McManus & Associates

WHAT TO DO WITH AN IDEA

The first item to consider when an idea surfaces is to determine to what realm of intellectual property law the idea pertains. If it is a name for a product or service it would be classified as a trademark or servicemark; if it is an artistic form or it is an article of utility; such as a wrench, screwdriver, etc., it would be considered to have coverage in the field of utility patents; and, possibly if the configuration of the item is unique enough, the outer appearance could be covered in a design patent.

 

If a trademark, copyright, or patent is sought, a patent attorney or patent agent, both of whom are registered to practice before the U.S. Patent Office, should be contacted.

 

A Patentability Search

 

If the idea is deemed to be patentable matter, a patentability search should first be performed.

 

A patentability search is a search performed through prior art, which consists of previously issued patents, publications, etc., at the U.S. Patent and Trademark Office in Washington, D.C. which is pertinent to the invention at hand.

To have a patentability search performed by an attorney or agent, it is best to provide a drawing of the item if such is available, a description of the item including what it is, what it does, how it works, and why it is believed to be better than anything that is available at the time. This information is useful to a searcher performing the search at the Patent Office.

 

Inasmuch as it is the structure of an item which is patentable, the structure should be set forth as clearly and concisely as possible in the description, assisting the searcher in locating the relevant prior art.

 

The results of the search provide the inventor with a two-fold answer. Part of the answer deals with providing an opinion as to whether the item is patentable or if rights to a substantially identical item are owned by someone else.

 

In this respect, although an item may not be seen on the market, this does not necessarily mean someone does not already have a patent on it. In fact, almost 6,000,000 patents have been issued and there are by no means 6,000,000 products out on the market. What the absence of this item out on the market may mean is that someone owns rights to it but does not know what to do with those rights once same have been obtained.

 

Not only does a patent search provide an opinion on patentability, but, by a review of the art located, the inventor may be apprised of whether manufacturing, selling or use of the product embodying the invention could in fact infringe upon a patent owned by another.

 

This is important in cases where the inventor may not want to procure a patent immediately but rather floods the market with the product, makes a profit, and then applies for a patent within one year of the first disclosure. In this light, if a patentability search produces a piece of prior art that is identical or extremely similar to the product that the inventor proposes, he could well be saved from a suit filed against him by someone else holding a patent which might be infringed by his product.

 

With respect to flooding the market with a product prior to applying for a patent on same, it is necessary to point out that by doing so, an inventor first of all has precluded any rights he may have had in the filing of foreign applications for patent, with the exception of filing in Canada.

 

Secondly, a public disclosure of the product embodying the invention begins a time bar running with the U.S. Patent and Trademark Office, the time bar allowing only twelve months between the date of first public disclosure and the date of filing of a U.S. patent application on the product. In other words, at 12 months and 1 day from a public disclosure of the product, no patent protection is available to the inventor. This is the standard inasmuch as the government of the United States believes once you have disclosed a product and have not applied for a patent within 12 months of disclosure, that you have donated this enterprise or technology in the product to the public, and thus it becomes a matter of public domain, with no rights being obtainable on same by the inventor.

If the patentability search produces a prior art reference which is substantially similar or identical to the product that the inventor proposes, this will preclude any filing of a patent application and save the inventor a significant amount of money.

 

In this respect, the filing of a simple patent application, without any prosecution costs involved, is somewhere in the neighborhood of $2000.00. By having a patentability search performed, which costs considerably less, if in fact it is proved that the inventor has no worthwhile patentable structure, the inventor has been saved the $2000.00 expense.

 

On the other hand, if the product is found to be patentable, the prior art located in the search will provide a foundation around which a patent application may be drafted.

 

Applying for a Patent

 

The process of applying for a patent is extremely complex, and although there are inventors who have taken it upon themselves to attempt this, it is not recommended that one do so. If one decides to apply for a patent on his own, there is a book available from the U.S. Government Printing office entitled The Manual of Patent Examining Procedure which might be located at main libraries. Within this book is a section entitled "The Application" which defines all the specifics required for the filing of a complete application.

