Navigating the Tangled Tributary of Transactional Intellectual Property Law

Intellectual property law is the moniker that covers those intangible personal property rights that are the product of mental creative processes. The litigation of patent, trademark and copyright rights gets all the press, but the acquisition of these rights is the ammunition for the hired gun litigators.
Patents and copyrights are exclusively the domain of federal law. Despite what your Uncle Phil or the legal expert at the local bar may say, there is no such thing as a “poor man’s patent” or a “common law copyright.” However, to complicate matters, there are common law trademarks, state trademark registrations and federal trademark registrations.

Patents
A patent is a grant made by the federal government to secure to an inventor exclusive right to “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. ' 101. As with your typical federal grant, it is obtained by submitting an application for the grant. All patent applications are prosecuted before the Patent and Trademark Office (PTO) which is part of the Department of Commerce. Inventors can apply pro se, or a registered patent attorney or agent can represent them. Admission to this patent bar is by examination, but waivers are given to former patent examiners. All patent attorneys have registration numbers, but there are no yearly dues and no required CLE.
There is no form to fill out to apply for a patent. While the PTO provides a myriad of ancillary documents and templates that are part of the application process, the legal substance of a patent application is created word for word and line by line by the patent attorney. A patent application is prosecuted ex parte before the PTO and follows a typical, if somewhat specialized, administrative law paper path. All prosecution is done confidentially in the sense that there is no public access to the paperwork while the patent application is pending. Issued patents, however, become public documents and the entire application file is accessible by anyone after the patent is issued. It is these application files that provide the grist for the litigator’s mill.
A very significant change in the way patent prosecution is handled has occurred in the last few years with the development of the PTO Web site. The PTO uses its Web site to announce procedural changes, post fee information, and provide access to documents and templates useful to patent attorneys. There is no longer any need to maintain a paper library in the law office to assist the patent attorney who is prosecuting a patent application; anything that is needed is available absolutely free of charge on the Web site. The full text of every U.S. patent issued since 1976 also is available for downloading. Rudimentary (but ever improving) patent searches also can be performed online. Trust me, more than you will ever want to know about patent prosecution is available at http://www.uspto.gov.

Copyrights
Unlike patents (which are grants made upon successful application), copyright rights are created as soon as the work is created. The author of the copyrighted work further secures his copyright rights in the work by filing a registration application with the Copyright Office, part of the Library of Congress. If you were concentrating earlier, you will recall that copyrights are protected exclusively by federal law, despite what Uncle Phil may say. There is no state or common law copyright registration protection, nor can a state presume to adopt such a system (as some states occasionally deign to do: NRS ' 597.720 et seq. or NRS ' 603.050)
As a gross oversimplification, copyrights protect the artistic efforts embodied in books, songs, pictures, software and the like. 17 U.S.C. ' 101 et seq. A work is registered by sending a copy of the work along with the approved registration form and $20 to the Copyright Office. Depending on the efficiency of the Copyright Office, the original registration form is returned within about two months stamped with the office registration number.
The owner of the copyright can apply pro se or can use an agent. To act as an agent for copyright registration, you sign the application. There re no other qualifications needed. Again, everything you need to know to add a boutique copyright registration department to your practice is available at http://lcweb.loc.gov/copyright.

Trademarks
Trademarks are the brand names of products or services. Trademark rights are acquired by using the mark. Once use has commenced, the trademark owner has common law trademark rights. Registering the mark at either the state level or the federal level can extend these trademark rights. Remember, you cannot register a mark unless it is already being used (sorry Uncle Phil, you cannot “reserve” a mark for use later). Reserving a corporate name at the corporate division of the Secretary of State or filing a fictitious firm name registration with the County Clerk is not the same as obtaining a trademark registration. Each perform separate functions and are not substitutes for one another.
While neither the trademark section of the Secretary of State’s office nor the trademark branch of the PTO will require you to separately “prove” that the mark is actually being used, the applicant must sign a declaration that use is being made. False declarations are criminal acts and any issued registration based on a false declaration is worthless.
An application to register a mark is made by completing a form, paying the fee and submitting specimens of the mark. A state registration can be effected in a couple of weeks. A federal registration takes about a year since the PTO conducts careful examination of the application.
It is now possible to apply for a federal registration simply by completing an online application and paying the filing fee by credit card. No exhaustive or expensive in-office library is needed; everything is available online at http://www.uspto.gov in the Trademark section.

Conclusion
Do not even contemplate attempting to prepare and file a patent application unless you are a registered patent attorney. If you fancy becoming a trademark lawyer, find an experienced practitioner to mentor you. It is far more complicated than you could possibly imagine and you (and your insurance carrier) will rue the day you decided that it cannot be that tough. Copyright registration has its own pitfalls but a few hours in the law library with “Nimmer on Copyrights” will allow you to complete and file copyright registration applications.