Trade Secrets

What Is A Trade Secret?
What Can A Business Do To Protect Its Trade Secrets?
What Constitutes A Violation Of Trade Secret Laws?

General Questions About Patents

Who is entitled to a patent?

Typically, the inventor or inventors. However, if an inventor has sold his or her rights, then the purchaser will own the invention and be able to obtain a patent. If the inventor makes the invention under an employment contract, the employer may own the invention and have the right to the patent.


Is there more than one kind of patent?

In the United States, there are three kinds of patents: utility patents, design patents and plant patents.


What is a patent claim?

All utility patents include one or more patent claims. A design patent includes a single patent claim. A claim in a patent descripes the metes and bounds of the right which the patent confers on the patentee to exclude others from making, using or selling the patented invention.


Does a United States patent provide patent protection in other countries?

No. Patent protection must be obtained in each country in which protection of an invention or design is desired.



What is a patentability search?

A patentability search, sometimes called a preliminary search or a novelty search, is conducted to determine whether it is likely that an invention can be patented.

In the United States, a patentability search most often consists of a search of prior issued United States patents conducted at the US Patent and Trademark Office or via online searches of certain patent databases, or both. A patentability search may also include a search of technical literature in the field of the invention.


Why should a patentability search be conducted?

It is generally advisable to conduct a patentability search. In the United States alone, there are a large number of patents (over 6,000,000) already issued, arranged in approximately 460 classes and more than 140,000 subclasses. Owing to the large number of patents previously issued, it is possible that an invention may not meet the patentability requirements of novelty or unobviousness due to prior existing patents.


What does "patent pending" mean?

The words "patent pending" or "patent applied for" is a way of notifying the public that an application has been made for a patent.


When may "patent pending" be used?

"Patent pending" should not be used on a product unless a patent application has been filed for the article on which the patent pending notice is given.


Should a patented article be marked patented?

Yes. Patent owners and persons making or selling any patented article may give notice to the public that an article is patented, either by placing the word "patent" or the abbreviation "pat.", together with the patent number, on the patent article, or when this can not be done due to the nature of the article, by fixing to it, or to the package in which one or more of the patented articles is contained, a label containing such notice.

In the case of an infringement, no damages can be recovered, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringements occurring after such notice. The filing of a lawsuit for infringement constitutes such notice.


What Is patent infringement?

Patent infringement can be direct, indirect or contributory. Direct patent infringement is the unauthorized manufacture, use, offer for sale, sale or importation of a patented invention. Indirect infringement occurs if a person actively encourages another to directly infringed a patent. Contributory infringement is committed by knowingly selling or supplying an item for which the one use is in connection with a patented invention. Good faith or ignorance is not a defense to a claim of direct infringement, but it can be a defense for indirect or contributory infringement.


What remedies are available for patent infringement?

The remedies for patent infringement include:

1. Injunction.
2. Damages, including treble damages for willful infringement.
3. Attorney's fees for the prevailing party in exceptional cases.
4. Court costs.


Can an infringer be sued for infringing acts that occur before a patent has been issued?

No. The issuance of a patent is a prerequisite and, in addition, a patent owner cannot retroactively recover damages for acts occurring prior to the issuance of the patent.


Utility Patents

What is a utility patent?

A utility patent, may be granted for new and useful processes, machines, manufacturing, compositions of matter and business methods and improvements of the foregoing. Compositions of matter include chemicals, drugs and life forms.


What rights are conferred by a utility patent?

A utility patent grants the patent owner the right, in the case of a product patent, to prevent others from making, using, selling and importing products that includes the invention and, in the case of a process patent, the right to prevent others from using a process and to import products which were made by the patented process. Owning a patent does not mean the owner can make a patented product or use the process covered by the patent because there may exist earlier patents that would be infringed by such activities, for example, if it is necessary for the newly patented invention to include features of the existing product, which are covered by an earlier patent. A “right to use” search should be conducted prior to investing significant capital to bring a product or process to market.


Are all utility inventions patentable?

Not all utility inventions are patentable. Generally, in order to be patentable, an invention must be novel, unobvious and useful.


Are pending United States patent applications kept secret?

