Frequently Asked Questions

General Help

Obtaining a patent is a long and complicated process, and success cannot be guaranteed. Working with an experienced patent attorney is the best way of protecting the value of invention.

The patent attorney will verify inventorship, verify that the business owns the patent rights to the invention, and prepare assignments of the patent rights from each inventor to the business. Employment agreements with employees likely to invent should include an obligation to assign inventions to the business.

A full disclosure of the invention should be obtained from the inventor(s). An Invention Disclosure Form in fillable PDF format is available for this purpose. It is important that the business control disclosure of the invention to others, because such disclosure may effect both U.S. and foreign patent rights.

To be patentable, the invention must be new and more than an obvious modification of what's old. A patentability and infringement search is recommended to evaluate the patentability of an invention, and whether the invention may itself infringe the patent rights of others. The patent attorney will advise you as to the scope and extent of the search.

A patent issues with one or more patent claims that define the scope of patent protection. The patent attorney prepares and prosecutes the patent application and will work closely with you to obtain the strongest protection available.

The strongest protection of your trademark or logo is a federal trademark registration (indicated by the “®” symbol). Working with an experienced trademark attorney is the best way to protect the value of your trademark.

The trademark attorney will evaluate the strength of your mark and its suitability for registration.

A full trademark search is recommended to check availability of the trademark and whether the mark may infringe the trademark rights of others. Trademark rights can arise simply by use; a full trademark search includes not only at state or federally registered marks, but unregistered marks as well.

A federal trademark application is filed on the basis of existing use of the mark in interstate commerce or a bona-fide intent to use the mark in interstate commerce. When the registration issues, nationwide trademark rights are effective as of the application filing date. For an intent-to-use application, this means the effective date of nationwide rights will pre-date actual use of the mark!

The United States recently became a member of the Madrid Protocol that enables a U.S. filed trademark application to be the basis for trademark registration in other countries.

Creative works, such as books, poems, musical compositions, computer programs, graphics, and the like, are protected by copyright. Working with an experienced copyright attorney is the best way to protect the value of your creative work.

The copyright is created automatically when the work is created. It is important to verify that you own the copyright in the work, particularly if the work was created by an employee or by an independent contractor. A copyright assignment may be necessary to transfer copyright ownership.

If the work has possible economic value, the copyright should be registered with the Copyright Office within three months of publication. This enables possible recovery of attorney fees and additional damages from an infringer.

Know-how that provides a competitive advantage and is not known or used by competitors is protectable as a trade secret. Working with an experienced intellectual property attorney is the best way to protect the value of your trade secrets.

You should conduct a “know-how” audit to identify your trade secrets. These typically include customer lists, financial records, manufacturing methods, and "tips of the trade" learned through experience. Implement reasonable steps to guard the secrecy of the trade secret information and prevent unauthorized access by others. For example, provide only employees with a need to know access to trade secrets.

Employment agreements should inform new hires that they have a duty to hold trade secrets in confidence. Obtain written acknowledgments from departing employees that trade secrets must be kept in confidence even if employment ends.

Confidentiality agreements should be in place with vendors or other outsiders having access to trade secrets.

Patents are a critical competitive edge. Working with an experienced patent attorney is the best way to keep that competitive edge and stop a competitor from infringing your patent.

Patents contain one or more claims. The claims define the scope of the patent owner's right to exclude others from the invention. These paragraphs are carefully drawn to recite elements of the invention and relationships between elements. The claims must distinguish the invention from what is old, and obvious modifications of what is old.

The patent attorney will compare the infringing product or method with the claims of your patent, and verify that the patent claims are being infringed.

Trademarks represent the good will and reputation of your business. Working with an experienced trademark attorney is the best way to prevent others from taking advantage of the valuable business reputation your business has earned.

Trademark infringement occurs if the owners of the conflicting marks compete in the marketplace and there is a likelihood of consumer confusion between the marks. The senior user in the marketplace can stop the junior user from using the infringing mark.

The trademark attorney will analyze the marks for likelihood of confusion, and verify that you are the senior user of the mark.

Unfair internet competition takes many forms: using your trademark in metatags, domain names or advertising keywords; framing or copying content; and cybersquatting to name just a few. Working with an experienced internet-savvy intellectual property attorney is the best way to stop unfair or infringing activity on the Internet.

The internet attorney will analyze your competitor's web actions for possible trademark or copyright infringement, and unfair competition.

