I. THE PROTECTION AVAILABLE

New ideas, new products, methods and processes, new services, new promotional or merchandising schemes or approaches, new packaging or designs are protectable as intellectual property which includes patents, trade secrets, copyright and trademarks.


Patents

There are three kinds of patents: Design, Utility and Plant. Utility patents are the kind most commonly referred to when one seeks to protect an invention. They are granted for any new and useful process, machine, manufacture or composition of matter or any new and useful improvement thereof, including new uses of old devices or new combinations of well-known components. Design patents cover only the new design of an object--its ornamental appearance. Utility patents are viewed in three classes: chemical, electrical, and general/mechanical. Chemical inventions covered include new compounds, new methods of making old or new compounds, new methods of using old or new compounds, and combinations of old compounds. Biological materials and methods, drugs, foodstuffs, drug therapy, plastics, petroleum derivatives, synthetic materials, pesticides, fertilizers and feeds are all protectable. General/mechanical inventions include everything from gears and engines to tweezers and propellers. For example, complex textile weaving machines, space capsule locks and seals, and diaper pins are all protected. Electrical inventions include everything from lasers to light switches, from the smallest circuit details to entire system architectural concepts. Computer software is patentable in its various forms. Application programs, such as the software that runs in a computer that controls a chemical processing plant or a rubber molding machine, are patentable. Software that runs a cash management account at a brokerage house or bank is patentable too. Even the microcode in a ROM which embodies the entire inventive notion of a new tachometer is patentable. Internal or operations programs which direct the handling of data in the computer's own operations are also patentable. The basic requirement for obtaining a utility patent is that the idea be new and that it be embodied in a physical form. The physical form may be a thing or a series of steps to perform. Design patents too are awarded for new ideas. Hockey uniforms, ladies' dresses, computer housings, automobile bodies, buildings, shoes and game boards are all protectable with this type of patent. But it covers only the appearance, not the idea or underlying concept. What you see is what you get. Design patents are generally less expensive than utility patents and in some cases are all the protection needed or obtainable. There are more than one thousand utility and a few hundred design patents issued each week. Summaries of each patent are published each week in the Official Gazette of the Patent and Trademark Office. Copies of every issued patent are obtainable from the Patent and Trademark Office.


Trade Secrets

Trade secrets cover everything that patents cover, and much more. They protect any knowledge you have that gives an advantage in business over competitors. A trade secret is knowledge, which may include business knowledge or technical knowledge, that is kept secret for gaining an advantage in business over one's competitors. Customer lists, sources of supply of scarce material, or sources of supply with faster delivery or lower prices may be trade secrets. Certainly secret processes, formulas, techniques, manufacturing know-how, advertising schemes, marketing programs and business plans are all protectable. There is no standard of invention to meet as with a patent. If the idea is new in this context, if it is secret with respect to this particular industry or product, then it can be protected as a trade secret. Unlike patents, trademarks and copyrights, there is no formal procedure for obtaining trade secret protection. Rather, it is established by the nature of the secret and the effort to keep it secret. Trade secrets are protected eternally against disclosure by all those who have received it in confidence and all who would obtain it by theft for so long as the knowledge or information is kept secret. In contrast to patent protection, there are no statutory requirements for novelty or restrictions on the subject matter. Lesser and different inventions may be protected relative to patent protection. The disadvantage of trade secrets over patents is that there is no protection against discovery by fair means: accidental disclosure, independent inventions, and reverse engineering. Many important inventions, such as lasers and the hula hoop, were developed more or less simultaneously by different persons. Trade secret protection would not permit the first inventor to prevent the second and subsequent inventors from exploiting the invention the way a patent would. Trade secrets are not invoked only against those who stole them. They are equally well suited to lucrative licensing programs and often can be more valuable than patents. The values of certain trade secrets have been appraised at many millions of dollars and may be virtually priceless in some industries. For example, the formula for Coca-Cola is one of the best-kept trade secrets in the world.


