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The information you obtain at this site is not, nor is it intended to be, legal advice. You should consult an attorney for individual advice regarding your own situation.

Copyright © 2005 - The Webb Law Firm.
All rights reserved.  You may reproduce materials available at this site for your own use and for non-commercial distribution.  All copies must include this copyright statement.

  

                  Frequently Asked Questions
 Q.  How can I tell if my idea for a new product is patentable?
A.  To obtain a U.S. patent, your invention must meet certain requirements.  The subject matter must fall into accepted categories, e.g. compositions of matter, plants, machines, manufacturing methods, computer-related inventions and business methods.  Certain things are not patentable, e.g. discovery of a new property of a known material or mathematical algorithms.  Your invention must be novel — not known or used by others or appear in print before your date of invention.  Also, it cannot be sold or even offered for sale or appear in print more than one year prior to the time of application.  Finally, it must not be obvious to one skilled in the art (technical area of invention), as assessed by evaluating differences between your invention and what is known at the time of application. A search of existing patents and published applications can tell you if someone has already tried to patent your invention.

Q.  When does an invention not warrant a patent?

A.  Many inventions do not warrant a patent. You can generally manufacture a product without one, assuming it does not infringe someone else's patent. A patentable invention is generally defined as an invention that is novel and not obvious. Obtaining a U.S. patent can cost thousands or tens of thousands of dollars and take three or more years. Fad items and recipes usually do not justify protection. Patenting a fad item, with a life span of three or fewer years, makes no financial sense since issuance will probably occur after it runs its course.  Recipes generally are not patentable or can be difficult patents to enforce. Therefore keeping a secret, like the COCA-COLA® syrup recipe, can sometimes be more valuable than exposing a patented formula to the world.  In these cases, it’s best to spend money on marketing instead of patenting.

Q.  I recently discovered a competitor’s patent that covers my product. I don’t think the competitor knows about my product, so can I just ignore the patent?

A. Once you become aware of a patent covering your product, you have a duty of care to avoid infringement. There is no affirmative duty to search for patents before selling a product. However, if a patent is discovered and ignored and a court later finds the patent to be infringed, the infringement can be considered willful, and increased damages up to three times the amount of actual damages as well as attorney fees may be awarded. To fulfill the duty of care and avoid willful infringement, a patent attorney should be consulted to evaluate the scope of any known patent. A legal opinion of non-infringement can protect you from damages for willful infringement. However, if the product infringes the patent, you could consider licensing the patent or re-designing the product.   
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Q.  Our company obtained a patent on our new product that’s selling like hotcakes, but our competitor accuses us of patent infringement.  How can that be?

A.  Owning a patent does not automatically allow you to sell your patented product. Instead, it gives you the right to prevent others from making, using or selling it.  Your product may be patentable, but your competitor may own a different, broader patent that covers your product.   Example: Eraser Company may patent a pencil with a unique rubber tip.  Pencil Company, however, may already have a broader patent claiming a lead-based writing instrument, which encompasses any type of pencil.  In one solution, cross-licensing may allow each to use the other’s patented technology.  A patent attorney can provide definitive answers and offer further solutions for patent infringement issues.  
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Q.  Should my company keep its important developments as trade secrets?

A.  Some say a company’s most important assets are kept in its employees’ minds.  Retaining those assets as trade secrets is a challenge due to the mobility of today’s workers and the potential for disclosure to a new employers. The United States and foreign patent systems provide a mechanism for protecting new developments by granting limited monopoly rights, in  exchange for disclosure of how to practice an invention. The risk of another company copying a patented invention without the patent owner’s knowledge is limited when compared with the ongoing risk of disclosure in attempting to maintain that development as a trade secret.  Careful consideration should be given to the tradeoffs between the requirements of full disclosure in patents and the risks of trade secrets.
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Q. What is a trademark and what do the ®, sm  and ™ symbols mean? 

A. A trademark identifies the source of goods or services. Simply using a mark gives an owner certain rights to prevent others from using it or similar marks.  ™ is used with trademarks and sm with service marks to notify the public of an owner’s rights in the mark.  A mark used in interstate commerce may be registered with the U.S.  Patent and Trademark Office if it is distinctive (not descriptive) and not confusingly similar to any marks.  Registration entitles an owner to use ® to advise and warn the public of the owner’s rights in the mark, and to more easily enforce his/her rights in the mark.  Marks used in intrastate commerce may be registered in a state registry, but may only use ™.
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Q.  Years ago, I developed an invention but never pursued it.  Last week, I saw the same invention advertised by a national  company.  Since I came up with the invention first, can I file a patent application now?
A. Probably not.  Generally, the first person to conceive an invention and reduce it to practice has the right to patent the invention. However, this right can be lost if the invention is abandoned, suppressed or concealed.  A major purpose of the patent system is to encourage people not only to make useful inventions but also to disclose them to the general public so that the public can benefit from the technology.  Barring any reasonable excuse for failing to diligently apply for a patent, your rights to the invention may have been lost.
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Q.  I have a new product idea that I want to disclose to third parties. However, I’ve heard that patents are expensive, and I don’t want to invest a lot of money for a patent application unless there is some interest.  What can I do to protect my idea?

