Intellectual Property Practice Patents, Trademarks, Copyrights
Founded in 1925, Shumaker, Loop & Kendrick,LLP is a multi-state law firm of more than 215attorneys with offices in Toledo and Columbus,Ohio;Tampa and Sarasota, Florida; and Charlotte,North Carolina. Our attorneys represent a broadspectrum of domestic and international businessclients. The firm is built on a tradition ofextraordinary service to our clients. Our continuingcommitment to our clients drives the efforts anddirection of the firm.
INTELLECTUAL PROPERTY PRACTICE GROUPProtecting Your Interests Please contact one of our offices if youShumaker, Loop & Kendrick, LLP’s intellectual property law practice have any questionsgroup counsels clients on issues relating to the creation, registration, in the area ofprotection, licensing, and transfer of intellectual property rights; Intellectual Property and to match youassists clients in negotiating and documenting transactions involving with the rightintellectual property; and represents clients in federal, state, and lawyer, in the rightadministrative litigation of disputes involving intellectual property. geographic location, to address your Intellectual PropertyOur practice calls upon the expertise of our group in the areas of needs.domestic and international patent, copyright, trademark, trade dress,trade secret, franchise, false advertising, and unfair competition law. You can also visit our website atThe following is a quick reference guide based on questions commonly www.slk-law.com to learn more.asked in the area of intellectual property. It is by no means intendedto be an exhaustive treatise on the vast expanse of law in the areaof intellectual property, but is instead intended to serve as a desktopreference. We would be pleased to discuss any questions that youmight have in the area of intellectual property and to match you withthe right lawyer, in the right geographic location, to address yourintellectual property needs.
P PATENTS Q: What is a patent? A: A patent is the grant of a property right to an inventor, issued by the United States Patent and Trademark Office, which confers the right to exclude others from making, using, offering for sale, selling, and importing an invention in the United States. Q: What can or cannot be patented? A: Any new and useful process, machine, article of manufacture, or composition of matter (chemical compositions and may include mixtures of ingredients as well as new chemical compounds), or any new and useful improvement thereof. The laws of nature, physical phenomena, and abstract ideas are not patentable subject matter. Q: How do I obtain a patent? A: To obtain a US patent, an application must be filed in the USPTO through a registered patent attorney or agent. Q: If the USPTO grants me a patent on my invention, am I protected throughout the world? A: No. US patent grants are effective only within the US, and its territories and possessions. However, separate patent protection may be procured in a variety of countries and international agencies. Q: How long do I have to apply for a patent? A: That depends. If you make your invention known to the public, you have 1 year from the date of publication to apply for a patent. Federal law prohibits an inventor from obtaining a patent if the invention has been in the public domain for more than 1 year before the date he or she applied for the patent. The underlying policy is that once inventors decide to lift the veil of secrecy from their work, they must choose between the protection of a federal patent or the dedication of their idea to the public. Q: I have an idea, but have not actually created or built my invention. Can I still obtain a patent? A: A patent cannot be obtained upon a mere idea or suggestion. The law requires at least a sufficient description to enable a person skilled in the art to which the invention pertains to make and use the invention.
INTELLECTUAL PROPERTY PRACTICE GROUPQ: What is the difference between a utility patent and a design Please contact one of patent? our offices if youA: A utility patent protects the way an article is used and works, have any questions while a design patent protects the way an article looks. Both in the area of utility and design patents may be obtained on an article if Intellectual Property invention resides both in its utility and ornamental appearance. and to match youQ: I have developed what I think is a unique business method. Is with the right such a method patentable? lawyer, in the rightA: Possibly. Assuming your business method is new and non- geographic location, obvious over the prior art, and has not already been patented, to address your the USPTO could issue you a business method patent. Business Intellectual Property methods are subject to the same legal requirements for needs. patentability as applied to any other process or method. You can also visitQ: What is a patentability search? Do I need one before I can file my patent application? our website at www.slk-law.comA: A patentability search is designed to locate patents that help to determine the novelty and non-obviousness of an invention. to learn more. Generally, a patentability search includes a review of both issued US, European Patent Office (“EPO”), and World Intellectual Property Organization (“WIPO”) patents, and published US, EPO, and WIPO applications. Before you apply for a patent, a registered patent agent or a registered patent attorney should have a patentability search performed to ensure that the invention has not already been patented.Q: I worked with someone else to create an invention. To whom will the patent for the invention be granted?A: If more than one person conceived the claimed invention, the patent application must be filed in the name of all inventors. In this case, a granted patent will issue in the name of all of the inventors. If any of the inventors is not named in the application, it must be amended to provide the USPTO with correct inventor- ship of the invention. If, on the other hand, only one person conceived the invention, and the other person(s) only followed instructions in making or using the invention, the person who conceived the invention is the sole inventor, and the patent application must be filed in the name of the sole inventor. In this case, a granted patent will issue in the sole inventor’s name.Q: I hired someone else to create an invention and furnish all of the ideas to make the invention. To whom will the patent for the invention be granted?A: The application must be signed by the true inventor, and filed in the USPTO in the inventor’s name. This is the person who furnishes the ideas, not the employer or the person who furnishes the money.Q: How long will it take to register a patent?A: That depends. The entire process from patentability search to registration generally takes anywhere from 18 to 30 months.
