CRITICAL DEADLINES FOR INTELLECTUAL PROPERTY
Patents, Trademarks and Copyrights encompass a significant portion of property rights protected under the domain of intellectual property law. Trademark rights can be created by the acts of an individual, and can be protected under common law. In contrast, patent rights and enforceable copyrights can only be created by grant or registration through the federal government. Registration is also available for trademarks, and such registration expands the scope of protection beyond what is available under the common law.
Critical deadlines exist for all intellectual property rights that are protected through federal registration or grant. Knowledge of these deadlines, combined with the exercise of appropriate actions to meet them, is generally essential to avoid permanent loss of federally protected intellectual property rights.
PRESERVING PATENT RIGHTS
Patent rights are created by federal grant after a protracted application and examination process. Merely filing a patent application does not create a patent right. On the contrary, a patent application must be timely filed relative to certain critical events, or the government is legally prohibited from granting a patent, regardless of whether the invention meets all other legal requirements for patentability.
Perhaps the most important time limit to preserve patent rights in the United States is known as the “one-year grace period”. According to this rule, a patent application must be filed within one year after any sale, offer to sell, or public use of the invention in the United States. Furthermore, a U.S. patent application must be filed with the United States Patent and Trademark Office (USPTO) within one year of any printed publication of the invention anywhere in the world. Failure to file a U.S. patent application within one year after any of these “barring” events typically results in a permanent loss of rights in the invention.
There are certain exceptions to the one year time limit rules. For example, if an invention is used for experimental purposes only, such use may not start the one-year period. However, reliance on such distinctions may entail significant risk and should only be undertaken upon advice of counsel.
Plant Patent Applications
The United States is a member of UPOV (International Union for the Protection of New Plant Varieties, www.upov.int). The UPOV treaty provides time frames during which applications must be filed to protect new plant varieties. With the exception of the United States, all UPOV countries require that new plant protection applications be filed in foreign countries within four years (non-woody plants) or six years (trees and vines) of sale or distribution. The United States does not follow this rule, and requires that new plant patent applications be filed within 1 year of sale or distribution, regardless of where the activity took place.
Provisional Patent Applications
A provisional application for patent is a type of patent application filed with the USPTO. A provisional application does not mature into an issued patent unless further steps are taken by the applicant. The date of filing of the provisional patent application can also be used as the foreign priority date for international applications, but not for a design patent. The provisional application is not examined by the USPTO, and therefore can never become a patent, unless converted. It is also not published by the USPTO, but will become a part of the file of any later non-provisional application that references it, and then becomes accessible by the public upon issuance of a patent claiming the benefit of its filing date. A provisional application automatically expires one year after it is filed, and the provisional filing date is not counted against the 20-year life of any patent that may issue with a claim to the provisional filing date.
Importantly, in order to be effective, the provisional application must include the same equivalent level of detail with respect to the invention as in a regular, non-provisional application. Additionally, filing a provisional application starts countdowns to important deadlines. If a corresponding U.S. utility application claiming benefit of the provisional application is to be filed, it must be filed within one year, and any corresponding foreign applications must also be filed within that same year.
PRESERVING FOREIGN PATENT RIGHTS
The one-year grace period described above is a peculiarity of United States law, and most other countries do not provide such a grace period for inventors. Instead, most foreign nations require that a patent application be filed before any enabling public disclosure of the invention is made, anywhere in the world. Countries that follow this law are called “absolute novelty” countries.
In addition to allowing the one-year grace period for inventors to file a patent application, the U.S. also reserves patent grants to the first inventor who “conceives” the invention and thereafter diligently “reduces it to practice” (i.e., makes a working prototype or files a complete patent application for the invention). In contrast, most foreign countries employ a “first to file” rule, where a patent is awarded to the first party who files an application for the invention, even though another party may actually have been the first inventor.
Reciprocal Foreign Priority
The harshness of the absolute novelty requirement can be mitigated through the operation of reciprocal international agreements. The United States and most other industrialized nations of the world are members of the International Union for the Protection of Industrial Property. This treaty obligates member nations to grant reciprocal patent rights to foreign applicants, similar to the rights available for domestic applicants. More specifically, the treaty allows a United States patent applicant to file a foreign application within one year after the filing date of a corresponding U.S. utility patent application (or six months for a design patent application), whereupon the foreign application will be accorded the same effective filing date as the original U.S. application. This “reciprocal priority” provision prevents forfeiture of foreign patent rights that would otherwise be triggered by a public disclosure, use or sale of the invention after the U.S. filing date under the “absolute novelty” rule.
U.S. TRADEMARK DEADLINES
The United States Trademark Act allows anyone with a good-faith intention to use a trademark or service mark in the future to “reserve” that mark with the USPTO by filing an “intent-to use” trademark application. After successful examination of the trademark application by the USPTO, the applicant has up to 36 months to begin actual use of the mark in commerce. Once a Statement of Use to this effect is filed, the USPTO will issue a federal trademark registration granting “priority” for the mark dating back to the original filing date. Accordingly, it is critical for a trademark applicant to seek the earliest possible federal registration filing date, and to be mindful of potential or actual use of the selected mark by others.
FOREIGN TRADEMARK RIGHTS
In most foreign countries, trademark rights are acquired by registration, and superiority of trademark rights are determined by priority of filing date. Thus, early filing of foreign trademark applications is desirable. Applications for registration of trademarks in foreign countries can generally benefit from the effective filing date of a prior, corresponding U.S. application if the foreign application is filed within six months of the U.S. trademark application filing date.
Although copyrights are established simply by an author “fixing” the work in a tangible medium, there are substantial copyright benefits that can only be obtained through federal registration. In particular, the damages available for infringement of a federally registered copyright may far exceed the damages available for infringement of a non-registered copyright. To take full advantage of these benefits, it is desirable to register one’s copyright within a three month “grace period” after the work is first published, which will establish an “effective” date of the federal copyright registration as of the three month earlier date of publication. Copyright owners who fail to register their copyright within three months of first publication risk losing significant enforcement rights. Finally, all U.S. authors or works first published in the United States must be registered before a lawsuit can be filed to enforce the copyright owner’s rights.
Most foreign countries have no copyright registration systems, and registration is not required to establish a copyright. However, in many foreign countries, copyright owners must place an appropriate copyright notice, including the familiar © symbol, followed by the first year of publication and the name of the copyright owner, to preserve their copyrights.
TRADEMARK PRACTICE TIPS
A few tips for trademark clients:
- Having a website is not automatically “use” of a trademark in connection with selling goods or providing services.
- Registering a domain name does not give rise to use of a trademark sufficient to establish ownership or enforceability.
- More than token use of a trademark is required to establish ownership and registrability; the mark must be used in connection with promoting and selling identifiable goods or services.
- Even a federally registered trademark owner is not automatically entitled to enjoin a remote junior user in a market where the trademark owner does not have a branding presence. Increasingly, however, the lack of geographic proximity is not dispositive, but is merely one of several factors to be considered in gaging whether confusion is likely.
- Unpermitted use of the trademark of another “as a commodity” in connection with a sale of merchandise is likely to be infringement even if the products are clearly branded as emanating from the defendant.
- Purchasing advertising triggered by computer users’ entry of competitors’ marks as key words is not per se infringement and is not likely to create liability on the part of the search provider. However, the advertiser may still incur liability unless the resulting ad is clear and unconfusing.
For more information regarding trademarks, see our Selecting a Trademark brochure which we provide to our clients.