Creations of the mind - creative works or ideas embodied in a form that can be shared or can enable others to recreate, emulate, or manufacture them. There are four primary ways to protect intellectual property - patents, trademarks, copyrights and/or trade secrets
No. Trademarks, copyrights and patents all differ. A copyright protects an original artistic or literary work; a patent protects an invention.
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office (USPTO). Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.
For more information see my patent prosecution outline.
Copyright is a form of protection provided by the laws of the United States (title 17, U.S. Code) to the authors of "original works of authorship," including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works. Section 106 of the 1976 Copyright Act (17 USC §106) generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:
The term "trademark" is often used to refer to any of the four types of marks that can be registered with the United States Patent and Trademark Office (USPTO). The two primary types of marks that can be registered with the USPTO are:
There are other types of marks that can be registered in the USPTO, but they occur infrequently and have some different requirements for registration than the more commonly applied for trademarks and service marks. They are:
Here are some specific benefits of having a federally registered trademark:
The filing fees for a trademark application are as follows:
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application.
If your application is filed based on a bona fide intent to use the mark in commerce, additional forms and filing will be required at a later time.
PLEASE NOTE: Fees are subject to change and should therefore be verified before submission to the USPTO. You may obtain the current schedule of fees at http://www.uspto.gov/go/fees/index.html.
You may conduct a search free of charge on the USPTO website using the Trademark Electronic Search System (TESS) at http://tess2.uspto.gov/bin/gate.exe?f=tess&state=fdnrva.1.1You may also conduct a trademark search by visiting the Trademark Public Search Library, between 8:00 a.m. and 8:00 p.m. at the Public Search Facility, Madison East, 1st Floor, 600 Dulany Street, Alexandria, VA 22313. Use of the Public Search Library is free to the public. You may check on the status of an application or registration through the Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov/. If you do not have access to the Internet, you can call the Trademark Assistance Center at 1-800-786-9199 or 1-571-272-9250 to check the status.
The USPTO examines trademark applications to determine if there is likelihood of confusion between the mark in the application and a previously registered trademark or another mark in a prior-pending application. If no conflict is found and all other statutory requirements are met, the examining attorney can approve the mark for publication. The USPTO has no powers of enforcement concerning the use of trademarks in the marketplace.
"Trade secret" means information, including a formula, pattern, compilation, program device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from no being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. UTSA § 1(4).
Most states have adopted the Uniform Trade Secret Act (UTSA) with 1985 Amendments. In the few states that have not adopted the UTSA, similar protection is available, as described in the Restatement of Torts.
A trade secret is information that has commercial value that you take reasonable efforts to keep secret. You can invent it, find it, develop it, or otherwise legally acquire the information. The improtant thing is that you keep it secret.
In order for a trade secret to remain such, you need to take reasonable steps to protect is as a secret. Typically, you should first provide physical security in order to keep the trade secret a secret. Also, in many cases, it is advantageous having your employees, suppliers, et al., sign non-disclosure agreements agreeing not to disclose your trade secrets.
In the United States, a patent attorney is an attorney registered to practice patent law before the United States Patent and Trademark Office (USPTO). Only patent attorneys and patent agents may file and prosecute patents before the USPTO for others. Attorneys are almost always graduates of law school and have been admitted to practice law in one of the states or the District of Columbia. If not, and they are registered to practice law before the USPTO, then they are patent agents.
In the United States, a patent agent is a non-attorney registered to practice patent law before the United States Patent and Trademark Office (USPTO). Only registered patent attorneys and patent agents may file and prosecute patents before the USPTO for others.
In the United States, a patent engineer is a person who drafts patent applications but cannot file or prosecute them with the United States Patent and Trademark Office (USPTO) because he is not registered to practice law before this agency. Patent engineers typically work for patent attorneys or patent agents.
The patent bar is the group of patent attorneys and agents registered and licensed to practice before the United States Patent and Trademark Office (USPTO) in matters concerning patents.
