March 2007

Continued Patent Applications

In general a complete or non-provisional patent application covering a single invention is filed, reviewed by an examiner and either allowed or rejected. However, in some cases it may be desirable to file a continuation patent. A continuation patent application provides no new information about the invention to be patented (referred to as the “disclosures”); rather, a continuation application typically broadens the “claims” of the application, which are the aspects of the invention for which patent protection is sought. The need for a continuation application often arises when a patent application is rejected because the claims are overly broad and seek protection for aspects of an invention that may not be patented for one reason or another. In such a case, the patent applicant will narrow the claims of the original patent in order to satisfy the patent examiner and then refine the broader claims in the continuation application. The advantage of a continuation application is that it takes the priority date that was established by the original (“parent”) application and maintains the pendency of the patent application during the review process.

A valid continuation application must be filed while the parent application is still pending; thus, a continuation application may not be filed if a patent has been issued under the original application or if the application has been rejected, abandoned, or otherwise terminated. The parent application is still pending if the original application or any previous continuation application is still pending.

A related type of modification to a patent application is called a “continuation-in-part” application, which unlike a continuation application contains new disclosures, or information defining the invention. New claims that are supported by the original disclosures will benefit from the original application’s filing date; however, new claims that depend upon the additional disclosures do not benefit from the original filing date. The claims based on any new disclosures are considered a new patent application and thus receive their own priority date as of the date that the continuation-in-part application is filed.

Another type of continuation application is the divisional application. A divisional application is necessary when the U.S. Patent and Trademark Office (USPTO) determines that a patent application contains more than one distinct invention and issues a restriction requirement, which requires the patent applicant to choose which of the distinct inventions is to be included in the patent application. A new and separate divisional application can be filed for each of the additional distinct inventions at any time while the original application is pending. This mechanism ensures that the USPTO is not overburdened by patent applicants who attempt to patent multiple inventions under one application in order to avoid application fees. As with an ordinary continuation application, the divisional applications receive the same priority date as the original application.

Deciding to Patent Trade Secrets?

In enacting patent laws and providing patent protection to inventors, the U.S. Congress made the decision to encourage the disclosure of new inventions by helping inventors protect their invention. The inventor of matter eligible for patent protection must, therefore, elect whether to avail himself or herself of such protection, accepting the disclosure obligations, or decide to keep the information secret, relying upon the protection extending to trade secrets under common law and certain statutes. Depending on the situation, one or the other may be an obvious choice, in other situations the choice may not be as easy. For instance, if the discovery is to be embodied in a product that will be sold, patent protection may be the better choice.

Necessity of Exercising Option

The existence of the option between trade secret or patent protection means only that initially the discoverer may choose one or the other. Although patent and trade secret protection may be simultaneously available for related components of an article or steps in a process, one may not rely upon both forms of protection as to the same matter. A patent constitutes a public disclosure of matter expressed in it which was formerly a trade secret. Conversely, use of secret matter eligible for patent protection probably constitutes a ”public use” in the patent law sense. If such use exceeds the permissible statutory period of one year prior to application for a patent, it would bar the user’s right to a patent.

One who suppresses an invention may not only forfeit the right to a patent, but might also lose the status as ”first inventor” for purposes of opposing a patent application of a subsequent inventor. Thus, a claim of trade secret and patent protection for the same matter is inherently inconsistent if the matter is published, and open to intense fact scrutiny if the matter held as a trade secret by the first ”true” inventor is asserted against a later ”inventor” of the same subject matter.

Secret use of a patentable invention raises an inherent question as to whether such use constitutes ”concealment” or ”suppression.” If it does, a subsequent inventor may be eligible to receive a patent although such a subsequent invention cannot meet the novelty test of the Patent Act. Thus, a second person to invent something may get a patent over the opposition of the first inventor if the latter made the invention in the United States and suppressed or concealed the invention. Yet the same second person may be denied a patent if the first inventor published the invention in some obscure journal prior to the second’s claimed invention date, provided that the one could reasonably locate the prior art reference. In both situations, the second inventor has not invented something novel and was equally unaware of the first inventor’s work.

Requirement of Disclosure in Exchange for Patent Monopoly

The patent monopoly conferred upon the inventor is given in exchange for the full disclosure and public dedication of new and useful invention. Disclosure of the invention, and of the manner and process of making and using it, must be made in clear and concise terms so that any person skilled in the art could make and use it; the disclosure should indicate the best mode contemplated by the inventor for carrying out his invention. Given the statutory requirement of full disclosure, attempting to secure a patent and yet withhold statutorily-required information as a trade secret would appear to jeopardize the validity of any patent that issues on the basis of such application. On the other hand, retention of information related to a patent but not required to be disclosed as a trade secret is permissible.

