New Jersey Enterpreneur - Small Business, Entrepreneurs and Venture Capital

Patent

In the United States, patents may be granted on any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement of the same. A patent grants the owner the right to prevent anyone from making, using, selling, or importing the invention covered by the patent. The right granted is granted for a limited time, currently twenty years from the original filing date. The patent right is granted in exchange for the applicant describing in detail how best to make and use the invention. The public obtains the benefit of the knowledge in the patent and the patent holder obtains the benefit of a limited duration monopoly.

Four basic types of patents available in the U.S.; utility patents cover new and useful inventions; design patents cover new, non-functional ornamental designs; plant patents cover new, non-obvious, reproducible plants; and provisional patents provide a fast, inexpensive method for obtaining a filing date for later use in a subsequent utility patent application.

Patents are obtained by drafting and filing a patent application that teaches how to make and use the invention with the United States Patent and Trademark Office. Within twelve months the applicant may also apply for international patent protection. Examiners at the USPTO will then examine the application for novelty and non-obviousness, and after some back and forth between the applicant and the examiner a patent may ultimately issue.

The patent owner is responsible for enforcement. Infringement actions are filed in court and injunctions may be granted, along with money damages, and attorney's fees. After the term of the patent expires anyone make and use the invention. The patent may also lapse earlier due to failure of the patent owner to pay post-issuance maintenance fees to the patent office.

A copyright give the owner of a creative work the right to exclude others from using the work without the owner's permission. For copyright protection to apply the work must be an original work that is "fixed in a tangible medium of expression." For example works on paper, on audio or video tape, in clay, on canvas, or on a computer disk are fixed in a tangible medium. The work must have some creativity and it must be produced by the human intellect. Songs, books, articles, computer programs, graphic designs, and movies are some of the works covered by copyright.

A copyright is present the moment the work assumes a tangible form, once it is "fixed in a tangible medium of expression." To enhance the strength of a copyright the author may place a copyright notice on the work (? 2005 David M. Gange), and register the work with the U.S. Copyright office. Registration makes it easier to sue an infringer since it creates a legal presumption that the copyright is valid and it allows the owner to recover up to $150,000 without proving any actual financial harm. To register a copyright fill out the requisite form and deposit a sample of the work with the U.S. Copyright office.

Copyrights are originally owned by the author of the work, or the employer if the work was performed on a work for hire basis. The rights granted by copyright include the right to reproduce the work, the right to display or perform the work, the right distribute the work, and the right to prepare adaptations of the work. The rights currently last the lifetime of the author plus 70 years, in certain circumstances the rights may last as long as 120 years.

Trademarks and service marks are distinctive words, phrases, logos, or symbols that are used to uniquely identify the source of a product or service. They distinguish a manufacturer's products from anyone else's. Other non-functional, but distinctive, features of a product or service that promote and distinguish in the marketplace can be covered. Examples include shapes, letters, numbers, sounds, smells, or colors.

Trademarks may be strong or weak and the degree of protection offered by the mark depends upon the strength of the mark. Strong mark include unique logos or symbols, words that are made up like Kodak? or Verizon?, words that invoke imaginative images like Chunky Monkey? ice cream, words that are surprising in the context of their use such as Apple? computer or Diesel? fashions, and words that suggest qualities about the product or service without literally describing the qualities such as Viagra? and Ensure?.

Marks that are non-distinctive such as people's names (Ray's pizza), geographic terms (River cafe), or descriptive terms (Rapid printers) will be weak marks or may not be granted trademark status at all. The strength of a mark can change through time. A weak mark may become strong (Ben and Jerry's) and a strong mark may become weak or lose trademark status entirely (cellophane, aspirin).

A trademark or service mark is typically owned by the first business to use the mark in commerce. First use can be established by filing an intent to use trademark registration with the U.S. Patent and Trademark office. The filing date will become the date of first use as long as the mark is actually used in commerce by the applicant. Before granting a trademark the USPTO will perform an examination to insure that the mark is not confusingly similar to a mark already in use. Both the nature of the mark itself, and the specific area of commerce are considered in the examination.

Before using a trademark it is helpful to have a trademark search performed. A search will allow you to determine if the mark is already in use and in what geographic and commercial areas. A search will examine both federal and state records as well as telephone books, magazine, and journals for the existence of the mark. The trademark symbol ? may only be placed upon marks that have been examined and granted by the U.S. Patent and Trademark office.

We'll wrap our survey of intellectual property with trade secrets. Trade secrets are formulas, patterns, physical devices, ideas, processes, or other information that provide the owner with a competitive advantage and kept secret. For example trade secrets can include customer lists, unpatented inventions (prior to filing), magic tricks, formulas, recipes, and cosmetics.

A trade secret can be identified by noting the extent to which the information is known outside the business, the extent to which the information is known by employees of the business, the measures instituted to guard the secret, the value of the information, and the difficulty of properly acquiring or duplicating the information. A trade secret must be kept secret both externally as well as internally, be valuable, and be difficult to acquire or duplicate.

Trade secrets may be lost or stolen through disclosures by key employees in violation of a duty of trust, by employees in violation of a non-disclosure agreement, through disclosures by suppliers, consultants, or others who've sign non-disclosure agreements, and through espionage

Trade secret rights are, like other intellectual property rights, enforced by the courts. Relief may be granted in the form of injunctions, monetary damages, and attorney's fees.

This survey of intellectual property has briefly described only the most significant aspects of the various forms of IP. Effective creation, protection, and use of intellectual property can provide businesses with a unique competitive advantage in the marketplace. What kind of IP strategy are you pursuing to maximize the profitability of your business?