Intellectual Property Related FAQs
Q: What is a patent?
A: A patent is a legal document that grants its owner the right to exclude others from making, using or selling the patented invention.
Q: Is it necessary to physically create the invention before filing for a patent?
A: No. Actual reduction to practice is not required because constructive reduction occurs when a patent application is filed. In some circumstances, actual reduction to practice is preferred because the patent is limited to what is disclosed at the time of filing and it may be difficult to describe a precise solution to a problem without actual implementation.
On the other hand, concept patents, without actual implementation, may prove valuable, especially where multiple filings follow in direct relation to technical improvements, innovations and developments. This latter strategy helps create a series of patents that together form a patent portfolio.
Q: How do I know if something is patentable?
A: One way is to perform what is called a novelty search and to analyze the proposed invention in view of the prior art disclosed in the novelty search.
Q: What is prior art and how does it affect patentability?
A: Prior art describes the universe of technology/innovation that is relevant to the subject invention, and that is prior in time to the subject invention. Patentability is evaluated on the basis of all known prior art.
Q: How long does it take to obtain a patent?
A: The patenting process varies in length depending on the technical field of the invention and the workload of the Patent and Trademark Office. In general, it takes 1 to 4 years to receive examination and obtain final deliberation for an application, although in certain technology areas the process can take considerably longer.
Q: How long is a patent valid?
A: Twenty (20) years from the date of filing.
Q: What can be patented?
A: The law defines patentable subject matter as “any new and useful process, machine, manufacture, or composition of matter or any useful improvement thereof.” As definition this relates to technology, patents are granted for a broad array of technology including telecommunications, software, business methods, Internet-based and e-commerce applications, mechanical, medical devices, biotechnology, and others.
Q: How do I choose a Patent Attorney?
A: A Patent Attorney is like any other professional and should be someone with whom you are comfortable and upon whom you can rely. You should verify that he or she is registered to practice with the Patent and Trademark Office. Also, for some technology areas, it is usually preferred that the patent attorney has an understanding of the general nature of the technology and a background in the technical area through education and work experience.
Q: How much does it cost to obtain a patent?
A: Costs are directly related to the complexity of the invention, with simple mechanical applications costing less than sophisticated circuit inventions or computer software inventions. The major expense is legal fees that are paid to the patent attorney/firm doing the work. Legal fees vary among attorneys and firms; however, in general, legal fees are related to the complexity of the patent subject matter and the expertise/experience of the attorney.
A recent survey estimated the cost for preparing and filing a U.S. patent application as $9,000 to $12,000 in the Orange County, CA area. However, attorneys/firms focused in some very specialized technology areas (such as biotech) charge more than others.
Q: What advice would you give a start-up company considering patent protection?
A: A patent strategy should be considered carefully by a start-up, especially in today’s high tech arena. A start-up is well advised to consider its product offerings and the real innovations it is bringing to market. If the core asset of the start-up is technical distinction and innovation, patents are critical and necessary to compete in the marketplace, discourage copying and gain leverage. Patents also have a dramatic effect on the value of the technology by encouraging others to license the technology or face the consequences of patent infringement.
Q: What are the consequences of patent infringement?
A: An infringer may be liable for monetary damages, including attorney’s fees, and may be subject to an injunction preventing use of the patented technology. In cases of willful infringement, actual damages can be tripled by the Court.
Q: What is a trademark?
A: A trademark is any word, name, symbol, or device, or combination thereof, used by a person, company, or organization, to identify and distinguish goods and/or services marketed by the trademark owner. Trademarks include brand names and logos that identify the trademark owner’s products or services from those provided or sold by others, and that indicate the source of the goods or services, even if that source is unknown to the consumer.
In addition to trademarks, there are also service marks, certification marks, and collective marks. All of these are collectively called “marks”.
Q: Why are trademarks important?
A: A trademark immediately informs the consumer that the goods or services are of a certain quality and/or standard. This goodwill gives the consumer a positive feeling about the product and doing business with the organization because he or she knows what to expect before the purchase is made.
Q: How does one secure trademark rights?
A: Trademark rights arise from actual use of a name, logo or symbol in the marketplace. However, rights important to the protection and enforcement of the trademark can be obtained only through registration. The first step to register a trademark is to clear the mark for use. This process normally entails ensuring that the mark is not already being used by someone else in connection with similar goods and/or services. If the mark is already being used, another mark may have to be selected or features added to the proposed mark to help distinguish it from other uses. If the mark is not being used, one simply registers by applying to the Patent and Trademark Office.
Q: What is a copyright?
A: Copyright is the legal right to control the reproduction and distribution of original works of expression, such as literary works, artistic works, dramatic works, and music.
Q: What is an original work?
A: An original work is anything that comprises copyrightable subject matter under the Copyright laws, including literary works, musical works, choreographic and dramatic works, pictorial, graphic and sculptural works, motion pictures and other audiovisual works, sound recordings and architectural works. There are also copyrights for semiconductor mask works, derivative works and other works defined by the Copyright Statute.
Q: Do I need an attorney to copyright my material?
A: Not necessarily, unless there are complex issues as to a particular copyrightable work. Typically copyright protection is automatic once a work has been fixed in a tangible medium of expression, such as paper, magnetic tape, film, a digital medium, or some other material object. However, registration of the work with the Copyright Office is still necessary if you intend to bring a lawsuit in Federal Court to enforce the copyright.
In addition, registration provides the copyright owner procedural advantages should an infringement lawsuit ever be filed, including the ability to obtain statutory damages and attorney’s fees.
The United States Copyright Office provides registration forms free of charge on the Internet. You can also obtain copies of the application forms at most libraries or by writing to the Copyright Office at LM 455, Library of Congress, Washington, D.C., 20559. A special forms hotline is available at (202) 707-9100.
Q: What if someone is infringing my copyright?
A: The penalties for violating a copyright can be severe. The copyright owner is entitled to and may receive actual damages, profits and willful infringement damages. A court may also issue injunctions prohibiting continued infringement, or it may issue a writ of seizure to impound infringing articles. In some cases, the court may even order the infringer to pay attorney’s fees.
Q: How do I give notice of my copyright?
A: Proper notice consists of the symbol “©” or the word “Copyright” along with the year of publication and name of the copyright owner.
The questions and answers posted on this site are provided for informational purposes only and are not legal advice. Information contained on this site is not intended as legal advice for your particular matter and does not create an attorney-client relationship between you and the attorneys at Klein, O’Neill & Singh, LLP.
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