 

If, on the other hand, the inventor decides to utilize the services of a patent attorney or agent, all the complexities are handled for the inventor. These complexities include the ordering of patent drawings, which must be done to the specifications required by the government, and the preparation of a complete and concise application.

 

The application will consist of several parts.

 

The first part that is required is a description of the history or background of the invention and of any and all prior art located in the patentability search, if such has been performed.

 

The second part of the application is a summary of the invention wherein the objects that are met by the invention are set forth.

 

The third part of the application is a brief description of the drawings, wherein each view or illustration in the sheets of drawings prepared is described in as concise a manner as possible.

 

The fourth, and usually the longest, section of the application is called the description of the preferred embodiment. Within this section a clear and concise rendering, in words, of the product embodying the invention is to be provided, with all parts having reference numbers assigned thereto, and with these numbers being transferred into the drawings. This concise description must be as thorough as possible inasmuch as any claims which will be drawn to the invention must have a basis within this section, as well as being based on the drawings.

 

Once the description is written, the next section to be prepared for the application is called the clams of the application. These claims provide the basis of coverage which the patent will grant the inventor. The claims are preferably drawn in a manner where the broadcast claim, rendering the most coverage, is first, with sub-claims, referred to as dependent claims, defining the various structures which are covered by the broad concepts in the main or base claim. These claims will define the scope of the invention over which the inventor will, hopefully, obtain protection.

 

The final section of the application is entitled the abstract of the disclosure. In this section, a very simple outline of the structure and its manner of function is to be defined in 250 words or less. This section is usually printed in a patent on the first page thereof to give anyone who is looking in this particular field an idea of where the invention in fact resides in the product.

 

Once all these sections have been appropriately completed, the application is to be signed by the inventor, with a statement included in the declaration page, usually provided by the attorney or agent, that the inventor has read and understood the application and believes that it clearly and precisely defines his invention.

At this point, once the application is approved by the inventor, it is filed with the U.S. Patent Office and a waiting period begins.

 

Depending on the art to which the particular invention pertains, the waiting period could be anywhere from 3 months to 18 months and then an Action is received from the Patent Office.

 

Usually, this is an Examiner’s Action wherein the Examiner has located prior art which he believes, when the teachings of one are combined with the teachings of another, will provide the structure disclosed in the application. In response to this Action, an amendment, possibly including some modifications to the claims, and an argument section is prepared and provided to the Patent Office.

 

Although unlikely, it has happened that the first Action will be a Notice of Allowance, stating that the structure claimed in the application is so unique as to immediately be considered to be patentable without any further argument. Reiterating, this is not usually the case, but it does happen.

 

Once a response is filed to the Examiner’s Action, the waiting period begins again and the above scenario continues until a Final Rejection, or Notice of Allowance, on the application is received.

 

The usual and customary number of Examiner’s Actions leading either to final rejection or Allowance is three. The receipt of and response to such Actions may take anywhere from 3 to 9 months, often rendering the process of obtaining a patent a very timely process.

 

Upon allowance, if such is the case, a final fee must be paid to the Patent Office for the printing of the patent, and now, with the new patent laws, maintenance fees are required to be paid to maintain a patent in force on the 3½, 7½, and 11½ year anniversaries of the date of issue of the patent.

 

It is believed that these patent maintenance fees have been instated in the U.S., as has long been done in the European countries, so that, if an inventor is not in fact using the technology described within the patent, anyone else would be free to use this technology much sooner than would be possible if the 20 year term were fully available without paying maintenance fees.

 

If in fact a Final Rejection is issued on a patent application, and this cannot be overcome by argument with the Examiner, an appeal may be filed with the U.S. Patent and Trademark Office. Although this does not typically happen, there is a possibility of such an appeal being necessary.

 

The statistics with relation to the appeals process for obtaining allowance of a patent run about 50/50, with no more cases being allowed upon appeal than being completely rejected upon appeal.

 

This appeal process is also an extremely expensive process and, if one does not feel it worthwhile, one can, upon receiving a Notice of Final Rejection, merely abandon the application.

 

Conclusion

 

The above is presented to advise of the complexities involved in the preparation and prosecution of a patent application. It is best, although not required, to allow the application to be prepared by someone trained in the patent law field, and to be prosecuted by someone trained in patent law, because of the complexities described above.