In order to be registered to practice law before the USPTO, a applicant must first have a scientific or engineering background. This usually takes the form of a engineering or scientific degree from a program recognized by the USPTO, but may also be through accumulation of sufficient scientific and/or engineering credits of sufficient rigor, or be a professional engineer. If the application for admission to practice has been accepted, the applicant then needs to take and pass a patent bar exam. Currently, this is an all day multiple choice test given twice a year in various cities across the country and tests the applicants’ knowledge of patent laws, rules, and regulations, and how to draft and prosecute patents. Typically, the pass rate is around 40%. Upon passing the patent bar exam, the applicant is then enrolled (and thus registered) to practice patent law before the USPTO. See this USPTO General Requirements Bulletin for more information.
Yes. Patents can be written and filed by one or more of the inventors of an invention. This is called "pro se".
Most patent practitioners, whether attorneys or agents, believe that drafting and filing a patent without the assistance of a registered patent attorney or agent is a waste of time and money. This is because drafting and prosecuting patent applications is an art that takes a lot of training and experience to master. In particular, it is an extremely rare pro se inventor who understands claiming sufficiently well to properly draft patent claims of appropriate breadth and clarity. Typically, pro se drafted patent claims are so narrow as to be almost uninfringable.
Let me first point out my biases – I am a patent attorney.
That said, my view is that patent attorneys are better trained, on average, than patent agents. For one thing, they typically have earned a Juris Doctorate (JD) degree and have been admitted to practice law. This is a nontrivial advantage, since patents are legal documents, and their interpretation, and thus drafting and prosecution, is based on over 200 years of history and precedence.
Also, patent agents are limited by law as to what they can do. They can essentially do anything that is directly related to patent drafting and prosecution before the USPTO. This includes patentability searches and opinions, the actual patent drafting, filing, prosecution, payment of fees, interference, reissues, reexaminations, petitions, and appeals within the USPTO.
However, patent agents cannot do a number of other things that patent attorneys can legally do, as doing such would be the practice of law without a license. These include drafting infringement opinions, sending demand letters, making appeals beyond the USPTO, and litigation. Agents also can not give advice nor help with copyrights, trademarks, service marks, trade secrets, unfair competition, licensing, or, indeed, with any other area of the law.
Patent agents have two potential advantages over patent attorneys. First, they typically charge less. Secondly, many, if not most, patent agents worked as engineers before becoming patent agents. Many patent attorneys did not.
To me, this later is important. In my experience, patent attorneys who went straight from their undergraduate school, with an engineering or scientific major, to law school, and then became patent attorneys without any intervening engineering or scientific work experience approach patent practice first as a lawyer, while those who had substantial work as scientists or engineers first approach patent practice first as engineers. My view is that the later typically understand the engineering process much better as well as the inventions themselves.
But, again, note my prejudices – I spent 15 years as a software engineer before becoming a patent attorney.
The first question that you need to answer is whether or not your invention is in a specialized area. Some of these are biotech, genetics, pharmaceuticals, chemical, and, in my view, software and computer architectures. Most patent attorneys will not draft applications in these specialized areas if they do not have engineering or scientific training in them. Personally, I won’t draft patent applications in most of these areas. However, I can, and have, prosecuted applications in these areas that have been drafted by others.
Even without being in a specialized area, as noted above, many, if not most, patent attorneys are more efficient and do a better job working in their areas of expertise. For me, those are software and electronics, most notably, computer and processor design and architectures. If your invention is a simple mechanical application, then almost any registered practitioner can probably effectively and efficiently draft and prosecute your application.
Next, note that it takes a lot of training and practice before a patent attorney or agent is really very good. Some have estimated that it takes typically five years before he is competent and ten before he is good.
You get a number of things with an experienced patent draftsman, with, for example, at least ten years experience. First, they are typically much more efficient. You are not paying for them to fumble around. You are also not paying for another patent attorney or agent to supervise them. Finally, as noted above, drafting patent applications is an art, and the most critical part of that art is in the drafting of the claims, the legal "metes and bounds" of the patent application. The more patent applications a practitioner has drafter, typically, the better he writes (and later prosecutes) the claims.
On the other hand, more experienced practitioners charge more money. There is often a trade off here. But keep in mind that most patent attorneys and agents with fewer than five years of experience are (hopefully) still being supervised and trained, and, thus, you often end up paying for both the trainee and his trainer. In my view, this often ends up costing even more than if an experienced practitioner had drafted and/or prosecuted your patent application in the first place.
