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Intellectual Property Rights

U.S. Constitution - Article I, Section 8, Clause 8: “The Congress shall have power . . . to promote the progress of science and useful arts, by securing for a limited time to authors and inventors the exclusive right to their respective writings and discoveries.”

What is a patent?

A patent is a grant given by the U.S. Patent and Trademark Office to an inventor, of the right to exclude others for a period of up to 20 years from making, using, offering to sell, selling or importing his or her invention. The patent cannot be renewed, and the right granted is an inducement for inventors to disclose their inventions to the public and thereby advance the art.

The United States issues three kinds of patents:

Most common are “utility” patents for new processes, machines, articles of manufacture or compositions of matter, or improvements to such processes or articles.

“Design” patents protect the aesthetic or ornamental external appearance of articles of manufacture. Design patents are issued for a term of 14 years.

“Plant” patents may be granted to anyone who invents or discovers and asexually reproduces any new variety of plant, including trees, shrubs and flowers. Exceptions to this general rule are tuber-propagated plants and plants that are found in an uncultivated state; these plants cannot be patented.

The subject matter of a patent must be new, useful and not obvious to a person of ordinary skill in the art.

How do I obtain a patent?

An inventor applies for a patent by filing an application in the U.S. Patent and Trademark Office. The patent application contains three major parts: a detailed description of the invention, known as the specification; one or more claims that define the invention; and drawings of the invention when the subject matter can be drawn. Ordinarily, a novelty search is recommended to determine whether the invention may be patented before a complete patent application is prepared. It is preferable to file an application for a patent before the invention is first offered for sale or into public use or is first described in a printed publication. However, the application must be filed within one year of any of these events. To obtain patent protection outside the United States, one must file corresponding foreign applications in accordance with the laws and regulations of the country in which protection is desired. Foreign countries will not grant a patent if the invention was publicly disclosed prior to filing the application.

What protection does a patent give?

A patent gives owners the right to exclude others from exploiting the patented invention for the life of the patent in the United States and its territorial possessions. Owners cannot prevent others from utilizing the invention or claim damages before the patent is issued by the U.S. Patent and Trademark Office. The notation “patent pending” or “patent applied for” on articles does not enable the inventor to stop others from copying the invention, but serves as notice to the world that the inventor has applied for a patent. It is unlawful to use the words “patent pending,” “patent applied for” or “patented” falsely, and the patent laws provide for a fine for false marking.

What steps should I take to protect my invention before applying for a patent?

The inventor should promptly make a carefully written and dated description of the invention and what it will do. A properly dated drawing or sketch showing the invention is usually necessary. If the invention has been made and tested, this should be documented by disclosure on a confidential basis to one or more trusted witnesses who are not co-inventors. It would be desirable for these witnesses to sign and date a written description of the invention documenting that they can verify that the invention has been made and sufficiently tested to prove it will work. Regardless of whether you have made and tested your invention, the written description may be discussed with a patent attorney to obtain advice concerning your further course of action.

What are the advantages of the patent system?

Patents provide stimulus for inventors and an incentive for the commercial development of inventions, but this tells only a part of the patent story. Every patented invention serves as a potential stepping stone for further advancements in science and in the arts by others. The same is not necessarily true in the case of an invention that is not patented. With an unpatented invention, the natural tendency of the inventor is to try to keep the knowledge secret. But when a patent is issued, the new knowledge developed by the inventor is published in a public document. This sparks new inventions and promotes the growth of technology.

What is a trademark?

A trademark is thought of as the “brand name” that identifies goods of a particular manufacturer or provider. Therefore, “Coca Cola” and “Coke” identify a soft drink made by a particular manufacturer. While a trademark is usually a word or words, it may also be a name, emblem, symbol, slogan, or other device that identifies the goods or services from a particular source. The value of a trademark to its owner lies in the good will associated with the mark, such as consumer recognition and loyalty. For example, a shopper will ask for a “Coke” with the expectation of receiving the same quality of product that was previously purchased under that mark.

Trademarks are used to identify the origin of goods. When a mark is used in conjunction with services, it is referred to as a “service mark.” Unless otherwise indicated, the information about trademarks in this pamphlet is also applicable to service marks.

A certificate of registration for a trademark or a service mark may be obtained from the U.S. Patent and Trademark Office. The certificate of registration is issued for a term of 10 years and is renewable for like periods as long as the mark is being properly used.

How can I obtain a trademark registration?

A U.S. Certificate of Registration can be obtained only after the goods bearing the mark or services associated with the mark have been sold or provided in interstate commerce. However, an “intent to use” application for registration may be filed in the U.S. Patent and Trademark Office even before the mark is in use, but registration will not be granted until the mark is shown to be in actual use. The owner of a registered mark is entitled to place the notice, “Reg. U.S. Pat. & TM Off.” or “®” adjacent to the mark to indicate such registration.

Because of their nature, some words or phrases, such as merely descriptive terms, obscene and deceptively misdescriptive words, cannot be registered. Thus, businesses should not select marks descriptive of the goods, such as “Tasty” hamburgers. An arbitrary name such as “Wendy’s” hamburgers is more likely to be a legally strong mark.

Trademarks may lose their trademark significance if allowed to be used by the public as the common name of an article. Examples of trademarks that have lost in this way are “aspirin,” “cellophane,” “milk of magnesia” and “escalator.”

In addition to the federal registration of marks discussed above, there are provisions in most states, including Ohio, for state registration of marks. State registrations do not provide the same rights and benefits as federal registrations.

Since the choice and protection of trademarks and service marks involves meeting legal requirements, an attorney familiar with trademark law should be consulted before a mark is adopted.

What is a copyright?

A copyright protects an original work of authorship. A copyright gives its owner the right to exclude others from reproducing, performing or displaying the copyrighted work. This right exists from the moment the work is created and is fixed on some type of tangible media, such as paper, film, tape, computer disk, etc. No further action is required to obtain a copyright.

Many different types of works of authorship may be protected by copyright. Some examples are literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures; computer programs; and sound recordings.

How is a copyright registered?

If a work is published by distributing copies of the work to the public, it is advisable to have a copyright notice on every copy of the work. For most works, an example of copyright notice is “©John J. Doe 1994”; or in the case of sound recording, “ P 1994 Doe Records, Inc.”

If a work is expected to be distributed to the general public, an application for a certificate of copyright registration should be filed within three months of the first publication. The application for registration is submitted to the Register of Copyrights, Library of Congress, in a form required by the copyright office. The registration application must be accompanied by a specified number of copies of the work or other material identifying the work and a fee.

The term of a copyright for works created after Jan. 1, 1978, (effective date of the current Copyright Act), is the life of the author plus 70 years. For “works made for hire,” and for certain anonymous and pseudonymous works, the duration of copyright is 95 years from publication or 120 years from creation, whichever is shorter.

Works originally copyrighted before 1977 are subject to different term and renewal provisions.

Can “inventor assistance” or “invention development” organizations help?

Attorneys who work with patents, trademarks and copyrights help people protect their rights in intellectual property. They are licensed to practice law by the Supreme Court of Ohio. Patent attorneys are also licensed by the U.S. Patent and Trademark Office. They are generally not in the business of marketing or developing inventions. There are many companies that offer to evaluate, develop or market inventions for a fee. Some of these prey on the gullibility and optimism of inexperienced inventors. You are encouraged to carefully investigate such organizations before doing business with them, particularly those that require you to pay a substantial fee.

Reprinted courtesy of the Ohio State Bar Association

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