Intellectual Property 12

Can I patent a variation of a product?

Only if the variation is not an obvious change. In addition, if your variation is patentable, the patents on the original invention—if they have not expired—might prevent you from selling your invention without the consent of the inventor of the original item.

Can I patent a novel idea for using existing products?

Sometimes. The idea would need to be an unobvious process to be patentable.

Will the patent I get here protect my invention from being copied and used in other countries?

No. You will have to file patent applications in the foreign countries in which you want protection. Gerry Elman points out that the Patent Cooperation Treaty allows you to file a single application within one year of your U.S. patent filing that can start the chain of activity to protect your invention in up to 103 countries in which you may later seek patent protection. But this process generally works only if your U.S. patent application was filed before you made any public disclosure of the invention.

Are there any books I can read that will help me understand the patent process?

A book you may find useful is Patent It Yourself, by David Pressman (Nolo Press). You may still need to hire an attorney, but by reading this book and using the information in it you could possibly save several hundreds of dollars in attorney fees.

What happens if someone does infringe my patent?

As stated previously, you have the right to sue and could be awarded money for past infringements. However, suing can be a lengthy and expensive process, pitting "little you" against the money and legal staffs of giant corporations. If you are determined and have a valid patent you might win the lawsuit in the long run, but the monetary and emotional costs can be draining. It took Robert Kearns, the inventor of the intermittent windshield wiper, 12 years to win his battle against auto companies for infringing his rights. Eventually he won a $10.2 million settlement, $8 million of which went to legal fees, and he was planning to use the remainder to bring still more infringement suits. It is possible, however, to get patent owner's insurance to pay an attorney's fees for such suits. Gerry Elman suggests that if you shop around you might find a lawyer willing to bring your patent infringement suit on a contingency basis.

How do I protect the idea for an invention?

If you are working on an invention and want to document your progress and the dates of your work, you could have your log signed and dated by a friend who is not involved in any way with the invention but who can read and understand your notes. You might also consider using the US Patent & Trademark Office Disclosure Document Program. Under this program the inventor, as evidence of the date an invention was conceived, submits a document (the disclosure document) to the USPTO describing the invention. The USPTO stores it for two years, and then destroys the document unless unless it is referred to in a separate letter in a related nonprovisional patent application filed within those two years. The disclosure document is not a patent application, and according to the USPTO, does "not diminish the value of the conventional, witnessed, permanently bound, and page-numbered laboratory notebook or notarized records as evidence of conception of an invention." For additional information see http://www.uspto.gov/web/offices/pac/disdo.html.

What is a provisional patent application?

A provisional patent application offers a way to establish an earlier effective filing date for a patent application. It is not a patent. It is just an application. It allows your to file a patent application without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It also permits you to use the term "Patent Pending" in connection with the invention. If you want to get a patent for the invention you either have to file a utility patent application referencing the provisional patent within a year, or convert the provisional application into an application for a utility patent. For more information on provisional patents, see http://www.uspto.gov/web/offices/pac/provapp.htm, or contact a patent attorney.

I have already started to market the product—can I still get a patent?

In the United States you can apply for a patent within one year of the time it is first offered for sale or disclosed publicly, so if you have been marketing the product for less than a year, you may be able to get a patent in this country. Most other countries require you to apply for the patent before disclosing your invention; thus, you cannot qualify for patent protection in those countries. For specific information, consult a patent attorney.

How can I protect a design for a new product?

There is something called a design patent that lets you protect things such as designs on jeans, the shape of an object, and other designs used for manufactured goods.

What is a nondisclosure agreement and when do I need to use one?

A nondisclosure agreement prohibits others from using your confidential information or trade secrets for their own benefit or divulging that information to anyone else.
You would use one if you have employees who have access to confidential information, such as your customer list or plans for an invention, or if you have to show confidential information to others outside your company. Pay special attention to this if you haven't yet filed a patent application for the subject matter.

What is a trade secret?

A trade secret is business information you have that gives you a valuable edge over your competitors. This information may be a recipe for a cookie, an invention, the unique part of the code for a program, your customer list, plans to introduce new products, or almost anything else that is generally not known and gives you a competitive advantage.

What kind of protection is there for trade secrets?

If what you have is not generally known, and if you have taken care to maintain secrecy, you can sue the individual who disclosed your secrets. You may also take legal action to stop use of your trade secrets by others and recover damages if warranted.

What do I have to do to maintain secrecy?

Generally you have to limit access to what you consider a trade secret, be it your customer list, your recipes, or formulas. If you need to give people access to your trade secrets, you should make them first sign a nondisclosure agreement, preventing them from using or passing on what they learn. If you have employees, don't leave important papers lying out on desks or in unlocked drawers where someone working late could easily get at them. Avoid giving suppliers or bankers or anyone else you deal with access to your trade secrets, too.

How can trade secret laws help me?

Trade secret laws can protect your invention or your software in the development stages and can help you prevent others from profiting from your business procedures, lists, processes, or other unique parts of your operation. Some companies that have products with short lives or short budgets take their chances on trade secrets and speedy commercialization rather than go to the expense and time to apply for and get a patent. However, if another company develops on their own what you have, if you don't have a patent you have no recourse against them.

What is licensing and how does it work?

Licensing allows you to make money from other people's use of something you have created or you own. For instance, when you license a design you have created or software program you have authored, you give the licensee the right to use that work under specific circumstances that are spelled out in detail in a written agreement. The agreement will usually specify such things as how, when, and where the licensee may use your work, how you will be compensated for the work, and whether the licensee has exclusive or nonexclusive rights to use your work.

Can any attorney help me with patents and other intellectual property?

Only a patent attorney or patent agent may represent an inventor applying for a patent. An attorney in a general practice often won't have the background and experience in intellectual property law to help you protect or defend your rights to intellectual property. If the matter is something more or less routine (like registering a copyright), a general practice attorney may be able to process the paperwork. (In all probability, the attorney will "job out" the routine paperwork to a firm set up specifically to handle it.) He or she probably won't have the expertise to counsel you on how an intellectual property law (such as the copyright law or patent law) relates to your specific situation and how that situation is generally handled in contracts and in courts. Your best bet is to locate an attorney who specializes in intellectual property, and is familiar with your industry.

How can I find an intellectual property attorney?

The Roster of U.S. Patent Attorneys and Agents is on the web at http://www.uspto.gov. You can search the authoritative Martindale-Hubbell Law Directory on the web at http://www.lawyers.com. Patent attorneys are specifically identified, and the lawyers may also list in the directory their specific areas of expertise. If you can't find one who knows your field, call the bar association or a trade association and ask for a recommendation. If you are in the arts (music, painting, writing, for example) you can get information and referrals by contacting the Volunteer Lawyers for the Arts, and ask where you can get the information you need. If you can't find a branch of Volunteer Lawyers for the Arts in your phone book, call the main office at 1 East 53rd Street, New York, NY 10022, (212) 319-2910, and ask for information and/or reference to a branch nearer to you.

Volunteer Lawyers for the Arts
1 East 53rd St, 6th floor, New York, NY 10022-4201
tel: 212-319-2787, ext. 1 fax: 212-752-6575
http://www.vlany.org/

1 | 2 | 3 | 4 | 5 | 6 | 7 | 8 | 9 | 10 | 11 | 12 |