• Definitions: Intellectual Property

• Confidentiality - NDA Protection

• Trade Secret

• Patents, Trademarks & Copyrights

• Royalty - License Agreements

  * Disclaimer  The information provided in this section is for general reference only and you should always check with your attorney prior to any legal intellectual property investment

 A patent is a set of exclusive rights granted by a state to a patentee for a fixed period of time in exchange for a disclosure of an invention, to exclude others from making, using, offering to sell, selling, or importing in that country.  There are three primary types of patents: Design, Utility and Plant patent.  Other examples of patents for inventions include biological patents, business method patents, chemical patents and software patents.  The procedure for granting patents, the requirements placed on the patentee and the extent of the exclusive rights vary widely between countries according to national laws and international agreements.  Typically, however, a patent application must include one or more claims defining the invention which must be new, inventive, and useful or industrially applicable. The exclusive right granted to a patentee in most countries is the right to prevent or exclude others from making, using, selling, offering to sell or importing the invention. A patent number is assigned and typically marked or labeled with the specific patent number filed in the USPTO.

     To acquire a patent, full disclosure about the method or product has to be formally submitted to the patent bureau, examined and then officially approved.   Once granted, the specific written claims, drawings or illustrations will then be made available to the general public.   After term expiration of the patent, competitors can copy the method or product legally. The temporary monopoly on the subject matter of the patent is regarded as a quid pro quo, thus disclosing the information to the public. 

Typical Patent Attorney - Intellectual Property legal services:

• Opinion Letters
• Clearance Letters
• Non-Provisional Patent Applications
• Provisional Patent Applications
• International Patent Applications
• Watch Services & Enforcement
• Assignments
• Licensing Programs

General Guidelines

    A Copyright symbolized "©" generally seeks to protect literary, artistic and other creative works.  Some examples include: plays, movies, musical compositions, audio recordings, paintings, drawings, sculptures, photographs, software, radio and television broadcasts of live and other performances

     A Trademark symbolized "™" is defined as is a formal "name", word, phrase, graphic logo, symbol, design, image, or a combination of these elements.  Granted trademark rights are valid as long as it is used in commercial business with appropriate refilling procedures.  Trademark rights must be reissued or they are forfeited if not used or abandoned with in a 5 year term in most countries.

     A Provisional Patent is a "written only" protection - based on non provisional application within 12 months. 

     A "Patent Pending" status or "patent applied for" is an official reference to a patent application to potential infringers that has been filed, but prior to the patent being granted.

     Patent Infringement is a legal proceeding seeking compensation for someone or company who directly copies the whole or some part of a patent, becoming liable for damages (including back-dated royalties), seizure, and injunction from the date the patent is granted.

    A Design Patent is based on ornamental drawings and is valid for a 14 term limit.  An example is the Coca-Cola contour bottle (See below).  Design patents can be invalidated if the design has practical utility, (i.e. the shape of a simple gear).
    
     A Utility Patent is based on the individual written claims and supporting drawings and prior art.  The most important aspect of a patent is the claim or claims which must point out and distinctly declare the intent, layout and solution of the subject matter which you regard as the invention.  The claims define the scope of the protection of the patent and the choice of wording of the claims is critical to a patent and the examiner granting such claims as patentable. Depending on the country of origin, term limit of the patent in the United Sates is 20 years from the filing date.

     All patent drawings, applications and papers become part of the permanent records of the USPTO and must be typewritten or produced by a mechanical (or computer) printer.  The text must be in permanent black ink with no gradation or shading or its equivalent; on a single side of the white, vertical layout (portrait orientation) paper, without holes. The paper size must be either:

• 21.6 cm. by 27.9 cm. (81/2 by 11 inches), or
• 21.0 cm. by 29.7 cm. (DIN size A4).