Copyright

Copyright covers all manner of writings, and "writings" is very broadly interpreted. It includes books, advertisements, brochures, spec.sheets, catalogs, manuals, parts lists, promotional material, packaging and decorative graphics, fabric designs, photographs, pictures, film and video presentations, audio recordings, architectural designs, and even software and data bases. Software and data bases are protected not only in written form but also as stored in electronic memory. It is said that copyright does not protect a mere idea; it protects the form of the expression of the idea. But this is broadly interpreted. For example, one can infringe a book without copying every word. The theme is protected even though upon successive generalization the theme will devolve to one of seven non- protectable basic plots. This is apparent in the software area, where using the teachings of a book to write a program has resulted in copyright infringement of the book by the computer program. In another case a program was infringed by another program even though the second program was written in an entirely different language and for an entirely different computer. The form of the expression protected was not merely the actual writing, the coding, but the underlying concept or algorithm: the flow chart. Copyright is a very strong and readily achievable source of protection. Utilitarian objects cannot be the subject of copyright: a hypodermic needle, a hammer, a lamp base. Yet stained glass windows, software, piggy banks are granted copyright protection. Copyright has a term of the life of the author plus fifty years. For corporate "authors" or works made for hire the period is 75 years from first publication or 100 years from creation, whichever is shorter. During the life of the copyright the owner has the right to reproduce, perform and display the work and exclude all others from those rights.


Trademarks

Trademark protection is obtainable for any word or symbol or combination thereof which is used on goods to indicate their source. Any word, even common words, can become a trademark -- Look, Life, Time, Apple -- so long as the word is not used descriptively. Apple for fruit salad might not be protectable. Apple for computers certainly is. Common forms, such as geometric shapes (circles, triangles, squares), natural shapes (trees, animals, humans), combinations of shapes, or colors may be protected. Trademarks have been registered for sounds and scents too. Even the single color pink has been protected as a trademark for building insulation. Three-dimensional shapes such as bottle and container shapes, building features (McDonald's golden arches) can also be protected. While people generally only speak of trademarks, that term encompasses other types of "marks". A trademark is specifically any word or symbol or combination of both that is used on goods to identify its source. However, a service mark is a word or symbol or combination of both used in connection with the offering and provision of services. BLUE CROSS/BLUE SHIELD, PRUDENTIAL INSURANCE, McDONALD'S are service marks for health insurance services, general insurance services and restaurant services, respectively. There are also collective marks and certification marks. Collective marks indicate membership in a group -- labor unions, fraternities, trade associations. Certification marks are used to indicate that a party has met some standard of quality: Quality Court motels, Underwriter's Laboratory, Good Housekeeping's seal of approval. If you use it to identify and distinguish a product or service, then think "trademark" protection. Ownership of a trademark allows you to exclude others from using a similar mark on similar goods which would be likely to confuse consumers as to the source of the goods. This right pertains for so long as the owner owns the mark. Federal trademark registration must be renewed every ten years. State trademarks have various terms, usually ten years, and also require renewal. Trademarks can be more valuable to a company than all of its patents and trade secrets combined. Consider the sudden appearance and abrupt increase in the worth of trademarks such as CUISINART, HAAGEN DAZ and BEN & JERRY'S. Consider also the increased value that the name IBM, KODAK or GE brings to even a brand new product. It is important to be able to determine at the earliest stage just what type of protection is available for your idea or product -- patent, trade secret, trademark, copyright -- so that the proper steps can be taken and loss of rights can be avoided.



II. ESTABLISHING THE PROTECTION

Once it is determined that a new idea, product, or method, is protectable with one or more forms of protection -- patents, trade secrets, trademarks, copyrights -- those rights should be secured as quickly as possible. Each of those forms of protection is obtained in a different manner and provides a different set of rights..


A. Patents -- Utility

Patent protection is established only upon the issue of a patent on the invention. From the date of issue forward until expiration, the owner of the patent has the right to exclude others from making, using and selling the patented invention. Prior to issue there are no rights under a patent.Patents issued before June 8, 1995, expire seventeen years from their issue date. Patents issued on applications filed on and after June 8, 1995, expire twenty years from their filing date. Patents which issue on applications pending on June 8, 1995, expire either seventeen years from issue or twenty years from the application filing date, whichever is longer.

The effort begins when an inventor or inventors conceive the invention. They or a registered patent attorney or agent on their behalf will prepare a patent application and file it in the U.S. Patent and Trademark Office. On the date that the application is filed there is a "patent pending" but this confers no rights and no protection. Protection only occurs if and when the Patent Office agrees that the invention is patentable and issues the patent.

The patent application must contain a complete and understandable explanation of the invention. It does not have to be a nuts and bolts instruction manual. It is enough if the explanation conveys the inventive concept so that a person skilled in the art to which the invention relates can make and use the invention without undue experimentation. Further, the explanation must contain a full description of the best mode known by the inventor for carrying out the invention. The inventor cannot, for example, use the second best embodiment of the invention as an illustration for the patent application disclosure and keep secret the best embodiment. That will make the resulting patent invalid.

