- HOW SHOULD I PROTECT MY INVENTION / IDEA / CREATION?
Depending on your idea, the best protection my be a patent, a trademark, a copyright, or other methods of protection such as trade secrets / confidentiality agreements. This section addresses the primary ways intellectual property -- ideas, concepts, inventions, ways of doing business, trade names and the like -- is protected. For most intellectual property there is one primary protection, but computer software and related concepts may be protectable by both copyright and patent laws. There are other examples of overlap between the various kinds of protection, but for purposes of this article, it will generally be assumed that your idea will fall into either the patent, trademark, copyright or "none of the above" box.
If you have an improved widget or a better way of doing something, you should probably consider a seeking a patent. A patent is a right, granted by the federal government, to exclude others from making, using or selling your invention without your approval. You have a monopoly on your patented invention. There are two common types of patents: (1) design patent, which covers only the appearance, not the function of an article; and (2) utility patent, which covers the function of the invention. Most inventors should seek a utility patent. A provisional patent, which is actually not a patent at all, allows an inventor to market his idea as "patent pending" for up to one year. However, a provisional patent must be followed by a regular utility patent application to secure any protection for the idea, and the right to a patent is lost forever if no utility application is filed within one year of filing a provisional application.
If you have a clever or distinctive name for your product or service, you should consider seeking a trademark therefor. Domain names can be trademarks. Rights in trademarks are secured by use, not merely by filing. That is, you must use a trademark in association with your goods or services to acquire protectable rights in the mark. Just registering a domain name is not enough to protect it as a trademark; you need to actually conduct business using the domain name.
If you paint, draw, write, compose music, or engage in other creative activities, the fruits of your labor are protected primarily by copyright. Copyrights protect "original works of authoriship." 17 U.S.C. § 102. Works include, but are not limited to literary works; musical works; dramatic works (plays, etc.); pictoral, graphic and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works. Also, computer software is subject to copyright protection, and this copyright protection overlaps to some extent with patent protection available for software.
The patent system is established pursuant to the United States Constitution which provides that Congress shall have the power "to promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." U.S. Constitution, article 1, section 8, seventh clause.
- WHAT IS A PATENT?
A patent is a potentially valuable monopoly granted by the federal government. A patent is the right to exclude other from making, using or selling or contributing to the making using or selling of the subject of the patent for a specified term of years, currently 20 years.(1) 35 U.S.C. § 154. However, the government will not enforce your rights for you. If someone infringes your patent rights, YOU have to sue to enforce your rights. If you do not have the ability an willingness to sue an infringer, your patent will not be worth much.
- TYPES OF PATENTS
Before you can intelligently consider patent protection for your invention, you need to understand the types of patents available. Most inventors should pursue a utility patent, which protects the useful aspects of an invention. Design patents only protect the decorative appearance of an article. Provisional patents are not, strictly speaking, patents at all. Rather, a provisional patent give the owner the right to market his invention for one year as "patent pending." Plant patents only apply to specific types of asexually reproduced plants, and few inventors need them.
If you are having an attorney or company prepare a patent for you, be sure to clarify what type of patent they will be seeking. You should not pay more than $2,000 to have a design patent filed -- period -- regardless of what else the person or company purports to be doing in relation to the design patent. As noted below, a design patent is not the right protection for an invention which has some useful feature or features as its primary novelty.
The utility patent is THE patent for most inventors -- it is the workhorse of intellectual property protection. A utility patent includes a written specification describing the field of the invention, the state of the prior art, and the objects and features of the invention. Drawings are also included where necessary for the understanding of the subject matter sought to be patented, and only in the rarest of circumstances are drawings not necessary. A utility patent includes "claims" which are the heart of the patent. Claims particularly point out and distinctly claim the subject matter which the inventor regards as his invention. 35 U.S.C. § 112. A patent is only as good as its claims. The patent can have an excellent written description and wonderful drawings, but if the claims are no good, the rest of the patent is worthless.
