Frequently Asked Questions

Patents

What is a patent?

In the U.S., a patent is a document issued by the U.S. Patent and Trademark Office that gives its owner the right to exclude others from taking certain actions regarding the patented invention. If your business relies on an invention, a granted patent can mean the ability to stop your competitors from making, using, offering for sale, or selling the invention within the U.S., or importing the invention into the U.S.

What types of patents are there?

There are three types of patents. Utility patents protect a new and useful process, machine, article of manufacture, composition of matter, or any improvement to any of these. They can be obtained to protect inventions ranging from tangible inventions to methods of doing things to computer software applications.

Design patents protect a new and original ornamental design for a manufactured article.

Plant patents, which are far more rare, are granted for certain types of asexually reproduced plants.

What does it take to obtain a patent?

There are two primary requirements for patent protection. An invention must be new and it must be non-obvious. The invention for which a patent application has been filed cannot have already been disclosed in what is known as "prior art." Prior art includes printed publications, public use, sale, availability to the public, or description in a U.S. patent or published patent application.

When the prior art is a disclosure by the inventor, the U.S. does afford a one-year grace period (though not all countries are as lienient). The disclosure will not be cited against a patent application so long as it is filed within one year of the inventor's disclosure.

What is a provisional patent application?

A provisional patent application is a type of application that secures an early filing date for an invention. A filing date is very important because public disclosure of an invention before the filing date (or more than one year before the filing date if the inventor is the source of the disclosure) can be a bar to obtaining a patent. See the FAQ entitled "What does it take to obtain a patent" for more information about disclosure.

Provisional patent applications are equally as important for avoiding conflicts in situations where two inventors independently arrive at the same invention. The U.S. now follows a "first inventor to file" system that essentially awards the rights to the first inventor who files an application.

In addition to a filing date, a provisional patent application permits the applicant to mark the invention as "Patent Pending," which can be very beneficial for marketing the product to customers and investors.

How long does a provisional application last?

A provisional patent application expires one year after it is filed.

I have a provisional patent application, am I protected?

The short answer is: no. A provisional patent application is not the same as a granted patent. A provisional patent application is not examined by the U.S. Patent and Trademark Office, and therefore cannot become a granted patent.

Instead, before the provisional patent application expires, a "non-provisional" patent application must be filed. The non-provisional application claims the benefit of the filing date of the provisional application. Only a "non-provisional" patent application can mature into a granted patent, and only a granted patent can be enforced in court.

What is the first step toward obtaining a patent and when should I start?

Invention begins with an idea. As soon as that idea has been reduced to a workable form, you should contact a patent attorney. It is not necessary to build a prototype (though prototypes can be very helpful). Instead, the invention should be at least to the point where its components or operation can be described in words or pictures.

The first step is to conduct patentability research. Many inventors feel that an online search is sufficient. However, an examiner at the U.S. Patent and Trademark Office ("PTO") primarily searches the PTO database. Therefore, proper patentability research requires searching through the PTO database.

How long does the patent process take?

Unfortunately, the U.S. Patent and Trademark Office has been experiencing a backlog in recent years. On average, the process takes 2-3 years. In some circumstances, it may be possible to reduce this time depending on the status of the inventor, the technology involved, or through various U.S. Patent and Trademark Office incentive programs.

Whom can I tell about my invention, and what if I need someone else to make or sell it?

Until steps have been taken to protect an invention, it should be kept secret and only discussed with a patent attorney, who is bound by professional regulations that require keeping your invention confidential.

Many inventors turn to third parties for the manufacture and sale of their inventions. In such cases, it is usually advisable that a minimum of a provisional patent application or a non-disclosure agreement (ideally both) be filed before approaching third parties.

How do I protect my invention outside the U.S.?

Patents are granted on a country-by-country basis. Pursuing foreign protection begins within 12 months of filing a U.S. patent application.

There are a number of ways to pursue foreign protection, from filing multiple applications in each country to filing a single application under the Patent Cooperation Treaty. Consult with one of our attorneys to develop an approach that works best for you.

Can I just mail a description of my invention to myself to protect it?

There is no provision in the law that recognizes mailing a description of an invention to yourself as being a form of protection. Most likely, in the past those who did so would have been able to demonstrate the mailing date as the date their invention came to be. Under the previous U.S. patent laws, when multiple people independently arrived at the same invention, whoever could prove the earliest date of invention was given priority.

However, determining priority of independent inventors no longer works that way. In 2013 the U.S. switched to a "first-to-file" system. As a result, priority now goes to the first inventor who files an application, regardless of when the invention was actually made.

Trademarks

What is a trademark?

A trademark is a symbol, word or words used to identify the source of origin of a good or service. A trademark (or service mark when used for services), in general, is a great way to communicate with customers and builds "consumer goodwill." A trademark can make a company memorable and enhance marketability. Many marks are eligible for registration with the U.S. Patent and Trademark office, which can confer significant benefits to the owner.

Why should I register my trademark?

