The
best known areas of Intellectual Property are Patents,
Trademarks and Copyrights.
Patents
A Patent
protects things which have some sort of function. Before
filing for a patent application, you need a patent search
to find out if your idea is patentable. A patent search
provides you with patents similar to your invention, and
in applying for a patent, you explain to the Patent Office
why your invention is not obvious in light of those inventions.
The best known patent application is the Utility patent.
In applying for this type of patent, one aims to protect
the functionality of an invention. A prime example is
a broom. It has the function of allowing dirt and other
things on the ground to be gathered more easily than if
a person would merely use their hands.
Then
there is the Provisional patent application. This application
is a tool which has been added to the patent attorney's
bag of tricks quite recently. It is an application which
is designed to allow a person to file for an application
quickly because it does not have claims. Claims are the
legally operable part of a patent application, though
other parts of the application (in particular the detailed
description) may be used for purposes of claiming a priority
date. The Provisional patent application has a lesser
filing fee than the Utility patent application and will
expire if it is not upgraded to a utility patent application
within one (1) year of filing. The Provisional patent
application does give the inventor(s) a priority date
and patent pending status - this alone is a goal for many
inventors.
Many
things are patentable under the rubric of the Utility
or Provisional patent application other then the common
"thing that has a function." Over the last few
years software has become patentable without the necessity
of including the computer upon which it is going to run.
Also recently, business plans have also become patentable.
Then
there is the Design patent application. With this application,
one may protect the look of an invention when that look
is separable from the thing itself. The best example of
a design patent application is a bicycle rack where in
the steel tube which the bicycle is to be locked to looks
some what like a snake. The concept of having a fixed
locking mechanism for a bicycle is not patentable because
it is known already; and such an invention would receive
a 102 rejection (we will go into the different rejections
later). But what is protectable is the look of the bicycle
rack.
The
latter three patent applications are the best known and
comprise the majority of all patent applications filed.
But there is another type of patent application, which
though not as well known, is a powerful tool in the right
situation. This application is the Plant patent application.
This application will protect the invention of a way of
making a new type of plant which has been created via
asexual reproduction and is a new or original variety
of plant.
The
last tool found within the US forum for patents is the
document disclosure. This disclosure was instituted by
the US patent office (PTO) in order to give inventors
a way to prove that they came up with an idea as early
as a particular date. This disclosure, though it does
not give the inventor a priority date as does the Provisional
patent application, will allow the inventor a modicum
of peace of mind as the PTO will hold on to the disclosure
for two (2) years. The point behind this disclosure is
the fact that in the US, the right to an invention lodges
in the first person(s) to invent and not necessarily the
first person(s) to file a patent application. The disclosure
is only good so long as a patent application is diligently
filed in the PTO, and no public disclosure of the invention
is made by the inventor.
Outside
of the US is the Patent Cooperation Treaty (PCT) application.
This is an application which is filed under the treaty
for purposes of receiving a priority date in all countries
which are signatories to the treaty. Most American, Asian
and European countries are signatories. The PCT application
will be looked at by the PTO more quickly then a regular
Utility application, in some cases.
Trademarks
The
next area of law which we are going to discuss is trademarks.
This
does not mean that if you have not registered your mark,
you do not have any rights. All trademark rights derive
from common law and the act of using that mark. Before
filing for a trademark you should do a search of all federal,
state registrations to see if your mark has already been
registered. Additionally, you should do a common law search
in order to attempt to find out if some one has been using
your mark who has not filed for a registration.
The
Patent and Trademark office will award you a federal trademark
registration if there is no other mark which has been
federally registered which is the same or so similar that
it would be confusing to the public. Two marks which are
exactly the same but which are in different classes of
have unrelated goods and services will not be considered
to be confusing to the public. The exception to that rule
is that some marks have become so well known that they
are deemed famous -- and then no other entity may use
the mark even if the other entity is in an area of business
unrelated to the entity owning the famous mark.
This
of course leaves the question "Why do a state or
common law search"? The answer is that an entity
could be registered on the state level which would not
permit you to use your mark in that state, or an entity
could be using a mark unregistered, but nationally, giving
them the right to cancel your federal mark so long as
they find out about it before you file your letter of
incontestability at the five year mark.
Once
you have completed a good search for your mark, then you
should file for a registration. You may register federally
if you are using or intend to use your mark in interstate
commerce. Otherwise you may only file in the state where
you are using the mark. Registration will give you priority
rights in your mark as of the day of registration, put
all others on 'notice' that this is your mark, give you
statutory damages against those who infringe on your mark,
and allow you to secure your rights to that mark against
all comers.
Foreign
trademark applications are filed as Community trademarks.
