a question about intellectual property? You've come to the right place!
If you still have questions or are ready to get going on your patent, trademark, or copyright, please give us a call! (912)261-1202
Your first consultation is free!
A1: Patents, trademarks and copyrights, along with trade secrets, are known as intellectual property, or “IP.” Patents can be either utility patents, which cover new and useful machines, articles of manufacture, compositions of matter (e.g. pharmaceuticals) and processes; design patents, which cover ornamental designs such as sports shoes and furniture; and plant patents, which cover new varieties of plants. It’s a good idea to wait at least until your patent application is on file (“pending”) with the Patent and Trademark Office (PTO) before showing your invention to anyone. This “patent pending” status begins the moment we get an official Filing Receipt from the PTO. This receipt is provided by the government within a week or two after filing. Even though patent protection does not begin until the patent is issued, the PTO holds patent applications in confidence for at least 18 months after filing, and during that period you may have limited infringement protection should a patent finally issue. Using the term “patent pending” or “patent applied for” during that period puts interested persons on notice that a patent may issue at any time, and they would be foolish to try to capitalize on your invention before the patent issues. Most companies won’t look at your invention unless you at least have a patent pending, and many require that you obtain a patent first. Your rights to a patent may also be lost if you market your invention too early. IMPORTANT: If you publish it anywhere (such as on the Internet) or offer it for sale or use it publicly in the U.S. more than one year before you file a patent application, you are barred from a U.S. patent. You also lose your right to a patent in Europe, China, and most other foreign countries as soon as a written description of it is made available about it anywhere, including the U.S. A patent application is not published for at least 18 months after filing unless you request early publication. If you think you might want foreign patent protection but aren’t sure yet, we can file a patent application under the Patent Cooperation Treaty and proceed to get patents in participating countries by entering the “national stage” up to 30 months later. This entails a significantly higher filing fee, plus national fees and translation fees where applicable.
A trademark is a word, phrase, logo, or a combination of such which identifies your business as the source of your goods or services. A mere description of your goods or services, such as “Georgia Toy Sales” or “Doctors Laboratory” is generally not registrable. A fanciful (as well as catchy) mark such as “ToysFerKids” or “BestMD Testing” has a much better chance. You should start using your trademark as soon as you are sure you want your goods or services to be identified with that mark. Many persons wait until their trademark appears to be successfully attracting business before they apply for registration, to avoid wasting money registering a mark that isn’t doing the job. In the event someone “steals” your trademark before you register it, you have your business records to prove you started using it first. You automatically have “common law” rights to use your trademark unless someone tells you they have been using it before you. Many businesses identify a common law mark by putting a superscript “TM” to the upper right of the mark. Federal trademark registration, denoted by the “®” symbol, can only be obtained if you plan to sell your goods or services in interstate commerce. Once a federal trademark is registered, you have the right to use it exclusively throughout the United States and can defend it in federal court. If you plan to sell only within a state, each state has its own trademark framework. We can file Georgia and Florida trademark applications for companies doing business only within those states. You can also file an international trademark application by identifying the countries in which you intend to use your mark at the time of filing.
A copyright identifies the author or owner of original writings, artwork, and music. You cannot copyright short phrases, jokes, or single sentences. You have “common law” copyright as soon as you create the work, and can publish it at any time. You can identify it as yours by putting a “©” and your name somewhere on it. Federal registration gives you the presumption of ownership and the right to defend it in federal court, and the ability to be awarded attorney fees and statutory damages from an infringer. International copyright protection may also be obtained.
A trade secret is anything you do that is unknown to others even if it is not patentable, such as a recipe that is a mere mixture of known ingredients. Perhaps the most famous of these is the formula for Coca-Cola. The benefit of a trade secret is that it never expires as long as it is kept secret. Machines, articles of manufacture, and most compositions of matter are not good trade secrets because they can be reverse engineered. Coke is a “composition of matter” which the company might have patented, but had they done so, the recipe would have been published when the patent was granted, and anyone could have made it after the patent expired. By keeping the formula a trade secret, Coca-Cola has forced competitors to try to reverse engineer it using trial-and-error and chemical analysis. This has never been entirely successful because the sources and proportions of the ingredients have defied exact analysis. Some of our clients handle their recipes this way. It is up to you to protect a trade secret. The only legal protection you have for a trade secret is for you to document who had access to the secret and be able to sue whomever breached your confidence.
