Sometimes a little information can go a long way! Check out our Frequently Asked Questions section to get some basic information on how IP rights can be obtained, what rights they give the holder, how those rights are enforced, and several other topics.
A patent is a government-issued right to exclude others from making, using, offering for sale, selling, or importing into the United States the patented subject matter for a limited amount of time.
A patent is a limited monopoly granted to the inventor in exchange for revealing the invention. The theory behind patent protection is that the public benefits from incentivizing innovation – the public benefits by learning about the invention and the inventor benefits by getting the right for a limited time to keep others from making, using, selling, or importing the invention into the United States. Once that time is up, the public is free to use the invention.
A trade secret: (1) is something that has actual or potential economic value by virtue of not being generally known, (2) has value to others who cannot obtain the information, and (3) is subject to reasonable efforts to maintain its secrecy. Unlike a patent, a trade secret can exist indefinitely, so long as elements (1)-(3) remain in place.
If an invention is eligible for either patent protection or trade secret protection, one must weigh the pluses and minuses of each type of protection.
There are utility patents, design patents, and plant patents. Design patents and plant patents have special attributes and are addressed below. The following information is for utility patents.
U.S. utility and plant patents granted on applications filed on or after June 8, 1995, have a base term of 20 years from the application’s effective filing date, provided all maintenance fees are paid. The base term may be increased by Patent Term Adjustment (“PTA”) or Patent Term Extension (“PTE”). For U.S. design patents, if the application was filed before May 13, 2015, the resulting design patent is valid for 14 years, while applications filed on or after May 13, 2015, have a term of 15 years.
Maintenance fees are fees charged by the U.S. Patent and Trademark Office (“PTO”) to keep an issued utility patent in force. These fees are due 3½, 7½, and 11½ years after issuance.
patent application at the PTO. There are different strategies suited to different situations, including provisional patent applications, utility patent applications, and international patent applications filed under the Patent Cooperation Treaty (“PCT”).
- Provisional patent applications contain a description of the invention (with figures when necessary to explain the invention) and may contain claims. A claim is a single-sentence summary of one or more facets of the invention. Provisional patent applications are filed at the PTO but are not examined and do not, without conversion to a utility application, issue as a patent. Provisional patent applications remain pending for up to one year, at which time the applicant must file a utility patent application or PCT application. Provisional patent applications are not published and remain secret, unless a utility application is filed claiming priority to the provisional. In that case, the provisional patent application will become public when the utility application publishes.
- Utility patent applications are full patent applications that must include a detailed description of the invention, figures (when necessary to explain the invention), how to make and use the invention, and at least one claim. A claim is a single-sentence summary of one or more facets of the invention. Utility patent applications published 18 months after their earliest priority date (unless a non-publication request is filed). Utility patent applications are reviewed by patent examiners at the PTO who determine whether the claimed subject matter is eligible for patent protection, new, and non-obvious. Patent examiners issue one or more Office Actions to the applicant, which explain the results of the examiner’s search and their thoughts on patentability. The applicant may or may not amend the claims in response to an Office Action and submits a written response to the examiner. Throughout the patenting process, there are usually several Office Actions and responses (and potentially claim amendments) before the examiner concludes the invention is patentable. If patentable subject matter is found, the applicant pays an issue fee to the PTO and the patent is granted.
- PCT applications are international patent applications that must include a detailed description of the invention, figures (when necessary to explain the invention), how to make and use the invention, and at least one claim. PCT applications preserve the applicant’s right to pursue the subject matter in one or more of the PCT contracting states (there are currently 153 contracting states: https://www.wipo.int/pct/en/pct_contracting_states.html ). PCT applications published 18 months after their earliest priority date. PCT applications last for 18 months, at which time the applicant must file one or more national or regional stage applications. Once the applicant files the national/regional stage applications, those are examined according to the respective jurisdiction’s patent laws.
