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New Innovator Guide |
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Protecting Your Ideas |
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In this Section
"If it doesn't have a copyright notice, it's not copyrighted." This was true in the past, but today almost all major nations follow the Berne copyright convention. For example, in the USA, almost everything created privately and originally after April 1, 1989 is copyrighted and protected whether it has a notice or not. The default you should assume for other people's works is that they are copyrighted and may not be copied unless you know otherwise. There are some old works that lost protection without notice, but frankly you should not risk it unless you know for sure. It is true that a notice strengthens the protection by warning people, and by allowing one to get more and different damages, but it is not necessary. If it looks copyrighted, you should assume it is. This applies to pictures, too. You may not scan pictures from magazines and post them to the net, and if you come upon something unknown, you shouldn't post that either. The correct form for a notice is: "Copyright [dates] by [author/owner]" You can use C in a circle ”© instead of "Copyright" but "(C)" has never been given legal force. The phrase "All Rights Reserved" used to be required in some nations but is now not needed. "If I don't charge for it, it's not a violation." False. Whether or not you charge can affect the damages awarded in court, but that's essentially the only difference. It's still a violation if you give it away, and there can still be heavy damages if you hurt the commercial value of the property. "If it's posted to Usenet, it's in the public domain." False. Nothing modern is in the public domain anymore unless the owner explicitly puts it in the public domain -- explicitly, as in you have a note from the author/owner saying, "I grant this to the public domain." Those exact words or words very much like them. Some argue that posting to Usenet implicitly grants permission to everybody to copy the posting within fairly wide bounds, and others feel that Usenet is an automatic store and forward network where all the thousands of copies made are done at the command (rather than the consent) of the poster. This is a matter of some debate. But even if the former is true (and in this writer's opinion we should all pray it isn't true), it simply would suggest posters are implicitly granting permissions "for the sort of copying one might expect when one posts to Usenet," and in no case is this a placement of material into the public domain. It is important to remember that when it comes to the law, computers never make copies, only human beings make copies. Computers are given commands, not permission. Only people can be given permission. Furthermore, it is very difficult for an implicit license to supersede an explicitly stated license that the copier was aware of. Note that all this assumes the poster had the right to post the item in the first place. If the poster didn't, then all the copies are pirated, and no implied license or theoretical reduction of the copyright can take place. Copyrights can expire after a long time, putting something into the public domain, and there are some fine points on this issue regarding older copyright law versions. However, none of this applies to an original article posted to Usenet. Note that granting something to the public domain is a complete abandonment of all rights. You can't make something "PD non-commercial use." If your work is PD, other people can even modify one byte and put their name on it. "My posting was just fair use!" See other notes on fair use for a detailed answer, but bear the following in mind: The "fair use" exemption to copyright law was created to allow things such as commentary, parody, news reporting, research and education about copyrighted works without the permission of the author. That's important so that copyright law doesn't block your freedom to express your own works -- only the ability to express other people. Intent and damage to the commercial value of the work are important considerations. Are you reproducing an article from the New York Times because you needed to criticize the quality of the New York Times , or because you couldn't find time to write your own story, or you didn't want your readers to have to pay for the New York Times web site? The first is probably fair use, the others probably aren't. Fair use is almost always a short and almost always attributed. (One should not use more of the work than is necessary to make the commentary.) It should not harm the commercial value of the work in the sense of people no longer needing to buy it, which is another reason why reproduction of the entire work is generally forbidden. Note that most inclusion of text in Usenet follow-ups is for commentary and reply, and it doesn't damage the commercial value of the original posting (if it has any) and, as such, it is fair use. Fair use isn't an exact doctrine, either. The court decides if the right to comment overrides the copyright on an individual basis in each case. There have been cases that go beyond the bounds of what I say above, but in general they don't apply to the typical net misclaim of fair use. It's a risky defense to attempt. Facts and ideas can't be copyrighted, but their expression and structure can. You can always write the facts in your own words. See the DMCA alert (below) for recent changes in the law. "If you don't defend your copyright you lose it." False. Somebody has that name copyrighted! Copyright is effectively never lost these days, unless explicitly given away. You also can't "copyright a name" or anything short like that, such as almost all titles. You may be thinking of trademarks, which apply to names, and can be weakened or lost if not defended. You generally trademark terms by using them to refer to your brand of a generic type of product or service. Like an "Apple" computer. Apple Computer "owns" that word applied to computers, even though it is also an ordinary word. Apple Records owns it when applied to music. Neither owns the word on its own, only in context, and owning a mark doesn't mean complete control -- see a more detailed treatise on this law for details. You can't use somebody else's trademark in a way that would unfairly hurt the value of the mark, or in a way that might make people confuse you with the real owner of the mark, or which might allow you to profit from the mark's good name. For example, if I were giving advice on music videos, I would be very wary of trying to label my works with a name like "mtv." "If I make up my own stories but base them on another's work, my new work belongs to me." False. Copyright law is quite explicit about the making of what are called "derivative works" -- works based or derived from another copyrighted work. It is the exclusive province of the owner of the original work. This is true even though the making of these new works is a highly creative process. If you write a story using settings or characters from somebody else's work, you need that author's permission. Yes, that means almost all "fan fiction" is a copyright violation. If you want to write a story about Jim Kirk and Mr. Spock, you need Paramount's permission, plain and simple. Now, as it turns out, many, but not all holders of popular copyrights, turn a blind eye to "fan fiction" or even subtly encourages it because it helps them. Make no mistake, however, that it is entirely up to them whether to do that. There is one major exception -- parody. The fair use provision says that if you want to make fun of something like Star Trek, you don't need their permission to include Mr. Spock. This is not a loophole; you can't just take a non-parody and claim it is one on a technicality. The way "fair use" works is you get sued for copyright infringement, and you admit you did infringe, but also admit that infringement was a fair use. A subjective judgment is then made. "They can't get me. Defendants in court have powerful rights!" Copyright law is mostly civil law. If you violate copyright, you would usually get sued, but not be charged with a crime. "Innocent until proven guilty" is a principle of criminal law, as is "proof beyond a reasonable doubt." Sorry, but in copyright suits, these don't apply the same way or at all. It's mostly which side and set of evidence the judge or jury accepts or believes more, though the rules vary based on the type of infringement. In civil cases you can even be made to testify against your own interests. "Oh, so copyright violation isn't a crime or anything?" Actually, recently the USA commercial copyright violation involving more than 10 copies and value over $2500 was made a felony. So watch out. At least you get the protections of criminal law. On the other hand, however, don't think you're going to get people thrown in jail for posting your e-mail. The courts have much better things to do. This is a fairly new, untested statute. In one case, an operator of a pirate BBS that didn't charge was acquitted because he didn't charge, but congress amended the law to cover that. "It doesn't hurt anybody -- in fact it's free advertising." It's up to the owner to decide if they want the free ads or not. If they want them, they will be sure to contact you. Don't rationalize whether it hurts the owner or not, ask them. Usually that's not too hard to do. In times past, ClariNet published the very funny Dave Barry column to a large and appreciative Usenet audience for a fee, but some person didn't ask, and forwarded it to a mailing list, got caught, and the newspaper chain that employs Dave Barry pulled the column from the net, pissing off everybody who enjoyed it. Even if you can't think of how the author or owner gets hurt, think about the fact that piracy on the net hurts everybody who wants a chance to use this wonderful new technology to do more than read other people's flamewars. "They e-mailed me a copy, so I can post it." To have a copy is not to have the copyright. All the e-mails you write are copyrighted. However, e-mail is not, unless previously agreed, secret. So you can certainly