  A. You should consider filing a provisional patent application. A provisional application provides an inventor with a relatively inexpensive method of filing an application prior to disclosure. Preparing and filing a provisional application is generally less expensive than a traditional patent application since it requires only a disclosure of an invention. It also postpones for up to one year the filing of traditional U.S. and foreign patent applications for the invention, while enabling applicants to benefit from the filing date of the provisional application.
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Q. I had some photographs taken of my children at a photography studio.  Can I have additional prints made at my local drugstore or scan the  photograph and make my own prints without the permission of the  original photographer?
A. No. You purchased and own only the particular prints supplied to you. All rights to reproduce the photographs (the copyrights) are retained by the photographer, who is typically an independent contractor.  Some photographers make this clear by placing a copyright notice (©, owner's name, and possibly year) on the front or rear of the prints, but their copyright protection exists even if the copyright notice is missing. The federal copyright law gives strong protection to creators of works, and no transfers of copyrights are effective (except under certain employer/employee work-for-hire situations) unless they are made in writing. 
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Q. Is there more than one type of patent in the United States?
A.  Yes.  There are three types of patents under current U.S. law.  A utility patent is enforceable for 20 years from filing, and it ends with written claims, which define the protected invention, much like a property description in a deed.  A design patent protects new, original and ornamental designs for an article of  manufacture (e.g., an ornamental faucet).  These patents are good for 14 years from grant, and drawings in the patent define the protected invention.  Plant patents protect asexually reproduced plant varieties, such as new and distinct geraniums.  When someone speaks of getting a patent for his or her invention, he/she is usually referring to a utility patent. 
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Q. Someone wants to license my invention.  What do I do?
A. The best course of action is to establish a written agreement with the interested party based on negotiated terms. The agreement should identify the technology, specify the rights granted to the interested party (such as the right to make and sell the invention), set forth the financial terms (such as a royalty rate based on quantity of units sold or total revenue), and set a term. The rights may be exclusive, where one party has rights to the invention, or non-exclusive, where multiple parties can have rights to the invention under other agreements. A patent is particularly suited as a mechanism for defining the boundaries of the granted technology. Patent protection should therefore be obtained on an invention as early as possible. 
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Q. Someone registered my trademark as his domain name (URL).  What can I do?
A. There are two main paths to "taking your name back" from the cybersquatter:  the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Anticybersquatting Consumer Protection Act (ACPA).  Both actions focus on the confusing similarity between your mark and the URL, the URL owner's use of the site, and the URL owner's bad faith.  In both actions, the bad faith factors are similar and center on why the URL owner registered the name.  The URL owner has various defenses to these factors, such as preexisting rights or fair use.  Due to ACPA jurisdictional requirements, the UDRP is particularly useful in connection with foreign registrants.  While both actions provide for URL transfer, money damages are only available under the ACPA.
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Q. How do I know whether someone has already patented my idea for a new invention?

 A. Conducting a search of United States issued patents and pending applications is a good way to begin.  The United States Patent and Trademark Office provides a free search tool at its www.uspto.gov  web site.  Searching can identify whether  someone has already received a patent covering your idea.  A patent attorney can assist with the search or conduct one for you.  Identifying any relevant patent “art” will enable your patent attorney to advise as to what level of patent protection may be available for your invention, before you commit to the expense of preparing and filing an application.  The patent attorney can provide guidance in identifying possible patentable subject matter relating to your invention. 
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Q. Do I need a working model of my invention before I can get a patent? 

