Intellectual Property Guide

A Basic Guide to Intellectual Property Law

Patents

Patents are government grants which give their owner a right to prevent others from making, using or selling an invention covered by claims of the patent document.

U.S. patents are granted for utility, plant and design inventions. Utility patents are by far the most common and include inventions of useful products, machines, and processes in all fields including mechanical, chemical, biological, electrical and computer software fields.

Design patents cover the ornamental appearance of useful articles. Because a design patent only covers the appearance of an article, the protection it provides is often dismissed as minor. This is not so. Design patents can play an important role in the marketing strategy for a new product or product model even if the product is based on existing technology. A design patent protects against direct copy knock-offs of the ornamental appearance of the product.

Plant patents cover new plant varieties reproduced asexually. Plant patents are an important factor motivating development of improved plant varieties for commercial nurseries.

The term of utility and plant patents for which an application is filed after June 8, 1995 is twenty (20) years from the application date or earliest date from which domestic priority is claimed. The term of patents in force on, or which issue from applications filed prior to June 8, 1995 have a term of seventeen (17) years from issuance or twenty (20) years from filing, whichever is greater. Extensions or adjustments of the patent term may be sought where prosecution is delayed by interferences, appeals or secrecy orders or other patent office delays or where FDA approval of the underlying product was subject to regulatory delays.

Maintenance fees are required three times over the life of a utility patent to maintain the patent in force for its full term. Design patents have a 14-year term. No maintenance fees are required for plant or design patents.

To be patentable, an invention must be novel and not obvious to a person of ordinary skill in the art to which the invention relates. Complex rules called Patent Bars define the "prior art" activities and publications which are used to determine whether an invention is novel and non-obvious. In general, any publication anywhere in the world or commercial activity in the United States prior to the invention or more than a year before the filing date of the application, whichever date is most recent, is probably prior art. In most other countries any publicly available information prior to the application is available as prior art.

Obtaining a Patent

Patents are obtained by filing a patent application with the United States Patent and Trademark Office. The application contains a written description (also referred to as a Specification) of the invention. The patent system is designed to promote progress in science and the useful arts by granting exclusive rights in exchange for a full disclosure of the invention. Consequently, U.S. law imposes strict rules to make certain that the invention is described in the application in a manner which allows others to make and use it. The description must include a disclosure of the best mode contemplated by the inventor at the time the application is filed for practicing the invention.

Drawings are almost always required because the drawings assist in the understanding of the invention. Examples are usually required to be part of the description in chemical and biological applications.

The patent application prepared by the patent attorney is often based on information supplied by the client in the form of an invention disclosure.

The application must conclude with at least one claim which is a legal definition of the invention, worded in a way which differentiates it from what exists in, or is legally obvious from, the prior art.

Before preparing an application, it is usually advisable to have a prior art search performed. While no search may uncover all of the relevant prior art which could potentially make the invention legally "old" or "obvious", most searches do provide a reliable basis for an opinion on whether an invention is patentable. The cost of a search is usually a small portion of the cost of preparing and filing the application. If the opinion is unfavorable, the matter may be dropped without incurring the full cost of a patent application. If favorable, the search results are used to help write the text of the description and claims in a way which improves the likelihood of obtaining a granted patent.

While individuals may represent themselves in preparing, filing and prosecuting a patent application, the US Patent and Trademark Office discourages self representation. Only specially trained patent attorneys or agents are authorized to prepare and prosecute applications on behalf of others. Attorneys who have not been registered as patent attorneys with the United States Patent and Trademark Office cannot prepare or prosecute patent applications on behalf of their clients. The members of Vidas, Arrett & Steinkraus are all registered US patent attorneys, having a variety of different technical backgrounds and education.

After the application is filed, it is examined by a Patent Office examiner familiar with the field of the invention. Applicants are required to disclose to the patent examiner all material prior art information known by the inventors and other connected with the prosecution of the patent application.

Most applications are initially rejected, often for formal reasons or because the examiner has not appreciated the differences between the prior art and the invention. A rejection may be challenged by presenting amendments, declarations and/or arguments against the rejection. If necessary, the rejection may be appealed within the Patent Office and/or to a Federal Court. Typically, successful applications which do not involve an appeal issue in about 24 months to 48 months after being filed.