report on what e-mail you are sent and reveal what it says. You can even quote parts of it to demonstrate. Frankly, somebody who sues over an ordinary message would almost surely get no damages, because the message has no commercial value, but if you want to stay strictly in the law, you should ask first. On the other hand, don't go nuts if somebody posts email you sent them. If it was an ordinary non-secret personal letter of minimal commercial value with no copyright notice (like 99.9% of all e-mail), you probably won't get any damages if you sue them. Note as well that, the law aside, keeping private correspondence private is a courtesy one should usually honor. "So I can't ever reproduce anything?" This myth is actually one sometimes generated in response to this list of myths. No, copyright isn't an ironclad lock on what can be published. Indeed, by many arguments, by providing reward to authors, it encourages them to not just allow, but fund the publication and distribution of works so that they reach far more people than they would if they were free or unprotected -- and unprompted. However, it must be remembered that copyright has two main purposes, namely the protection of the author's right to obtain commercial benefit from valuable work, and more recently the protection of the author's general right to control how a work is used. While copyright law makes it technically illegal to reproduce almost any new creative work (other than under fair use) without permission, if the work is unregistered and has no real commercial value, it gets very little protection. The author in this case can sue for an injunction against the publication, actual damages from a violation, and possibly court costs. Actual damages means actual money potentially lost by the author due to publication, plus any money gained by the defendant. But if a work has no commercial value, such as a typical e-mail message or conversational Usenet posting, the actual damages will be zero. Only the most vindictive (and rich) author would sue when no damages are possible, and the courts don't look kindly on vindictive plaintiffs, unless the defendants are even more vindictive. The author's right to control what is done with a work, however, has some validity, even if it has no commercial value. If you feel you need to violate a copyright "because you can get away with it because the work has no value," you should ask yourself why you're doing it. In general, respecting the rights of creators to control their creations is a principle many advocate adhering to. In addition, while more often than not people claim a "fair use" copying incorrectly, fair use is a valid concept necessary to allow the criticism of copyrighted works and their creators through examples. But please read more about it before you do it. In Summary These days, almost all things are copyrighted the moment they are written, and no copyright notice is required. Copyright is still violated whether you charged money or not, only damages are affected by that. Postings to the net are not granted to the public domain, and don't grant you any permission to do further copying except perhaps the sort of copying the poster might have expected in the ordinary flow of the net. Fair use is a complex doctrine meant to allow certain valuable social purposes. Ask yourself why you are republishing what you are posting and why you couldn't have just rewritten it in your own words. Copyright is not lost because you don't defend it; that's a concept from trademark law. The ownership of names is also from trademark law, so don't say somebody has a name copyrighted. Fan fiction and other work derived from copyrighted works is a copyright violation. Copyright law is mostly civil law where the special rights of criminal defendants you hear so much about don't apply. Watch out, however, as new laws are moving copyright violation into the criminal realm. Don't rationalize that you are helping the copyright holder; often it's not that hard to ask permission. Posting e-mail is technically a violation, but revealing facts from e-mail you got isn't, and for almost all typical e-mail, nobody could wring any damages from you for posting it. The law doesn't do much to protect works with no commercial value. DMCA Alert! Copyright law was recently amended by the Digital Millennium Copyright Act , which changed net copyright in many ways. In particular, it put all sorts of legal strength behind copy-protection systems, even limiting in some views some fair use rights. The DMCA also changed the liability outlook for ISP's in major ways. Linking Might it be a violation just to link to a web page? That's not a myth, it's undecided. Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page What About Your Invention is Patentable? The United States Patent and Trademark Office offers several types of patent protection to inventors. Generally one or another type of patent is most appropriate to a new invention, but frequently an inventor is well advised to seek more than one type. Because this information is written for the small entity independent inventor, the "utility" patent and the "design" patent are addressed, because these forms of patent protection are usually most appropriate. The Design Patent Design patents protect the ornamental nature of a new invention. One will immediately understand what is protected by reading a design patent. The legal claim, and there is only one claim in a design patent, simply states that what is protected is depicted in the accompanying drawings. There is no elaborate detailed description of how the invention is constructed and how it works in a design patent. A brief description of the drawing figures merely states what views are being shown. So what defines the particularity of protection in the given invention? Only the drawing figures. These figures are drawn to depict the invention with accuracy from every side. You may have guessed it already; but the design patent protects the outward appearance of inventions. That's all. Should a competitor find a way of making a device that accomplishes the same results as your design patented invention, but which does not look like yours, he or she can make and sell such a device without worrying about infringing your design patent. Design patents are useful for preventing counterfeiting or "same image knockoffs," and possibly protect against competitive goods that look similar, but the determination of what-looks-like-what is subjective and often difficult to anticipate. The Utility Patent There are at least ten times as many utility patents as there are design patents. You may be somewhat familiar with utility patents but do not know there are any other types. If you are asked, "Is it patented," they usually mean. “Is there utility patent protection.” Utility patents have the potential to protect inventions very strongly and quite broadly. This form of patent protection addresses the structure of the invention and how it works. Utility patents also protect methods, such as a method of baking a cake; i.e., sift four cups of flour into a bowl; next, whip two eggs, etc. Utility patents protect new materials as well. Often a novice inventor will worry that if he protects a particular physical structure in his patent, then others will simply change the structure to some degree and "get around" his patent so as to successfully compete. Although this can happen, two things can make it difficult if not impossible in many cases. First, alternate embodiments of the same invention can't avoid infringement if the patent claims use broad language to cover most of the important possible embodiments, not just the one or more described within the patent application per se. Second, if the patented invention is the best embodiment; i.e., least parts, lowest cost, accomplishes its objectives with great efficiency, and so on, one would expect that other embodiments being less desirable will not be competitive in the marketplace. The key lesson taught by this issue is that patent protection cannot make up for poor invention. By law, design/utility patents are prepared and prosecuted before the U.S. PTO by registered patent agents and patent attorneys, but you, the inventor, may also file them pro se, that is. Needless to say, this is not a very good idea, except for the Provisional Patent application. Current filing fees are, at the time of this writing, $160 for design patent applications and $395 for utility patent applications. The cost to have these applications prepared and prosecuted is usually much less for the design patent. Design patents are valid for 14 years from date of issuance and utility patents are valid for 20 years from the date of filing. Neither can be renewed once expired. The design patent does not require maintenance fees but the utility patent requires a fee paid 3, 7 and 11 years after date of issuance in order to keep it in force. If a new invention is, disclosed to the general public such as by a press or new-product release, or if it is offered for sale, you lose your right to file for patent protection in most foreign countries. However, you may still file a U.S. patent application within one year of the disclosure or offer for sale. If a U.S. patent is filed prior to any public disclosure or offer for sale, foreign patents may be filed within one year of the U.S. filing. In such cases the date of priority given to such foreign filings is the U.S. filing date. This rule allows you to publicly disclose and sell your invention after a U.S. filed application, and not worry about others getting foreign filing date priority. However, if foreign filings are not completed within the one-year grace period, you lose your right to assert the U.S. filing date as your foreign application priority date. Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page In order to be able to apply for a patent on a product, you need to know whether anything like it has already been patented. In order to determine this, you'll need to conduct a "patent search" to discover if a similar product has ever been patented. This process requires researching through patents in your specific category, as far back in history as possible. For about $500, you can do this through a patent attorney or patent agent office. But if you have the time and your city has a patent depository library, you can also do your own preliminary search for free. There are more than eighty U.S. Patent Depository Libraries located throughout the United States, at least one per state. But first, here's the difference between a "patent" search and "trademark" search. Patent Searches A patent search is a search of all the patented items in the U.S. Patent and Trademark archives to see if your product has already been patented. Up until 1995, patent durations were for 17 years from the date of the patent's issue. Therefore if you happen to find any patents exactly like yours, which have expired, these patents are now "public domain" and cannot be patented again. Similarly, if you find a patent, which is still active, you will not be able to patent your product unless it is different enough. However, finding existing patents, whether in the public domain or active, is very valuable to you because it can help you and your patent attorney develop your patent so that it isn't rejected based on past claims of these existing patents. This is where a good patent attorney is crucial. A patent search is a more specialized task than a trademark search, because to conduct a thorough patent search really requires thought and analysis. While we recommend getting a patent search with a qualified patent attorney or agent, we also suggest that you do a preliminary patent search yourself, because you will learn a lot about your product by doing this preliminary research. By doing a preliminary search yourself, you will also be able to compare the results to see whether you came up with any patents that were not on the patent attorney's list. Trademark Searches A patent search is completely different from a trademark search. A trademark search is a simple process of a computer going through a database of trademarked words to see if any of the words match. They will come up with a list of similar trademarks for you to review and determine whether your proposed name is already taken or not. A Company's trademarked name and logo is its intellectual property. If you find trademarks that are very similar to your proposed name and are even in the same industry, you might want to consider a different name from the get-go to help you save money in filing it, having to drop it, and then having to file a new name because you are infringing on somebody's trademarked name. Companies who own trademarks can subscribe to a "trademark watch" service, which provides them with reports of similar names that are in the process of being trademarked. Therefore, if your name is too similar, these companies will know about your trademark registration and you could receive a letter from their attorney stating that your proposed name is infringing upon their trademark. However, if your proposed name is the only name you want, and you feel it is different enough from any other trademarked names, you can take it through the procedure of dialogue between attorneys to determine whether you will have a legal battle or not. Your attorney will be your best counsel on this. A trademark search usually costs in the range of $200. Patent and Trademark Depository Libraries There are about 80 Patent and Trademark Depository Libraries throughout the United States -- at least one per state. If you don't have a Patent and Trademark Depository library near you or in your state, you might want to consider taking a business trip to the nearest one if it's within your budget and if you have the time. By going there physically, you will have the direct assistance of the qualified department staff to help you with any questions or problems you may have. You can estimate at least one full day's work at the depository library. Copyright searches as well as trademark searches can be done in these specialized libraries too. Internet If you're limited on time and money, you can also do a "preliminary patent search" right on the Internet. However, please note that the U.S. Patent & Trademark Office says that "you can search patents on the web but you can't do a patent search." However, starting out by doing a preliminary patent search on the web, will familiarize you with the terms and general system so that you are prepared and better educated when you either go to the Patent and Trademark Depository Library or to a patent attorney. Shopping for Patent Services When you shop for patent attorneys or patent searchers, ask what database they use to conduct their search. Many use a standard computer database, which searches for all patents issued after 1965 because, believe it or not, earlier patents aren't computerized yet. Patent and Trademark Depository Libraries also have access to the computer database (sometimes they charge a nominal fee of $25-$50) so you can do a manual and computerized search at the same time. Most patent attorneys also do patent and trademark searches. However, there are also independent research companies that specialize in patent or trademark searches and other aspects such as a trademark watch service -- a service that sends you a list of any new trademark or patent applications similar to yours, once you have a trademark or patent. Average rates for patent searches are about $500, and cost more if it's done more thoroughly than just through a computer search. If you check firms located in Arlington, VA or Washington D.C., they usually do their searches with the original patent records located at the United States Patent and Trademark and Office, which could be a more complete search. As with any service, we recommend that you call and request that brochures be mailed to you first, and ask them lots of questions about how they do the search and what databases and sources they use. Then start laying out your information so you can compare all of the services at a glance. Avoid the Pitfalls As you research patent search companies, be aware that you might end up contacting what are known in the industry as "invention scam operations" who will offer to not only do the patent search, but will also do an evaluation, file the patent, market the product, get it licensed and will basically offer to do it ALL for their clients (for escalating fees, of course). The only way to distinguish between companies is to gather information first, then determine whether the company's mode of operation fits the pattern of these types of operations. http://www.inventorfraud.com . Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page Mailing a Self-addressed, Sealed Envelope to Yourself You may have heard about sending yourself a description of your own invention by registered mail to help document the idea as your own. History books may describe cases of people who won the rights to their ideas due to a self-addressed, sealed envelope mailed to themselves. But there are different "types" of ideas that require different types of protection. As far as "inventions" go - this one step alone has never been enough to prove ownership of an idea. Even though once upon a time this may have been a valid form of proof for artistic and written expressions, times have changed and because inventors of sorts have devised clever ways of opening and resealing envelopes, this procedure doesn't really hold up in court any more. Since the only cost is the envelope and stamp, it doesn't hurt to include this in your overall protection strategy as an "added insurance." Just don't rely on it as your only means of protection. The Disclosure Document Program To legally establish the date of your idea's conception, you may consider registering a "Disclosure Document" with the U.S. Patent & Trademark Office (PTO). For $10.00 (check for rate changes), you can send this witnessed and notarized description of your invention with a sketch and a cover letter requesting that the U.S. Patent and Trademark Office hold your papers on file for a period of two years. Once the PTO receives it, they will send you a copy of your request with an ID number as proof that they have processed it. Be advised that the U.S. Patent & Trademark office states that the filing of this document will NOT give you any legal protection. It is NOT a patent application. This document only helps to establish the date of your idea's "conception." So even though it will remain on file for two years, it isn't intended to give you a two-year buffer or protection. Since the "Disclosure Document" only helps to prove the date your idea was conceived, in the case of infringement of your idea, you would also need to prove "due diligence," which means that you would need back-up documentation that you have consistently and persistently been actively working on your idea since its conception. This is where the "log book" documentation comes in to prove that you have been working on your idea. Therefore, in and of itself, the Disclosure Document is worthless. (A copy of the U.S. Patent & Trademark's brochure is enclosed for your convenience.) Yet the Disclosure Document is so inexpensive that it is an excellent added insurance, especially because it costs only $10 and you can do it yourself. But once again, please do not rely on this as your sole means of idea protection. In order to have any value, it must be supplemented by your entries in your logbook and by due-diligence. As mentioned, it will be held on file for two years and will then be destroyed unless it is referred to in a patent application, which must be filed within the two-year period. TIP: Don't rush to file the Disclosure Document if your basic product design is still incomplete. If you still aren't sure of all your product's features and functions, use the logbook to document your research, tests and changes to the product, and file the Disclosure Document once your basic product design is firmed up. The Disclosure Document will be much more valuable to you if the description and illustration you send in closely resembles your final product. Naturally, you will still make changes after you send in the Disclosure Document. However, because you have thought out your product before you sent in the Disclosure Document, your chances are better that the changes won't be radical.
