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FAQs

The following FAQ section is not a substitute for seeking counsel from a lawyer and does not constitute legal advice.  However, by answering questions we frequently encounter in the Detkin IP and Technology Legal Clinic, we hope to offer general information that may make any meeting with a lawyer (including at the Clinic) more effective and efficient.  The information is current as of August, 2017.

General questions: 

Copyright

Trademark

Patent

Trade Secret

 

General questions: 

What is intellectual property and how do I know if I have any? 

Intellectual property (“IP”) is all the valuable innovation behind a creator’s venture.  IP can be protected by formal processes, or in some cases just because it was created, but most companies and most creators have some IP.  Unique inventions, processes, systems and methods are IP, but so are product names, customer lists and content on a web page.  If you own a creative venture, you probably have IP. 

Is IP automatically protectible? 

Generally no, although you do have limited common law rights for some content as soon as you use it correctly (such as when you use a trademark in commerce).  But you can protect a lot more by exploiting the conventional tools of patent, copyright, trademark and trade secret, and you can also use contract to protect IP that cannot be protected by any other tool. 

What is the difference between a patent, a copyright, a trademark and a trade secret?     

All four are business tools to protect creative innovation, but the right tool to use depends on the subject matter.  You can patent classic inventions like machines, processes, and articles of manufacture.  Copyright covers fixed expression, like photographs, books, websites, films, and music.  Trademarks cover brand names and logos.  And a trade secret protects confidential information that a competitor would find useful.

If I protect my IP, what does that give me the right to do? 

Protecting your IP gives you the right to exclude others from “practicing your invention,” whether that “invention” is a product, a book, a brand name, or something else.

Do I have to protect my IP through a formal registration process (like filing a patent) in order to prevent someone from “practicing my invention?” 

If your invention is patentable subject matter, you cannot enforce the right to exclude until you have an issued patent.  If your invention is copyrightable, you have certain rights even without filing for a copyright registration, although you cannot sue until you have a registration.  If your invention is a trademark, under some circumstances you can prevent another person from using a confusingly similar mark even before you receive a registration, but you have limited protection and a limited set of remedies.  There is no formal registration process for a trade secret, but you cannot prevent someone from using the secret information if they received it or independently developed it with no wrongdoing.  In other words, for enforcement’s sake, it is always better to have formal IP protection if possible, although you may have additional rights even without the formal protection.     

How do I know if I have something protectible?

Each of the kinds of IP has a different standard for what subject matter it can protect (see each individual section below for more guidance).  Once you establish that you are within the subject matter bounds for a certain kind of protection, you will likely have to search to make sure that your specific innovation (invention, name, etc.) has not already been protected by someone else.  A lawyer can help you to evaluate whether and how to protect your IP. 

Should I necessarily protect my IP?  Which tool should I use?   

That answer depends on a wide variety of things, including: what your IP is and how central it is to your venture; whether your IP will continue to develop; whether you have competitors and where they are in the development process; how easy it would be to independently develop your IP; what your plans are for the venture; how much money and time you have; and whether you need protection in order to accomplish your goals.  A good lawyer familiar with entrepreneurial ventures should be able to give you some suggestions based upon your answers to the above questions.

How early should I start thinking about my IP protection strategy? 

You can lose some protection rights if you delay too long before you start thinking about a protection strategy.  The U.S. is a “first to file” country, so the first inventor to file a patent gets the right to exclude others from practicing.  In addition, disclosing your invention eliminates your right to file a patent in many countries around the world and starts a one-year time clock in the U.S.  Planning early may save your rights in many jurisdictions, and also forces you to budget and strategize not only about your IP but about other important parts of your venture as well.  You are better off having a series of discussions about IP early in the process and potentially shifting gears than setting a strategy too late. 

That said, you cannot patent something unless the invention is “reduced to practice,” meaning that you are sure that your idea will work in practice.  Similarly, you must copyright the exact fixed expression that you want to protect and you have to trademark the exact name that you want to use.  In summary, you should wait to seek counsel until you are certain of your innovation, but not too long after that.       

How long does my IP protection last?

