The Big Three: Patents, Trademarks, and Copyrights

• Author: Alexander I. Poltorak/Paul J. Lerner
• Profession: Is the founder, Chairman, and CEO of General Patent Corporation (GPC), an intellectual property (IP) firm focusing on intellectual property strategy and valuation, IP licensing, and enforcement/Is the Senior Vice President and General Counsel of General Patent Corporation (GPC)
• Pages: 1-33

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CHAPTER 1

The Big Three:

Patents, Trademarks,

and Copyrights

After reading this chapter you will be able to:

Understand the various kinds of patents and the nature of the

protection offered by each.

Understand what constitutes patent infringement.

Understand the major considerations and factors to be borne

in mind when securing patents.

Know the factors involved in choosing a good patent attorney.

Understand the nature of trademarks and service marks and

the requirements for registration of these marks, as well as the

proper mode of use of a trademark or service mark.

Know how to choose a mark and determine whether it is

available for adoption.

Understand the nature of copyrights along with the uses of

copyrights in nontraditional applications, such as protection

of computer software.

Recognize work-for-hire situations that may call for a written

copyright assignment.

Understand the doctrine of fair use.

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Patents

A patent conveys to its owner the right to prevent others from making,

using, selling, offering for sale, or impor ting the patented invention.

Patents are national in nature, having effect only within the territory of

the issuing country.

The patent law of the United States provides for three kinds of pat-

ents: plant patents, design patents, and utility patents. Plant patents cover

asexually reproduced plants and are primarily of interest only to pla nt

breeders. Design patents cover the ornamental design of an article (i.e.,

its appearance) to the extent that that design or appearance is dictated by

aesthetic, rather than functional, considerations. The major ity of patents

are of the third kind—utility patents—and it is with these that we shall

be mostly, but not exclusively, concerned.

INTHEREAL WORLD

‘‘The Congress shall have the power to . . . promote the

Progress of Science and useful Arts, by Securing for lim-

ited Times to Authors and Inventors the exclusive Right to their

respective Writings and Discoveries.’’

––U.S. Constitution, Article I, Section 8

TIPS AND TECHNIQUES

To be patentable, an invention must be:

Novel

Nonobvious

Useful

2 Essentials of Intellectual Property

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A utility patent, generally speaking, may cover a device or an article,

a composition of matter, a method or process of doing or making some-

thing, or, less commonly, a new application for an existing device or

material, or a product (otherwise known and, therefore, not patentable)

made by a particular new process.

In order to qualify for a patent, an invention must be novel, non-

obvious, and useful. The utility requirement is largely self-explanatory

and rarely comprises a significant obstacle to patentability. If the invention

works, it has utility. A new chemical compound may not be patentable in

and of itself, unless there is a useful application for it. The requirement of

novelty is satisfied if no single prior art reference discloses all of the

features of the invention (i.e., the same invention was not made earlier by

someone else). The most challenging, and conceptually most complex,

requirement for patentability is nonobviousness. To satisfy this last

requirement,the invention must notbe merely a combination of elements

of prior works, such as would be apparent to a person of ‘‘ordinary skill

in the art’’ who was seeking to solve the problem to which the invention

is directed (see Chapter 11 for more on this very interesting topic).

Formerly, a United States utility patent had a term of 17 years, com-

mencing on the patent’s issue date. Under the current law, however,

utility patents have a term of 20 years, commencing on the date of filing

of the application on which it is based. The new law applies to patents

issuing on applications filed on or after June 8, 1995. Patents issued on

earlier filed applications now have a term of either 17 years from the date

of issue or 20 years from the date of filing, whichever is longer.

Although, in theory, the term of a patent may be extended if its prosecu-

tion is unduly delayed by the Patent Office, as a practical matter, a patent

term is nonextendable. The primary exception is for those patents

directed to pharmaceutical products, in which case the term may be

extended to compensate for time lost in securing the applicable regula-

tory (Food and Drug Administration) approval. Design patents have

a term of 14 years from date of issue.

THE BIG THREE 3