Intellectual Property
A mark used by someone other than the owner to certify the quality, point of origin, or other characteristics of goods or services.
Certification Mark
Usefulness
Lastly, a utility patent (but not a design or plant patent) must be "useful". This means that there must be some benefit or operational purpose to the invention. The petitioner must demonstrate that the creation serves an intended purpose. Even if the item is not currently in use and serving a purpose, it must address some theoretical need that could arise in the future.
A mark associated with a service.
Service Mark
What are patents or patent rights?
form of intellectual property protection that covers products, processes, designs, and other creations (collectively "invention"). conveys a right to exclude others from making, using, selling, or importing the covered invention. Are basically rights to exclude others. They protect against copies or unauthorized reproductions of the patented item.
Novelty
To qualify for patent protection, a creation must be novel. Novelty, in this context, goes beyond the requirement for newness. The subject matter cannot have previously been used, sold, or the subject of patent by another inventor within a year of the patent filing. In summary, this means that the patented item does not currently exist in the claimed form. There are two standards for novelty: 1) the time that the item is disclosed to the public and 2) the time of filing.
Trade secrets are:
Intra-firm information that has economic value, is not commonly known, and is subject to internal measures to protect the information from disclosure.
••What is the purpose behind granting ownership rights in intellectual property?
Like other forms of tangible property, the rights associated with intellectual property incentivize individual productivity. The exclusive right to use or control property also incentivizes creativity. This belief is captured in Article 1, Section 8 of the US Constitution, which grants Congress the power "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."
is broader than a single mark. It protects the overall appearance of a business, product, or service. It may include colors or shapes, architectural design, distinctive store decorating motifs or package shapes and colors. It encompasses the "total image and overall appearance" of a business.
Trade Dress
The types of legally recognized intellectual property right include:
Trade Secrets; Copyrights; Trademarks; Patents
what is the Preamble?
contains the Name of Applicant, Title of the Invention/Design, and Description of the Creation. A utility patent may require background information about the invention or creation process. This section contains what is commonly referred to as the specification(s), which describes how the underlying invention or design will be used.
Trade secrets is in any form of knowledge or information that:
has economic value from not being generally known to, or readily ascertainable by proper means by, others; and has been the subject of reasonable efforts by the owner to maintain secrecy.
Manufacture
An article of manufacture is a finished creation that has utility but may not be mechanical or have moving parts.
A mark representing membership in a certain organization or association.
Collective Mark
What is the Figure Descriptions?
These are descriptions of referenced sections of drawings of the claimed invention or designs.
Any mark, word, picture, or design that attaches to goods to indicate their source.
Trademark
What is Federal Registration of a Trademark (Lanham Act)?
a trademark is the process for filing for federal protection of a mark representing a business or commercial activity. The federal statutes governing the registration of trademarks are found in 15 USC, sections 1051-1127. This group of laws is known as the "Lanham Act". The registration process is managed by the US Patent and Trademark Office, a federal administrative agency.
Example of Composition of Matter
A composition of matter may include special forms of rubber, plastic, glue or cement, and pharmaceutical drugs. It may also include genetically altered (or isolated) aspects of plants or organisms.
Trademarks are
A distinctive word, symbol, logo, or other mark that is used in commerce to represent a business, its products, or services.
Example of Generic marks
A generic mark may include aspirin, laundromat, car, band-aid, kleenex. All of these were once brands that later became synonymous with the product or service.
Example of Machine
A machine is a functional device (mechanical or electronic), such as a jackhammer or robotic device.
Drawings and Images?
A patent application should include detailed drawings of the claimed invention or design. This is very important for the patent examiner to determine whether the claimed invention or design is patentable, as this is what makes it patentable subject matter. The applicant should include as many views (perspective, section, cut away, detail, etc.) of the item as is needed to thoroughly describe each portion of a claim, number each portion of the invention, provide its source (prior patent reference), and provide a brief description of it.
Example of Process
A patentable processes could include computer software, a method of engineering a product, a method of valuing stocks, etc.