A design patent protects the ornamental design for an article of manufacture. It only protects the appearance of the invention, not its structure or utilitarian features. Unless your invention is almost purely decorative, a design patent is not right for you. Design patents have limited value for most inventions.
There is some overlap between design patents and copyrights. A decorative article may be protectable by both copyright and a design patent. The nature of the protection is different, and so is the cost -- you should be able to have a copyright filed for you for less than $350, and the filing fee is only $30 if you do it yourself; a design patent costs $155 for a "small entity" (which includes most independent inventors), and it may cost you thousands of dollars if you have a design patent professionally done for you.
A plant patent is granted on any distinct and new variety of an asexually reproduced plant, including cultivated mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state. There are probably patent attorneys that specialize in plant patents, but I don't know any.
The newest kid on the patent block is the "provisional patent." Strictly speaking, this is not a patent at all. It is a glorified version of the document disclosure program. It establishes a filing date, and it gives an inventor the right to market an invention for up to one year as "patent pending." That is about all a provisional patent does. It does not protect the invention; to do that, you will have to seek a utility patent. My biggest concern about provisional applications is that they do not include the most important part of a utility patent: namely, claims. The claim defines what a patent covers, and provisional patent applications don't include claims. This glaring omission makes them very suspect, in my opinion. I do not recommend that anyone who is serious about their invention seek a provisional patent.
- SHOULD I SEEK A PATENT?
Patent protection is generally a pre-requisite to commercial success of an invention. A patent does not guarantee success, but the lack of patent protection for your idea practically guarantees failure. If your invention is not patented, or at least "patent pending," manufacturers, distributors and financial people are less likely to take your invention seriously. If they do take an interest in your invention, it is much easier for your invention to be stolen, and you will have fewer, if any, remedies for this theft if your invention is not patented. This section addresses several of the things you should consider in deciding whether to seek patent protection for your idea.
Most reputable patent attorneys will give you a free consultation either via the telephone or in person to help you determine whether to seek patent protection. Remember, however, that an attorney's opinion is just that: an opinion. If you still have questions after your first consultation, consult another attorney for a different point of view. Make sure you feel comfortable with the advice you are given before you proceed.
- YES, YOU SHOULD SEEK A PATENT BECAUSE...
- ENABLES YOU TO PROTECT YOUR IDEA
- SEEKING A PATENT INDICATES YOUR COMMITMENT TO YOUR IDEA
When you approach manufacturers about your idea, why should they take you seriously if you have not spent the time and money to obtain a patent? A patent demonstrates two things: (1)that you believe enough in your idea to spend time and money developing it; and (2)that it has at least the level of novelty and nonobviousness required to obtain a patent. A patent is like a rite of passage to serious consideration of your idea by industry.
- NO, YOU SHOULD NOT SEEK A PATENT IF...
If one of the following limitations apply to you, don't seek a patent. There are many reasons why a patent may not make sense for your invention: you don't have the money to seek a patent; your idea is not marketable; your idea is not subject to patent protection. Before you spend the time and money to seek a patent, be sure it is right for you.
- YOU CAN'T AFFORD TO LOSE THE MONEY
If you hire a reputable patent attorney, it will cost you at least $5,000, including filing fees, drafting fees, and attorney fees to get a U.S. patent. The cost may very well be closer to $10,000 or even more. I work on either a flat fee schedule or at an hourly rate, and my fees are published on this site for your reference.
Consider money and time you spend seeking a patent as a high-risk investment. Even with the best of ideas, there is not a very great chance that you will make more money from your patent than you invested up front in attorney fees, not to mention your own investment of your time. Do not spend any money on a patent that you cannot afford to lose. If you can't afford to lose the money, invest it in something safe like bonds.
- YOU HAVE WAITED TOO LONG TO SEEK A PATENT
If you wait more than one year from various trigger dates, you may forever lose the right to obtain a patent on your invention. Most notably, if your invention was on sale or in public use in the United States more than one year before you applied for a patent, you are forever barred from patenting that invention, though you may be able to patent an improvement thereto. 35 U.S.C. § 102(a). By trying to sell your invention, you may be activating the one year statute of limitations. Once your invention is "on sale" the one year clock starts. There are many complications regarding whether your invention is "on sale," so it is best to consult a licensed patent attorney if there is any doubt.
