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.

I. Protecting useful inventions, devices, and processes.
II. Protecting your trademarks – your business name as well as your product or service names.
III. Protecting your copyright – your creative expressions
IV. How can I profit from my invention?
V. Why you should utilize a registered patent attorney

I. Protecting useful inventions, devices, and processes.
- 1. 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.
  
  Now that the America Invents Act has been signed, it is more important than ever to file patent applications as early as possible. Under the previous law, the first inventor to invent a given invention is entitled to the patent. However, under the new law, the first inventor to file a patent application is entitled to the patent, regardless of who was first to invent. By filing early, you protect your rights to your invention. Please see my information page addressing the America Invents Act for more information.
  
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- 2. 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.
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- 3. 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.
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- 4. 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.
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- 5. 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. Having both is better. A provisional application is not examined, but preserves your filing date for one year, providing time to further develop the invention, obtain funding, etc. I can evaluate your specific situation to determine your best course of action.
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- 6. I have developed a new software package. What type of protection should I seek?
  The scope of patent eligibility for software has been the subject of numerous court decisions. In general, algorithms are not protectable. The claims must tie the process steps to a specific machine, and simply reciting a general purpose computer is insufficient. However, solutions to specific problems in the world of computers remain protectable. Your software should be evaluated for patent eligibility, and if appropriate, a patent search should be performed and a patent application filed as soon as your software is developed to the point that one skilled in the art can be taught to make and use the software. Regardless of whether patent protection is appropriate, copyright registration should be sought after completion and before sale or distribution of the software.
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- 7. Someone else is making or selling my patented device. What should I do?
  Initially, I will need to compare your claims to the allegedly infringing device to determine whether your patent is being infringed. I can begin by sending a cease and desist letter, explaining and demonstrating your patent rights, and demanding that they stop infringing the patent. Often, this is enough to persuade the other party to stop and/or to enter a license agreement. If not, then we can file suit against the infringing party, seeking monetary damages and an injunction. Once they have been notified of the existence of the patent and a claim of infringement, they must take reasonable steps to determine whether or not they are actually infringing, or they risk a finding of willful infringement. This can result in enhanced damages as well as attorney fees.
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- 8. I received a cease and desist letter accusing me of infringing a patent. What should I do?
  You should promptly take action. The merits of the claim of infringement must be promptly investigated. The patent itself as well as its prosecution history at the US Patent and Trademark Office must be reviewed and considered. The claims must be compared with the accused product or process. If the claim is meritless, which they often are, then we can so inform the accuser, and you can continue your activities in relative safety (although that is no guarantee that you will not be sued). If the claim has merit, then steps can be taken to mitigate or avoid liability by stopping infringement, or negotiating a license agreement.
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- 9. 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.
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- 10. 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 should consider trade secret protection if:
  The best form of protection for each innovation should be determined on a case by case basis. Please call me to discuss your specific situation.
  
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- 11. I would like to obtain patent protection in foreign countries. How should I proceed?
  
  Your initial foreign filing must be accomplished within 12 months of any prior US patent application for which you would like to claim the benefit of the filing date. If you have publicly disclosed your invention, you must be able to claim the benefit of an application having a filing date prior to your date of disclosure.
  
  In most countries, the initial filing is accomplished with a single international application filed under the Patent Cooperation Treaty. This application serves primarily to preserve your filing rights in countries that have signed this treaty, but also provides a preliminary examination that can be used to address any issues related to patentability prior to filing in individual countries. If you wish to obtain protection in countries that have not signed the Patent Cooperation Treaty, such as Taiwan, you must file applications directly with the patent offices of these countries, usually 12 months from your US filing date.
  
  After filing a Patent Cooperation Treaty application, national applications in individual countries where you would like to seek protection must generally be filed 30 months after your original US filing date in order to get the benefit of this date. Applications in the European Patent Office can be filed up to 31 months after your original US filing date.
  
  Foreign patent protection is very expensive. For most individuals, small businesses, and medium size businesses, I believe that limited resources are better spent commercializing the invention unless specific reasons exist to obtain protection in a specific country.
  
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II. Protecting your trademarks – your business name as well as your product or service names.
- 1. 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.
  