WARNING
: Please be careful with companies that offer to file this document for you, claiming that it will protect your idea. Some product development scam companies charge thousands of dollars to file this $10.00 form, misleading people into
believing that a patent application is being filed on their idea. Click here to read the U.S. Patent & Trademark Office literature about how to file the Disclosure Document:
Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page A patent is a document that is issued to an inventor by the United States Patent and Trademark Office in Washington, D.C. It contains a detailed description of what the invention is and how to make or use it. In addition, each patent has at least one "claim," which summarizes what the inventor asserts to be his or her protectable invention. Patents can have lots of claims ranging from the general to the specific if the invention warrants them. If someone other than the inventor starts making, using or selling what is described in any claim of a patent, the patent is infringed. An inventor has the right to stop such an infringement and may be able to obtain money to compensate for any damage or injury caused by the infringement. This is called the patent right, and it runs for 20 years. NOTE: The 20-year right applies to applications filed on or after June 8, 1995. Prior to that date patents were granted for 17 years. The basic idea behind patents is to encourage you to make your creations known to others so that everyone working in a particular field can develop further inventions based on the most up-to-date technology, or get a license to use the creations. The theory is that this disclosure betters society as a whole. The 20-year patent right is granted as a fair exchange for full disclosure of the invention by the inventor. What Makes An Invention Patentable?
Note: Special patents are also available for ornamental designs that are new and original. For instance, you designed a distinctive bottle in the shape of a chili pepper to hold salsa, you could apply for a design patent. These are granted for only 14 years, rather than 20, and the procedures for applying are pretty much the same as for other patents; however, a design patent application is usually shorter and simpler to prepare, since it is largely made up of drawings of the design. What If Someone Else Comes Up With A Slightly Different Creation? A rival invention that improves on your idea does not diminish your patent right, and you may be able to stop your competitor and collect money damages. You cannot, however, sell your invention with your rival's patented improvements. That is your rival's property, not yours. You are entitled only to continue selling your invention in its original form. You also are free, of course, to dream up and patent your own improvements. Or you and your rival could reach an agreement in which one (or both) of you create the improved product, and the other is justly compensated. What Should A Person Do If Someone Is Infringing On A Patent? You most likely will need to consult a lawyer since it is rarely so simple a problem to solve by calling up the infringer and declaring: "I have a patent that covers what you are doing. Please stop and pay me for the harm you've caused." In most cases, you will have to go to court, or at least threaten to do so. And if a court case is filed, you can usually expect a long, hard (and expensive) battle. The alleged infringer might claim not to be infringing or that your patent is not good. The more valuable your invention, the more likely it is that people will try to copy it and then fight you in court. Patent lawyers often take cases on a contingency basis, which means you don't have to pay up front. Still, if you don't have significant financial resources, you may want to recruit a partner (or partners) in advance to help you defend the patent in exchange for a share of profits. The company that is going to manufacture your invention may be interested in such a deal. Is A Patent Always The Best Way To Protect An Invention? Not necessarily. Some inventions, like recipes, may be better off kept as trade secrets. That's what the Coca-Cola Company has done for years with its soft drink formula, which remains a cherished trade secret that has never been patented. Commercial issues often dictate the choice of whether or not to patent an invention or keep it as a trade secret. So long as your potential competitors can't study your creation and figure out how to make (and possibly patent) it themselves, you may be fine keeping it as a trade secret. Trade secrets do have legal protection against disclosure. For example, if a manufacturer is using a secret process, he or she can require that any employees keep the process secret, even after they leave the company. And if an employee leaves to work elsewhere, the manufacturer can ask that the new employer not encourage disclosure of the secret process. It's also possible to file suit in court to prevent disclosure. How Does A Person Get A Patent? The first step is to prepare an application, which is then filed with the Patent Office. Your application should give a very detailed description about how best to make and use the invention. Sometimes, if a patent be sufficient. If it is unclear from your description that the invention will actually do what you say it will do, you may be asked to prove that your idea is workable by developing a prototype. Government patent examiners whose job is to decide whether the application describes and claims something that is patentable will examine the application. If an examiner decides that it does, a patent will be issued. If the examiner decides that it does not, your application will be rejected. You may try to change the examiner's mind, or you can try to modify your application so that the examiner finds it acceptable. This process can take considerable time -- well over a year. If an examiner cannot be persuaded to issue a patent, you can either give up or appeal the rejection to a special board in the Patent Office. This takes more time. Is A Lawyer Necessary? No, but if you can afford one it's advisable. However, it's not cheap. The going rate for a simple application that sails through the Patent Office is several thousand dollars (depending on where you live). More complicated applications may cost even more. And there are also filing fees in the Patent Office ($155 minimum, at present). The cost of an attorney may be worth it, though. Patent Office procedures can be obscure and complex, and a seasoned patent attorney will know how to usher your application through as quickly as possible. If you seriously think you've reinvented the wheel (and if you think your idea is likely to be infringed on and thus the subject of court actions), it is usually best to hire an attorney. Mountains of paper have been written on the requirements for Patentability by judges, lawyers, professors and others. If you plan to try getting a patent on your own, you should have at least a passing familiarity with these requirements. A patent is a right, granted by the United States to an inventor, to exclude others from making, using, selling or importing an invention throughout the United States without the inventor's consent. The inventor may license or sell the rights defined by the Claims of the patent. There are currently over 6 million United States patents issued to inventors. Without a patent, anyone can make and sell your invention without your permission and without paying you. Should you patent? Before seeking patent protection, you should first determine whether your invention is potentially marketable. If your invention is not marketable, you do not need patent protection. When determining whether your invention is marketable, you should determine if another company would be able to profit from your invention not only today, but also in the future. If so, patent protection should be sought so that the company would have to license the invention from you. What is not patentable? An inventor cannot receive a patent for perpetual motion devices, abstract ideas, laws of nature, or naturally occurring substances. An inventor cannot receive a United States patent for an invention publicly disclosed more than 12 months ago. Public disclosure includes any sale, exhibit at trade show, or printed in a publication, with a few exceptions. You should seek a Patent Attorney's opinion if you have any questions whether your invention is patentable. It should also be noted that you do not need a prototype when seeking patent protection -- you only need to be able to describe the invention in sufficient detail so that one skilled in the art could construct your invention. Benefits of Patenting Patenting your invention also allows you to prevent others from making, using or selling your invention throughout the United States without your consent. A patent is also one of the few assets that can increase in value over time. A patent also increases the value of your business because it is considered a valuable asset by banks and potential purchasers of your business. There are many ways to financially benefit from a patent. Your patent may be sold outright to another for monetary remuneration. You may also license your patent to one or more parties for a percentage of the sale price. You may also be the exclusive manufacturer of your invention. Whether you are a business or an independent inventor, a patent is a valuable asset and is needed to protect you from unscrupulous individuals who could benefit from your hard work. Detailed Record Keeping Next to filing a patent application, detailed record keeping is the most important thing an inventor can do to protect their invention. Proper record keeping is important because it can be used as proof of the conception date (the date of invention). It should be noted that mailing yourself a sealed letter with invention documents enclosed is not an accepted method