INTRODUCTION TO INTELLECTUAL PROPERTY FOR GENERAL PRACTIONERS
Reprinted from Traps For the Unwary Practioner by Mark J. Ingber, Esq.
What steps you should recommend that your client take to protect its idea? There are several steps you should take during the period between the birth of your client’s invention and the launching of its commercial ‘product to protect it.
Upon conception of your client’s invention, it should be disclosed to at least two “trustworthy” witnesses and documented in a notebook. Critical dates such as dates of conception, dates of testing, and the activities perfonned on these dates should be clearly recorded and witnessed. Documentation can be critical in protecting an invention. For example, documentation can be used to win a dispute against another who claims to have invented the idea before your client under U.S. patent taw, the inventor who is entitled to a patent is the one who first conceives of the invention, provided they are diligent in completing it. Further, such documentation can be relied on in case someone steals the invention.
In addition to accurately documenting the invention, as an attorney you must advise your client of the following:
1. File within one year of selling or ,disclosing the invention. The patent laws require that the inventor file for a patent within one year of publicly disclosing or selling the invention; that is, for example, within one year of publishing an article on the invention, circulating litemture which discloses the invention, giving out samples of the invention; or selling or offering to sell the invention. This requirement is strictly enforced. However, the inventor can experimentally test the invention. In spite of this one year grace period. it is always recommended that the client forego any disclosures or sales until they first see a patent attorney or patent agent
2. If possible, build more than one prototype of the invention. The patent laws do not require that the inventor even build one prototype of the invention in order to apply for a patent However, if the inventor does build a prototype, advise the inventor to build more than one. You would be surprised to learn of how many new inventions are. tested and destroyed in the process. For example, recently, a fishing lure designer lost his only prototype for a new fishing lure to a large bluefish or striper. This lure could have puthim in a league with the large fishing manufacturers.
B. What should you recommend your client do with its invention? Upon completion of your client’s invention, during testing, or even right after it has been conceived. you should contact a registered patent attorney or patent agent, the only one who can practice before the Patent Office, to authorize a patentability search on the invention for related patents andlor literature. The patent attorney or agent will then review this material and give you an opinion on whether the invention is patentable, focusing on whether the invention is novel and non-obvious compared to the references uncovered.
If the patent attorney or agent determines that the invention is patentable, then you should have them prepare and file a patent application on the invention. After filing that patent application in the Patent Office, the invention is considered to be “patent pending.” Thus, any documents which describe the invention and even the product itself should be marked “patent pending”. A “patent pending” does not give any immediate rights, but puts those who might want to use your idea on notice that they do so at their peril – if and when a patent issues, they will not be able to sell their product Additionally, the pending patent is a useful property right for which a manufacturer may want to obtain a license, so that it can use the idea andlor prevent the competition from using the idea.
Although, theoretically, any person is permitted to prepare, file and process an application, rarely can this be done successfully without the assistance of a patent attorney or agent It is a rare person that can build his own hellse.
CAVEAT EMPTOR as to invention marketability companies who promise the sun and moon, but almost always leave inventors with nothing but exorbitant bills.
In addition to patent protection, your client can also rely, to a certain extent, on trademark protection. A trademark is a distinctive word., name, symbol or device or any combination thereof which is used to identify and distinguish your client’s goods from those manufactured or sold by others and to indicate the source of those goods. Once you have obtained trademark rights for your client on a particular mark for use on a product, no one can use that mark (or a similar mark) on the same or similar products. Some examples of registered trademarks are:
BMW® – Imported sportscars.
COCA COLA® – Soft drinks and other products.
BURGER KING® – Restaurant services.
CALVIN KLEIN® – Clothing.
Generally, trademark rights are secured upon proper use of the mark in commerce. In order to ‘minimize the business risk of infringing on the rights of a prior user, it is highly recommended that your client register its mark with the Patent and Trademark Office. Such federal registration provides it with a bundle of rights that are not available for unregistered marks, including national protection against confusingly similar marks. Further, your client would then be permitted to use the ® symbol, which provides notice to its competitors that its mark is registered.
Before recommending to your client that it begin using the mark on its product or registering it. a trademark search should be performed by a trademark attorney to determine whether the mark can be used and to register the mark. Such trademark search is separate and apart from a corporate name clearance search, which does not give that corporation the right to use that designation in commerce. The superior trademark rights of prior users of the name are not superseded by any acceptance of registration by the Secretary of State, which may give a false sense of security. Indeed, New Jersey enacted N.J.S.A. 14A: 2-2 to codify this principle:
“The filing in the office of the Secretary of State of the certificate of incorporation of a domestic corporation or the issuance by the Secretary of State of a certificate to a foreign corporation authorizing it to transact business in this State shall not preclude an action by this State to enjoin a violation of this section or any action by a person adversely affected to enjoin such violation or the use of a corporate name in violation of the rights of such person, whether on the principles of unfair competition or otherwise. The court in any action may grant any other appropriate relief.”
Beginning in 1989, it became possible to protect a mark your client merely intended to use on a new product. even before the product is actually on the market. 15 U.S.C. Section 1051(b). A trademark application can now be filed in advance of any use based on an “intent to use” the mark. A qualified trademark attorney can . help you decide if this form of protection is right for your client
In addition to words and symbols, the law of trademarks can protect a product’s non-functional appearance, known as its trade dress. Accordingly, if a product’s design is inherently distinctive or haS acquired recognition in the marketplace based on that design, the theft or infringement of that design can be halted by court action. For example, Ferrari was able to prevent competitors from stealing the design of its Ferrari Daytona Spyder classic sports car based on its distinctive trade dress. Actions against “copycats” forinfringement of a product’s trade dress can be highly effective.
Finally, copyright protection might be available to protect your client’s design. Copyright protection applies to a work’s ornamental and artistic features. Accordingly, if the product has such features, then it is ripe for copyright protection.
Protectiori is automatic upon cre!lting the work. However, the work should be federally registered to provide additional rights not offered by an unregistered work. For example, the Copyright Act requires that a copyright claim be registered with the Copyright Office before an action for infringement may be instituted. 17 U.S.C. Section 411(a) (although courts have been lenient and have permitted infringement actions to proceed if the Plaintiff had merely filed for a copyright prior to instittiting suit).
One violates or infringes a trademark if and when there is a likelihood of confusion between the respective marks. Copyrights are violated or infringed by copying. Proof of access and substantial similarity is generally necessary to establish copyright infringement
Mark J. Ingber, Esq. practices extensively in the area of Intellectual Property (patents, trademarks, copyrights and unfair competition), with offices in Livingston and Garden City, New York. He is a frequent speaker on Intellectual Property seminars for the Essex, Morris and Union County Bar Associations. ©1997, Essex County Bar Foundation. Reprinted with permission.
Publishing and technical assistance provided by New Jersey Lawyers Diary and Manual.