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Securing, Enforcing, and Avoiding Infringement of Us SECURING, ENFORCING, AND AVOIDING INFRINGEMENT OF U.S., INTERNATIONAL, AND FOREIGN PATENTS, TRADEMARKS, AND COPYRIGHTS; SECURING TRADE SECRETS; AND AVOIDING UNFAIR COMPETITION This paper contains general information about patents, trademarks, copyrights, trade secrets, and unfair competition, and is intended to make the reader aware of issues in intellectual property law. Because there are exceptions to many, if not all, of the rules mentioned in this paper, and because laws and rules change frequently, the reader should discuss his particular situation with a patent attorney before making any decision regarding his intellectual property rights and responsibilities. Charles C. Garvey, Jr., Patent Attorney** Gregory C. Smith, Patent Attorney* Seth M. Nehrbass, Patent Attorney Vanessa M. D'Souza, Patent Attorney Julia M. FitzPatrick, Patent Attorney** Mackenzie D. Rodríguez, Patent Attorney Julie Rabalais Chauvin, Patent Attorney Fabian M. Nehrbass, Patent Attorney GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C. Three Lakeway Center, Suite 3290 3838 North Causeway Boulevard Metairie, LA 70002; U.S.A. Tel.: 504-835-2000; Fax: 504-835-2070 e-mail: [email protected] www.neworleanspatents.com Northshore Office: No. 7 Boston Commons 832 East Boston Street Covington, Louisiana 70433, U.S.A. Tel: (985) 635-6892; Fax: (985) 635-6972 *Northshore office **Northshore office also US patent law has recently changed. Please check with us about first-inventor- to-file changes and the importance of filing patent applications early. © 1998-2018 Garvey, Smith & Nehrbass, Patent Attorneys, L.L.C. PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS CAVEAT: This paper contains general information about patents, trademarks, copyrights, and trade secrets, and is intended to make the reader aware of issues in intellectual property law. Because there are exceptions to many, if not all, of the rules mentioned in this paper, the reader should discuss his or her particular situation with a patent attorney before making any decision regarding his or her intellectual property rights 5 and responsibilities. CONTENTS: Patents. 2 1. Deadline for Filing a U.S. Patent Application. 2 2. Utility patents. 2 10 (a) Ownership, Assignment, and Licensing. 3 (b) Disclosure to the Patent Attorney. 3 (c) Patentability Search and requirements for patentability. 4 (d) Patent Application. 7 (e) Duty of Disclosure. 9 15 (f) Publication of Applications and Provisional Rights. 9 (g) Claims. 10 (h) Reissue Patents (Broadening Claims). 10 (i) Patent Prosecution. 11 (j) Patent Issue. 12 20 (k) Small Entities and Micro Entities. 12 (l) Patent Maintenance Fees. 12 (m) Representation of Inventors. 12 (n) Patent Enforcement. 13 (1) Marking. 13 25 (2) Infringement and Infringers. 13 (3) Exception to Infringement . 14 (4) Remedies. 14 (5) Time Limit for Bringing Suit. 14 (6) False Marking. 14 30 (7) Avoiding Infringement. 14 (o) Foreign Patents. 15 (1) Filing Deadline. 15 (2) PCT Patent Applications. 15 (3) Publication of Applications and Provisional Rights. 16 35 (4) Request for Examination.. 16 (5) Costs of Obtaining Foreign Patents, including Annuities.. 16 (6) Patentable Subject Matter and Obviousness Determinations. 17 (7) Oppositions. 17 (8) Revalidation Patents. 17 40 (9) Marking. 17 (p) Provisional Patent Applications.. 17 (q) Invention Marketing Companies. 18 (r) Freedom-to-operate search . 19 3. Design patents.. 20 45 4. Plant patents. 20 Trademarks. 20 Copyrights. 26 Trade Secrets. 28 Unfair Competition . 30 © 1998-2018 GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C. (504) 835-2000; fax (504) 835-2070, WWW.PATENTS.GS PERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON. -1- PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS Miscellaneous. 30 Intellectual Property Inventory. 32 INTRODUCTION: 5 A U.S. patent gives one the right to exclude others from making, using, offering to sell, or selling the patented invention in the United States, or importing the patented invention into the United States, for a limited amount of time. A trademark is a word, name, phrase, design, smell, or sound used to distinguish one's goods or services from those of one's competitors. A copyright protects architectural, artistic, musical, and literary works, including computer software, against copying. A trade secret is information that derives 10 independent economic value from not being generally known to and not being readily ascertainable by proper means by other persons who can obtain economic value from its disclosure or use, and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. Unfair competition includes false advertising, dilution of a famous trademark, conspiracy to restrain trade, and unfair methods of competition and unfair or deceptive acts or practices in the conduct of any trade or commerce. 