Category Archives: What Is…?

What Is a Copyright?

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

PSMN What Is...? SeriesIn the next installment of our continuing “What Is?” series, we are going to discuss copyrights. One of the core intellectual property rights that exists under U.S. law is a copyright. In a nutshell, it is a legal right that provides authors of certain types of original and expressive works that have been fixed in a tangible medium the right to prevent others from using the work without the author’s permission. Obviously, there is a lot more detail behind this, so we will only cover some of the basics in this post.

First, only certain types of works are eligible for copyright protection. They include (1) literary works, (2) musical works, (3) dramatic works, (4) choreographic works, (5) pictorial, graphic, and sculptural works, (6) motion pictures and other audiovisual works, (7) sound recordings, and (8) architectural works. In addition, the work must have been fixed in a tangible medium to be eligible for a copyright—e.g., written down, put on film, or written in a computer. Certain things cannot be copyrighted, such as (1) things that have not been fixed in a tangible form (e.g., thoughts in your head or speeches that are not recorded or written down), (2) titles, names, and short phrases, (3) ideas, methods, inventions, or systems, and (4) standardized and commonly known information, such as standard calendars, tape measures, and lists or tables of publicly known information.

Second, in order to be eligible for a copyright, the work must be original. But, it does not have to be novel. In other words, the author must show that he or she created the work (and did not copy it from someone else), but the author does not have to show that he or she was the first to ever think of the work.

If an author can satisfy these requirements, he or she has a copyright. Under the change in federal law in 1976, a copyright exists under federal law the moment an author fixes an original expressive work in a tangible medium. There is no longer the need to affix a copyright symbol to the work or register the work with the U.S. Copyright Office. But, and this is a big but, there are a number of important advantages to registering a work with the Copyright Office that can be lost if not done timely. So, it is best for an author to consult an intellectual property attorney if there is the possibility that the work may be valuable or need to be protected.

A copyright gives an author a number of substantive legal rights, such as the ability to control who (1) reproduces or distributes copies of the work, (2) creates derivative works based on the original, and (3) performs or displays the work publicly. An author can sue an individual or company that violates these rights and collect damages, statutory penalties, or obtain a court order preventing the infringer from violating these rights in the future. In some cases, copyright infringement can even be a crime.

Because a copyright is a property right, it can be sold, transferred, or licensed like other types of real and intellectual property.

As of January 1, 1978, a copyright lasts for the lifetime of the author plus 70 years. If the work was made for hire or was published anonymously/psuedonymously, the copyright lasts for the shorter of 95 years from publication or 120 years from creation.

For more information about copyright, you can read this nice summary by the United States Copyright Office.

In upcoming posts, we’ll talk about some other issues involving copyrights, such as the fair use defense, what kind of remedies are available to authors whose works have been improperly copied, and the work-for-hire doctrine, among other things.

What Is a Trademark?

By: Joe Carnicella, intellectual property attorney with Picadio Sneath Miller & Norton, P.C. ()

As part of our “What is . . . ?” series, it’s time to find out just what is a trademark / service mark.

PSMN What Is...? SeriesA trademark / service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the goods or services from those manufactured or sold by others and to indicate the source of goods or services, even if that source is unknown.  There are five categories of marks: fanciful, arbitrary, suggestive, descriptive and generic.  A fanciful mark comprises a term that has been invented for the sole purpose of functioning as a trademark or service mark.  These words are either unknown in the language or are completely out of common usage.  Examples of fanciful marks include PEPSI and KODAK.  An arbitrary mark comprises words that are common in language but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services.  An example of an arbitrary mark is APPLE for computers.  A suggestive mark comprises words that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services.  A descriptive mark comprises words that merely describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.  Finally, a generic mark comprises words that the relevant purchasing public understands primarily as the common or class name for the goods or services.