The cost of obtaining a patent is unique to each invention. The PTO fees for patent applications range from $150 to $1,820. In addition to the PTO fees, there are the fees associated with preparing the patent application. Those fees typically range from $5,000 (for more simple technologies) to $30,000 or more. Once the application is on file, there are fees associated with reviewing and responding to Office Actions, as well as government issue fees ($600-$1,200). Because the fees and costs vary greatly, it is best to contact a patent attorney or agent to get a more specific estimate for your situation.
For U.S. patents, the average total pendency is approximately 2½-3 years. If an applicant wishes to obtain a patent quickly and is willing to pay special fees (approximately $2,000 for small entities and $4,000 for large entities), the process can be shortened to 8-12 months.
To be patentable, the invention must be directed to eligible subject matter, must be new, and must be non-obvious. In some situations, it is wise to conduct a search before the patent application is prepared to see if the invention already exists or is an obvious extension of something that already exists. In other situations, it is better to prepare and file the patent application and see what, if anything, the examiner finds as a result of their search. Because the pros and cons of pre-filing searches vary greatly, it is best to contact a patent attorney or agent to get advice on your situation.
Generally, a design patent protects the appearance of an article and not its structural or utilitarian features (whereas a utility patent protects the way an article is used and works). Design patents are obtained by filing an application at the PTO. Design applications include figures of the design and may also include a description of the design. Design applications may include only one claim, which defines the design the applicant wishes to protect.
Once the design patent application is filed, it will be examined and the examiner may issue one or more Office Actions, which set forth the examiner’s thoughts on patentability of the design. The applicant responds to the Office Action and if allowable subject matter is found, a design patent will issue after PTO fees are paid. The average total pendency for a design patent is approximately 21 months.
If the application was filed before May 13, 2015, the resulting design patent is valid for 14 years. If the application was filed on or after May 13, 2015, the resulting design patent is valid for 15 years. Maintenance fees are not required for design patents.
Generally, a plant patent is a type of protection for an asexually-reproduced, distinct, new variety of plant, other than a tuber-propagated plant, that was either intentionally bred or found in a cultivated area. A plant patent is a government-issued right to exclude others from asexually reproducing the plant and from using, offering for sale or selling the plant or any of the plant’s parts, or importing the plant or any of the plant’s parts into the United States.
Once the plant patent application is filed, it will be examined and the examiner may issue one or more Office Actions, which set forth the examiner’s thoughts on patentability. The applicant responds to the Office Action and if allowable subject matter is found, a plant patent will issue after PTO fees are paid. The average total pendency for a design patent is approximately 6-18 months.
Plant patents expire 20 years from the filing date of the patent application. Maintenance fees are not required for plant patents.
- The PTO website: https://www.uspto.gov/
- U.S. patent laws: https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.pdf
- U.S. patent rules: https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.pdf
- The Manual of Patent Examining Procedure: https://www.uspto.gov/web/offices/pac/mpep/index.html
- Current PTO patent fees listing: https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule#Patent%20Fees
- To search issued U.S. patents: https://patft.uspto.gov/netahtml/PTO/search-bool.html
- To search U.S. patent applications: https://appft.uspto.gov/netahtml/PTO/search-bool.html
- To look up activity in a specific case: https://portal.uspto.gov/pair/PublicPair
- To search patent assignments: https://assignment.uspto.gov/patent/index.html#/patent/search
A trademark is a word, name, symbol, device, or combination thereof that is used or intended to be used in commerce to identify the source of the goods. These are brand names for all kinds of consumer goods such as beverages, clothing, and cars.
A service mark is a word, name, symbol, device, or combination thereof that is used or intended to be used in commerce to identify the source of services. These are brand names for all kinds of services ranging from airlines to banks.