A trademark makes a business memorable and marketable, and as such, adds value to the business. Thus, in order to prevent a mark from being commandeered by trademark pirates (or just your competitors), registering the mark is vital for its protection. Registration with the U.S. Patent and Trademark Office serves not only as evidence of ownership of a valid, distinct mark, but also constructive notice nationwide of your ownership.

It is easy to see how a trademark can benefit a business, but it is a little more difficult to see why, in dollars and cents, protecting the trademark is a good idea. One short answer is: competitors are aware of all the above reasons a trademark is valuable, and they may see it as being easier to copy than to create something new.

Trademark protection helps prevent that from happening. A federal registration conveys significant rights, some of which are immediately apparent:

  • You can use the ® symbol to put everyone on notice that you have made a claim to the trademark. This makes it easier to recover money damages from infringers, who cannot claim they did not know about your mark.
  • You can more easily prevent your competitors from using your mark or anything confusingly similar. For example, your trademark will show up on a national database, encouraging competitors to pick a different mark and avoid an expensive lawsuit.

Other benefits are an investment in the future—you may not need them today, but when a problem arises you do you will be glad they are there. These rights may make a competitor think twice before choosing a mark that is too close to yours, or may make it easier to stop an unscrupulous competitor and to recover damages they have caused you:

  • Automatic rights to sue in federal court to enforce the mark.
  • Your mark is presumed to be valid, making your case easier to prove.
  • You can recover attorneys’ fees and enhanced damages from the infringer in some cases.
  • Your trademark becomes “incontestable” after five years and is immune to some of the most difficult and expensive to defend challenges to its validity.
  • A registration is a useful weapon to combat cybersquatters.
  • You can enlist the U.S. Customs Service to stop importation of infringing goods at the border.
  • You can use your U.S. trademark as a basis for expanding protection in other countries.
How do I register my trademark?

Protection of a mark begins with an analysis that determines whether the mark is likely to be registrable. The U.S. Patent and Trademark Office examines an applied-for mark to determine whether it conflicts with a prior registration because of a likelihood that customers would be confused between the applied-for mark and the prior registration.

Marks must also meet a threshold requirement called "distinctiveness." Generally, marks that are generic (like selling apples under the name "Apples") or merely descriptive ("Juicy Apples") will fail this requirement. It is possible for descriptive marks to become distinct after a significant period of use, but generic marks can never be registered.

Strong, distinct marks stand far better chances of registration. In order of increasing strength, these include marks that are suggestive of a good or service ("Microsoft," which suggests software for microcomputers); arbitrary marks that are existing words wholly unrelated to the good or service ("Apple" for computers); and fanciful marks that are made up ("EXXON," "KODAK")

Marks must therefore meet these two requirements: they must be distinct and they must be different enough from what is registered so as to not be likely to cause confusion.

What are some examples of things that can serve as marks?

Marks come in many varieties. Though most are either text (such as a name or slogan), or are in the form a logo or other image. However, marks can also include sounds (think AOL's iconic "You've got mail") or, in some circumstances, even colors.

In addition, containers, product packaging, and similar items may be protected as "trade dress."

How do I register my trademark?

The process generally begins with a search of the relevant database to find marks that may be obstacles to registration.

If the results are favorable, the next step is submitting an application to a state authority or the U.S. Patent and Trademark Office if pursuing federal registration.

What if someone is using my mark?

Trademark rights are very complex and unintuitive. If you believe someone is using a mark that infringes yours, you should consult with one of our attorneys immediately.

Copyright

What is a copyright?

Copyright is defined as the exclusive legal right, given to an author or an assignee to print, publish, perform, film, or record creative works and to authorize others to do the same. This right is grounded in our United States Constitution and granted by law. Essentially, copyright law gives you ownership and control over things that you've created.

What types of works are eligible for copyright protection?

A copyright protects original works of authorship that are fixed in a tangible form of expression (such as: written, recorded, drawn, painted, or filmed). Copyrightable works include literary works, musical works, dramatic works, pictorial, graphic and sculptural works, motion pictures, sound recordings, computer software. and architectural works.

Copyright does not protect an idea, such as the idea of photographing a particular landscape. But it can protect the [i]expression[/i] of that idea, such as the actual photograph itself and the various creative decisions that it embodies (e.g. colors, angle, lighting).

What does copyright do?

A copyright protects an original work by granting its author or assignee certain exclusive rights. These rights include reproducing the copyrighted work, preparing "derivative" works based on the copyrighted work, sale of the work, and in some cases display or public performance of the work.

Is registration necessary to protect my work?

Copyright protection begins the moment a work is "fixed" in a tangible medium, such as when it is written down or recorded. However, the extent of these automatic rights is very limited.

Registration of the copyright with the U.S. Copyright Office is required to fully enjoy the benefits copyright has to offer. For example, a registration is needed before the copyright can be enforced in court and through U.S. Customs to block infringing imports. Also, registration creates a public record of the creation of the work, which makes enforcement less difficult. In addition, timely registration also makes available statutory damages and recovery of attorneys' fees if you have to enforce your copyright.

When should I register?

When it comes to copyright registration, late is better than never. Registration can be sought anytime during the life of a copyright, which is usually many decades.