The United States patent and trademark office keeps secret all information concerning pending design patent applications and utility patent applications filed before November 29, 2000. If a patent is not issued, the application is never available to the public from the USPTO unless it is referenced in another patent. All utility patent applications filed on or after November 29, 2000 are published with two exceptions - first, U.S. patent applications with no foreign counterpart re not published provided a request is made by the applicant and, second, if a patent is granted within 18 months of the application filing date, the application is not published.


When are utility patent applications published?

United States utility patent applications are published 18 months after the earliest United States filing date or foreign priority date, whichever occurs first. An inventor can request that the application be published earlier. publication will not be required if the inventor states that he does not intend to appy for a patent in a foreign country.


What is the effect of the publication of a utility patent application?

A published utility patent application is accorded provisional rights to recover royalties from infringing parties who, with actual notice, use the claimed invention between the publication and grant dates, provided that substantially the same claims are contained in both the published application and the granted patent. In addition, published applications have the same prior art effect as an issued patent.


What is a provisional patent application?

A provisional patent application provides the means for an inventor to obtain an early filing date and claim "patent pending" without a formal patent claim, oath or declaration, or any information or prior art disclosure. It provides simplified filing with a lower initial cost with one full year to assess the invention's commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent. The filing begins the Paris Convention priority year. Within one year, a non-provisional application must be filed. If the inventor takes no further action, the provisional application will automatically be abandoned 12 months after the provisional application for patent's filing date by operation of law or upon failure to correct informalities (e.g., pay filing fee or correct cover sheet error).


What is a statutory bar?

A United States patent will "barred" by statute, that is, it will not be granted if more than one year before the application date:

• the invention was described in a printed publication
• the invention was in public use
• the invention was on sale

The "on sale" bar can be triggered by almost any commercial activity including offers to sell or providing a prototype or drawings to a potential customer or manufacturer.

A statutory bar will also arise from the prior patenting of the invention or if the invention is made by another before the patent applicant.

How long does it take for a patent to be issued?

The timing of the issuance of a utility patent will depend upon the things that occur during the processing of the application. In general, most utility patents are being issued within one to three years of the filing date. Procedures are available for expediting the issuance of a utility patent.


What is the duration of a United States utility patent?

A utility patent has a term beginning on the date on which the patent issues and ending 20 years from the filing date of the application for the patent. Utility patents that were in force on June 8, 1995, and utility patents issued from applications filed before that date, will expire either 20 years from the filing date of the patent application or 17 years from the issue date, whichever is later. The owner of a utility patent must pay a government "maintenance fee" at three times during the life of the utility patent. If the fee is not paid, the utility patent will expire earlier.


What are patent maintenance fees?

All utility patents which issue from applications filed since December 12, 1980 are subject to the payment of maintenance fees which must be paid to maintain the patent in force. Maintenance fees are due 3 ½, 7 ½ and 11 ½ years from the issue date of the patent. The maintenance fees may be paid up to six months before the due date. There is a grace period of six months after the due date during which a maintenance fee may be paid with a surcharge. If the maintenance fee and any surcharge are not paid, the patent will expire as of the end of the applicable grace period.


Design Patents

What is a design patent?

A United States design patent protects the shape and surface ornamentation applied to a manufactured article. Design patents may be obtained for the shapes of products, for example, the shape of a table, a fragrance bottle or watch as well as for the surface ornamentation on a useful article, such as a design applied to handle of a spoon. Design patent protection is also available for computer-generated icons and typefaces.


How long does it take for a design patent to be issued?

In most cases, a design patent will be granted between one and three years from the filing date. As in the case of utility patents, procedures are available for expediting the processing of a design patent application.


What is the duration of a design patent?

A design patent has a 14 year term beginning on the date on which the design patent issues. There are no maintenance fees for design patents.


Trademarks

Is a trademark registration mandatory?

No. In the United States, a trademark may be protected under the "common law" and by registration. A party may establish common law trademark rights by being the first to actually use the mark in a given trade area or geographical area. The first user can stop others from using confusingly similar marks in the area of its first use of the mark. A common law mark is a trademark that has been used but not registered.


Are there advantages to filing an application and obtaining a United States trademark registration?

