Those who obtain and need patents fall broadly into three categories:
The first step towards filing a Patent Application is to have a preliminary patentability search conducted on the invention. Exceptions are U.S. patents based on foreign patents and where the inventor keeps abreast, in a reliable and trustworthy manner, of the state of the art. Another exception exists where the Application must be prepared and filed in an expedited manner because of a prior or pending publication or sale. A further exception may exist where the inventor is primarily interested in having a "Patent Pending" status and not overly interested whether or not a patent eventually issues or that the patent has a broad scope. Patentability searches are not ordinarily exhaustive, but nevertheless, usually provide about 85% or more predictability on whether or not a patent of reasonable scope can be obtained. Patentability searches often flush out infringement problems, although there is no guarantee that they will do so. They also assist in providing background for the preparation of a Patent Application and in defining the scope of protection which, in the form of "claims" will be required in the Application.
For the purposes of a preliminary patentability search, the inventor should provide enough information so that the patent attorney and searcher can understand the invention. It also assists if the inventor will provide information on pertinent prior art of which he or she is aware.
A good searcher has a hunter's instinct and will try to prove that your invention is not new. The search is conducted in the most likely patent classifications in the Search Room at the U.S. Patent and Trademark Office by reviewing prior art patents so classified. If the invention is not found, the searcher will often consult a Patent Examiner familiar with the art as to further classifications which should be searched. Searches are not perfect. Sometimes the best prior art is not in a classification that was searched. Sometimes it is missing from the files, and sometimes the searcher may simply miss it. But usually these do not happen. Even if a searcher does not find the exact invention, the searcher will almost always provide copies of a number of prior art patents which seem to be pertinent to the invention. The prior art patents found by the searcher are then evaluated by a patent attorney who provides the inventor with advice on whether or not it appears that a patent may be obtained based on the prior art found by the searcher. If it appears that a patent can be obtained, then the patent attorney will advise the inventor of the cost of preparing and filing the Application, and usually indicates the scope of patent protection which can be obtained over the prior art found by the searcher.
Next the inventor makes a decision whether or not to proceed with the Patent Application.
Once a Patent Application has been prepared and filed in the U.S. Patent and Trademark Office, the invention is then in a "Patent Pending" or "Patent Applied For" status.
The Patent Office has 2,000 Patent Examiners, more or less, who are assigned to examine specific types of inventions. The Patent Examiner to whom the Application is assigned takes up the Applications in order of receipt and examines them for sufficiency of the Specification, including the drawings if any, and the claims. Eventually the Patent Examiner issues a first Official Action. There are a variety of matters and objections which may be, and frequently are, included in the first Official Action. Traditionally the first Official Action on the merits is a rejection of all claims, or at least the broader claims.
The Application then enters what is known as the "prosecution stage." The objections and comments of the Patent Examiner are evaluated and a Response is prepared and filed. Often the claims which are initially submitted are overly broad and certain language changes are made by amendment. Moreover, the Examiner may have discovered further prior art and the claims must be changed to avoid same. Once the Patent Examiner receives a Response (known also as an "Amendment"), again it is taken up in order and the Examiner may decide to allow the Application or issue another Official Action, which may be followed by another Response. There may be several Responses and Official Actions. Eventually the Application is allowed or the inventor is placed in a position whereby an Appeal must be filed or a superseding Continuing Application is filed. All of this can be costly for the inventor. Nevertheless, most Patent Examiners are reasonable most of the time. Most Applications which involve novel inventions eventually end up with an allowance and issuance of patent. This usually takes between two and three years from the time that the Patent Application is filed. However, some Applications have issued as patents in less than one year and sometimes, particularly where Appeals and/or Interferences are involved, it will take ten or fifteen years, and sometimes more, before the Application actually issues as a patent. But these are rare exceptions.
Our experience has been that most difficulties arise due to difficult Examiners. A retired Patent Examiner once said he learned from his years at the Patent Office that inventive progress is made by small steps. New Examiners who have not yet learned this can often be the hardest to deal with. However, on occasion, even experienced Primary Patent Examiners and Supervisory Patent Examiners will not allow a Patent Application on an invention of merit. There is not much inventors can do about this except file Continuing Applications and hope to obtain a more reasonable Examiner or to appeal the Examiners' decisions.