However, the U.S. greatly incentivizes timely registration. If a copyright is registered either within three months of publication or before it is infringed, the owner can seek additional remedies in an enforcement lawsuit. Specifically, the owner can seek damages defined by statute, particularly when actual damages are difficult to prove. In some cases, statutory damages can also exceed actual damages. Additionally, the copyright owner can seek recovery of attorneys' fees incurred for bringing suit.

Also, copyrights registered within five years of publication are presumed to be valid, which can make enforcement easier.

What is copyright infringement?

A copyright is infringed when any of the exclusive rights of the author or owner are invaded. These can include unauthorized reproduction, public performance, and preparation of derivative works.

What do I do if someone is copying my work?

The first step is to consult an attorney. We at Garrity Traina advise our clients on their rights and the best ways to enforce them, while never losing site of the demands of business realities. To meet with one of our attorneys to discuss your case, contact us today.

Can I mail a copy of my work to myself to protect it?

Nothing in U.S. copyright law recognizes mailing a work to oneself as a form of protection, nor is it a substitute for proper registration. In the U.S., a copyright is granted to the author the moment a work is created. However, registration of the copyright grants many important rights, such as the ability to sue to enforce the copyright and the ability to get certain types of damages.

I found something on the internet, does that mean it is free to use/public domain?

The short answer is: it depends. Generally, copyrighted works only enter the public domain if their copyright expires, which can be many decades after they are created. As a result, most things found online are subject to copyright and are not in the public domain.

However, some copyright holders do post things online with the generous intent that they be used by the public. Often that is done pursuant to a "license" that lays out the terms of the use the author has allowed. For example, the author may require attribution, or may not allow the work to be used for commercial purposes. Use of the work outside the license may constitute copyright infringement. It is important that the license be reviewed carefully, preferably by a copyright attorney, before using works found online.

Franchise

When is it a good idea to franchise a business?

A business that is ideal for franchising has a proven concept capable of being successfully replicated elsewhere by people without the same experience. Franchisees must be able to take the proven concept and formula for operation, which can include specific products, techniques, methods, training, design and appearance, and use it to open their own business of the same kind.

The business should also have a trademark that the public associates with it. Sometimes there will be multiple trademarks associated with the business, such as an image, a name, and a phrase. These trademarks are licensed by the franchisor for use by the franchisees in the operation of their franchised business.

What legal steps are necessary to start franchising my business?

Once you have determined that your business is a good a candidate for franchising, there are several legal steps that must be taken to comply with state and federal laws, and to otherwise protect your business concept.

The first step to successfully franchising your business is to get the necessary legal documents in place. The most important of these is a Franchise Disclosure Document, or “FDD,” which is a detailed disclosure required by federal law to ensure that your prospective franchisees have a complete understanding of what to expect with their investment.

Also necessary is the Franchise Agreement, which is the contract between the franchisor and franchisee. There are various other ancillary agreements that are recommended as well, as is trademark and copyright protection for business materials, logos, images and slogans. A federally registered trademark is required by certain states in order to offer franchises in the state. Additionally, some states have additional requirements for the content of an FDD and/or additional steps for approval of franchise sales if you intend to offer franchises in the state.

It is important to work with an attorney experienced in franchise, trademark and copyright law to get this initial franchise documentation in place and fully compliant in the states you intend to sell franchises. A solid foundation to your franchise system is necessary to reduce your exposure to liability as that system grows.

Do I have to have a trademark or copyright to start franchising my business?

Protecting your business's intellectual property, including its brand and proprietary materials, is very important when considering franchising. In fact, a large part of what it means to franchise comes from licensing your brand for others use as part of growing public awareness. Protecting your business's name, slogan, logo, and other branding is an important step. Not only that, many states require that a franchise have registered trademarks.

Similarly, nearly every franchise benefits from copyright protection. It goes without saying that franchises that rely on creative content need to consider copyright protection. However, copyright protection can also apply to training, informational and other proprietary materials that virtually every franchise relies upon.

What happens if a franchisee or former franchisee is or continuing to use my franchise trademark?

The value of a trademark hinges on its ability to distinguish the true source of a good or service from the rest of the competition. With the proper agreements in place, a franchisor's mark benefits by authorized, monitored use by franchisees. However, when a mark is misused or is used by unauthorized sources, be it a competitor or former franchisee, to sell similar goods or services, the result can be disastrous for the mark.

As a result, trademark owners have a responsibility to protect the brand from unauthorized use. Often, this means ensuring that franchisees adhere to brand standards, such as consistent presentation of trademarks and maintenance of a uniform quality of goods. And, unauthorized use by former franchisees can damage the brand in the same way that unauthorized use by a competitor would. Proper enforcement of a mark can be the best way to safeguard it.

DISCLAIMER: The content on this website, including the foregoing FAQ, is presented solely for informational purposes and does not constitute the rendering of legal advice or the formation of an attorney-client relationship. Using the internet for communication with this firm or its attorneys does not by itself create an attorney-client relationship. Please do not transmit confidential, privileged, or sensitive information before speaking with one of our attorneys, as such information is not privileged.