Simplified, lower-cost "provisional" applications may be filed without any claims, but must be followed within twelve (12) months by a complete patent application. If the complete application includes new matter, only the subject matter of the original provisional application will be accorded the filing date of the "provisional" application on which the complete application is based.

Patent Rights

Patents give their owner the right to exclude others from direct infringement (i.e. making, using or selling the patented invention), from importing products made outside the country by a method or product patented in the US, and from inducing or contributing to the direct infringement by others.

The patent right is enforced against infringers by bringing a civil suit in the United States District Courts for an injunction to stop the infringement and for damages resulting from past infringement. In exceptional cases attorneys' fees and treble damages may also be awarded.

Defenses to an infringement suit generally either attack the allegation of infringement or challenge the validity of the patent, or both. In court, the patent is presumed valid and the presumption may only be overcome by "clear and convincing" evidence.

A patent is not necessary to market an invention. However, without patent protection most inventions may be legally "knocked off" by competitors.

The patent also does not give its owner a right to market the invention. The invention may be an improvement upon an earlier invention covered by an unexpired patent of someone else. If so, marketing the improvement may infringe the earlier patent. Because patentability and infringement involve different issues, it is often advisable to obtain an infringement search and opinion before marketing a new product.

Once an application has been filed a product embodying the invention may be marked "Patent Pending" to warn others that patent protection is being sought. However, such warnings cannot protect against knock-offs. Patent protection only begins after the patent is officially issued. It is illegal to label a product "patent pending" unless an application has been filed and is actually pending in the United States Patent and Trademark Office.

A patent owner may sell or license the patent to another party as a way to exploit the exclusionary right which the patent provides.

Ownership of Patents

Under common law, inventors own their inventions. However, an employer will be found to be the owner of an invention if the inventor was specifically hired to make inventions for the employer. Other employees may have provisions in their employment contract which require assignment of their inventions to their employers. Such provisions are generally enforceable, although some states, such as Minnesota, place limits on the scope of employment agreements to assign inventions. University researchers and industry consultants also frequently will have patent ownership provisions in their funding or consultancy contracts. It is not uncommon for an inventor to have conflicting obligations regarding ownership of an invention which may only be sorted out after a careful legal analysis.

Foreign Patents

Patents are available in most countries. International treaties allow a priority right to be claimed in most of these countries to the earliest filed patent application filing date, provided the same is filed within one year. The priority right allows utility applications filed in another country within one year after the filing of a US application to be treated in the foreign country as if it had been filed in the foreign country on the same day as the US application. Other treaties allow international applications to be filed covering multiple countries in a single application and prosecuted together for a least part of the application procedure. Inventive activity in countries that are members of the North Atlantic Free Trade Agreement (NAFTA) or GATT's World Trade Organization may be referenced to prove a date of invention in the United States.

Although the US allows inventors to obtain patents if the application is filed within one year of a publication, offer for sale, or public use of the invention, most other countries do not allow any public disclosure of the invention prior to the effective date of a patent application.

Consequently, if foreign patent rights are to be sought, it is extremely important to avoid any public disclosure or commercialization of an invention before the US application is filed.

Product designs are protectable in many foreign countries under industrial design registration laws. In general these registration laws impose a somewhat lower standard for validity than the US non-obviousness standard. Benefit of the filing date of a US design patent can be claimed for industrial design registration applications in most countries but the foreign application must be filed within 6 months of the filing date of the US application.

Trademarks

A trademark is any word, name, symbol, or device, or combination thereof adopted and used by a manufacturer or merchant to identify the source of its goods and to distinguish them from those manufactured or sold by others. A service mark differs from a trademark only in that a service mark identifies the source of services rather than the source of goods. Both are referred to here as "marks".

A person has common law property rights to his or her mark as soon as one begins to use it on one's goods or to identify one's services. However, a person cannot acquire rights in a mark by such use if the mark is identical with, or confusingly similar to, a mark already owned by another and used for similar goods.

The owner of a mark may take action to stop others from using the mark, or a similar mark on similar goods or services. Trademarks protect purchasers from being deceived, thus insuring that purchasers will obtain the goods or services they want. Trademarks also protect the good will and reputation of the owner of the mark.

Registration is not necessary to use a mark, but a trademark or service mark should be registered in the United States Patent and Trademark Office if it has been used in interstate or foreign commerce. Trademark registration should occur if the mark is distinctive and not confusingly similar to a mark owned by another, when used in association with the goods or services which they identify. Federal registration provides significant advantages for protection and enforcement of a trademark.

