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Part 1: Patent Law
What is a patent?
A patent is a right granted to an individual or group that has invented or discovered a new, useful, and non-obvious machine, process, article of manufacture, or composition of matter. Once a patent is granted, the owner has the right to exclude others from making, using, offering for sale, or selling the invention in the US. This includes importing it from another country into the US as well.
In exchange for this limited right of exclusion, the inventor must publicly disclose the details regarding the invention. This helps other innovators by providing a foundation from which to make progress.
For more information, please visit the United States Patent and Trademark Office (USPTO) website.
How do you obtain a patent?
If you have an idea for an invention, it must first be determined whether or not that invention has been disclosed to the public. This is regardless of whether or not it’s on the market. If a prior art search determines that your invention has not been disclosed to the public already, you then must decide what type of patent you need:
- Design patent: Granted based on how something looks.
- Plant patent: Granted for a new asexually reproducing plant.
- Utility patent: Covers the useful process, machine, article of manufacture, or composition of matter (most common type granted).
Next, you need to consider whether to apply for the patent globally or just in the US. You’ll also decide to file either a provisional or non-provisional patent application based on the subject matter involved. Another option to consider is whether to seek expedited examination of your application based on availability and cost.
The patent process is complex. Because only about 10% of patent applications ever qualify, it’s advisable to obtain a registered patent practitioner to represent you before the USPTO to maximize your chances. Following the application filing, a patent examiner will ensure that it’s complete and compare your invention to what is known as “prior art.” This determines whether the invention does in fact exist already, if it is obvious in light of prior art, or if it is anticipated by some prior art. This review can take up to several months.
If the examiner is satisfied that a patent should be granted for your invention, your application will be allowed. This will require an issue fee and publication fee. Regular maintenance fees are also necessary for continued protection of your patent rights. With respect to utility patents, these maintenance fees will be due at 3 1/2 years, 7 1/2 years, and 11 1/2 years from the initial grant date.
For more information, please visit the USPTO website.
Other helpful resources:
- Google Patents: A great place to search patents that have been granted in the United States.
- FindLaw: Offers a good overview of patent law and related links to other helpful information.
- Cornell University Law School: Details the requirements of patentability in the US and provides links to related resources.
What is a licensing agreement?
A licensing agreement is a contract between the IP rightsholder and a third party whereby the third party is given permission to use, make, or sell the product. This is generally given in return for monetary compensation such as a one-time licensing fee or recurring royalty payments.
There are two main types of licensing agreements:
- Non-exclusive licensing agreement: Allows for additional licensing agreements to be entered into with multiple third parties (most common agreement).
- Exclusive licensing agreement: Restricted to only one third party, and in some instances can limit even the holder of those rights to use, make, or sell the product.
In either case, ownership rights are maintained by the IP rightsholder.
Licensing agreement terms relate to deal length, whether additional products can be used in conjunction with the licensed product, applicable warranties, limitation of liability, confidentiality of disclosure, available remedies, and contract termination.
What is a grant?
A grant is funding for research applied for by scientists and approved by a granting agency. This involves the granting agency inquiring into the researcher’s background, facilities to be used, equipment required, time to be dedicated, and the potential of the scientific venture. Whether federal or private, each granting agency has specific criteria that must be met before any grant is awarded. For example, some agencies restrict grants to certain areas of research or limit who can submit proposals. Because several potential projects are evaluated by any given agency and only the most promising receive funding, obtaining a grant is highly competitive.
Helpful resources:
- Grants.gov: Provides a comprehensive list of available federal grants including details on proposal requirements, deadlines, etc.
What is a non-disclosure agreement?
Also known as a confidentiality agreement, a non-disclosure agreement (NDA) is a contract between parties that secures the exchange of confidential information. NDAs are commonly signed when two entities are considering doing business and need to understand the processes each uses for the purpose of evaluating the potential partnership.
With respect to IP, an individual with an idea may enter into an NDA with a manufacturer of similar products for development of a prototype. The NDA ensures that the manufacturer doesn’t disclose certain information to other parties by protecting important details for proper development and marketing of the idea.
Part 2: Trademark Law
What is a trademark?
A trademark normally takes the form of a word, phrase, or symbol that identifies and distinguishes a particular manufacturer’s products. If used to identify a specific service provider, it is then referred to as a service mark but otherwise generally treated the same. Examples of trademarks include Nike’s “swoosh,” the Pepsi brand name, and even the specific shade of brown identified with UPS.
For more information, please visit the USPTO website:
What requirements must be met in order for a word, phrase, or symbol to serve as a trademark?
There are two requirements that must be met before registering a trademark. First, because trademark protection is bestowed by the Commerce Clause of the United States Constitution, it is granted only to the first entity to use the mark in commerce. While this is required at the time of registration, an applicant can satisfy this requirement by providing a statement to the USPTO indicating a good-faith intent to use the mark at a future date.
The second requirement is that the mark be distinctive. Marks tend to fall into four separate categories and, depending on the category, the degree of distinctness attributed to it varies:
- Arbitrary and fanciful: Considered inherently distinctive because the mark has no logical relationship to the product or service that it represents (e.g., Nike’s “swoosh”).
- Suggestive: Inherently descriptive of the product or service by being related to its nature, quality, or particular characteristic (e.g., automobile brand Jaguar being similar in quickness to the animal).
- Descriptive: While suggestive marks require some imagination, descriptive marks clearly describe the product or service and have acquired a secondary meaning from the consumer’s perspective (e.g., Holiday Inn).
- Generic: Refers generally to a given product or service and is therefore not granted protection since it would give the owner too great a competitive advantage over others in the market (e.g., “Murphy Bed,” originally a particular manufacturer of beds, now refers to any bed that folds into the wall).
Helpful resources:
- USPTO: Resource for searching registered marks, finding forms, and locating other useful trademark information.
- Cornell University Law School: Includes specifics of trademark law such as requirements for registration and details of the registration process.
- FindLaw: Provides a good overview of trademark law and related links to other helpful information.
How do you protect your trademark?
The easiest way for an individual or other entity to protect a trademark is to be the first to use the mark in commerce. This bestows protection within a limited geographic area with respect to the product or service identified with that mark. The geographic area comprises the area in which the person having priority uses the mark as well as an area that covers any reasonable future expansion of that user’s business.
Another means of obtaining trademark protection is to register the mark with the USPTO and/or the appropriate state agency (e.g., Secretary of State). Although registration isn’t required for a trademark to be protected, it does confer many benefits:
- Party has the right to use the mark nationwide or statewide, except where a user in a specific and limited area already has priority
- Constitutes nationwide or statewide constructive notice to others that the trademark is owned by the party and, if registered federally, enables the owner to bring an infringement suit in federal court
- Party is allowed to potentially recover treble damages, attorneys fees, and other remedies
- Confers “incontestable” status after five years, at which point the exclusive right to use the mark is established conclusively
Helpful resources:
- North Carolina Secretary of State: Resource for searching marks, finding forms, and locating other useful information regarding trademarks in North Carolina.