Intellectual Property Clinic
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Recommended Videos
Basic Facts: Trademarks, Patents, and Copyrights
Roadmap to Filing a Patent Application
Recommended Links
PATENT PROCESS OVERVIEW
This provides a timeline of what to expect at each stage of the patent process and the requirements of each stage.
http://www.uspto.gov/patents-getting-started/patent-process-overviewEFS-WEB E-PETITION QUICK START GUIDE
EFS-Web e-Petition Quick Start Guide gives the process, requirements, and suggestions for filing a number of forms using the EFS-Web
http://www.uspto.gov/sites/default/files/patents/process/file/efs/guidance/epetition-quickstart.pdfCONTENT ABOUT PATENTS
USPTO's main content page regarding patents.
http://www.uspto.gov/patentFROM CONCEPT TO PROTECTION
This provides a timeline of what to expect at each stage of the patent process and the requirements of each stage.
http://www.uspto.gov/patents-getting-started/patent-process-overviewHOW TO DO A PRELIMINARY PATENT SEARCH
INVENTOR RESOURCES
PATENT PRO SE, PRO BONO, AND LAW SCHOOL CLINIC CERTIFICATION PROGRAMS
Frequently Asked Questions
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. 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. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.
See http://www.uspto.gov/patents-getting-started/general-information-concerning-patents#heading-10
An invention is defined by the USPTO to be “any art or process (way of doing or making things), machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the patent laws of the United States.”
An inventor is further defined to be “one who contributes to the conception of an invention. The patent law of the United States of America requires that the applicant in a patent application must be the inventor.”
The U.S. Patent and Trademark Office (USPTO) issues several different types of patent documents offering different kinds of protection and covering different types of subject matter.
Patents generally fall into the following main categories:
- Utility Patent- Issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof, it generally permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the date of patent application filing, subject to the payment of maintenance fees. Approximately 90% of the patent documents issued by the USPTO in recent years have been utility patents, also referred to as "patents for invention".
- Design Patent- Issued for a new, original, and ornamental design embodied in or applied to an article of manufacture, it permits its owner to exclude others from making, using, or selling the design for a period of fourteen years from the date of patent grant. Design patents are not subject to the payment of maintenance fees.
- Plant Patent- Issued for a new and distinct, invented or discovered asexually reproduced plant including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, it permits its owner to exclude others from making, using, or selling the plant for a period of up to twenty years from the date of patent application filing. Plant patents are not subject to the payment of maintenance fees.
- Reissue Patent- Issued to correct an error in an already issued utility, design, or plant patent, it does not affect the period of protection offered by the original patent. However, the scope of patent protection can change as a result of the reissue patent.
See http://www.uspto.gov/web/offices/ac/ido/oeip/taf/patdesc.htm
According to the law, the inventor, or a person to whom the inventor has assigned or is under an obligation to assign the invention, may apply for a patent, with certain exceptions. If the inventor is deceased, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is legally incapacitated, the application for patent may be made by a legal representative (e.g., guardian). If an inventor refuses to apply for a patent or cannot be found, a joint inventor may apply on behalf of the non-signing inventor.
If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes only a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as an inventor.
If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes only a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as an inventor.
See http://www.uspto.gov/patents-getting-started/general-information-concerning-patents#heading-10
The Pro Se Assistance Program is the United States Patent and Trademark Office's comprehensive pilot to expand outreach to inventors who file patent applications without the assistance of a registered patent attorney or agent (also known as "pro se" filing).
See http://www.uspto.gov/patents-getting-started/using-legal-services/pro-se-assistance-program
If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes only a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as an inventor.
If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes only a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as an inventor.
See http://www.uspto.gov/patents-getting-started/general-information-concerning-patents#heading-10
A patent application is subject to the payment of a basic fee and additional fees that include a search fee, an examination fee, and issue fee. Consult the USPTO website for the current fees.
To give you a sense of cost, however, filing fees would be, at a minimum, $400 (micro entity), $730 (small entity), and $1600 (large entity).
If the owner of the invention is a small entity, (an independent inventor, a small business concern or a nonprofit organization), most fees are reduced by half if small entity status is claimed (furthe reductions are possible if you qualify as a micro entity status). Applicants claiming small entity status should make an investigation as to whether small entity status or micro entity status is appropriate before claiming such status.
Most of the fees are subject to change in October of each year.
See http://www.uspto.gov/patents-getting-started/general-information-concerning-patents#heading-16
A patent is “the right to exclude others from making, using, offering for sale, or selling the invention in the United States or ‘importing’ the invention into the United States.”
A trademark on the other hand is “a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others.”