Q: How much will it cost to register a patent?P A: That depends. There are many costs associated with obtaining a US patent, including patentability search fees and filing, search, and examination fees with the USPTO. At the time of issue, you will be required to pay a utility issue fee. Over the course of the life of the patent, you will be required to pay patent maintenance fees, which are payable 3.5 years, 7.5 years, and 11.5 years after the patent issues. In addition to the fees charged by the USPTO, the attorney’s time spent drafting and prosecuting the application can vary. Depending on the complexity of the application, the attorneys’ fees for drafting the application can range from $7,500 for relatively simple applications to $20,000 or more for more complex applications. Q: How long will the protection afforded by my patent registration last? A: Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the US, or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees, as set forth above. Under certain circumstances, patent term extensions or adjustments may be available. Q: What happens to my invention after my patent expires? A: Your invention will be open to the public and anyone will be able to make, use, offer for sale, sell, or import your invention in the US. Q: Are there any private or government organizations that can assist me in developing and marketing my invention? A: Yes. In nearly all states, there are state planning and development agencies or departments of commerce and industry that seek new product and new process ideas to assist manufacturers and communities in the state. If you do not know the names or addresses of your state organizations, you can obtain this information by writing to the governor of your state. However, great care must be taken when using private invention promotion, marketing, and licensing companies. Many invention promotion, marketing, and licensing companies take advantage of an inventor’s enthusiasm for their invention by making exaggerated promises, charging exorbitant fees, and procuring unduly narrow or altogether worthless patents. The USPTO provides helpful information in avoiding scam invention promotion, marketing, and licensing companies at: www.uspto.gov/web/offices/com/iip/documents/scamprevent.pdf.
INTELLECTUAL PROPERTY PRACTICE GROUPQ: When do I use the terms “patent pending” and “patent Please contact one of applied for?” our offices if youA: The phrases “patent pending” and “patent applied for” are have any questions interchangeable and have no legal effect, but only give information in the area of that an application for patent has been filed in the USPTO. The Intellectual Property protection afforded by a patent does not start until the actual grant of the patent. These phrases are generally used by the and to match you patent applicant on or in conjunction with the manufacture or with the right sale of a product or article encompassing the invention to inform lawyer, in the right the public that an application for patent on that product or article geographic location, is on file in the USPTO and generally may dissuade a potential to address your infringer from intentionally copying or infringing your invention. Intellectual Property Additionally, when an inventor is looking to market and/or have their invention manufactured, companies often find it more needs. attractive to invest in a particular invention only after it has obtained “patent pending” status. You can also visit our website atQ: Is there any danger that my attorney or the USPTO will give www.slk-law.com others information contained in my patent application while it is pending? to learn more.A: Your attorney cannot disclose to others information contained in your patent application unless you instruct him to do so. However, most patent applications will be published 18 months after the filing date of the application unless a specific request is made at the time of filing the patent application. After the application has been published, any member of the public may request a copy of the application file. After the patent is issued, the USPTO file containing the application and all correspondence leading up to issuance of the patent is made available for inspection by anyone on the USPTO’s website or at the File Information Unit.Q: I have a patent. Now what do I do?A: That depends. A patent allows the owner to exclude others from using the claimed invention. It does not, however, necessarily mean that you are free to make, use, or sell the device. For example, many patented inventions are subject to regulation by other government agencies. If your invention is not regulated by any law or agency, you may make, use, or sell the device yourself. You may also permit third parties to make, use, or sell your invention, at your direction, by entering into a licensing arrangement with such third parties. It is important, however, to consult your attorney prior to entering into any such arrangements with third parties to ensure that you maintain your rights in and to your invention.Q: What does it mean if someone is infringing my patent?A: Infringement of a patent consists of the unauthorized making, using, offering for sale, or selling of any patented invention within the US or its territories and possessions, or importing into the US or its territories and possessions any patented invention, during the term of the patent.