Yes. The filing of a federal application will provide the applicant with a constructive use date, contingent upon a registration being issued, which will give the applicant rights relative to later users or applicants. In addition, the filing of an application provides the applicant with a right to the priority for corresponding foreign applications. A federal registration serves as constructive notice of the trademark owners trademark rights and is evidence of ownership of the trademark. It also permits the filing of lawsuit in federal courts. A registration may be filed with the U.S. Customs Service to prevent import of infringing foreign goods. Following five years of continuous use, a federal registration may become incontestable, that is, is may not be invalidated on the basis of prior third party use or descriptiveness.


What are the requirements for filing a trademark application in the United States?

A United States trademark application can be based on:
1) Use of the trademark in interstate commerce or commerce between the United States and a foreign country.
2) Bona fide intention to use the mark in interstate commerce or commerce between the United States and a foreign country.
3) Ownership of an application filed in a foreign country within six months of the foreign filing date.
4) Ownership of a foreign registration.

In each case, a written application must be filed, along with a drawing of the mark, and a government filing fee paid. If the application is based on use of the mark, it will be necessary to submit a specimen showing how the mark is actually used on the goods or in the offering of the services; the dates of first use anywhere and the date of first use of the mark in interstate commerce or in commerce between the United States and a foreign country will need to be included.

If the application is based on a bona fide intention to use the trademark, use must commence before a registration can be issued. Typically, during the application process, use may be demonstrated by filing an amendment to allege use with a specimen of use or by filing, after a notice of allowance is issued, a statement of use with a specimen of use. If the application is based on a foreign priority application or registration, a United States trademark registration cannot be issued until after a copy of the foreign trademark registration is filed.


What constitutes interstate commerce?

For goods, interstate commerce is the sending of the goods across state lines or from a foreign country to the United States, with the mark displayed on the goods or the packaging for the goods, if such use is bona fide and in the ordinary course of trade. For services, interstate commerce involves offering a service to persons in another state of the United States, or rendering a service in more than one state of the United States or which affects interstate commerce that Congress may lawfully regulate, for example, restaurants, gas stations, hotels, etc. An intrastate sale directly affecting a type of commerce which may lawfully be regulated by Congress may be sufficient “use in commerce” to support an application.


Should a trademark search be made before an application is filed for the registration of a trademark?

Yes. Although a trademark search is not mandatory, a search should be made before a mark is used or before an application for the registration of a mark is filed to determine whether it can be registered or if it will conflict with prior existing rights of others.


What can be registered as a trademark in the United States?

Any word, name, symbol or design, or any combination thereof, used or intended to be use, in commerce to identify and distinguish the goods or services of a party's goods or services can be registered as a trademark. Registrations have been granted for marks that comprise slogans, the configuration of products, color of a product, sounds, and even smells where such have been shown to act as a trademark.


What is a service mark?

A service mark is a trademark that has been used to indicate the source of services rendered to others.


Does a domain name registration create trademark rights?

No. Merely registering a domain name with a Internet registry does not create trademark rights and has no affect on whether the domain name infringes another's trademark. However, certain uses of a domain name may create common law rights but such rights will be subject to the rights of a prior user and prior trademark applications or registrations of confusingly similar marks.


Can a domain name or business name be registered as a trademark?

Domain names and business names (including corporate names, assumed names such as “doing business as” names) are not automatically a trademark or service mark. To qualify as a trademark or service mark, the name must function as a mark, that is, it must serve as an indicator of source for goods or services and not merely as an informational part of an Internet address used to access a web site or as referring to the entity. Thus, to be registrable as a trademark or service mark, domain names and business names must be used in a manner that will be perceived by potential purchasers as indicating source of goods or services. If the proposed mark is used in a way that would be perceived as nothing more than an Internet address where the applicant can be contacted, or as a name of a business without reference to its products or services, registration as a trademark or service mark will be refused.


What is a trade name?