 A. No.  All that is needed is a patent application, featuring a description of your invention, that must be filed with the United States Patent and Trademark Office.  This document must be sufficient to permit someone with skill in the field of your invention to duplicate it without undue experimentation.  Even if you have only a few rough sketches, a skilled patent attorney will be able to talk with you about your invention to prepare and file such an application.  If you feel you have a valuable invention, it is best to at least speak with a patent attorney as soon as possible, since there are events that may occur, such as offering your invention for sale, which may preclude you from seeking patent protection.
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Q. Do I have to patent a new technology in the United States first?
A. If you are a U.S. citizen or even just live or work in the U.S.,  you should file the U.S. patent application before filing patent applications outside the U.S.  A U.S. patent application usually precipitates a Foreign Filing License (FFL),  which is a type of  export license.  Obtaining an FFL is not just a formality.  The U.S. Department of Defense sometimes denies FFLs to patent applications directed to technologies whose export might affect national security, such as detonators, explosives, some chemicals, certain biologicals, etc. 
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Q. My  friend invented a software program that he wants to  patent.  During  the development of the program, I assisted him by providing  suggestions.  Am I a joint  inventor of the invention even though the software program wasn’t my idea and my  friend  did most of the work?

 A. An  inventor is someone who creates an original device, idea  or process, pursues its development, and whose contribution is essential  to the development of the invention. A  person may be considered a joint inventor with one or  more other  persons, even though that person did not make the same  type or amount of contribution to the invention.  If your assistance  consisted of conceiving of an idea or strategy that was  essential to the development of the invention, then you are  a joint inventor, notwithstanding that your friend thought  of  the idea for the invention and spent more time on its  development.
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Q. I recently developed a unique software application. What intellectual property protections are available to me?

 A. Protection of your intellectual property in software can take many forms. Source code, on-screen artwork, and packaging design may be protected by obtaining federal copyrights.  Software may be patented if the computing device on which the source code operates produces a useful, concrete, and tangible result.  Additionally, methods of doing business, such as on the Internet, through specific software and hardware implementation, may also be patented.  While patenting requires full disclosure of the software to the public, it can instead be protected via trade secret law.  The software owner must be confident that the source code would ordinarily not be obtained through reverse engineering or unauthorized employee disclosure.  Finally, the commercial name of a software application may be protected through trademark law.
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Q. What is a design patent, and how is it infringed?

 A. Under U.S. law, a patent may be granted for “any new, original and ornamental design for an article of manufacture…”  Design patents are directed to ornamental  features (as opposed to functional) for a term of 14 years from issuance. The test for determining infringement is based partly on an 1872 Supreme Court decision: “If in the eye of an ordinary observer…two designs are substantially the same…as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first…is infringed by the other.”  For a design patent to be infringed, the accused design must appropriate the novelty in the patented design which distinguishes it from prior art.  Thus, even though the two items are compared through the eyes of the ordinary observer, infringement requires similarity to be attributed to the novel aspect that distinguishes the patented design from prior art. 
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Q. Is it possible to obtain trademark rights for something other than the brand name of my product? 

 A. Yes.  Typically, we think of trademarks as words, whether found in a  dictionary or coined by trademark owners.  However, some of the best known trademarks do not involve words or letters at all.  Trademarks can take the form of distinctive graphical designs or logos, the fanciful use of colors, non-functional product configuration or packaging, or even sounds.  While it is difficult, time-consuming and costly to create an association between these types of non-traditional trademarks and the source of those goods, they are often more valuable in the long run.  Non-traditional trademarks are also extremely useful in symbolizing the goodwill associated with an owner’s brand. 
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Q.  When and how should I identify my product as being patented?  

A. The words “patent pending” or abbreviation “pat. pend.” may be included on a product for which patent protection has been applied but not yet obtained.  That marking can provide a marketing advantage and legal notice of a patent that may issue in due course.  Once the patent issues, the product (or its packaging) should be marked with the word “patent” or the abbreviation “pat.”, together with the patent number. Marking a product with a patent number provides a mechanism for giving notice to the public that a product is patented.  If a product is not properly marked with the patent number, no damages will be awarded for infringement of the patent, unless the infringer was notified of the infringement and continued to infringe even after such notice.
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Q.  How do I stop all of these junk e-mails from jamming up my inbox?  

A. The CAN-SPAM Act or Controlling the Assault of Non-Solicited Pornography and Marketing Act was made effective in January 2004, and this Act includes new rules for those sending you these unwanted e-mails (spam).  The Act provides penalties enforceable against these “spammers,” and explains the recipient’s rights.  These spammers are now required to: accurately identify themselves; provide their physical address; identify the communication as an advertisement; remove misleading subject lines; and, importantly, provide the recipient with a way of “opting out” of receiving any future communications.  Specifically, the spammer must provide the recipient with a link or response mechanism for use in automatically “opting out” of  receiving future communications, or types of communications.  The penalties for violation of the Act include fines, and even imprisonment, dependent upon the spammer’s activities.  There are also local laws governing unsolicited e-mails in Pennsylvania.
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