 

With respect to obtaining a patent, the term for a patent, if all maintenance fees are paid on same, is 20 years from date of filing. After the 20 years expire, the patent is not renewable and in exchange for the U.S. Government having provided a 20 year monopoly on the invention, at the expiration of the 20 years, this technology is placed in the public domain for others to use in making, using and/or selling a product embodying the invention.

 

A 17 year term should also be kept in mind when looking at the results of a patentability search. In this respect, if a prior art patent located in the search was issued in excess of 17 years prior to the date of the search, or prior to the instant date, this would mean that the teachings within that patent are free to be used by anyone, with no threat of litigation ensuing.

 

In this respect, if the inventor had an idea for an invention, and this invention had been patented in excess of 17 years prior to the immediate date, this would mean that the inventor, although, incapable of applying for a patent application to protect his idea, could in fact make, use, and sell the product without any threat of law suit.

 

It is hoped that this simple overview will provide a synopsis of the process involved in obtaining a patent.

 

 

 

Trademarks

 

A slogan or fanciful name used on or in connection with the sale of goods or services can constitute a trademark or service mark and rights therein (common law trademark rights) are established by the use of the mark in such sales.

 

Rights in a mark are created by actual use (with some exceptions) of the mark in connection with the sale of the goods or services. As sales are made of a product or service under a mark, the purchasing public begins to identify a certain quality of goods or standard of service as coming from a particular source or origin. Thus, a trademark symbolizes the goodwill established by the producer of the goods or services that are sold under that mark.

 

State and/or Federal registrations of the mark are available after the mark is used. However, a Federal application for a mark intended to be used may also be filed. Once used (within a predefined time period) the application proceeds toward registration.

 

Note also that a few states and many foreign countries do not require use before application for a registration of a mark.

 

A Federal registration provides a number of advantages which are as follows:

    1. A registration provides constructive notice of prior rights to a mark for specific goods or services as of the date of registration. This means that a later user/infringer who innocently adopts the same or similar mark for the same or similar goods or services cannot raise the defense of lack of knowledge of the mark and its registration. Without a registration, innocent adoption of a mark can be a good defense, and, if it is adopted in an area which has not penetrated with the subject mark, a second user could establish rights to the use of the mark in that area superior to rights of the first user.
    2.  

    3. The Federal registration provides the option of bringing suit in Federal Court or State Court for infringement.
    4.  

    5. After five years of exclusive and continuous use of the mark, Affidavits to that effect may be filed to make rights to the mark and registration substantially incontestable.
    6.  

    7. Registration prevents others from registering confusingly similar marks.
    8.  

    9. Registration enables placement of a Notice of Registration, ® , after the mark whenever used.
    10.  

    11. Registration provides the owner thereof with a Prima Facie Presumption of Validity of ownership of, and exclusive right-to-use of the mark for the goods or services stated in the registration, which presumption can mature into a conclusive presumption after five years of use of the mark.
    12.  

    13. Lastly, registration enables the owner of the mark to prevent the importation of goods bearing a confusingly similar mark when, after learning of such importation, the owner notifies U.S. Customs officials of such importation.

 

 

A State Registration can be of value in preventing others from obtaining registration in a particular state for the same or similar mark. This is particularly important in the many states which only check their registrations and do not check Federal Registrations. In other words, in some states, someone could obtain a State Registration even though a prior Federal Registration and prior rights in a particular mark already exist.

 

A trademark and the rights established therein, if properly cared for, last forever and if not, the mark and rights therein terminate. A Federal Registration must be renewed every 20 years. Also, after the first 5 years, between the 5 th and 6 th years of registration (no extensions granted), an Affidavit affirming continued use of the mark must be filed. Otherwise, the Federal Registration will be cancelled.

 

To register a trademark, an application for same must be filed with the appropriate fee and an appropriate number of specimens of the mark (or photographs of the mark) as used on or in connection with the goods and/or service.

 

In most states, you can write to the Secretary of State to obtain an application form for registration of a trademark. Application forms for Federal Registration of a mark are available from the Patent and Trademark Office and may be obtained by writing to:

 

The Commissioner of Patents and Trademarks

Washington, D.C. 20231

 

Our office prepares each application for Federal Registration of a trademark or service mark individually, according to the statutory requirements for the type of mark involved.

