ntellectual property is often the most valuable asset a company or individual has, and yet it is often the least protected. Intellectual property includes many forms of intangible property, such as copyrights, trademarks, patents and trade secrets. Intellectual property law protects this valuable property from exploitation by third parties, ensuring that you will fully benefit from your efforts.
A patent is the grant of a property right in an invention. The patent is granted by the government to the inventor who applies for the patent. A patent prevents others from making the invention, using or modifying it, or selling the invention without the inventor’s permission. A U.S. patent provides protection throughout the U.S. and its territories, and gives the patent owner the right to exclude others from importing products into the U.S. that infringe on the patent. Foreign patent protection is also available in many countries.
- Patent Prosecution
Patent prosecution is the process of writing and filing a patent application with the U.S. Patent and Trademark Office (USPTO), and pursuing the patent application with the USPTO. This differs from the concept of “prosecution” which you may be familiar with in other areas of law, where the term refers to the position of the prosecutor in criminal law, or the plaintiff in a lawsuit. If you need a patent attorney to help you protect intellectual property, then you are looking for a patent prosecutor. Patent prosecution lawyers are highly specialized attorneys, because they have a technical background in addition to being licensed to practice law. In order to obtain patent rights for an inventor, a patent lawyer will generally undertake the following steps:
- Preparation and Drafting – The lawyer must first find out as much about the invention as possible by interviewing the inventor to understand the full nature of the invention and determine which features of the design are novel. A patent lawyer will need to research the general field of the invention in order to ascertain what is already known to people in that area. This is known as the “prior art,” which is constituted by all information which has been made available to the public, in any form, before a given date that could be relevant to the patent’s claims to originality. If an invention has already been described in the prior art, the USPTO will not grant a patent on the invention.
- Filing the Application – After drafting the application, a patent attorney will file the patent application with the USPTO. Patent applications usually have at least two key sections, including a written description of the invention and a set of “claims” which define exactly what the applicant regards as the specific features of the invention. The claims distinguish the invention from all prior art. The patent office compares these claims to the prior art before issuing a patent. In most instances, the application includes a set of drawings which explains the invention.
- Search and Examination – An important phase of patent prosecution is the search and examination phase. The patent office conducts a search of the prior art to determine if there are any other inventions relevant to the new invention. This information is compiled into a search report, which is sent to the applicant. The examiner conducting the search will sometimes provide a preliminary, non-binding opinion on the patentability of the invention, giving the applicant options for how to proceed. The examination of the patent is a process whereby the patent office determines if the invention meets the requirements for granting a patent. The office considers whether the invention is novel and inventive, whether it is in an excluded area, and whether it complies with other formalities required by law. If the examiner finds the application does not meet the legal requirements, the applicant will be notified. The applicant may then respond to the patent office’s objections by arguing in support of the application, or by amending the application to make it conform to the law.
- Appeals – If the examiner and applicant are unable to reach agreement on patentability of an invention, the applicant can appeal to the patent office or to a court of law. In order to successfully appeal, the applicant needs to show his patent was wrongly rejected or that the patent office incorrectly applied relevant law.
- Patent Counseling
In today’s competitive business world, it is essential to carefully pursue a patent strategy and protect a company’s intellectual property. Patent counseling involves strategizing with inventors and patent owners about patent applications to ensure they comply with the law. Counseling also includes reviewing company patent portfolios to determine whether there are international filings which should be made, and whether the company is fully defending its patents. These periodic reviews help companies maximize the return on the patent investments. Examples of patent counseling include:
- Developing communication systems which facilitate prompt disclosure and evaluation of new inventions.
- Evaluating patent portfolios by auditing research and development departments to identify a company’s intellectual property.
- Evaluating the commercial importance of new technologies and identifying opportunities for international patent protection.
- Defining intellectual property assets which can be monetized by licensing.
Utility, Design and Plant Patents – Patents are legal grants which protect inventions and new discoveries which are new and non-obvious. There are three kinds of patents: utility, design, and plant patents. Each type of patent protects a specific type of invention and has its own set of legal requirements. In some cases, an invention or discovery may satisfy the requirements for more than one type of patent. The most common patent issued by the patent office is a utility patent. This patent covers processes, compositions of matter, machines and manufactures that are considered both new and useful. A utility patent can also be obtained for inventions which improve upon existing processes, compositions of matter, machines or manufactures. A “process” is an act or method of doing something. A “composition of matter” refers to chemical compositions. “Machines” are all things which are considered machines, while “manufactures” are defined as goods that are made or manufactured. Design Patents A “design” is defined as the “surface ornamentation” of an object, including its shape or configuration. To be eligible for patent protection, the design must be inseparable from the object. A design patent will then protect the object’s appearance only, rather than other aspects of the object. An invention will not be fully protectable with a design patent unless the inventor also seeks a utility patent on the functional or structural features of an object. Plant Patents Plant patents protect plants which are new and distinctive. The plant must be invented or discovered and asexually reproduced, creating a new variety of plant. Plants which are found in an uncultivated state or which are tuber propagated cannot be patented.
