From the January 1999 issue of Entrepreneur

You've heard the terms: patent, trademark and copyright. You've seen the symbols: ®, (TM) and ©. But do you really know what they mean? Your ideas are known as "intellectual property"--and if you want your ideas to remain under your control, you need to protect them. Here are some basic facts about the different types of intellectual property protection available to you under U.S. laws, in response to common questions I've received from readers:


Tomima Edmark, the woman famous for her Topsy Tail invention has now turned her creative talents to the competitive retail arena of intimate apparel, HerRoom and HisRoom.

Patents

What is a patent? A patent is a grant of protection for an invention. It's granted by the U.S. Patent and Trademark Office (PTO) and has a term of 14 to 20 years. Owning a patent gives you the right to stop someone else from making, using or selling your invention without your permission.

Who can apply for a patent? Only an inventor may apply for a patent on his or her idea. If two or more people participate in the creation of an invention, the law requires that all participants apply for a patent as joint inventors. A person applying for a patent on an idea he or she did not directly invent is subject to criminal penalties and invalidation of the patent, if one was issued. A person making only a financial contribution to an invention can't be named as a joint inventor.

Are there different kinds of patents? Yes, and the following are the two types of patents that entrepreneurs use most often:

A design patent provides protection on the appearance or ornamental design of your invention. It is generally cheaper, simpler to file and more easily accepted by the PTO than other types of patents. However, its overall protection isn't as effective as a utility patent because the invention's design can be changed many times, thus helping others who want to use your design avoid patent infringement. Its term is 14 years.

A utility patent protects the function or method of your invention. This patent is more complicated than a design patent because it requires you to explain how your invention is used. A utility patent is usually more expensive to obtain, requires more input from an attorney, and is more difficult to have issued by the PTO. Its protection is greater than that of a design patent, however, because patenting a method or function provides stronger, broader coverage. A person trying to make a product similar to your patented one must avoid all the claims of your patent. The utility patent's term is 20 years. Most inventions can be filed as a design patent, utility patent or both.

Is there a test to determine whether my invention is patentable? Yes. To receive a design patent, your invention must pass these tests:

  • It must have a new, original and ornamental design.
  • The novel features of your design must not be obvious.

To receive a utility patent, your invention must pass four tests:

1. Statutory-Class Test: Your invention can reasonably be classified as a process, machine, manufacture, composition or a "new use" of any one or more of these classifications.

2. Utility Test: Your invention is considered useful.

3. Novelty Test: Your invention has a feature that sets it apart from previous inventions and is unknown to the public.

4. "Unobviousness" Test: Your invention's novelty must not be obvious to someone who has ordinary skill in the area of your invention. For example, if your invention is a hairbrush, the uniqueness of its design must not be obvious to someone who uses a hairbrush every day.

How do I know if my idea has already been patented? A search can be performed on all existing patents. This patent search will tell you whether other patents have already been issued that may disclose or suggest your invention. You can perform a patent search on your own, use the Internet or hire a patent researcher.

To perform a search on your own, simply find the nearest public library that has been designated as a Patent and Trademark Depository Library. They are staffed with knowledgeable librarians who can assist you in your search.

If you have Internet access, you can use two Web sites to perform a search. The first site is http://www.uspto.govThis site is sponsored by the PTO and allows you to search existing patents. The second site is http://www.patents.ibm.com, which is maintained by IBM and is more comprehensive. It allows you to do more sophisticated searches and displays drawings of the patented products.

You can find a professional patent searcher by looking in the Washington, DC, Yellow Pages under "Patent Searchers." These people actually go to the PTO search room where the most current information is available. This type of search is the most accurate, although it can be expensive. Average fees for searches start at $200.

How do I know if a product on the market is patented? Products marked with a "patent pending" or "pat pend" have patents filed with the PTO that have not yet been issued. When you see a product with the legend "patent" or "pat" followed by the patent number, this product has received a patent from the PTO.

Where do I file a patent application? The Assistant Commissioner for Patents, Washington, DC 20231.

How can I get more information? Call (703) 308-4357 or (800) PTO-9199.

Trademarks

What is a trademark? A trademark is like a brand name. It is any word(s) or symbol(s) that represent a product to identify and distinguish it from other products in the marketplace. A trademark word example would be "Rollerblades." A trademark symbol would be the peacock used by NBC.

How do I establish a trademark? A trademark can be registered in three ways:

1. By filing a "use" application after the mark has been used.

2. By filing an "intent to use" application if the mark has not yet been used.

3. In certain circumstances in which a foreign application exists, you can rely on that.

When can I use the (TM) and ® symbols with my trademark? The (TM) mark may be used immediately next to your mark. The ® registration symbol may only be used when the mark is registered with the PTO. It is unlawful to use this symbol with your mark before receiving an issued registration from the PTO.

What qualities make for a strong trademark? The cardinal rule is that a mark must be distinctive. The more distinctive it is, the easier your trademark will be to enforce. This is why so many trademarked products have unique spellings.

How long does a trademark last? Trademark rights last indefinitely if the company continues to use the mark to identify its goods or services. When the mark is no longer being used, the registration is terminated. The initial term of federal trademark registration is 10 years, with 10-year renewal terms.

Where do I file a trademark application? The Assistant Commissioner for Trademarks, 2900 Crystal Dr., Arlington, VA 22202-3513.

How can I get more information? Call (703) 308-HELP or (703) 557-INFO.

Copyrights

What is a copyright? A copyright is the legal protection of the way someone expresses his or her idea. This kind of protection is awarded mostly to authors, artists, composers and software programmers. A copyright only protects the particular arrangement of words or the way something looks. It does not protect the subject matter or information communicated. For example, only an exact copy of the word order constitutes copyright infringement of a book or part of a book.

What types of works can be covered by a copyright? Books, plays, songs, poetry, catalogs, photographs, computer programs, advertisements, movies, labels, drawings, maps, sculptures, prints, game boards and rules, and recordings.

What types of works can't be covered by a copyright? Titles, slogans, lettering, ideas, forms, facts, mailing lists, directories and U.S. government publications.

When does a copyright begin? A copyright exists automatically upon the creation of the work. Thus, no registration is necessary.

When can I use the © symbol with my work? Works published after March 1, 1989, no longer need to display the © notice. However, this symbol reminds anyone seeing the work that copyright protection is being claimed.

When should I file my work with the U.S. Copyright Office? If someone infringes upon your work, you must first file your work with the Copyright Office before going to court to collect damages. However, if you register within three months of publication or before you are infringed upon, you may be able to collect attorney fees, costs and damages that don't have to be proved by you.

How long does copyright protection last? Copyright protection lasts for your lifetime plus 50 years and needs no renewals. Copyrights awarded before 1976 last for 28 years with one 28-year renewal.

Where do I file a copyright application? Library of Congress Copyright Office, Register of Copyrights, 101 Independence Ave. S.E., Washington, DC 20559-6000.

How can I get more information? Call (202) 707-3000 or visit http://lcweb.loc.gov/copyright