The main purpose of any trademark is to enable consumers to easily and confidently find what they are looking for in the marketplace. Trademarks also serve as symbols of quality assurance and goodwill associated with a particular company’s product or service. Trademarks indicate to consumers that a business will stand behind its products. The quality assurance function requires the trademark owner to maintain consistent quality standards so that the consumer gets what he or she expects. The law also protects a trademark owner’s ability to safeguard the reputation in the marketplace, and prevent competitors from unfairly profiting off of existing brand names. So trademark law prevents a competitor from using any name that is so similar to an existing brand name, that such use will cause consumer confusion as to the source of products or services. That likelihood of consumer confusion is often referred to as “trademark infringement.”
The purpose of these symbols is to notify third parties that the owner is claiming exclusive rights to a trademark.
The initials TM are a recognized abbreviation for trademark. The ™ symbol, which is usually placed behind the mark, indicates that the owner claims exclusive rights to the term as a trademark. It is not necessary to have a registration, or even a pending application, to use this designation.
If a trademark is used with services instead of goods, the mark owner may use the SM symbol to designate a term as a service mark. A service mark is simply a trademark used to identify a service rather than a product. As with TM, it is not necessary to have a registration, or even a pending application to use this designation.
If the trademark is federally registered, the owner may use the ® symbol next to the term. The registration symbol, ®, should not be used until the United States Patent and Trademark Office has issued a Certificate of Registration for the mark. The ® symbol should not be used if the trademark is only registered at the state level.
In all cases, the trademark and associated symbols should be used consistently to enable it to develop significance as a “source indicator.”
There are three primary options for registering a U.S. mark: use-based applications, intent-to-use applications, and applications based on foreign applications or registrations.
A separate application must be filed for each mark an applicant wishes to register. In addition, if an applicant wishes to register more than one version of the same mark (i.e., a stylized or graphic version), a separate application must be filed for each version. The application must clearly identify the specific goods and services for which the registration is sought. It must also state whether the applicant has actually used the mark in commerce or has a bona fide intent to use the mark in commerce.
Use in commerce is defined by statute as bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. In a use-based application, the goods must be transported from one state to another (interstate commerce) or between the U.S. and some foreign country, or used and sold in some territory controlled by the U.S. The registration procedures vary somewhat depending on whether the applicant files a used-based or intent to use application. The procedure for obtaining registration for a use-based application includes:
- Filing a trademark application, including a statement of use and one specimen
- Examination of the trademark application by the PTO to determine:
- That the mark acts as a mark, or is capable of becoming a mark; and
- That the mark does not conflict with any previously registered mark
- Publication for opposition as to mark found registrable by Examining Attorney
- Opposition period for persons who believe they would be damaged by the registration to oppose or file an extension of time to oppose; and
- Issuance of registration – about two to four months after close of opposition period
The procedure for registration based on an intent-to-use application differs somewhat from a use-based application because a registration cannot issue until a trademark is used, and can be summarized as follows:
- Filing a trademark application, including a declaration of bona fide intent to use the mark in commerce on specific goods or services
- Examination for registrability and, if acceptable, publication for opposition
- Issuance of notice of allowance following expiration of opposition period; and
- Submission of a statement of use within six months of notice of allowance. Extensions of time for an additional thirty months may be obtained.
- Issuance of registration – about two to four months after acceptance of a statement of use
For further reference, flow charts summarizing the registration process for both use-based and intent to use applications can be found at the following link: https://www.uspto.gov/sites/default/files/web/offices/dcom/olia/aipa/102eflowchart.pdf
Applications Based on Foreign Applications or Registrations
An applicant’s ownership of a home country registration for the identical mark covering the same goods may serve as a basis for registration in the United States. This basis can include the applicant’s claim of priority relying upon a prior-filed foreign application (in which case the U.S. application must be filed within 6 months of the filing of the foreign application); and/or the applicant’s prior home country registration.
Although an applicant may claim an earlier filed foreign application as a basis to obtain a priority date, the PTO requires that any applicant claiming the benefit of a foreign registration must establish a “country of origin” in the country which has issued or will issue the relevant foreign registration. The country of origin is defined as any country in which the applicant has a bona fide and effective industrial or commercial establishment, or if the applicant has no such an establishment, the country in which the applicant is domiciled.
