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Intellectual Property Series FAQ – Part II

Intellectual Property Series FAQ – Part II

As a continuation of our Intellectual Property Blog Series, Marvin Lawrence from our Washington, DC office expands a bit on the various types of patents. Marvin is a Client Service Representative specializing in Intellectual Property.

What are Patents?

Patents are a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

Are there different categories or types of patents?

The U.S. Patent and Trademark Office (USPTO) issues several different types of patent documents offering different kinds of protection and covering different types of subject matter.

A recently issued USPTO patent document is one of six types, generally described below. See U.S. Code Title 35 – Patents, for a full description of patents and patent laws.

Utility Patent – Issued for the invention of a new and Useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof, it generally permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the date of patent application, subject to the payment of maintenance fees. Approximately 90% of the patent documents issued by the USPTO in recent years have been utility patents, also referred to as “patents for invention”.

Design Patent – Issued for a new, original, and ornamental design embodied in or applied to an article of manufacture, it permits its owner to exclude others from making, using, or selling the design. Design patents issued from applications filed on or after May 13, 2015 shall be granted for the term of fifteen years from the date of grant. Design patents issued from applications filed before May 13, 2015 shall be granted for the term of fourteen years from the date of grant. Design patents are not subject to the payment of maintenance fees.

Plant Patent – Issued for a new and distinct, invented or discovered asexually reproduced plant including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, it permits its owner to exclude others from making, using, or selling the plant for a period of up to twenty years from the date of patent application.  Plant patents are not subject to the payment of maintenance fees.

Reissue Patent – Issued to correct an error in an already issued utility, design, or plant patent, it does not affect the period of protection offered by the original patent. However, the scope of patent protection can change as a result of the reissue patent.

Defensive Publication (DEF) – Issued instead of a regular utility, design, or plant patent, it offers what limited protection, defensive in nature, to prevent others from patenting an invention, design, or plant. The Defensive Publication was replaced by the Statutory Invention Registration in 1985-86.

Statutory Invention Registration (SIR) – This document replaced the Defensive Publication in 1985-86 and offered similar protection. Please note that the America Invents Act (AIA), which was signed into law on September 16, 2011, repeals provisions pertaining to statutory invention registrations and the issue of these documents will be discontinued.

If you need assistance with searching or filing requests with the US Patent Trademark Office, please contact our Washington DC office directly at 202-386-7575.

Resources include:
http://www.uspto.gov/web/offices/ac/ido/oeip/taf/patdesc.htm
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Intellectual Property Series FAQ – Part I

Many of our clients include a search of the United States Patent and Trademark office as part of their due diligence process. Marvin Lawrence from our Washington, DC office expands a bit on the various types of patents. Marvin is a Client Service Representative specializing in Intellectual Property. If this type of request is new to you, please see some of the frequently asked questions below (FAQ). If you don’t see your question addressed here, email us at info@incserv.com.

What are Patents?

Patents are a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

What are Trademarks?

A trademark is a protection of words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.

What is a trade name and where are they filed?

A trade name is a pseudonymused by companies to perform their business under a name that differs from the registered, legal name of the business. A trade name is filed at the Secretary of State.

What are some of the benefits of Federal Registration?

(i) it grants the right to use the registered trademark symbol: ®, (ii) it grants the right to file a trademark infringement lawsuit in federal court and to obtain monetary remedies, including infringer’s profits, damages, costs, and, in some cases, treble damages and attorneys’ fees, (iii) it acts as a bar to the registration of another confusingly similar mark, and (iv) it may serve as the basis for an international trademark application.

What is a Service Mark Filing?

A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks.

What is a copyright?

A Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phono records of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are issued by the Library of Congress.

What types of things are protected by copyright?

Copyright is a form of protection provided by the laws of the United States to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works.

What information do I get with a copyright search?

It depends on the type of search being requested.  Some of the more popular searches are the “chain of title”, “portfolio” and “in-process” searches.  The chain of title search provides basic claim information as well as any recorded instruments and new submissions on record for a “specific title.”  The portfolio search is a search for any claims, recordation or new submission on record under the name of an individual or company at the US federal level.  The in-process search is a search for new submissions to the US Copyright Office by name or title.

What is the Digital Millennium Copyright Act of 1998?

The Digital Millennium Copyright Act (DMCA) is a United States Copyright Law thatimplements two 1996 treaties of the World Intellectual Property Organization (WIPO). It criminalizes production and dissemination of technology, devices, or services intended to circumvent measures (commonly known as digital rights manager or DRM) that control access to copyrighted works. It also criminalizes the act of circumventing an access control, whether or not there is actual infringement of copyright itself. In addition, the DMCA heightens the penalties for copyright infringement on the internet. Passed on October 12, 1998, by a unanimous vote in the United States Senate and signed into law by President Bill Clinton on October 28, 1998, the DMCA amended Title 17of the United States Code to extend the reach of copyright, while limiting the liability of the providers of on line services for copyright infringement by their users.

Can I get a search of the U.S. Copyright Office records for recorded assignments and security interests?

The Copyright Chain of Title search will provide results for Assignments and Security Interests

What is a PTO Ownership search and can you include that with my due diligence searches?