Next, if at all possible, it is often very helpful reading some of the issued patents of a patent attorney or agent that you are considering hiring. Remember, if you can’t understand his writing, then it is unlikely that either a patent examiner, or a judge, will do much better. Keep in mind that much of what goes in a patent application is there for legal, and not readability, reasons. However, if you read issued patents written by a range of different practitioners, you will very quickly find that they all have individual styles, and some can write much better than others can.
Finally, if you are reading the patents written by a given practitioner, look at how long they are. Some cut rate patent practitioners draft extremely sketchy applications, while some big firm practitioners draft overly long applications, in order the maximize their billing. The former are often fairly easy to detect – for example, if a practitioner tends to write four and five page applications with three or four claims, then he is doing a cut rate job.
Note that the USPTO charges extra fees for more than twenty total claims and for more than three independent claims. As a result, most practitioners originally write about that many claims. You should probably question practitioners whose issued patents have either a lot more claims, or a lot fewer claims.
The advantage of an individual practicing by himself is that he often charges significantly less than other practitioners. This is typically because he has much lower overhead. However, he may not have sufficient technical breadth or backup for your needs.
Often, a small number of patent attorneys or agents band together into a small firm to share resources and provide more depth and backup than can be provided if they worked alone. With the advent of the Internet, and all the resources that it provides, the pooling of resources is less important today than it used to be. In many cases, you can find extremely experienced practitioners working in these small IP firms.
An intellectual property (IP) boutique is a firm that specializes in intellectual property issues. Typically, most, but not all, of the attorneys belonging to such are patent attorneys. I differentiate IP Boutiques from Small IP firms in that the later tend to be more formally organized and more professionally operated, and tend to have ten or more attorneys and/or agents.
The advantage of IP Boutiques is that they typically have much more depth and backup than do the small IP firms. Also, docketing and other administrative chores is done professionally, typically by dedicated personnel.
The first disadvantage is that they typically charge significantly more than do Small IP firms and Individuals. Also, in many cases your application will be prepared and prosecuted by a junior attorney or agent who is being supervised and trained by a more senior practitioner. The junior practitioner often is not that highly skilled, and you often end up paying for two attorneys, instead of one. The result is typically significantly higher fees than you would pay either the Small IP Firm or an Individual.
Many general practice law firms have attempted to start up patent practice areas in order to better service their clients. These are typically your bigger firms. Indeed, the bigger the law firm, the more likely they are trying to do this.
By and large, this ends up the worst of all worlds. First, note that general practice law firms are run by general practice attorneys. They are not patent attorneys, and are invariably insensitive to the vagaries of patent practice. Their attorney billing is typically set up with general practice attorneys in mind. This most often results in unreasonable hourly requirements for patent attorneys, who often leave as soon as they can to work in a more agreeable atmosphere. For example, IP Boutiques typically require that their patent attorneys and agents bill and collect 1600 or so hours a year. Most general practice firms today require over 2000 hours. General practice attorneys in these firms can meet these billing targets by billing multiple clients for the same time through the use of minimal billing increments. This does not work for patent attorneys.
Also, because of these billing requirements, patents drafted by patent practitioners in general practice firms, esp. the larger ones, tend to be a lot longer than they would be if they had been drafted by other practitioners. Much of this additional verbiage is unneeded, and, indeed, counterproductive and dangerous. It also costs a lot more.
Add to this that general practice attorneys tend to hire attorneys with similar backgrounds. As they typically went straight from undergraduate college to law school, they expect the same from their patent attorneys. The result is that junior level patent attorneys in general practice firms almost never have prior engineering experience.
Turnover is typically very high in the patent sections of these general practice firms. Experienced practitioners are typically brought in to build and run them. But they soon find that they can make as much money elsewhere, with much less stress. This tends to repeat every couple of years. Most of the rest of the patent attorneys in these firms are extremely junior, as they too leave, as soon as they are trained.
The end result, in my opinion, are extremely expensive, mediocre patent applications, often costing at least twice what they would have cost with a small IP firm, while being of much lower quality.
