Halsne Law, PLLC Patents, Trademarks, Copyright, & Other Intellectual Property Matters

Common Questions

My business depends on technology to compete. How can I protect it?

Patents, trademarks, copyrights, and customized protection of proprietary business information are powerful tools that can protect the various competitive aspects of your business. With a well-planned and executed strategy, you can stave off imitators and create additional revenue streams in your markets for many years. This gives you the time and opportunity to establish success in your enterprise.

We can help you in both the planning and execution of your strategy. Let’s get started.

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How can a patent add value to my business?

Obtaining a patent is largely a business decision. But once the patent is granted, the patent holder has potentially valuable rights.

The patentee can exclude outright any others from using the patented technology for up to 20 years. This powerful right is essentially a time-limited monopoly that has been consistently upheld in the courts.

The patentee can license or sell the patent to others in exchange for a royalty. This strategy is especially attractive to innovators who prefer to allow others to market the invention.

The patent is an intangible capital asset which can be used to attract investment capital. This is particularly useful for startup companies which need capital to expand quickly.

Finally, a well-constructed patent portfolio can serve as a defensive barrier to potential patent litigation. If a competitor knows that your company has patents which can potentially be asserted against it, then the competitor may hesitate in bringing its own patent infringement complaint against you in court.

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How can I navigate my own business innovations through the thicket of patents owned by my competitors?

A patent is a right to exclude others from making, using, or selling the invention. This reversed logic creates an interesting navigation through the universe of patents. If, for example, you invent a valuable improvement to an existing patented device, you can patent that improvement. You can prevent the patent holder of the existing device from using your improvement. But that patent holder can also prevent you from using the existing device, even with your improvement added to it. This situation can often be remedied through a licensing agreement between the two patent holders.

In other situations, you may need to ascertain whether the product intended for sale is already covered by another’s patent. There are a number of search tools available for patents, but the subsequent analysis also requires a detailed knowledge of your product’s features. This process is called “patent landscaping.”

If a patent is found that is of particular concern, an attorney can provide a detailed legal opinion of whether the patent is valid, and whether the claims might be infringed. This analysis is contained in an “opinion letter.”

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What exactly is a patent?

A patent is a right to exclude others from making, using, offering for sale, or selling a particular invention. The patent right can also be used to prevent the importing of the invention. A patent grant is effective for up to 20 years from the date of filing. After the patent expires, it is free for all to use.

Patents may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Also, the invention must be novel and “non-obvious.” For example, the substitution of one color for another or changes in size are ordinarily not patentable.

The U.S. Patent and Trademark Office (USPTO) is responsible for evaluating U.S.-filed patent applications and granting patents. Once a patent is issued, the patent holder must enforce the patent without aid of the USPTO.

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Do I need an attorney to file for patent or trademark protection?

An individual inventor or applicant for trademark does not need an attorney. But the rules and procedures for obtaining these rights are complex, and sometimes an error irreversibly causes loss of the rights. For this reason, many inventors hire an attorney who is skilled in the practice.

The U.S. Patent and Trademark Office (USPTO) registers patent attorneys to practice before the Office. The USPTO also allows non-attorney patent agents to represent inventors before the Office in patent matters only. A register of active patent attorneys and agents is maintained on the USPTO website at https://oedci.uspto.gov/OEDCI/query.jsp.

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How can I get international patent and trademark protection?

Each country grants its own patent rights. But the U.S. has joined 167 other nations in the Paris Convention for the Protection of Industrial Property treaty, which streamlines the process considerably if you want international protection. For example, you can designate an application in the U.S. Patent and Trademark Office for consideration in any or all of the treaty countries. Somewhat different rules and procedures apply, however.

U.S. law requires that, in the case of inventions made in the United States, the inventor must obtain a license from the Director of the USPTO before applying for a patent in a foreign country. This is usually not a problem if the international application is first filed in the U.S., because the Office issues the license grant with the filing receipt.

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What are the costs for filing a patent?

The U.S. Patent and Trademark Office (USPTO) charges application fees and issue fees during the patenting process. It also periodically assesses maintenance fees during the life of the patent. The current fee schedule is posted here: http://www.uspto.gov/web/offices/ac/qs/ope/fee092611.htm.

