I'm often asked questions about patents, trademarks and copyrights. While this is a complex field with highly individualized circumstances, there are still some commonalities I've come across through experience with my own invented products, as well as through associates and colleagues.
I've consulted my trusted advisor, Intellectual Property Specialist Stuart West of West & Associates , to help offer accurate information and answer some of the questions I'm most frequently asked. Before we get to the questions, however, I'd like to provide a quick definition of each to start with:
- Trademark: Trademarks identify a source of goods or services (for instance, iPod is a trademark of Apple and Band-Aid is a trademark of Johnson & Johnson). Once registered, no one else may use it.
- Copyright: A copyright protects published or unpublished literary, scientific or artistic work that grants the creator the exclusive right to reproduce, prepare derivative works, distribute, perform and display the work publicly.
- Patent: A patent is a right granted by a government to an inventor, giving the inventor the exclusive right, for a limited period, to stop others from making, using or selling the invention without the permission of the inventor.
Now that these terms are defined, here are some of the questions I've encountered, with answers that apply to each of the three forms of intellectual properties:
Can you create something that's a derivation of a product on the market?
Trademark: Within trademark law, there's no such thing as a derivative mark. However, your mark can't confuse the public. (See the text below regarding how to determine if your "derivative" mark is different enough.)
Copyright: As I noted below, if you base your work on the work of another, you have created a derivative work. The original author has all rights to the original work and all derivative works. Therefore, creation of a derivative work is copyright infringement.
Patent: This is where patents differ from the former two types of intellectual property. As long as your invention doesn't infringe the claims of another current patent, you can create any type of derivation you like. In fact, under patent law (unlike copyright law), you're free to base your idea on somebody else's idea or issued patent. If the claims in the patent don't cover the idea, you're free to make and use it because it has effectively been donated to the public.
The classic example is microchips. They all pretty much do the same thing, but there are at least five different manufacturers in the market--Intel and AMD, just to name two. Occasionally, there are patent battles between the giants, but for the most part their engineers spend hours with patent attorneys figuring out how to "design around" a particular patent that the competition owns.
How different is different enough when it comes to obtaining exclusive rights?
Trademark: Remember this: Trademark law is designed to protect the public, to prevent them from being confused by the competition. The key term here is "likelihood of confusion." Provided there is none, your trademark is different enough. But exactly what defines "likelihood of confusion?" Ask yourself (your neighbors, friends, family, etc.) this in regard to your trademark: "If I were a consumer and I saw these two marks, would I be confused as to which one belonged to which company?" If the answer is yes, then the marks are probably too similar. If the answer is no, then there's probably enough differentiation.
Copyright: Anybody who has ever written a paper for school knows that you are allowed to "borrow" small pieces from other people's work and include them in your own (provided you cite the work, of course!). This "borrowing" is referred to as a "fair use." On the flip side, you can't copy the whole document and just put quotation marks around it. This type of "borrowing" is generally referred to as plagiarism or copyright infringement.
So...to determine if you're infringing on someone's copyright, examine it this way: Have you "borrowed" so much of the work that the purchase/reading of the original work is less worthwhile? If so, you've exceeded the fair use limits and have committed copyright infringement.
Another issue when it comes to copyright infringement is called "derivative works"--this is when your work is based on somebody else's work. Because the original author has the right to protect their original work and all derivative works, you can't create a derivative work. Your work must be an original work of authorship. While you can use the underlying ideas conveyed in someone else's work, you can't use the words or the manner in which those ideas are conveyed. For example, you couldn't take a bestselling book by another author and write the sequel yourself. While the analogy here relates to print, the same principles apply to graphics, video, sculpture or any visual, auditory or tactile work protected by copyright.
Patent: The answer to "how different is different enough" in patent law lies in the claims. If your product, for instance, includes all the elements listed in another product's claims (even if yours has more elements), you are likely infringing the patent. This is referred to as literal infringement. For example: your new widget is made up of A, B, C and D, and Peter Patentholder's widget is made up of A, B and C. If you make, use or sell your widget, it would likely be literal patent infringement. I use "likely" because without seeing the actual product and the actual claims, it's impossible to make the determination--the exact words of the claims are critical to the interpretation of the claims.
There's another type of infringement that falls under the term "doctrine of equivalents." Under the doctrine of equivalents, certain items from the claims can be substituted with other equivalent items. To extend the example above: Perhaps Peter's claim said that A and B were held together with a fastener, while in your invention, A and B are held together with Velcro. Is Velcro equivalent to a fastener? Although it depends on what the specification (body of the patent application) says and what courts have recently held, Velcro would most likely be considered equivalent to a fastener. (Thus, an infringement.) However, without the exact words from the claims and the specification, it's impossible to make an accurate determination.