An application for federal registration of a mark may now be filed on the basis of a bona fide "intent to use" the mark in interstate or foreign commerce. However, the mark will not be registered until evidence is submitted to the Patent and Trademark Office that the mark was actually used in such commerce.

Because of their nature, some marks are not acceptable as marks for federal registration. This includes descriptive and deceptively misdescriptive marks. A mark may lose its proprietary significance if allowed to be used by the public as the common name for an article. Such lost marks include "aspirin," "cellophane," "milk of magnesia," "nylon," and "escalator", to name but a few.

In addition to Federal registration of trade and service marks, there are provisions in Minnesota and other states for registration of marks used within a particular state.

Trademarks should be distinguished from tradenames which are names businesses, firms, companies, etc. use to identify themselves. Tradenames cannot be federally registered but they may be registered in individual states. In general, tradenames are given similar legal protection to that provided to state trade and service marks.

Since the choice and protection of marks and tradenames involves meeting various legal requirements, legal counsel familiar with this area of law, such as Vidas, Arrett & Steinkraus, should be consulted before a mark or name is adopted.

REQUEST FOR TRADEMARK OR SERVICE MARK SEARCH is a form which provides all the information which the firm needs to conduct a trademark of service mark search on your behalf.

REQUEST FOR TRADEMARK OR SERVICE MARK REGISTRATION is a form which provides all the information which the firm needs to prepare a Federal trade or service mark registration on your behalf.

Unregistered trademarks and service marks are properly identified with the symbols ™ and SM, respectively. The symbol ® may only be used to identify federally registered marks.

Enforcement

Both State and Federal Courts hear trademark suits. Federal Courts have additional jurisdictional requirements unless the suit is based on a federally registered mark. Relief in trademark litigation includes:

Preliminary injunctive relief to enjoin infringement during the litigation
Money damages after trial on the merits
Permanent injunctive relief, after trial on the merits
Destruction of offending products or packaging
Increased damages and attorney fees in exceptional cases
Imported goods may also be excluded by the United States Customs Service for trademark infringement

Trade Secrets

Information which is not generally known and which provides commercial advantage to those who use the information may be protected as trade secrets. Trade secret protection is available for a much broader range of subject matter than is available under the patent laws. A trade secret may be a formula, drawing, process information, customer list, quality assurance criteria, cost, profit margin or pricing information, etc. Civil actions may be brought to prevent or compensate for unauthorized disclosure or use of the trade secret information by persons who have an obligation of confidentiality to the trade secret owner or who obtain the information by improper means. No protection is available, however, against disclosure or use by persons who develop the information independently, or who obtain it from sources not bound to maintain it confidential. Under the Theft of Trade Secret provisions of the Economic Espionage Act of 1996, Title 18 United States Code §1832, criminal penalties of up to 10 years imprisonment, fines of up to $5,000,000, and criminal forfeiture are now also available for trade secret misappropriation.

Defenses to a legal action for trade secret misappropriation include assertions that the information was independently developed, that it is generally available to those in the relevant field and/or that secrecy was lost because the owner did not use reasonable means to maintain its secrecy. It is recommended commercial practice to maintain adequate records showing the existence of secrecy agreements with employees, customers, suppliers or licensees who were given access to the trade secret information and that the information was identified as confidential to those who learned it. The existence of secrecy agreements is often critical to a successful action for trade secret misappropriation.

Legal counsel specialized in intellectual property protection, such as Vidas, Arrett & Steinkraus, should be consulted for preparing secrecy agreements, developing internal corporate procedures for identifying and handling trade secrets, and for prosecuting or defending trade secret lawsuits.

Copyrights

A copyright is a government grant which reserves to authors the exclusive control of their "writings" for a period of time, typically about 75 years. Since 1978, copyright in both published and unpublished works has been controlled exclusively by Federal statute.

Copyright arises from the original creation and expression of ideas and thoughts in words, sentences, paragraphs, sketches, pictures, graphs, or any other method of conveying thoughts or ideas, generically referred to as "works of authorship." An author under the Federal statute may be the creator of a work of authorship or, in some circumstances, an employer of the creator.

