Intellectual Property FAQ

Your Questions Answered by Seasoned Intellectual Property Lawyers

Intellectual property laws can be ambiguous, making it difficult to understand how they function. Below you will find some answers to some commonly asked questions. If you’d like to speak directly with an experienced intellectual property attorney in Utah, call Pearson Butler today at (800) 265-2314.

Foreign Patent Protection

Since you can only get patent protection in a country if you file an application and obtain patent registration in that country, how do you pick the country or countries in which to file?

While every business is different, it is common to make this decision through a cost/benefit analysis. Since the costs can be very high, even for very large companies, the most efficient method is to identify those countries that will provide the highest benefit, prioritize those countries, and then match them against expected resources.

How do you identify the countries that provide the highest benefits?

Typically, the countries that will provide the highest benefits are those where you have the best markets to sell your invention, those that have the lowest manufacturing costs (where appropriate), and those where your strongest competitors have strong operations.

How do you prioritize the countries?

This is where you look more specifically at your business and consider one or more of the following, plus any other important factors:

• Market size (population of likely buyers)
• How much business you are already doing in those countries
• How having a patent registration/application in those countries would impact your relationships with manufacturers and distributors
• How easy it would be to enter those markets if you are not already there
• What opportunities you may have in the next one to five years for those countries

What costs should I expect per country?

Plan to spend between about $3,000 to $5,000 per country as a basic application cost. For countries where English is not the primary language, plan to spend an additional $3,000+ for a translation. If your application is very large, you could spend $10,000+ per translation.

Also, expect to spend approximately $1,000 per year per country in related costs and filings. Most applications are rejected, and each country has its own specific standards, so costs vary widely from a few hundred dollars to several thousand.

Most countries also have allowance filings and fees, as well as maintenance/annuity payments that are required, so be prepared for a long-term investment in the patent. European applications may be filed that cover the EU nations.

Free IP Protection

How can I get free patent protection?

The lowest level of patent protection is not automatic and costs a little money, time, and planning. It involves two separate processes, and each are important for different reasons.

Every inventor should keep their inventions secret as much as possible until they have decided how to keep the idea protected. You should have simple confidentiality agreements with anybody you discuss the idea with who is not an attorney or otherwise obligated to keep what you tell them secret. If you must put details of your invention on a website, be sure to password protect the site and only give the password to people that have agreed to keep it confidential. For some inventions, keeping it secret indefinitely is the right choice. Those are often called “trade secrets.”

Warning: Do not use “patent pending” on your product/service unless you actually have a patent pending with the U.S. Patent Office that covers your product/service, or you risk being sued.

What do you mean by the “lowest level” of protection?

Getting the lowest level of protection is certainly better than no protection at all. Since every company has limited resources, every company should be applying the lowest level of protection to some of its property all the time. For those assets that are critical to the success of the company, higher levels of protection should be planned.

Often, the lowest level of protection is much more difficult and/or expensive to enforce than the higher levels of protection. Higher levels of protection are an investment in the future of your company and should be done thoughtfully. However, free protection should be something that you do automatically.

How can I get free copyright protection?

The lowest level of copyright protection is automatic and completely free as soon as you have a recording of your creative work. This can be a written book, a web page, an audio recording of you playing an instrument, or a video you make to post on the web. To strengthen this free protection, you should put a copyright notice on anything that you create that you don’t want other people copying.

The copyright notice can have the following format:

©[space]First Year of Publication[space]Owner

Example:

© 2019 Pearson Butler

The © symbol can also be replaced with “Copr.” or with (c). The date can be a date range or list if you have published multiple times. For example, some websites are updated over a period of years. In that case, the date would cover a range of the years where there were updates.

Examples:

© 2012 – 2019 Pearson Butler

Copr. 2016, 2019 Pearson Butler

You can use the © mark even if you have not applied for federal registration of your copyright.

How can I get free trademark protection?

The lowest level of trademark protection is automatic and completely free as soon as you use your brand in commerce. This can be a logo, a tagline, a special design, or a name of a company or product. To strengthen this free protection, you should put a trademark notice on any brand you use and every place you use the brand. The trademark notice is a “TM” next to the brand, usually to the bottom right or top right of the brand.

Example:

Pearson Butler ™

Warning: Do not use the ® mark unless you actually have a federal registration, or you risk being sued.

Non-Provisional Utility Application

I just filed a non-provisional utility patent application, what does that mean?

