is the second part of a three-part series of articles
intended to provide guidance to the general practitioner
concerning intellectual property issues.
IP GUIDANCE FOR THE GENERAL PRACTITIONER
– PART II
2. Consider Registration and Filing
A patentable idea is only protected if it is the subject
of a pending patent application or an issued patent. If
a client comes to you with an idea that may be patentable,
the client should be referred to a patent attorney for
an assessment as to the patentability of the invention.
Typically, a patent search is the first step in that process.
If the idea appears to be patentable, then the next step
is to get the patent application on file. The patent attorney
will discuss various filing options with the client. Those
options include filing a U.S. provisional application,
filing a U.S. nonprovisional application, or filing a
PCT (international) application. There are various deadlines
implicated with each type of filing, a discussion of which
is beyond the scope of this newsletter.
During the pendency of a patent application (before the
patent issues), the client should include the words "patent
pending" on the products covered by the patent application.
Once the patent issues, the patent number should be indicated
on the product. Maintenance fees are payable three times
during the 20-year term of a utility patent, and if a
maintenance fee payment is missed, the patent will go
abandoned. Design patents
last for 14 years and do not require any maintenance fee
Trademarks can be registered on the state, federal and
international levels. Unlike an international patent application,
an international trademark application is an actual application
(not just a reservation of a priority date) in the relevant
countries and can result in registration in those countries
without having to hire any foreign trademark attorneys.
The international treaty that allows U.S. citizens to
file international trademark applications is called the
Madrid Protocol. Currently, there are over 60 member countries
in the Madrid Protocol, and that number is growing, making
international trademark applications an attractive and
cost-effective option for clients doing business overseas.
There is no registration process for trade secrets.
Copyright registrations can be obtained for copyrightable
works. Copyright applications are subject only to superficial
review; the Copyright Office does not conduct any examination
into authorship or originality other than what is stated
in the application. Thus, copyright registrations are
fairly easy to obtain. The applicant must submit one copy
of the work to the Copyright Office if the work is unpublished
and two copies if it has been published. In this context,
the term "published" means made available to
the public. For software applications, the applicant need
not disclose the entire code base; instead, only the first
25 and last 25 pages of code need be filed.