Patents
USPTO definition:
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. . . . What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.
The subject matter of a patent MUST be:
1. Useful,
2. Novel, &
3. Non-Obvious
General Information Concerning Patents from the USPTO.
PATENTABILITY--The patent statute sets forth three basic requirements or conditions for determining the patentability of a product or process--utility, novelty and nonobviousness. An applicant must be an original inventor (i.e., not have derived the subject matter from some other source) and must apply within one year of certain events that constitute potential statutory bars (e.g., public use). The Patent and Trademark Office determines the patentability of each claim during examination. After a patent issues, it is presumed valid. However, a party charged with infringement may contest the validity of any claim by showing noncompliance with the conditions of patentability.
1 Chisum on Patents GL1 (2019)
Utility Patent
USPTO definition:
"granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof"
- Term = generally 20 years from date of filing
- Maintenance fees required
-
E.g., US 4,787,847 (Sonicare®)
Design Patent
USPTO definition:
"granted to anyone who invents a new, original, and ornamental design for an article of manufacture"
- Term = generally 14 years from date of issue
- No maintenance fees required
- E.g., US D384,364 (Oakley eyeglass frame front)
Plant Patent
USPTO definition:
"granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant"
- Term = generally 20 years from date of filing
- No maintenance fees required
- E.g., US PP22,501 (Miniature Rose Plant Named ‘KORkihot’)
Trademarks
A trademark identifies the source of goods. USPTO definition:
"A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name."
USPTO Trademark Portal
Example:
®University of Washington
A trademark can be a word, symbol, phrase, or other type of distinguishing mark. The mark must be sufficiently distinctive (i.e., capable of identifying the source of a particular product).
There are 4 levels of distinctiveness:
| Distinctiveness | Meaning | Level of Protection |
|---|---|---|
| Arbitrary or fanciful | no logical relationship to the underlying product | Strong Protection |
| Suggestive | evokes or suggests a characteristic of the underlying product | Strong Protection |
| Descriptive | directly describes the underlying product | Possible Protection |
| Generic | describes the general product category | No Protection |
Grounds for USPTO to refuse a trademark include:
- Confusingly similar to an existing mark
- Merely descriptive
- Deceptively misdescriptive
- Primarily merely a surname
For more information, see USPTO's "Possible Grounds for Refusal of a Mark."
- Legal presumption of exclusive right to use mark nationwide on or in connection with goods or services identified in the registration.
- Legal presumption of ownership.
- Public notice of ownership.
- Mark is recorded with USPTO.
- Ability to record with U.S. Customs and Border Protection.
- Right to sue in federal court.
- Use as basis for foreign registration.
- Use federal trademark registration symbol—®.
Copyrights
U.S. Copyright Office definition:
"Copyright refers to the author's (creators of all sorts such as writers, photographers, artists, film producers, composers, and programmers) exclusive right to reproduce, prepare derivative works, distribute copies, and publicly perform and display their works. These rights may be transferred or assigned in whole or in part in writing by the author. Unless otherwise agreed in writing, work created by an employee is usually owned by the employer. "
| The duration of most copyrights is the life of the author plus 70 years. For more information about the duration of copyrights, see U.S. Copyright Office, Circular 15. |
The U.S. Copyright Office is a separate department within the Library of Congress.
"Original works of authorship" are copyrightable.
Copyrightable works include:
- Literary works
- Musical works, including any accompanying words
- Dramatic works, including any accompanying music
- Pantomimes and choreographic works
- Pictorial, graphic, and sculptural works
- Motion pictures and other audiovisual works
- Sound recordings
- Architectural works
The following are NOT copyrightable:
x Ideas, procedures, methods, systems, processes, concepts, principles, or discoveries
x Works that are not fixed in a tangible form
x Titles, names, short phrases, and slogans
x Familiar symbols or designs
x Mere variations of typographic ornamentation, lettering, or coloring
x Mere listings of ingredients or contents
x Works created by federal government employees as part of their job
For more information, see U.S. Copyright Office, Circular 1.
Copyright protection is automatic when an original work is fixed in a tangible form. Registration is NOT required to confer copyright protection.
According to the U.S. Copyright Office, Circular 1, registration of a copyright has the following benefits:
- Before an infringement suit may be filed in court, registration (or refusal) is necessary for works of U.S. origin.
- Registration establishes prima facie evidence of the validity of the copyright and facts stated in the certificate when registration is made before or within five years of publication.
- When registration is made prior to infringement or within three months after publication of a work, a copyright owner is eligible for statutory damages, attorneys’ fees, and costs.
- Registration permits a copyright owner to establish a record with the U.S. Customs and Border Protection for protection against the importation of infringing copies.