You are “patent pending,” and you do not have to keep the details described in the application secret anymore. Also, you now own an application that represents powerful potential rights. You can license and/or sell these rights. Moreover, the United States government now holds proof of your invention as of your filing date and nobody can get a patent on the same invention if they invent it later than you.

What does it mean to be “patent pending?”

This means you are authorized to put the words “patent pending” on your product/service, packaging, and advertising/marketing materials. Without this authorization, you are at risk of being sued for damages and fines if you wrongfully use the words “patent pending” in advertising. The words “patent pending” are a warning to competitors and strategic partners that they take substantial risks if they copy you. Also, the words carry a certain marketing value because they attract customers to your product.

What if somebody starts to copy me?

Some people are horrified to find out that they may have been copied. However, copying by others in the marketplace is the single best indicator of strong value in the property. For this reason, being copied could be seen as a positive. You do have legal resources to stop infringers from copying you.

What should I do if I think somebody is copying?

If you are copied, it can be dangerous for you to contact the infringers yourself. Instead you can keep careful records of proof of their copying, including saving their advertising materials and, where appropriate, buying some of their products/services. Let your attorney know that you have been copied and they can start the process for making sure you can capitalize on what may be your good fortune.

What happens next with my application?

Your application will go through two separate examination processes. The first process is designed to catch simple errors in the application. It occurs about a month after the application is filed. Most standard applications pass this process without any event. The second process involves an analysis of the claims and is used to determine if you are allowed to have a patent registration. The second process starts about one to three years after the application is filed.

Tell me more about the second examination process.

There are many requirements that must be satisfied before you can be allowed to have a patent registration. A Patent Examiner reviews your application to see if you have met all those requirements. Patent Examiners are reprimanded if they allow applications that their superiors think should not be allowed, but they can reject any applications that should have been allowed without consequence. Therefore, Patent Examiners, on average, are much more likely to reject applications than they are to allow them.

Most patent applications are initially completely rejected, even though most applications are eventually allowed. The second examination process then becomes a negotiation process where your Utah intellectual property lawyer will work to convince the Patent Examiner that the application should be allowed. Sometimes this is simple and inexpensive. Typically, it takes over a year and several thousands of dollars to achieve.

How should I prepare?

Pearson Butler generally recommends that you have saved up approximately $2,500 within one year of filing the application to begin the negotiation process. There is no upper or lower limit on the cost of that process and there are often many options available. However, the deadlines can be severe and the penalties for missing deadlines even worse, so being prepared with funding is critical.

I just got something in the mail about my application, what should I do?

If/when your application publishes, your address and name will also. Business and con artists will use that information to send you offers/scams in the mail. Official communications will ONLY come to/from your attorney. Pay very close attention to anything you get from your attorney. Feel free to do as you like with other communications.

Patent Application Process

My patent application was rejected. Did my attorney make a mistake?

It is possible, but not likely. In a way, the U.S. Patent Office ‘punishes’ Examiners who allow patent applications to register but rewards Examiners for rejecting applications. Therefore, almost all patent applications are rejected. The Examiner’s typical position is that you have not met the standards and rules. This is usually stated officially in an Office Action as a rejection and begins the Patent Application Negotiation Process.

What is the Patent Application Negotiation Process?

Even if you have a patent application pending, the government will not give you the full rights of a patent registration unless you meet all the requirements set out in the laws and regulations governing patent registrations. There are thousands of pages of rules and laws that control who gets patents and who does not get patents. A Patent Examiner will review your application to see if it meets those standards. Since their typical position is that you have not, you must negotiate with the Examiner and convince the Examiner that you have met those standards.

How does it work?

Typically, the U.S. Patent Office will issue an Office Action stating the position of the Office as written by the Examiner. The Applicant has three months (can be up to six months with extension fees) to respond with arguments, evidence, and/or amendments to the application.

Once the Office Action Response has been filed, the Examiner is required to address the Response and will either respond with another Office Action, a Final Office Action, or a Notice of Allowance. This process can repeat several times until a Notice of Allowance is issued. When a Final Office Action issues, the Applicant has several options for moving forward, all including extra government fees. The Applicant can pay to continue the Negotiation Process or can pay to take the issues up on Appeal.

How long does it usually take and how much does it usually cost?

Every application is unique and will take its own path. From research, this process typically takes between about 6 to 15 months. Looking at statistics for typical fees charged by attorneys, the cost ranges between about $2,500 to $12,000 over this time period.

Patent Screening Search

What is a patent screening search?