- Patent Litigation
After an inventor obtains a patent, he or she has the right to exclude others from the unauthorized sale, use or reproduction of the invention. However, once the USPTO grants a patent, its involvement with the invention ends. The patent office does not pursue or investigate claims of patent infringement, even if you bring infringement to their attention. The bottom line is that it is up to the patent owner to pursue infringement. This is done by hiring a patent litigator to sue companies or individuals which have infringed the patent. There are several potential outcomes to patent litigation:
- Injunction: An attorney may be able to secure an injunction ordering the infringing party to stop the sale, use, or production of the infringing product. This ends the illegal use of the patent but does not compensate the patent owner.
- Exclusion order: If the infringer is an entity outside the United States, another litigation strategy is to take the case to the International Trade Commission (ITC), which may issue an exclusion order. An exclusion order is similar to an injunction. Since it too does not result in monetary damages, many patent litigators pursue patent litigation in both federal court and with the ITC in order to seek monetary damages.
- Monetary damages: A patent owner is entitled to damages from an infringer. To receive lost profits or royalties from the infringer for the use of the patent, patent owners must sue in federal court.
An experienced patent litigator can help patent owners enforce their patent rights.
A trademark is a word, phrase, symbol or design, or combination of those elements, which identifies the source of goods or services, distinguishing it from those of others. If you want to register a trademark, you should consult with an attorney. A trademark attorney can help you with the following actions necessary to register and use your marks:
- United States Patent and Trademark Office (USPTO) database searches
- Comprehensive trademark clearance searches
- Federal and state trademark registrations
- Trademark availability opinion letters
- Responses to USPTO actions
- Trademark opposition and cancellation proceedings at the Trademark Trial and Appeal Board
- Cease and desist letters
- Trade dress protection
- Joint development agreements
- Licensing and royalty agreements
Copyright law protects creative works of expression, including written works, music, photographs, paintings, film, engineering designs, architectural plans, software code and more. Copyright protection gives the owner exclusive rights to reproduce, distribute, publicly perform, and create derivative works. Copyright attorneys can help an owner stop infringement, maintain control of their work and avoid expensive legal disputes. Under U.S. law, copyright protection exists as soon as a creative form has been fixed in a tangible form. However, copyright owners can also register their works with the federal government. Registration gives owners many benefits, including making it easier to enforce rights to stop infringers. Registration also helps prevent disputes about authorship by providing proof of the date you created the work. Who needs a copyright lawyer?
- Writers, Filmmakers, Film Studios, Songwriters, Composers, Musicians, Photographers, Software Developers, Architects, Visual Artists.
Under the law, copyright owners are entitled to recover statutory damages and may recover attorney’s fees from infringers. Copyright lawyers with expertise in copyright infringement can help you when someone else is using your material without your permission. A copyright lawyer may also be necessary if you have been improperly accused of copyright infringement.
- Licensing – The licensing of intellectual property rights is an important tool for new businesses, expanding businesses, or inventors and creators who wish to profit from their creations. A licensing agreement is a partnership between the licensor (property rights holder) and the licensee (another party who wants the right to use the works) in exchange for an agreed payment. This payment is often referred to as a royalty or fee. You can license any kind of intellectual property, such as patents, trademarks, copyrighted works, and trade secrets. There are many types of licensing agreements, such as:
- Patent Licensing or Royalty Agreement
- Technology License Agreement
- Trademark Licensing and Franchising Agreement
- Copyright License Agreement
Scope of License Agreements – One of the most important things to consider in a licensing agreement is its scope. The license will determine if the licensee has unrestricted use of the intellectual property, or whether it may only be used in certain ways. The scope will also consider the length of time applicable to the contract, such as whether it is for two years or for the lifetime of the owner. Lawyers can help properly define the scope of an intellectual property license. It is important that the rights granted by the agreement are broad enough to entice potential licensees, but still narrow enough to prevent the licensee from having permanent and unrestricted control over the invention or work. It is also critical for the agreement to strictly define revenue streams. There are many different ways to calculate revenue, such as recurring payments (royalties), monthly lease payments, or a one-time fee. Consultation with a lawyer will help you figure out which compensation agreement makes the most sense for you.