Once a patent has been allowed, formal drawings must be submitted if the initial drawings were informal (as they now usually are) and an issue fee must be paid within three (3) months of the Notice of Allowance. Thereafter, usually two (2) to four (4) months later, the formal patent will issue. The patent will be subject to maintenance fees which will become due on the third (3rd), seventh (7th) and eleventh (11th) years after the issuance date. The lifetime of almost all U.S. patents is twenty (20) years from the effective date of filing. However, in some cases this can be extended and inventors will undoubtedly be notified if it is possible to do so or if this may have occurred already.
A trademark should not be adopted without first checking on whether or not it conflicts with any existing trademark and is available for federal registration. It is not uncommon for a business to select a trade name which it also uses in a trademark sense or a trademark for particular goods or services without first having a search made to determine whether or not it may conflict with an existing federally registered mark and, if not, is available for federal registration. This can be a serious mistake. If a conflict is found subsequently to exist, the results can run the gambit from embarrassment to devastation. Unfortunately, often the only check made is through a state agency which is usually under the cognizance of the Secretary of State of the state involved. But all this does is to indicate whether or not there is any conflict within the state and it is not a guarantee even then that the selected mark might not be confusingly similar with another mark used in the state.
Mason, Mason & Albright discovered many years ago that when asked to search on the registrability of a particular mark, there was about a one-third chance that the mark conflicted with an existing mark, about a one-third chance that it was questionable that the mark could be federally registered, and about a one-third chance that the mark would be cleared for adoption. Trademark searches are not difficult, although experience and familiarity with the Search Room for Trademarks at the U.S. Patent and Trademark Office are helpful. In fact, simply travelling to the Search Room which is relatively close to the office of Mason, Mason & Albright probably takes almost as much time as it does to complete an average search. Accordingly, Mason, Mason & Albright commenced offering to search up to three (3) marks for the same fee as for one mark provided that the searches are conducted at the same time and would be included in a single search report rather than three separate search reports. Separate searches made in series, it was found, are time consuming for us and expensive for the client. There is, of course, no guarantee that even when three marks are searched simultaneously, that one of the three will be cleared for use. Nevertheless, usually at least one of the selected marks is cleared, and often two and sometimes all three marks will be cleared for possible use. But we recall, at one time, searching seven marks as a batch only to have to inform the client that all seven proposed marks had serious conflicts with existing registered marks.
Aside from conflicts with registered marks, the most common reason that a mark is refused for registration after an Application has been filed is that the Examiner considers the mark to be "descriptive" or "generic." Accordingly, it is best not to select trademarks or trade names which are overly descriptive for the goods or services involved. In fact, in the long run, probably the more fanciful the mark, the better, because it will be accorded a broader scope of protection.
Once a trademark has been cleared for possible registration, then the next question is whether an Intent-to-Use Application should be filed as soon as possible or the Applicant should wait until actual use of the mark has commenced in commerce and then file to register the mark. As a rule of thumb, it is usually best to file an Intent-to-Use Application immediately unless actual use of the mark will commence within a short period of time, say, several weeks or one month. The mere filing of an Intent-to-Use Application constitutes a constructive use of the mark in commerce subject to actual use of the mark within three years after the Trademark Examining Attorney issues a "Notice of Allowance" for registration of the mark. However, in the three-year period, extensions have to be obtained every six months before actual use in commerce commences. There is currently a $100.00 fee that has to be paid to the U.S. Patent and Trademark Office for each extension request, plus attorneys' fees for services incidental to making the request and reporting. Thus the Intent-to-Use Trademark Application route to obtain a Trademark Registration may ultimately prove twice or three times more expensive than if a conventional Trademark Application is filed initially.