A trade name is any word or words or words used as the name which identifies a business as a whole. In contrast, trade marks and service marks are used to identify and distinguish the products or services of a business. A trade name may be a corporate name, a partnership name, a limited liability company name or an assumed business name, sometimes referred to as a fictitious business name. A trade name is typically registered with State authorities in states where the business has been formed or is using the name. In general, registration of a business name with State authorities does not confer any proprietary rights to the name. Registration of a trade name, most importantly, does not mean that the trade name can not infringe prior existing trademark rights. A trade name itself may incorporate a trademark or may be used as a trademark, that is, to identify products or services and, in such case, it can also be registered and enforceable as a trademark. Other persons or entities that use the trade name, or confusingly similar variants, may be liable for damages.


What is an assumed name?

An assumed name is a name other than the real name under which an organization conducts business. As assumed name is sometimes referred to as a fictitious name or as a “dba” which is an abbreviation for “doing business as”. In some States, the term “fictitious name” is used to refer to the name that an organization submits in its application for authority to do business in a State where the real name is not available to be used. An organization must generally obtain authorization to use an assumed name to identify its business in States where it operates under the assumed name. In some States, assumed-name statutes prohibit any person or entity from transacting any business under an assumed name that is not its legal name, unless an assumed-name certificate is filed with the appropriate official agency. The consequences of a failure to file may include misdemeanor liability, the tolling of the statute of limitations in favor of adverse parties, and a prohibition from commencing or maintaining an actionin that name or for any contract or transaction by the entity except, generally, it may defend any civil action.


What is a disclaimer?

When an application for a trademark registration includes a descriptive or generic term, the applicant is required to disclaim the term before the trademark can be registered. A disclaimer is a statement that the trademark applicant or registrant does not claim exclusive rights to the use of a specified word or element of the mark. A disclaimer permits the registration of a mark that is registrable as a whole but contains matter that would not be registrable alone.


Is it possible that the Patent and Trademark Office will refuse to grant a trademark registration?

Yes. There are a number of reasons that could provide the basis for refusing a registration. The most common grounds for refusal of a registration may be summarized as follows:
1) The mark is generic, i.e., the common name of the product or service.
2) The mark comprises immoral, deceptive or scandalous matter.
3) The mark disparages or falsely suggests a connection with persons, living or dead, institutions, beliefs, or national symbols, or brings them into contempt or disrepute.
4) The mark consists of or comprises the flag or coat of arms, or other insignia of the Untied States, or any State or municipality, or of any foreign nation.
5) The mark comprises a name, portrait or signature identifying a particular living individual, without that individual's consent, or the name, signature, or portrait of a deceased President of the Untied States during the life of his widow, without written consent of the widow.
6) The mark so resembles a mark already registered in the Patent and Trademark Office that use of the mark on applicant's goods or services is likely to cause confusion, mistake or deception.
7) The mark is merely descriptive or deceptively misdescriptive of the applicant's goods or services.
8) The mark is primarily geographically descriptive or deceptively geographically misdescriptive of the applicant's goods or services.
9) The mark is primarily merely a surname.
10) The subject matter of the mark, as a whole, is functional.


How long does it take for a trademark registration to be issued?

It is impossible to predict how long it will take to obtain a trademark registration as the processing time will depend on the basis for the application and the legal issues that arise during the processing of the application. In general, the total pendency time will be at least a year to several years.


What is the duration of a United States trademark registration?

Registration issued after November 16, 1989 last for ten years from the date that the registration is issued provided that a declaration of use is filed between the fifth and sixth anniversary.

Registrations issued before November 16, 1989 last for twenty years from the date of registration provided that a declaration of use is filed between the fifth and sixth anniversary.


What is a declaration of use?

To avoid cancellation of a registration, the owner of the registration must file a Section 8 declaration, a specimen of use and pay a fee between the fifth and sixth years after the registration and during the year anniversary of the registration.


What is a Section 15 declaration?

A registration may become incontestable if its owner files a Section 15 declaration which certifies that the owner has continuously used the registered mark for five years, that the registered mark is still in commercial use, there is no adverse judgment against its validity, and there is no pending proceeding against it. An incontestable mark is immunized from certain challenges, although it remains subject to others. Section 15 does not apply to marks on the Supplemental Register.


Is it possible to renew a trademark registration?

