Small Business IP Protection and Management

How do I get a patent?

One of the most asked questions we hear is "How do I get a patent?".   Although we have posted this before, below is an overview of the important steps in beginning the patent process.

The first step:

One of the most important first steps when something is invented is to make a record of the invention.  The record can consist of a simple a written description accompanied by any sketches, drawings, and/or diagrams.  The written description does not necessarily have to be long, but should include enough detail to tell what the invention is and how it works.  Any sketches, drawings, and/or diagrams which can supplement the written description should be included.  The inventor should then sign and date the written description and sketches, drawings, and/or diagrams, and have a witness sign and date the written description and sketches, drawings, and/or diagrams.

What the record of invention does is provide tangible evidence that the inventor actually possessed the invention on the date indicated.  It should be noted that other evidence could be used to pre-date this record.  This record is important in the United States because a patent is awarded to the first to invent, not the first to apply for a patent.  Thus, this record can become very valuable in the future.  A copy of the record should be given to your patent attorney to be placed in your file.  The record is also very helpful to your attorney in understanding the invention and in beginning preparation of a patent application.

The second step:

Once an inventor has made a record of an invention, the next step is to determine whether the invention is patentable.  In order to be patentable, an invention must be new, useful, and unobvious.  The new and useful requirements are fairly straight forward.  Unobviousness is a little less "obvious".  However, we will leave that definition for another day.

To determine patentability, one typically conducts a search of the records of the U.S. Patent and Trademark Office (USPTO).  Although a search is not required, it is highly recommended as it may eliminate unnecessary expenses down the road if an invention is deemed not patentable. 

There are essentially three ways to conduct a patentability search. 

1. One method which can be used to conduct a search is to visit a website maintained by the USPTO which includes a database of all U.S. patents and published U.S. patent applications.  A searcher can enter key words and other search terms in order to locate relevant patents.  The patents can be viewed in their entirety, and printed if desired.  Other web sites are available such as Google Patent for conducting the patentability search.
2. Second, a search can be conducted at a Federal Depository Library where patent documents are also made available.  These documents can be searched, and quite often, the staff of these libraries is quite helpful in conducting the search.  The USPTO website includes an information page about these libraries, and also a listing of these libraries.
3. Finally, a patent attorney can conduct the search for you.  Typically, either the attorney will visit the USPTO to conduct the search.  The attorney may also conduct the search on the USPTO website, but it is typically much more efficient for the attorney, and thus, less costly, to conduct the search at the USPTO.

Once the search has been conducted, the patent documents located can be studied in view of the invention to determine whether the invention appears to be patentable.  It should be noted that a Patent Office Examiner will also conduct a search during the patent application process, and may find more pertinent art.  Although not foolproof, the patentability search can provide a good indication whether or not the invention is patentable. 

Finally, the inventor's third step:

Once it is determined that an invention is patentable, the inventor must determine what type of application will be filed to adequately protect the invention.

There are two general types of patent applications covering the structure or method of an invention which can be considered, a provisional and a utility.

A provisional patent application typically includes a written description and drawing(s) of the invention. The provisional patent application is given a filing date and a serial number, but is not examined by the Patent Office. The formal requirements are less stringent for the provisional patent application than a regular patent application and the Government filing fee is lower.  Although not required, at least one claim is typically included.  If the provisional patent application is converted to a utility patent application within one year of its filing date, the later filed application may obtain the benefit of the filing date of the earlier-filed application.

The filing of a provisional application provides an inventor with the comfort of having the disclosure lodged in the United States Patent and Trademark Office and provides the inventor a year to improve the invention, seek licensees, seek investment capital, test the market, etc.  The provisional application will not mature into a patent.

A utility patent application has more stringent requirements than the provisional.  The utility application typically includes a more detailed written description (including a full set of claims defining the metes and bounds of the invention sought to be protected) and formal drawings of the invention.

The Government filing fee for the utility patent application is higher than a provisional patent application, and the costs of preparation are typically higher as well.  A Patent Office Examiner examines the utility patent application. If the invention is found to be patentable, the utility application will mature into a patent.  The term of a utility patent is 20 years from the date of application.

