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What is Intellectual Property?
Intellectual property consists of patents, trademarks,
copyrights, trade dress, trade secrets, and the like that constitute
valuable and protectable knowledge that a person or business may
possess. Although the value is generally in the application of
the idea in commerce, the property itself is often identified
by a written document (a patent, a license agreement, a trademark,
etc.) and the differences described between the improvement and
the "prior art", i.e. what was already known before the development
of the intellectual property.
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What Is A Patent?
A patent is a property right granted by the United States
government only to the true inventor, excluding all others from
making, using or selling the invention. A patent is granted
for a specific term after which it enters public domain and
may be freely used by anyone. They allow the holder exclusive
right to make, use or sell the invention within the United States.
In the United States, priority and defensive rights go first to
the first true inventor who diligently reduces his invention to
practice. This generally means the first to invent, AND quickly
file for a patent will have preference over those that invent
later, or those that delay an unreasonable time in the filing
of their patent. The ability also exists to carry over this prior
to many other countries.
Patents are granted for any new and useful process, machine,
manufacture, or composition of matter. Although, in general,
mathematical formulas are considered to be not patentable, recent
changes have paved the way for patents protecting business methods
and computer programs. Patents are not issued for perpetual motion
machines, printed matter or mere "ideas", but rather on the tangible
expression of those ideas.
A new use of a known process, machine, manufacture, composition
of matter or material may be eligible for patent protection.
However, a patent is NOT granted if the invention was sold or
publicly known anywhere in the world for more than one year
prior to filing for a patent. This is often referred to as
the 1-Year Rule.
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Is My Idea Patentable?
Even if you have a new idea or innovated use that may
a meet the above criteria, there are many statutory requirements
that must be met before a patent is granted. By statute, 35 U.S.C.
§102 states a person shall be entitled to a patent unless:
- the invention was known or used by others in this country,
or patented or described in a printed publication in this or
a foreign country, before the invention thereof by the applicant
for patent, or
- the invention was patented or described in a printed publication
in this or a foreign country or in public use or on sale in
this country, more than one year prior to the date of the application
for patent in the United States, or
- the inventor has abandoned the invention, or
- the invention was first patented or caused to be patented,
or was the subject of an inventor's certificate, by the applicant
or his legal representatives or assigns in a foreign country
prior to the date of the application for patent in this country
certificate filed more than twelve months before the filing
of the application in the United States, or
- the invention was described in a patent granted on an application
for patent by another inventor filed in the United States before
the invention thereof by the applicant for patent, or on an
international application by another who has fulfilled the requirements
of paragraphs (1), (2), and (4) of section 371(c) of this title
before the invention thereof by applicant for patent, or the
inventor did not invent the subject matter sought to be patented,
or before the applicant's invention thereof the invention was
made in this country by another who had not abandoned, suppressed,
or concealed it. In determining priority of invention there
shall be considered not only the respective dates of conception
and reduction to practice of the invention, but also the reasonable
diligence of one who was first to conceive and last to reduce
to practice, from a time prior to conception by the other.
The patent laws impose the following additional requirements
for patentability:
- The invention must be any new and useful process, machine,
[article of] manufacture, or composition of matter, or any new
and useful improvement thereof, pursuant to 35 U.S.C. § 101,
thus, no matter how novel or how valuable an "invention" may
be, it cannot be patented if it does not fall under one of the
aforementioned classes; and
- The invention must be non-obvious to a person of ordinary
skill in the art.
The latter requirement is the most difficult test to meet. The
Patent Statute sets forth this requirement as follows:
35 U.S.C. §103. CONDITIONS FOR PATENTABILITY: NON-OBVIOUS SUBJECT
MATTER. A patent may not be obtained though the invention
is not identically disclosed or described as set forth in section
102 of this title, if the differences between the subject matter
sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which
said subject matter pertains. Patentability shall not be negatived
by the manner in which the invention was made.
The United States Supreme Court has set forth the following
test or procedure to be used in applying the above statutory requirement
for non-obviousness:
The scope and content of the prior art are to be determined;
Differences between the prior art and the invention at issue are
to be ascertained;
A level of ordinary skill in the pertinent art is resolved;
Against this background, the obviousness or non-obviousness of
the subject matter is determined.
In addition to all of this, the Supreme Court has further stated
that secondary considerations may also be considered indicia of
obviousness or nonobviousness. These can include:
commercial success of the invention;
long felt but unsolved needs by the marketplace;
failure of others in attempting to solve the same problem;
state of the art teaching in a different direction/solution;
unexpected results achieved by the invention; and
copying by others in the marketplace.
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Are there Different Types of Patents?
Yes. The main classifications of patents are as follows:
A Provisional Patent is a limited, one-year filing
with limited power that can be utilized for certain cases. It
is not examined, and will be abandoned after one year unless the
inventor takes some steps to convert this to a Utility Patent.
It is often used by inventors to raise capital, gauge marketability,
and/or to test various embodiments. Although filing a Provisional
Patent appears to be easy to the un-informed, special care to
maintain priority rights as well as many other important
patent considerations need to be strategized.