Domain name disputes can be resolved under the Uniform Dispute Resolution Policy (“UDRP”) administered by ICANN, a non-profit corporation that manages Internet domain names, or by suing the domain name holder in federal court under the Anticybersquatting Consumer Protection Act (“ACPA”). Other disputes can be treated as trademark or copyright infringement, unfair competition, or be handled under the provisions of the Digital Millennium Copyright Act.

In this digital age, the opportunity to take or modify the creative works of others is easier than ever. Working with an experienced copyright attorney is the best way to stop others from copying or modifying your creative works and protect the value of your works.

Copyright law does allow limited copying, or "fair use", under limited circumstances. The copyright attorney will verify that the competitor has taken a creative work that you own and that the competitor's use is not a fair use.

The copyright must be registered before you sue for copyright infringement. If you register the copyright within three months of publication, you may also recover attorney's fees in addition to damages.

Former employees or vendors may offer your know-how to competitors. Working with an experienced intellectual property attorney is the best way to stop your trade secrets from being used by others.

You must act quickly to protect trade secrets. A court may be requested to issue an injunction preventing disclosure. If you delay, the court may infer that the trade secrets are not critical to the business and deny the injunction.

Trade secret disputes are very fact-sensitive, and the attorney will work closely with you to develop and document that the know-how is in fact a trade secret and that you took reasonable steps to protect it.

A patent license is a specialized contract. Being represented by a patent attorney experienced in patent licensing is the best way to protect and enhance the value of your licensed technology.

Patent licenses cover a wide variety of unique issues. Having these issues addressed in the license agreement helps you maximize the success of your licensing efforts and minimizes problems that could arise later.

Trademark licensing is a great way of maximizing trademark value, whether expanding existing uses of the mark or through new uses of the mark. Being represented by a trademark attorney experienced in trademark licensing is the best way to protect and enhance the value of your trademarks.

Trademark licenses cover a wide variety of issues related to use and control of the mark. Furthermore, new trademark registrations may be needed to cover new uses. The trademark attorney will make sure that your trademark and trademark licensing portfolios support each other for maximum value and return.

Creative works, such as software, music, books, and photographs, can be licensed in many ways and for many different uses. Being represented by a copyright attorney experienced in copyright licensing is the best way to add value to your creative works.

Copyright licenses range from the simple to the complex, and may involve applications of new technology such as the Internet or digital rights management.

The copyright attorney will work closely with you to achieve the licensing goals you desire.

Patent infringement is serious business. If infringement is willful, you can be liable for treble damages. Obtaining a competent noninfringement opinion from an experienced patent attorney is your best response to a charge of patent infringement.

Patents contain one or more claims. The claims define the scope of the patent owner's right to exclude others from the invention. These paragraphs are carefully drawn to recite elements of the invention and relationships between elements. The claims must distinguish the invention from what is old, and obvious modifications of what is old.

The patent attorney will compare your product or method with the claims of the patent you are charged with infringing. The attorney will evaluate the strength of the accuser's patent and determine the scope and meaning of the patent claims to provide a competent noninfringement opinion.

Trademarks represent the good will and reputation of your business. Obtaining a competent noninfringement opinion from an experienced trademark attorney is the best way of protecting that good will from a charge of trademark infringement.

Trademark infringement occurs if the owners of the conflicting marks compete in the marketplace and there is a likelihood of consumer confusion between the marks. The senior user in the marketplace can stop the junior user from using the infringing mark.

The trademark attorney will analyze the marks for seniority of use and likelihood of confusion in preparing a noninfringement opinion, and may recommend alternative actions that could accommodate both sides in the dispute.

Your creative works, such as architectural plans, computer programs, graphics, and music, are often valuable business assets. Working with an experienced copyright attorney is the best way to protect those creative assets from a charge of copyright infringement.

Copyright disputes are very fact-specific. For example, copyright law allows for limited copying under certain circumstances. Developing this “fair use defense” may be critical in successfully defending an infringement charge.

The copyright attorney will closely analyze the facts surrounding the dispute to guide you in how to best respond to the charges of infringement.

Important! Disclosing your invention to others prior to filing a patent application can affect your ability to obtain U.S. or foreign patents. Consult with a patent attorney before making a disclosure!

You may not have the manufacturing or marketing resources required to make and sell your invention. Licensing your invention to an established company in return for royalties might be a practical alternative.

Not all companies accept new product ideas, and those that do are usually highly selective. Present your invention in a professional manner. Focus on why your product will be successful in the marketplace, and why it makes economic sense to license your invention. Your love of the invention is not enough...be as objective and as factual as possible!

