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•
OBTAINING INTELLECTUAL
PROPERTY PROTECTION
FOR YOUR NEW INVENTION
By: Pasco Gasbarro
William Loginov
Amy B. Spagnole
October 20, 2006
Trademarks, Copyrights and
Patents Are Not The Same
– Trademark: Trademark law protects product
identifying symbols.
– Copyrights: Copyright law deals with the tangible,
original expression of ideas in the form of writing,
drawing, sculpture, photos, film and music.
– Patents: Patent law protects new and useful
inventions.
Some Differences (U.S. Law)
Trademark
Copyright
Patent
NATURE
Words, names, designs, slogans, symbols,
sounds, product shape, product packaging.
Works fixed in a tangible medium of
expression, literary and artistic
expression such as books, paintings,
sculptures, computer software, plays,
movies.
New and useful inventions,
such as manufacturing
process, mechanical
aspects of product, design
of useful articles.
PURPOSE
Protects trademark owners from unfair
competition and the public from
confusion.
Encourages and rewards creative
expression.
Encourages and rewards
innovation.
ACQUIRING
PROTECTION
Use of the mark in commerce in
connection with goods or services or apply
for federal or state registration.
Automatic upon fixation in a
tangible medium.
Only by grant from Federal
Government.
NOTICE
OPTIONAL: TM or SM if unregistered; ®
or Reg. U.S. Pat. & Tm. Off.; if registered.
OPTIONAL after March 1, 1989: ©
or “Copyright with year of first
publication and name of owner.”
OPTIONAL: “Patent
applied for” or “Pat.
Pending” after application
filed, or Patent or Pat. Plus
registration number after
grant.
More Differences (U.S. Law)
TERM
Trademark
Copyright
Patent
Common Law: As long
as used in connection
with goods or services.
Creations after January 1,
1978:
Utility or Plant Patent: 20 years
from application filing date.
Author’s lifetime plus 70
years.
Design Patent: 14 years from
grant.
Federal Reg.: 10 years
from registration if use
declaration is filed
during 6th year of
registration. Renewable
for unlimited 10-year
periods.
Work made for hire: the
earlier of 95 years from
publication or 120 years
from creation.
PREQUISITES TO AN
INFRINGEMENT
ACTION
No registration needed.
Registration required for
U.S. nationals.
Issued patent required.
INFRINGEMENT
TEST
Likelihood of confusion,
mistake, or deception as
to source or sponsorship.
Unauthorized use or
copying (access to work
and substantial similarity
between protected work
and allegedly infringing
work).
Unauthorized manufacturing, use,
sale or offering for sale devices
embodying the protected
invention
What Is A Trademark?

Any word, name, logo, symbol or device,
or any combination thereof, used by a
person to identify and distinguish his or
her goods from those manufactured or sold
by others and to indicate the common
source of the goods. Section 45 of the
Trademark Act of 1946 (Lanham Act).
Types of Trademarks
WORDS
SLOGAN
SYMBOL
Types of Trademarks
TRADE DRESS
(PACKAGING)
TRADE DRESS
(PRODUCT DESIGN)
Why Are Trademarks Important?

Identifies one seller’s products and
distinguishes them from products of others;

Signifies that all goods bearing the trademark
come from or are controlled by a common
source;

Signifies that all goods bearing the trademark
are of an equal level of quality; and

Is a prime instrument in advertising and
How do I protect my Trademark?

Trademark Clearance and Searching

Federal Registration
– BOU
– ITU

State Registration

Common Law

Foreign Registration
Do Not Use ® If Not Registered

Registered Mark – ®

Unregistered Trademark – ™

Unregistered Service Mark – SM
COPYRIGHTS
What is a copyright?

Copyright is a form of protection provided
by the laws of the United States to the
authors of “original works of authorship.”

A copyright protects original works of
authorship, including books, paintings,
sculptures, computer software, plays, and
movies.
What is not protected by copyright?

Works that have not been fixed in a tangible form of expression (for
example, choreographic works that have not been notated or
recorded, or improvisational speeches or performances that have not
been written or recorded);

Titles, names, short phrases, and slogans; familiar symbols or
designs; mere variations of typographic ornamentation, lettering, or
coloring; mere listings of ingredients or contents;

Ideas, procedures, methods, systems, processes, concepts, principles,
discoveries, or devices, as distinguished from a description,
explanation, or illustration;

Works consisting entirely of information that is common property
and containing no original authorship (for example; standard
calendars, height and weight charts, tape measures and rulers, and
lists or tables taken from public documents or other common
sources).
What rights does a copyright provide?
The right to:
 Make copies;
 Prepare derivative works;
 Distribute copies of the work to the public;
 Perform the work publicly;
 Display the copyrighted work publicly;
Who can claim copyright?

The copyright in a work is the property of
the author who created the work.