The timing of the filing of the patent application is critical. It must be filed within one year of the first public disclosure, public use, sale or offer for sale of the invention, or the filing will be barred and the opportunity to obtain a patent forever lost. This is known as the one-year period of grace.

A description of the invention in a printed publication is such a public disclosure. A mere announcement is not sufficient, unless it contains an explanation of the invention too. It matters not that only a few copies of the publication were made available so long as it was an unrestricted distribution.

Market testing, exhibitions, even use by the inventor himself is a public use sufficient to start the one-year period running. There is an exception: a public use which was for experimental purposes will not start the year running. This test as to whether a public use was an excused experimental use is rigorous. The inventor must show that it was the operation and function of the invention that was being tested, not the appeal or marketability of the product containing the invention. Further, some evidence of the testing should be established. For example, if samples were sent to potential customers for evaluation, it would be well to show that the customers returned filled out evaluation forms and that the inventor considered and even made changes based on those evaluations.

A sale will bar a patent even if the invention is so deep inside a larger system that it could not be easily or ever discovered. If the device containing the invention is sold, that is enough. The notion is that an inventor should be given only one year in which to file his patent application after he has begun to commercially exploit or attempt to commercially exploit his invention. Thus, the one year period for filing a patent application begins to run against an invention embodied in a production machine installed in a locked, secure room the first time a device produced by that machine is sold, even though the machine may never be known or seen by anyone other than the inventor. And it is not just a sale that triggers the running of the one-year period. An offer for sale is enough, even if the sale is never consummated.

A patent application contains three basic parts: drawings showing an embodiment of the invention; a written description of the embodiment referring to the drawings; and one or more claims. The definition of the patented invention, the protected property, is not what is disclosed in the drawings and specification portion of the application; they are only the description of a specific embodiment. The coverage of the patent is defined by the third part of the application, the claims.

In order to receive a patent, the claims must be novel and unobvious. Novelty is a relatively easy standard to understand: either a single earlier patent, publication, or product shows the entire invention or the invention is novel. Obviousness is somewhat more difficult to grasp. Even though an invention may be novel it may nevertheless be obvious and therefore unpatentable. The test for obviousness is more subjective: are the differences between the invention and all prior knowledge including patents, publications and products such that the invention would have been obvious to a person having ordinary skill in the art to which the invention pertains at the time the invention was made? If so, the invention is not patentable even if it is novel.

It is the claims that the U.S. Patent and Trademark Office Examiner analyzes and accepts or rejects in considering the issuance of the patent. It is the claims that must be looked at to see if someone infringes a patent. It is the claims that define the patent property.

It is important to note that in the U.S. a patent must be filed by the inventor and no one else. The inventor is the originator of the inventive concept. A project leader is not by his supervisory position alone an inventor of an invention. Neither is a technician or engineer who may have built the entire first working model. The inventor may have sold or assigned the patent application to someone else: his employer, a partner in some enterprise, a company he has newly formed, or one inventor may sell his interest to the other. Thus the inventor or inventors may not be the owners of the patent, but nevertheless it must still be filed in their names..


B. Patents -- Design

Design patents have a life of only 14 years but are otherwise generally subject to the same rules as other patents. That is, the new and original ornamental design sought to be patented must be novel and unobvious and must be filed with one year of the first public use, publication, sale or offer for sale.


C. Patents -- Plant

Plant patents are also available for inventions or discoveries in asexual reproduction of distinct and new varieties of plants. This area of patents has become much more important with growth of biotechnology inventions in the last few years, especially as regards protection of man-made life forms.


D. Trade Secrets

There is no formal governmental procedure for establishing ownership of a trade secret. There are two requirements for establishing a trade secret: novelty and secrecy.

There must be some novel knowledge which provides an advantage in business and that knowledge must be kept secret. The level of novelty is not great. The knowledge must not be in the public domain. But the knowledge could be known generally and not specifically and still qualify as a trade secret. For example, the identity of a source of scarce material or material at a lower cost or material which can be delivered in a shorter time could be a trade secret insofar as that is unknown to competitors and gives an edge in competing with them.

