US Patent Basics

1. Overview
a. A TRADEMARK is a word, name symbol or device or any combination thereof adopted and used by a manufacturer or merchant to identify the goods and distinguish them from those manufactured or sold by others.
b. A TRADEMARK designates ORIGIN of a good (or service).
c. ACQUISITION
i. Trademark rights are generated by adoption and proper use. The trademark continues as long as it is properly used.
ii. FEDERAL TRADEMARK REGISTRATION
(A) Federal Registration provides notice of claim of ownership and affords many rights to the registrant (trademark owner) including the right to bring suit in U.S. Federal Court and may be used to prevent the importation of infringing goods.
(B) Registered marks may become incontestable after five years of continued use.

2. APPLICATION for Trademark Registration
a. An application for Federal Trademark Registration may be based on use in commerce.
b. An application for Federal Trademark Registration may be based on intent to use. If there is an actual intention to use the mark, the application is made before the mark is used(to reserve mark).
c. Use is needed before registration is activated.

3. BEFORE ADOPTION the Trademark Should be Cleared for Use
a. Search to determine if someone else has adopted and used the mark.
b. Check to determine if it is a strong mark
i. Arbitrary and Fanciful = Strong Mark (KODAK).
ii. Descriptive = Weak Mark (SPEEDY BIKE).
iii. Check advertising and literature to insure proper use.
iv. Use the mark consistently.
v. Use the mark as adjective in sentences (KODAK film...)

1. INVENTION AND PATENTABILITY

a. In general an invention is anything new to the inventor.
b. A patentable invention is something that is:
i. NOVEL (35 USC § 102) -- something that is new (this includes a new improvement of an existing thing).
ii. UNOBVIOUS (35 USC § 103) --something that is not obvious to one of ordinary skill in the art (such as an obvious combination of existing technology).
iii. USEFUL (35 USC § 101) -- for UTILITY inventions a process, machine, manufacture, or composition of matter.

2. PATENTS AND PATENT APPLICATIONS
a. UTILITY PATENTS can cover a process, machine, manufacture, or composition of matter.
i. Obtained by filing a regular patent application with the U.S. Patent and Trademark Office (USPTO). The U.S. patent application must describe how to make and use the invention describing the best version and must include claims clearly defining what is to be protected.ii. A PROVISIONAL patent application may be filed before filing a regular patent application. A provisional application must be followed by a regular patent application (within one year) in order to have the USPTO eventually examine the patent application (to determine patentability) and to obtain a patent. PROVISIONAL patent applications are useful to defer costs until after marketing and development are further analyzed.
iii. PATENT RIGHTS
(A) The duration of a patent (utility patent) is twenty years (if U.S. maintenance fees are paid) from the filing date of the patent application. The protection afforded by the patent starts when the application issues as a U.S. Patent
(B) Patent covers what is claimed. The patent owner is given the right to bring suit against an infringer of the claimed invention. Patents do not cover features which are disclosed but not claimed.
(C) One patent disclosure (from an initial patent application) may be used as the basis for several patents (i.e. several patents issue with identical disclosure with each patent having claims which focus on a different invention).
(D) The history of the patent application may affect the interpretation of the claims (i.e. claim language may be defined during the patent application process which restricts the interpretation of the claim).
b. DESIGN PATENTS cover any new original and ornamental design for an article of manufacture.
i. The duration of a DESIGN patent is fourteen years.
ii. A DESIGN patent covers what is shown in the design patent drawings.

3. LOSS OF RIGHTS
a. PUBLICATIONS destroy patent rights unless
i. The publication is made less than a year before the application filing date and the inventor can demonstrate to the USPTO that he/she invented the subject matter before the publication date.
ii. The publication is by the inventor and is made less than one year prior to the U.S. filing date (there is a one year grace period before the inventor�s publication is considered prior art).
b. ABSOLUTE NOVELTY: Any publication disclosing the invention will bar an inventor from obtaining patent rights in many countries (NOT USA) such as Germany, France, UK etc. (See our section on Foreign Patent Filings).
c. A publication may destroy trade secret protection.

4. PATENT MARKING: After a patent application has been filed the article which employs the invention may be marked with the legend "patent pending" or "patent applied for".

5. INFRINGEMENT
a. Injunction against future infringement (shut down manufacture of article or stop importation of article).
b. Compensatory damages of not less than a reasonable royalty of license for using the invention.

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