of proving your invention's conception date for the USPTO. All inventors, whether individual inventors or employees of a business, should maintain a bound notebook for recording their inventions. It is also important to line through any blank portion of the pages of the bound logbook/journal, which are not written upon. The notebook should be stored in a secure location when not in use. Entries should contain a clear and complete explanation of the manner and process of making and using the invention in sufficient detail to enable another person having ordinary knowledge in the field of the invention to make and use the invention. All computations, sketches, diagrams and test results should be contemporaneously entered into the notebook. Notebook entries should also describe all testing performed, the particular type of equipment used, and the results of the testing, both good and bad. All persons involved in the work, and their specific role, should also be identified in the notebook entries. Every entry in the bound notebook should be signed and dated by the participants, indicating the particular project with which the entry is associated and, if possible, the entry should be signed and dated by an unbiased witness or Notary Public. See more complete information on journals and logbooks in our "Starting Out" section. The Patent Search The first step in the patenting process is to have a professional patentability search completed by an independent patent searcher to ensure that your invention is patentable. Most hire independent patent searchers near the USPTO to perform manual United States patent searches and do not utilize any in-house staff to conduct the patent searches that can potentially taint the results. Patentability Opinion After the independent patent search is completed, a registered patent attorney or agent will compare the relevant located patents to your invention. They will then provide you with an honest and objective opinion as to whether they believe there is a chance of receiving acceptable patent protection. The Patent Application If the Patentability opinion recommends seeking patent protection, a patent application will need to be filed. A patent application includes an abstract, a specification, at least one claim, a Declaration, a filing fee, usually at least one drawing, and a Verified Statement of Small Entity Status. The most important part of the patent application is the Claims, which describe the scope of coverage that the inventor is attempting to receive from the United States government. Only an experienced patent attorney or agent can get the most preferable patent coverage for your invention. Adequate patent coverage ensures that potential infringers will be prevented from making, using or selling your invention, even if they make a modification. Patent Prosecution After filing the patent application with the USPTO, an Office Action from the USPTO will usually be received within 8 to 14 months. Typically, the USPTO will reject some or all of the Claims of the patent application depending upon whether the USPTO Examiner believes it would have been obvious to create your invention in view of the prior art located by the Examiner. It is then necessary to argue that your invention is patentable based upon the differences between the invention and the art cited by the USPTO Examiner. Legal arguments and decided case law may be used to refute the Examiner's position. A telephone interview with the Examiner may also be arranged to find agreement on any issues of dispute. Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page Challenge : Non-Patentable Item
Possible Approaches:
Challenge: Questionable Market
Possible Approaches :
Challenge: Pregnant Situation
Possible Approaches:
Challenge: Strong Competitors Waiting
Possible Approaches:
Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page Trademarks, Trade Names and Trade Secrets Trademarks A trademark is a word, name or symbol that is used to identify products sold or services provided by a business. A trademark distinguishes the products or services of one business from those of others in the same field. A trademark lets consumers know precisely what they are buying. For example, when consumers purchase cotton swabs bearing the trademark of Q-tips Cotton Swabs, they know -- or are entitled to assume -- that those swabs came from one source: Cheesebrough-Pond's USA Co. They also know -- or are entitled to assume -- that the Q-tip swabs are not swabs from some other source. A business using a trademark has a trademark right, which means that the business can prevent other businesses from using the trademark and can get money to compensate for the infringement of the trademark right. Trademark protection is intended to protect consumers from confusion about what they are buying and help manufacturers guard the value of trademarks in which they have invested. A trademark right can be acquired simply by using a trademark to identify your products or services. However, you should pick a trademark with care and make sure you are not choosing one that belongs to another business. Otherwise you could spend several months and much money promoting a new product line only to find that your advertising dollars are lost and that you have ended up assisting your competitor. You could also face a lawsuit if you fail to stop using someone else's trademark. Before deciding on a new trademark, you should have a lawyer conduct a search to locate any similar trademarks that may already be in use. If someone is using your trademark, you should call the infringer and ask him or her to stop. If that fails, as it often does, you can threaten court action. If that fails, as it often does, you can commence an action and seek an order prohibiting further use of the trademark by the infringer. Courts often issue these orders. This process can be expensive. But it can be vital to the prosperity and future of a business. Imagine how Ford would fare if GM, Chrysler, Toyota and BMW were all free to call their automobiles Fords. To preserve the rights to a trademark, its owner must use it and must police how others use it. Many words that have become part of our everyday vocabulary were once registered trademarks whose use became so widespread; their owners could no longer rightfully claim them. Some of the most well known lost trademarks, as they are called, include: Aspirin, Cellophane, Escalator, Thermos and Nylon. How Do You Register A Trademark? Though you obtain the right to a trademark simply by using it, your right will be strongest if you register the trademark. You can register by filing an application with one or more state agencies, with the United States Patent and Trademark Office, or with both. Federal registration is preferable, because the benefits of state registration are available only in the state of registration. The benefits of federal registration are available nationwide. Federal registration lasts initially for 10 years if the registration requirements are met and the trademark is used in connection with the product for which it is registered. The registration is renewable for consecutive 10-year periods. State registration and renewal periods vary from state to state. A registration application typically asks for:
If you are applying for federal registration, you also will have to show that you are involved in interstate commerce. You can apply for registration if you have actually used the mark or if you have an intention of using it. There are restrictions on federal registration of a person's last name or a geographic location as a trademark. For example, if you want to register trademarks like "NEW YORK" Cream Soda or "MR. SMITH'S” Cough Remedy, you will have to show that these common names have come to be associated with your products. You probably will have to prove that you have a consumer base that identifies "NEW YORK" with your cream soda and "MR. SMITH" with your cough syrup. The federal registration process can take a year or more. The filing fee, at present, is $245. You can prepare and file the necessary papers on your own, but it is advisable to consult a trademark lawyer for at least some initial guidance. The legal fees involved in registering a trademark are typically less than those involved in obtaining a patent. To signify your claim to a particular trademark, you can use the TM symbol if the trademark is unregistered. If it is registered, you can use the R inside a circle symbol. Public Notice Anyone who claims rights in a mark should use the symbols TM (trademark for goods) and SM (service mark for services) to alert the public to their claim to an unregistered mark. The owner does not have to have a trademark application filed or a registered trademark to use these symbols. The registration symbol (an "R" with a circle around it) may only be used when the mark is actually federally registered with the USPTO. This applies to both registered trademarks and service marks. Selecting A Trademark Selecting a registerable mark prior to introducing a new product or service will save time and money later when you attempt to register your rights. Trademarks are typically classified into four basic categories: Generic; Descriptive; Suggestive; and Arbitrary. Generic trademarks are not registerable since they describe the whole class of goods, such as the word "spoon." Arbitrary marks are the best choice when selecting a trademark since they have absolutely no meaning associated with the owner's product or service, such as "3M." Trademark Search A trademark search should be completed for determining whether your proposed trademark is eligible for use and federal registration. For words or logos, a search should be conducted of federal records maintained by the USPTO. A State trademark and Common Law search should also be completed since rights in trademarks vest initially with the first to use the trademark in commerce. Common Law trademarks are marks that