Maintaining the Term of a Patent
Utility patents apply to inventions and processes and are distinguished from design and plant patents. Under current patent law, the term of a new utility patent is 20 years. During the term of a patent, the patent gives the inventor the benefit of having the right to exclude others from using, making, selling or importing the invention. However, for utility patents based on applications filed on or after December 12, 1980, the 20-year patent term is subject to the payment of maintenance fees.
Maintenance fees are fees paid to the government to continue to receive the benefits of a patent. Patent maintenance fees must be paid 3 and one-half years, 7 and one-half years, and 11 and one-half years from the date the patent is granted. A fee schedule is maintained in the Code of Federal Regulations, and the fee amounts vary depending on whether or not the patent holder is a small or micro-entity, which the United States Patent and Trademark Office (USPTO) defines. A small or micro-entity is typically an independent inventor, a small business concern, or a nonprofit organization.
Maintenance Fee Grace Period
If fees are paid within the six-month period following the due dates, the maintenance fees may be paid without surcharge. If the maintenance fees are not paid, the patent will expire. However, there is an additional six-month grace period after the due date within which the maintenance fees may be paid, along with a surcharge, in order to keep the patent in force.
The USPTO does not remind patent holders when maintenance fees are due; however, if maintenance fees are not paid on time, the USPTO will attempt to remind a patent holder that maintenance fees may still be paid during the grace period along with a surcharge.
Petition for Reinstatement
If the maintenance fees are not paid by the end of the grace period, the USPTO allows a patent holder to petition the USPTO for the application of an unintentionally or unavoidably delayed payment and for reinstatement of an expired patent. However, during the time from the expiration and reinstatement of the patent, another person or business may establish rights to use, sell, import or distribute the patented invention or process. Depending on the circumstances, a court may allow such use of the patented invention or process to continue even after the patent is reinstated in order to protect the investment of the person or business, which had a right to presume that the patent had been abandoned when it was allowed to expire.
Fair Use under Trademark Law
A party is entitled to use a trademark in such as way as to describe the qualities that a mark represents as long as the manner of use of the mark is not as a trademark but only used in a descriptive sense. Fair use of a trademark occurs when a defendant uses a descriptive trademark of another party to describe the defendant’s own product. This is the fair use defense set forth in the Lanham Act that provides the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark…of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.
While a trademark will protect a word which is used by a manufacturer or merchant to identify goods and distinguish them from others, trademark law will not prevent the use of such a word in good faith where the primary purpose is to describe a product or service, not to infringe the trademark resembled by it. The statutory fair use defense provided in the Lanham Act prevents a trademark owner from monopolizing or appropriating a descriptive word or phrase. It allows non-owners of the trademark to accurately describe their goods. Therefore, the defense is only available when the mark at issue is descriptive, and then only where the descriptive term is used descriptively.
Judge-Made Categories of Fair Use
Although, the Lanham Act contains the statutory fair use provision mentioned above, there are three additional judge-made categories where use of the trademark of another may be considered non-infringing. They are (1) nominative fair use, (2) comparative advertising as fair use, and (3) parody as fair use.
Nominative fair use involves the descriptive use of another’s mark to describe or identify the plaintiff’s goods or services, not the defendant’s. Comparative advertising involves a situation where the trademark of a competitor is used to refer to the competitor’s goods. Parody is a humorous form of social commentary and literary criticism.
Factors Considered in Determining Fair Use
Several different factors are considered by courts to determine whether a particular use is an infringing use or a fair use. Those factors are as follows:
- the manner in which the word or mark is being used by the defendant is considered;
- whether the defendant is using the word or mark in good faith is considered; and
- whether the use of the word or mark is likely to confuse consumers is also considered.
The author’s use of the mark must accurately describe the trademark owner’s product or service, the author must use the mark in a non-trademark manner and not as a source identifier of the author’s work, and the author’s use must be in good faith in order for the fair use defense to be successful.
Trademarking Internet Domain Names
Copyright law does not protect domain names, but Trademark law may. Generally, the United States Patent and Trademark Office (USPTO) has tried to apply traditional trademark law to the examination of domain name service mark applications. A domain name qualifies as a mark when it is used in connection with the sale or advertising of goods or services. This includes all sites conducting e-commerce and also sites that provide Web-related services. Unlike a trademark, which is restricted by country and class of goods, domain names can be global and not limited by goods or service.
Internet Corporation for Assigned Names and Numbers
The Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit organization that has assumed the responsibility for domain name system management, administers the assignation of domain names through accredited registers.
Domain Name Disputes
Prior to November 1999, domain name disputes in the United States were decided by courts under the following three primary theories of trademark law:
- traditional trademark infringement, which requires that the allegedly infringing use cause a likelihood of consumer confusion;
- the assertion that a domain name “dilutes” the value of a trademark; or
- unfair competition claims asserted in cases in which the trademark was not federally registered.
In November 1999, Congress added a new cause of action to the Lanham Act with the Anti-cybersquatting Consumer Protection Act, which was expressly designed to prevent cybersquatting.
Choosing a Domain Name
One is at risk of losing a chosen domain name if the owner of an existing trademark convinces a judge or arbitrator that the use of the domain name makes it likely that customers would be confused as to the source or quality of the products. To be protected, a trademark must be distinctive. If the trademark owner has been able to register a name with the USPTO, it is probably distinctive.
Generic Terms are not Trademarks
Many domain names are potentially powerful domain names but they are generic because they describe whole categories of products or services. Generic terms can never be trademarks.
Use of Domain Names to Support Service Mark Registration
Domain names are used like telephone numbers and addresses. They often provide information as to how to contact the entity rather than functioning as identifiers of a service. Specimens of this type will be refused in the USPTO because they do not show service mark use of the matter presented for registration. The more distinctive the presentation of the domain name, the more it will be perceived by the USPTO as functioning as a service mark and not just as contact information for a particular entity. The domain name must be used as a source identifier and not just as an entity locator.
Some uses that may qualify as good service mark use of domain names include hard copy advertisements for a Web site in which the significant portion of the domain name has been highlighted or set off in some other way. A domain name used as a banner headline on the Web site itself would probably be seen as functioning as a service mark.
Protecting Trade Secrets
The Economic Espionage Act of 1996 (EEA) provided a broader definition of what constitutes a “trade secret” and what constitutes trade secret theft, effectively replacing the 1948 Trade Secrets Act, which was limited to prosecution of federal employees. The EEA also was passed so as to serve as a universal trade secret theft act, overriding various trade secret acts instituted by individual states.
Business Practices Protected as Trade Secrets
Not all business practices are regarded and protected as “trade secrets.” To qualify, the owner of the trade secret must have “taken reasonable measures to keep the information secret” and the information must “derive economic value from not being known to or ascertainable by the public.” The EEA does not apply to trade secrets discovered by “parallel development or reverse engineering.” Skills and knowledge that an individual acquires through lawful means while working are also not subject to persecution under the EEA.
Theft of a Trade Secret
Both the party who acquires the information and anyone who receives it are punishable under the EEA. For an individual to be considered a thief of a trade secret, the individual must have taken, transmitted, or recorded in some form an article regarded to be a trade secret through deception or without authorization. If another individual or group of individuals then “receives, buys or possesses” the information, knowing it was obtained through deceitful means, that individual or group of individuals is punishable under the EEA. Also punishable are those individuals who, by breaking the EEA, are knowingly benefiting a foreign government or agent from a foreign country.