Example of trade secret
A trade secret could be a recipe, customer list, or strategy for carrying out a process. If Cheap-Cola reverse-engineers the Coca-Cola formula, it is free to use the trade secret in commerce without violating Coca- Cola's rights. If, however, Cheap-Cola pays a Coca-Cola employee for the secret recipe, it would violate Coca- Cola's rights to sell a product employing that recipe.
Copyrights are
An original, creative work of authorship that is affixed to a tangible medium (printed, recorded, etc.)
Composition of Matter
Any mixture of ingredients or materials to form a new chemical compound or matter.
Example of Patent rights:
BigPharm Corp buys the patent rights to a new drug. It spends over $1 Billion on research and development. Once the clinical trials are complete and the drug is FDA approved, BigPharm releases the drug to the public. Other drug companies are prevented from reproducing the drug and selling it for a 20-year period. In many industries (such as pharmaceuticals) it is imperative to allow creators the ability to recuperate their costs before allowing competitors to capitalize by copying their creation.
Trademark law has two objectives:
Business Protection - It allows the owner of the trademark to prevent others from infringing upon that business's identity, and Consumer Confusion - It protects consumers from confusion regarding the business or commercial activity represented by the mark.
Example of Descriptive Marks
Chick-Fil-A, Home Depot, American Apparel, First Bank, Pizza Hut are all examples of descriptive marks. All of these companies have names that describe their business; but, the business names are now commonly understood by customers to represent the particular business rather than a general commercial activity. It is far less common that a image or logo will be descriptive unless the symbol incorporates a descriptive word, phrase, or slogan.
Example of Suggestive Marks
Citibank, Inc., Playboy, Inc., Microsoft, Coppertone, are all words used as suggestive marks to represent a brand or commercial activity. While less common, the symbols used by a company may also suggest the commercial activity, such as the Zappos shoe symbol or Yankee's baseball logo.
This covers the pattern, design, or overall appearance (including ornamentation) of a product. It generally includes new, original, and ornamental or aesthetic design for an article of manufacture. It concerns appearance and is not related to function. The term of protection is 14 years from date of issue.
Design Patents
What are the specific requirements for a creation to receive design patent protection?
Design patents apply to "the visual ornamental characteristics embodied in, or applied to, an article of manufacture." So, the subject matter of a design patent application must be the ornamental characteristics applied to a physical item. More specifically, the design patent protects non-functional, purely form (shape or configuration) and aesthetic aspects of a patentable subject matter. The item must still meet the subject-matter requirements for a patent, as the design must be inseparable from the item to which it is attached.
The next step is to determine whether the trademark has achieved secondary meaning that is separate from its descriptive nature. Secondary meaning requires that the mark draw reference to the business, rather than the product or service itself. Specifically, secondary meaning is present when, "in the minds of the public, the primary significance of the symbol is to identify the source of the product rather than identifying the product itself." A court may use various forms of evidence to determine whether secondary meaning exists:
Direct Evidence - Direct input from customers, such as through testimony or surveys. Indirect Evidence - Indirect evidence may include: ⁃ Exclusivity - Whether the business exclusively uses the mark, or how it is used in the market and for how long; ⁃ Advertisement - To what extent does or has the business advertised the mark as a representation of the business; ⁃ Market Presence - What presence does the mark have in the market (market percentage or market awareness of the brand as a result of the mark); and ⁃ Competitor Use - Proof that other businesses intentionally copy the mark to achieve market awareness of their business.
The grounds for the action must demonstrate one of the following types of infringement:
Direct Infringement - This means the direct production and sale of a product protected by patent. Indirect Infringement - This means inducing or encouraging an infringer. Contributory Infringement - This means assisting in the infringement process - such as producing parts or elements of an invention that are known will be assembled into a patent-infringing product. Literal Infringement - This means that the infringing product or process directly infringes some of the stated terms in the patent filing. Doctrine of Equivalents - A creation that does not literally infringe upon an invention as written in the patent may still be an infringement if it functions the same manner to achieve the same function. This doctrine is commonly employed in mechanical devices and computer software.