- YOUR IDEA IS NOT MARKETABLE
Unless you are just seeking a patent for fun, you must consider whether your idea is marketable. Most inventors never make back their initial investment in obtaining a patent, so you should carefully consider the marketability of your idea before proceeding. Most reputable attorneys avoid giving much advice regarding marketability. The craziest inventions sometimes make money.
However, after a patent search, it may become clear that there are marketability problems with your invention. For example, if your patent search reveals a great number of patents with claims very similar to your invention, yet you cannot find such a device in any store, there must be some reason the patents have not been commercialized -- the production costs are greater than consumers are willing to pay; the product requires people to change long established habits or ways of doing things, etc. Therefore, except in obvious cases, I recommend that you proceed with a patent search before making a serious evaluation of marketability.
Also, your trusted friends may be a valuable resource regarding marketability. What do they think of your invention? Would they be willing to pay for your invention. What problem issues do they raise? Tell them to be brutally honest because often they may tell you flattering things to avoid hurting your feelings. Tell them your feelings won't be hurt by their true thoughts, but your pocketbook will be hurt if you spend money and time on a bad idea.
I think most simple formulas which purport to evaluate the marketability of your idea are bunk. Similarly, most companies which claim to offer marketability analysis are really just scam artists trying to lure you into paying them a large amount of money for very little work and a rosy written report that is favorable even for the most ludicrous inventions. BE VERY WARY OF COMPANIES OFFERING MARKETABILITY ANALYSIS!
- THERE ARE BETTER WAYS TO PROTECT SOME IDEAS
Some ideas, inventions or works are better protected by copyrights, trademarks or trade secrets than by patents. In particular, software, though potentially subject to patent protection, may in some instances be better protected copyright(s). A lamp with a sculpted base may be subject to design patent protection, but similar protection may be available for less money in a copyright. As another example, where a compound can be manufactured by a process, and there is no way to determine from examination of the compound, by what process it was manufactured, it may be best to simply keep the process as a "trade secret." Formulas or recipes are also often protected by trade secrets as the formula for Coca Cola. has been for many decades. The best way to make a determination of the proper type of protection for your idea is by consulting an attorney specializing in intellectual property.
- IDEA IS NOT PATENTABLE SUBJECT MATTER
Most inventions fall within the broad category of "patentable subject matter." It is unlikely that your idea is not at least theoretically subject to patent protection.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent therefor...
35 U.S.C. § 101.
In interpreting the above-cited language, the Supreme Court has held that almost "anything under the sun that is made by man" may be patented. Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980).
However, there are still a few things that can't be patented. You can't patent an abstract mathematical principle, an algorithm or a law of nature. The Patent Office formerly used this principal to severely limit the patentability of computer-related inventions. However, recent decisions have caused the Patent Office to issue written guidelines regarding computer-related inventions. The guidelines are quite lengthy, but, suffice it to say, that most computer-related inventions are now potentially patentable if you craft your claims carefully.
You cannot patent something unless it is useful for some known reason. For example, you cannot patent a new "composition of matter," i.e., a chemical compound such as a pharmaceutical, without asserting a use for the compound. The use could be a method of treating cancer using the compound, but there would have to be some basis or reason to believe the compound would actually be effective for the stated use.
As another example, you can't patent an "aggregation."(2) An aggregation is two or more elements incorporated in the same device which do not cooperate one with another; for example, a washing machine with a telephone. The washing machine and the telephone are incorporated in a single device, but there is no cooperation between the two, and they do not use significant common components.
There are other reasons why your idea might not fall within the realm of patentable subject matter. However, a good patent attorney should be able to work with you to identify ways to fit your idea into one or more of the classes of things that are patentable. Even an law of nature may be patentable if you can identify a practical application thereof.
- WHERE DO I START?