Successful licensing almost always requires successfully obtaining a patent. You should closely work with your patent attorney to evaluate the patentability of your invention during your licensing efforts.

The license agreement itself is a specialized contract. Being represented by a patent attorney experienced in patent licensing is the best way to protect the value of your licensed technology.

Three common routes to investors are: family and friends, “angel” investors, and venture capitalists.

Family and friends often provide finances for new inventors, but are usually limited in the financial backing they can provide.

“Angel” investors finance entrepreneurs just starting up or seeking initial expansion. Angel investors are often organized as small, informal groups of members that jointly back new ventures. Typical investments are less than $100,000. When seeking backing from angel investors, a thorough and well thought-out business and marketing plan is a must.

Venture capitalists generally back small businesses with a proven track record trying to break into the “big leagues”. Venture capitalists generally invest in the millions of dollars.

Angel investors and venture capitalists can be located through the Internet, or ask your local business school or college for help in finding investors. Seek competent business counsel before agreeing to investment terms.

We strongly recommend using your own patent attorney to prepare and prosecute your patent application.

But if you decide to use an invention promotion company:

Beware! There are good invention promotion companies and there are bad invention promotion companies. Bad promotion companies use the inventor's love of the invention to separate the inventor from his or her money.

An invention promotion company must disclose in writing:

  • The total number of inventions evaluated for commercial potential in the past 5 years, as well as the number of those inventions that received positive evaluations, and the number of those inventions that received negative evaluations
  • The total number of customers who have contracted with the invention promotion company in the past 5 years, not including customers who have purchased trade show services, research, advertising, or other nonmarketing services from the invention promoter, or who have defaulted in payment
  • The total number of customers known by the invention promotion company to have received a net financial profit as a direct result of the invention promotion services provided by such invention promotion company
  • The total number of customers known by the invention promotion company to have received license agreements for their inventions as a direct result of the invention promotion services provided by such invention promoter

If the company refuses to provide these disclosures, go elsewhere. Do your homework to avoid expensive disappointment and perhaps the loss of your patent rights!

Intellectual Property

“Intellectual property” includes the new ideas and concepts created from inventive thinking, the customer goodwill and reputation generated by running a business, the works and output resulting from creative thought and artistic expression, and the know-how and experience obtained in practicing a trade or operating a business. Intellectual property is protected from unauthorized use by others by patents (invention), trademarks (brand names), copyrights (works of artistic expression) and trade secrets (your accumulated know-how and knowledge). Intellectual property works to protect the value of innovation, creativity, and experience.

Protecting innovation and maintaining competitive advantages is a must in today's economy. Equally important, and easily overlooked, is the necessity of respecting intellectual property of others.

Business management should be trained to recognize intellectual property issues and authorized to take action when needed. Prompt action is often essential to successful results. The business should establish a relationship with an intellectual property law firm to help manage intellectual property issues as they arise.

Trademarks

A trademark is any word, name, logo, symbol, or device used to identify and distinguish the trademark owner's goods or services in the marketplace from goods or services of others. Colors, sounds, scents, and even product configurations can be trademarks if used long enough to identify goods and services to consumers. Trademarks are often referred to as brands or brand names.

Trademark rights can be developed by using the trademark in commerce (so called “common law trademarks”) or by filing an application for federal registration of the trademark. Federal registration provides the highest level of protection and can secure exclusive nationwide rights to the trademark.

Most US trademark applications for federal registration are based either on actual use of the trademark in interstate commerce (a “use application”) or on a bona-fide intent to use the trademark in interstate commerce (an “intent-to-use application”). Other bases are available to international applicants.

To be protectable as a federally registered trademark, a trademark must be distinctive, that is, not a generic or merely descriptive term for the goods or services. Also, the trademark cannot be so similar to any other federally registered trademark that it is likely to be confused with that trademark.

Trademark infringement occurs when a new trademark creates a likelihood of confusion with an established trademark already established in the marketplace. The owner of the established trademark can sue for trademark infringement seeking an injunction stopping use of the new trademark and to collect damages caused by the trademark infringement.

A trademark search is a review of federally registered trademarks and/or common law trademarks to check that use of a proposed trademark would not infringe trademarks already in the marketplace. Trademark searches are particularly helpful in screening possible problems that might arise from using a new trademark in the marketplace.

No, a federal trademark registration is effective only in the United States. If your trademark is being used outside of the United States, consider obtaining trademark registrations in each country or regional trademark office in which you use the trademark.