Once an Application is filed, a certain amount of prosecution can be anticipated. This prosecution, if the mark was cleared for use by a trademark search and is not descriptive, if any, is usually minimal and relates to how the goods or services will be described on the trademark registration. If registration of the mark was reported to be questionable or if a search was not made, then the prosecution may require what is, in effect, an attorney's Brief when the Examining Trademark Attorney initially refuses to find the mark registrable. These are often roughly ten pages long and require legal research to meet the reasons that the Examining Trademark Attorney refused to register the mark on the first Official Action. Depending upon the Examiner and the specific issues involved, we find the Examiners can be convinced that the mark should be registered in roughly two-thirds of the cases wherein we are authorized so to proceed. The cost associated with the preparation of such Briefs usually runs between $1,000.00 and $2,000.00, although it can be sometimes less or greater. If the Examining Trademark Attorney continues to refuse registration of the mark, then an Appeal can be filed with the Trademark Trial and Appeal Board. The chances of success here are probably reversed, that is, about one out of three on the average. Finally, an adverse decision of the Trademark Trial and Appeal Board can be appealed to the U.S. Court of Appeals for the Federal Circuit. This court does not hesitate to reverse the Trademark Trial and Appeal Board if it thinks the Board is wrong. If it affirms the Trademark Trial and Appeal Board, then a Petition for Writ of Certiorari can be filed with the United States Supreme Court. However, the chances that the Supreme Court will even hear the case are, on the average, less than 2%.
If an Intent-to-Use Application has been filed, when actual use in commerce has commenced, then a Statement of Use together with specimens showing the mark as actually used must be filed in the U.S. Patent and Trademark Office. If a conventional Application is filed, such specimens must be filed with the Application together with information as to the first date of use of the Application in commerce and, if earlier, anywhere.
When the Examining Trademark Attorney finds an Application is, at least prima facie, in form whereby the mark can be registered, then it is first published for possible Opposition in the Official Gazette of the U.S. Patent and Trademark Office. Anyone believing that he/she/it will be damaged if the mark is registered can, within thirty (30) days after the mark has been published, file an Opposition to registration of the mark. Alternatively, an extension of time may be requested within the thirty day period in which to file an Opposition to the mark. Oppositions occur probably in less than 5% of the marks published for possible Opposition, and our experience has been that most of these are eventually settled. However, an Opposition is an inter partes Proceeding wherein the rules applied are either under, or comparable to, the Rules of Procedure for United States District Courts. Oppositions can be expensive and often involve fees and expenses in the range of five figures, and sometimes extending into six figures. Oppositions are before the Trademark Trial and Appeal Board and adverse decisions can be appealed to the U.S. Court of Appeals for the Federal Circuit or de novo trials can be sought in a U.S. District Court. The possibility exists that adverse decisions could be appealed via a Petition for Writ of Certiorari all the way to the U.S. Supreme Court, although it is highly unlikely that this Court would grant Certiorari and hear such a case.
If an Opposition is not filed or if filed and subsequently dismissed, and if the Application is an Intent-to-Use Application, whereupon a Statement of Use has been filed, the mark will eventually be registered. There are two registers: the Principal Register and the Supplemental Register. Slogans and marks which may be descriptive while at the same time not being generic are usually placed on the Supplemental Register. Most marks, however, are placed on the Principal Register. For both Registers, a Declaration or Affidavit of Continuous Use must be filed between the fifth (5th) and sixth (6th) year following registration. In the meanwhile, the marks are subject to possible Cancellation Proceedings which are conducted very much like Opposition Proceedings in the Trademark Trial and Appeal Board. Such Cancellation Proceedings often arise where another party claims first use of the mark in commerce. But the chances that this will occur are not great.
For marks on the Principal Register, it is usual that the Affidavit or Declaration of Continuous Use will also cause the mark to become "incontestable," after which it can no longer be cancelled except for prescribed reasons such as when the mark becomes generic or has been abandoned. Incidentally, a mark which has not been used for a period of three (3) years is presumably abandoned, although this presumption can be overcome by evidence to the contrary.
When a mark is within six months of its tenth (10th) year anniversary, it can be renewed for a further ten (10) years. There is, with payment of a surcharge, a three (3) month period of grace after the tenth anniversary. Again, specimens showing the mark continues to be used in commerce must be submitted. Thereafter, with similar showings, the registration can be renewed at ten year intervals.