The first step is to clearly lay out the nature of the invention. You should do this in writing, as soon, and as fully as possible. Next, you should see how your idea compares to existing products, technology and patents. A "patent search" is the most common way to compare your idea to related ideas.
- PREPARE A WRITTEN SUMMARY OF YOUR IDEA
The first step is to prepare a written description of your invention. The description should include such drawings as you are able to prepare, but the drawings need no be professional quality. Even crude hand sketches are better than nothing. You should carefully document the development of your invention.
You can download and print out from this site a simplified form for documenting your invention. Alternatively, you can download and print out a list of issues to address in documenting your invention, which is a free list of the issues you should address in your disclosure. Ideally, you would consult both of these resources for ideas. A couple of DOs and DON'Ts related to disclosing your invention are listed below:
- Do keep a bound notebook detailing your development of your invention;
- Do prepare as detailed a disclosure as possible, have a couple of people you trust and believe can understand the disclosure review it, and have them sign indicating they read and understood the disclosure;
- Do update your disclosure and have it re-reviewed and signed by your witnesses as you make improvements;
- Don't have your disclosure notarized and mail it to yourself, as this silly exercise will not help you much if you get into litigation regarding when you made the invention and reduced it to practice.
- PATENT SEARCH
You can do a patent search yourself. You can also try to overhaul your car's engine yourself. I don't recommend that you do either. There are people with the tools, expertise and patience required to do their own high quality patent search. Most people, however, will still need a professional search before a patent application is prepared.
The most comprehensive type of search is a manual search performed either at the U.S. Patent and Trademark Office or at one of the many patent libraries around the U.S. A link to the patent depository library at Oklahoma State University is provided for your reference. If you elect to perform your own search at a deposit library, expect to spend at least three hours and perhaps as much as a full day to perform a thorough search. A manual search includes not only keyword searching, but searching based on the classes and sub-classes into which the U.S. Patent and Trademark Offices places all patented inventions. A manual search also includes a review of patents from the 1700s to present.
An electronic search, either on-line or using an electronic database, may also be performed. You can perform your own patent search on-line using one of the search engines offered by the U.S. Patent and Trademark Office, IBM, or others. The oldest patents available on the systems, however, are from 1971. Any of the millions of patents older than 1971 are simply not available online, at least not for free.
- WHAT ARE THE STEPS TO GET A PATENT?
The path from having an idea to obtaining a patent is loaded with traps for the unwary. Patent examiners, while not necessarily by nature, are charged with the duty of ensuring that a patent application meets all of the statutory and administrative tests for patentability. Many deadlines are absolute and cannot be extended. There are technical issues which may seem silly to the uninitiated, but which will, if ignored, prevent you from obtaining a patent. Therefore, most inventors should have their patent application prepared and prosecuted by a licensed patent attorney.
- PREPARE AN APPLICATION
Preparing a patent application is one of the most difficult writing tasks imaginable. The author must be aware of and comply with the statutory and administrative requirements of the U.S. Patent and Trademark Office. The author must also be able to understand not only the invention at hand, but also, the prior art identified in the patent search. The author must write the application to emphasize the shortcomings of the prior art and show how the present invention overcomes those shortcomings. The invention must be "enabling" -- that is, it must be sufficiently detailed to enable one skilled in the art related to the invention to practice the invention after reviewing the disclosure in the patent application. The following elements are required for a complete application:
- a written specification containing a concise written description of the invention sufficient to enable one "skilled in the art" (that is, familiar with the field of the invention) to make and use the invention, and also setting forth the "best mode" of carrying out the invention;
- At least one claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention;
- at least one drawing as needed to understand the invention; and
- an oath that the applicant believes himself or themselves to be the original and first inventor(s) of the invention.
35 U.S.C. § 111.
- WRITTEN DESCRIPTION
The written description in a patent generally has the following parts: a title, cross references to any related applications, the background of the invention including the field of the invention and related art, a brief summary of the invention, a brief description of the drawing(s), a detailed description of the invention, and claims. Manual of Patent Examining Procedure§601.