Trademark rights last indefinitely as long as the trademark is used in connection with goods or services. Trademark rights do not expire like patent rights. Rather, as long as a trademark is continuously used in connection with goods or services, the corresponding rights endure.
Trademark rights can become abandoned if use of a trademark stops with an intention not to resume use of the trademark.
Trademark rights can also be abandoned or cancelled under certain circumstances. For example, trademark rights can be abandoned if the trademark is used in an uncontrolled manner so that it is no longer a symbol of consistent quality and goodwill to consumers. Trademark rights can also be cancelled if the trademark becomes the generic name that the public uses to refer to a type of goods or services. “Escalator” and “Cellophane” are examples of trademarks that became generic.
The cost of applying to register a trademark at the PTO depends upon whether the trademark is used in connection with one type of goods or services, or whether it is used in connection with a wide variety of goods or services.
Under the law, goods and services are divided into a multitude of “Classes.” The U.S. Patent and Trademark Office charges a separate fee for each class of goods or services covered by an application.
Generally speaking, however, for a simple use-based application that covers one class, the cost to obtain a U.S. trademark registration would be approximately USD $1,300.00 if no issues arise during examination and the application passes through the publication and opposition period without issue.
However, because examination is subject to the whims and idiosyncrasies of examiners at the U.S. Patent and Trademark Office, it is wise for clients to budget USD $3,000 for each application to cover the costs of examination (responding to office actions and corresponding with examiners). If no issues arise, then this budgeted money can be repurposed.
The costs of oppositions are also notoriously unpredictable, because they depend upon the posturing of the opposer. Clearance searches can help avoid obstacles, and can thereby reduce the likelihood that any particular application will be opposed. The costs for clearance searches vary, but can be as little as USD $500.00. Clearance searches are optional, not mandatory. (See below section “Are trademark searches helpful?”)
U.S. trademark rights originate when a mark is used in commerce in association with specific goods and/or services. When considering adoption and use of a particular mark, one should consider pursuing a federal registration for the mark to more fully protect and promote that brand name. Although trademark rights depend on use and not registration in the U.S., there are a number of substantive and evidentiary advantages to registration, such as the following:
- Nationwide rights to the mark
- The right to bring suit in federal court
- Prima facie evidence of continued use since the filing date of the application
- Prima facie evidence of the validity of the registered mark and registration, the registrant’s ownership of the mark, and the exclusive right to use the mark in commerce in connection with the specified goods or services
- Statutory remedies, such as mandatory treble damages and criminal penalties in counterfeit cases
- Constructive notice of the registrant’s claim of ownership of the mark
- The right to use the symbol ® next to the mark
- The right to registration abroad based on registration in the United States
- The ability to bar importation of goods bearing infringing trademarks by depositing the registration with U.S. Customs
- “Incontestability” after 5 years of continuous use, which can preclude cancellation of the registration on the basis of prior use or descriptiveness
There are also significant intangible benefits associated with federal registration of a trademark. For example, by obtaining a federal registration, a trademark owner may deter a second comer from adopting a similar mark. In so doing, the registration effectively serves to preserve and promote the value of the mark, and may also help the trademark owner to avoid expensive and time-consuming litigation.
Furthermore, the federal registration also adds a greater degree of credibility to the trademark owner’s use of the mark. Namely, the official government stamp of approval symbolized by a registration offers a greater impression of legitimacy to competitors, courts, and juries alike.
Before filing an application for a trademark registration, it is prudent for applicants to first conduct a trademark search to identify potential conflicts that might arise as a result of their adoption and use of a desired mark.
A search is also beneficial because it outlines the likely scope of protection available for the mark. If a search reveals numerous references to similar marks for similar goods or services, for example, then the proposed mark may be considered weak and the scope of protection narrow. In this sense, a trademark search helps to determine the potential level of difficulty associated with building brand equity in the mark moving forward.