The answer depends on the specific IP tool.  Assuming you keep up all relevant filing fees, utility patents last for 20 years from filing date (design patents last for 14 years from issue).  For works created in 2017, copyright lasts for the life of the author plus 75 years.  Trademarks last forever, so long as you continue to use the mark in commerce and file the correct maintenance forms and pay ongoing fees.  Trade secrets also last for as long as the confidential information has value and remains protected and secret. 

How do I obtain IP protection?

You earn certain protection for certain subject matter even without filing formal applications with the government (whether U.S. or another country).  But for the best and strongest protection, you should investigate whether it would be feasible and wise to file a patent, copyright, or trademark application.  A lawyer can definitely help not only to evaluate which kind of IP protection to seek, but also to file the actual application. 

Does my U.S. IP coverage apply in other countries as well? 

Patent and trademark protection is territorial.  In other words, if you have a U.S. patent or trademark, you cannot enforce it against an infringer in China.  You would have to have a China patent or trademark to exclude a Chinese infringer. 

However, if you reference your U.S.-based patent or trademark application when you apply for coverage in a foreign country, for a certain period of time you can backdate your start date for coverage (a “priority date”) to match the date of your U.S. application.   You still have to pay to apply for the IP application, but you get an earlier priority date. 

What is the difference between a license and an assignment? 

Both a license and an assignment give the receiver certain rights.  The difference is that with a license, ownership of the underlying IP stays with the grantor, while with an assignment, ownership as well as rights pass to the grantee.  Licenses are also often restricted in some way, perhaps limited in terms of what rights pass, for which geographic area, and for how long. 

What does it mean for a license to be exclusive?  

When a license is exclusive, only the grantee is allowed to exploit the rights covered by the license.  This includes the grantor, unless the grantor reserves itself the rights to practice by stating that the license is a “sole” license.  

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Copyright

What can I protect under copyright?

You can use copyright to protect all creative product that is fixed in a medium.  For example, any text that is written or typed, music, photography, sculpture, painting, and software.  You may, however, only protect the actual written expression, and not the general ideas underneath the expression.   

What rights does copyright grant? 

If you have the copyright over content, you alone control the right to copy, create derivative works, display, and distribute the content.

Do I need to file for a copyright registration to have copyright protection?

No, although you cannot sue for infringement, and cannot get certain remedies unless you file for formal copyright registration in a timely manner after creation.

If I want to file for a copyright registration, how do I do it, what does it cost, and how long does it take to register?

It is fairly straightforward to file a copyright application yourself, although there are some nuances in terms of which form is appropriate to file for which work, which a lawyer would understand.  There is more information at https://www.copyright.gov/help/faq/faq-register.html.  As of August, 2017, it costs between $35 and $55 to file a copyright application.  Applications are currently taking about 8 months to issue.  

Are there any costs after I file a copyright?

No.  Although if you change your content at all, you may have to file an additional copyright application.

Do I have to put a copyright notice (©), the year of copyright and “all rights reserved” on my work in order to protect it?

No, not for works created after 1978.  However, it might be helpful to place such information on your work in order to put would-be infringers on notice that you claim ownership of the work and to discourage copying and unauthorized use. 

What is fair use?

Fair use is a defense to copyright infringement, in other words, it excuses otherwise infringing conduct.  It applies when the unauthorized user must copy the work in order to pursue a legally-approved end, for example to sample the work in order to satirize it or to report news.  Fair use is a fact-specific analysis, and the law is constantly changing in this area, so before you plan to depend on a fair use defense, you should let a lawyer help you to determine if you are likely eligible.    

I hired a consultant to create for me. How do I ensure that I own their work?

The default when working with a nonemployee is that they own whatever they create.  You can contract for a transfer of rights, but the contract must state specifically that the consultant assigns all rights to you.  Some people describe this as creating a “work for hire,” situation, but actually work for hire describes a very narrow collection of created works.  You must have a contract in place that assigns all rights.  

I am reusing content that I found online, is that okay? 