If the written description in your application is insufficient, the application will be rejected regardless of whether your idea is the best thing since sliced bread. Patent examiners, like all humans, are creatures of habit. If you do not write your patent according to the standards commonly used among patent practitioners, you may annoy your patent examiner, which is generally not a good idea. You can see a typical written description by clicking on this link.
The claims are the heart of a patent. Each claim is a single sentence beginning with the phrase "I / we claim" and ending with a period. Elements within the claim are typically separated by semi-colons. A typical claim is illustrated in the written description linked hereto and can be viewed by clicking on the link.
In all but the rarest circumstances, a complete application must include drawings. Drawings must comply with strict guidelines established by the U.S. Patent and Trademark Office. The guidelines applicable to patent drawings are unique. They are not the same as the guidelines applicable to most commercial artwork such as blueprints, engineering drawings or the like. Failure to comply with the applicable guidelines may result in rejection of your application. Therefore, it is strongly advisable to have your drawings prepared by a draftsperson experienced with the requirements for patent drawings. My draftsperson, Peter Shao, has many years experience, and he can convert even the crudest hand sketches into drawings which pass muster with the patent office.
- FILING FEES
The fees charges by the U.S. Patent and Trademark office for filing patent applications change from time to time. Up until December 29, 1999, the fee to file a utility patent was $380, but after that date, the fee has been reduced to $345.(3) A complete list of fees applicable to patents is available at the U.S. Patent and Trademark Office's web site. NOTE: If you successfully obtain a patent, an issue fee (now $605) will be due. In addition, maintenance fees will be due starting 3 = years after your patent is issued.
- PROSECUTE THE APPLICATION
After you prepare and file your application, a patent examiner at the USPTO will review it to ensure that it meets the applicable requirements. The examiner will perform another patent search starting with the patents you disclosed as a part of your application. Once he has performed the search and reviewed your application, the examiner will prepare a written "office action" summarizing his findings.
- OFFICE ACTIONS
For the vast majority of patent applications, the first office action contains a rejection of the claims. That is, the examiner asserts that the invention is not patentable. Do not be alarmed if the examiner finds patents your first search did not reveal and comes up with convincing arguments that your application is not patentable -- this is normal. A real office action can be viewed by clicking on the above link.
You (or preferably your attorney) have three months (six if you pay for extensions) to respond to the office action. Your response will basically state why the examiner is wrong and why you are, in fact, entitled to obtain a patent. A real response to an office action can be viewed by clicking on the above link. NOTE: a patent was allowed based on the above-noted response to the office action.
If you cannot convince the examiner that you are entitled to a patent, you may want to appeal the rejection of your application. Additional fees will be due for an appeal, and you will need to prepare a written brief in support of your appeal. Appeals are heard by the Board of Patent Appeals which consists of administrators and patent examiners. An applicant who is not satisfied with the decision rendered by the Board of Patent Appeals, can appeal from there to the federal courts for relief.
- SHOULD I HIRE AN ATTORNEY? -- YES!
My advice is an emphatic YES. A list of patent attorneys registered to practice before the U.S. Patent and trademark office is available. Like many patent attorneys, I work on either a flat fee schedule or at an hourly rate. Many patent attorneys fail to include the filing fees (currently at least $345) and drafting charges (usually at least $200) in their published prices; my prices include these costs.
I do not believe that there are very many inventors who can prepare and prosecute an application for patent so as to obtain a patent which best protects their idea. You will spend a great deal of time preparing the application in the first place -- 40, 60 or more hours.
The first office action will probably make you want to pull your hair out. The examiner will probably identify numerous technical problems with your application, not to mention the substantive issues. You will then have to go to a law library to do the research necessary to marshall your response. In short, do not try this at home.
- HOW DO I MAKE MONEY FROM MY IDEA?
For those of you looking for easy money, look elsewhere. Patents are rarely, if ever get rich quick schemes. However, patents have always been and remain a vital part of the American Dream. The reality is that the keys to success marketing your idea are hard work and persistence.
This section gives a basic outline of the approach most experts recommend to market your invention. The first step is seeking patent protection. At the very least, you should have filed a provisional patent application before you begin trying to market your invention. See my reservations above about provisional patents. Preferably, you will have filed a utility patent application.
