Overview of Intellectual Property

Intellectual property can be a tricky area of law. It deals with unique products of the human mind that are made into reality. The law provides mechanisms to protect some of these products. Such products can include inventions, songs, various works of art, business names, and business logos. These are otherwise known as intangible assets (non-physical). The policy behind intellectual property law maintains that certain products of human intellect deserve the same protective property rights that apply to tangible assets (physical). 

Businesses and individuals should seek these legal protections when they want to prevent any unauthorized making, use, copying, or sales of their intellectual property. This is especially important as exclusivity, even for a limited period of time, can be a truly valuable asset for individuals and businesses. Having intellectual property can enhance the value of other assets with which it is associated, such as a business’s name and goodwill. We are here to help businesses and individuals obtain and maintain protection in the following areas:

  • Patents 
  • Trademarks
  • Copyrights

Patents

A patent grants its owner a variety of exclusive rights that pertain to their invention. The rights that are provided to a patent owner include, the right to prevent anyone who is not a licensee or a co-owner of the patent from making, using, selling (or offering for sale), and importing the patented invention, for the duration of the patent’s life. In exchange for this right, the patent owner must make all information about the invention publicly available in a document that is published by the United States Patent and Trademark Office. Unfortunately patents do not last forever and they cannot be renewed, but they do provide one with time to exclusively capitalize on their invention.  

First to File (the date you file matters)

Since 2011, the United States has operated on a “first to file” basis. This means (in most cases) that whoever files an application in the United States Patent and Trademark Office first, gets priority to the patent rights if the patent is granted. Inventors can find themselves in a race to the patent office to file an application, especially if they suspect others are attempting to create the same invention. Patent applications are usually complex, and expensive. Mistakes can ruin an entire application, and as a result, cause the loss of a filing date. It is critical to get things right the first time, which is why our attorneys are here to help. 

Types of Patents

There are several types of patent applications to consider, depending on the nature of the invention.

Utility Patent

  • Utility patents apply to those individuals who invent, discover, or improve any new and useful process, machine, article of manufacture, or composition of matter. These patents last 20 years from their earliest effective filing date. 

Plant Patents

  • Plant patents apply to those individuals who invent or discover and subsequently reproduce a plant in an asexual manner. There are only two types of plants the patent office will not issue a patent for, even if the above requirements are met. These are tuber propagated plants and plants found in an uncultivated state. A plant patent lasts for 20 years from the earliest effective filing date. 

Design Patents

  • Design patents apply to those individuals who invent a new, original, and ornamental design for an article of manufacture. The design itself cannot be functional in relation to the article itself. If the design is essential to the functional use of the article, it can not be the subject of a design patent. For example, various technology companies will get design patents on their phones. Apple has one for the Iphone. In fact a large lawsuit was conducted over the validity of a design patent for the iPhone’s round “home button”, along with other patented design features. Design patents last for 15 years from the date the patent is actually issued. 

Requirements to Qualify for a Patent

When thinking about getting a patent, consider the requirements that the United States Patent and Trademark Office used to determine that patentability of an invention/innovation:

  1. The invention/innovation needs to be a patentable subject matter. Think physical and functional. The laws of nature cannot be patented, theories cannot be patented, pure intellectual concepts cannot be patented
  2. The invention/innovation needs to actually be new (aka novel). This is where the filing date comes into play as the novelty of your invention is determined in comparison to what existed before your filing date. 
  3. The invention/innovation cannot be obvious. This is a tricky requirement because there is no set measurement to determine what is an obvious improvement or variation to something prior and what is not.
  4. The invention/innovation needs to be functionally useful (aka utility). In essence this means that the invention needs to actually do what the patent claims it can do and according to how the patent says it should be made or performed. 
  5. The invention/innovation must NOT have been publicly disclosed prior. This requirement trips up a lot of applications. In essence, the patent must not have been publicly disclosed or on sale prior to the application. However, there is a grace period for this requirement.  