Now that you have an understanding of what is a trademark / service mark, the next step is to determine whether you can and should obtain a mark.  An important issue to determine is whether a mark is registrable.  One of the most common grounds for refusal of a registration is that the potential mark causes a likelihood of confusion with an existing mark.  In particular, a likelihood of confusion exists when the marks are similar and the goods or services relate in a way that such consumers would mistakenly believe they come from the same source.  Other grounds for refusal exist as well.  The other important issue to determine is whether the mark is enforceable based on the strength of the mark.  The strongest mark, and thus, the easiest to enforce, is a fanciful mark, and next in line would be an arbitrary mark followed by a suggestive mark.

If you are interested in obtaining a trademark / service mark, you should consult a trademark attorney to advise and to assist you with the federal registration process.       Continue reading

What Is the Difference Between a Provisional and Non-Provisional Patent Application?

by: Robert Wagner, patent attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

What is the Difference Between a Provisional and Non-Provisional Patent Application?

PSMN What Is...? SeriesOne of the key decisions that an inventor needs to make in the patenting process is whether to file a provisional or non-provisional patent application, so understanding the difference between these two kinds of applications is important for inventors. Both of these types of applications serve useful roles in the patent process, but they are two very different kinds of patent applications that create very different rights.

Non-Provisional Applications

A non-provisional patent application is an application filed with the United States Patent & Trademark Office that is examined by a patent examiner and can potentially lead to the issuance of a patent. It has a number of formal requirements that must be satisfied in order to be accepted by the Patent Office. For instance, it must contain a written description of the invention with sufficient detail to both demonstrate that the inventor has invented something and to explain it in sufficient detail such that one of ordinary skill in the art could practice the invention without undue experimentation. It generally must contain formal drawings that show various embodiments of the invention. It must be accompanied by an oath or declaration by the inventor or inventors that confirms that they invented the invention described in the application. The inventors must also identify all relevant prior art that they are aware of. Finally, it must contain a series of claims, which are what defines the scope of the patent and the protections it provides.

In general, non-provisional applications are complicated documents that must be prepared with extreme care if an inventor wants a patent that will be enforceable and that will product his or her invention to the broadest extent possible. The precise language of the claims is incredibly important, as is making sure that the written description and drawings adequately explain the invention and enable one to make and use it. As such, it takes time (and money) to draft one correctly.

Provisional Applications

A provisional application, on the other hand, is never examined by a patent examiner and can never lead to the issuance of a patent by itself. Unlike a non-provisional application, there are only two requirements for filing a provisional application—it must contain a written description of the invention and sufficient drawings (which can be informal) to understand the invention. The other formal requirements of a non-provisional application (such as formal drawings, claims, oaths, declarations, and prior art disclosures) are not necessary. A provisional patent application lasts for one year before it expires, and this one-year period cannot be extended.

Because provisional applications are significantly less formal than a non-provisional application, they can be drafted more quickly (and cheaply) and can include more information than is necessary or prudent to include in a non-provisional application. Inventors can literally attach journal articles, PowerPoint slides, photographs, hand-written drawings, etc. to the application, in addition to the narrative that describes the invention.

In order for a provisional application to lead to the issuance of a patent, it must either be converted or it must be appropriately referenced in a non-provisional application that is filed within one year of the filing date of the provisional application (this one-year date cannot be extended).

So, why would one choose to file a provisional application?

So, if a provisional application only lasts for one year and cannot, by itself, ever become a patent, why would anyone want to file one? Under the current patent laws, the public sale or disclosure of an invention before a patent application (either a non-provisional or provisional application) has been filed can act as a bar that prohibits an inventor from being able to obtain a patent on the invention in the future. A provisional application provides a way for an inventor to get an application on file before a key event so as not to prevent him or her from getting a patent later on.

For example, if a company is about to present a new product at a trade show or if an inventor is about to present a paper or give a talk at a conference, the inventor can file a provisional application that contains the materials that will be publicly disclosed, along with a sufficiently detailed write-up of the invention, before that information is disclosed without having to go through the considerable time and effort required to file a non-provisional application.