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- 2. I have been using my current business name for quite some time. Is there any need to obtain a trademark registration?
  Yes. Your use of your trademark provides the right to use the trademark within the current geographic area in which it is currently used. However, it will not stop someone else from filing an application to register a confusingly similar trademark. If this application is allowed, they will have a presumption of the right to use the name throughout the entire country, and you will lose the right to expand your business under your current trademark without initiating an opposition or cancellation proceeding against the owner of the other trademark. Early federal registration provides the best, least expensive protection for your trademark.
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- 3. I was able to register my business name with the state and/or obtain a domain name. Does this mean I am not infringing anyone else’s trademark?
  No. Business name or domain name registration is granted unless there is an exact match to the proposed name. The standard for trademark infringement is likelihood of confusion, requiring a much broader search to ensure that you may use a particular name without risk of liability.
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- 4. Can I use something similar to another trademark if I add to it or change it enough to make it “different?”
  It depends on the strength of the other trademark and the degree to which your proposed trademark is different, but you probably cannot safely use such a trademark. The standard for trademark infringement is likelihood of confusion. If use of the modified name would still cause a consumer to believe that your product or service is affiliated with or endorsed by the other trademark holder, you would be liable for trademark infringement. A full clearance search is always recommended before beginning use of any trademark.
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- 5. I have created a particularly unique logo. Is trademark the only or best way to protect that logo?
  If your logo serves to identify a source of goods or services, then trademark protection is the most critical form of protection. However, your logo may also be appropriate subject matter for copyright protection, and both forms of protection should be considered.
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- 6. I would like to use my logo on a T-shirt or other clothing. Can I obtain trademark registration?
  The specific manner in which you intend to use the logo should be reviewed. In many cases the logo will be viewed as “ornamentation” rather than as an identifier of a source of goods or services.
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- 7. Someone else is using a trademark that is confusingly similar to my trademark. What can I do?
  We can begin by sending a cease and desist letter, explaining and demonstrating your rights the trademark, and demanding that they stop using the confusingly similar trademark. Sometimes this is enough to persuade someone to pick a different name. If not, then we can file suit for trademark infringement, with the goal of obtaining monetary damages and an injunction. Once they are aware of the infringement accusation, if they fail to take reasonable action to ensure that they do not infringe, they risk liability for willful infringement, subjecting them to potentially enhanced monetary damages and attorney fees.
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- 8. I received a cease and desist letter accusing me of infringing someone else’s trademark. What should I do?
  
  You must act promptly to ensure that you are not infringing the trademark. The rights of the accuser to their trademark, as well as your rights to your trademark, must be investigated to determine who has superior rights, and in which geographic region those rights are superior. The similarity of the trademarks, the strength of the trademarks, the goods or services sold under the trademarks, and other factors must be reviewed to determine whether a likelihood of confusion exists.
  
  If there is no likelihood of confusion or if you have superior rights in the relevant geographic region, we can inform the accuser of this fact, and you can continue your activities with relative safety (but no guarantee that you will not be sued). If infringement appears likely, then steps can be taken to mitigate your liability for trademark infringement, including discontinuing use of the infringing trademark, negotiating a coexistence agreement, etc.
  
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- 9. How can I protect my trademark in foreign countries?
  
  Trademark protection can be extended to foreign countries through the Madrid Protocol. After filing an application for US registration, a trademark owner may file an international application through the US Patent and Trademark Office. If this application is filed within 6 months of the US application’s filing date, it may claim the filing date of the US application. The application will be examined by the International Bureau of the World Intellectual Property Organization. If the trademark is registered by the International Bureau, then the trademark application will be transmitted to the individual countries in which the applicant seeks protection for examination in these countries.
  
  Although the laws of each country vary, in most cases actual use of the trademark within each country in which trademark registration is sought will be necessary to obtain registration in that country, or to defend a registration in that country.
  
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III. Protecting your copyright – your creative expressions
- 1. I have written a manuscript, prepared a musical composition, some artwork, etc. for which I would like to obtain copyright protection. What is required?
  
  An application for copyright registration should be filed, preferably before your work is published, provided to others, or otherwise made publicly available. 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. Furthermore, obtaining the full benefits of registration – specifically statutory damages and attorney fees - generally depends on completing the application process prior to infringement against whom the statutory remedies are sought, although an exception exists for works that are infringed after publication, and for which registration is sought within three months of the first publication.
  
  You should include a copyright notice on your work to notify others of your claim of copyright. Although such a notice is not required to receive monetary damages, the absence of a notice can give an infringer the opportunity to prove innocent infringement, which can reduce the amount of a monetary damage award.
  