With the complexity of these issues and technical language involved, it isn't difficult to see why I always recommend consulting a professional when an inventor has specific questions in this area; specifically, a registered patent attorney rather than a patent agent. Patent agents are generally qualified to help you apply for a patent, but may not provide opinions regarding infringement.
How do you revive a "dead" patent?
First, let's talk about utility patents as opposed to provisional patents (provisional patents are "temporary" patents, used by many inventors as a way to preserve their ability to file a utility patent for an additional 12 months). I've found that when most people refer to a "patent" they're referring to a "utility" patent.
If you unintentionally abandoned your utility patent or utility patent application by failing to pay maintenance fees or file a timely response, and the extended statutory period hasn't expired since fees were due, you may be able to revive your patent/patent application. Of course, you'll need to pay the Patent and Trademark Office a fee for revival plus all past-due fees, but generally revival is possible.
However, if your utility patent has expired, you're most likely out of luck. Once a utility patent expires, the invention belongs to the public--it's said to be in the public domain. There are some rare exceptions where patent term adjustments (which weren't previously granted) can extend the term of a patent, but they're extremely uncommon and very costly to argue. Moreover, even if a patent term adjustment is granted near the expiration of a patent's life, it usually only extends the patent term a couple of months.
Now, if you're trying to revive a provisional patent application, forget it! Provisional patent applications are only valid for one year from the date of filing. This term can't be extended. While you can file a new provisional application and/or file a full patent application, you won't get the benefit of the date of filing of your earlier provisional application.
Do I need a non-disclosure agreement (NDA)?
Non-Disclosure Agreements (NDA) are designed to do two things: 1) prevent a "public disclosure" of your idea to preserve future patent rights, and 2) give you some recourse if the person you tell discloses your confidential information to a third party.
There's a common misperception when it comes to NDAs. An NDA simply prevents the signatory, for a limited period of time, from disclosing confidential information--period. It doesn't prevent another party from developing your idea or a similar idea, as a patent would do. And if it's drafted to include a clause to prevent future development of similar ideas, few, if any, manufacturers will sign them. So now let's get specific about NDAs and each type of intellectual property:
Trademark: There'ss no such thing as a secret trademark, because they're always used as public identification. While you may want to keep your trademark quiet until you're ready to debut it to the public (just to prevent anybody trying to file for registration before you), it generally won't harm your mark if you disclose it. In fact, public use in interstate commerce is required prior to obtaining a Federal Trademark registration, and use within your state is usually required prior to filing an application for a state trademark registration. (TIP: Simply start using your mark, adding a "tm" to the end.)
Copyright: Under copyright law, you have copyright rights the moment your work is "fixed in a tangible means of expression." This means that the minute you put pen to paper or work into your sculpture, you have rights under copyright law. To preserve rights and get certain remedies, you can register your copyright. (TIP: Whether you register or not, you can simply mark your work; e.g., Copyright (c) 2006 by Tamara Monosoff--All Rights Reserved). However, even if you don't do it officially, you still have some rights. Thus, unless you have some reason for limiting the number of eyes that are going to view your work, there really isn't much reason to have an NDA for works protected under copyright.
Patent: If you ever intend to file for a patent outside of the United States, you must use an NDA. This is because almost every nation's laws state that if you make a Public Disclosure of your idea, before filing a patent application, you have effectively donated your idea to the public. Thus, if you ever intend to file overseas--even if it's ten years from now, you must use an NDA if you haven't filed a patent application.
If you don't intend to file outside the United States, then an NDA isn't actually necessary, but proceed at your own risk. For your information, the United States has a slightly different rule: Provided you file your patent application within one year of your first public disclosure, you can still obtain patent rights.
In general, while it's not usually imperative to have a signed NDA, it can still be a good idea to document the fact that you told somebody your idea, showed them your copyrighted work, or told them about your trademark...and to get them to agree to keep it confidential. If someone hesitates or refuses to sign the NDA, ask yourself if you really trust this person. (Note, however, that some large companies have strict policies against signing them, so be sure to ask why if someone refuses.)
If you elect to proceed without an NDA, just be sure you know who you're dealing with and be 100% certain that you never plan to file a patent application outside the United States. Moreover, always keep accurate records about what you've disclosed, to whom and when.
For further information on these intellectual property topics and more, visit West & Associates at www.iplawhelp.com . Good luck!