Secrecy is essential; without that there is no trade secret property. There are four primary steps for insuring secrecy. First, there should be confidential disclosure agreements with all employees, agents, consultants, suppliers and anyone else who will be exposed to the secret information. The agreement should bind them not to use or disclose the information without permission. Second, there should be security precautions against third parties entering the premises where the trade secrets are used. Sturdy locks, perimeter fences, guards, badges, visitor sign-in books, escorts, and designated off-limit areas are just some of the ways that a trade secret owner exercises control over the area containing the trade secrets. Third, specific documents containing the trade secrets should be stamped with a confidentiality legend and should be kept in a secure place with limited access such as a safe or locked drawer or cabinet. Fourth, the employees, consultants and others who are concerned with, have access to or knowledge about the trade secrets should be told of the existence of the secrets, their value to the company, and the requirement for secrecy.

Trade secret owners rarely do all of these things, but an attempt must be made to do enough so that a reasonable person having misappropriated the secrets cannot excuse his conduct by saying he didn't know or that no precautions were ever taken and there was no indication that something was a trade secret. This is important because unlike patents, trade secret protection provides no "deed" to the property.

There is no formal procedure for establishing a trade secret, and thus the necessary steps for establishing a trade secret are often not taken seriously until a lawsuit is brought by the owner against one who has misappropriated them. In each specific case the owner must show that the precautions taken were adequate.

Trade secret misappropriations are generally of two classes: those where someone who has a confidential relationship with the owner has violated the duty of confidentiality and those where someone under no duty of confidentiality uses improper means to discover the secret.

Theft of trade secrets issues frequently arise with respect to the conduct of ex-employees. Certainly a good employee will learn a lot about the business during his employment. And some of that learning he will take with him as experience when he leaves. That can not be prevented. The question always is, did he just come smart and leave smarter or did he take certain defined information that was peculiarly the company's?


E. Trademarks

A trademark, unlike a patent, is established without any formal governmental procedure.

Ownership of a trademark is acquired simply by being the first to use the mark on the goods in commerce. And it remains the owner's property in perpetuity as long as he keeps using it. A trademark can be any word or symbol or combination of word(s) and symbol(s) used on the goods to indicate the source of the product. The mark should not be descriptive of the goods on which the mark is used.

The mark may be suggestive of the goods. It is best to select a mark which is arbitrary and fanciful with respect to the goods. This is so because everyone, including competitors, has a right to use a descriptive term to describe their goods. Therefore exclusive rights in such a mark cannot be secured. A trademark owner should be careful, too, to prevent the mark from becoming generic, as happened to Aspirin, Cellophane, Linoleum and others and may be happening to Band-Aid or Jello or Kleenex. The correct form is Bandaid elastic bandages; Jello fruit flavored gelatin dessert; Kleenex facial tissues.

It is wise to have a search done for a proposed new mark before beginning to use it to be sure that the mark is clear to adopt and use on the goods. That is, no one else is using the same or similar mark on the same or similar goods. It is confusing to customers and it is expensive to change a mark and undertake all new printing, advertising and promotional materials when it is later discovered that your new mark has been earlier used by another.

While there is no need to register a mark, there are benefits associated with registration that make it worthwhile. Registration may be had in individual states or a federal registration may be obtained. A state registration applies only in the particular state that granted the registration and requires only use of the mark in that state. A federal registration applies through all fifty states, but to qualify the mark must be used in interstate or foreign commerce. A distinct advantage of federal registration is that even though a mark is used across only one state line, that is, goods bearing the mark are in commerce between one state and another state or country, that is enough to establish federal protection in all fifty states.

Thus if you are using your mark in Massachusetts, New Hampshire and Rhode Island, for example, but do not register it federally, you may later find yourself blocked from using your mark in all other states if a later user of the same mark without knowledge of your use of the mark federally registered the mark as his. That later user would then have the right in all other 47 states even though his actual use may only have been in Oregon and California!

While your common law rights in a trademark or service mark last forever as long as you are properly using the mark, registration must be periodically renewed. Federal registrations extend for twenty years (ten years for registrations filed after November 16, 1989); states vary but ten years is typical.

Throughout the history of trademark law in the U.S., registration in the U.S. Patent and Trademark Office followed the common law. That is, to establish ownership of a trademark one had to use the mark on the goods in commerce and to register the mark in the U.S. Patent and Trademark Office one had to establish that the mark was indeed in use.

That has changed. Beginning on November 16, 1989, an application can be filed to register a mark which is not yet in use but which is intended to be used. After the U.S. Patent and Trademark Office examines the application and determines that it is registerable, it will require that the applicant show actual use within six months. The six-month period can be extended if good cause is shown. Nevertheless, before registration, even before actual use, the mere filing of the application to register the mark intended to be used establishes greater rights over later users who actually used it earlier than your filing date.