Yes. Registrations may be renewed, provided that the mark continues to be used, for additional ten year periods. Under current regulations, an application for renewal may be filed within one year before the expiration of the registration. There is a grace period of six months after the expiration or a registration during which a renewal application may be filed with payment of an additional grace period surcharge. If no renewal application is filed before the end of the grace period, the registration will expire. If the ownership to the registration has changed since the registration or prior renewal date, ownership must be established, typically by recording a change of ownership document.


What is an opposition to a trademark?

Any person who believes that he will be damaged by the registration of a mark may oppose the same by filing a written notice of opposition stating the grounds therefor, within thirty days after the publication of the mark in the Trademark Official Gazette.


How can a cancellation of a trademark be secured?

Any person who believes he is being injured by the registration of a trademark in the United States Patent and Trademark Office, at any time, may file a petition to cancel the registration. The petition must state the grounds for cancellation.


What are the grounds for opposing the registration of a trademark and for a petition to cancel a registered trademark?

The registration of a mark can be opposed or cancelled, within five years of the date of registration, upon the following grounds among others:

1. Likelihood of confusion, that is, prior use of the same or similar mark by another for the same or related goods.
2. The trademark is merely descriptive or deceptively misdescriptive of the goods or services.
3. The trademark is primarily geographically descriptive or misdescriptive.
4. Registration was obtained contrary to prohibitions against the registration of a trademark that consists of or comprises immoral, deceptive, or scandalous matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols; or which consists of the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof; or consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.
5. Abandonment of the trademark by nonuse or loss of distinctiveness.
6. Fraud in the trademark application process.
7. The trademark is the apt descriptive name (generic) for the goods or services.
8. Registration of the trademark is contrary to the prohibitions of the law which prohibit registration of immoral marks, flags, etc.
9. The trademark comprises matter that, as a whole, is functional.

A registration can be cancelled at any time upon the basis of the certain specified grounds including the following:

1. The trademark becomes a common descriptive name (generic).
2. The trademark has been abandoned.
3. Registration was obtained fraudulently.
4. Registration was obtained contrary to prohibitions of registrations of immoral, etc., flag, etc.

5. It is used by an assignee to misrepresent source.


Is it necessary to use a registered trademark?

A trademark registration can be cancelled if the mark is abandoned. A trademark may be deemed to be abandoned when its use has been discontinued with intent not to resume use. Intent not to resume use may be inferred from the circumstances. Nonuse for a period of three years gives rise to a prima facie abandonment.



What is the difference between "TM" or "SM" and "®" symbols?

The "TM" and "SM" symbols, for trademark and service mark, respectively, are used to inform the public that a party claims trademark rights and are typically used before a federal registration is issued.

The encircled letter "®" is the federal registration symbol and is used to inform others that the trademark has been registered in the United States Patent and Trademark Office. Omission of the registration notice may preclude recovery of damages or an infringer's profits prior to giving the infringer actual notice of the registration.


Do individual States provide for the registration of trademarks?

Yes. The States have statutes relating to trademark registration. These registrations are often secured where a mark is not used in interstate commerce and, in addition, because of certain advantages that the laws of some states offer in enforcement proceedings against counterfeit trademarks.


Does the creation of a business or a business name reservation create trademark rights?

Most states have procedures which allow the reservation of a corporate name prior to incorporation. The reservation of a corporate name or actual formation of an entity – corporation, limited liability company, etc. - including the name, does not create trademark rights.


Is there any requirement that a trademark license agreement be registered with the United States Patent and Trademark Office?

No. A trademark license agreement is a private contract. There is no legal requirement for recording trademark license agreements in the United States.


What provisions should be included in a trademark license?

