Intellectual Property includes patents, copyrights, trademarks, trade names and trade secrets, patent attorney Susan Ochoa Spiering told a Technology Ventures audience in Edinburg.
“Treat IP like real property. You can buy, sell, lease and license IP and pass it on by inheritance,” Ochoa said. While a patent is not a monopoly, it can help you corner the market. “It is an exclusive right to make, sell or use. It must be new, useful and not obvious.” IP coverage applies only to the U.S. “There is no world patent.”
The 2011 America Invents Act brought major changes to the patent process. The patent is granted to the first person to file the patent application. Patent awards are no longer determined by who had the idea first and who has the records to prove their work. The active life of a patent depends on the patent type. The lifespan of a utility patent (something with a useful function, like a piece of equipment) is 20 years from the date of filing the patent application. A design patent lasts for 14 years.
Ochoa noted that individuals can file patents without an attorney. With or without an attorney, inventors should first search the Patent Office website (patents.gov) for similar patents. Inventors should also think about the big picture questions: Will you manufacture your product and sell it? License it?
Within a year of beginning to use or promote your patentable technology, you must have filed a standard patent application or you lose out, Ochoa said. She does not recommend securing a provisional patent for multiple reasons.
Many larger companies will not sign non-disclosure agreements with an inventor, Ochoa cautioned. “Your only protection is having a patent application filed.” Nevertheless, she suggested having a non-disclosure form for signing in your office when talking to anyone about your patentable idea.
Some people are reluctant to patent their invention, Ochoa said. “More times than not, you need the protection. If someone reverse engineers your process or widget, you have nothing to protect it. It’s regrettable but not actionable.”
The patent process, which takes between one and two years, can cost between $12,000 and $50,000. (Some attorneys ask for a $50,000 retainer.) Eight million patent applications are expected to be filed in 2013. The percentage of patent applications granted is extremely low, around 2%. And, once you get a patent, you must maintain it and enforce infringements.
Trademarks
A trademark is for words, names, symbols, sounds or colors that distinguish your goods and services, a brand. “Trademarks are good forever, if you keep using them and renew them every 10 years,” Ochoa said. If you want protection of a trademark, registration is the best way, through state and federal trademark offices and by registering the trademark with Customs. When a trademark is pending, the TM symbol is used. Once obtained, the symbol R with a circle around it is used. Common law rights award a name to the superior user. Locally, trademark police check ports of entry and flea markets.
To read more on this story by Eileen Mattei, pick up a copy of the December print edition of Valley Business Report or visit the “Current & Past Issues” link on this website.