When conducting due diligence searches to determine assets held on the state level, you may choose to conduct various searches to determine the current owner of federal patents and/or trademarks.  As with copyright, you may conduct a patent and/or trademark chain of title search to determine the owner(s).

How can I follow the chain to see if a patent or trademark has been assigned?

A Chain of Title search will provide this information.

How do I file a trademark assignment?

Complete the Trademark Cover Sheet and submit a copy of the Trademark Assignment.

What are Trade Secrets and how do I protect them?

A fourth type of intellectual property, in addition to patents, trademarks, and copyrights, is trade secrets. Trade secrets consist of information and can include a formula, pattern, compilation, program, device, method, technique or process.

Contrary to patents, trade secrets are protected without registration, that is, trade secrets are protected without any procedural formalities.

See for more information on how the US can provide protections:  http://www.uspto.gov/patents-getting-started/international-protection/trade-secret-policy

If you need assistance with searching or filing requests with the US Patent Trademark Office, please contact our Washington DC office directly at 202-386-7575.

Resources include:
http://www.uspto.gov/web/offices/ac/ido/oeip/taf/patdesc.htm
https://en.wikipedia.org/wiki/Trade_name
http://www.americanbar.org/groups/young_lawyers/publications/the_101_201_practice_series/trademarks_101_part_2_the_benefits_of_federal_registration.html
http://www.copyright.gov/circs/circ01.pdf
http://www.copyright.gov/circs/circ01.pdf
https://en.wikipedia.org/wiki/Digital_Millennium_Copyright_Act
http://www.uspto.gov/patents-getting-started/international-protection/trade-secret-policy
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DC Lunch Seminar Series is Back!

As promised in our Intellectual Property Blog Series our free lunch seminar series has returned and you’re invited to attend.

“An Open Forum Discussion of Intellectual Property”

Featuring:

Lita Rosario, Esq.

Entertainment and Intellectual Property Attorney

WYZ Girl Consulting

Dora Best

Manager, Trademark Assistance Center

United States Patent and Trademark Office

Dawn Sanok

Attorney-Advisor, Office of the Commissioner for Trademarks

United States Patent and Trademark Office

and…

A Patent Attorney to answer your questions about protecting inventions!

This seminar and discussion will focus on relevant Copyright, Trademark and Patent laws and procedures.  Topics to be discussed included:

  • Copyright Registration Process – what can be copyrighted, when copyright registrations are to be filed, durations and protections afforded to copyright registration
  • Trademark & Service Mark Application Process – trademark searches and distinctions between word marks and design marks, durations and protections afforded by application
  • Relevant changes to Patent Law – the America Invents Act, the Patent Application Process (Provisional v. Non-Provisional), available patent resources, durations and protections afforded under the law
  • Protection of Trade Secrets, Copyrights, Trademarks, and Patents – infringement and enforcement, injunctions, damages, attorney’s fees and costs

Location: The Buchanan Training Room – Metro Center Office Center

700 12th Street, NW, Suite 700, Washington, DC  20005

Date:  Wednesday, June 8, 2016

Time:  Session One: 11:30 am – 1:00 pm or Session Two: 2:00 pm – 3:30 pm

To reserve your seat click here!

Be sure to indicate which session you’d like to attend.

(Please inform us at the time of reservation of any dietary restrictions)

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Intellectual Property Series – Part I

Incorporating Services, Ltd. (Incserv) invites you to follow our blog series on Intellectual Property. Marvin Lawrence is a Client Services Representative in our Washington, DC office specializing in Intellectual Property. Marvin shares with us this initial installment in the series as we prepare for our 2016 Incserv Lunch Seminar Series to be held in June. The seminar will include a panel of experienced Intellectual Property attorneys including one from the US Patent and Trademark Office.

Intellectual Property is simply a term referring to creations of the intellect for which a monopoly is assigned to designated owners by law. It controls the ownership of ideas and the expression thereof. The most common types of intellectual property are Trademarks, Patents and Copyrights. The United States Patent and Trademark Office (USPTO) handle patents and trademarks, while the United States Copyright Office, under the Library of Congress, handles copyrights. Let’s briefly explore the types of intellectual property.

A Trademark is a recognized sign, design or expression which distinguishes products or services of a particular trader from the similar products or services of other traders.

A Patent is a form of right granted by the government to an inventor, giving the owner the right to exclude others from making, using selling, or importing an invention for a limited time period.

A Copyright gives the creator of an original work exclusive right to it, usually for a limited time. Copyright applies to creative or artistic works and the manner in which they are expressed.

Examples of intellectual property cross our paths all throughout the day. A logo or a slogan is an example of a trademark. You probably pass hundreds of examples of trademarks on your way to work or school each day.

Patents are typically inventions and may include development of computer software, chemical formulas and processes, cosmetics, and many other products we use or see every day. The way a business does something or performs a function and its method for doing so may be patented. An example of an approved patent is Amazon’s “1-click Ordering”. This process provides expediting of online orders by the click of one button without having to complete all details.

You will find reference to a copyright on movies, music, games, artwork and many creative products that we use for entertainment purposes daily.

Next in our series, we will share the most frequently asked questions we receive with regards to intellectual property. Contact us at any time if you need assistance or feel free to call the specialists in our Washington, DC office at 202.386.7575.