We have have categorized our Frequently Asked Questions (FAQs)
for your convenience. Either scroll down the page or use the headings
in the left hand column to navigate.
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What
is a patent?
A patent is the grant of a property right in an invention by the
United States Patent and Trademark Office ("USPTO") to an inventor
(or his/her heirs or assigns).
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Under
what authority do patent laws exist?
Article I, Section 8 of the United States Constitution conferred
upon Congress the power to enact legislation pertaining to patents.
Congress created the USPTO for the purpose of issuing patents
on behalf of the US government.
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What
comprises the property right granted to the holder of a patent?
The patent grant conveys the right to prevent or exclude others
from making, using, offering for sale, or selling the invention
in the United States or importing the invention into the United
States.
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Where
is the patent conferred by the USPTO valid?
The patent grant is valid throughout the United States and its
territories and possessions.
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What
is the term of a patent?
Generally the term of a patent is 20 years from the date on which
the application for the patent was filed in the United States.
If the application contains a reference to an earlier filed application,
then the term is 20 years from the filing date of the earlier
application, subject to the payment of maintenance fees.
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What
can be patented?
Patent law stipulates that "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent" subject to certain conditions and
requirements.
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What
are the conditions and requirements under which a patent may be
obtained?
1.) The invention must be "useful". The law requires that the
invention have a useful purpose and that it must be able to operate
to perform its intended function.
2.) The invention must be "new". An invention can not be patented
if: "(a) the invention was known or used by others in this country,
or patented or described in a printed publication in this or a
foreign country, before the invention thereof by the applicant
for patent," or "(b) the invention was patented or described in
a printed publication in this or a foreign county or in public
use or sale in this country more than one year prior to the application
for patent in the United States…"
3.) The invention must be sufficiently different from any previously
used or described to the extent that it could be said that it
would be "nonobvious" to an individual having ordinary skill in
the relevant area of technology. In general terms, how long does
the patent application process take? Most U.S. patent applications
take approximately two years from the filing date of the application
to issuance of a U.S. patent, assuming the patent is allowed.
However, the length of time between filing and issuance can vary
significantly depending on a number of factors, including the
complexity of the technology, the closeness of related references,
the number and scope of the claims, etc.
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What
do the terms "patent pending" and "patent applied for" mean?
These terms are commonly used by a manufacturer or seller of an
article to notify the public that an application for a patent
on that article is on file with the USPTO. This notification has
no legal effect, however, and the protection afforded by a patent
does not begin until the date it is granted (i.e. issued).
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Is
there a risk that the USPTO may divulge information concerning
an invention while an application is pending?
The USPTO pledges to keep pending patent applications confidential.
Once a patent is issued, the file containing the application and
all related correspondence becomes a matter of public record.
Copies of patents may be purchased from the USPTO.
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May
patents be jointly owned?
Yes, patents may be jointly owned by two or more persons, companies,
or other legal entities, whether by assignment or partial assignment
of an interest in the patent by one or more owners of the patent.
Initial ownership of a patent application is in the names of the
inventors until patent ownership rights are assigned to others.
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What
is an Assignment of an interest in a patent?
The property right granted by a patent may be sold, mortgaged,
bequeathed in a will or inherited by the heir(s) of a deceased
patentee. By law the transfer of the property interest must be
accomplished in writing, and that written instrument is known
as an Assignment.
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What
is a patent licensing agreement?
The holder of a patent may grant a license to others to use or
practice the claimed invention. The agreement is simply a contract,
the terms and conditions of which are set by the individual parties
to the contract. License agreements often provide for the payment
of royalties and include a promise that the licensor will not
sue the licensee for infringement if the terms of the contract
are met.
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What
kind of clients does BSTZ represent?
The Firm represents a range of companies from startups to established
industry leaders in a variety of technology areas.
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Why
is building and maintaining a strong patent portfolio so important,
particularly for smaller startup companies?
It is almost a requirement now from the investor community that
small companies initiate some kind of a patent presence, even
at the very early stages of the business development. A patent
portfolio is an important asset both from the defensive posture
of the company, as well as creating an asset for the company as
it evolves. The patent portfolio will be important in any merger,
acquisition, or public offerings, and it will be well thought
of by the shareholders of the company as the company grows.
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Is
it ever too early in the life span of an emerging company to seek
out an IP attorney and learn about what is patentable?
It is never too early. Once the concept has been formulated in
the mind of the entrepreneur, and they have a pretty good idea
of how their concept is going to be implemented, a patent application
can be started at that point. BSTZ often works with companies
in the seed round of funding, and some even prior to funding.
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How
does the patent system protect intellectual capital?
In general, the patent system allows a company to create a proprietary
right in an innovative design or technology, and thereby create
a legal barrier to their competitors, preventing or limiting the
competitor's entry into particular markets. Usually, the typical
case in Silicon Valley has been that patent portfolios are used
primarily defensively. However, it is becoming more and more common
for patents to be used offensively as well.
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What
are some of the considerations when determining whether or not
a company's assets or products or other developments are eligible
for patent protection?
In general, if a company is spending any time or money in research
and development in developing new technology, then more likely
than not, they are going to be in a position where they could
find patentable subject matter, and going forward, to be able
to obtain patent rights in their technology.
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What
are some of the dangers that may occur if intellectual property
is not adequately protected?
Especially in the Internet space, where it is relatively easy
to take the functionality of competitors' products or business
strategies and assimilate them, the danger is that a young startup
company can be highly exposed to having their technology basically
taken out from under them by their competitors. Without the patent
system or the patent rights in that technology, there is not a
whole lot a small company can do about it.
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What
actions would BSTZ typically take when working with a new client?