Registration of the mark permits the use of an "R" in a circle (®) or otherwise permits the owner to indicate that the mark is registered. If registration is on the Principal Register, the registration is constructive notice throughout the United States of registration of the mark. In the event of infringement, the Trademark Act of 1946, as amended, provides a variety of remedies and statutory damages which can be tried in the U.S. District Court for infringement of a registered mark.
If a mark has been registered and there are prior uses, after the mark becomes incontestable, those uses can be limited to their particular trade areas as existed when the mark was registered. Thus a registration, after a period of time, can severely limit use of the registered mark by even earlier users.
Obtaining a Copyright is relatively simple and normally can be accomplished without the assistance of an attorney by the owner of the Copyrighted works. Forms can be obtained by writing: Copyright Office, Information Section, LM-401, Library of Congress, Washington, D.C. 20559. One can also telephone: (202) 707-9100. In either case, the necessary instructions and forms for applying for a Copyright registration can be obtained. For any work, which is to be Copyrighted, it is advisable that: (1) The title page be marked with a "C" in a circle, (©), accompanied by the year of first publication and the name of the Copyright owner, for example, ©1998 John Doe; (2) The Application is filed within three months after publication or prior to infringement so the statutory damages and attorneys' fees will be available in court actions; and (3) if an Application is not filed within three months or before infringement, it should, in any event, be filed within five years of publication to establish prima facie evidence of the Copyright's validity and of the facts stated in the Certificate of Registration. Currently the fee to be paid to the Copyright Office is $20.00 which, of course, may be changed without notice herein.
The best way to avoid Copyright infringement is not to copy. This may include not only the words and/or music in Copyrighted works, but also the graphics such as might be found in catalogs. Certain amount of copying is sometimes permitted as long as it falls within the ambit of "fair use" or has the permission of the Copyright owner. But for such questions, it is best that an attorney familiar with Copyright law be consulted.
Intellectual property is not limited to Patents, Trademarks and Copyrights. It also extends to trade secrets, trade dress, publicity rights, technological data, Internet domains, know-how, and the sales, licensing and taxation of intellectual property, including franchising contracts. Further, the laws relating to intellectual property also extend internationally and are the subject of various conventions and treaties among groups of nations and bilaterally.
Patent firms which deal with foreign patent attorneys and agents, such as Mason, Mason & Albright, receive almost on a daily basis, and certainly frequently, notices of foreign court decisions and statutes which relate to the country wherein the patent attorney or agent who sent the information resides and sometimes relate to a group of countries. Therefore, we routinely refer questions from clients regarding particular situations of various countries to the patent attorneys or agents with whom we are associated in such countries. Nevertheless, there are some rules of thumb. Except in English speaking countries, foreign patents are frequently more costly to obtain than U.S. patents even though they may be essentially only translations of the U.S. Application with changes in format and style to conform to the customs and practices of the country involved. Foreign trademark registrations are usually more costly than U.S. registrations for corresponding marks.
Procedures exist to prevent the importation of goods which violate U.S. registered trademarks and copyrighted works through the U.S. Customs Service. It is also possible to prevent the importation of goods which infringe U.S. patents or were made by processes which infringe U.S. patents.
Q: I have never seen my invention on the market or advertised, why do I need a search?
A: There are over five million, now approaching six million, U.S. patents, many of which include several embodiments of the invention covered by the patent. For a variety of reasons, many inventions disclosed in such patents have either never been manufactured or never enjoyed widespread acceptance in the marketplace. Roughly 40% of the searches conducted on what were originally considered to be new reveal that either the inventions are, in fact, old or that only patents of very limited scope and value can be obtained. In addition, in those cases where the invention appears to be valuable and protection of reasonable scope is potentially available, knowledge of pertinent prior patents in the same general art are often valuable in the preparation of the Patent Application and in devising claims of invention to be submitted as part of the Application.
Q: What will a Patent Application cost?