Patents are
Discoveries, designs, or inventions constituting patentable subject matter that is novel, non-obvious, and useful.
Competitor Need or use
Do competitors need to actively use the claimed mark for their customers to recognize or understand what their product or service does. If so, this is evidence of descriptiveness of the term, and the strong presence of secondary meaning for the specific business can make it an enforceable mark. This can also indicate that the mark is generic in nature and not capable of protection.
What is the process for enforcing one's patent rights?
If anyone infringes upon a patent holder's valid patent, the holder may bring a federal lawsuit to prevent further use and to seek recovery of damages suffered as a result of the infringement. The patent holder must file a legal action in the federal district court with jurisdiction over the defendant. At the time of filing, the patent holder will state the grounds for the action and request a preliminary injunction against infringement during the pendency of the hearing.
While novel inventions or discoveries may be susceptible of patent protection, there are several categories that are not capable of being patented:
Naturally Occurring Substances - Examples would include naturally occurring minerals or elements. Laws of Nature - Examples include gravity, inertia, or atrophy. Physical Phenomena - Examples may include the northern lights, earthquakes, tornadoes, hurricanes, and plant or animal growth. Abstract ideas - Examples may include scientific hypotheses, such as the big bang theory or human evolution. Fundamental Truths - Examples may include religious or political beliefs innate to a system of belief or governance, such as the ideas that all individuals are created equal. Calculation Methods - Examples of methods of calculating things include Celsius, Fahrenheit, or Jules. Mathematical Formulas - Examples include mathematical formula that demonstrate or explain activity, such as E=MC2 .
What is the process and information necessary for securing patent rights?
Obtaining a patent requires submitting a patent application and filing fee to the USPTO. There are no common law or state patent protections. A patent attorney at the USPTO will review the application to make certain that the intended patent meets all requirements.
what is the Cross-References?
Often a patent builds upon existing art or patented designs. If this is the case, the application should include a citation to any Cross-Referenced Patents.
This covers the development of a new plant species through genetic engineering. This may include hybrid species of crops or a new variety of plant that can be reproduced asexually. The term of protection is 20 years from date of filing.
Plant Patents
The various elements required in a patent application include the following:
Preamble; Cross-References; Claims; Drawings and Images; Oath or Declaration; Figure Descriptions
The benefits of completing a provisional patent filing are as follows:
Public Disclosure - This disclosure starts the one-year period to file a non-provisional patent. Filing the provisional patent provides for an initial year of protection, as the non-provisional patent application will back date to the filing of the provisional patent; Continued Research & Development - The non-provisional patent provides protection while continuing to develop the product and research the market. The inventor can spend the time developing the claimed elements of the invention to incorporate into the non-provisional application; Pre-marketing - Filing the provisional application allows the inventor to market the product with a degree of protection while the non-provisional patent application is in the works; Public Notice - The filing provides notice to the world that the creation (to the extent disclosed) is or will be subject to intellectual property rights (i.e., "patent pending") and should not be copied for commercial purposes; Confidentiality - Leaving off the claimed attributes keeps elements of the patent confidential (as it is not yet fully disclosed to the public); and Multiple Filings - The filer can file multiple provisional patents and later incorporate them all into a single, non- provisional patent application.
what is Claims?
The claim is the claimed aspects of the creation or design that is the subject of the patent application. Utility patents will generally contain multiple claims targeting specific aspects of the invention. In a design patent application, because the entire design (including all individual components) is considered in the design application, only one claim is allowed
Time of Filing Application
The creation cannot have been previously disclosed to the US public more than one year prior to the filing of the patent application. This means that the item cannot be advertised or in use by the general public. It cannot have been the subject of a patent application in the US or any other country. Further, it cannot be used or described in any publication prior to the application for patent.
Non-Obviousness
The non-obviousness requirement means that someone having ordinary skill in the field would not have a ready knowledge or understanding of the invention. That is, it cannot be readily or commonly understood to the average person in that field or industry. The average person in the field or industry is known as a Person Having Ordinary Skill in The Art (PHOSITA). Basically, if a creation is a logical embodiment of existing knowledge (items of creation already exposed to the world) it will not be eligible for patent protection.