- IDENTIFYING POTENTIAL BUYERS / MANUFACTURERS
After applying for a patent, the next step is to figure out what companies may be interested in buying or licensing your invention. There are reputable companies who can do this research for you, but there are also a multitude of scam artists of one type or another looking to take thousands of your dollars to do a simple computer search for companies in the same standard industrial code (SIC) as your invention. Most reputable patent attorneys generally avoid getting involved in their client's efforts to market their invention. Therefore, I recommend that you do your own research to identify potential buyers / manufacturers for your invention.
Generally, it is better to have more rather than less prospects. However, one good lead and a focused campaign to interest that lead in your invention, may be better than a hundred leads and a shotgun approach which ends up in the trash can at a hundred different companies.
You can identify potential buyers / manufacturers in many ways. One of the best ways is to visit a store which sells products or offers services related to your invention. Look at the packaging to identify the manufacturer and / or distributor of the goods. The Internet is also an excellent source of leads, and I recommend looking under the Companies listing in Yahoo!. and fine-tuning your selection by choosing appropriate categories of manufacturers until you arrive at a list of companies which meet your needs. Probably one of the best sources of information is your local library. Look for the Thomas Register, which lists manufacturers by location, type of goods produced and various other ways. Another reference which your library may have is the American Business Directories.
- MARKETING = HARD WORK
Marketing will require hard work. In a thorough marketing campaign, you will write dozens, if not hundreds of letters. Form letters are acceptable, but a customized letter, directed to a contact person with whom you have already had a telephone conversation is infinitely more likely to lead to success. You will spend hours doing research, hours on the phone. You may have to spend the money to meet face-to-face with prospects.
- PREPARE WRITTEN MATERIALS
After you file for patent protection and identify potentially interested buyers / manufacturers, the next step is to prepare professional marketing documents. You should have a standard introductory form letter, an example of which is linked hereto. You should also have a one-page executive summary, which gives a quick overview of your invention and concisely explains its marketability. Finally, you must have a brochure, which may, but need not, include a copy of your patent application.
Including a copy of your application is not always advisable, and you should consult your attorney to determine whether it would be beneficial in your particular case. However, I generally recommend including a copy of the application for two reasons: (1) it alerts the recipient that you are seeking patent protection for your idea; and (2) it clearly defines the nature of your invention. Why reinvent the wheel? You paid perfectly good money to have the patent application prepared, why not put it to good use. Most people to whom you will be targeting your package will be engineers or manufacturing personnel who are familiar with patents, so they will be comfortable with the format of your patent appliction.
- IDENTIFY A CONTACT PERSON!!!
In my mind, it is vital to identify a contact person before sending your written materials. Those who manufacture consumer products regularly receive unsolicited ideas from inventors. Due to the volume of ideas received, many of these people may take a very cursory glance at these unsolicited ideas and then throw them away. Your odds that your idea will receive careful consideration increase dramatically if you have identified a contact person, talked to that person on the phone, and the person is expecting your materials. The importance of the personal touch in this endeavor cannot be overstated.
- MAIL WRITTEN MATERIALS AND CUSTOMIZED COVER LETTER
Along with your executive summary and brochure, you should include a cover letter, customized to the interests of your contact person. This letter, directed to a specific person, and addressing their particular concerns is the most important part of your information packet. Take the time to customize your cover letters.
Companies that accept ideas from inventors usually have a standardized agreement they want to use. They may not be willing to negotiate at all. However, you never know unless you ask. In most cases, if the company is really interested in your idea, they will negotiate. In fact, I always question how interested a company is in your idea if they are unwilling to modify, even in small ways, their standard agreements.
One of the biggest mistakes inventors make in negotiating is taking an inflexible position. They may want to sell their invention outright for some arbitrary "bottom dollar" based on their own estimation of their invention's value. Don't make this mistake. Be flexible. Keep your options open.