Q: I see that someone is infringing my patent. Do I have to doP anything about it? A: No, you do not have to do anything, but you should do whatever necessary to protect your rights in and to your patent. If a patent is infringed, the patentee may sue for relief in the appropriate federal court. The patentee may ask the court for an injunction to prevent the continuation of the infringement and may also ask the court for an award of damages because of the infringement. However, undue delay in enforcing your rights may result in injunctive relief being unavailable. Q: After my patent issues, can the USPTO help me enforce my patent in the event of infringement? A: No. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO. Q: How can I protect my invention outside of the US? A: You must apply for a patent in each of the other countries or in regional patent offices. Almost every country has its own patent laws, and a person desiring a patent in a particular country must make an application for patent in that country, in accordance with the requirements of that country. Q: I have an idea, but I am not sure whether or not I want to obtain a US patent. What other options do I have? A: A US patent only affords the patent owner protection on their invention for 20 years from the date of application. If you would like to keep your invention out of the public domain for a longer period of time, you may be able to protect your invention (as well as all confidential information associated therewith) as a trade secret. To maintain the secrecy of your invention, it is necessary when dealing with your employees, agents, representatives, or other third parties to enter into various agreements, including development agreements, transfer agreements, confidentiality agreements, and non-competition agreements. In the event that your employees, agents, representatives, or other third parties breach such agreements and/or misappropriate your trade secret, most states have enacted the Uniform Trade Secrets Act, which affords injunctive and monetary relief to trade secret owners. Please contact your attorney for more information about this complex area of the law. Q: Does each state have its own laws which afford protection over inventions? A: No. Patent protection is available exclusively through the USPTO. In general, laws governing patent protection and the USPTO are codified in Section 35 of the United States Code.
INTELLECTUAL PROPERTY PRACTICE GROUPTRADEMARKS Please contact one of our offices if you have any questionsQ: What is a trademark? How does it differ from a service mark? in the area ofA: A trademark is a word, phrase, symbol, device, design, a Intellectual Property combination of them, or anything else used by a manufacturer or and to match you merchant to identify its goods and distinguish them from those of with the right others. A service mark is the same as a trademark, except it lawyer, in the right identifies and distinguishes the source of a service, not of a product. “Trademark” or “Mark” is used throughout this publication to refer geographic location, to both trademarks and service marks. to address your Intellectual PropertyQ: How do I acquire rights in a trademark? needs.A: You acquire rights in a trademark by using the mark in commerce. Such rights will be effective only in the geographic area of your You can also visit actual use. our website at www.slk-law.comQ: Why should I perform a trademark search before using my trademark? to learn more.A: A full trademark search reviews existing and pending federal and state registrations and actual uses of similar marks to determine whether a third party might have a prior claim to exclusive use of the mark. Before expending money and time to develop and market your trademark, it is wise to determine whether someone else has prior rights to a similar mark and, thus, might have the right to interfere with your use.Q: I searched the USPTO database to see if my mark was already registered by someone else and found nothing. Am I cleared to use my mark or do I need to do anything else?A: A proper search of the USPTO records will alert you to potentially conflicting marks only if they are registered with the USPTO or if such a registration is pending. Since rights to trademarks come from use, not registration, someone who is using the mark but does not have a registration or an application could have a valid basis for interfering with your use of the mark. Therefore, a broader search is advisable.Q: If rights in a trademark arise from use, not registration, why should I register?A: Federal registration of a trademark provides several advantages, including: • constructive notice to the public of your claim of ownership of the mark; • a legal presumption of your ownership of the mark nationally and right to exclusive use; • the right to use your US registration as a basis for certain foreign registrations; and • the ability to file with the US Customs Service to prevent importation of infringing goods.