A design patent application can also be considered.  A design patent covers the overall ornamental appearance of an invention, but the protection afforded by a design patent is typically narrower than that of a utility patent.  However, both a design patent application and a provisional or utility patent application can be filed for a single invention if desired.  The term of the design patent is 14 years from the date of issue. 

As soon as a provisional, utility, or design patent application is filed, any documentation, sketches, drawings or the like may be marked with "pat. pending", "pat. applied for", or the like.

The above steps in the patent process should give inventors a general idea of the patent process.  Although other factors may impact patentability, enforceability, and the like, this process can be used as a guide for most inventions.

IP Audit Information

Here is an article of interest on IP Audits.

Small Business IP Protection Web Site - USPTO

The U.S. Government maintains a web site aimed at helping businesses protect intellectual property from overseas piracy and counterfeiting.  The Department of Commerce’s United States Patent and Trademark Office (USPTO) maintains the site – StopFakes.gov/smallbusiness -- dedicated to small businesses and protecting their intellectual property both in the U.S. and abroad. A focus of the site is to answer common questions of small businesses, home business owners, inventors, and other entrepreneurs, so they can better identify and address their protection needs.

The web site provides information to help decide when, where and how to file for intellectual property protection and covers patents, trademarks and copyrights. The Web site is part of a much larger USPTO and federal government effort. The Strategy Targeting Organized Piracy (STOP!) initiative ( http://www.stopfakes.gov) is aimed at combating criminal networks that traffic in fakes; stopping trade in pirated and counterfeit goods at America’s borders; and helping small businesses secure and enforce their rights in overseas markets. As part of the initiative, the USPTO maintains a toll-free telephone hotline, 1-866-999-HALT that helps businesses leverage the resources of the U.S. government to protect their intellectual property rights.

Resources

Stop Fakes Small Business General Information: http://www.uspto.gov/smallbusiness

Stop Fakes Small Business Patents: http://www.uspto.gov/smallbusiness/patents/

Stop Fakes Small Business Trademarks: http://www.uspto.gov/smallbusiness/trademarks/

Stop Fakes Small Business Copyrights: http://www.uspto.gov/smallbusiness/copyrights/

World Intellectual Property Organization (WIPO) - IP Assistance

WIPO has published several guides to assist small and medium-sixed enterprises with intellectual property matters.  A patent guide is available called "Inventing the Future: An Introduction to Patents for Small and Medium-sized Enterprises" which details how patents can be used to further strategic business goals.   Other publications currently available are "Making a Mark: An Introduction to Trademarks for Small and Medium-sized Enterprises" and "Looking Good:  An Introduction to Industrial Designs for Small and Medium-sized Enterprises".  Other related publications are available.  For more information on these and other publications, visit the Small and Medium-sized Enterprises Division (SME) of the WIPO web site.

Help with Exporting Goods and Services

If you own a small business and are considering exporting U.S. products or services, a great place to start is the BUYUSA.GOV web site for the U.S. Commercial Service of the United States Department of Commerce.  The U.S. Commercial Service helps U.S. companies find new international business partners in worldwide markets.  Additionally, the service helps companies outside of the U.S to find U.S. suppliers of products and services.  A database of offices is maintained on the web site as well.

For a company interested in exporting, a substantial amount of research can be accomplished on the web site such as market research, trade shows, and identification of buyers and distributors.  Counseling is also provided to assist with the above research.

By selecting China as a country of interest, for example, a user is presented with a wealth of free or fee based choices.  Information for specific industries, a schedule of trade shows, current trade leads, and latest news and events can be obtained.

Therefore, if you are considering expanding your business in foreign countries, or if you are located in a foreign country seeking to do business in the U.S., the BUYUSA.GOV web site is an excellent place to start.

Trademark and Copyright Law Regarding Book Titles

A question that is periodically asked of us is whether or not book titles are covered under copyright law.  In general, the title of the book itself is not entitled to copyright protection.  Copyright laws protect an original work of authorship or expression of an idea.  Intellectual property law does not protect titles as easily or as comprehensively as it protects the contents of a literary work.  However, trademark law and unfair competition law may provide some protection for the book title. 