Care must be taken with trademark properties. A trademark cannot be simply sold by itself or transferred like a desk or a car or a patent or copyright. A trademark must be sold together with the business or goodwill associated with the mark or the mark will be abandoned. Further, if a mark is licensed for use with a product or service, provision must be made for quality control of that product or service. That is, the trademark owner must require the licensee to maintain specific quality levels for products or services with which the mark is used, under penalty of loss of license. And the owner must actually exercise that control through periodic inspection, testing or other monitoring that will assure the licensee's product quality is up to the prescribed level..


F. Copyright

Under copyright law historically a copyright was established by publishing the work -- a book, painting, music, software, book, instruction manual -- with copyright notice, typically "Copyright", "Copr.", or a "(c)" followed by the year of first publication and the name of the owner. The notice may appear on the back of the title page of a book, on the face of a manuscript or advertisement, on the base of a sculpture. It must be visible and legible but it may be placed so as not to interfere with the aesthetics of the work. If any more than a few copies of the published work appeared without the notice the copyright would be forfeited forever. Works that were unpublished did not need notice. They were protected by virtue of their retention in secrecy. Publication with notice was all that was required. Registration with the Copyright Office was not always necessary.

Under the current law enacted in 1976, publication without notice can be cured if the omission of the notice is only from a small number of copies; registration of the work with the Copyright Office is effected within five years, and an effort is made to add the notice to those copies published without it. Notice must be on the work in all its forms. For example, for software the notice should appear on the screen, in the coding, on the disk and on the ROM, wherever the software is resident or performing. In one case an infringer got away with reading out copyrighted software from a ROM because there was no notice on the ROM although there was notice elsewhere.

Presently, under an amendment to the current law effective March 1989, there is no notice required at all. In order to become a member of an international copyright treaty known as the Bern Convention, the United States had to abolish all formalities required to establish copyright in a work. Now the simple fact that a work was created, whether published or not, establishes the copyright without anything more. It is not clear that this removal of the need for notice is retroactive. Thus new works after March 1989 need not have notice but those which were required to bear notice before the amendment should, in the exercise of prudence, continue to bear the notice.

While notice is no longer compulsory, it is a valuable and worthwhile practice since it enables pursuit of innocent infringers. That is, an infringer who did not have actual notice that the work copied was copyrighted is nevertheless liable for damages if the works bore copyright notice.

Registration, too, is not compulsory, but it too bestows valuable additional rights. If the copyright owner has registered his copyright then statutory damages of up to $500,000 can be recovered without proof of actual damages. This can be a real advantage in copyright cases where actual damage can be difficult and expensive to prove.

Registration requires filling out a proper form and mailing it to the Copyright Office with the proper fee and a deposit of two copies of the work for published works, only one copy if the work if unpublished. Accommodations are made for filing valuable or difficult deposit copies: deposit for three-dimensional works can be effected using photographs; deposits for large computer programs can be effected using only the first and last twenty-five pages. Further, if the program contains trade secrets there is a provision for obscuring those areas from the deposit.

The duration of a copyright is extremely generous when compared to the life of a patent. Copyright in a work extends for the life of the author plus 50 years. For works for hire, such as would be the case for a filing by a corporation, the period of copyright is 75 years from first publication or 100 years from creation, whichever is shorter.

Work for hire is a critical issue in copyright law that should be understood by all employers, employees and independent contractors. A work for hire occurs when one party, the employer, hires another party, the creator, to create a new work: a book, software, a videotape which is copyrightable subject matter. If the creator is truly an employee of the employer then the work is a work for hire and the employer is in law the "author" and owner. If the creator is anything less than a bona fide employee, i.e., if there is any question that the creator may be acting on his own as a free lancer, or independent contractor, then the creator, not the employer, is the author and owner. The large gray area of uncertainty has spawned many disputes and lawsuits which can be avoided by a written agreement executed before any work starts or money changes hands, specifically covering who will be the owner and who gets what rights.



III. INTERNATIONAL PROTECTION

Obtaining protection for patents, trademarks and copyrights in the U.S. alone is no longer sufficient in the modern atmosphere of international competition and global markets. International protection often needs to be extensive and can be quite expensive, but there are ways to reduce and postpone the expense in some cases. Protection must be considered in countries where you intend to market the new product or where competitors may be poised to manufacture your product.


