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The following is a short rundown of the various
types of intellectual property, their duration and the
rights they confer. For a more in-depth treatment of
this subject, please see Essentials of Intellectual
Property, by Alexander I. Poltorak and Paul J. Lerner,
John Wiley and Sons Publishers, 2002.
Patents, copyrights and trademarks, as well as trade
dress, trade secrets and related rights, are collectively
known as "intellectual property" (IP). Patents
can be used to prevent others from using or selling
covered technology or business method, which must be
both objectively novel and unobvious to those familiar
with pertinent technology.
Patents last for twenty years from filing of the patent
application, are functional only after issue, and only
in the country where issued. Patents are costly and
difficult to obtain.
Copyrights may last up to seventy years beyond an author's
lifetime, and are obtained with much less difficulty
and expense. Copyrights are protected as soon as the
work is created, both inside and outside of the U.S.
Registration, involving a $30.00 fee, is required only
if the copyright is being infringed and the copyright
holder desires to sue the infringer. However, copyrights
are somewhat weaker than patents because independently
created, identical works do not infringe.
Trademark rights generally arise automatically upon
first commercial use, and have a potentially limitless
duration. Trademarks need not be registered to stop
others from using trademarks that are so alike that
customers may be deceived as to the source of goods
or services. Nevertheless, federal registration does
confer some advantages.
Lawyers trained in science or engineering have usually
dominated IP practice. While technical training and
passing a special examination are needed to obtain patents
for others, after a patent issues any attorney can assign,
license or otherwise dispose of the patent, or sue infringers.
For our purposes in this website, we will focus on
patents only. Three distinct kinds of patents are available
in the U.S. - utility, design and plant. A utility patent
is what is usually meant by the word "patent",
and these include machines, industrial processes, compositions
of matter and articles of manufacture. Design patents
protect ornamental features rather than the function
of the device, and last fourteen years from the date
granted instead of twenty years from filing as with
utility patents. Plant patents cover the discovery of
previously uncultivated plants, or the breeding of novel
plants, and must be asexually propagated.
All patents require Patent and Trademark Office (PTO)
approval, i.e. the PTO must issue the patent before
any rights are conferred. A prior art search, although
not required, is generally advisable. If an invention
is fully disclosed in an issued patent or other printed
document, it is not novel and is therefore not patentable.
Also, where one or more aspects of the invention were
previously known, the applicant must convince an examiner
that the invention would have been unobvious to those
skilled in the art at the time the invention was made.
The patent application must be filed in the inventor's
name, regardless of eventual or final ownership.
An application consists of a description of the invention
(the "specification"), drawings (where applicable),
a fee, and a declaration that the applicant is the first
and true inventor. The specification must describe the
invention in terms that enable those skilled in the
art to practice it, and conclude with one or more "claims".
The specification explains the inventor's contributions,
and the claims identify what is believed to be protectable
under the patent.
Upon receipt, the PTO usually gives applications a
filing date and serial number, and it is then assigned
to a patent examiner. The patent examiner may object
to the application on formal grounds, or disallow one
or more claims as substantively unpatentable. This process
may take anywhere from eighteen months to several years,
during which time the PTO attempts to ensure that the
application is complete, and that it enables others
to practice the invention (i.e., that the claims are
reasonably related to the inventor's contribution, and
that they describe a proper subject matter that is useful,
novel and not obvious).
The novelty requirement is a serious trap for the inexperienced,
but is easily avoided by discussing the situation with
an expert in the field. If an attorney cannot convince
the patent examiner that the claims are allowable, they
may be abandoned or narrowed, an application may be
abandoned or re-filed, or appeals may be taken. After
an application satisfies the PTO, it is issued and a
further fee is paid. Only one patent may issue for an
invention, so keeping notes on when and how the invention
was made is important, proving that you were the first
to invent this innovative device.
Patents can prevent others from making the protected
device for the duration of the patent, and have the
attributes of personal property. No rights exist before
issue, but patent applications may be assigned and licensed
to others.
If infringement is discovered and negotiations fail,
mediation and arbitration are possible. Otherwise, a
lawsuit must be brought in federal court. Besides being
able to seek relief from direct infringers, patentees
may also confront those who induce or otherwise contribute
to infringement. Remedies may include injunction and
recovery of up to three times damages. At a minimum,
a reasonable royalty is awarded and, in exceptional
cases, attorney fees. Two basic defenses, noninfringement
and invalidity, may be (and generally are) asserted
in any IP infringement lawsuit.
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