IP Law Information

Types of Intellectual Property Protection

Patents   Trademarks   Copyrights   Trade Secrets
What Subject Matter Can Be Protected?

 

Process, machine, article of manufacture, composition, or improvements to any of these.

Design Patents – ornamental design of useful articles

Words or phrases used in connection with a product or service (e.g., Nike® shoes) Original works of authorship such as:  written materials, software, video/movies, and music Information that is not known to the public (e.g., the formula for COKE® soda)
Requirements for protection New, Useful, and Non-Obvious

 

Use of trademark in (interstate) commerce with goods/services Create the work in a tangible medium (common law) Keep information secret
How to Obtain Protection Search patents.  File patent application, and “prosecute” patent application until “claims” are allowed Search trademarks.  File trademark application and prosecute to issuance/grant Can rely on common law copyright; However, in the U.S. need to register copyright to recover statutory damages

 

Keep information secret, and take precautions to ensure it remains secret
What is involved? Prepare custom detailed written description of invention + drawings (if needed) and prosecution

 

Complete TM application + drawing (if applicable) and prosecution in US PTO File a form and deposit a copy with Copyright Office – www.copyright.gov Security precautions (control access), confidentiality agreements
Cost of Obtaining Provisional — $$ + gov’t fee

Utility patents – $$$ + gov’t fees

Design patents — $ + gov’t fee

$-$$ + gov’t fee $ + gov’t fee Costs associated with security procedures and confidentiality agreements
How long does protection last? 20 years from filing; Design 15 years from grant.

 

10 years with 10 year renewals.  Must continue to use and defend for protection. Generally, life of author + 70 years Until the information is no longer secret (when it becomes public)
What benefit does protection provide? Right to exclude others from making, using, selling the patented invention

 

Right to prevent others from using a substantially similar trademark with similar goods/services Right to prevent copying and making “derivative works” Protection can last longer than patent protection if conditions are met
What can you recover? Your lost profits, or a reasonable royalty.  Injunctions may also be available.

Design patents – same as above + infringer’s profits.

Injunctions and monetary damages Actual financial damages + profits of infringer; or

Statutory damages ($750-$30,000) and attorney fees

 

Financial losses from misappropriation of trade secret
How do you prove infringement? Prove that accused product contains all elements in patent claim(s). Likelihood of confusion (similar in sound, appearance, and meaning) Access and copying Breach of confidentiality; No violation of trade secret if someone independently develops

© 2019 Jeffrey V. Bamber

The information provided in this table should not be relied upon as legal advice.  To obtain legal advice, an attorney/client relationship must be established in a letter agreement with Jeffrey V. Bamber, Attorney at Law.