Likely not.  Just because content is on the web does not mean that it is open for general use.  This is the case even if you give attribution to the owner.  All content that is fixed expression (like content uploaded on a website) is owned by the creator, who continues to control all rights to copy, create derivative works, distribute and display the content.  You would need the owner’s permission (a license) to reuse their content.  The one exception is if the content is offered as part of the creative commons or as open source, but even in that scenario, the content is only licensed to the extent of the creative commons or open source license.    

I found my copyrighted material reprinted on someone else’s website.  What can I do?

If this is an unauthorized use of your original content, you may request that they remove it from their website.  Often people think that giving you attribution for creation is enough to give them rights to reuse your content.  If they do not respond to your request, you should contact counsel. 

I’m using open source software in my product.  Can I do anything I want with the open source software? 

Sometimes.  Open course software, like non-open source software, is licensed under specific license agreements. Your rights to use the open source software depend on the rights granted under the specific license that applies.  Some open source software licenses grant unrestricted rights, but other licenses limit commercial use, or demand that the software into which the open source software is incorporated also be offered on open source terms.   

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Trademark

What can I protect under trademark? 

Trademark can protect your product or service brand name, your logo, and your slogan.  In certain cases, trademark can also protect packaging or store design, colors, sounds, and smells, but this is much less common. 

How do I search to see if anyone else is using my mark? 

Trademark infringement can occur when you are accused of using a mark that is likely to be confused with another mark with earlier priority in a similar space.  Before you commit to a trademark, and definitely before you file a trademark application, you should search to see if another party is already using your proposed mark.  You can search for common law use through web search engines, and then you should also search the www.uspto.gov website for prior trademark applications and registrations.  A lawyer may also have additional resources to make a broader search and will have the judgment to help you decide when two marks could present a likelihood of confusion.   

Do I need to file for a trademark registration to secure trademark protection?

No, you get common law rights as soon as you use a trademark in commerce.  However, common law rights only extend to the boundaries of your use and do not allow you to sue in federal court.

What does federal registration get me? 

A federally registered mark gives you priority and the right to exclude others’ use of confusingly similar marks across the country, as well as the right to pursue certain additional remedies in federal court.  It also precludes other parties from getting trademark registrations over marks similar to yours, and gives you strength in asserting your mark against others.   

What is the difference between a state and federal trademark registration? 

A state registration only gives you rights up to a state’s border.  A federal registration gives you nationwide rights. 

How do I file a trademark application?  How much does it cost, and how long will it take to register? 

Filing a trademark application is possible on your own by going to https://www.uspto.gov/trademarks-application-process/filing-online and filling out a form.  However, the form is somewhat confusing, and there is legal strategy involved in the kind of mark you file, which classes you apply for, what the description of goods or services says, and how you describe your logo.  A lawyer can also help you to run a comprehensive search before you file an application in order to ensure that you are not using or filing for a mark that another party has already registered.  Trademark applications cost between $225 and $400 per class to register.  You will hear back first from the U.S. Patent and Trademark Office in about three months, and then depending on timing and number of office actions, you could get a registration in about 6-12 months. 

Do I have to pay any fees after I file an application? 

Once the trademark registration issues, you will have to file forms and pay maintenance fees on a regular basis for the lifetime of the trademark to recertify that you are still using the mark.  These fees are several hundred dollars approximately every five years for the first two payments, and then every ten years thereafter.   

I already own the domain name for my mark.  Do I need to file a trademark application?

Yes.  Registering for a domain name is not the same as registering for a trademark.  These are different registries set up and maintained for different purposes.  Domain names reserve your homepage for the internet, and trademarks reserve your right to use a mark to identify the source of a product in commerce.   

I already registered my company name with my state.  Do I need to file a trademark?   

Yes.  Registering for a company name with the state is not the same as registering for a trademark. 

Should I use “TM” or “SM” or “®” after my trademark?

As soon as you start using your trademark in commerce (meaning you are offering a product or service to the public, whether or not for money), you can and should mark your trademark with either a “TM” (if you are offering a product) or an “SM” (if you are offering a service).  You can start using the “®” as soon as your mark is federally registered. The purpose of using the designation following the trademark is to put the public on notice that you claim ownership in the trademark. 