It is a type of patent search that is intended to find published patent applications and registrations in the records of the United States Patent and Trademark Office (USPTO) that have similar characteristics to an invention.

Why do a patent screening search?

Typically, a patent screening search is performed in the initial stages of developing a business around an invention. The patent screening search is a cost-effective search that gives one a better understanding of the likelihood that the invention may be protected under U.S. Patent laws and provides a cross-section of similar patent publications. Patent screening searches are estimated to be about 85% effective in discovering relevant references and are a fraction of the cost of more extensive searches.

My patent results do not include an opinion – why?

Any written statements about an invention can potentially be used against the inventor or owner of a patent. Therefore, an appropriate level of care, effort, and research should be made before making any statements about an invention. This is especially true with statements about its patentability and especially true if those statements are made to certain types of people (e.g. investors). Therefore, it is Pearson Butler’s practice to wait until a screening search is completed before even discussing preparing a written opinion.

How much does an opinion cost and how do I know if I need one?

Written patent screening opinions generally cost twice what the search cost. Opinions are often used to help third parties understand the results of the search. Investors, strategic partners, and licensors are often attracted to a positive opinion. Also, a positive opinion can be beneficial in increasing your bargaining strength when selling a company that owns an invention.

What other kinds of patent searches are there, what do they cost, and what do they do?

There are many kinds of searches. Each search may be performed with or without a formal written opinion.

The following are some examples:

• Patentability Search ($1,000+ billed hourly) – more extensive search of patent and non-patent publications
• Clearance Search ($3,000+ billed hourly) – search of registered U.S. Patents currently in force to discover patents that a particular technology might be infringing
• Landscape Search ($1,500+ billed hourly) – search of patent publications related to a particular technology, competitor, and/or market segment to determine who the key players are and spot technology trends
• Validity Search ($5,000+ billed hourly) – an extensive search of publications published before a particular patent registration and intended to discover any references that relate to its validity that may have been overlooked or undiscovered during the patent process

What should I do with the results of my patent screening search?

Be sure to store the results in a safe and secure place where you can reference them again as needed. The results are confidential and attorney-client privileged materials, so you should not show them to others without an understanding of confidentiality. You should review the results to the level of detail you feel is appropriate and should discuss the results by phone or in person with your attorney. It is recommended that you not put your opinion about the results in an email or letter to anyone.

What is next?

The patent screening search is intended to give you more information so that you can make the following decisions:

• Would a more extensive search be appropriate?
• Would a formal written opinion based on the search results be valuable to you?
• Should you invest in filing a patent application to protect the technology from companies who would copy the idea?

As you make those decisions, you move forward in the process to protect the technology and the opportunities. Be sure to involve your attorney in your decision-making process so you can leverage that expertise.

Provisional Patent Application

What is a provisional patent application?

It is a special type of patent application offered by the United States that has fewer requirements and fewer/different benefits than a standard (non-provisional) patent application. If you have an active provisional patent application covering technology that was not disclosed more than one year before the filing date of your provisional patent application, you are patent pending in the United States. If you filed the provisional patent application before any public disclosure or sale, you are patent pending in the world.

What are the benefits of a provisional patent application?

Because it has fewer requirements, it will be less expensive than a standard patent application. It is also not examined by the U.S. Patent Office, so you generally cannot be rejected. It is often a faster and less expensive way to become patent pending. It also provides the opportunity to “try out” an invention in the marketplace or in the capital market to see if it can gain traction without paying the full patent costs. It also allows you to continue to develop the invention as improvements can often be included in the eventual non-provisional application. Also, you can include multiple inventions in a single provisional patent application; just be sure to separate them out in later filings.

What is the downside to a provisional patent application?

A provisional patent application adds to the file history of the application and, therefore, may introduce vulnerabilities. It also will generally delay the potential granting of a patent registration by about one year. For some businesses, that is a benefit instead of a downside. Most importantly, a provisional patent application expires one year from the filing date.

To continue the benefits of the application, one MUST file a non-provisional patent application before that expiration. This deadline is simultaneous with the deadline for filing foreign patent applications, so the stacked costs can be difficult to handle if you are not prepared. Filing a provisional patent application will typically increase the total cost of a patent by a few hundred to a couple thousand dollars.

What if I cannot meet the one-year deadline?

