Patents FAQ

What are the types of patent?

The types of patent are utility, design, and plant patents. A utility patent protects how an invention works. A design patent protects an ornamental design on a useful article. A plant patent protects new types of plants produced by cuttings or other nonsexual means.

What is the term of a patent?

The term of a patent is twenty years from the patent application’s earliest priority date, excluding a provisional application priority date.

What are the sections comprising a utility patent application?

A utility patent application may contain multiple sections. Some of the more relevant sections are discussed briefly below.

A background section describes a problem which the invention seeks to address, how that problem has been addressed in the past, and what deficiencies where inherent in those past attempts to solve this problem.

A detailed description section explains how each of the included embodiments of the invention works, the explanation allowing a person of ordinary skill in the art to reproduce the invention without undue experimentation.

A claim section includes a listing of independent and dependent claims, each claim defining one or more elements of an embodiment of the invention. The claims define the scope of protection provided by the patent.

A drawings section includes simple black and white line figures showing at least each of the element recited in the claims.

Can a design patent application claim priority to a utility non-provisional patent application?

A design patent application may claim priority to a pending utility non-provisional patent application, but not to a provisional patent application. The drawings in the earlier filed utility non-provisional application must adequately support the drawings to be filed in the design application. The design patent application cannot claim priority to a provisional application that the utility non-provisional application claims priority to. The priority date for the design application will be the actual filing date of the utility non-provisional patent application.

Can a utility non-provisional patent application claim priority to a design application?

A non-provisional utility patent application may claim priority to a design patent application provided that the design patent application provides the proper support for the disclosure in the non-provisional application.

Trademarks FAQ

What is needed to show use in commerce?

For goods, use in commerce refers to the product being sold or shipped within the United States in the ordinary course of trade with the mark displayed on the product itself or on external materials such packaging, tags, and labels. A point-of-sale display or brochure may suffice as a specimen of use for goods. Advertising and marketing alone are generally unacceptable to show use in commerce.

For services, use in commerce refers to the services being provided within the United Sales in connection with the mark. Acceptable specimens of use for service marks may include advertising and marketing materials displaying the mark and referencing the services identified in the application.

What is the time frame for claiming use in commerce for an intent to use based trademark application?

There are three periods during which use in commerce may be claimed:

  1. Use in commerce may be claimed between the date the trademark application is filed and the date the mark has been approved for publication.
  2. Use in commerce may be claimed within the first six months after the date that the Notice of Allowance is issued.
  3. Use in commerce may be claimed within six months of the filing of an extension request for a fee. A total of five extension requests may be filed thereby allowing for a total of 36 months of extension time from the date of the issuance of the Notice of Allowance.

What is the difference between common law trademarks and a federal registration?

Common law trademark rights are based on a judicially created scheme of rights governed by state law and developed through use. Common law trademark rights are limited to the geographic area in which the mark is used.

Federal registration trademark rights are based on a federal statute and do not initially require use of the mark. Federal registration trademark rights do not have the geographic limitations of common law trademark rights.

Copyrights FAQ

Do I need a registration to sue for copyright infringement?

Yes, owners must register their copyright before filing a lawsuit for copyright infringement. The Supreme Court held on March 4, 2019, in the case of Fourth Estate Public Benefit Corp.  v., LLC that an owner must have already obtained a registration from the U.S. Copyright Office prior to bringing a copyright infringement lawsuit.  It is no longer sufficient to simply file a copyright application prior to filing a copyright infringement lawsuit.

A creator of an original work owns a copyright in his work just by creating it. However, the creator cannot enforce that copyright without first obtaining a copyright regurgitation.

What are the factors considered in determining fair use?

The factors that are considered in determine whether an unauthorized use of materials qualified as fair use are:

Purpose and Character of the Use

This fair use factor refers mainly to the function for which the copied material is being used. Copyright law favors encouraging scholarship, research, education, and commentary. However, an educational or scientific use that is for commercial purposes may not be excused by the fair use doctrine.

A commentary that satisfies fair use must be transformative. A transformative use must add something new, with a further purpose or different character, and must not merely substitute for the original use of the work. In evaluating whether a use is transformative, it is determined whether (1) the material taken from the original work has been transformed by adding new expression or meaning and whether (2) value was added to the original work, thereby creating new information, or new aesthetics, or new insights and understandings.

Nature of the Copyrighted Work

This factor refers to the nature of the work that is being copied. Specifically, this factor differentiates between factual works and creative works.

Copying a factual work, such as a biography, is more likely to be fair use than copying a fictional work, such as a romance novel or horror movie.

Amount of Copyrighted Work Used

This factor refers to the quantity and quality of the copyrighted material used. Specifically, if the material used includes a large portion of the copyrighted work, fair use is less likely to be found. Alternatively, if the material used employs only a small amount of copyrighted material, fair use is more likely.

Effect of the Use on Potential Market for the Work

This factor refers to the effect of the use on the potential market for the work that was copied. It considers whether unauthorized use hurts the current market for the original work and/or whether the unauthorized use could cause substantial harm if it were to become widespread.

Why should I register my work at the US Copyright Office?

US law considers your work protected from the moment of creation, even if you do not register it at the United States Copyright Office (“USCO”). However, registration adds a powerful layer of protection for your work, especially if you find yourself in a legal dispute.

The most valuable benefit of registering copyrights is the ability to file a lawsuit for copyright infringement. In most jurisdictions, a copyright owner cannot file a lawsuit to enforce/protect its copyrights until the U.S. Copyright Office has issued a registration.

A registration before, or within five years of, publication of the work establishes prima facie evidence of the validity of the copyrights and the facts stated in the registration certificate which facts include the identity of the copyright owner. A necessary element in ant successful copyright litigation.

As to damages, if you register your work either prior to it being infringed or up to three months after publication, in the event of a successful claim, you will be eligible to receive statutory damages and, at the court’s discretion, reimbursement of legal fees.

The owner of registered copyrights is also eligible to participate in a U.S. Customs and Border Protection (“CBP”) program. The CBP will seize and detain imported goods that violate intellectual property rights in the United States. Registration is required to participate in this program.

Lastly, USCO records can be used to publicly identify the creators and copyright owners of registered work, so you can also include contact details in case someone would like to license your images.