frequently asked questions

Disclaimer
This website is intended to provide general information on the protection of intellectual property, and not legal advice for any specific situation. Every situation is unique, and no website can possibly consider the unique aspects of every situation, or provide the proper advice for each situation. Furthermore, many situations may be covered by state law and/or the laws of foreign countries as well as federal law, and laws vary from state to state or from country to country. I therefore encourage you to consult with me to determine the best way to protect your innovations.

When should I begin investigating the patentability of my idea?
When you develop a new innovation that you believe may be commercially valuable, you should consult with a patent attorney as soon as you have reduced the idea to an enabled, workable form. You should keep your idea confidential during its development and until a patent application is filed, both to protect your idea from theft, and to prevent your own disclosure of the idea from precluding you from obtaining a patent. In the United States, you have one year from the date of any public disclosure (your invention becoming known, used, sold, offered for sale, or imported) to file a patent application in at least one country. In most other countries, if you have not filed a patent application in at least one country by the date of your public disclosure, you lose the right to file an application in that country. By filing a patent application in advance of any disclosures of your invention, you protect your worldwide rights to that invention.
What is the first step to obtaining a patent?
After determining that your idea includes subject matter that is appropriate for patent protection, a patentability search is recommended. The references found in the search can then be compared with your idea to determine the scope of patent protection that is likely to be available.
Do I need to have a working model before I can apply for a patent?
No. However, if you do have a model, it may be helpful.
How long does it take to get a patent?

The length of time varies considerably. Given the current backlog at the Patent Office, you can generally expect to wait 3-4 years from the time the application is filed.
I have an idea, but will need to consult with others with specific technical knowledge in order to fully develop the idea. What should I do?

Before disclosing your idea to others, you should have either a provisional patent application filed, or a confidentiality agreement in place. A provisional application is not examined, but preserves your filing date for one year, providing time to further develop the invention, obtain funding, etc. A patent attorney can evaluate your specific situation to determine which option is best.
Should I protect my innovations through patent protection, or through trade secret protection?

A patent provides protection against any use of the claimed subject matter, regardless of how the subject matter is obtained, for a limited period of time. A trade secret provides protection against the use of wrongfully obtained secrets for as long as the trade secret remains a trade secret. A trade secret only protects against wrongful taking of the secret, not against independent discovery of the secret.

You should consider patent protection if:
- You need the strongest possible protection for your innovations, including protection from the possibility of independent discovery of your innovations by your competitors
- Your innovations are potentially subject to reverse engineering
- The limited duration of a patent (20 years from the filing date, subject to certain extensions of patent term) is acceptable.

You should consider trade secret protection if:

You are willing to accept the risk that your competitors may independently discover your innovations
Your innovations are not easily subject to reverse engineering
You wish to keep your innovations secret for a time period longer than the period of enforceability of a patent
Your innovations have independent value derived from the fact that they are secret
You are willing to take steps to identify trade secrets and to protect the secrecy of these secrets

The best form of protection for each innovation should be determined on a case by case basis, with the advice of a patent attorney.

I would like to begin using a new trademark or service mark in conjunction with my business. What should I do?

A full trademark search should be obtained prior to using the mark. It is important to determine both whether the mark can actually serve as your trademark, and whether use of the mark would potentially infringe the trademark rights of anyone else.

If the results of the search are positive, an application to register the mark may be filed. Trademark registration provides a presumption of the right to use the mark in connection with your goods or services throughout the United States. An application for federal trademark registration can be filed based on a bona fide intention to use the mark in connection with your goods and services. However, you will need to actually use your mark in connection with your goods or services in order to complete the registration process. Furthermore, actual trademark rights result from actual use of the mark in connection with your goods and services, not from registration of the mark.
I have written a manuscript for which I would like to obtain copyright protection. What is required?

You should include a copyright notice on your manuscript to notify others of your claim of copyright. This notice is important for an award of actual damages in the event of copying. Additionally, an application for copyright registration should be filed. Registration provides the possibility of statutory damages for copying, and is necessary to provide a court with jurisdiction to hear the suit. Registration may be accomplished any time after completion of the work, but the benefits of registration only accrue after registration.
I have received a cease and desist letter, claiming that I infringed someone else’s intellectual property rights. What should I do?

You should obtain an attorney’s opinion on the issue of whether the claim of infringement within the cease and desist letter has merit. Depending on this determination, an appropriate response can be prepared. In the event that the claim of infringement has no merit, the author of the cease and desist letter should be so informed by your attorney. In the event that the claim of infringement has merit, any necessary corrective actions can be identified and taken, and/or a license agreement can be negotiated.
I have discovered someone infringing my intellectual property rights. What should I do?

An attorney can begin by preparing a “cease and desist” letter to the infringing party. Based on the response to this letter, it may be possible to reach a negotiated solution in the form of stopping the infringing activity or royalty payments from the infringing party. Alternatively, a suit can be filed against the infringing party to obtain monetary damages and/or an injunction prohibiting infringing activity.
I have a patent covering my product, but someone else claims that my product infringes their patent. Can this be?

A patent is not a grant of a right to practice an invention. Rather, it conveys the right to exclude others from practicing the invention. It is quite possible to receive a patent for an invention that, if practiced, would infringe another patent. For example, if inventor A holds a patent claiming a black and white television, and inventor B holds a patent claiming a color television, inventor B may not be able to make his invention without infringing the patent of inventor A. It may be possible to resolve the issue through licensing arrangements.
Can I prepare and file my patent application, trademark application, or copyright application myself?

I do not recommend doing so. Your intellectual property is a critical asset that needs the best possible protection. This protection can best be achieved by an experienced intellectual property practitioner.

A patent application not only includes a highly detailed description of your invention, but must also be drafted to take into account changes that a competitor may make to your invention. The claims of the application - which define the scope and limitation of the exclusive right that you seek - must be carefully drafted, a task which requires years of experience to ensure that it is done well. The rules for issuing and overcoming obviousness rejections are complex and changing. The proper foundation for responding to such rejections must be laid during initial drafting of the application by a patent practitioner who is familiar with the process. Once a patent application is filed, no new matter can be added to the application. If mistakes are made, they can be very difficult to correct.

Trademark applications may seem simple, but the simplicity is deceiving. Trademark rights accrue from use of the mark, not from registration. Therefore, ensuring that your mark does not infringe someone else's rights requires consideration of marks found in a wide variety of sources, far beyond the federal and state registration records. Proper counseling in the selection of marks can avoid not only potential liability, but also wasted time and resources pursuing registrations for marks for which trademark protection is unavailable.

The apparent simplicity of copyright applications can also be deceiving, particularly if elements of other works are incorporated in your work. In this case, it may be necessary not only to name the underlying work in the application, but also to negotiate a license with the owner of the underlying work.

Doing a job properly the first time is always easier and less costly than trying to repair mistakes later, and also ensures that rights will not be lost as a result of mistakes or omissions. Please contact me to discuss your needs before taking action yourself.