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- 2. I would like to include work created by someone else within my own work. Is this permissible?
  Yes, but this must be done carefully. Your copyright application must disclaim pre-existing work that is included within your work. Depending on the amount and substantiality of the pre-existing work included, you may also need to obtain a license from the owner of the copyright in the pre-existing work before copying or distributing your own work. Particularly in the case of musical compositions, even the inclusion of small amounts of work owned by others has resulted in substantial litigation. In some cases a license agreement from the owner of the pre-existing music copyright may be necessary in order to obtain copyright registration.
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- 3. In addition to registration, are there any other steps I should take to protect my copyright?
  If you are distributing the work to others for collaboration, to seek license agreements for your work, etc., document and retain copies of all correspondence with others. Copyright infringement requires actual copying, which is proven by proving access to the work plus substantial similarity of the allegedly infringing work to the copyrightable elements of the protected work. The degree of access and substantial similarity required are sliding scales – the more access can be shown, the less similarity will be needed to prove copying. Retaining copies of your correspondence will help prove access, thus making proof of substantial similarity easier.
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- 4. Is it possible to use someone else’s copyrighted work without infringing their copyright?
  
  It is possible to use copyrighted works to a limited extent as “fair use.” Fair use is determined by analyzing the purpose and character of the use (nonprofit educational uses are more likely to be fair than commercial uses, “transformative” uses that change the nature of the work are more likely to be fair), the nature of the copyrighted work (facts cannot be protected through copyright but the manner in which they are expressed is protectable, so factual works are subject to less protection than fictional works), the amount and substantiality of the portion used as compared to the work as a whole, and the effect of the use on the commercial value of the work.
  
  The above factors will be weighed differently in different situations, and you should not assume that your use is fair without consulting an attorney familiar with copyright law. Please contact me with your specific questions.
  
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- 5. Someone is infringing my copyrighted work. What should I do?
  
  Hopefully you applied for registration prior to the commencement of infringement, because prior registration provides the opportunity to gain statutory damages (which do not have to be proven) and attorney fees. However, even without prior registration, a decision from the Copyright Office can be obtained on an expedited basis, and actual damages and possibly an injunction are still available.
  
  The first step is a comparison of the copyrightable elements of your work to the allegedly infringing work, as well as an evaluation of the degree of access that the infringer had to your work. If I determine that infringement is occurring, the next step is typically a cease and desist letter. This letter is often enough to stop the infringing activities, but sometimes litigation is required.
  
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- 6. I received a cease and desist letter accusing me of copyright infringement. What should I do?
  You cannot safely ignore the letter. A comparison of your work with the copyrightable portions of the allegedly copied work must be performed. Additionally, your access to the copyrighted work must be evaluated. The registration status of the allegedly copied work should also be checked to determine your potential liability. If your work is sufficiently different or amounts to fair use, then we will inform the accuser of this fact, and you may proceed with relative safety, although you could still be sued. If infringement appears likely, then we can take steps to mitigate your exposure to liability, such as stopping the allegedly infringing activity and/or negotiating a license agreement.
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- 7. How can I protect my copyright in foreign countries?
  If foreign protection is desired, the laws of the country wherein protection is desired should be researched prior to publication of the work, if possible, because the availability of protection may depend on facts at the time of the first publication of the work. Depending on the country in which protection is sought, one or more of several different international treaties may simplify the application process. One of the most common treaties is the Berne Convention. Copyright protection automatically exists for copyrightable subject matter in countries that have signed this treaty, without the need to take any formal steps.
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IV. How can I profit from my invention?
- 1. How can I find a licensee to license my invention?
  
  Finding a large company to license your invention is often the route chosen by inventors. Although this route appears simple at first, it is typically very difficult to find a company interested in licensing an invention. Those with the highest chance of success will be those who are recognized experts in their field, and/or those who have a pre-existing relationship with the prospective licensee.
  Be careful how you present your idea to prospective licensees. Many companies have “idea submission web pages. However, by clicking “submit,” you agree that they are free to use the idea unless it is the subject of an issued patent, making the use of these pages a bad idea. Even without using these pages, you will often be asked to sign an agreement. Some of these agreements are reasonable, some are unreasonable, and all will protect the prospective licensee from liability for using anything that their own employees develop independently. Any document you are asked to sign should be reviewed by your attorney before you sign it.
  I generally do not recommend the use of “invention promotion” companies. You understand the need for your invention better than anyone else, making you the best person to sell your invention. If you choose to work with these companies, investigate their track record carefully before proceeding.
  
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- 2. Should I use a “crowdfunding” website?
  
  I encourage my clients to use “crowdfunding” websites to commercialize appropriate inventions. Please understand that crowdfunding has a broad, commonly understood definition, as well as a narrower definition. The broad definition includes websites where product pre-orders and other “rewards” are provided in exchange for funds, while the narrow definition refers to the exchange of equity for funds, and is regulated by the Securities and Exchange Commission. I refer here to the broad definition, not the narrow definition.
  
  Crowdfunding provides the advantage of simultaneously test-marketing while raising funds, while retaining 100% equity in your business. This avoids the many complications that can arise when equity in your business is surrendered.
  