You can spend between $2,000 and $20,000 (or even more) for a patent practitioner to draft a patent application. There are a lot of variables that go into determining the cost to draft a patent application.
The area of technology, or the "Art Area", can play a major role in determining the cost of drafting a patent application. Partly, this is due to ease of drafting, and partly this is a function of supply and demand – if it takes a Ph.D. in genetics to understand the subject matter well enough to file an application, you are going to pay more for it than if most practitioners could do it – a lot more.
Most practitioners charge a minimum for drafting simple mechanical patent applications. Many charge about 50% more for software cases. I don’t. They claim they are more complex and harder to write. I think they just don’t understand the subject area well enough to be efficient in that area. You will probably pay at least double for biotech, genetics, etc. patent applications.
See above discussion about types of firms. For a simple mechanical application, a cut rate firm may charge $2,500, typically delivering a sketchy application with a minimal claim set. An individual, such as I, would typically charge $4,000. A small IP firm, maybe $5,000 to $6,000. An IP Boutique may charge $8,000, and the general practice firm might charge $10,000 or more.
Surprisingly, you will probably get the best price with an experienced practitioner. Typically, a practitioner with at least ten years of experience, esp. if not working in a general practice firm, can usually draft a patent application more cheaply (and better) than a junior practitioner can who is still being trained. This is because he is much more efficient, and the difference between the hourly billing rates of the two do not typically reflect this efficiency. Also, with the experience practitioner, you aren’t paying for a supervising attorney overseeing the junior practitioner. Using a junior practitioner, with a senior practitioner overseeing him, can often cost 50% or more in excess over an equivalent application drafted by an experience practitioner.
An invention promotion company is a company or firm that promises to submit your invention to industry. The idea is that if you do this through them, you can get rich off the royalties when a large company picks up your idea and commercializes it.
You see their ads all the time. They promise to submit your idea to industry, making you rich. But the reality is that they rarely ever deliver.
Independant inventors tend to have limited amounts of money to invest in their inventions. When this goes to Invention Promotion companies, inventors often don't have enough money left to effectively protect their inventions and bring them to market.
Rarely do they make anyone but themselves any money. Almost all the time, these companies are making their money on the services they sell you, and not on a percentage of what they sell to industry. The entire concept of inventors getting rich by submitting their ideas to industry is, by and large, bogus. Large companies are typically not interested in accepting your ideas because if they do, and it turns out that they independantly develop something similar that they end up commercializing, they may end up having to pay you anyway. Most such companies have internal policies to prevent this. Besides, in most cases, their own engineers are much better trained and positioned to develop products for them than you are.
Some, limited number, of medium sized companies do accept outside solicitations of inventions. But these are few and far between.
Mostly, they make their money on all the stuff they sell you, ranging from marketing surveys, through patent searches, patent drafting, packaging the invention for submission to industry.
The American Inventors Protection Act of 1999 gives you certain rights when dealing with invention promoters. Before an invention promoter can enter into a contract with you, it must disclose the following information about its business practices during the past five years:
This information can help you determine how selective the promoter has been in deciding which inventions it promotes and how successful the promoter has been.
Invention promoters also must give you the names and addresses of all invention promotion companies they have been affiliated with over the past 10 years. Use this information to determine whether the company you're considering doing business with has been subject to complaints or legal action. Call the U.S. Patent and Trademark Office (USPTO) at 1-866-767-3848, and the Better Business Bureau, the consumer protection agency, and the Attorney General in your state or city, and in the state or city where the company is headquartered.
If a promoter causes you financial injury by failing to make the required disclosures, by making any false or fraudulent statements or representations, or by omitting any fact, you have the right to sue the promoter and recover the amount of your injury plus costs and attorneys' fees.
In addition, although the USPTO has no civil authority to bring law enforcement actions against invention promoters, it will accept your complaint and post it online if you complete the form, Complaint Regarding Invention Promoter, at www.uspto.gov/web/forms/2048.pdf. The USPTO also will forward your complaint to the promoter, and publish its response online. To read complaints and responses, visit Inventor Resources at www.uspto.gov/web/offices/com/iip/index.htm.