In contrast to patent law, a copyright does not protect the underlying idea, but only the means or manner in which the idea is expressed. Works of authorship protected by copyright under the present statute include:

Literary works
Musical works, including any accompanying words
Dramatic works, including any accompanying music
Pantomimes and choreographic works
Pictorial, graphic, and sculptural works
Motion pictures and other audiovisual works
Web sites
Software

Because copyright conjures up images of artistic expressions, copyright is often overlooked in the United States as an option in a commercial intellectual property program. In Europe, in contrast, copyright is now prominent for protecting industrial property. For example, valuable copyright protection is available in the United States, for the following:

Technical and shop manuals
Catalogs and brochures
Instruction and policy manuals
Advertising
Any other work, the copying of which would benefit a competitor

Copyright protection begins with creation of a work. For published works it is recommended that the original and all copies of the work carry a copyright notice e.g. the word "copyright" (©is used after registration), the owner's name, and the date of publication. Applications for registration of works of authorship are filed with the Copyright Office. Registration is not necessary to create a copyright but is a prerequisite to maintaining a suit for copyright infringement.

Enforcement

Copyright infringement requires copying of the copyrighted work. Thus, a copyright protects the author against others who substantially copy the work without permission, but it does not protect against someone who, without knowledge of the author's work or access to it, creates a similar work.

Federal Courts have exclusive jurisdiction over copyright suits. Relief in copyright litigation includes:

Preliminary injunctive relief to prevent copying or distribution of copies during the lawsuit
Preliminary impoundment of all copies or means by which copies may be reproduced during the lawsuit
Money damages - in the form of actual damages or the infringer's profits, or statutory damages - after trial on the merits
Destruction or other reasonable disposition of all infringing copies or means by which such copies can be reproduced
Increased statutory damages and costs and reasonable attorney fees

In addition, the Court or the United States Customs Service can prohibit importation of infringing copies.

Infringement damages are limited if the copying occurred before registration of the copyright.

Mask Works

Federal statutory protection is available for mask works fixed in semiconductor chip products. Although administered by the Register of Copyrights, this protection differs in many respects from the provisions of the Copyright Act.

Mask works are defined in the Federal statute as: a series of related images, however fixed or encoded (1) having or representing the predetermined, three-dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product; and (2) in which series the relation of the images to one another is that each image has the pattern of the surface of one form of the semiconductor chip product.

Semiconductor chips are used to operate many consumer, medical, commercial, and industrial products and machinery, and are defined in the Federal statute as: the final or intermediate form of any product (1) having two or more layers of metallic, insulating, or semiconductor material, deposited or otherwise placed on, or etched away or otherwise removed from, a piece of semiconductor material in accordance with a predetermined pattern; and (2) intended to perform electronic circuitry functions.

Protection of mask works extends merely to the layout or topography of the chip. It does not extend to any idea or concept associated with the mask work. Just as ideas are not protected by copyright, no protection is available for the process of making the mask work.

To be protected a mask work must be original. However, no examination of originality is performed by the Copyright Office.

Notice of a mask work is optional. The form of notice should include the words MASK WORK, the symbol and the name of the owner of the mask work.

Registration of mask works must occur within two years after the date on which the mask work is first commercially exploited, or the opportunity to secure protection under the Act will be lost. Protection lasts for 10 years.

The owner of a mask work is the person who created the mask work, unless the work was done within the scope of a person's employment. In that event, the owner of the mask work is the employer. Transfer of these ownership rights allows the owner to transfer all of the rights or to license all or fewer than all of the rights. A transfer or license must be in writing and signed by the owner of the right or by a duly authorize agent of the owner.

Reverse engineering of a registered mask work is permitted solely for the purposes of teaching, analyzing, or evaluating the concepts or techniques embodied in the mask work or in the circuitry, logic flow, or organization of components used in the mask work. The person who performs legitimate reverse engineering may incorporate the information learned in a different original mask work. Legitimate reverse engineering is an affirmative defense to an infringement claim.

Getting Started

Prospective clients of Vidas, Arrett & Steinkraus are encouraged to schedule an initial half-hour conference during which fees will be discussed and a copy of the firm fee agreement will be provided. There is no charge for this initial conference. New clients will be expected to sign the fee agreement before any work is undertaken on their behalf and may be required to make payment in advance.

For a consultation with Vidas, Arrett & Steinkraus, P.A. call 952.563.3000 or send us an e-mail. Located in the Minneapolis-St. Paul area, we serve clients in Minnesota, throughout the country and around the world.