Where You Will Have Protection

The area of protection for a patent depends on the application filed. Any nationally filed application will provide legal protection in only that country. However, disqualifying content for patent applications (“prior art”) can still come from anywhere in the world. Many countries also participate in an international application option as well. This is known as a PCT application (Patent Cooperation Treaty). All participating countries that are designated in a PCT application will receive protection from the one PCT application. 

How Long Does the Application Process Take?

The patent application isn’t a short process as hundreds of thousands of applications are filed each year. Once filed, an application can take several years before it is even examined. That is why people often see the words “patent pending” on certain products. 

Services We Provide

  • Preliminary Patent Search
  • Patent Application and Prosection
  • Patent Maintenance

Why Patents Matter?

Obtaining a patent is the first step in showing importance and the value of the innovation/invention that was created. It sends the message that the inventor has taken the process seriously and that they have enough confidence in the invention to risk seeking protection for it. Patent protection is the first step on both offensive and defensive to monetizing the invention. 

Contact SW&L Attorneys Today

If you have a patent-related question, do not hesitate to call our intellectual property law attorneys at 701-297-2890.

Trademarks

What Is a Trademark?

A trademark is a name, phrase, word, or symbol that is capable of distinguishing the goods or services of one source (business, person, etc.) from those of another. Registered Trademarks can have statewide, nationwide and potential internationally protectable rights which we can help you obtain. 

Obtaining a Registered Trademark

At the national and state levels, trademark protection can be obtained through registration. This process includes filing and prosecuting an application for registration with the applicable trademark office and paying the required fees. At the international level there are two options: the first involves filing a trademark application with the trademark office of each desired country in which protection is sought. The second international option includes filing an application through the World Intellectual Property Organization’s (WIPO) Madrid System, which essentially serves as one application for all participating countries. We are here to assist clients through the trademark application and prosecution process. Although it’s possible to submit your application without an attorney, it’s not recommended. This is because trademark applications can be both tricky and expensive. Since application fees cannot be refunded and certain mistakes in an application cannot be undone, it is important to get things right the first time. 

How Long Does the Process Take?

The trademark office examines applications in the order in which they are received (for the most part). When a trademark application is submitted, an examiner is usually assigned to the application after six months. The whole process can take 6-18 months. 

Protecting the Name of Your Business vs. the Logo of Your Business

One thing that trips a lot of people up is the difference between the name of your business and the logo of your business (if you have a logo). As ridiculous as it may sound, these are not covered under one trademark application. This means that if you have a name that you want to protect and a logo that you want to protect, two applications would need to be filed with the trademark office. As an example, Nike has a trademark to protect their name, the word “Nike” itself. They also have a separate trademark to protect the “swoosh” logo that is associated with their name. If you are looking to protect your business name and logo, be prepared to file several applications. 

Benefits of a Registered Trademark

First, a registered trademark is listed in the United States Patent and Trademark Office’s (USPTO) database of registered and pending trademarks. This provides public notice to anyone searching for similar trademarks. This may help deter others from using your trademark or one too similar to yours. Others will see your trademark, the goods and services on your registration, the date you applied for trademark registration, and the date your trademark registered. In addition, you get to use the federal trademark registration symbol “®” with your trademark to show that you are registered with the USPTO. Second, with proper registration, there is a legal presumption that you own the trademark and have the exclusive right to use it. Third, if there is ever an infringement issue that requires litigation, the registration allows you to bring a lawsuit in federal court. Fourth, trademark registration will confer an exclusive right to the trademark nationwide. This means that the trademark can be exclusively used by its owner and no others. Exclusivity is a valuable asset, especially in name recognition and branding. This right to exclude allows the owner to license or sell the right (as an asset) to another party for use in return for payment. Without registration, these benefits won’t apply or at the very least, will be limited in geographic scope. This is why it is worth obtaining registration. 

Duration of Protection

A trademark has the potential to last indefinitely, so long as it is maintained properly with the USPTO. To keep a trademark alive, fees are due in back to back five year durations followed by ten year durations until the user abandons the mark. 

Things that Can be Registered as a Trademark

A word or a combination of words, individual letters, and numbers  can perfectly constitute a trademark. In addition, trademarks may also consist of drawings, symbols, three-dimensional shapes, non-visible signs such as sounds or fragrances, and potentially color when used as a distinguishing feature of the trademark. 