A domain name (for example, www.xyz.com) identifies an address on the internet. A domain name is not considered a trademark. But if you use the domain name as a trademark in advertising to identify the source of goods and services, then the domain may be protectable as a trademark independently of its use as a domain name.

Domain name disputes can be resolved under the Uniform Dispute Resolution Policy (“UDRP”) administered by ICANN, a non-profit corporation that manages Internet domain names, or by suing the domain name holder in federal court under the Anticybersquatting Consumer Protection Act (“ACPA”). Other relief may be available against cybersquatters.

Patents

A patent is a grant by a government that provides the patent owner the right to exclude others from practicing an invention in that country. The right to exclude is given in return for a description or teaching of the invention that is included in the patent and made available to the public worldwide. Patents are granted by the United States government and many other governments world-wide.

Inventions provide society with new solutions to solve old problems or to improve the quality of life. A patent owner is granted the right to exclude as an incentive for making the details of how their invention works public.

Different kinds of new, nonobvious and useful processes, machines, manufactures, or compositions of matter may qualify as patentable subject matter and can be granted a patent.

Inventions that are drawn to "nonpatentable subject matter" cannot be patented. Nonpatentable subject matter includes mere concepts or ideas, scientific principles or mathematical formulas (as opposed to inventions putting those principles or formulas into practice), and inventions attempting to protect physically impossible concepts. Certain countries may not allow patents on medical inventions or other specific types of subject matter.

In the United States, the inventor files a patent application with the United States Patent and Trademark Office. The application includes a written description of the invention and usually includes drawings. The application is examined by a patent examiner who evaluates whether or not the invention meets patentability legal standards.

While a patent application can be kept secret over the examination process, there are cases in which patent applications are published and made available for viewing by the public.

The patent examination process is substantive. There are many reasons why a patent application might be rejected. While applicants can respond directly to rejections normally it is best to seek assistance from professionals who are familiar with the process.

“Patent pending” signifies that a patent has been applied for on an invention but that a patent has not yet been granted.

A provisional patent application is a patent application filed with the United States Patent and Trademark Office that proves possession of an invention on the filing date. A provisional patent application acts as a request for a filing date and not a patent, and so a provisional patent application is not examined by a patent examiner. The applicant has one year from the filing date of the provisional patent application to file a non-provisional patent application that gets the benefit of the provisional patent application filing date. An applicant may use “patent pending” while the provisional patent application is pending.

All patents have a limited term and eventually expire. Generally, utility patents expire 20 years from the date of filing the patent application. After the patent expires, anyone is free to use the patented invention. The United States and most other countries also require the patent owner to pay fees to maintain the patent until its expiration date. If these fees are not paid, the patent may expire before its 20 year term.

Under United States law, anyone who without the permission of the patent owner makes, uses, offers to sell, or sells any patented invention in the United States, or imports a patented invention into the United States during the term of the patent infringes the patent. The infringer may be liable for the economic harm suffered by the patent owner and may be forced to give up the profits and revenue generated from the harm and may be liable for damages to the patent owner.

The above is only a basic introduction and should not be considered complete. Many technical requirements must be met to obtain a patent grant. Common issues include invention ownership, public disclosure of an invention before filing an application, the development of rights outside the United States as well as how to conduct effective patent searching and research.

The process can be difficult, expensive and time consuming with no guarantee of success. Working with an experienced patent attorney is always in your best interest.

Copyrights

Trade Secrets

A trade secret is confidential business information that provides a competitive advantage over those who do not know it and cannot readily obtain it.

Trade secrets are protected under specific state laws and under federal law by the Defend Trade Secrets Act (DTSA). A majority of states have enacted versions of the Uniform Trade Secrets Act (UTSA). These Acts provide a cause of action for the misappropriation of trade secrets.

A trade secret lasts as long as the information is kept in confidence and is not known or readily obtainable by others. Potentially, a trade secret can last forever.

Information that has actual or potential value from not being known to competitors and is not readily obtainable by proper means qualifies for trade secret protection. Such information may include formulas, patterns, compilations, programs, devices, methods, techniques and customer lists.

To protect trade secrets from being taken by others, a business must demonstrate that reasonable efforts were made to maintain the confidentiality of the information. What is reasonable depends on the value of the information, the ease with which it could be acquired by others, and the extent to which it is known outside the business. “Reasonable efforts” have been held to include advising employees about trade secrets, limiting access to confidential information on a “need to know” basis, controlling facility access, and the use of confidentiality and non-disclosure agreements with licensees and vendors. The business should identify its trade secrets and implement reasonable safeguards to prevent non-confidential disclosure of that information to others.