A: If an invention appears patentable, we will advise you of the cost of placing a Patent Application on file in the report of the search. But as a general rule of thumb, Patent Applications for relatively simple inventions will usually run from about one-third to one-half of the cost of a new model Plymouth, Ford or Chevrolet at the time the Application is filed, and prosecution costs will, very generally, run about one-half to the same cost as placing an Application on file. In today's dollars, one should probably anticipate that the patent attorneys' fees and the fees paid to the U.S. Patent and Trademark Office incident to obtaining an allowance of a Patent Application on an uncomplicated invention will, at best, add up to between $4,000.00 and $6,000.00. A Provisional Patent Application will cost about $2,000.00 to place on file, but ultimately because it must be superseded by a more comprehensive conventional Patent Application within one year, the total cost will probably be somewhat greater.
Q: Do I need to apply for a patent before I reveal the invention to others?
A: It is best to have a Patent Application on file before disclosing the invention to others. However, in the United States, one year of grace is provided after an invention has been first placed on sale or used publically or published in a printed publication. Also, under certain circumstances, an invention can be made known to others by public use or even sale if that use is strictly experimental, whereby the time-bar may be tolled without forfeiting patent rights. Also a publication which is limited may not be considered a publication which starts the one year of grace to commence. But, if an inventor wants foreign patent coverage, he almost always must place the U.S. Application on file before publication, public use or placing the invention on sale. It is probably safest to do this in any event, but there is a one year grace period in the United States.
Q: What information do you need for the purpose of conducting a search?
A: We rarely conduct the searches ourselves, but pay a local professional searcher to do the job. He usually takes two or three weeks, and it sometimes takes longer. Once we receive the search report and we consider it is adequate, we send the inventor our search report and opinion of patentability within one week. But we ask inventors, if they do not hear from us within three weeks or a month, to feel free to call us.
Q: What information do you need for making a search?
A: Enough to understand the invention and a telephone number we can call if we have questions. This is often a description prepared by the inventor which is sometimes written by hand. Usually we also receive rough drawings. Sometimes where a prototype has been made we receive photographs, and on occasion we receive actual models.
Q: If the invention is patentable, how long will it take you to prepare a Patent Application?
A: We can usually do so within about six weeks after we have sufficient information to prepare the Application. We normally prepare Applications in order based on the dates that we receive authorizations to proceed. Exceptions are made where there are statutory bars such as a sale, public use or publication which may occur or has already occurred. Once we have fairly complete information for preparing a Patent Application on hand, the inventor should expect that we will take about six weeks, but unfortunately sometimes it runs longer.
Q: What information do you need to prepare an Application?
A: More detailed information is often required than was satisfactory for the purposes of the search report. In fact, the more detailed information we can receive, the better. We should also be advised of alternative embodiments which the inventor thinks may serve the same purpose. Normally we do not retain copies of patents which we sent with the search report. If these or copies thereof are not returned to us, we will need to obtain further copies. Also, we frequently will order copies of references cited in the most pertinent patents before actually starting preparation of the Patent Application. Rarely this will inform us of prior art which may have a bearing on whether or not the inventor may desire to proceed with a Patent Application. More often, it adds to our understanding of the prior art and background of the invention and thus assists in the preparation of the Patent Application.
Q: Can you help us find a licensee or buyer for the invention?
A: No. We can suggest how you can do this yourself. Most inventors are more knowledgeable as to potential manufacturers for their inventions than we are and do not need our help. There are organizations which may provide some help, such as the Small Business Administration and state agencies which have been established for this purpose. There are also private organizations which attempt to act as, although they do not usually call themselves, "patent brokers." From our experience, these range from sincere to out-and-out scams. But no matter what, we have never known of a "patent broker" who has been successful in finding a licensee for an invention. We have heard of some organizations which are very selective that have actually been successful in helping inventors find licensees or otherwise exploit their inventions. But they do not ask for "up front" money from inventors. In our experience, the inventors who have been most successful are those who find a way to place their invention on the market themselves. If a licensee is found, we can assist generally in providing advice as well as in preparing or reviewing and/or negotiating licenses or sales agreements. But we cannot help find a licensee in the first place other than to give very general information and, except in very special situations, we do not know anyone else who can.
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