The first step is to get in and get immersed in the company's
technology. We meet with some of the key technical and business
development leads in the company and go through the company's
product portfolio, their service offerings, and their technology
road maps in order to try to identify the most significant areas
that are innovative and, hence, most likely patentable. Then we
consider those areas as possible patentable subject matter for
writing patent applications. The next step would be to speak with
the inventors who are responsible for designing and developing
those innovative parts of the technology. We meet with the inventors
and pull together all the technical details necessary to write
patent applications. Thereupon, we write patent applications,
file them and prosecute them through the Patent Office.
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How
much of the Firm's focus is upon setting up protections ahead
of time and forestalling future complications, and how much is
actually defending or actively pursuing claims?
We have activities in both areas. Certainly, from the defensive
standpoint, we spend a lot of time preparing patent applications
for our clients and building their patent portfolios. As those
portfolios get developed or as patents start to issue on that
technology, we move into an offensive realm where we start to
identify potential competitive targets. Then we may go after those
targets with an offensive patent position. It is a mix of both
types of activities, and it varies depending on the size of the
client, the client's business objectives, and the ability of the
client to initiate litigation.
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What
effect has the Internet had upon the protection of intellectual
property rights?
Over the last five years, the Internet has radically changed the
practice and opened up the patent process to the entry of companies
that were not traditional technology companies. Additionally,
there is now the possibility of patenting business methods or
business processes, especially as they are deployed on the Internet.
Some of those patent rights, such as the one-click shopping functionality,
as seen with Amazon.com are being asserted against competitors
in offensive challenges. It is changing the business practice
both in terms of how companies innovate, as well as how they are
eventually challenging their competitors.
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How
has BSTZ's practice evolved, and what trends are seen for the
future?
Through the mid and late 90's, we saw a lot of companies working
very hard to build their patent portfolios both through drafting,
writing and filing their own patent applications as well as acquiring
patents and patent applications through acquisition and merger.
Now we are seeing, many companies who have fairly robust patent
portfolios, who are starting to see the possibility of asserting
their patent portfolios against some targets in their competitive
space. We expect to see quite a bit more offensive use, or litigious
use of patents ¾ either more patent lawsuits filed or more licensing
of patents occurring as we go forward in the future.
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What
is a trademark?
A trademark is anything, which identifies the source or origin
of goods offered for sale and distinguishes the goods from those
produced by a competitor. Most commonly, the mark is a word, phrase,
symbol, device, sound, or any combination of the same.
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What
is a service mark?
A service mark identifies the source of a service, but is otherwise
the same as a trademark.
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What
are common law trademark rights?
Common law rights arise when a trademark is used and/or recognized
without the benefit of registration by the state or federal government.
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What
is the basic difference between state and federal trademark registration?
The protection afforded by registration at the state level extends
only within the state(s) where the mark is registered. A federal
trademark extends throughout the United States and its territories.
It may only be registered for use or intended use in interstate
commerce or commerce between the U.S. and another country, which
is regulated by Congress, under the auspices of the United States
Patent and Trademark Office (USPTO).
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What
are some of the advantages of federal trademark registration?
1. Constructive notice to the public of the registrant's claim
to ownership nationwide
2. Evidence of ownership in the mark
3. Availability of certain statutory remedies
4. Allows for filing of registration with U.S. Customs, thereby
preventing importation of infringing goods and the impounding
thereof
5. U.S. registration may be used as a basis for registration in
other countries.
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What
is the term of a federal trademark registration?
The term is ten years, with ten-year renewals. However, the registrant
is required to file a declaration of continued use between the
fifth and sixth years following the date of initial registration
in order to avoid cancellation of the registration. The trademark
is renewed for 10-year periods thereafter. If the foregoing conditions
are met and the owner of the mark continues to use the mark to
identify its goods or services, trademark rights may last indefinitely.
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What
is the meaning of the "TM" or "SM" designations with trademarks?
They are used to denote trademark and service mark, respectively,
and they most often used to indicate a claim of ownership in a
mark prior to the issuance of a federal registration. Various
local, state or foreign laws may govern the use of these designations.
When may the federal registration symbol ® be used? Only federally
registered trademarks may be displayed with this symbol. It is
not proper to use when the application is pending.
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What
does copyright law protect?
A copyright protects an original work of authorship, whatever
the medium of expression. Original authorship includes literary,
musical, dramatic and architectural works such as novels, poetry,
songs, motion pictures and other audiovisual works; pictorial,
graphic and sculptural works; mask works and computer software.
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Is
the Copyright Office affiliated with the USPTO?
No. The Copyright Office is under the direction of the Library
of Congress.
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When
does a work come under the protection of the law?
The law protects the creative work from the moment it is created
and fixed in a tangible form so that it may be perceived directly
or through the aid of a machine or some other device.
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What
is mandatory deposit?
Within three months of publishing any work under copyright protection
in the U.S., a copy of that work must be deposited with the Copyright
Office.
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Is
registration with the Copyright Office necessary in order for
a work to come under copyright protection?
No. The protection is automatic upon its creation.
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How
long does the registration process usually take?
The time varies depending upon the circumstances, but 8 or more
months following submission of an application. How is authorship
of a work determined? The general rule is that the creator of
a work is its author and is also the owner of the copyright, absent
a written assignment of the copyright to another person or entity.
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What
is work for hire?
When a work is created by an employee within the scope of employment
or in certain circumstances where a work is commissioned, it may
qualify as "work for hire". The author of work for hire is considered
to be the employer or commissioner of the work.
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What
is the "fair use" doctrine of the U.S. copyright statute?
The fair use doctrine allows for the use of limited portions of
a copyrighted work, including quotes, for the purpose of news
reporting, commentary or scholarly reports. The re is no definite
limitation on how much of a work may be used under this doctrine.
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