Frequently Asked Questions
A property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.
“Anything under the sun that is made by man.” New and useful process, machine, article of manufacture, composition of matter, or any new and useful improvement thereof. But, there is further levels of analysis required…for an invention to be patentable it must be: Novel, Useful and Non-obvious to one having ordinary skill in the pertinent art at the time the invention was made.
What cannot be patented?
Interpretations of the statute by the courts have defined the limits of the field of subject matter that can be patented, thus it has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter. A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.
KSL Client & business owner that had been operating in Western New York for over ten years. A third party started a business with a confusingly similar name, offering the same services, and caused disruptions to Client’s business. KSL sued and third party was forced to change its name.
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 the word “Patent” and the number of the patent. The penalty for failure to mark is that the patentee may not recover damages from an infringer unless the infringer was duly notified of the infringement and continued to infringe after the notice. The marking of an article as patented when it is not in fact patented is against the law and subjects the offender to a penalty. Some persons mark articles sold with the terms “Patent Applied For” or “Patent Pending.” These phrases have no legal effect, but only give information that an application for patent has been filed in the USPTO. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.
Client was stopped at a stop light while on their way to work when another driver rear ended Client causing severe shoulder injury and damage to the vehicle. KSL sued and was able to obtain monetary damages for Client.
- If each had a share in the ideas forming the invention as defined in the claims – even if only as to one claim, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.
- Utility and plant patents are granted for a term which begins with the date of the patent and usually ends 20 years from the filing date, subject to the payment of maintenance fees. The term for Design patents is 14 years from the date the patent is granted, no maintenance fees are required for a design patent. PCT application reserves right to file patent in over 100 countries for up to 2.5 years from U.S. filing date.
- Are there any state government agencies that can help me in developing and marketing of my invention?
Yes. In nearly all states there are state planning and development agencies or departments of commerce and industry which seek new product and new process ideas to assist manufacturers and communities in the state. If you do not know the names or addresses of your state organizations you can obtain this information by writing to the governor of your state.
TRADEMARK & COPYRIGHT QUESTIONS
A trademark is a word, name, symbol or device which 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 which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office.
- No, but federal registration has several advantages, including notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
1. Constructive notice nationwide of the trademark owner’s claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in foreign countries.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
- No. However, if you are a qualified owner of a trademark application pending before the USPTO, or of a registration issued by the USPTO, you may seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an “international application,” with the he International Bureau of the World Property Intellectual Organization, through the USPTO. For more information about the Madrid Protocol, Also, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. The laws of each country regarding registration must be consulted.
- You may conduct a search free of charge on the USPTO website using the Trademark Electronic Search System (TESS). If your mark includes a design element, you will have to search it by using a design code. You may also conduct a trademark search by visiting the Trademark Public Search Library, between 8:00 a.m. and 5:00 p.m. at 2900 Crystal Drive , 2nd Floor, Arlington , Virginia 22202 . Use of the Public Search Library is free to the public. You can also conduct a search at a Patent and Trademark Depository Library near you.
Copyright protects “original works of authorship” that are fixed in a tangible form of expression. Copyrightable works are categorized as follows:
1) Literary works
2) Musical works, including any accompanying words
3) Dramatic works, including any accompanying music
4) Pantomimes and choreographic works
5) Pictorial, graphic, and sculptural works
6) Motion pictures and other audiovisual works
7) Sound recordings
8) Architectural works
- Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.
- In general, copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright. However, registration is not a condition of copyright protection. Even though registration is not a requirement for protection, the copyright law provides several inducements or advantages to encourage copyright owners to make registration.
The Sonny Bono Term Extension Act, amends the provisions concerning duration of a copyright protection. Effective immediately, the terms of copyright are generally extended for an additional 20 years. Specific provisions are as follows:
For works created after January 1, 1978 copyright protection will endure for the life of the author plus an additional 70 years. In the case of a joint work, the term lasts for 70 years after the last surviving author’s death. For anonymous and pseudonymous works and works for hire, the term will be 95 years from the year of first publication or 120 years from the year of creation, which ever expires first.
For works created but not published or registered before January 1, 1978 the term endures for life of the author plus 70 years, but in no case will expire earlier than December 31, 2002. If the work is published before December 31, 2002 to the term will not expire before December 31, 2047.
For pre-1978 works still in their original or renewal term of copyright, the total term is extended to 95 years from the date that copyright was originally secured.
- Yes. Like any other property, all or part of the rights in a work may be transferred by the owner to another.
- There are various types of entities to form – a corporation, a limited liability company, a partnership – our business attorneys will work with you to determine which entity is right for your business.
- Designated licensed professionals, such as doctors, architects, engineers, lawyers and accountants, may form a professional limited liability company or a professional corporation. Such entities enjoy the benefits of limited liability companies or corporations; however, investors are limited to those licensed in the profession.
Investors provide outside capital, which enable your business to grow. However, their investment needs to be examined, and then codified in a written agreement to ensure both parties know what is expected, and how the investment and investor’s participation in the business will affect the business moving forward.
- If not handled properly, a lawsuit against your business could significantly damage the finances and reputation of the business. When a lawsuit is commenced against your business, a summons and complaint will be served upon an officer of the company. It is vital that these documents are forwarded to your attorney immediately, in order to preserve your business’ right to answer the allegations and file any relevant counterclaims.
- In addition to conducting thorough due diligence on all potential employees, it is vital all employees sign an employment contract laying out the terms of their employment, including salary, benefits, non-compete limitations and term of their employment. Our attorneys will work with you to draft agreements that ensure fair terms, while offering protection for your business.
- Your business’ reputation and goodwill are arguably its most valuable assets. Trademarking the name of your business is essential to protecting these assets. Our intellectual property attorneys will assist you in obtaining a trademark that will allow you to market and promote your business with a federally registered trademark.
- It is important to keep your personal and business assets separate. Once you form your business, you should also set up a separate bank account, as well as obtain a tax identification number for the business.
- All names must meet the approval of the Department of State. Additionally, names of professional limited liability companies and professional corporations must be approved by the board which licenses the profession.