Various searching options are available, from narrow searches conducted in-house to comprehensive searches performed by outside vendors, with the associated costs varying as a result. The more comprehensive the search, the greater the likelihood that potential risks associated with the adoption and use of a proposed mark will be identified. The typical types of searches available include the following:
- Knock-out Search: Includes an online search for exact marks. Results are reviewed and analyzed, and an email summary of the conclusion regarding level of risk associated with adoption and use of proposed mark is provided.
- In-House U.S. Trademark Search: Includes a more expansive online search of federal and state trademark databases for exact and similar marks, as well as a limited search of common law marks. Results are reviewed and analyzed, and a full written opinion detailing the level of risk associated with adoption and use of the proposed mark is provided.
- Full U.S. Trademark Search: Includes a comprehensive search of federal, state, and common law trademark databases performed by a third-party vendor. It also typically includes a search of additional resources, such as corporate information databases, internet domain names, periodicals related to the field of goods/services to be covered by the mark. Results are reviewed and analyzed, and a full written opinion detailing the level of risk associated with adoption and use of the proposed mark is provided.
If a company contemplates introducing its products or services outside of the U.S., international searches should also be considered. These searches can be worldwide, by region, or by key countries. These searches can include International Trademark Directories such as the International Register offered by the World Intellectual Property Organization that provide comprehensive listings of active trademark registrations.
- The PTO website: https://www.uspto.gov/
- U.S. Trademark Office Trademark Assistance Center: https://www.uspto.gov/learning-and-resources/support-centers/trademark-assistance-center
- U.S. trademark laws and rules: https://www.uspto.gov/trademarks/laws; and https://tfsr.uspto.gov/RDMS/TFSR/current
- The Trademark Manual Examining Procedure: https://tmep.uspto.gov/RDMS/TMEP/current
- Current PTO trademark fees listing: https://www.uspto.gov/trademarks/trademark-fee-information
- To search pending U.S. trademark applications and issued registrations: https://www.uspto.gov/trademarks/search
- To look up activity in a specific case: https://tsdr.uspto.gov/
- To search trademark assignments: https://assignments.uspto.gov/assignments/q?db=tm
A copyright is a form of intellectual property that protects an original work of authorship fixed in a tangible form of expression. Protectable works include books, poems, movies, blog posts, architectural works, plays, paintings, photographs, illustrations, musical compositions, and many others.
No. Registration is voluntary and copyright exists from the moment the work is created and fixed in a tangible medium. However, if you wish to bring a lawsuit for infringement of a U.S. work, one must register the work.
Registration is often recommended for a number of reasons, including wanting the copyright on the public record and having a certificate of registration. Registered works are eligible for statutory damages and attorneys’ fees in successful litigation. If registration occurs within five years of publication, it is considered prima facie evidence in a court of law.
To register a work, one submits a completed application form to the U.S. Copyright Office, pays the fee, and submits two complete copies of the best edition of the copyrightable work published in the United States. The submitted copies will not be returned.
Generally, the fees for basic registrations range from $45 to $125. For a full listing of fees, consult the Copyright Office’s Circular 4: https://www.copyright.gov/circs/circ04.pdf
A copyright notice consists of three elements: (1) the copyright symbol (©), the word copyright, or the abbreviation copr.; (2) the year of first publication of the work (or of creation if the work is unpublished); and (3) the name of the copyright owner, an abbreviation by which the name can be recognized, or a generally-known alternative designation.
It depends on when the work was created. For works created on or after January 1, 1978, the term is the 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, anonymous works, and pseudonymous works, copyright protection is 95 years from publication or 120 years from creation, whichever is shorter. For works created before January 1, 1978, the duration is generally the same as for those created after, but all such works are guaranteed at least 25 years of protection. All works in this category extend to at least December 31, 2002, and if a work in this category was published before December 31, 2002, the term extends for an additional 45 years, i.e., through the end of 2047.