Level of Invention Required for Patent

The standard for patent protection is more exacting than that required for trade secret protection. Matter which is not patentable may nonetheless be maintained as a trade secret.

Risk of Loss

A patent provides protection against innocent as well as willful infringement. Thus, unlike the owner of a trade secret, a patent holder can redress infringement even against one who innocently practices the invention. Additionally, the patent owner’s right to prevent all others from making, using, or selling the patented invention lasts for the duration of the patent regardless of how many infringers there are. Proliferation of use of trade secret matter will extinguish the protected status which is based upon secrecy and once the patent expires, protection ceases. By contrast, trade secret protection is of indeterminate duration because it lasts until the matter becomes generally known.

Trade Secret Protection of Matter for Which a Patent Application is Pending

Protection afforded under the patent laws does not commence until the patent is granted, the grant is deemed to put the world on notice of the patentee’s claims. Yet there is always some period of time between the date of filing and the issuance of a patent. Prior to the grant of patents, trade secret protection applies if the matter otherwise meets trade secret standards. Consequently, wrongful use or disclosure of secret matter, even though that matter will be disclosed by the patent, prior to the issuance of the patent is actionable. Recovery for such wrongful use or disclosure is entirely independent of whether the patent application ripens into a valid patent or if the patent subsequently proves unenforceable.

Protecting Trademarks under Common Law

Trademark rights arise in the United States from the actual use of the mark. Thus, if a product is sold under a brand name, common law trademark rights have been created. This is especially true once consumers view the brand name as an indicator the product’s source. Common law marks are marks protected because they have been adopted and used, and the public recognizes the products or services identified by the mark as coming from a particular source. The term “common law” indicates that the trademark rights that are developed through use are not governed by statute. Instead, common law trademark rights have been developed under a judicially created scheme of rights governed by state law.

Coexistence of Federal, State, and Common Law Trademark Rights

Federal trademark law coexists with state and common-law trademark rights. Originally, state common law provided the main source of protection for trademarks. However, in the late 1800s, the U.S. Congress enacted the first federal trademark law. Since then, federal trademark law has consistently expanded, taking over much of the ground initially covered by state common law.

Federal trademark law is embodied in the Lanham Act, which was enacted in 1946 and most recently amended in 1996. The Lanham Act is based upon the Commerce Clause of the Constitution. Congress enacted the Lanham Act under its Constitutional grant of authority to regulate interstate and foreign commerce. Therefore, to obtain a federal trademark registration, in most cases the owner of a mark must demonstrate that the mark is used in a type of commerce that may be regulated by Congress.

The Trademark Law Reform Act of 1988 amended the Lanham Act to establish trademark rights, which vest upon registration following use of the mark in commerce, as of the filing date of a trademark application indicating a bona fide intent to use the mark in commerce. For trademarks used in commerce, federal trademark protection is available under the Lanham Act.

Many states have trademark registration statutes that resemble the Lanham Act, and all states protect unregistered trademarks under the common law of trademarks. A trademark registered under the Lanham Act has nationwide protection. Today federal law provides the main and the most extensive source of trademark protection, although state common law actions are still available.

State and Federal Registration Systems

Registration at either the federal or state level is not necessary to create or maintain ownership rights in a mark. State registration systems exist throughout the country to allow the owners of common law marks to register them if they are used within a particular state. As commerce between the various states evolved, the federal system of registration emerged to provide protection for marks in interstate commerce. Federal protection may be available for the name of a product and/or service, a logo, or any other mark that identifies the source of a product or service. Common law and state registration rights are enhanced by the benefits associated with federal registration.

Federal registration, a system created by federal statute, is not required to establish common law rights in a mark, nor is it required to begin use of a mark. However, federal registration, if available, is almost always recommended and gives a trademark owner substantial additional rights not available under common law. Federal registration rights can be renewed and can last forever.

Limited to Geographic Area of Mark

Common law trademark rights are limited to the geographic area in which the mark is used. It can be difficult to discover whether anyone has trademark rights in a particular mark because no registration is required in order to establish common law rights to a trademark.

Protecting Trademarks Abroad

With the advent of a global economy, foreign trademark protection is important. The need to obtain, maintain, and enforce trademark rights on a multilateral basis is becoming imperative because many United States companies look to markets beyond the borders of the United States. Unfortunately, obtaining and maintaining trademark rights abroad is often a time-consuming, costly, and complicated process. Further, the enforcement of such rights in some countries is virtually nonexistent. In addition, obtaining international protection based upon your United States trademark may have some time limitations. If you are interested in obtaining international trademark protection, contact one of our Trademark attorney’s to schedule an appointment.