  A good crowdfunding campaign will require a good working prototype of your invention, a good video showing how the invention works and its advantages, and a good explanation of why people should want the invention. Traffic should be driven to the campaign through social media and other advertising.
  
  Crowdfunding is an important aspect of commercializing your invention, but is not the only aspect. You should begin any commercialization effort by preparing a business plan specifying the necessary steps and how each will be accomplished
  
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- 3. Should I seek investors to fund commercialization of my invention?
  
  The answer is "it depends." Taking on an investor is often a necessary and helpful step in the growth of a business. It is also a risky step, and taking on the wrong investor and/or taking on an investor the wrong way can be disastrous. Taking on an investor is essentially taking on a partner. You should only take on partners who share your goals, values, and ethics, and who are actually as capable, dependable, and trustworthy as they represent themselves to be.
  
  On the one hand, the investor is going to want something of value in return for his investment. It is also possible that the investor brings business savvy which, combined with your technical knowledge of the invention, can help both of you succeed. If you are willing to respect each other's knowledge and work together accordingly, this can be very beneficial. On the other hand, it is possible that the investor has different goals and/or ethics than you, and you want to make sure that, if whatever deal you make falls apart, you leave with your intellectual property intact and in your possession.
  
  If the investor is willing to agree to it, I encourage maintaining ownership of the intellectual property yourself or in another company that you own entirely, and giving the business entity that is taking on an investor an exclusive license to use the intellectual property, with the license terminating upon the failure to meet significant obligations to you (for example, your being pushed out of the company by your investors).
  
  You also need to be careful about how, and how much, equity in the company you give up. Depending on the specific business form you use, it may be possible to separate ownership equity from decision making authority in a mutually agreeable way. The value of your business will start out low. As you progress towards bringing the invention to market, your business will hit certain milestones that will increase your value. If you try to get all the funds you need at once, you will need to give up too much equity in the business. Instead, try to get enough funds to hit the next milestone, and then seek additional funds based on a now increased company value. This will permit you to give up less equity to ultimately gain the same amount of investor funds.
  
  You will need to be very careful with your disclosures to your investors, so that you are not open to being sued for misrepresentation if things do not go as planned.
  
  As with any business agreement, your agreement with any partners should specify everyone’s responsibilities as well as what happens if those responsibilities are not met, and should provide a fair way out in case exiting the partnership becomes necessary.
  
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V. Why you should utilize a registered patent attorney
- 1. 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. Protecting your intellectual property is not only necessary to prevent theft by competitors, but also to attract the investors that may be necessary for commercialization of your invention. 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.
  
  Many inventors file self-prepared provisional patent applications. Provisional patent applications are not examined, but preserve their filing date for one year. A utility patent application claiming the benefit of the provisional patent application must be filed within that year in order to preserve the filing date. However, actual entitlement to the filing date will depend on the extent to which the claims in the utility patent application are supported by the provisional patent application. Any claim containing even a single detail that is not supported by the provisional patent application will not be entitled to the provisional patent application’s filing date. In such a case, any public disclosure of the invention more than one year from the utility patent application’s filing date will result in invalid claims and potentially an invalid patent.
  
  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.
  
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- 2. Can't I save money by having a document preparation service prepare my patent or trademark application?
  
  These document preparation services claim to provide services at lower cost than a typical law firm. However, read the description of what you actually get carefully – the total cost estimate may be lower, but you might not get much for the amount you spend. A patent application is a lengthy, complex document that must be carefully drafted in order to ensure the broadest possible protection for your invention. Although a trademark application may appear simple, there are numerous issues that may affect your ability to obtain registration and/or right to use a given name or mark, and it is critical to spot these issues early in the application process. For more information, read the opinion of the Pennsylvania Bar Association’s Unauthorized Practice of Law Committee here.
  
  Consider the value of the intellectual property you wish to protect before deciding who to retain to protect these valuable assets.
  
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- 3. What about companies that claim to be able to market my invention?
  
  There is no shortage of unscrupulous companies looking to take advantage of the enthusiasm of new inventors. Based on the experiences of clients who approached or used such companies before retaining me, proceed with caution and investigate any such company thoroughly before retaining them. For more information, see the Federal Trade Commission’s web page on invention promotion firms , as well as the related page on the US Patent and Trademark Office website. Search both sites for complaints about any specific companies you may wish to consider. Before doing your search, check with the Department of State in the state where the company is located to determine whether the name is a fictitious name for another company, and perform your search using both names. Additional information can often be found simply by performing an Internet search for the name of the company you are considering.
  
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