Typically, protection of a title for a single work is found in unfair competition law.  Trademark law might also be found applicable if the author/publisher can demonstrate that the title has acquired secondary meaning.  Additionally, a court may look at "likelihood of confusion" to assist in evaluation of the title to determine whether the public would be confused as to the source of the work. 

Protection of a single title in general is not easy. More often, protection is provided for a series title (a title which runs through a series of books) under unfair competition and trademark laws. Trademark registrations are permitted for a series title.

How to Market an Invention

A common problem confronting small businesses and individual inventors is that of determining whether a market exists for an invention.  A common approach for many is to succumb to the advertisements of so called invention promotion companies.  While some of these companies provide a legitimate and valuable service, many do not.  The inventor is often charged a substantial amount for "canned" reports that provide little information of value to the inventor.

If one is planning on using an invention promotion company, it is suggested that the company be thoroughly researched.  To assist in the research, a list of complaints against these types of companies is maintained on the USPTO web site.  Complaints dating back several years are maintained, as well as links to other helpful web sites.  Another resource to use is the Consumer Alert area of the Federal Trade Commission web site.

One resource available to inventors as an alternative to the invention promotion companies is the Wisconsin Innovation Service Center (WISC).  WISC is a non-profit organization sponsored by the University of Wisconsin-Whitewater, the University of Wisconsin-Extension Small Business Development Centers, and the U. S. Small Business Administration.  A number of services are provided by WISC.  These include:

• New product assessments
• Distributor assessments
• Current or potential customer assessments
• Licensing partner searches
• Competitive intelligence searches

WISC will also assist with a preliminary patent search to identify art related to the invention.

WISC does charge for the services provided, but the fees are not unreasonable for the services performed, and the products provided are specific to the invention.  The services provided by WISC can either be used prior to or simultaneous with the filing of a patent application.  WISC can help an inventor or small business decide whether a product is worth pursuing and in making other well informed business decisions.

Additional information can be obtained at the WISC web site.

Importance of Protecting Intellectual Property

Protecting intellectual property for any business entity is important.  Preventing another company from copying important equipment, products, or processes; protecting trademarks which could be the single most valuable asset for a company; etc., are extremely important.   However, for one reason or another, small and medium sized companies often fail to protect intellectual property rights.  Frequently, this results in lost profits for the companies, and could ultimately result in closing of the company.  Protection of intellectual property rights in modern times has become even more important with foreign companies producing knockoff products and flooding the U.S. with the copied products.

The issue of failing to protect intellectual property is not unique to the U.S., however.  This article from the U.K discusses the importance of protecting intellectual property by a small company or individual inventor, and discloses the results of a study that indicate this is seldom done.

March Madness Protection

Is "March Madness" considered a trademark?  The short answer is yes.  There is actually a class of registered trademarks owned by the March Madness Athletic Association.  Who is that you ask?  The MMAA is actually a holding company formed by the NCAA and the Illinois High School Association.  Sound like an odd combination?  Apparently, the IHSA has used the term "March Madness" since 1939 for a state high school basketball tournamnent.  For a full history of the term as used by the IHSA, visit the History of March Madness page of the IHSA web site.  The NCAA has been using the mark for nearly 25 years.

See also Wikipedia.

Book Titles - Covered by Copyright Law?

A question that is periodically asked of us is whether or not book titles are covered under copyright law.  In general, the title of the book itself is not entitled to copyright protection.  Copyright laws protect an original work of authorship or expression of an idea.  Intellectual property law does not protect titles as easily or as comprehensively as it protects the contents of a literary work.  However, trademark law and unfair competition law may provide some protection for the book title. 

Typically, protection of a title for a single work is found in unfair competition law.  Trademark law might also be found applicable if the author/publisher can demonstrate that the title has acquired secondary meaning.  Additionally, a court may look at "likelihood of confusion" to assist in evaluation of the title to determine whether the public would be confused as to the source of the work. 

Protection of a single title in general is not easy.  More often, protection is provided for a series title (a title which runs through a series of books) under unfair competition and trademark laws. Trademark registrations are permitted for a series title.