15 In general, a person or company should get all other persons and companies who might develop intellectual property of any kind on behalf of that person or company to sign an agreement to assign all intellectual property created for the person or company to the person or company. We can prepare such an agreement for you. A. PATENTS 20 There are three kinds of U.S. Patents: Utility patents (the most common, there are over eight million); Design patents (over seven hundred thousand); and Plant patents (over twenty-five thousand). 1. Deadline for Filing a U.S. Patent Application: 25 In general, a U.S. patent application should be filed as soon as possible after an invention is made. A U.S. patent application should be filed before any non-confidential disclosure of the invention is made. If foreign patent protection is desired, a U.S. patent application must be filed before any non-confidential disclosure of the invention is made. However, if one is not interested in foreign patents, there is a one-year grace period for filing a U.S. patent application on an invention measured from the time that the invention 30 is first put on sale, put in public use, is described in a printed publication, or is disclosed in any manner non- confidentially, anywhere in the world, but only if the activity involves the inventor filing the patent application or someone who learned the invention from him (if done by anyone else, any of these activities precludes a valid patent issuing to the filer of the patent application). If the U.S. patent application is not filed within the one-year grace period, it will not be possible to obtain a valid U.S. patent on the invention. 35 A U.S. patent application can claim priority of a patent application filed in the U.S. or another country if filed within 12 months of the filing date of the earlier application (or up to 2 months later if the delay in filing was unintentional). Also, a U.S. patent application can claim priority of a prior U.S. patent application if the second application is filed while the first is still pending, and a priority claim is made within 16 months of filing 40 of the first application or four months of filing of the second application, whichever is later. The priority claim can be made later upon payment of a surcharge. 2. Utility Patents A utility patent gives one the right to exclude others from making, using, offering to sell, or selling in the United States or importing into the United States "any new and useful process, machine, manufacture, 45 or composition of matter, or any new and useful improvement thereof". 35 U.S.C. §§ 101, 271. A U.S. patent has a term beginning on the date the patent issues and ending 20 years from the date of filing of the patent application (or of the first parent application, if the patent issues on a continuation or continuation-in- part application). The term of U.S. patents which were in force on June 8, 1995 or which issue after June 8, 1995 on patent applications filed prior to June 8, 1995 is 17 years from date of issue or 20 years from date © 1998-2018 GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C. (504) 835-2000; fax (504) 835-2070, WWW.PATENTS.GS PERMISSION IS HEREBY GRANTED TO MAKE UNALTERED COPIES OF THIS PAPER, PROVIDED THIS COPYRIGHT NOTICE APPEAR THEREON. -2- PATENTS, TRADEMARKS, COPYRIGHTS, TRADE SECRETS of filing, whichever is longer. 35 U.S.C. § 154. This section contains an overview of the process of patenting an invention, beginning with the initial disclosure document. Obtaining a utility patent is a time consuming process. Most patent applications issue as patents 1½ 5 - 3 years after filing. Obtaining a patent can be relatively costly. The expenditure of time and money should be measured as an investment against the commercial value of the invention. The inventor will only profit if the patent claims adequately cover a commercially acceptable product and the product is successfully marketed. Typically, the obtaining of a patent alone will not guarantee financial rewards. The cost of attempting to obtain a patent is basically a function of the complexity of the invention, the closeness of 10 the prior art, and the nature of "actions" issued by the Patent Examiner. Not all patent applications ultimately issue as patents. (a) Ownership, Assignment, and Licensing (1) Employment Contracts and Shop Rights May Limit One's Patent Rights Many companies now require their employees to sign employment contracts which include a clause 15 which provides that all inventions made by the employee and related to the business of the company must be disclosed to the company and belong to the company. If that provision is valid and enforceable, and the invention falls within the scope of the provision, the invention may belong to the employer. See, e.g., Shamrock Technologies Inc. v. Medical Sterilization Inc., 14 U.S.P.Q.2d 1728 (Fed.
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