Copyright is defined as “a form of protection provided to the authors of "original works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.”
Thus, a patent protects the manufacturing and sale of an invention, a trademark protects a symbol or name, and copyright protects “works of authorship”.
See http://www.uspto.gov/patents-getting-started/general-information-concerning-patents
The protection afforded by a patent does not start until the actual grant of the patent.
See http://www.uspto.gov/patents-getting-started/general-information-concerning-patents
If you want your invention to be protected such that other entities cannot produce, sell, or otherwise use the invention without permission then you should consider disclosing it via a patent application. You cannot protect your invention or stop someone else from filing for a patent unless you disclose your invention and file for a patent.
The only exception to this would be a trade secret, defined as “information and can include a formula, pattern, compilation, program, device, method, technique or process.” But a trade secret does not protect the information from discovery and use by another. It only protects from unauthorized disclosure.
Trade secret protection is an alternative to patent protection. Patents require the inventor to provide a detailed and enabling disclosure about the invention in exchange for the right to exclude others from practising the invention for a limited period of time. Patents do expire, and when that happens the information contained within is no longer protected. However, unlike trade secrets, patents protect against independent discovery. Patent protection also eliminates the need to maintain secrecy. While most anything can be kept secret, there are limitations on what can be protected by a patent. If a given invention is eligible for either patent or trade secret protection, then the decision on how to protect that invention depends on business considerations and weighing of the relative benefits of each type of intellectual property.
Recommended Videos
Basic Facts: Trademarks, Patents, and Copyrights
What Every Small Business Should Know
Recommended Link
USPTO CONTENT ABOUT TRADEMARKS
USPTO's main content page regarding Trademarks:
http://www.uspto.gov/trademark
Frequently Asked Questions
A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks.
Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks that are used in interstate or foreign commerce may be registered with the USPTO. The registration procedure for trademarks and general information concerning trademarks can be found in the separate book entitled “Basic Facts about Trademarks.”
See http://www.uspto.gov/trademarks/basics/Basic_Facts_Trademarks.jsp
A patent is “’the right to exclude others from making, using, offering for sale, or selling’ the invention in the United States or ‘importing’ the invention into the United States.”
A trademark on the other hand is “a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others.”
Copyright is defined as “a form of protection provided to the authors of "original works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.”
Thus, a patent protects the manufacturing and sale of an invention, trademark protects a symbol and/or name and copyright protects “works of authorship”, or artistic works.
See http://www.uspto.gov/patents-getting-started/general-information-concerning-patents
The registration is valid as long as you timely file all post registration maintenance documents. You must file a "Declaration of Use under Section 8" between the fifth and sixth year following registration. In addition, you must file a combined "Declaration of Use and Application for Renewal under Sections 8 and 9" between the ninth and tenth year after registration, and every 10 years thereafter. If these documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated. For more information see Maintain/Renew a Registration.
See http://www.uspto.gov/learning-and-resources/trademark-faqs
It is difficult to predict exactly how long it will take an application to mature into a registration, because there are so many factors that can affect the process. Generally, an applicant will receive a filing receipt approximately three weeks after filing, which will include the serial number of the application. All future correspondence with the USPTO must include this serial number. You should receive a response from the Office within six to seven months from filing the application. However, the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.
See http://www.uspto.gov/learning-and-resources/trademark-faqs
The filing fees for an application filed electronically through the Trademark Electronic Application System(TEAS) are as follows:
- $225 per class of goods or services for a TEAS Plus application that meets the requirements of 37 C.F.R. §2.22;
- $275 per class of goods or services for a TEAS Reduced Fee (TEAS RF) application that meets the requirements of 37 C.F.R. §2.23; or
- $325 per class of goods or services for a TEAS Regular application, which does not have the additional requirements of a TEAS Plus or TEAS RF application.
The fee for applications filed on paper is $375 per class of goods or services.
If your application is filed based on a bona fide intent to use the mark in commerce, additional documents and fees will be required at a later time.
See http://www.uspto.gov/learning-and-resources/trademark-faqs
The registered trademark symbol may only be used once the mark is accepted and registered. However, your right to use the mark begins as soon as you use it in commerce providing that no one has previously registered or used the same mark.
No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.
- constructive notice to the public of the registrant's claim of ownership of the mark;
- a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
- the ability to bring an action concerning the mark in federal court;
- the use of the U.S registration as a basis to obtain registration in foreign countries; and
- the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.
Yes. But you must comply with all of the regulations and requirements of the trademark Statutes and Rules.
See http://www.uspto.gov/trademarks-getting-started/trademark-basics/how-do-i-file-trademark-application and http://www.uspto.gov/trademarks-getting-started/trademark-process