Intellectual Property Law (IP)
Intellectual Property Law is that body of laws and regulations protecting property rights found in artistic works, inventions, source identifiers, and business secrets. These property rights can generally divided into four main categories: copyrights, patents, trademarks and trade secrets.
Public Domain
The Public Domain characterizes the status of an invention, creative work, or commercial symbol that is not protected by any form of intellectual property law. Items in the Public Domain are available for free copying and use by anyone.
International Intellectual Property Law
International Intellectual Property Law consists of a multitude of multilateral and bilateral agreements among nations that are aimed at protecting intellectual property rights worldwide and making intellectual property law uniform across nations. Some of these agreements are “TRIPS” (Agreement on Trade-Related Aspects of Intellectual Property Rights), the Berne Convention, the Madrid Protocol, the Paris Convention for the Protection of Industrial Property, and the Patent Cooperation Treaty.
Intellectual Property Law in the United States
The United States affords protection to intellectual property in the form of patents, copyrights, trademarks, and trade secrets, as well as through antitrust and unfair competition laws. The U.S. Patent and Trademark Office oversees the issuance of patents and trademarks while the Library of Congress has authority over the registration of copyrights.
Copyrights
Copyrights protect original works of authorship, such as writings, music, and works of art that have been tangibly expressed. A Copyright allows the creator of a work of art to exclude others from reproducing it, adapting it, distributing it to the public, performing it in public, or displaying it in public.
Registering Copyrighted Works
The Registering of Copyrighted Works can be accomplished by submitting the required documents to the Library of Congress. Registering a copyrighted work is a prerequisite to bringing a copyright infringement lawsuit, and may serve as the marker from which an award of damages, legal costs, and attorneys’ fees is calculated.
Patents
A patent is a property right granted to an inventor to exclude others from, inter alia, making, using, offering for sale, or selling the invention for a limited time in exchange for public disclosure of the invention.
Patent Prosecution
Patent Prosecution refers to the process of applying for a patent and having the application examined by the Patent Office. This process, which often can take several years, involves the submission of information disclosure statements, signature and assignment documents, and responses to Office Actions.
Patent Marking
In the United States, a patentee who makes or sells patented articles, or a person who does so for or under the patentee is required to mark the articles with word “patent,” together with the applicable patent number. Improperly marking a patented product, or failing to mark it at all, limits a patentee’s ability to recover damages for patent infringement. While a patent application is on file at the U.S. Patent and Trademark Office, the product or service may be mark with "Patent Pending".
Trademarks
A Trademark is a word, slogan, design, picture, sound, shape of a product or container, or any other symbol used to identify and distinguish goods or services. Trademarks signify that all goods or services bearing the mark come from or are controlled by a single source and are of an equal level of quality. A Trademark is infringed by another if the second use causes confusion of source, affiliation, connection, or sponsorship.
Registering a Trademark
A Trademark can be federally registered by submitting an application to the U.S. Patent and Trademark Office, either electronically or by mail. Registering a trademark heightens the protection it receives, deters others from using the mark, and increases the remedies available should someone infringe the mark.
Opposition – Preventing the Registration of a Trademark
Once a trademark application has been examined by the U.S. Patent and Trademark Office, it will be published for Opposition for 30 days. During this time, anyone who believes that their mark will be damaged by the published mark can initiate a trademark opposition proceeding before the USPTO’s Trademark Trial and Appeal Board to prevent the registration of the applied-for mark. (see also Cancellation Proceeding)
Trade Secrets
A Trade Secret is business information that is the subject of reasonable efforts to maintain its confidentiality and has value from not being generally known in the field. Intellectual property law affords protection to such confidential information against those who obtain access through improper means or by a breach of confidence. Trade secrets are the subject of the state law.
Unfair Competition
The law of Unfair Competition is primarily comprised of torts that cause an economic injury to a business through a deceptive or wrongful business practice. Trademark infringement, misappropriation, false advertising, “bait and switch” selling tactics, and tortuous interference with business relationships are examples of conduct prohibited by the law of Unfair Competition.
Intellectual Property Litigation
Intellectual Property Litigation encompasses many causes of action such as patent infringement, copyright infringement, trademark/trade dress infringement, internet and domain name disputes, and misappropriation of trade secrets/unfair competition, in addition to the many complex issues inherent in the arena of intellectual property law.
License
A License, in the context of intellectual property law, is an agreement which provides a licensee certain exclusive or non-exclusive rights to use intellectual property owned by the licensor pursuant to certain agreed upon terms and conditions. A license allows the licensor to maintain some ownership over the intellectual property that is the subject of the license, and to exercise continuing control over how the licensee uses the intellectual property.
Assignment
An Assignment, in the context of intellectual property law, is the transfer of ownership of intellectual property rights from one entity to another. Once an original owner transfers his/her rights to a third party by Assignment, he/she can no longer exercise control over how the third party uses those rights.
Due Diligence
Due diligence is the process of reviewing, analyzing and accounting for the intellectual property rights of an individual or company, such as industrial know-how, customer lists, goodwill in the company’s name, proprietary technologies, and copyrighted works. There are a number of circumstances that might necessitate due diligence, such as the anticipation of a sale or merger of a company.
Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty (PCT) is an international patent law treaty that provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application or PCT application.
United States Patent and Trademark Office (USPTO)
The United States Patent and Trademark Office (USPTO) is the government agency responsible for granting patents and trademarks. Their office is located in Washington, DC. For more information, visit their website at www.uspto.gov.