For example, basic, search, and examination fees are charged at the time of filing, which currently add up to $1,250 for an electronically-filed utility application. The issue fee is currently set at $1,740.

For small entities generally defined as those having less than 500 employees, most fees are discounted by 50%.

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How much does it cost to prepare a patent application?

A patent application consists of a written description, a set of figures, a set of claims that defines the invention to be patented, and an abstract. The arrangement of each section is governed by specific rules set by the USPTO. So the effort (and cost) involved in preparing the application really depends upon the complexity of the underlying invention. The skill and expertise of the preparer also factor into the cost.

Halsne Law Office has substantial experience in preparing patent applications over a wide variety of technical areas. It can usually provide accurate cost estimates, and it can arrange fixed price services upon request. It also can offer strategies designed to manage the costs of obtaining patents. Contact Halsne Law Office to get started.

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What exactly is a trademark?

Trademarks are identifiers. They help consumers to identify a company as the source of particular goods and services. A trademark can consist of names, words or images (and, in rare cases, colors and sounds).

The strongest trademarks say nothing at all about the underlying product (e.g. Kodak for identifying photographic film). At the other end of the spectrum, trademarks that are generic names receive no protection at all (e.g. Espresso for espresso). In between, trademarks which are descriptive or suggestive identifiers of the underlying goods/services have varying degrees of strength. Trademarks which become famous can offer their owners power over goods and services that are outside the markets they serve.

Trademarks can be federally and/or state registered. Trademarks that are not registered at all may even be protectable under common law. And trademark protection can be continued indefinitely, as long as the mark is used in commerce.

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How can a trademark add value to my business?

Every business should consider obtaining trademark protection for their brand. The value of a trademark lies in the protection it provides from infringement by other confusingly similar marks. Thus, a business can keep products or services from being sold by others under trade names which are similar to the trademark.

A trademark is accounted for as goodwill in a business. In some companies, trademarks and the goodwill that travel with them constitute the majority of a business’s worth. Thus, trademarks can be sold or licensed like many other types of property.

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What are the costs to obtain a trademark?

The U.S. Patent and Trademark Office (USPTO) charges application fees and issue fees during the trademark application process. It also periodically assesses maintenance fees to keep the trademark in effect. The current fee schedule is posted here: http://www.uspto.gov/web/offices/ac/qs/ope/fee092611.htm.

For example, the fee for electronically filing a trademark application through the automated TEAS Plus system is presently $275.00. The fee is assessed for each goods or services classification to which the trademark applies.

The trademark application process is somewhat simpler (and usually cheaper) than for patents. Many applicants use a lawyer to file and prosecute their trademark applications anyway, in order to capture the maximum protection allowed by the law. Halsne Law Office is experienced and knowledgeable in navigating the various trademark rules and laws. It also can offer strategies designed to manage the costs of obtaining trademarks. Contact Halsne Law Office to get started.

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What is the difference between a trademark and a copyright?

A copyright protects works of authorship that are fixed in a tangible form of expression. Copyright covers: a) works of art (2 or 3 dimensional), b) photos, pictures, graphic designs, drawings and other forms of images; c) songs, music and sound recordings of all kinds; d) books, manuscripts, publications and other written works; and e) plays, movies, shows, and other performance arts.

In contrast, a trademark is to protect words, phrases and logos used in commerce to identify the source of goods and/or services.

A copyright has a defined lifetime of about 75 years after the lifetime of the author. A trademark lives as long as the mark is used in commerce, and so could potentially have an infinite life.

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The employment agreement at my company has a section about patents and inventions. Should I pay attention to this?

Most employment agreements are governed by state law. In general, states have allowed such agreements to require that employees assign over their rights to any inventions developed during the course of their employment. But there are exceptions to this rule, especially if the invention has nothing to do with the employer’s business and if the invention is developed without using any of the employer’s resources.

Employers should also be aware that patent assignment agreements generally require some sort of consideration to be valid. Thus, if a new agreement which adds an assignment provision is executed with an existing employee, some additional consideration should be provided.

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