A trademark license agreement will name the licensor, ordinarily the trademark owner, unless another party has been authorized to license the mark on behalf of the owner of the trademarks that are the subject of the license. The party or parties who are being granted permission to use the trademarks, namely, the licensee, will also be identified. The grant of the trademark license will specify whether the license is an exclusive or non-exclusive license. The properties being licensed, that is, the trademarks as well as any copyrights and other rights, will be identified as will the products for which the license is being allowed to use the licensed properties. The license agreement will identify the territory and specify whether the license is limited to specific trade channels. In the United States, it is necessary to include quality control provisions for the license to be valid. The license agreement will provide for compensation of the licensor, often in the form of a percent royalty, although other arrangements are also used. It will specify when payments are due, for example, within thirty days following each calendar quarter. It is customary to require the licensee to provide a report with the payment. If the license requires a percentage royalty, the royalty report will generally contain sufficient information to allow the licensor to determine whether the royalty has been correctly calculated. The licensor will usually be entitled to audit the licensee's records on a periodic basis to verify the accuracy of royalty payments. Interest may be due for under payments or late payments and the cost of the audit may be shifted to the licensee if the audit reveals a discrepancy exceeding an agreed upon amount. The license agreement may also contain indemnification and insurance provisions, representations and warranties by each party, ethics in manufacturing provisions, initial marketing and sales dates and early termination provisions among other things.


Copyrights

What does copyright protect?

The owner of a copyright has the exclusive right to do and to authorize any of the following:
1) Reproduction of the copyrighted work in copies (material objects) and phonorecords
2) Preparation of derivative works based upon the copyrighted work.
3) Distribution of copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending.
4) In the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly.
5) In the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly.


What is a derivative work?

A derivative work is a work derived from another work. A translation, musical arrangement, and sound recording are some examples of a derivative work.


What can be protected by copyright?

Copyright protection exists for original works of authorship when they become fixed in a tangible form or expression. Copyrightrable works include works in the following categories:
1) Literary works including computer programs and most compilations.
2) Musical works including any accompanying words.
3) Dramatic works including any accompanying music.
4) Pantomimes and choreographic works.
5) Pictorial, graphic and sculptural works.
6) Motion pictures and other audiovisual works.
7) Sound recordings.


What is not protected by copyright?

Titles, names, trademarks, lists of ingredients, and other short phrases and combinations of words, similar symbols and designs can not protected by copyright. For example, one court held the phrases "Telegram," "Gift Check" and "Priority Message" on envelopes to lack the minimum creativity needed for copyright protection. Basic geometric shapes, such as circles, squares, rectangles and ellipses, are also not protected by copyright. The format and typography of a work are not protected.

Works not fixed in tangible form are not protected by copyright.

Copyright does not protect mere ideas, procedures, methods, systems, processes, concepts, principles or discoveries as distinguished from a description, explanation or illustration.

Copyright does not protect names, titles, slogans, or short phrases. In some cases, these things may be protected as trademarks.

Works consisting entirely of information that is common property and containing no original authorship, for example, standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources are also not protected by copyright.


Can a website be copyrighted?

Original writings, artwork, photographs, and other forms of authorship appearing on a website can be protected by copyright.


Who owns a copyright?

Copyright is owned by the author of a work unless there is a written agreement by which the author assigns the copyright to another person or entity.
In cases of a work made for hire, the employer and not the employee is presumptively considered the author.

The authors of a joint work are co-owners of the copyright in the work unless there is an agreement to the contrary.


What is a work for hire?

A work made for hire is:
1) A work prepared by an employee within the scope of the employee's employment.
or
2) A work specially ordered or commissioned for us as a contribution to a collective work, such as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.



Is copyright registration mandatory?

No. Under present copyright law, an original work is protected by copyright as soon as it is created and fixed in any tangible medium of expression from which the work can be perceived, reproduced, or otherwise communicated, either directly, or indirectly, with the aid of a machine or device. Registration with the Copyright Office is not mandatory but there are certain significant legal benefits that arise from a timely registration.


What are the benefits of a copyright registration?

Registration is ordinarily necessary before any infringement suits may be filed in court, except in the case of foreign owners. If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.


How long does it take to obtain a copyright registration?

The Copyright Office recently reported that a copyright registration will ordinarily be issued in about thirty two weeks after the filing of an application. In special circumstances, it is possible to further expedite the issuance of a copyright registration.


What is the duration of a copyright in the United States?

For works that are created on or after January 1, 1978, copyright protection automatically begins when the work is actually created and fixed in a tangible form. The duration of copyright for a work created by a single author is the author’s life plus 70 years. In the case of "a joint work prepared by two or more authors who did not work for hire," the term lasts for 70 years after the last surviving author's death. For works made for hire, and for anonymous and pseudonymous works (unless the author's identity is revealed in Copyright Office records), the duration of copyright will be 95 years from publication or 120 years from creation, whichever is shorter.