Differences in Trademark Laws

Trademark protection outside the United States is based upon the laws of the various foreign countries, which vary considerably. Unlike the situation in the United States, in most countries trademark rights are solely dependent on registration and use is not a requirement for registration. Accordingly, an American corporation need not wait until products bearing its trademark are actually being marketed before pursuing a program of foreign trademark registration.

Although in many countries actual use is generally not a condition precedent to registration, the failure to use the mark within a specified period after registration, unless legally excused, may make the registration unenforceable or vulnerable to a cancellation proceeding brought by a third party. In a few jurisdictions, failure to use the mark within a specified period actually nullifies the registration, but in most jurisdictions the registration remains alive until challenged.


The standards for registrability vary considerably around the world. Some countries only examine for so-called absolute grounds of non-registrability, such as descriptiveness and deceptiveness. Other countries only examine for relative grounds of non-registrability. Still other countries examine for both absolute and relative grounds of non-registrability. Moreover, some countries do not follow the United States’ practice of allowing applications to be filed seeking protection for a mark in more than one international class.

The time it takes to obtain a registration varies from months to years. In some countries it typically takes up to three or four years to obtain a registration, while in others registrations may be granted within several months after filing.

Many countries do not provide for an opposition procedure. In those countries that do, opposition proceedings are handled by foreign agents or attorneys and are the subject of various local requirements as to type of proof and appellate review.

The length of the term of protection also varies, as do renewal and assignment procedures. With respect to assignments, most countries do not require the transfer of the corresponding goodwill. Therefore, protection for trademarks abroad requires a detailed understanding of the law of each jurisdiction.

Foreign Trademark Selection

The selection of a trademark for foreign use and registration is generally governed by the same principles that apply in the United States. A truly distinctive trademark should be selected in order to avoid rejection by various foreign trademark offices. It may also be advisable to obtain trademark searches in the various foreign countries in advance of filing an application to register.

Foreign Application Practice

American corporations file trademark applications in foreign countries through foreign law firms, agents, or governmental agencies which act before local trademark offices as their foreign associates. Usually, American corporations utilize American in-house lawyers or outside law firms as intermediaries. A foreign associate acts under a power of attorney running from the American applicant. Local requirements differ as to the type of power required, which is either general, authorizing the foreign associate to act continuously in local trademark matters for the applicant, or special, authorizing the associate to act only with respect to a single trademark application. Frequently, such powers must be legalized by a consular official of the foreign country based in the United States.

Foreign Trademark Licensing

An American business may license a foreign company to use its trademarks in marketing a product. Such license agreements are considered valid under the laws of all major commercial countries, provided the local requirements are met. Many countries require trademark license agreements to be recorded in the local trademark office or with some other governmental agency, or both. A number of countries require a trademark licensee to be entered as a ”registered user” of the trademark registration.

Copyright Protection in General

Copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.

The subject matter eligible for protection under the Copyright Act is as follows:

Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

Three Basic Requirements for Copyright Protection

From the above provision, the courts have derived three basic requirements for copyright protection — originality, creativity and fixation.


The requirements of originality and creativity are both derived from the statutory qualification that copyright protection extends only to original works of authorship. To be original, a work must be one of independent creation, which means that it must not be copied from another. There is no requirement that the work be novel, unique, or ingenious.


Only be a modicum of creativity is required.


Protection attaches automatically to an eligible work of authorship the moment the work is sufficiently fixed. A work is fixed when its embodiment in a copy or phonorecord is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. Congress provided considerable room for technological advances in the area of fixation by noting that the method of fixation in copies or phonorecords may be now known or later developed. The Copyright Act divides the possible media for fixation into “copies” and “phonorecords.”

  • Copies are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.
  • Phonorecords are material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

Form of Fixation

The form of the fixation and the manner, method or medium used are virtually unlimited. A work may be fixed in words, numbers, notes, sounds, pictures, or any other graphic or symbolic indicia; may be embodied in a physical object in written, printed, photographic, sculptural, punched, magnetic, or any other stable form; and may be capable of perception either directly or by means of any machine or device now known or later developed.


A transmission, in and of itself, is not a fixation. While a transmission may result in a fixation, a work is not fixed by virtue of the transmission alone. The Copyright Act provides that a work “consisting of sounds, images, or both, that are being transmitted” meets the fixation requirement “if a fixation of the work is being made simultaneously with its transmission.” To obtain protection for a work under this simultaneous fixation provision, the simultaneous fixation of the transmitted work must itself qualify as a sufficient fixation. A simultaneous fixation meets the requirements if its embodiment in a copy or phonorecord is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.