Q: Do I have to be using a trademark to register it with the USPTO?TM A: You may file an application with the USPTO based on actual use or based on your good faith intent to use the mark in the future. If you file based on your intent to use the mark in the future, such use must actually occur before the USPTO will issue the registration. Q: Should I register my mark with my state trademark office as well as with the USPTO? A: You may wish to file your trademark at the state level for a number of reasons, including: • you cannot file with the USPTO because your business is purely local and you do not use your mark in interstate or international commerce; • state trademark registration is generally cheap and quick and will issue long before any federal registration; and • third parties performing trademark searches that include state registrations will be advised of the existence of your mark. Q: How much will it cost to register my trademark? A: You must pay a fee set by the USPTO when filing a trademark application with the USPTO. In addition, if you have an attorney file the application you will need to pay for time and expenses in preparing and filing the application and in following up and responding to office actions filed by the USPTO in response to the application. Q: How long will it take to register my trademark? A: In the best case scenario, barring any objections on statutory or other grounds, a registration may issue in about 1 year from initial filing. Some reasons the examining attorney may refuse your mark include, but are not limited to: • a likelihood of confusion exists between your proposed mark and another mark that is registered or pending in the USPTO; • the proposed mark is primarily merely descriptive or deceptively misdescriptive of the goods/services; • the proposed mark is primarily geographically descriptive or primarily geographically deceptively misdescriptive of the goods/services; • the proposed mark is primarily merely a surname; or • the proposed mark is ornamental. Please note that this is not an exhaustive list of all possible grounds of refusal of registration of a mark.
Q: How long will the protection afforded by my trademark registration last? Please contact one ofA: Trademark protection can last for as long as you are using the our offices if you mark. Federal trademark registrations are granted for successive have any questions 10-year terms. You must maintain the mark by filing proof of in the area of use between the 5th and 6th year of the registration and by Intellectual Property filing for renewal every 10 years. and to match you with the rightQ: When do I use the TM, SM and ® symbols? lawyer, in the rightA: You can use the ® symbol only for a federally registered trademark. geographic location, You can use TM or SM (which mean “Trademark” and “Service Mark”) prior to registration. In any case, the symbol should be to address your placed in close proximity to the actual mark. Intellectual Property needs.Q: I have a trademark registration. Now what should I do?A: If you fail to protect your trademark from infringement, you could You can also visit lose your rights in the mark. In order to protect your trademark, our website at it is advisable to hire a third party firm to continuously monitor www.slk-law.com the market for infringing uses. Even without such a service, if to learn more. you discover a possible infringing mark, you should take steps to notify the holder of the infringing mark of your prior claims to the mark and demand that they discontinue their use.Q: How can I protect my trademark outside of the US?A: In many foreign countries, rights to trademarks result from registration, not use. There is a large industry devoted to pursuing registrations of trademarks in various countries with the intent of requiring a payment from the rightful owner in consideration of relinquishing such prior registrations if and when the rightful owner decides to enter the market. If you have plans to enter foreign markets, it is advisable to register early to identify any problems in advance.Q: I want to license my trademark. Now what?A: Trademark licensing can be a lucrative business. However, if a trademark owner does not maintain control of the goods and services marketed under its mark, the owner’s rights in the mark may be lost. Therefore, it is important to license marks under a written agreement which imposes standards on the goods and services to be marketed and for the trademark owner to enforce those standards. If you license a trademark and grant the licensee certain operational support, you may have created a franchise. Sales of franchises are regulated by federal and state laws and require the franchisor to meet certain disclosure and filing requirements as well as impose restrictions on the relationship, including restrictions on termination and renewal. It is advisable to consult an attorney knowledgeable in franchise matters before licensing your trademark.