What does an individual have to do to capture intellectual property rights?
The requirements for securing intellectual property rights vary depending upon the type. For example, some types of intellectual property may require filing with a government agency. Failure to file or meet a filing deadline could forfeit one's rights to the "public domain". Once intellectual property is in the public domain, an individual's rights in the property are forfeited and cannot be recaptured. This is just one simple example of many separate requirements that may apply when attempting to secure rights in a particular item of intellectual property. The requirements for securing rights in intellectual property are discussed separately.
What are the general requirements for an invention or discovery to be capable of patent protection?
The subject of a claimed patent must be eligible for patent protection. Eligible subject matter varies slightly depending upon the type of patent. That is, a design patent must attach to some physical item, while a utility patent has a broader range of potential subject matter. Once determined to be patentable, a specific subject matter must be "novel" and "non- obvious". These two requirements apply to all types of patents. Utility patents have an additional requirement and must also be "useful".
Time of Disclosure:
The subject of the patent cannot be known, used, or printed in a publication in this country prior to its creation in the US. The creation may be known or used in a foreign country, but it cannot be in a printed publication in a foreign country before it is created in the US. This generally means that if the item was previously known or in use by the public prior to the date of disclosure by the patent filer, it cannot be patented by someone other than the original discloser.
Example of Trade Dress
Think about the shape and color of a Pizza Hut or Taco Bell. These brands are identifying by the overall distinctive appearance of its buildings.
Imagination Test
This examines whether the meaning of the mark is obvious, or whether it requires some level of imagination or thought to determine the represented good or service. If a high degree of cognition is required, the mark is likely suggestive rather than descriptive.
Process
This involves a method of carrying out an activity. It may also involve the effort exerted to effectuate a change in a physical material that alters its character. This includes methods of communicating information, processes or methods (unique sequences of steps) in addressing a business objective.
Machine
This is a device or combination of devices that has some function or utility
Dictionary Test
This test seeks to determine the ordinary significance and meaning of the word as demonstrated by a dictionary. This provides evidence of how the general public would encounter the mark.
What are trade secrets?
a form of intellectual property specific to individuals or businesses involved in a trade or industry. More specifically, it is any form of knowledge or information
What are the types of trademarks?
Trademark; Service Mark; Certification Mark; Collective Mark; Trade Dress;
Example of Manufacture
Tupperware is an article of manufacture that has utility but is not a machine. Other examples may include a double-walled thermos, spiral notebook, folded corrugated box.
This generally covers the creation of a new composition of matter, function, or process. This includes machines, procedures, and chemical compounds. These creations must be a novel (new), non-obvious, and useful. The term of protection is 20 years from the date of filing.
Utility Patents
What are the primary types of patents?
Utility Patents;Design Patents; Plant Patents
Trade secrets may include
a broad range of company information, such as project or strategic plans, operational methods, customer lists, designs, and research and development.
What is a Trademark?
a form of intellectual property right dedicated to any word, phrase, sign, symbol, logo, color, sound, design, shape, decor, or other distinctive element (collectively known as a "mark") that represents a business, brand, or commercial activity (sale of the product or services). The trademark allows a consumer to identify the business or commercial activity associated with the mark. That is, trademark rights come about from use of the mark in association with goods or services.
Benefits of Federal Registration
affords the trademark user additional protections beyond the statutory and common law protections afforded under state law. Some of the major advantages of federal registration of a trademark are as follows: • Protection in every jurisdiction across the United States; Creates a presumption that the registration is valid in the event of a dispute over trademark rights; Provides notice to third-parties that the mark is in use; Allows for a federal cause of action against an infringer (and there is a presumption of willful infringement); Aids in the process of international registration; and Allows for the mark to be registered with the US Border and Customs Administration to prevent the importation of counterfeit goods.