European Patent Office (EPO)
The European Patent Office is the European equivalent of the United States Patent and Trademark Office, and is the patent granting authority for Europe. Its offices are located in Munich, The Hague, Berlin, Vienna and Brussels. For more information, visit their website at www.epo.org.
Japanese Patent Office (JPO)
The Japanese Patent Office is the Japanese equivalent of the United States Patent and Trademark Office, and is the patent granting authority for Japan. The main office is located in Tokyo, but specialized departments are located throughout the country. For more information, visit their website at www.jpo.go.jp.
Library of Congress
The Library of Congress is the United States depository for copyrighted works. Their office is located in Washington, DC. For more information, visit their website at: www.loc.gov or the Copyright Department’s office at www.copyright.gov.
Cancellation Proceeding
A proceeding before the Trademark Trial and Appeal Board in which the plaintiff seeks to cancel an existing registration of a mark. The proceeding may only be filed after issuance of a registration. A petition for cancellation may be filed by any person who believes that he or she is or will be damaged by the registration of the mark. (see also Oppoisition – Preventing the Registration of a Trademark)
Claim
Define an invention and what is legally enforceable monopoly of the patent owner. The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his or her invention or discovery. The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable (clearly understood) by reference to the description.
Continuation
A second application for the same invention claimed in a prior nonprovisional application and filed before the first application becomes abandoned or patented.
Counterpart Application
An application filed in a foreign patent office that is substantially similar to (like) the patent application filed with the U.S. Patent and Trademark Office and is based upon some or all of the same invention. The two applications would generally have the same applicant.
Design Patent Application
An application for a patent to protect against the unauthorized use of new, original, and ornamental designs for articles of manufacture.
Information Disclosure Statement
A list of all patents, publications, U.S. applications, or other information submitted for consideration by the Patent Office in a non-provisional patent application to comply with applicant's duty to submit to the Patent Office information which is material to patentability of the invention claimed in the non-provisional application.
Informal Application
An application that has been filed without one or more of the elements required to receive a filing date. The U.S. Patent and Trademark Office will return informal applications to applicants.
International Application
An application filed under the Patent Cooperation Treaty.
Issue Date
The date that a patent application becomes a U.S. patent. The issue date is the date that patent rights can be exercised. U.S. patents are always issued on Tuesdays.
Maintenance Fees
Fees for maintaining in force a patent based on an application filed on or after December 12, 1980.
National Stage Application
An application which has entered the national phase of the Patent Cooperation Treaty by the fulfillment of certain requirements in a national Office, which is an authority entrusted with the granting of national or regional patents.
Nonprovisional Patent Application
An application for patent that includes all patent applications (i.e., utility, design, plant, and reissue), except provisional applications. The nonprovisional application establishes the filing date and initiates the examination process. A nonprovisional utility patent application must include a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing fee.
Office Action
An Office Action is correspondence from the Patent Office setting forth a particular position, typically rejecting or objecting to claims.
Patent Pending
A phrase that often appears on manufactured items indicating a patent application has been filed on an invention that is contained in the manufactured item. It serves as a warning that a patent may issue that would cover the item. Once the patent issues, a phrase, such as "covered by U.S. Patent No. XXXXXXX" would then be appropriate.
Plant Patents
Plant protection is available to protect invented or discovered, asexually reproduced plant varieties.
Prior Art
Prior art emcompasses all information that has been disclosed to the public which may relate to an invention before a certain date (called the critical date). This prior art includes patents, which are material to the examination of the application, as well as any related published articles or public views of demonstrations of a product or service embodying the invention.
Provisional Patent Application
A provisional application for patent is a U.S. national application for patent filed in the U.S. Patent and Trademark Office under 35 U.S.C. § 111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a nonprovisional patent application filed under 35 U.S.C § 111(a) and automatically becomes abandoned after one year. It also allows the term "Patent Pending" to be applied.
Request for Continued Examination (RCE)
A request filed in an application in which prosecution is closed (e.g., the application is under final rejection or a Notice of Allowance) that is filed to reopen prosecution and continue examination of the application.
Reexamination Proceeding
At any time during the enforceability of a patent, any person may file a request for the U.S. Patent and Trademark Office to conduct a second examination of any claim of the patent on the basis of prior art patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability. In order for the request for reexamination to be granted, a substantial new question of patentability must be present with regard to at least one patent claim.
Reissue Application
An application for a patent to take the place of an unexpired patent that is defective in one or more particulars (items or details). A Reissue Application seeking to broaden claim coverage can only be filed within two years after the date of issue of the patent.
Restriction
If two or more independent and distinct inventions are claimed in a single application, the Examiner may require the Applicant to elect (designate) a single invention to which the claims will be restricted (limited to). This requirement is known as a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action (final rejection).
Small Entity
For purposes of small entity determination, per MPEP 509.02 - means an independent inventor, a small business concern, or a nonprofit organization eligible for reduced patent fees.
Specification
A written description of the invention and the manner and process of making and using the same.
Terminal Disclaimer
A statement filed by an owner to disclaim or dedicate to the public the entire term or any portion of the term of a patent or patent to be granted. A Terminal Disclaimer may be filed for the purpose of overcoming a judicially created double patenting rejection.
Utility Patent
A Utility Patent may be granted to anyone who invents or discovers any new, useful, and nonobvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.
World Intellectual Property Organization (WIPO)
An intergovernmental organization of the United Nations system which is responsible for the promotion of the protection of intellectual property throughout the world and for the administration of various multilateral treaties dealing with the legal and administrative aspects of intellectual property. |
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