     There must be a left margin of at least 2.5 cm. (1 inch) and top, right, and bottom margins of at least 2.0 cm. (3/4 inch). Drawing page requirements are discussed separately below.  The pages of the applications - specifications including claims and abstract, must be numbered consecutively, starting with 1, with the numbers centrally above or preferably below, the text.  The lines of the specification must be double spaced (1.5  lines).  It is desirable to include an indentation at the beginning of each new paragraph, and for paragraphs to be numbered ("[0001]", "[0002]", "[0003]" etc.).  The drawings must show every feature of the invention as specified in the claims. Omission of drawings can cause an application to be considered incomplete, contested or rejected.

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Design Patent

     The design patent is based ornamental design only   It may apply to a  functional design or model including ornamental designs applications such as jewelry, furniture, beverage containers and fashion, computer icons among others  Protection includes limitations on a  use, coping or importing a protected design .

Example: U.S. Design Patent. # 48,160 for the original Coca-Cola® bottle.
 

Provisional Patents

     The United States Patent and Trademark Office (USPTO) offers a provisional application for patents entitling Applicants to claim the benefits an invention in a corresponding non-provisional application filed not later than 12 months after the provisional application filing date.

Utility Patent

There are three types of utility:

1. General utility - requirement of functionality / industrial application.
2. Specific utility - requirement that the invention actually perform the function.
3. Moral, or beneficial utility

     The patent examiners guidelines require that a utility patent application express a specific, credible, and substantial utility or function.  Function defined as the property of something which is used, applied for an objective, or specific goal, purpose or scope.  Patent claim rejection usually requires documentary evidence establishing a prima facie showing of no specific and substantial credible utility.  Prima facie meaning "on its first appearance", or "by first instance", used to signify that on first examination, a matter appears to be self-evident from the facts.  A "working prototype model" is usually highly recommended to provide "proof of concept" and demonstrate actual industrial application or reduction to practice, although a model is not a requirement of the U.S. patent law.  The utility or functional industry application provisions are mainly used to prevent the patenting of inoperative devices such as perpetual motion machines.  European patent law does not consider utility as a patentability criterion, but it requires that an invention must have industrial applicability to be patentable.

• Utility Patent Application Transmittal Form or Transmittal Letter
• Fee Transmittal Form and Appropriate Fees
• Application Data Sheet
• Specification (with at least one claim)
• Drawings (when necessary)
• Executed Oath or Declaration
• Nucleotide and/or Amino Acid Sequence Listing (when necessary)

Utility Model

      A Utility Model, available in some countries but not the U.S., is similar to the patent, but typically has a shorter term of 6 or 10 years and looser acceptance practices for patentability requirements.   A Utility Model is a intellectual property right granted for a limited time to an inventor, but more suited to "incremental inventions".  Currently, countries and regions that provide utility model protection include: Australia, Argentina, Armenia, Austria, Belarus, Belgium, Brazil, Bulgaria, China, Colombia, Costa Rica, Czech Republic, Denmark, Estonia, Ethiopia, Finland, France, Georgia, Germany, Greece, Guatemala, Hungary, Ireland, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Malaysia, Mexico, Netherlands, OAPI, Peru, Philippines, Poland, Portugal, Republic of Korea, Republic of Moldova, Russian Federation, Slovakia, Spain, Tajikistan, Trinidad & Tobago, Turkey, Ukraine, Uruguay and Uzbekistan.^[1]   Terms such as "petty patent", "innovation patent", "minor patent", and "small patent" may also be considered to fall within the definition of "utility model". A "utility innovation" is available in Malaysia.  

       Definition and interpretation of utility model law varies internationally. For example, in Germany and Austria the utility model, called the "Gebrauchsmuster", is only considered to be new if it does not form part of the state of the art.  The state of the art comprising any knowledge made available to the public by means of a written description or by use within the country, before the date relevant for the priority of the application.  Description or use within the six months preceding the date relevant for the priority of the application shall not be taken into consideration if it is based on the conception of the applicant or his predecessor in title. (Utility Model Law § 3 Abs. 1). This is in sharp contrast with Spanish patents for which absolute novelty is required.  In Spain, the novelty requirement for obtaining a utility model (Spanish: modelo de utilidad) is "relative", i.e. only public written disclosure of the invention is prejudicial against the novelty claimed in the utility model.^[2]