have not been federally or state registered but are used in commerce by another company. Federal Registration Federal Registration of a trademark provides constructive notice that the mark is in use and that the owner is entitled to use the mark throughout the United States for the goods and/or services described in the registration. Federal Registration of a trademark can last indefinitely if properly renewed. There are two types of applications: "Use-based" applications; and "Intent-to-use" applications. A use-based application is utilized when the applicant is using the mark in interstate commerce. An intent-to-use application is used when the applicant has not used the mark in interstate commerce but intends to use the mark and wants to reserve it for use in the future. Trade Names When an individual or organization transacts business under a name different that its true name, the name is considered a "trade name." The trade name should be registered with the Secretary of State where the business is organized. One benefit of having a trade name is that no other organization can transact business under the same or deceptively similar name to the registered trade name. A trade name can also be used to prevent another organization from registering a similar state trademark. Can A Person Choose Any Name for A Company? No. While most states have only minimum requirements regarding the choice of a company name, known in legal lingo as a trade name, you will have trouble if you pick the exact name or one that too closely resembles that of a competitor. In general, state laws:
If you are incorporating, you should first check with the secretary of state of the state in which you plan to incorporate to determine whether the name you have chosen is available for your use. In many states this can be done by telephone, at a nominal cost. If the name you have chosen appears to be available, you may incorporate under it. It is important that you understand, however, that your right to incorporate under that name does not automatically give you exclusive rights to the name itself. There may be, for example, an already-existing, unincorporated enterprise doing business under the identical or similar name, and that business might have rights that are superior to yours. In fact, the use of a name could, under such circumstances, put you at risk of a lawsuit by that enterprise for "infringing" or "trespassing" on its rights to the name. The outcome of such a lawsuit would depend on a number of factors including, in particular, whether you were both engaged in similar lines of business and served roughly the same geographic markets. If so, the other corporation might be able to prevent you from using the name and, possibly, even recover damages from you. This would be a particularly undesirable outcome if you had invested substantial time and money developing marketing materials, for example, in which you used the name. Therefore, before choosing a corporate name, you should check not only its availability with the appropriate secretary of state's office, but also its use within the general area in which you intend to do business. You can begin with telephone directories and trade directories that should be available at your public library or local chamber of commerce. You should also check for "d/b/a certificates" that may have been filed with the secretary of state or the county clerk's office. If your preliminary searches do not turn up a similarly named business, or if they do, and your respective businesses are in unrelated fields or non-overlapping markets, the chances that you will be able to incorporate and do business under that name, undisturbed, are improved. Quite often, though, circumstances are not particularly clear-cut. You should consult an attorney, particularly if you intend to produce expensive marketing materials before you incorporate. Trade Secret Rights Why Think About Trade Secrets? Secrecy is sometimes the easiest protection to obtain for new technology, but might equally easily be lost. From a defensive perspective, third parties might have trade secret rights that can pose problems. What Can Be Protected as a Trade Secret? Generally speaking, a trade secret can be any information that:
For example, if a particular compilation of information "components" meets the above three criteria, the compilation itself may be a trade secret, even though its component parts are not. What Protection Do Trade Secret Rights Provide? The owner of a trade secret can enforce its rights against those who misappropriate the secret, but not against those who independently develop it or who legitimately acquire it from other sources. Misappropriation of a trade secret usually takes one of two forms. The first general type of misappropriation is use or disclosure of the secret in violation of an obligation of confidence. The obligation can be express; e.g., because of a nondisclosure agreement (NDA), or implied; e.g., arising from a special relationship such as the employer/employee relationship. The second general type of misappropriation is use of improper means to obtain the secret; e.g., theft, espionage. Reverse engineering of a publicly available product usually will not be considered improper means. Caution -- Improper means can sometimes be in the eye of the beholder. In the duPont v. Christopher case, the court held that aerial photography of a chemical plant under construction constituted improper means. How Can Trade Secrets Be Safeguarded? Some common techniques for maintaining secrecy include:
Absolute secrecy is not necessary and is often difficult to prove, in any event. How Can Trade Secret Rights Be Lost? Trade secret rights generally die if secrecy is lost. For example, this can happen by publishing the secret obtaining a patent that discloses the secret and not taking sufficient precautions to protect secrecy in some circumstances; or selling a product from which the secret can be discerned; e.g., by reverse engineering. Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page A copyright is very much what it sounds like: a right to prevent others from copying works that you have written, authored or otherwise created on your own. The U.S. Copyright Office states "Copyright is a form of protection provided by the laws of the United States (title 17, U.S. Code) to the authors of 'original works of authorship' including literary, dramatic, musical, artistic and certain other intellectual works. This protection is available to both published and unpublished works." A copyright is an extremely powerful and very inexpensive (just $20) protection, which protects your specific form of expression. A copyright protects you against anyone copying your intellectual materials. For example, it protects you if you've written a book, article, lyrics, poem, artwork, photographs, and literature Yet, it is much broader in scope than most people think. It also covers the following broad categories:
Included within these categories are cartoons and comic strips, movies, video recordings, musical compositions and lyrics, sound recordings, multimedia works, computer programs, daily newspapers, automated databases, and online works. For example, while it does not stop anyone else from writing a book on the same "subject" as yours, it does prevent direct copying or plagiarizing of paragraphs, chapters and materials from your own book as well as the main format. When the work is ongoing, and there will be new sections added or updated material over time, there is also a special procedure on how to register this type of evolving work. Generally, the copyright protection applies to any works "whether or not" the materials are officially copyrighted. However, registering the copyright with the U.S. Copyright Office makes it much easier to prove the copyright in court. Additionally, since March 1, 1989 when the United States adhered to the Berne Convention, a copyright notice is also not required by law anymore. But having the copyright notice on any works helps to discourage infringement and can eliminate an "innocent infringement" defense where a person claims that he/she did not realize that the work was copyrighted. This notice is a very simple process that you can do yourself. As soon as you begin distributing your work (even before you send in the copyright application), you can begin writing the following notification and information on all pages of your work. According to the U.S. Copyright Office, "The notice for visually perceptible copies should contain all the following three elements:
Note: The symbol for "phonorecords that embody a sound recording" should contain the letter P in a circle. How To Register A Copyright Registering a copyright is relatively easy. The Library of Congress has a Copyright Office, which provides a simple form. You can get one by calling 202-707-3000. In addition to filling out and submitting the form, you have to send a copy of your work and pay a nominal fee. You don't need a lawyer to register a copyright, though if it's your first time you may want help. If you have any concerns about the ownership of the copyright (say you worked on the project with another author, for example, or you're not sure whether it's owned by you or your employer) or the extent to which you have the right to use material that was copyrighted by others, then you should consult a lawyer. Once you have the necessary forms from the copyright office and fill out and return them, you'll receive your copyright usually within about two months. For specific details and information about copyrights, check the following web site: http://lcweb.loc.gov/copyright U.S. Copyright Office. VERY IMPORTANT TIP: Works made for hire under the 1976 Copyright Act Many times, creative people utilize the skills of other people to help them with their projects. For example, someone may hire a graphic artist to design logos, or brochures, or artwork. Also writers may be hired to help write a book, or article, or other literature. In these cases where an independent contractor is hired for a project, there must be a written agreement between the parties specifying that the work is a "work made for hire," otherwise the copyright would automatically be owned by the person that was hired, and not the original creator. In cases of works for hire where the work is created within the scope of a person's employment, the employer (not the employee) would be considered the author. An example would be a musical arrangement written for XYZ Music Company by a salaried manager on its staff. The company XYZ Music Company would be considered the author. So the main thing to determine here is, who is the actual and original creator of the concept that is being worked on? If you are working on a project for another company or individual (even a friend, and it is their concept that you are "contributing" to, then it is realistic for them to have you sign off on any rights to the work developed. Likewise, if you are having other people or companies work on your own concepts and ideas, then you are justified in having them sign off on any rights to your project. Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page In recent years, a growing number of companies have sought insurance coverage for patent-related contingencies. Patent owners who wish to protect their patent rights from future infringements have purchased insurance policies, which indemnify them against the often-high cost of bringing a patent infringement suit. In addition, companies who believe that they offer products or services that entail a risk of patent infringement litigation have purchased standard business insurance policies, which they believe will protect them against the financial burden and risk associated with defending such claims. However, this trend has spawned a significant amount of litigation. Much of this litigation centers around whether the terms of a standard business insurance policy can be extended to cover lawsuits for patent infringement. In addition, patent owners who have sought insurance coverage for infringements of their patents have litigated with their insurance companies over their right to receive indemnification for litigation expenses. Unfortunately, no clear uniform standards have been set. Is Patent Infringement an Advertising Injury? Many companies purchase comprehensive business and liability insurance policies, which contain standard clauses that appear at first glance to protect the insured in the event that it infringes the intellectual property rights of others. However, these clauses may not automatically protect a company against patent infringement claims. For example, many insurance policies contain language, which expressly covers businesses against claims of copyright or trademark infringement. It is clear that such a clause will not be read to cover claims for patent infringement. However, these clauses may also cover the insured in the event that it causes an "advertising injury" to a third party. Not surprisingly, much of the litigation in this area of insurance law has centered around whether the so-called "advertising injury" clauses provide coverage for claims for patent infringement brought against the insured party. In the majority of cases that have addressed the issue, the courts have ruled that they do not. The leading case is Simply Fresh Fruit, Inc. v. The Continental Insurance Co., in which the United States Court of Appeals for the Ninth Circuit ruled that, as a matter of law, patent infringement cannot occur in the course of an insured's advertising activities. Plaintiffs Simply Fresh and P & C (collectively "Simply Fresh") had separate insurance policies with Continental, whereby the insurer agreed to defend and indemnify them against claims for injuries caused by their business advertising activities. Under the terms of the policies, coverage extended to "advertising injury" only if caused by an offense committed in the "covered territory" and in the course of advertising their goods, products or services. The policies defined "advertising injury" to include any "misappropriation of advertising ideas or styles of doing business." The policies were silent with respect to claims for patent infringement. Thereafter, one of Simply Fresh's competitors, Reddi-Made Foods, brought suit in federal court, alleging claims against Simply Fresh for patent infringement, contributory infringement and inducement to infringe the patents-in-suit. Reddi-Made alleged that Simply Fresh infringed its patents directed to a fruit-cutting device and process by using this technology as part of its processing of fresh fruit and fruit segments used in salads and similar products. During the course of the proceedings in this case, Simply Fresh admitted that it would on occasion give prospective and current customers tours of its newly automated processing facilities in order to highlight the improved quality of their fruit products. Simply Fresh tendered the defense of the patent infringement claims to Continental. Continental refused to defend against the patent claim and denied indemnity coverage. Simply Fresh and Reddi-Made subsequently settled the patent infringement suit. Simply Fresh then filed suit against Continental to enforce the insurance agreement. In granting Continental summary judgment, the district court found that Continental had no duty to defend the patent infringement claim or to indemnify Simply Fresh. The district court based its conclusion on the California Supreme Court's interpretation of the scope of "advertising injury." Under California law, coverage is provided for "advertising injury" only if Simply Fresh committed it in the course of advertising its goods, products or services. In other words, the policy's enumerated advertising injuries must have been caused by Simply Fresh's advertising itself. The Ninth Circuit agreed with the district court that there was no causal connection to any of Simply Fresh's advertising activities as a matter of law, because the alleged patent infringement could have occurred independent and irrespective of any advertising by Simply Fresh. The gravamen of the patent infringement claim was use of the device and process alone. It was immaterial that Simply Fresh exploited its alleged use of the patented process in conjunction with its product promotion activities, which included giving customers tours of the allegedly infringing facilities. The appellate court noted that under the terms of the policy, the advertising activities must actually cause the injury, not merely expose it. The Ninth Circuit thus agreed with the district court that Continental had no duty to defend or indemnify Simply Fresh. Other courts have dealt with insurance policy clauses covering "advertising injury," where the definition of "advertising injury" includes instances of "piracy." Most courts have interpreted the term "piracy" to exclude patent infringement claims, since "piracy" refers to a type of "advertising injury," and patent infringement exists separately and independently from advertising activities. A minority of courts have interpreted "piracy" to impose at least a duty to defend the insured where patent claims are alleged on the insurer, even though the terms of the insurance agreement are silent as to patent-related claims. This minority view also includes the notion that the accused patent infringers advertising activities are part and parcel of its sales and that selling an infringing product is an infringement occurring during the course of advertising, which is covered by the policy as a type of advertising injury. In addition, some standard comprehensive general liability insurance policies have clauses that protect the insured in the event that the insured causes loss of use of tangible property that has not been physically injured. An issue may arise as to whether such a policy clause covers injuries caused by the insured's patent infringement. Most courts, which have decided this issue, have held that intellectual property rights, such as patents, trademarks and copyrights, are intangible property, and are therefore excluded from coverage under these clauses. Several courts, which have dealt with these issues, have analyzed the duties to defend and indemnify separately. Under the duty to defend, the insurer must pay the cost of defending the patent infringement litigation if any part of the cause of action against the insured party arguably falls within the scope of the coverage, either on the face of the complaint or from facts known to the insurer. An insurer owes a duty to defend unless the claims made against the insured are clearly excluded from coverage under the policy. In general, if a complaint alleges a claim for patent infringement, in addition to other claims, such as unfair competition, which are based on the insured party's advertising activities, the duty to defend may be triggered as to all of the claims, even though the insurer may ultimately be found to have no obligation to indemnify under the policy. In this way, the duty to defend is broader than the duty to indemnify, which includes an obligation to pay for any damage caused by the insured party's activities. This is so, because the duty to indemnify only arises if it is clear that the claim is actually within the policy coverage. Winning the Battle, but Losing the War In contrast to the cloudy picture in the area of insurance coverage against claims of patent infringement, patent owners can purchase insurance policies, which cover them against the costs of enforcing their patent rights. These insurance policies indemnify the patent owner for the often-substantial cost of conducting a patent infringement litigation. There are a variety of entities, which offer this type of insurance coverage. Some are risk-sharing pools, where third-party investors shoulder the financial burden of the litigation in return for a