July 2009

Provisional Patent Applications

For many years, there was only one type of patent application. The patent application required a specification or detailed description of the invention; a claim or claims detailing the elements of the invention for which patent protection is being claimed; any necessary drawings; an oath or declaration that the inventor is the original and first inventor of the invention; and the filing fee. If you have an invention and would like to determine if is patentable, call or email to schedule a meeting with one of our patent attorneys.

International Patent Rights

One of the trickiest aspects of patent applications, particularly in the international context, is establishing the priority of patent rights. Rules applying to priority differ starkly between the United States and many foreign countries. The United States has a “first-to-invent” rule, which means that an inventor that can establish that he or she was the first to conceive of and create an invention will be given priority over another inventor of the same invention even if the second inventor applies for a patent first. In contrast, many foreign countries have a “first-to-file” rule, which means that the first inventor to apply for a patent will be given priority even if another inventor actually conceived of and created the same invention first. Further complicating the issue of priority is the fact that, in the United States, an inventor may publicly disclose an unpatented invention and will have a year to file for a patent. In many foreign countries, any public disclosure of an invention renders it ineligible for a patent. Thus, a U.S. inventor might be able to obtain a U.S. patent but be ineligible for patent protection in other countries even though U.S. patent rules were correctly followed. If you feel you have rights that are being infringed, you should consider scheduling a meeting with one of our patent attorneys.

Actual and Intended Use of Trademarks

Trademark rights are gained by actual use of a mark rather than by registration. Generally, the first party who uses a mark in commerce has the right to use the mark in that geographic area as well as in the natural zone of expansion for that geographic area. Any shipment of goods bearing the trademark across a state line in the normal course of business satisfies the “use in commerce” requirement. Token sales made solely to establish trademark use do not constitute legally sufficient “use.” To help determine if a Mark is available for protection or to help register your Mark, please contact one of our Trademark Attorneys.

Trade Dress

Trade dress is governed by the same set of laws that protect unregistered trademarks. While traditional trademark law protects words or logos, trade dress law protects the total packaging and design of a product. Because trade dress often serves the same function as a trademark or service mark — the identification of goods and services in the marketplace — trade dress can be protected under the federal trademark laws and in some cases registered as a trademark or service mark with the United States Patent and Trademark Office. If you have questions about this or any other aspect of trademark protection, contact one of our trademark attorneys for more information. More…

Joint Ownership under Copyright Law

According to the Copyright Act, the authors of a joint work jointly own the copyright in the work they create. A joint work is defined in the Copyright Act as “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” Courts have interpreted this to mean that all putative joint authors must intend to make a joint work at the time of the creation of that work. If joint authorship exists, the authors of the “joint work” will be recognized as the co-owners of the copyright in that work. The contributions to a joint work do not need to be equal in quality or quantity, they only need to be copyrightable contributions and the parties must agree that the work is a joint work. Contact a copyright specialists at The Intellectual Property Center for more information.