There are other ways to defend your IP even if it is not protected under the above regimes. For instance, an oral contract created in a meeting where someone promises to reward you for using your concept and later fails to do so, may be actionable under contract law or “unfair business practices” statutes. However, these cases are usually hard to prove and expensive. Back to top.
A2: As soon as we understand the scope and content of your project, we will provide a quote for the work, good for 90 days. Payment must be made in advance. The amount varies depending on the complexity of the work. A typical mechanical patent application costs $2,000 or more to prepare and file. Prosecution of the application through to grant of a patent typically adds an additional $2,000 or more. Trademark and Copyright registrations are less expensive. We require the client to sign an Engagement Letter spelling out the scope of the work and payment terms. The first visit, phone interview or email exchange, and the preparation of a quote, are free of charge. Oftentimes we can give a non-binding opinion of the proper course of action. Work thereafter is quoted or billed on a per-hour basis. Back to top.
A3: There is no guarantee a patent, trademark or copyright application will result in the grant of a patent or registration of a trademark or copyright since the government approval is based on an examination process. This is because other materials may exist in the world that predate your work. In the case of patents and trademarks, one or more “Office actions” are issued, often initially rejecting all or part of an application. If this happens, we must respond with amendments or legal arguments to overcome the rejections. In particularly difficult cases, the application can be appealed to an appeal board or federal appeals court.
How long it takes for examination is up to Uncle Sam. This typically takes from 1-1/2 to 3 years for a patent. This can be shortened to a few months by payment of an additional government fee of $1,000, or $2,000, depending on income. We can usually prepare and file a patent, trademark or copyright application within one month of receipt of payment, depending on its complexity and our current workload.
Trademarks and copyrights take less time to process, typically a few months. Back to top.
A4: Searches are not required. We advise our clients to do their own market research and/or Google search for inventions and trademarks before starting a project with us because it’s free. We may suggest that you let us do a search using worldwide patent or trademark databases if we think it’s likely there’s something “out there” you may have missed. The current fee is $520. No copyright search is necessary – you know if your work is original. Nevertheless, it’s possible that the copyright office might think your work is very similar to another work (possibly without your realizing it) and deny registration. Back to top.
A5: It is perfectly legal for any person to prepare and file his or her own applications, just as it is legal to represent yourself in court. You could save legal fees by doing it yourself. However, patent and trademark processes are very complex (especially patents) and the likelihood of success is greater if performed by a licensed professional in your behalf. If a patent application is not prepared and prosecuted properly, valuable rights could be lost permanently. Useful background information on the patent and trademark processes can be found on the PTO’s website, www.uspto.gov, which can help you decide how to proceed. This site also allows you to do searches on U.S. patents and trademarks. Filing for copyright registration is less difficult and you can do it yourself at www.loc.gov.
As to inventions, a good no-cost first step to take, if you plan on licensing your invention instead of making and selling it yourself, is to make a list of companies that might be interested in licensing it and contacting them. If no one is interested, then it may not make sense to spend money on getting a patent. We can help you develop a list of possible licensees, and even contact them for you, for a fee. Back to top.
A6: Generally we don’t do either. We cannot assume the risk that your invention might not be marketed effectively or be well-received by the marketplace. Some inventors raise money by finding partners or investors, or by using Internet techniques such as crowdfunding. You can always market your invention on TV (at a cost) or try your luck on television shows like “Shark Tank.” Back to top.
A7: With certain exceptions, utility patents, the most popular kind, last 20 years from the date of filing provided the maintenance fees are paid. Maintenance fees are payable at 3-1/2 years, 7-1/2 years, and 11-1/2 years after the patent is issued. Plant patents last 20 years from the date of filing. Design patents last 15 years from the date of issue. There are no maintenance fees for plant or design patents. Patents cannot be renewed.
Trademarks can be renewed every ten years they are in continuous use.
Copyrights generally last for the life of the author plus 70 years but cannot be renewed once they expire, after which they become part of the “public domain.”
A8: You are protected by Attorney-Client Privilege. We can also sign and date one of your documents to prove when you showed us your work.
A9: In the legal arena, we also do litigation work in intellectual property; patent and trademark searches; contract, license agreement, and trade secret preparation and litigation; and business law. In the field of engineering, we help inventors with technical aspects of their inventions and do feasibility analyses. Fees for this work are on a case-by-case basis and can include contingent fee arrangements. Back to top.
by Jonathan Rigdon Smith
|All rights reserved JRSmithLaw.com 2017|