What is a provisional patent application?
is a utility patent filing that does not necessarily include any claims. Pursuant to patent law, the filer can file a complete provisional patent within one year of the first public use or offer for sale of the invention. This then allows the filer one year from the date of disclosure to file for a non-provisional, utility patent. Basically, it allows inventors to file and disclose the invention to the rest of the world.
What is intellectual property?
is an intangible (not touchable) form of property or right.
What is the process for determining whether a descriptive mark is sufficiently distinctive?
must acquire a secondary meaning in order to be sufficiently distinctive to be protected by trademark law. Arbitrary, fanciful, and suggestive terms do not require that the mark have a secondary meaning, as they are sufficiently distinctive by their nature. The first step in the analysis is to determine whether the mark is indeed descriptive of the product or service. The trademark office or a court will use several tests to determine whether a mark is descriptive (as apposed to arbitrary and fanciful, suggestive, or generic).
Businesses seek to secure trademark rights to
protect their company, brand, or image. They do not want other companies to benefit from their branding efforts by creating customer confusion as to the source of a given good or service.
What are the specific requirements for a creation to receive utility patent protection?
protects how something functions or the method in which it is employed. The subject matter of a utility patent is any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. It may also include improvements on any of these inventions or discoveries that meet the previously-discussed requirements for patentability.
What is required to secure trademark protection?
requires that a mark be "used in commerce" and "distinctive" from other marks. If a mark is used in commerce and sufficiently distinctive, there are two primary methods of securing trademark protection. The first method is "state-law protection". State-law protection may include both statutory protection and common-law protection of the trademark rights within a particular state's borders.
Federal Registration
requires that a trademark application meet the aforementioned requirements and be used in "interstate commerce". This generally means that the mark is used in a manner that is not solely limited to in-state activity
Oath or Declaration?
the application must contain a statement certifying that the petitioner is the claimed inventor or designer, as these are the only individuals who can secure patent protections.
What is the "distinctiveness" requirement for trademark rights?
trademark must be "distinctive". This means that the mark cannot be so similar to another mark that it causes consumers to confuse the brand or entity associated with that mark. If it is confusing to the consumer, the USPTO will reject the application for registration. So, the likelihood of confusion is partially based upon the mark and partially related to the nature of the product or service that it represents.
The following are degrees of trademark distinctiveness:
• Arbitrary and Fanciful terms - A "fanciful mark" has no other meaning. It is created to represent the commercial activity claiming trademark rights. An "arbitrary mark" is the association of an existing word or symbol with a commercial activity that has no relation or logical connection to that mark. If a proposed trademark falls under either of these categories and is not already used by another business, it is automatically recognized as inherently distinctive. • Suggestive Marks - A suggestive mark somehow suggests the underlying business or entity represented by the mark. It does not describe the entity, or its product or service, but something about the mark somehow relates to or helps the consumer understand the brand or entity that the mark represents. It generally requires a certain level of cognition, creativity, or imagination in how the product is perceived. • Descriptive Marks - A descriptive mark, as the name implies, describes in some way the product or service represented. This can include information about or allude to the nature, characteristics, geography, or qualities of the product or service. To qualify as a mark, the owner must demonstrate that the mark has achieved "secondary meaning" beyond the literal definition of the mark. Secondary meaning is when consumers associate the mark directly with the brand or business rather than simply a general description of the brand or company's primary commercial activity. This requirement ensures that there is no confusion between the literal meaning and the brand or commercial activity. • Generic Marks - A generic mark is not capable of trademark protection. Generally, the mark is not distinctive because it represents a type or class of commercial activity (product, service, etc.). A valid mark may become generic if the mark begins to describe every product or service of that type. That is, it no longer makes the specific product or service distinctive.
Example of Arbitrary and Fanciful terms
⁃ Example: Yahoo, Bing, Google, Starbucks, Verizon, and Exxon are all examples of fanciful terms. Many of the logos, sounds, or non-sensical expressions associated with companies would also be fanciful. Apple computers, Camel cigarettes, Colt pistols, Amazon web services, Subway restaurants would all constitute arbitrary words. Further, the images or logos used in connection with these brands would be arbitrary, such as Ronald McDonald or the GEICO lizard.