In addition, in the new first-inventor-to-file regime that exists under the America Invents Act (AIA), it may be prudent for an inventor to file a series of provisional applications as it is refining and developing a new product or invention in order to protect those ideas from another inventor filing in the Patent Office first. A provisional patent application provides a quicker and cheaper means for doing so.

Conclusion

These descriptions give you some idea of the differences between provisional and non-provisional patent applications. Both types of applications serve important roles in the patenting process, and are often utilized in concert—i.e., an inventor files a provisional patent application followed by a non-provisional patent application within a year. As with all the information in our What Is…? series, there is significantly more detail and nuance behind what is described in this article. If you are interested in obtaining a patent, you should consult a patent attorney to help you determine which application is appropriate for the circumstances you find yourself in.

What Is a Patent?

by: Robert Wagner, patent attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

PSMN What Is...? Series

What is a Patent?

At its most basic, a patent is a right granted by the United States government to prevent someone else from making, using, selling, offering for sale, or importing a product in the United States that uses the patented invention or process. It is a right to exclude, and not a right for the inventor to make, use, sell, offer for sale, or import the product himself or herself. This is an important distinction that is often overlooked by inventors who may think that getting a patent entitles them to use their own invention.

The right to a patent is actually enshrined in the Constitution, and is found in Article I, Section 8, Clause 8, which states:

The Congress shall have Power To…promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries….

In order to obtain a patent, an inventor must apply to the United States Patent and Trademark Office (USPTO) in Alexandria, Virginia. The USPTO is responsible for examining all patent applications and determining whether an invention qualifies for a patent. In general, an invention must be new, novel, and useful to potentially qualify. If the USPTO determines that the invention qualifies for a patent, it issues the patent and publishes it in a public registry of all patents. The USPTO has issued more than 9.3 million utility, design, and plant patents since the first utility patent was issued back in 1790.

If you look at a patent (it is a document), you will see that it has a number of major parts. The front page contains information about the patent, including its number, when it was filed and issued, who the inventor is, related patents, what other patents and prior art were looked at before issuing the patent, and what attorney or law firm helped draft the patent, among many other things. There is also a brief summary (the abstract) that describes the invention. The next pages contain drawings that help describe the invention. Later pages include background information about the invention, as well as a detailed description of it. Finally, the patent ends with a series of numbered claims. Each claim is a single sentence that describes the legal boundaries of the invention. The claims are the most important part of the patent.

Patents generally last for 20 years from the date of the earliest non-provisional application filed by the inventor. This duration can be longer or shorter depending on various circumstances, including how long the patent office takes to examine the patent application and whether the inventor has other, related applications.

Once a patent expires, the invention is in the public domain, and anyone can use it without permission from the inventor. This is the tradeoff that comes from being given a period of time in which the inventor can exclude others from using the invention.

Again, this description provides a broad overview of what a patent is, and there is a lot more detail behind each of these concepts. In our upcoming articles in our What Is…? series, we will explore some of the concepts discussed in this post in greater depth, explaining about the different kinds of patents (utility, design, and plant), the different types of applications (non-provisional, provisional, PCT, continuations, continuations in part, and divisionals), the different types of claims (independent and dependent) and what kinds of inventions can be patented, among many other things. We hope you’ll join us.

Our New What Is…? Series

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

3d illustration of person with word Q&A cubesPatent and intellectual property law can be intimidating and confusing, especially to inventors, individuals, and companies that have never been through the patent, trademark, or copyright process. In the coming weeks and months, we are going to be posting a number of articles designed to answer some basic questions about patents, trademarks, and copyrights. We’re calling this our “What Is…?” series.

These explanations and discussions are designed to provide a basic overview of these concepts, and are not meant to be the definitive statement on any of them. Patent and intellectual property law, as well as other areas of the law, are full of subtleties, nuances, and exceptions that can change the results or answers depending on the factual and legal circumstances that you find yourself in. So, what might be generally true is not always true. As with any legal issue, you should consult with a qualified attorney to determine how these concepts apply to you in your specific situation.

Our hope is to help you in understanding these basic concepts in what can be a complex and confusing area.

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