Our Services
Intellectual Property
There are three common types of Intellectual Property we deal with: Patents, Trademarks, and Copyrights.
What is a Patent?
A patent protects an invention, for example a mechanical device, an electrical device, a combination of ingredients, or a method. A US patent must be filing within one year of a public disclosure or sale. Patent claims define what is owned, and if a device or method includes all the elements of at least one claim, it infringes the patent.
Patent Life Cycle
Our Services
We offer the services of patent searches, patent drafting, patent filing, responding to Office Actions (examinations of the patent applications), and paying issue and maintenance fees.
First To File Patent System
US Patent laws have been changed to a first-to-file system. As a result, delays in filing a patent application may place obtaining a patent at risk.
Types Of Patent Applications
Design Patents
A design patent is essentially a set of drawings, not a detailed functional description of an invention. Infringement of a design patent is determined by comparing the appearance (ornamental design) of the drawings to the article. There are no dimensions in a design patent. The appearance of functional elements may be part of an ornamental design, but merely functional features may raise difficult issue when a design patent is enforced.
Utility Patents
There are two kinds of utility patent applications, Provisional Applications and Non Provisional Applications. A Provisional Application is not examined, but provides a filing date for what is disclosed in the application, and need not require claims. However, most patent attorneys include at least one claim which may be required if foreign application are eventually filed.
A Non Provisional Application must be filed within one year of filing one or more Provisional Applications to benefit from the Provisional Applications. The Non Provisional Application must include a set of proposed claims which will be compared with prior art by a Patent Examiner in the US Patent and Trademark Office (USPTO). When a patent issues, the claims determine what is owned, and the specification and drawings provide support and explanation to the claims. The prior art is generally US Patents and Patent Applications filed before the filing date of the examined application, which may be the filing date of a Provisional Application when the examined application claims the benefit of one or more Provisional Application. Prior art may include foreign patents and applications, and any published (i.e., made public) documents. Allowed claims must include something new and not an obvious variation of elements in the prior art. An Examiner can combine features in several prior art documents to determine that claims in a new application are merely obvious combinations of prior art even if there is no prior art disclosing the combination of features. It is impossible to find all the prior art that may be cited when a patent application is examined and therefore impossible to guarantee that any patent application will result in a patent.
Foreign Patents
Generally, foreign patents must be filed before any public disclosure of an invention. However, there are international agreements which allow an applicant to benefit from the filing date of a national application when foreign applications are filed within one year of the national application filing date. The filing date may be a Provisional Application filing date, or a Non Provisional Application filing date. When a Provisional Application has been filed, an applicant seeking foreign patents generally needs to file both the US Non Provisional Application and foreign applications by the one year anniversary of filing the Provisional Application.
We cannot guarantee performance of foreign firms.
Patent Cooperation Treaty Patent Applications
Most countries (notably not including Argentina and Taiwan) are part of the Patent Cooperation Treaty (PCT) allowing a PCT application to be filed within one year of the national filing to obtain an additional 18 months to file foreign applications, however, a PCT Application does not lead to any form of international patent.
Foreign Patent Applications
We use foreign firms to file patents in their countries. While we have done our best to develop relationships with trusted foreign firms, we cannot guarantee results obtained by these foreign firms
Foreign patents must be filed within one year from the U.S. filing date in order to take advantage of the international convention relating to the filing of patents outside of the United States. Under this convention, any patent applications which are filed within one year from your United States filing date can be treated as if they were filed in that foreign country on the same day they were filed in the United States. The law in almost all countries requires that the application be filed in that country before the invention is known in that country. Since it takes about two months to translate and assemble a document for foreign filing, we must receive your instructions regarding any foreign filing at least two months before the one-year period has expired.
Alternatively, a Patent Cooperation Treaty (PCT) application may be filed within one year of filing the application in the United States, and thereby benefit from the filing date of the U.S. application. Having filed a PCT application, the applicant generally has thirty months (from the earliest filing date) to file applications in foreign countries (Switzerland being a notable exception to the thirty month rule). Nearly all industrial countries are members of the Patent Cooperation Treaty, the MOST notably exceptions being Argentina and Taiwan.
If you are interested in foreign patent protection, we recommend that you carefully consider your market and your overall goals. Costs of obtaining and enforcing foreign patents may be significant, for example, the translation costs may be significant. Careful consideration of all your options may substantially reduce cost. For example, a European Patent Office (EPO) patent may be filed and prosecuted in English, and translations may be obtained after allowance of the EPO patent. Thus, the decision to translate the patent into the various languages may be deferred until after the applicant knows the patent is granted, and knows what claims have been allowed.
What is a Trademark?
A trademark is a combination of a mark and the goods or services associated with the mark, and protects the name of the goods or services. An arbitrary name is the strongest and a descriptive name my only be registered on the Supplemental Register or not be registerable at all if a generic name for the goods or services. A mark can be words, a design, or a words with a design. We recommend registering words because that is how people talk about and search. A trademark protects use of a similar mark for similar goods or services and if someone uses a similar mark that customers familiar with your mark and goods or service would think you are the source of the goods or services, consumer confusion exists and your registration has been infringed.