- LICENSING YOUR IDEA
The most common arrangement is a license where the company pays a small up-front sum for the rights to use the invention, then pays some specified flat fee or percentage for each item sold. This enables the company to limit their risk. If the invention is a flop, they have only invested a minimal amount in acquiring rights to it.
- SELLING YOUR IDEA
Investors should not expect to sell their idea to a company for some large lump sum payment. Companies usually are not willing to pay inventors any sizable lump sum to purchase the invention outright. If a company is willing to purchase your idea for any significant amount of money, it shows that they strongly believe that your idea will be successful. In such a case, I would counsel a client to give a license rather than to sell the idea outright because if it is hugely successful, the price paid by the company will probably be less than, in hindsight, seems fair.
- CONFIDENTIALITY AGREEMENTS
Even if you have a patent, you should have any parties who are interested in your idea execute a confidentiality agreement. Confidentiality agreements can gain you rights to payment for unpatentable improvements to your invention you make during the course of negotiations and subsequent manufacturing. There are other benefits offered by these agreements, so once you find an interested prospect, you should have a confidentiality agreement executed. This also serves as an early test of the strength of the prospects interest. If they are not interested to sign a confidentiality agreement, they probably are not seriously enough interested to execute a license later.
- TRADE NAMES / TRADEMARKS
Rights to a trade name / trademark are acquired through use. Generally, no substantive rights are conferred by state or federal registration of a trademark. The right to the mark is acquired by using it in commerce in association with sales of goods or services. As with copyrights, you are not required to register your mark either federally or on a state level, though there are many reasons why most businesses should (at least on a state level) register their trade name.
- COMMON LAW
Simply by using a trade name in conjunction with the sale of goods and services, you may acquire rights therein. However, your rights, if any, may take a back seat to any others who, prior to your use, may have adopted and used the same or a confusingly similar mark.
Without a trademark search, you have no way of knowing who else may be using your mark. This issue is especially important today in light of the large investments businesses are making in web sites and domain names. If you adopt and use a domain name in conjunction with the sales of your goods / services, you may be infringing the rights of others. You are not safe merely because you have registered the domain name. If someone else was using the name first, they may be able to force you to turn over the domain name to them, and possibly even force you to pay damages. See discussion, below regarding domain names.
- FEDERAL REGISTRATION
The federal system of registering trademarks is intended to minimize confusion regarding trade names. Listing of your mark on the federal register gives constructive notice to others that you claim rights to your trade name. By remaining on the principal register for five years, your mark may become "incontestible" which severely limits anyone's right to challenge your ownership of and right to your trade name.
There are two basic types of trademark applications: (1) "use-based" applications; and (2)"intent-to-use" applications. If you have not yet used the mark in connection with sales of goods or services, you must file an "intent-to-use" application, which is just what it sounds like -- an application stating that you are not yet using the mark, but you intend to. If you are using the mark, you will file a "use-based" application.
Before filing an application, you should search for others using a name like the one you have selected. An on-line search can be done for free using the U.S. Patent and Trademark Office's trademark search engine. However, this search will not reveal any common law or state trademarks. Those searches can be done with computer databases for a fee, or can be done by contacting the secretary of state(s) for the states where you do business and reviewing the business listings for similar names. You should also do an on-line search for domain names similar to the mark you have selected. You can do this at the "dot com directory" or by simply typing the domain names into your Internet browser.
You can file your own trademark application. The forms are available on-line, and are relatively straightforward to complete and file. However, you may very likely run into problems when the trademark examiner responds to your application claiming that your "description of goods is indefinite" or your mark is "confusingly similar" to a mark already registered. That is why, I strongly recommend that you hire a patent attorney to file your application.
Federal registration may not be needed for a "mom and pop" business that only does business locally. However, if that mom and pop business plans on obtaining or already has a domain name incorporating their trade name, they should strongly consider federal registration. Access to the web site is not, in fact cannot practically be, limited to access by persons within the mom and pop's geographic trading are. Rather, the web site, de facto, amounts to doing business nationwide. Therefore, if another obtains a registration of a mark confusingly similar to mom and pop's, mom and pop may receive a cease and desist letter demanding that the domain name be turned over to the entity holding the federal registration.