A Utility Patent protects the function
of an invention, and is granted for a twenty-year term for new,
useful and non-obvious process, machine, article of manufacture, composition
of matter, business methods or an eligible improvement thereof.
This is the most common type of patent protection.
A Design Patent protects the overall appearance,
or the ornamental nature of an invention. If used appropriately,
it can be of value in protecting the aesthetics of new industrial
designs. It is granted for fourteen-year protection for any new,
original and visible ornamental design of an invention.
A Plant Patent is a twenty-year grant for asexually
reproduced varieties of distinct or new plants, hybrids and
seedlings other than tuber-propagated or existing in an uncultivated
state.
Does a Patent Make an Idea Valuable?
No. Although many people assume that a patented item
will sell itself, it must be kept in mind that a patent is not
a grant of a right to sell, or to lend value, to an invention.
It is exclusively the right to exclude others from making, using,
or selling. It provides ownership of intellectual property.
However, there are many ways to financially benefit from a patent,
such as through sale, licensing, or assignment of rights. Whether
your are an independent inventor or a business, a patent can be
a valuable asset when used as a tool to aid in marketing the product,
to protect the ownership of an invention, or to help identify
the exact nature of any property that is being licensed, assigned,
or sold.
What is Patent Pending?
The words "Patent Pending" are placed on a product by
a manufacturer to inform the public (and competition) that an
application has been filed covering that product. It is a warning
sign, like a "Do Not Trespass" sign to warn potential infringers.
It is a felony to deceive the public by stating that a product
is "patent pending" when it is not.
How Long Does the Patent Process Take?
After filing a patent application and becoming "patent
pending", the application is examined by the United States Patent
and Trademark Office to insure the requirements for patentability
are met. This process can take a little as six (6) months for
simple design patents, to between 12 and 24 months for simple
and complex mechanical utility patents, to well longer for complex
electronic or pharmaceutical products. It is normal for an application
to be challenged by the USPTO at least once requiring the inventor,
or his representative, to provide an answer, a legal argument,
an amendment or similar prosecution. Although the Patent Office
has a goal of issuing patents within 18 months, this is merely
a goal that is missed as often as it is met. Once a patent is
issued, it becomes public knowledge.
Is International Patent Protection Available?
Patents are generally issued by individual countries or
groups of countries for protection within those areas. There
does exist, however, the Patent Cooperation Treaty, which lays
out an agreed upon mechanism that allows the inventor in the United
States to delay filing in individual countries for up to 30 months
after the first U.S. Patent is filed. However, the first important
deadline occurs exactly one year after filing for a U.S. Patent.
Because of the complexity and expense, this option is not chosen
as often. It would be advisable to discuss these options with
your patent attorney approximately 9 months after filing a U.S.
patent.
Even without international protection, your U.S. Patent will
protect against the importation of an infringing product into
the U.S., or the sale of your product made here overseas.
What is a Trademark?
A trademark is either a word, or groups of words, a phrase, a
symbol or design, a logo or combination thereof which identifies
the source of goods or services to be rendered. Normally
a trademark for goods appears on the product and/or packaging,
while a service mark appears in advertising for the service. All
registered marks are valid throughout the United States and can
last indefinitely as long as the owner continues to renew the
mark and use the mark in interstate commerce.
Specifically, a trademark is a word, phrase, symbol or
design, or a combination of words, phrases, symbols or designs,
that identifies and distinguishes the source of the goods of one
party from those of others.
A service mark is the same as a trademark, except that
it identifies and distinguishes the source of a service rather
than a product. Throughout this section, the terms "trademark"
and "mark" refer to both trademarks and service marks.
What is a Copyright?
A copyright is a form of ownership and legal protection for "original
works of authorship." The copyrighted work must be
in tangible form. The Copyright Act generally gives the
owner of the copyright the exclusive right to reproduce, prepare
derivative works, distribute copies, publicly perform, or display
the work of artistic expression. In cases of "works
for hire" the employer and not the employee is considered
the owner of the copyright.
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Copyrightable works include the following categories:
- 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
- sound recordings
- architectural works
These categories should be viewed broadly. For example, computer
programs and most "compilations" may be registered as
"literary works"; maps and architectural plans may be
registered as "pictorial, graphic, and sculptural works."
Several categories of material are generally not eligible for
federal copyright protection. These include among others:
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 is a Trade Secret?
The modern definition of trade secret encompasses any information
that can be used in the operation of a business or other enterprise
and that is sufficiently valuable and secret to afford an actual
or potential economic advantage over others.
The law provides protection for trade secrets if certain legal
requirements are met. However, unlike patents, copyrights and
trademarks, there is no office or agency where you can file a
trade secret application, obtain a review by a qualified examiner,
and be issued an official trade secret certificate.
The legal protection of trade secrets instead requires self-administration
by the trade secret owner. And trade secrets, once lost, are
lost forever.
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