Q: Do trademarks, service marks, copyrights and patents protect the same rights?

A: No.  Trademarks, copyrights and patents all differ from each other.  A trademark is a word, phrase, combination of words, phrases, symbols or designs that identifies and distinguishes the source of the product.  A service mark is similar to a trademark, except that it identifies and distinguishes the source of services rather than products.  A Copyright protects original artistic or literary work.  A patent protects an invention.

Q: What is a patent?

A: A patent is a temporary property right to an invention, issued by the United States Patent Office.  The right granted upon the patent holder, using the language of the law is "the right to prevent others from making, using, offering for sale or selling" the invention in the United States or "importing" the invention into the United States.  At the same time, it is not necessarily the right of the patent holders to make, use, offers for sale, sell or import their invention either. 

Q: What is patentable?  

A: The controlling United States  law on patentability states: "Anyone who invents or discovers any new and useful process, manufacture, composition of matter, or any new and useful improvement thereof may obtain a patent, subject to the conditions and requirements of this title"  Excluded from patent protection, based on judgments, laws of nature, physical phenomena and abstract ideas.

Q: Is it necessary to commercialize the invention before applying for a patent? 

A: No.  Under the law, you only need to describe the invention.  The United States Constitution authorizes Congress "to promote the progress of science and useful arts, by providing for a limited time exclusive right to the inventor of their respective discoveries."  The patent law adopted in accordance with this provision of the Constitution requires full disclosure of the invention in exchange for the right to exclude others for a limited time.  Commercialization can be a means to profit from your invention but it is not part of the deal to obtain exclusive rights.  The deal involves sharing the knowledge in your invention in exchange for a 20-year exclusive right.

Q: Is an idea enough for the filing of a patent application?

A: You do not need to create a device or prototype of your invention.  However, in order to obtain a patent, you must describe the invention in a way allowing other people to create and use the invention after the expiration of the patent.  In other words, you must explain how to create your invention and what it is doing.  The invention should be novel, yet not obvious, when it is compared with known technologies (prior art) and should be useful.  You can get a patent, even if you use off the shelf components, and even if you do not know how these components work.  However, if these components are patented, you must have a license to use these components.

Q: What is prior art?

A: This is a very broad concept that describes everything that is already known.  For example, it includes any invention, patented anywhere in the world or any information published anywhere in the world.  The prior art is important because the patent application is rejected or the patent is found invalid if already issued, if someone else has publicly described the invention, before the application was filed by you.

Q: What can disqualify my invention?

A: Law can be divided into 5 events that can deprive you of the right to a patent or make the existing patent invalid. 

1. You are not the first inventor as evidenced by the fact that:  

-the invention was known and used in the United States before you invented it; 

-the invention has been patented or described in a printed publication anywhere in the world before you invented it; 

-someone else has received a patent on the basis of an application filed before the date of your invention; 

2. The next takes place, usually as a result of your activities, more than one year prior to filing for a patent in the United States --- 

-You patented your invention in another country; 

-You described your invention in a printed publication anywhere in the world; 

-You use your invention publicly in this country: as a rule, this means using available to the public, the invention on the display to the public or commercial use; 

*Note: Use in another country does not take away the right to patent 

-You have sold or tried to sell your invention in this country, if this was not done with a confidentiality agreement. 

*Note: The sale or attempted sale in another country does not take away the right to a patent 

*Note about grace periods: USA (1 year), Australia (1 year), Canada (1 year), Russia (6 months) and Japan (6 months) are the only major countries that allow such a period before filing.  Portugal (1 year) and Spain (6 months) offered such a period in certain cases. 

Almost no other country has such a grace period, with the minor exception of involuntary disclosure before filing for a patent.  For example, if the applicant voluntarily publishes his invention before the patent application was filed in Europe, the inventors is disqualified from patent protection in Europe.  As an exception to this rule, a 6 months grace period will be provided in the case the invention is shown at an official international exhibition falling within the provisions of the Convention on international exhibitions. 