Under the law in effect before 1978, copyright was secured either on the date a work was published with notice of copyright or on the of registration if the work was registered in unpublished form. In either case, copyright lasted for a term of 28 years from the date on which it was secured. During the last (28th) year of the first term, the copyright was eligible for renewal. The copyright law extends the renewal term from 28 years to 67 years for copyrights in existence on January 1, 1978.


What is publication?

Publication is the distribution of copies of a work to the public by sale or other transfer of ownership, or by rental, lease or lending. The offering to distribute copies to a group of persons for purposes of further distribution, public performance or public display also constitutes publication. A public performance or display of a work does not itself constitute publication.


Is a copyright notice mandatory?

The 1909 Copyright Act and the 1976 Copyright Act as originally enacted (effective January 1, 1978) required a notice of copyright on published works. Under the 1909 Copyright Act, publication in the United States or elsewhere with authority of the copyright owner without notice resulted in the work falling into the public domain. As originally enacted, the 1976 Copyright Act required that all visually perceptible published copies of a work, or published phonorecords of a sound recording, should bear a proper copyright notice. This applies to such works published before March 1, 1989. After March 1, 1989, notice of copyright on these works is optional. Use of a notice, however, is recommended.

Should a copyright notice be used?

Yes. Although use of a notice is no longer mandatory, the failure to use a copyright notice may provide an infringer with an innocent user defense.


How should a copyright notice be used?

The notice should include the symbol "©" (the letter "©" in a circle), or the word "Copyright" or the abbreviation "Copr.", the year of first publication of the work, and the name of the owner of copyright in the work.Example: © 1999 John Doe


Can copyright protection be restored for works in the public domain?

The North American Free Trade Agreement Implementation Act (NAFTA) and the Uruguay Round Agreements Act (URAA) may restore copyright in certain works of foreign origin that were in the public domain in the United States.


What is copyright infringement?

Anyone who violates the exclusive rights of the copyright owner or who imports copies or phonorecords into the United States, without the authority of the copyright owner, is an infringer of the copyright.


What remedies are available for copyright infringement?

An infringer is liable for either the copyright owner's actual damages and any additional profits of the infringer or statutory damages. Recovery is alternative and for the copyright owner to elect. If statutory damages are elected, a court may award between $750 and $30,000. The amount may be increased to a maximum of $150,000 in cases of willful infringement or reduced, in cases of certain "innocent" infringements, to $200. The amount of statutory damages may be multiplied if separate works and/or separately liable infringers are involved. If a proper copyright notice is used, then no weight will be given to a defense by an infringer on innocent infringement in mitigation of actual or standing damages. The court may also award attorneys fees to the prevailing party. However, statutory damages and attorneys fees are not available if the copyright is not registered prior to infringement or within three months of publication.


What is fair use?

Fair use is a use of a copyrighted work for purposes such as criticism, comment, news reporting, teaching, scholarship or research and is not an infringement of the copyright. due to the endless variety of situations and combinations of circumstances that can rise in particular cases, the distinction between "fair use" and infringement may be unclear and not easily decided. There is no specific number of words, lines, or notes that may safely be taken without permission. Acknowledging the source of the copyrighted material does not substitute for obtaining permission.

In determining whether a use is a fair use, the copyright law sets forth four factors to be considered:
1) The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes.
2) The nature of the copyrighted work.
3) The amount and substantiality of the portion used in relation to the copyrighted work as a whole.
4) The effect of the use upon the potential market for or value of the copyrighted work.

When it is impracticable to obtain permission to use a copyrighted work, use of copyrighted material should be avoided unless a competent legal opinion has been obtained indicating that the doctrine of "fair use" would clearly apply to the situation.


International Protection

Why is it necessary to file patent and trademark applications in foreign countries?

A United States patent or trademark registration will protect the patent owner in the United States. If foreign patent or trademark protection is desired, in general, separate applications must be filed in each country of interest.


Are there any cases in which a single patent application can be made for multiple countries?