The author can be one or more individuals
or a company, if the work is a work made
for hire.
What about the rights of companies?

In the case of works made for hire, the employer and not
the employee is considered to be the author.

Copyright law defines a "work made for hire" as:
(1) a work prepared by an employee within the
scope of his or her employment; or
(2) a work specially ordered or commissioned for
use as a contribution to a collective work, a part of a
motion picture or other audiovisual work, a translation, a
supplementary work, a compilation, an instructional text,
a test, answer material for a test, or an atlas, if the parties
have expressly agreed (in a written instrument signed by
them) that the work shall be considered a work made for
hire.
When does copyright arise?

Copyright is secured automatically when
the work is created. A work is "created"
when it is fixed in a tangible medium.

No publication, registration, or other
action in the Copyright Office is required
to secure copyright.
Where does copyright
protection extend?

There is no such thing as an “international
copyright” that will automatically protect an
author’s writings throughout the entire world.

Protection against unauthorized use in a
particular country depends on the national laws
of that country.

Most countries offer protection to foreign
works under certain conditions.
Why Register?

Registration is not a condition of copyright
protection.

Copyright registration is a legal formality
intended to make a public record of the
basic facts of a particular copyright.

Registration may be made at any time
within the life of the copyright.
Benefits of Copyright registration

Registration establishes a public record of the copyright claim.

Before an infringement suit may be filed in court, registration is
necessary.

If made before or within 5 years of publication, registration will
establish prima facie evidence in court of the validity of the copyright
and the facts stated in the certificate.

If registration is made within 3 months after publication of the work or
prior to an infringement of the work statutory damages and attorney’s
fees will be available to the copyright owner in court actions.
Otherwise, only an award of actual damages and profits is available to
the copyright owner.

Registration allows the owner of the copyright to record the
registration with the U.S. Customs Service for protection against the
importation of infringing copies.
How do I let others know about
my copyright?

The use of a copyright notice is no longer required under
U. S. law, although it is often beneficial.

The notice for visually perceptible copies should contain
all the following three elements:
– 1. The symbol © (the letter C in a circle), or the word
"Copyright," or the abbreviation "Copr."; and
– 2. The year of first publication of the work.
– 3. The name of the owner of copyright in the work, or
an
– abbreviation by which the name can be recognized.
Example: © 2002 John Doe
How long does a copyright last?

A work that is created 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, the duration of copyright will
be 95 years from publication or 120 years from creation,
whichever is shorter.
PATENTS
PATENTS ARE:

A right to EXCLUDE OTHERS from making, using or selling
a patented article -- not necessarily to make it yourself

Utility patents protect the FUNCTION of a machine, process,
computer program , composition of matter
• Term: 20 from FILING – regardless of when granted

Design Patents protect the ORNAMENTAL DESIGN of an
object – without regard to function
• Term: 14 years from GRANTING
PATENTS

Who is entitled to a patent?

Our system protects the FIRST TO INVENT
– So long as:




No public disclosure
No offer for sale
No publication
No public use

If any of the above occur you have ONE YEAR to file or lose the
right to patent on whatever was disclosed, offered, etc.

How to prove inventorship?

Keep a bound notebook of ideas or other PROVABLE medium with
dates and witnesses
– Mailing certified mail to yourself is unnecessary
PROVABLE medium
What is the process for obtaining
a Utility Patent?

Determine whether the concept is ready for patenting

Consult a patent attorney and provide description of invention

Consider whether a PATENTABILITY SEARCH is advisable

Attorney prepares patent application and inventor reviews

Application filed in US Patent and Trademark Office (USPTO)
What is the process for obtaining
a Utility Patent?

Now you have a PATENT PENDING

USPTO eventually examines application, searching for similar
prior art concepts and (often) rejecting the claims based upon
prior art as either NOT NEW or OBVIOUS

Attorney (and inventor) reviews rejections and prepares
response – possibly changing the claims

If all goes well:
Allowance and Grant of Patent
PATENT

Cost to obtain a US Patent?
– Full cost is between about $7,500 - $17,500 in most
technologies

Foreign patents?
– Every country/region has its own system
– By treaty file within ONE YEAR of US filing
– NO PRIOR PUBLIC DISCLOSURE before US filing

Cost?

EXPENSIVE – use deferral tactics like PCT until product is
proven and investment capital is secured
What about PROVISIONAL
APPLICATIONS?

Filing fee only $100

No requirement of CLAIMS

Are a place holder - - CONFER NO RIGHT
– Must be followed by utility filing WITHIN ONE YEAR or benefit is lost

BEWARE – except for claims a provisional application must
meet ALL other standards for a full, enabled disclosure of the
invention!

Foreign applications must be filed at the same time as the US
utility

Provisionals remain SECRET if not followed up with a utility
filing