3. You have abandoned your invention. 

4. Someone else can show that he or she, rather than you, are the inventor.  This is a situation where you rendered false information, claiming that you are the inventor. 

5. A patent issued in another country at the request of an application filed more than one year before filing a patent. 

Q: I want to act, what should I do next?

A: To obtain intellectual property protection of any kind, please call us +1.310.497.6312 or write me an email.  You will receive a free initial consultation.  In some cases, I will not be able to represent you because of a potential conflict of interest, or for any other reason.  However, if we agree on representation, you will be required to sign an agreement, which formally established a relationship between attorney and client.  

Q: How much does a patent last?

A: Patents for inventions and plants are enforceable 20 years from the date of filing in the United States.  A patent on the design is valid for fourteen years from the date of issuance. 

The filing of a provisional patent application may extend patent protection for another year.  Patent protection will cease effect if the patent holder does not pay the maintenance fee at 3.5, 7.5 and 11.5 years from the date of grant.  Moreover, when the patent office delays the issuance of a patent because of an appeal process or for a few other reasons, the term of the patent can be extended.

Q: Can a patent issued in the U.S. be enforced in other countries?

A: Patents in the United States are effective only in the U.S. and U.S. territories Please see information on the PCT process, which provides additional information about international patent protection. 

Q: What can be patented?

A: Any new and useful process, machine, manufacture, combination of matter or improvements of thereof can be patented.  The Patent Office classifies this type of patent as a utility patent. 

In addition, there are patents for new, original and ornamental designs of article of manufacture.  The Patent Office classifies this type of patent as a design patent. A patent on the design protects only appearance of the article, rather than its functionality. 

A patent on a design is relatively inexpensive and effective method to protect against a product, which does not infringe the corresponding utility patent, but nevertheless, is apparently similar to the patented product.  A patent on a design can be obtained if the design is unique and not dictated by purely functional properties of the product. 

Finally, it is possible to obtain patents for new varieties of plants that can be reproduced asexually.  There are other types of intellectual property protection for plants. 

Q: What are the benefits of the provisional application?

A: A provisional application reserves potential rights of the patent holder if a utility application based on the provisional application is filed within one year of the provisional. 

Q: I do not know what type of patent I need to apply for.  Utility, design or invention?

A: In general terms, the "utility patent" protects how to use and operate the product, while the design patent protects the appearance of the product.  Both types of patents may be obtained for the same product.  While utility patents and design patents should provide different legal protection, in practice to separate the design from the functionality of the invention is not simple.  The product may have functional as well as decorative features.  Nevertheless, the design patent should not be granted if the design is dictated exclusively by the functionality of the product. 

Q: Does the Patent Office publish patent applications?

A: Applications for utility patents are published 18 months after filing.  Design patents are not published.  The United States law provides for a reasonable royalty to the infringed patent holder during the period commencing on the date of publication of application and ending with the issuance of a patent.  No royalties are awarded, if after the publication, the claims have undergone significant changes.

The application can be published earlier than eighteen months, at the request of the applicant.  The applicant may request not to publish the application, upon assuring the Patent Office that the application will not be filed in another country or within a multilateral international agreement that requires a publication after eighteen months after filing.

Q: Can a citizen of another country apply for a patent or trademark in the United States?

A: Yes.  Anyone can apply for a patent or trademark in the United States.  The patent application should be filed by the inventor.  If there is more than one inventor, all inventors should be involved.  Each inventor must provide his/her address and nationality. 

Be careful: Many countries consider filing for a patent in another country to be a criminal offense when done without first obtaining permission from the national patent office.

Q: Some organizations providing trademark services claim can consult with the USPTO prior to applying: Is this true?

A: Be very careful when you see such statements.  The USPTO can answer procedural questions, but under no circumstances will it advise on the registration rights.

Q:Trademarks in other countries?

A: In many countries, agencies responsible for trademarks register trademarks without comparing the trademarks against previously registered ones.  No action is thus taken until the competitors report ownership of the trademark.  Thus, obtaining trademark registration in these countries is no guarantee that the trademark will not infringe upon the rights of others.