Yes. The Patent Cooperation Treaty or PCT provides the basis for filing an international application designating multiple countries. In addition, under the European Patent Convention, a single application may designate multiple countries.


Where should foreign patent and trademark applications be filed?

Foreign patent and trademark applications are most often filed in those countries in which articles incorporating the invention or bearing the trademark will be made or sold. In the majority of foreign countries, the first person to apply for a patent is entitled to a patent and the first person to register the trademark becomes the owner of the mark.


When should foreign patent and trademark applications be filed?

Under the Paris Convention, a United States applicant is granted a right of priority. The right of priority means that a corresponding foreign application, when filed within a specified period of time, will be regarded as if they had been filed on the same day as the United States application. In the case of utility patent applications, corresponding foreign applications for patents for invention must be filed within one year of the United States application filing date. In cases of United States design patent applications and trademark applications, corresponding foreign applications must be filed within six months of the United States application date.


What is a PCT patent application?

The Patent Cooperation Treaty or "PCT" establishes an international system which enables the filing of a single "international" application in one language with a single Patent Office (a so-called "Receiving Office") having effect in each of the member countries of the PCT which the applicant may designate. The Receiving Office conducts a formal examination of the international application, an international search and issues an international search report. The foregoing procedure is referred to as the "international phase" of the PCT procedure. After having received an international search report and, where appropriate, an international preliminary examination report, an applicant can decide to amend or withdraw the application and saving the expense which would have been associated with the filing of separate applications in each country of interest.If the applicant decides to continue with the procedure, national fees must be paid for each country designated in which the applicant desires to continue the application process and the applicant then enters the "national phase" of the PCT in such countries. At that time, in those countries where such is required, the applicant must then furnish translations and pay the national fees within 20 months (or 30 months) from the priority date. Once national processing starts, the normal national procedures generally apply.


What is a EPC patent application?

An EPC patent application is a single patent application which may designate as many of approximately nineteen contracting countries who are members of the European Patent Organization. It provides a way of filing and prosecuting a single patent application in one of the official languages of the European Patent Office (English, French or German). A European patent affords the same rights in the designated contracting countries as a national patent granted in any of those countries.


Are there any cases in which a single trademark application can be made for multiple countries?

Yes, in particular, the single European Community Trademark application may be used to obtain a trademark registration covering Austria, Benelux (Belgium, Netherlands and Luxembourg), Denmark, Finland, France, Germany, Greece, Ireland, Italy, Portugal, Spain, Sweden and the United Kingdom at a cost that is much lower than that of filing separate applications in each of those countries.

In addition, effective November 2, 2003, any natural person or legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, the United States or a country which has ratified the Madrid Protocol or a country which is a member of an organization which has ratified the Madrid Protocol, can file a single application designating up to 60 countries for trademark protection.


Is protection available for designs in foreign countries?

Yes. Various forms of protection are available for protecting designs in foreign countries. In addition, in Europe, a Community Design Registration makes it possible to obtain uniform design protection throughout the European Union via a single design registration. Limited unregistered design protection is also available.

Trade Secrets

What Is A Trade Secret?

A trade secret is information of any type that is actually or potentially valuable to a business, not generally known or readily ascertainable by the public, and which the business has made a reasonable effort to keep secret. Trade secrets include data compilations such as customer lists (the more information contained, the more likely it will qualify for trade secret protection), manufacturing processes, formulas and ingredients, business plans, marketing plans, financial information, research and development, inventions and drafts of patent applications before publication.

What Can A Business Do To Protect Its Trade Secrets?

A business must use reasonable precautions to keep information secret. Reasonable precautions may include limiting access to secret information, non-disclosure agreements and non-compete agreements with employees and third parties, using passwords and firewalls to protect computerized information, physical facilities security (locked areas, warning signs) and employee education programs.

What Constitutes A Violation Of Trade Secret Laws?

Trade secret rights may be violated by unauthorized use or disclosure of the secret, or the misappropriation of a trade secret by improper means, for example, computer hacking, illegal surveillance, theft of documents, bribing a business’ employees and infiltrating secured facilities. Trade secret rights do not protect against reverse engineering of products that have been sold or independent discovery by a competitor.