If you fail to meet the one-year deadline for filing a non-provisional patent application, you have almost certainly lost important rights. However, you may be able to recover some of those rights depending on the extent and timing of your disclosures/sales to the public of your invention/idea. If your earliest sale or public disclosure was less than a year ago, you have given up your foreign rights virtually entirely, but you have a deadline of a year from your earliest disclosure/sale to file a new provisional or non-provisional patent application. If you meet that deadline, you may be able to recover/preserve substantial rights.

How much do provisional patent applications cost?

A typical provisional patent application that seeks to appropriately satisfy the written description requirement, the enablement requirement, and provide some support for the doctrine of equivalents will generally cost approximately $3,500 to $5,500, depending on the technology. You can spend more than that for more developed claims, claims and support for foreign (EU, Japan, Canada, etc.) applications, professional drawings, and/or other features.

The more you spend, the more value your application will provide in the future and that value may result in a stronger application, better protection, and/or cost savings in the future. You can spend less on a provisional patent application but doing so almost always means you are assuming risks that the application may not satisfy all the requirements or provide the support you are expecting. The cheapest application is one you file yourself for just the government fee ($140 to $280 as of 2019), but the risks you assume are very great.

Will people be able to see my application?

Not at first. A provisional patent application is not published by the U.S. Patent Office and is kept confidential until it is referenced in a published patent application. Even then, the provisional application is not published but instead available on request and for a fee. There are ways to keep your patent applications from publishing until they are issued as patents. This can help extend the secrecy of what you put into your provisional patent application, sometimes by years and years.

When should I consider having a provisional patent application filed?

If you need an application filed ASAP, if you have a low initial budget for your intellectual property, if you are not very confident that your technology will do well in the marketplace, and/or if you want to extend the total life of your patent by a year, you should consider how a provisional patent application can meet your needs. If you are in an opposite situation, you may be better off skipping the provisional application.

Trademark Application Negotiation Process

My trademark application was rejected. What is going on?

There are hundreds of pages of rules that govern when it is “okay” to allow a trademark application to register. Trademark applications are examined by an Examiner, a lawyer with the Trademark Office who reviews the application, does research, and then decides whether the application should be allowed based on the research and review. It is common for trademark applications to be rejected and common for rejected applications to later be allowed. Trademark Examiners tend to err on the side of rejection — their job is to protect the register.

What is the Trademark Application Negotiation Process?

Even if you have a trademark application pending, the government will not give you the full rights of a trademark registration unless you meet all the requirements set out in the laws and regulations governing trademark registrations. A Trademark Examiner will review your application to see if it meets those standards. Since a typical position is that you have not, you must negotiate with the Examiner and convince the Examiner that you have met those standards.

How does it work?

Typically, the U.S. Trademark Office will issue an Office Action stating the position of the Office. The Applicant has six months to respond with arguments, evidence, and/or amendments to the application. Once the Office Action Response has been filed, the Examiner is required to address the Response and will either respond with another Office Action, a Final Office Action, or a Notice of Allowance. This process can repeat several times until a Notice of Allowance is issued. When a Final Office Action issues, the Applicant has options for moving forward, all including extra government fees. When the Trademark Examiner has issued a final office action, the Applicant generally takes the issues up on Appeal.

How long does it usually take and how much does it usually cost?

Every application is unique and will take its own path. From research, this process typically takes between about 3 to 15 months. Looking at statistics for typical fees charged by attorneys, the cost ranges between $500 and $4,000+ over this time period. Pearson Butler’s fees for this process tend to be lower than average by about 25% to 35%, so you can expect lower attorney fees, though government fees remain the same across the board.

Federal Trademark Application

I just filed a federal trademark application; what does that mean?

You have started the process to acquire federal rights in your name/logo/etc. You now own an application that represents powerful potential rights. One of these rights is the right to the filing date if the application is allowed to register. This means that even if it takes a long time to actually register the mark, once the mark is registered, the rights are established as of the day the application was filed. This can be very important leverage. You can license and/or sell these rights. Moreover, the United States government now holds proof of your intent to acquire those rights. If somebody comes along after and tries to acquire those same rights, your application will be a serious (possibly impossible) obstacle for them.

Can I put the ® image next to my trademark now?

No. Until your registration is complete, you cannot use the ® image. Doing so without a real registration puts you at risk for liability. Until then, you would generally continue to place ™ near your mark.

What should I do next?

You should be moving forward with your business. Sometimes that means going to trade shows, making deals, networking, engineering your product/service, selling, marketing, etc. Anything you can do to build success around your product/service will increase the value of your property. The more you use your mark, the stronger and more valuable it will become.

