively considered the author. The copyright statute defines work made for hire as:
a work prepared by an employee within the scope of his or her employment; or a work specially ordered or commissioned for use as a contribution to a collective work . . . as a supplementary work, as a compilation, as an instructional test, as a test, if the parties expressly agree in a written instrument signed by them that the work shall be considered work for hire.
When a work is published under the authority of the copyright owner, a notice of copyright should be placed on all publicly distributed copies. Although the notice is not legally required for works published after March 1, 1989, including a copyright notice is still strongly advised. The use of the notice is the responsibility of the copyright owner and does not require advance permission from, or registration with, the copyright office.
The notice for visually perceptible copies should contain all of the following three elements:
either the symbol © copy; (preferred because it also suits the requirement of the Universal Copyright Convention), the word Copyright, or the abbreviation Copr.;
the year of first publication of the work; and the name of the owner of copyright in the work, or an abbreviation by which the name can be recognized, or a generally-known alternative designation of the owner.
The notice should be affixed to copies of the work in such a manner and location as to “give reasonable notice of the claim of copyright.”
* Some content taken from U.S. Patent and Trademark Office Web site.