Do I have to use “TM” or “SM” or “®” every time I print my trademark on my packaging or website?

No.  Since the purpose of using a designation following a trademark is to put the public on notice that you claim ownership in the trademark, you need only use the designation in enough places to accomplish that notice.  This usually means using the designation in the first and most obvious places you use the mark on your packaging or website. 

Do I have to wait to use the trademark until I file a trademark application

No.  Use of a trademark does not cut off your ability to file a trademark application (unlike patent, where disclosure can pre-empt your ability to file).  On the contrary, as soon as you start to use a trademark, you start to accrue common law rights.   However, if you are sure that you want to invest in a mark, it may be wise to file a trademark application as soon as possible, before another party files to register a similar mark and limits your use. 

Do I have to already be using the trademark in commerce to file a trademark application? 

In the U.S. you cannot get a federal registration for a trademark until you are using the mark in commerce.  But you may file an “intent to use” (ITU) application before you have actually started use in commerce, so long as you have a good faith intent to use the mark soon.  As long as the application eventually issues after you use the trademark, your priority date will be the date you filed the ITU application.  

Can I use my company name as a trademark?

Yes, but not all company names are necessarily trademarks.  A trademark is a brand for a product or service.  If the product brand name is the same as the company name, then that company name is also operating as a trademark.  But referring to the company is not the same as referring to the brand, even if they are the same name. 

I see that another party is using the same or a very similar trademark to mine, even though I haven’t filed for an application.  What can I do? 

If you can prove that you were using the mark in commerce earlier than the other party was using their mark, you can request that the other party change their name, or only use their name for dissimilar goods or services or in an area other than where you do business.  However, if they resist changing their name, you will have to contact a lawyer to help you to prove and press your case, especially if you do not have a federal registration.   

I see that another person is using the same or a very similar trademark to mine, even though I have a registration.  What can I do? 

With an issued federal registration, you have a presumption of ownership and validity in the mark as of your date of first use in commerce.  As a result, if the party started using their mark after your date of first use, you can request that the other party cease using the mark in the U.S. as to goods and services that are similar to yours.  You should contact a lawyer to figure out the extent of your rights and your enforcement strategy.   

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Patent

What can be covered by patent?

Patentable subject matter includes machines, processes, articles of manufacture and compositions of matter.  In addition, the subject matter must also be new, nonobvious, and disclosed in enough detail such that a person having ordinary skill in the art could replicate it.    

What are the different kinds of patents? 

Most patents are utility patents, which cover machines, processes, articles of manufacture and compositions of matter.  There are also design patents, which cover the unique nonfunctional appearance aspects of a product, and plant patents.  Patent applications may be provisional or nonprovisional.  Provisional patents reserve a date of invention, but may not be fully drafted and are not examined by the U.S. Patent and Trademark Office.  As long as the inventor files a nonprovisional patent claiming priority to the provisional patent within one year of the provisional patent filing, the inventor reserves the original provisional patent filing date as the priority date.   

How can I do a search to know if I have something unique? 

Since patents may only cover new subject matter, most inventors run a “prior art search” to see if their idea is unique before they file a patent.  Google Patents https://patents.google.com and Google Scholar at https://scholar.google.com are valuable search engines through which you can find patents and articles in your space.  You might also try the U.S. Patent and Trademark Office website at https://www.uspto.gov/patents-application-process/search-patents.  Not only can you search for patents and applications on the USPTO site, but they also have a tutorial and other helpful information about searching patents.  Your lawyer can also help you to run and interpret a prior search.    

What should I consider when deciding to file a patent? 

Patents can be very powerful tools, but because they only cover certain subject matter, are expensive to file and maintain, and take a long time to issue, they are not an ideal solution for all companies and technologies.  You should consider at least the following factors when considering whether to file a patent: whether the technology is a disrupter to the market or a product enhancement that may become obsolete; whether the technology is easily reverse engineered; whether you have the budget to maintain and enforce a patent; whether you have competitors and whether they have patented; whether your investors would like you to patent; and whether your current and future competitors would have to practice your technology in order to continue to operate in the space. 