Be sure to keep records of your use. For example, you should keep examples of your marketing materials and know where you used them. Old brochures, advertisements, banners, etc. are all good examples. You should have photographs of your product and packaging and screenshots of your website(s). Anytime you make changes, you should keep a copy somewhere.

What happens next with my application?

Your application will go through an examination process. A lawyer with the U.S. Trademark Office (Trademark Examiner) will review the application to determine if it should be allowed. It is common for applications to be rejected on one or more grounds. For example, if someone else owns a confusingly similar mark, your application might be rejected. Sometimes, actions must be taken or strategies revised and, sometimes, arguments must be prepared to persuade the Examiner that the application should be allowed. Where the Examiner cannot be persuaded, it may be necessary to appeal the Examiner’s decision to the Trademark Trial and Appeal Board.

Tell me more about getting my registration.

There are many requirements that must be satisfied before you can be allowed to have a trademark registration. One of the most important requirements is that you prove to the U.S. Trademark Office that you (the person or business listed on the application) are actually using the mark (listed on the application) with the goods/services (listed on the applications) in interstate commerce. Sometimes your application already includes this proof.

More often, with new businesses, it does not yet include that proof because you want to secure the name as early as possible to keep others from taking it before you get to market. If you have not yet proved to the government that you are using the mark, then you will eventually have to do so. If the application is allowed, you will have six (6) months from the date it was allowed to prove use.

What kind of expenses should I be expecting?

Depending on your attorney, the costs can vary. From experience, you should expect some minor costs for keeping track of the application, giving you notifications, and doing status checks. These might end up being a few hundred dollars over the course of a year. If the application is allowed and you need to prove use in interstate commerce, expect to pay about 1/2 to 2/3 of what you paid for the application to prove use. If the application is rejected, you can pay anywhere from a few hundred to a few thousand for dealing with those issues, depending on the issues and the plan of action. Deadlines for responses can be severe and the penalties for missing deadlines even worse, so being prepared with funding is critical. It is recommended that you budget for between about $400 and $3,000 for the 12-month period after filing to make sure that you have funds available in case you need them.

Trademark Screening Search

What is a Trademark screening search?

It is a type of Trademark search that is intended to find published Trademark applications and registrations in the records of the United States Trademark and Trademark Office (USPTO) that have similar characteristics to an invention. Pearson Butler will sometimes do a very limited survey of the internet in general.

Why do a Trademark screening search?

Typically, a Trademark screening search is performed in the initial stages of developing a business around a brand. The Trademark screening search is a cost-effective search that gives one a better understanding of the likelihood that the brand or an element of the brand may be protected under US Trademark laws and also provides a cross-section of similar Trademark publications. Trademark screening searches are estimated to be about 85% effective in discovering relevant references and are a fraction of the cost of more extensive searches.

My Trademark results do not include an opinion; why?

Any written statements about a brand can potentially be used against the owner of a Trademark. Therefore, an appropriate level of care, effort, and research should be made before making any statements about an invention. This is especially true with statements about its protectability or whether or not it infringes on another mark. Therefore, it is Pearson Butler’s practice to wait until a screening search is completed before even discussing preparing a written opinion.

How much does an opinion cost and how do I know if I need one?

Written Trademark screening opinions generally cost twice what the search cost. These costs may vary depending on the search results. Opinions are often used to help third parties understand the results of the search. Investors, strategic partners, and licensors are often attracted to a positive opinion. Also, a positive opinion can be beneficial in increasing your bargaining strength when selling a company that owns a particular brand.

What should I do with the results of my Trademark screening search?

Be sure to store the results in a safe and secure place where you can reference them again as needed. The results are confidential and attorney-client privileged materials, so you should not show them to others without an understanding of confidentiality. You should review the results to the level of detail you feel is appropriate and should discuss the results by phone or in person with your attorney. It is recommended that you not put your opinion about the results in an email or letter to anyone.

What is next?

The Trademark screening search is intended to give you more information so that you can make the following decisions:

• Would a more extensive search be appropriate?
• Would a formal written opinion based on the search results be valuable to you?
• Should you invest in filing a Trademark application to protect the brand or brand element from companies who would confuse your customers?

As you make those decisions, you move forward in the process to protect the technology and the opportunities. Be sure to involve your attorney in your decision-making process so you can leverage that expertise.

For more answers to your questions about intellectual property, contact Pearson Butler at (800) 265-2314. The firm serves clients in Utah, the United States, and internationally.