IP BITS CAN SAVE YOU BIG - Intellectual Property Protection (Patent, Trademark & Copyright)
These little bits of information about intellectual property (IP) law on patents, trademarks & copyrights can save you BIG when you are prioritizing the protection of your IP assets. By Dennis JM Donahue III, ©2012, 2014-2016
Patents- 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.
- We typically recommend that our clients at least file their provisional patent applications as soon as possible. A timely filing can be important because the US patent system has transitioned from the "first-to-invent" system that we had for over 200 years to the "first-to-file" system. We still have the one-year grace period in the US, but the first-to-file system means that if you have been secretly working on an invention for a period of time and someone else comes up with the same invention and files their patent application before you file your application, the second inventor who had filed the application before you has priority patent rights to the invention over you.
- Most inventors have heard about the provisional patent application process in the United States, but few have heard about the Extended Missing Parts Program (EMPP) that allows applicants to defer significant costs for another year AFTER the one-year pendency of the provisional application. If you want to learn more about EMPP applications, give me a call or check out the USPTO's in depth article (www.uspto.gov/inventors/independent/eye/201103/missingparts.jsp).
- CreatiVenture(R) Law prepares provisional patent applications for as low as $2,500, and this includes at least one set of patent claims defining the invention (the full utility patent application can have up to three sets of claims for the USPTO's basic filing fee).
Trademarks- 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. If you want to hear it from an authoritative source, 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).
- There is no legal obligation for owners of common law marks (trademarks or service marks) to register their marks with United States Patent & Trademark Office (USPTO), yet there are over two million active trademark registrations and applications in the USPTO registry of marks. There must be some compelling reasons for businesses to spend their time and money to obtain these registrations. If you want to know some of these reasons, ask us for a copy of our article on the advantages of trademark registration for federal trademark protection. When working with CreatiVenture(R) Law, the cost to protect a mark is small compared to the increased value of the mark that comes from a USPTO registration on a well documented application.
- CreatiVenture(R) Law performs most knockout searches for $250 and files first applications for $950 (including the filing fee of $225 or $275) and subsequent applications for $750.
Copyrights- WARNING: Do not take other people's pictures, artwork, music or writings from the internet & think that you can freely use them for your business, and make sure your web developer is using works that they have the right to use!!! Many people have thought that their web developers had licenses to use pictures and artwork in the design of the business' website only to find that the web developer MISAPPROPRIATED & INFRINGED someone's copyrighted work. Who gets stuck in this case, the business owner who many times does not have an indemnification from the web developer. 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).
- When hiring an independent contractor to create a logo (or any other work of art or authorship, including software), you had better make sure that you get an assignment of the copyright to the work. Many business owners believe that since they paid for the work, they should own the copyright, and they think the work is automatically covered under the "work for hire" doctrine - WRONG. Under copyright law, absent a properly executed agreement, the work for hire is limited to employees and independent contractors own the copyright in their works.
- IMPORTANT NOTICE ON COPYRIGHT PROTECTION- FILE IMMEDIATELY
If you expect that someone may want to copy from your creative work, it is in your best interest to register the copyright IMMEDIATELY. As the Copyright Office notes in its basic primer (www.copyright.gov/circs/circ01.pdf), you MUST register a copyright within three (3) months after publication or prior to the infringement of the work in order to obtain statutory damages and attorneys' fees. If you do not "pre-register" your copyrightable work, "only an award of actual damages and profits is available to the copyright owner." It could take more money to prove the actual damages than you can get in damages so pre-registering the copyright is the most cost-effective protection that you have because you DO NOT NEED to prove statutory damages which can be up to $30,000 for each infringement. When the cost to apply for copyright is considered relative to the expense of trying to prove actual damages, the value is clear. At CreatiVenture(R) Law, we provide flat fee copyright application services, such as $350 for filing a standard copyright application which includes filing fees up to $55. More complicated copyright applications, such as trade secret software programs or a family of works, can be as low as $500.
Your Call to ActionIf you want to learn more about any of these topics and other strategies to more efficiently protect your IP assets, give Dennis Donahue a call and ask for a FREE primer. 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.