Elizabeth (Ela) Baio is a Partner at Nixon Peabody with a practice that is dedicated to intellectual property. She also serves as a wegg® Board member. Below she shares six things you didn’t know about intellectual property ((IP) protection. And it’s a good day to share these insights considering it is World Intellectual Property Day.
(1) IP rights are jurisdictional. Unfortunately, there is no such thing as “worldwide patent protection” or “worldwide trademark protection,” unless you want to file your application in each and every country in the world, which would be cost prohibitive, to say the least.
(2) Although the U.S. allows a “grace period” of 1 year from the first public disclosure to file a patent application, most other countries have an “absolute novelty” requirement, meaning once you publicly disclose your invention without first filing a patent application, your patent rights are lost.
(3) In the United States, you can file a “provisional” patent application, which is never actually examined by the Patent Office but, rather, serves as a placeholder to preserve your priority date over later-filed applications. The provisional application expires one year after filing, which means you have one year to convert the provisional into a non-provisional, which needs to meet the formal requirements and will be examined. Some of the benefits of filing a provisional patent application include the following:
• Since they are never actually examined, you don’t have to follow the “rules” of patent drafting. As such, you can file pretty much anything – articles, notes, drawings, etc. – which means this option can be very budget friendly. Of course, the more information included in the application the better, as that really helps lock in your priority date, eliminating the question of what you were actually in possession of as of that filing date.
• Having a provisional patent application on file allows you to tout your invention as “patent pending,” which is great for pitching to investors.
• Filing a provisional patent application before filing a non-provisional application can actually give you an extra year of patent term.
(4) If filing a patent application in multiple countries in desired, one option to consider is a Patent Cooperation Treaty (PCT) application. The bulk of the costs associated with PCT applications are differed during the 18 months International Phase (as compared with filing directly in the countries of interest and paying the costs up front). This window of time can be beneficial in assessing the commercial feasibility of the application, securing funding, etc. Also, the PCT application will be searched and examined, giving the applicant a sense of potential blocking prior art and the ability to overcome objections in a central location before the application is converted into individual patent application in the designated countries, which can save money down the road.
(5) The unofficial trademark counterpart to a PCT application is using the Madrid Protocol, in which a single trademark application is filed designating the countries of interest. To file a Madrid application, you must first file a trademark application in your home country and then use that application as your “basic application.” The home office will then certify the Madrid application and forward it to the World Intellectual Property Organization (WIPO). WIPO will review the application and forward it to the designated countries, where each application will be examined according to local law. There are a few important nuances associated with Madrid filings, however, that should be considered before proceeding down this route.
(6) Obtaining a federal trademark registration allows you to use the highly coveted R-in-circle® designation. However, you can (and should!) use the TM-superscript ™ symbol even without a federal registration. This gives third parties notice that you claim common law trademark rights in the mark by virtue of using the mark as a source identifier.
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