How do I file for a patent, how much does it cost, and how long will it take to issue? 

Drafting a patent is very technical, and there is an art to writing claims.  The actual patent filing itself is also unforgiving and technical.  Given the importance of the document and the complexity of the process, you should definitely seek the help of either a lawyer or a patent agent to file your patent.  However, you can help your lawyer to draft a better patent for you that is aligned with your business goals if you communicate clearly about your technology, your business plan, and any competitors or prior art that you discover.  

Most of the expense of filing a patent is in the professional fees, but there are also filing fees that you must pay to the U.S. Patent and Trademark Office.  They range depending on the size of your company, but for most small companies, are below $1000 dollars total.  Patents are taking on average of between 2-3 years to issue. 

Are there any costs after I file a patent? 

Patents seldom register without any issues.  You will likely have to answer office actions, which are questions the U.S. Patent and Trademark Office asks when they want to ensure that your patent application complies with all requirements and your technology is suitable for a patent.  You may have to pay a lawyer or agent to help to answer those office actions.  You will have to pay a fee when the patent issues.  And then throughout the lifetime of the patent, you will have to pay maintenance fees to keep the patent active. 

Can I file a worldwide patent? 

No. There is no such thing as a worldwide patent.  However, you can get the same priority date around the world as you have on your U.S. patent if you timely file claiming priority to your U.S. patent through the PCT process.

Can I stop infringement overseas with a U.S. patent?

No.  Patents are territorial.  If you want to control infringement in Mexico, you must file a patent in Mexico. 

Does a patent give me the right to make my invention? 

Not necessarily.  A patent gives you the right to stop other people from making, using, selling, offering to sell, and importing the subject matter of your invention.  But if making your invention also involves using someone else’s patented technology, you do not have the right to make your invention without a license. 

I hired a consultant to help with my invention.  Who owns it?

The default when working with a nonemployee is that they own whatever they create.  You can contract for a transfer of rights, but the contract must state specifically that the consultant assigns all rights to you.

What does it mean that the U.S. is a first-to-file country?

In a “first to file” country, the first inventor to file a patent application over an idea gets the patent rights, even if another inventor came up with the idea first.  This creates an incentive to file a patent as soon as the idea can be reduced to practice. 

What is disclosure and why does it matter?

Disclosure occurs when an otherwise patentable idea is announced to the public.  Disclosure can occur through publication, presentation, or even a meeting when there is no contractual promise to keep the idea secret.   Disclosure will completely bar all subsequent patenting in many foreign countries.  It also starts a one-year time clock even in the U.S., after which time the inventor who disclosed can no longer file a patent over the idea.  So inventors need to be very cautious about disclosure.  

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Trade Secret

What can be covered by trade secret? 

Trade secret covers information that has commercial value to your company that you have and do keep confidential. 

Do you need to formally file for trade secret registration? 

No.  In fact, the requirement for keeping something as a trade secret is that it be in fact kept a secret.  If you file a public application, the information would lose its trade secret status. 

What are the requirements to keep something a trade secret? 

You must take reasonable efforts to keep the information confidential.  Such efforts may include but are not limited to entering into nondisclosure agreements whenever discussing the information, stamping written information with a “confidential” marker and keeping it in a locked file cabinet, limiting discussion and knowledge of the information to a small number of necessary parties, limiting access to information kept digitally, and guarding the information from visitors to the company.  Whether information remains a trade secret is a fact-based scenario, but you have to be able to show that you made consistent and reasonable efforts to keep the information confidential.    

What recourse do you have if someone else uses your trade secret? 

If someone independently developed your trade secret, or they found out about it because you failed to take reasonable efforts to keep the information confidential, then there is no recourse.  However, if the other party discovered your trade secret because it was stolen or because someone breached an agreement, you may have recourse under state or federal law.   You should consult a lawyer. 

What can you do if you want to copyright or patent something that is also partly a trade secret? 

You may redact certain information from a copyright application in order to keep that information secret and maintain its trade secret status.  However, you cannot protect the same information via both patent and trade secret, because patents are by nature disclosed to the public.  Trade secrets must remain a secret. 

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