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Securing, Enforcing, and Avoiding Infringement Of SECURING, ENFORCING, AND AVOIDING INFRINGEMENT OF U.S., INTERNATIONAL, AND FOREIGN PATENTS, TRADEMARKS, AND COPYRIGHTS; SECURING TRADE SECRETS; AND AVOIDING UNFAIRUNFAIR COMPETITIONCOMPETITION 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 Brett A. North, Patent Attorney Vanessa M. D'Souza, Patent Attorney Julia M. FitzPatrick, Patent Attorney** Mackenzie D. Rodríguez, Patent Attorney Julie Rabalais Chauvin, Patent Attorney Mark N. Melasky, Patent Attorney GARVEY, SMITH, NEHRBASS & NORTH, L.L.C. PATENT ATTORNEYS 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 +not licensed in Louisiana US patent law has recently changed. Please check with us about first-inventor-to-file changes and the importance of filing patent applications early. © 1998-2016 GARVEY, SMITH, NEHRBASS & NORTH, L.L.C. PATENT ATTORNEYS 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 ..................................................... 3 10 (a) Ownership, Assignment, and Licensing ............................. 3 (b) Disclosure to the Patent Attorney .................................. 4 (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) .............................. 11 (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...................................... 13 (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 © 1998-2016 GARVEY, SMITH, NEHRBASS & NORTH, L.L.C., PATENT ATTORNEYS - (504) 835-2000; fax (504) 835-2070, GSNN.US 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 INTRODUCTION: 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 5 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 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 10 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. 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 15 intellectual property created for the person or company to the person or company. We can prepare such an agreement for you. A. PATENTS There are three kinds of U.S. Patents: Utility patents (the most common, there are over eight million); 20 Design patents (over six hundred thousand); and Plant patents (over twenty thousand). 1. Deadline for Filing a U.S. Patent Application: 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. 25 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 is first put on sale in the United States, put in public use in the United States, or is described in a printed publication anywhere in the world, but only if the activity involves the inventor filing the patent application 30 or someone who learned the invention from him. 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. To minimize the potential harmful effects of the new law on inventions which existed and for which provisional patent applications were filed after 15 March 2012 and prior to 16 March 2013, one should consider filing two full patent applications - one substantially identical to the provisional and one with any 35 changes to the invention made since the provisional was filed, or with a better explanation of the invention. The first full patent application should be governed by the old law (first to invent, and with the ability to swear behind references with an effective date less than a year before the provisional patent application filing date). The second full patent application will be governed by the new law (according to the AIA, Section 3, the new law "shall apply to any application for patent, and to any patent issuing thereon, that 40 contains or contained at any time - (A) a claim to a claimed invention that has an effective filing date ... that is on or after" 16 March 2013; "or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim." (emphasis added)). A U.S. patent application can claim priority of a patent application filed in the U.S. or another 45 country if filed within 12 months of
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