March 2019
Charles Meyer (partner, Woodard, Emhardt, Henry, Reeves & Wagner LLP) gave us a very interesting and witty review of intellectual property. For more information than this brief summary provides, talk with someone who was there.
Take-home message: Intellectual property protects your identity and your market share.
The most popular forms of intellectual property are copyrights, patents, and trademarks. A trademark brands your products with your identity. A patent prevents others from benefiting from your invention (a product or process, an ornamental design for a manufactured product, or a plant). A copyright prevents others from copying your particular tangible expression of an idea (not the idea itself).
A trademark (for goods), service mark (for services), or trade dress (trademark for the image and overall appearance of goods) identifies you as the origin of a good or service. It lets consumers know what quality or consistency to expect when they buy from you. A mark can be anything that is sensate and nonfunctional: a sight (word, design, packaging shape [eg, Coca Cola bottle]), sound (eg, NBC chimes), smell (eg, Play-Doh), touch (eg, Khvanchkara wine packaging), and taste (no examples yet).
Rights to a mark are acquired by use. Registration of a mark with the U.S. Patent and Trademark Office (USPTO) records the rights and offers additional benefits: protection throughout the country (instead of just the area of immediate use), own the mark before actually using it, presumption in court proceedings that you own the mark, protection by U.S. Customs, and—best of all—a “no trespassing” sign that discourages lawsuits over who owns a mark. Search the USPTO database for existing marks before choosing a mark. The cost of a professional seach, depending on completeness, ranges from $100 to $1500.
The protective strength of marks varies. The goal is to avoid confusing the public about which mark goes with which good or service. Weaker marks are more likely to be challenged in court. The strongest kind of mark, arbitrary or fanciful, has no relation to the good or service (eg, APPLE computer). A little weaker is a suggestive mark, which requires some thinking to link the mark to the good or service (eg, GREYHOUND bus service). Weaker still is a descriptive mark, which uses some trait of the good or service (eg, UPS brown color). Weakest of all is a generic mark, which uses a common description of the good or service (eg, CAR). One test of the strength of a trademark is to put a trademarked item in a bag, tell someone what the trademark is, and ask if the person can tell you what is in the bag.
To avoid loss of a mark, use it as an adjective, never as a verb (eg, don’t say you xeroxed something on a XEROX machine). In writing about your mark, designate an unregistered mark with TM and a registered mark in all capital letters or with an R enclosed by a circle.
Copyrights protect authored works such as poetry, computer software, architecture, a novel, painting, movie, or song. In the United States, copyrights automatically apply to an authored work the moment it is expressed in a tangible medium. The owner has 6 exclusive rights: to reproduce the work, to derive works from the original, to distribute copies of the work or to transfer ownership of the work, to publicly perform the work, to publicly display the work, and to publicly perform a protected sound recording by digital audio transmission.
A copyright owner can sue for infringement to recover statutory damages and attorney fees only if the work is registered with the U.S. Copyright office. Additional benefits of registration include a “no trespassing” sign and a presumption of ownership in court proceedings.
Copyright law is written for the plaintiff, not the defendant. To protect yourself from infringing another’s copyrights, attribute works of others that you use. If using a picture you find on the internet, read the fine print on whether and how you may use it. Disclose any payment you receive for publicly endorsing a work.
A patent is all about building a better mouse trap. It is granted by the USPTO for the U.S., by other regulatory agencies for other parts of the world. It exludes others from benefiting from your invention for a set time, typically 17 years for a utility or plant patent and 15 years for a design patent.
There are 3 kinds of U.S. patents.
A utility patent protects useful, new, and nonobvious machines, manufactured items, processes, combinations of materials, or improvements of those. Computer software can be patented under some conditions.
A design patent protects the nonfunctional ornamentation of a manufactured thing. It is like a trade dress except that protection lasts only for a set time and there is a less stringent requirement that the ornamentation be nonfunctional.
A plant patent protects a new kind of plant that is designed or discovered.
A patent:
Is useful for:
Offense; the better the patent, the less competition your invention will have in the market; and
Defense; another patent owner may need to cross-license your patent before benefiting from his.
Says nothing about whether a patented product is a good idea, logically or functionally.
Varies in cost:
Simply filing an application for a design patent may cost $2500; for a utility patent may cost $12000. The cost of prosecuting a utility patent can double that amount.
There are 2 kinds of utility patent applications.
A nonprovisional application and the prosecution it entails are needed to get a patent. They are expensive and time-consuming and the application must be filed within 1 year of publicly disclosing the invention (but see below). If you also want a patent from another country, file this application before publicly disclosing the invention.
A provisional application lets you try before you buy.
It is like a dinner reservation: call now and show up within 1 year with a nonprovisional application that refers to the provisional application.
A provisional application gives you an extra year to file a nonprovisional application after publicly disclosing the invention. The USPTO grants a patent to the first inventor to file a patent application for a particular invention, so filing provisional applications early and often can be helpful. You can file a series of provisional applications as you incrementally develop your invention. You can market your invention, look for investors, or try to sell embodiments of your invention after filing a provisional application. If you like what you see, then roll your provisional applications into one nonprovisional application and file it within 1 year of filling the first provisional application.
A provisional application lasts 1 year and can be renewed but can not lead to a patent unless combined with a nonprovisional application. It can be less expensive, less time-consuming, and less formal than a nonprovisional application. But don’t be fooled—the patent office credits you only for what you disclose. Words are important. For example, stating that objects are joined by a fastener (which can be a nail, screw, or rivet) can provide more protection than stating that objects are joined by a nail.
After filing a provisional application, you may mark the unpatented products you sell as “patent pending”. This “no trespassing” sign warns competitors that they risk having a warehouse full of worthless knockoffs if your patent issues.
If your patent issues, mark your products with either the patent number or with an internet url address that shows the patent number. This lets you sue for financial damage due to any infringement that occurs before you notify an infringer to stop infringing your patent. Remove those marks after your patent expires.
Nondisclosure agreements can help you seek business partners while protecting your unpatented invention. In general, the customer is always right. Someone who wants to buy or rent your patent is your customer and has no incentive to sign a nondisclosure agreement. You are the customer of a manufacturer or vendor you may hire, so they do have an incentive to sign a nondisclosure agreement. If you want, but can’t get, a nondisclosure agreement, you can still protect your invention by telling only enough about your invention to make it interesting and by clearly marking all documents you share as confidential. But your best protection will always be to file a patent application before seeking partners.
Thank you for sharing your valuable time and expertise with us, Mr. Meyer!