- STATE REGISTRATION
Generally, state trade names are registered with the state's secretary of state. These applications receive only minimal examination -- for the most part, if your trade name does not exactly match any registered names, the secretary of state will register your name. A link is provided to the appropriate form at the Oklahoma Secretary of State for reference. The Oklahoma form includes simple instructions for registration.
NOTE, HOWEVER, State registration does NOT mean you have a right to use the trade name; rather, it simply serves as constructive notice to others in your state of your use.
- THE INTERNET: DOMAIN NAMES
The Internet has probably spawned more trade name litigation than any other single thing in history. The fact that only one entity across the entire county may have a given domain name has proved problematic. There are probably thousands of medical doctors named Smith around the United States, but a company selling baby care products has the web site "doctorsmith.com." None of those Doctors Smith can use that domain name for their web site.
The doctorsmith.com example brings up an interesting point regarding domain names -- there are specific guidelines for domain names from the Trademark Office purporting to specify when domain names may be registered. Several points are noteworthy:
- The ".com" portion of a domain name is irrelevant for trademark registration purposes. "When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance." USPTO Trademark Examination Guide No. 2-99.
- The mark must "separately identify applicant's services." The USPTO refused to register an attorney's proposed mark WWW.EILBERG.COM (Eilberg was the attorney's last name). It was held that "the asserted mark...merely indicates the location where the applicant's Web site appears. It does not separately identify the applicant's legal services as such. In re. Eilberg, 49 USPQ2d 1955 (TTAB 1998).
- Advertising one's own products or services on the Internet is not a service. A business that creates a web site for the sole purpose of advertising their own products or services cannot register a domain name used to identify that activity. In re. Reichold Chemicals, Inc., 167 USPQ 376 (TTAB 1970); TMEP § 1301.01(a)(ii).
- The same rules that apply to registration of traditional marks apply to registration of domain names -- e.g., descriptiveness may prevent registration as may genericness, geographical connections, and the like.
- The ".com" portion of a domain name is irrelevant for trademark registration purposes. "When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance." USPTO Trademark Examination Guide No. 2-99.
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. Section 106 of the 1976 Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:
To reproduce the work in copies or phonorecords;
To prepare derivative works based upon the work;
To distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
To perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works;
To display the copyrighted work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work; and
In the case of sound recordings, to perform the work publicly by means of a digital audio transmission.
In addition, certain authors of works of visual art have the rights of "attribution" and "integrity" as described in section 106A of the 1976 Copyright Act. For further information, see Circular 40, available on-line if you have Adobe Acrobat..
You can file your own copyright application for the filing fee of $30 if you have the right form, and there are quite a few different forms. The forms are available on-line if you have Adobe Acrobat.
- OTHER PROTECTION
In some cases, the best option may be "none of the above." The formula for Coca Cola. has been kept a "trade secret" for decades. If the formula were copyrighted, it would be publicly available, and others could easily obtain it and copy it. Coca Cola might have a case for copyright infringement, but the cat would be, as they say, out of the bag. It has made more sense to maintain the formula as a trade secret.
In order to have a trade secret, you must take reasonable measures to maintain the confidentiality of the trade secret. These reasonable measures include having employees sign confidentiality agreements and using secure methods for communications related to the trade secret.
1. Patents filed on or after June 8, 1995 have a term of up to 20 years from the date the application for patent was filed. In order for a patent to have the full term, maintenance fees have to be paid starting in the third year. Patents in force on June 8, 1995 or resulting from applications filed before June 8, 1995 will have a term which is the greater of the twenty years from filing or seventeen years from grant.
2. See Manual of Patent Examining Procedure 2173.05(k). This is not technically an example related to patentable subject matter, but it is closely related, and may be understood as a limitation on patentable subject matter.
3. Both the old and new fees are cited for "small entities" which are small businesses as defined by the SBA. Most independent inventors will be small entities. For those who are not "small entities" the fees are double those cited above.