Q: What is a patent?

A: The grant of a U.S. patent confers upon the inventor the right to exclude others from making, using or selling his or her invention throughout the United States during the term of the patent. In order to obtain any type of patent protection, an invention must be novel and unobvious over what has been invented before. Patent protection in this country is obtained from the United States Patent & Trademark Office in Washington, DC.

There are three forms of patents: design patents, utility patents and plant patents. Design patents are granted for any new, original and ornamental design for an article of manufacture. Design patents cover the aesthetic appearance of an invention. The term of a design patent is fourteen years. Utility patents have a term of seventeen years in the United States and cover the functional features of an invention. Utility patents are granted for any new and useful process, machine, manufacture or composition of matter or for any new and useful improvement thereof.

Patent protection is governed exclusively by the scope of the claims of the issued patent. Similarly, patent protection is only effective in the country in which the patent has issued.

 Q: What is a trademark?

A: A trademark is ". . . any word, name, symbol or device, or any combination thereof used . . . to identify and distinguish one's goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown."
Trademark rights in the United States are based on use of the mark, not by registration. Accordingly, common law rights accrue from the date the mark is first used to identify goods or services. However, a trademark may be federally registered with the U.S. Patent & Trademark Office by filing an application to register the mark for certain types of products or services and paying the statutory filing fee. While registration of a trademark or service mark is not a prerequisite to establishing trademark protection for a mark, registration does offer the trademark owner substantial procedural advantages when suing an infringer. Accordingly, registration of a trademark is strongly advised.

With respect to applying for federal trademark protection, the U.S. trademark law was amended several years ago to permit the filing of "intent to use" applications. Historically, in order to receive a federal trademark registration, the applicant had to have already commenced use of the mark in commerce. With the revision to the trademark law, applicants can now register a mark with the U.S. Patent and Trademark Office based on a bona fide intent to use the mark in the future. Intent to use applications accord applicants protective rights as of the filing date of their applications, so long as the applicants do, in fact, commence use of the mark and thereby obtain a registration. Unlike patents, which only protect the underlying invention for a finite period of time, trademark protection exists as long as the owner of the mark continues to use that mark.

 Q: What is a copyright?

A: Copyright protection is provided for original works of authorship fixed in a tangible medium of expression. That means one cannot copyright an idea, only the expression of the idea. The various categories of copyrightable works include:

  • literary works;
  • musical works, including accompanying words;
  • dramatic works, including accompanying music;
  • pantomimes and choreographic works;
  • pictorial, graphic and sculptural works;
  • motion pictures and other audiovisual works;
  • sound recordings; and
  • architectural works.

Copyright rights are limited in duration to a term of the life of the author plus 50 years for individuals, or a term of 75 years from the first publication or 100 years from creation (whichever expires first) for works made for hire by employees.

Copyright rights commence upon the creation of the underlying work, and registration is not absolutely required. Registration of a copyright claim with the U.S. Copyright Office, however, is a prerequisite for commencing an action for copyright infringement.

Copyright applications are frequently filed without the services of an attorney and are the biggest bargain in the intellectual property field. The current copyright filing fee is $20 per application, and it typically takes about six weeks for the Copyright Office to process the application and issue a registration. No separate foreign filing is required. The U.S. filing achieves rights in all countries adhering to the Universal Copyright Convention or Berne Convention.

(Answer submitted by Greg Battersby, Grimes & Battersby, Three Landmark Square, Stamford, CT 06901)

 Q: Where can I obtain information about patents and the patent system?

The Patent and Trademark Office of the U.S. Department of Commerce publishes a booklet entitled "General Information Concerning Patents" which provides an excellent overview of the patent system and the operations of the Patent and Trademark Office. The booklet costs $2.25 and may be obtained by writing to:

Commissioner of Patents and Trademarks
Washington, DC 20231

(Answer submitted by Robert Neuner, Brumbaugh, Graves, Donohue & Raymond, 30 Rockefeller Plaza, New York, NY 10112)

 Q: If I obtain a patent, does it give me the right to make the device which is the subject of the patent? Do I have to wait until the patent issues to begin selling?

No, to both questions. Unlike an issued trademark registration, which does provide the owner the right to use that mark, a patent only provides the owner with the right to exclude others from using the invention.

Because a patent may cover only a portion of a commercial item, the issuance of a patent is no guarantee that there are not other outstanding patents for other portions of that device. Merely as an example, consider a standard wooden pencil with an eraser on the end. While someone may have obtained a patent relating to the eraser at the end of the pencil, the patent for a writing stick (the lead) embedded in a wooden sheath (the main pencil body) was probably patented by someone else.

On the other hand, since the patent provides no "right to use," there is no need to wait for issuance to begin marketing.

(Answer submitted by Martin E. Goldstein, Darby & Darby, 805 Third Avenue, New York, NY 10022)

 Q: If a company obtains its own patent on a product, can that product be kept off the market?

Even if a company obtains its own patent on a product, that product could be kept off the market if it infringes another party's patent rights. This underscores the need for a pre-market product clearance that the product does not infringe another party's patent(s). The clearance should be undertaken early enough in the product development schedule to complete a thorough review. If a potential conflict is uncovered, there is sufficient time to determine whether the patent claims are valid, since only valid claims may be infringed.

(Answer submitted by Alice C. Brennan, Verizon Wireless, One Verizon Way, Basking Ridge, NJ 07920)