This trademark application will give you priority in all
countries who are members of that treaty.
Once
you have obtained a federal trademark registration you
no longer have to put just "TM" or "SM"
next to your mark. Instead you may now use the encircled
®. You must maintain your mark, protect it from all
infringers, pay the upkeep fees, and show use every ten
(10) years.
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"A
mark is a sign or a symbol which enables its owner
to distinguish his goods or services from the same
or similar goods or services of another. Registration
of the mark protects its use on any papers and materials
relating to the registrant's business."
World Trademark Law and Practice, Matthew Bender
& Co., Inc., Ethan Horwitz, New York, NY (1998).
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Copyright
The
next area of law which we are going to discuss is copyrights.
Imagine a room with a hundred monkeys. Each monkey is
pounding on a typewriter. One of these monkey's (we'll
call him monkey A), through this random act of pounding,
writes the Starr report in all of it's ignominy (including
Monica and Clinton's most lurid of acts). Since we all
know that monkeys cannot read and certainly have not heard
of the Starr report, Monkey A has a valid common law copyright
on the Starr report since Monkey A created the Starr report
itself. That monkey can file for a Registered copyright
which it will get. Once Monkey A has filed for that report,
within the required 5 years to file, there will be a presumption
that it created the Starr report and the burden will be
on anyone else who has not filed (including actual Kenneth
Starr) to prove that he actually is the creator. Interestingly,
in the case at hand, both Monkey A and Starr would have
concurrent rights.
Filing
for a Registered copyright
also gives the owner of the copyright statutory damages
against all infringers (treble damages). A copyright filed
today will last the creator's lifetime plus fifty years.
Trade
Secrets
A trade
secret is defined as "[I]nformation, including a
formula, pattern, compilation, program, device, method,
technique or process that: (a) derives independent economic
value, actual or potential, from being generally known
to the public or to other persons who can obtain economic
value from its disclosure or use; and
(b)
is the subject of efforts that are reasonable under the
circumstances to maintain its secrecy. Cal. Civ. Code
section 3426.1(d).
The
most widely used example of a trade secret is the formula
for Coca-Cola's (R) famed soft drink Coca-Cola (R). They
never filed a patent on the formula and have managed to
protect the secret for more then 100 years (I believe
since 1886). However, if the secret ever got out they
would not be able to stop other persons or entities from
using the formula for their own benefit. Today, if you
use an invention before the public (put the product on
the market) then after one (1) year you forfeit all of
your patent rights in that invention. Trade secrets are
used by those who wish to keep a monopoly over an invention
or idea which is not going to be directly out in the public
eye secret for more then the 20 years provided by the
patent system.
The
idea behind trade secrets is to create contracts which
will prevent those who need to work with the secret from
revealing the secret and to make those persons pay for
the long term damage if they do happen to reveal the secret.
If done
correctly a trade secret may last forever.
Timing
in the IP world and a countries Intellectual Capital
In the
United States the first to invent is the first in right.
Outside of the United States it is the first to file who
is first in right. It is clear that an invention which
might do well in the United States also might do well
outside of the US and an inventor should act accordingly
as the rest of the world is much larger then just the
US.
It therefore
would behoove the inventor to file a patent application
as soon as it is reasonably possible. An application,
even a provisional should not be filed before the inventor
has some idea how their invention may be created as a
provisional app. which does not state such will not preserve
the inventor's 112 rights and will not give said inventor
the necessary priority for future utility or foreign applications.
An inventor
who files too soon should be defined as an inventor who
files without enough "know how" to preserve
his 112 rights or as one who does not allow for the time
necessary to raise the capital necessary to preserve his
foreign rights.
An inventor
who files too lat should be defined as one who's competitor's
manage to file before them in other countries before said
inventor's rights have been preserved (before obtaining
priority).
Either
case allows control of the patents technology out of the
hands of local inventors and therefore the incumbent revenue
which would have therefore entered the US economy.
It should
be noted that this situation prevails, although with different
rules, where trademarks and copyrights are concerned too.
Such
intellectual property may be seen as part of a countries
intellectual capital. The rest of such capital may be
found in the inventors and technologists themselves. Allowing
the control over technology out of the country may also
be a brain drain on the country. Skilled technicians will
be needed outside of the country to service the lost technology
and if the technology is developed here in the US some
one will have to teach the local foreign technicians their
jobs.
WE
HOPE THESE SHORT DISCOURSES IN INTELLECTUAL PROPERTY LAW
HAVE BEEN SUCCESSFUL IN DEEPENING YOUR UNDERSTANDING OF
THIS OFTEN CONFUSING AREA OF LAW.