COPYRIGHTSC Q: What is a copyright? A: Copyright is the set of exclusive rights given to creators of original “works of authorship, including literary, dramatic, musical, ” artistic, and certain other intellectual works. This set of exclusive rights includes the rights: • to reproduce the copyrighted work in copies or phonorecords; • to prepare derivative works based upon the copyrighted work; • to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; • in the case of literary, musical, dramatic, and choreographic works, pantomimes, motion pictures, and other audiovisual works, to perform the copyrighted work publicly; and • in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly. Copyrights do not protect concepts and ideas. Q: How do I acquire a copyright? A: Copyright vests in the author of a work the moment the work is “fixed in a tangible medium. Fixation can take many forms. The ” most common examples are when your work is written down, printed, or recorded in such a way that it can be played back. Q: I hired someone to create a work for me. Who owns the copyright in the work? A: The person that you hired might own the copyright. Copyright in a work initially belongs to the person who creates the work, unless the work is a “work made for hire, i.e., (1) a work prepared ” by an employee within the scope of employment or (2) a work specially ordered or commissioned, if it is of a particular type, and if the parties agree in writing that the work is considered to be a “work made for hire. If the work is a “work made for hire, ” ” then the employer or other person for whom the work is prepared is considered the author of the work and owns the copyright in the work. Otherwise, the employer or other person for whom the work is prepared will not own the work unless the copyright in the work is assigned to him or her in writing.
Q: Who may file an application for copyright? Please contact one ofA: The following persons are legally entitled to submit an application our offices if you form: • the author. This is either the person who actually created the have any questions work or, if the work was made for hire, the employer or other in the area of person for whom the work was prepared; Intellectual Property • the copyright claimant. The copyright claimant is defined in and to match you Copyright Office regulations as either the author of the work or with the right a person or organization that has obtained ownership of all the lawyer, in the right rights under the copyright initially belonging to the author. This geographic location, category includes a person or organization who has obtained to address your by contract the right to claim legal title to the copyright in an application for copyright registration; Intellectual Property needs. • the owner of exclusive right(s). Under the law, any of the exclusive rights that make up a copyright and any subdivision of them can be transferred and owned separately, even though You can also visit the transfer may be limited in time or place of effect. The term our website at “copyright owner” with respect to any one of the exclusive www.slk-law.com rights contained in a copyright refers to the owner of that to learn more. particular right. Any owner of an exclusive right may apply for registration of a claim in the work; or • the duly authorized agent of such author, other copyright claimant, or owner of exclusive right(s). Any person authorized to act on behalf of the author, other copyright claimant, or owner of exclusive right may apply for registration.Q: What are the advantages of registering my copyright?A: A copyright registration conveys several important rights on the registrant, including: • the right to sue for infringement; • prima facie evidence of the validity of the copyright and of the facts stated in the certificate of registration of the copyright; and • statutory damages and attorneys’ fees in litigation, if the copyright is registered prior to the infringement or within three months after the first publication of the work.Q: What if I have not registered my copyright and I see that someone is infringing my copyright? Can I register my copyright and pursue the infringer?A: You may register and then sue for infringement, however, you will generally not be entitled to receive statutory damages or attorneys’ fees in litigation. In order to preserve your rights to statutory damages and attorneys’ fees, you must have already registered your copyright with the US Copyright Office prior to bringing suit, unless such registration is made within 3 months after the first publication of the work.
Q: How much will it cost to register my copyright? A: The filing fee for an online application is in most cases $35.00.C The attorneys’ fees for preparing and prosecuting the application vary based on the complexity of the application, and are generally billed on an hourly basis. Q: How long will it take to register my copyright? A: From the date a copyright application is filed, it may be several months before the certificate of registration of the copyright is issued. However, the registration date will be the date the complete application was received by the US Copyright Office. In certain circumstances, an applicant may request expedition of the processing of an application upon payment of an additional special handling fee. Q: How long will the protection afforded by my copyright registration last? A: The term of copyright in a work runs from the date of the work’s creation for a term consisting of the life of the author plus 70 years. In the case of “a joint work prepared by two or more authors who did not work for hire, the term lasts for 70 years ” after the last surviving author’s death. In the case of an anonymous work, a pseudonymous work, or a work made for hire, the term of the copyright in a work runs for 95 years from the date of its first publication, or 120 years from the date of its creation, whichever expires first. Any copyright, the first term of which is subsisting on January 1, 1978, shall endure for 28 years from the date it was originally secured. In the case of any work copyrighted by a corporate body (otherwise than as assignee or licensee of the individual author) or by an employer for whom such work is made for hire, the proprietor of such copyright shall be entitled to a renewal and extension of the copyright in such work for the further term of 67 years.
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