percentage of any settlement or judgment that is obtained. Others are well-known insurance companies who issue traditional policies which provide coverage for patent litigation expenses incurred by the insured patent owner arising out of authorized litigation concerning infringements of the insured party's patent which are discovered during the coverage period. These insurance policies, however, generally contain warranty clauses under which the insured patent owner represents that the insured patent was legally procured and that he has no knowledge of any facts or circumstances which adversely affect the patent's validity or enforceability that were not disclosed to the U.S. Patent and Trademark Office (PTO) during the prosecution of the patent application. Such a clause has prompted one insurance company to not only deny coverage under the policy, but also to bring suit for insurance fraud and a declaration that it was not obligated to indemnify the insured patent owner. The insurance company alleged that the insured patent was invalid or unenforceable due to inequitable conduct committed during the patent application process. Such inequitable conduct may include the failure to disclose to the PTO information, which is material to the Patentability of the invention. It is clear from this that an insurance company does not have to wait for a decision by a federal court in a separate patent infringement action that the insured patent is unenforceable due to inequitable conduct. It may proactively challenge the validity and enforceability of the insured patent on its own, in support of its insurance fraud claim. If an insurance company decides to bring suit for insurance fraud or to resist indemnifying the insured patent owner on the basis that the insured patent is invalid or unenforceable, it has the right to obtain information on these issues during discovery. The insurance company may be entitled to obtain more information from the insured and his attorneys than if it were a defendant in a patent litigation. For instance, the insurance company may be allowed to depose the patent attorneys who prosecuted the application for the insured patent regarding information adversely affecting validity and enforceability of which they were aware during the prosecution. There is a chance that the insurance company may do so, even if the patent attorneys are also acting as trial counsel and have asserted the attorney-client privilege. In addition, the insurance company may be entitled to discovery of all non-attorney-client privileged documents relating to other litigations concerning the patents, as well as the billing and expense records of the attorneys who conducted the authorized patent litigations on behalf of the insured. Trial counsel may also be deposed as to the reasonableness and accuracy of their fees and expenses. As a result, care must be taken when entering into an insurance agreement, which covers patent-related claims. In the case of companies seeking coverage, which indemnifies them against claims of patent infringement, they can protect themselves by negotiating a provision in the insurance policy that explicitly covers patent-related claims. For patent owners who seek coverage for future patent infringements, it is imperative that an objective assessment be made of the information that was available to the patent applicant during the prosecution of the patent application in question. If, for instance, the patent owner was aware of arguably pertinent prior art, an ambiguity as to inventorship or prior use and sale, which were not disclosed to the PTO, it may not be in his interest to sign an insurance agreement with a warrantee clause covering validity and enforceability. Meticulous records of attorney billing and expense information must also be kept and the amounts expended must be justifiable. Even so, seeking insurance coverage may be extremely beneficial to both patent owner and potential patent infringer alike. Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page Finding a Good Patent Attorney
We recommend that you begin the patent process by doing your own legwork on how to get a patent. Go to your local library and read David Pressman's book,
Patent It Yourself
(McGraw-Hill), as well as any other books on the subject. This book is also available in our product section of this site. Although this research can be time consuming, if you familiarize yourself with the steps involved, you will
have a good general understanding of the legal process involved, which will help you work better with your patent attorney, and ultimately help you cut your costs in the long run. But DO NOT patent it yourself. Why? Well, doctors don't
operate on themselves, do they? And attorneys don't represent themselves. Ever heard of the phrase "attorneys that represent themselves have a fool for a client?" And the inventor will not fare any better if there is infringement
on his patent later. Click on the link below for a searchable list of Patent Attorneys and Agents registered to practice before the PTO.
Are All Patent Attorney’s the Same? If you've ever seen a "patent" document, the drawings and description appear to be purely technical, and the application process seems routine. Yet the job of a patent attorney is truly an art form, which involves skills most often gained through years of experience as well as innate talents and abilities. Utilizing a bit of intuition, a bit of left-brain analysis, a bit of creativity, and a bit of detective work, a good patent attorney has to be able to figure out what your invention is and how it works from what you have said, as much as from what you have not said. Inventors are often so intimately familiar with their product that they may not actually verbalize some of its key aspects since they know the product inside and out, they may tend to feel that the key aspects are obvious to others too.
In essence, a good patent attorney will make your patent a valuable intellectual property asset. This is why shopping for a good patent attorney is so important. What is the Difference Between a Patent Agent and a Patent Attorney? There are patent "attorneys" and patent "agents.” Although both must pass the same stringent exam, only a patent attorney will be able to represent you in court for any legal matters or in the case of infringement. A patent agent can do most everything an attorney can do except represent you in court, and usually at a lesser fee. Interview Before You Hire! At this point, we recommend that you look for a good patent attorney or agent to work with. Look in your local business pages under the heading "Patent Attorneys” or Patent Agents.” Call several of them and let them know you're looking for assistance in filing your patent. Ask them if they provide some initial free consultation time. Some do, some don't. If they're busy at the time, make an appointment for an initial consultation about their services, fees, etc. There are a few areas you'll want to find out about:
Fees and Billing Terms Patent fees depend on the complexity of the product that is being patented. For example, a product in the biotechnology field or consumer electronics will take longer to patent due to the nature of the work involved. In some circumstances, a technological patent has taken as long as 20 years to be issued! Whereas, a novelty item like a new type of cup will be fairly easy and quick to patent. By giving the patent attorney or agent a general idea of what your product is, you should be able to get a rough estimate of the costs involved. The main point is that you don't want to start a relationship with him or her being blind to the costs and find yourself paying thousands of dollars more than you expected to pay. By asking the questions, you'll be able to make an informed decision and know what you're getting into:
We recommend you try to determine all of the possible costs upfront, so that you know what you're dealing with in terms of the total costs for your patent. Otherwise, you'll have an open-ended relationship, which can very easily add up over a short period of time. If you feel that the attorney doesn't answer your questions, isn't open with you, or won't give you satisfactory explanations, chances are that you may have difficulties or misunderstandings with this attorney once you begin a business relationship. We recommend you take this initial interview into consideration in your selection of a patent attorney or agent. However, it's also true that people can't always be judged on just one meeting (it may just have been a bad day the day you called). So, you might be willing to call back and give the patent attorney another chance and see whether you get a difference interaction the second time. Since the cost of a patent attorney usually runs between $2,000 - 10,000, depending on the complexities of your product, selecting a good attorney that you feel comfortable with is crucial. Ask them about their experience level, and request a list of several satisfied clients that you can call and speak with to determine their competence. Then call the referrals and ask them questions about the attorney's service, quality and professionalism. Once you've gone to all of the interviews and reviewed the results of your meetings and research, you'll be able to narrow down your selection to two or three. Call them to let them know you'll be making your final selection and would like to schedule another appointment. After you've met with them again, you should be ready to make your decision. Return to Table of Contents for this guide | Return to index of all guides | Return to the top of this page
Copyright & Fair Use
http://fairuse.stanford.edu/
IBM Intellectual Property Network
http://www.delphion.com/
STO's Internet Patent Search System
http://www.bustpatents.com/
U.S. Copyright Office
http://lcweb.loc.gov/copyright/
U.S. Patent and Trademark Office
http://www.uspto.gov/
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