Trademark Registration Process
Trademark Application Process
Goods or Services: CLIENT must provide a list of the goods they wish to have their trademark protect. For example, if you use your mark on clothing, CLIENT should provide a list of the types of clothing the mark will be used on, such as pants, shorts, tshirts, etc. If CLIENT’s trademark is used with other goods, for example, cosmetics, the application can be filed in an additional class to protect CLIENT’s use for a type of goods.
If the Mark is for services. CLIENT must provide the type of service.
IN USE or INTENT TO USE: If the mark is currently in use, the application may be filed with dates of first use and evidence of use (a specimen) showing how the mark is currently being used in commerce. If there are no issues, a registration may be received in eight to 12 months. If the mark has not been used in commerce, the application may only be filed as Intent To Use, and dates and evidence of use (the specimen) are filed in a Statement of Use after an allowance is received, which is typically between eight and 12 months after filing.
A specimen for goods is typically a photo clearly depicting the mark on the product, product packaging, or a label with the mark clearly shown. The specimen can also be a screen shot of CLIENT’s website as long as the trademark is prominent and the product can be ordered and paid for on the website.
Service mark specimens may be a storefront photo or literature showing the mark and including a description of the services.
Foreign Trademark Applications
We can apply directly for foreign trademark protection in a number of countries through the US Patent and Trademark Office using the Madrid Protocol. The fees vary depending on the specific countries. Using the Madrid Protocol is generally much less expensive that filing in individual countries using attorneys in those countries.
What is a Copyright?
A copyright protects art, for example, graphics, particular photographs (not a different photograph of the same object), stories, music compositions, etc. A copyright must be filed by the author unless they are your employee, but can be assigned to the intended owner. Copyright infringement requires copying the art and the copy generally must be very similar to the copyrighted art, in contrast to a trademark which may be merely similar, one exception is where the “spirit” the author instilled in the art is copied which is somewhat abstract.
Copyright is originality and fixation
Original Works
Works are original when they are independently created by a human author and have a minimal degree of creativity. Independent creation simply means that you create it yourself, without copying. The Supreme Court has said that, to be creative, a work must have a “spark” and “modicum” of creativity. There are some things, however, that are not creative, like: titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; and mere listings of ingredients or contents. And always keep in mind that copyright protects expression, and never ideas, procedures, methods, systems, processes, concepts, principles, or discoveries.
Fixed Works
A work is fixed when it is captured (either by or under the authority of an author) in a sufficiently permanent medium such that the work can be perceived, reproduced, or communicated for more than a short time. For example, a work is fixed when you write it down or record it.
Who is a copyright owner?
Everyone is a copyright owner. Once you create an original work and fix it, like taking a photograph, writing a poem or blog, or recording a new song, you are the author and the owner.
Companies, organizations, and other people besides the work’s creator can also be copyright owners. Copyright law allows ownership through “works made for hire,” which establishes that works created by an employee within the scope of employment are owned by the employer. The work made for hire doctrine also applies to certain independent contractor relationships, for certain types of commissioned works.
Copyright ownership can also come from contracts like assignments or from other types of transfers like wills and bequests.
What rights does copyright provide?
U.S. copyright law provides copyright owners with the following exclusive rights:
- Reproduce the work in copies or phonorecords.
- Prepare derivative works based upon the work.
- Distribute copies or phonorecords of the work to the public by sale or other transfer of ownership or by rental, lease, or lending.
- Perform the work publicly if it is a literary, musical, dramatic, or choreographic work; a pantomime; or a motion picture or other audiovisual work.
- Display the work publicly if it is a literary, musical, dramatic, or choreographic work; a pantomime; or a pictorial, graphic, or sculptural work. This right also applies to the individual images of a motion picture or other audiovisual work.
- Perform the work publicly by means of a digital audio transmission if the work is a sound recording.
Copyright also provides the owner of copyright the right to authorize others to exercise these exclusive rights, subject to certain statutory limitations.
How long does copyright protection last?
The length of copyright protection depends on when a work was created. Under the current law, works created on or after January 1, 1978, have a copyright term of life of the author plus seventy years after the author’s death. If the work is a joint work, the term lasts for seventy years after the last surviving author’s death. For works made for hire and anonymous or pseudonymous works, copyright protection is 95 years from publication or 120 years from creation, whichever is shorter. Works created before 1978 have a different timeframe. Learn more about copyright duration in our Duration of Copyrights Circular.
What is copyright registration?
Copyright exists automatically in an original work of authorship once it is fixed, but a copyright owner can take steps to enhance the protections. The most important step is registering the work. Registering a work is not mandatory, but for U.S. works, registration (or refusal) is necessary to enforce the exclusive rights of copyright through litigation. Timely registration also allows copyright owners to seek certain types of monetary damages and attorney fees if there is a lawsuit, and also provide a presumption that information on the registration certificate is correct.
Copyright registration also provides value to the public overall. It facilitates the licensing marketplace by allowing people to find copyright ownership information, and it provides the public with notice that someone is claiming copyright protection. It also provides a record of this nation’s creativity.
Business Services
We also provide the following business services:
- Form a new corporation or limited liability company.
- License Agreement.
- Infringement Enforcement Services.
- Non-Disclosure Agreements.
- Work For Hire Agreements.
- Assignment and Assumption Agreement.
- Business Sales Agreements.