 

Registration of a certification mark or collective membership mark may also be obtained.

 

It is most likely that at least one objection will be raised against an application by an examining trademark attorney in an Office Action issued on the application. Such rejection may state that the mark is descriptive or is confusingly similar to a registered mark. Again, contact us for assistance in responding to an Office Action.

 

The Government Filing Fee for an application for a Federal Registration of a trademark is presently $245.00 per class.

 

Care should be taken in preparing the application in view of the legal ramifications of the statements made in the application.

 

Selecting and Protecting Your Mark

 

In selecting a service mark or trademark, one which is distinctive or suggestive should be chosen, not one which is merely descriptive or is a common descriptive or generic term for the product or service.

 

To establish rights in a trademark or service mark, the mark must be capable of distinguishing the goods or services from similar goods or services of another and which, in time, can come to have a "secondary meaning". The primary meaning of a mark is the everyday understanding of the word(s) forming the mark. The "secondary meaning" of a mark designates the single source or origin for the goods or services sold under the mark.

 

Also, a priority of use must be established, i.e. the use of a particular mark for goods or services must precede use by another for similar goods or services.

 

After selecting a mark it is best to arrange for a search of trade name and trademark directories and State Registrations as well as a search of Federal Trademark Registrations.

 

Once the mark is believed to be available it may be used immediately. 

Copyright

 

An expression of an idea (a work of authorship) such as a song, an instruction book, a catalog sheet, some business forms, packaging for a product, a painting, a map, a photograph, a sculpture or a pictorial design can be protected by copyright. Rights are established when the "work of authorship" is "fixed" (made, completed, finished). The copyright can then be protected by registering the work, unpublished or published, as soon as possible, and by placing a notice of copyright on the work, preferably on publication of the work. Such a notice must be situated in a conspicuous place on the work as to give reasonable notice of the claim of copyright and should read as follows:

Copyright © 19__, (name of copyright owner)

All Rights Reserved

 

If a copyright notice is placed on the work on publication, it need not be registered to preserve the copyright. However, if it was first published without a copyright notice, application for registration within five years after publication must be made to preserve the copyright.

 

Registration is important since it enables the filing of a suit for infringement and enables the obtaining of an Award of Statutory Damages plus attorney fees.

 

The term of the copyright is the life of the author (if identified), plus 50 years. Where a copyright is obtained by a company, under a work-for-hire situation, the term of the copyright is 75 years from publication or 100 years from creation, whichever is shorter.

 

Unpatentable Ideas – Trade Secrets

 

Certain ideas such as certain technical know-how, methods of doing business, naturally occurring phenomena, laws of nature, etc., are not protectable under our patent laws.

 

If such ideas would be helpful or useful to someone if known by them, a disclosure of such an idea in confidence to them in writing may be made with the understanding that if they use the idea, compensation for the service of submitting the idea to them, for the abstract idea itself, and/or for use of the particular expression of the idea is expected and/or required.

 

Depending on what the idea is, in addition to, or as an alternative to, patent, trademark or copyright protection, trade secret protection may be available to an individual with an idea or other information, such as a customer list, which gives one an advantage over their competition. If the idea relates to a process or technique which can be kept secret, it is possible that the individual with the idea may be better off keeping the idea confidential and using it or arranging to license or sell the idea as a trade secret.

 

This has advantages in that a trade secret or confidential technical know-how has an indefinite life, provided it can be kept secret and confidential. In this respect, some trade secrets become known in a fairly short time after the product involved has been on the market, while others may be maintained secret for many, many years.

 

Anything considered a trade secret should be treated as such by limiting access to it, by keeping it locked up, by marking it confidential, and by requiring all those to whom it is disclosed to agree in writing to keep it confidential. In this way, thousands of people may see it and yet it remains a trade secret.

 

We hope that the above remarks clarify the methods available for protecting an idea. Again, for answers to specific questions on protecting a particular idea or for assistance in perfecting rights in the idea by way of obtaining a Copyright Registration, a Trademark Registration or Letters Patent, please feel free to call.