Services We Provide

  • Preliminary Trademark Search
  • Trademark Application and Prosection
  • Trademark Maintenance

Contact SW&L Attorneys Today

If you have a trademark-related question, do not hesitate to call our intellectual property law attorneys at 701-297-2890.

Copyrights

What is a Copyright?

A copyright protects a creator’s literary and artistic works. This can include books, music, paintings, sculptures, films, ads, maps, etc. However, protection extends only to the expressions of ideas, and not to ideas themselves.

Requirements to Qualify for a Copyright

Copyright protection is only available for authored works that meet two basic requirements

  1. The work must be original 
  2. The work must be captured in a reasonably tangible form (something that can actually be copied). 

Getting a Copyright

Unlike patents and trademarks, anyone who creates an original work automatically obtains a copyright in that work. Without having to register, a creator can take their own initiative to prevent anyone else from using or replicating the work. However, the owner can still register the work with the United States Copyright Office. 

Benefits of Registration

Registering a copyright significantly helps the owner prove they actually have a copyright. This is extremely important when copyright infringement situations arise. Registration provides the presumption of ownership and switches any burden of proof to the other party. When damages, attorneys fees, and other costs are on the line; having a presumption of ownership in your copyright can make all the difference. Our attorneys recommend you register you copyright for this reason and we can assist you through the process. 

Benefits of a Copyright:

A copyright grants several several exclusive and enforceable rights for the work. These rights include:

  • Reproducing the work in copies
  • Preparing subsequent derivatives based upon the original work.
  • Distributing copies of the work to the public. This can be by sale or other transfer of ownership (rent or lease).
  • Performing or presenting the work publicly (mainly for literary, musical, and audiovisual works).
  • Displaying the work publicly (mainly for pictorial, graphic, and sculptural work works).
  • Performing the work publicly by means of a digital audio transmission (radio/ streaming) if the work is a sound recording.

Length of a Protection

Current copyright laws applies to works that were created on or after January 1, 1978. Works that are covered under the current law will have a copyright term for the life of the individual creator plus seventy years after their death. If the work is a collaborative or joint work, the copyright term lasts for seventy years after the last surviving creator’s death. When it comes to works made for hire, whether that be anonymous, or pseudonymous works (think creations by or for a company), the copyright protection term is 95 years from the date of publication or 120 years from date creation, whichever ends sooner. When a copyright expires, the work enters what is known as the “public domain”. Works in the public domain are free for anyone to use for any purpose. 

Biggest Limitations on Protection

First Sale Doctrine

The first sale doctrine is a codified United States law that provides a limitation to copyright protection. It states that someone who knowingly purchases a copy of a work from the copyright holder receives the right to re-sell, display or otherwise dispose of that particular copy. The protections of copyright law does not give the copyright owner any influence over the copy after it is sold. This restriction however, is limited to that particular copy only.

Fair Use

Fair use is another limitation on copyright protection that is often used in response to claims by a copyright owner that someone is infringing thier copyright. Fair use permits one to use a copyrighted work without the copyright owner’s permission in certain situations. There is not concrete list of what constitute fair use but such situations can include use relating to criticism, comment, news reporting, teaching, scholarship, or research with or of the copyrighted work. When determining fair use, the law has four factors to consider

  1. The purpose and character of the use. The biggest consideration being whether the use is for profit or not.
  2. The nature of the copyrighted work. Think of a spectrum of creativity. The less creative and more factual the work is, the better the case of fair use. 
  3. How much of the work is being taken. This can depend on quantity or quality. Taking alot of a work is the more obvious indicator or infringement, but situations arise when the most important part of the work (even if a small part overall) is used.
  4. Impact on the use in the market. If the use harms or significantly hidners the copyright owner’s current or potential market for the work, then it will weigh against fair use

Services We Provide

  • Copyright Registration
  • Copyright Enforcement

Contact SW&L Attorneys Today

If you have any copyright-related questions, do not hesitate to call our intellectual property law attorneys at 701-297-2890.