INTELLECTUAL PROPERTY SEARCHING PRIMER (Patent, Trademark, Copyright)
For many entrepreneurs, it is in their best interest to at least know how to perform some basic searches of intellectual property assets.. By Dennis JM Donahue III, ©2017
PatentsGoogle Scholar (http://scholar.google.com) is a good place to start a search for inventions that may be similar to an innovation that is currently being considered by a business. The search is very similar to regular Google searches: enter search terms in the search field as if you are looking for an existing product and then adding the term "invention" at the end of the search. Sometimes, an entrepreneur with an idea that is initially believed to be an innovation in the field may learn after performing a search that the innovation occurred decades earlier and the patent may be expired. Other times, a business team looking for a solution to a problem may find that another non-competing company has a patent on a similar problem in a different field, and they may reduce their development time and costs by licensing in the inventive technology. If an inventor has an innovative idea, it is important to remember that US patent applications must be filed WITHIN ONE YEAR of any public disclosure or sale (including an offer for sale). Most other countries PROHIBIT obtaining patent protection if the applicant fails to file the application BEFORE any public disclosure or sale. Many entrepreneurs in the US take advantage of the one-year grace period; they are willing to give up patent protection abroad to begin marketing activities before they file their patent applications.
TrademarksThe USPTO has some good information about trademark protection (link to USPTO trademark information website - www.uspto.gov/trademarks-getting-started/trademark-basics). You may want to look at the video under "How Do I Select a Strong Mark?" or check out the Basic Facts manual that the USPTO publishes. We recommend that you have a professional perform a search before you begin using a new mark or expand an existing mark into new territories or use it with new goods or services. Failing to do so can potentially result in unexpected expenses associated with rebranding as well as the loss of goodwill with a brand that you thought would grow with your business. Please do not just take my word for it; check out the USPTO's explanation about avoiding the pitfalls of the unwary (www.uspto.gov/trademarks/basics/private_attorney.jsp) and review the USPTO's Basic Facts manual for background (www.uspto.gov/trademarks-getting-started/trademark-basics). I also understand that many times, it would be helpful for an entrepreneur to determine whether they may even have a chance to obtain trademark protection that might fit with a domain name. In such a case, the entrepreneur can search the trademark registry using the Quick Links tab on the right side of the USPTO home webpage (www.uspto.gov) and select the search tool (TESS). For the most important trade name of a business and the brand names of the business' products (which may be different), I also recommend checking on the availability of the domain name (yes, even with all of the new top-level domains (TLD) on the internet, the Dot Com TLD (".com") is still king. Use a registrar search or a who.is search to determine whether your name is available as a domain name.
CopyrightsTo search copyrights, go to the Copyright Office website (www.copyright.gov) and select "Search Copyright Records" under RESOURCES on the left side of the home webpage. Unless you are an expert in copyright law, please do not think that you will be able to perform a search and determine whether the use of some image or text is fair use. If you think that it's a fair use, good luck & look at what the Copyright Office says (www.copyright.gov/help/faq/faq-fairuse.html).
Call to ActionIf you want to learn more about searching for IP assets and strategies to more efficiently protect your IP assets or determine whether you need the right to use someone else's IP assets, give Dennis Donahue a call and ask for a consultation. This general information cannot substitute for an attorney's counsel on your rights; speak to an attorney about your IP assets -don't wait until it's too late.