A. Patents

A patent in one country does not protect the invention in any other country: a novel product or method must be protected by a separate patent in each country. In addition, each country has different restrictions that must be met or no patent protection can be obtained. The first and most important restriction is the time within which you must file an application to obtain a patent in a country or forever lose your right to do so.

Not all countries are the same with respect to filing deadlines. For example, in the United States an inventor may file an application to obtain a patent on his invention up to one year after the invention has become public through a publication explaining the invention, a public use of the invention, or sale or offer for sale of the invention. This one-year period is known as the period of grace.

There is no period of grace in other countries such as Great Britain, West Germany, Sweden, France, Italy, Switzerland, Belgium, Austria, Netherlands, Australia and Japan. And each country has a slightly different view of what constitutes making an invention public. In Japan, for example, public use of an invention before filing an application bars a patent only if the public use occurred within Japan, but in France any public knowledge of the invention anywhere bars the patent.

Thus, while the U.S. allows a business one full year to test market its new product, most foreign countries require that the patent application be filed before there is any public disclosure, before the owner can even begin to determine whether the new product will be even a modest success. So while you can delay filing for a year in the U.S., you have to file quickly in each other country of concern. And that is not inexpensive, especially if the U.S. dollar is down against the currencies of other major countries.

But there are ways to avoid having to file immediately. One such way is afforded by a treaty known as the Paris Convention. If you file in the U.S. and then file in any country which is a party to the Convention within one year of the date on which you filed in the U.S., you can rely on the U.S. filing date. That is, as long as you claim priority under the Convention, the filing date awarded in that country will be not the actual date of filing in that country but the date, up to one year earlier, that you filed in the U.S.

In this way, by filing one application for the invention in the United States you can preserve your initial U.S. filing date for up to one year. What this means is that you can file an application in the U.S., then immediately make the invention public by advertising, published articles and sales. If within one year the product appears to be a success you can then file in selected foreign countries. Even though the prior public use of the invention would ordinarily bar your filing in those countries, the Convention protects you. Countries which are members of the Paris Convention include:

There are other options by which you can further postpone the cost of foreign filings while preserving your right to file. For example, another more recent treaty known as the Patent Cooperation Treaty (PCT) permits a delay of up to thirty (30) months before actually incurring the costs of filing in individual countries. The PCT option is available if you file and request PCT treatment within one year of your U.S. filing date.

Thus by filing a PCT application in specially designated PCT offices within one year of your U.S. filing and by designating certain countries, you can preserve your right to file in those designated countries without further expense until twenty (20) months from the earlier U.S. filing date. That provides an additional eight (8) months for test marketing the product. This does introduce the extra cost of the PCT application filing, but if you are considering filing in six or eight or more countries, the one extra PCT filing may well be worth it for two reasons. First, it delays the outflow of cash which you may not now have or may require for other urgent needs. Second, if the product proves insufficiently successful you can decide not to file in any of the countries designated under the PCT and save the cost of all six national application filings.

Countries which are party to the PCT include::

Another cost-saving feature of international patent practice is the European Patent Convention (EPC), which is compatible with the Paris Convention and the PCT and which enables you to file a single European patent application and designate any one or more of seventeen (17) European countries in which you wish the patent to issue:

B. Trademarks

There are a number of international treaties which affect trademark rights.

The three countries of Belgium, Netherlands and Luxembourg have joined together under the Benelux Union to form a single trademark territory. One registration provides protection in all three countries.

A number of countries have formed the Madrid Union, wherein one international registration will be recognized in all the member states unless specifically refused by a member state. Each member state may conduct its own examination. Currently, member states include European countries (except generally the U.K. and Ireland), African States and the Russian Federation The Union applies to: (1) nationals of a member state; (2) domiciliaries of a member state; and (3) individuals or corporations having an office or place of business in a member state (corporate subsidiaries may own a mark and register it in the member state). The same Paris Convention referred to earlier with respect to patents provides a six (6) month right of priority: a party may claim a filing date in a Madrid Union country up to six months earlier based on his U.S. filing date. The term of the registration is twenty years. French-African states and the island of Madagascar have been made into one unified trademark territory under a treaty known as OAMPI. The Paris Convention gives certain rights afforded to citizens of a member state to nationals of other member states. As previously indicated, applications for patents may receive the benefit of a one-year priority date; applications for trademark registration receive a six-month priority date based on the home country filing date.

A new and separate union for the international registration for trademarks was founded in 1973, the Trademark Registration Treaty. International registration may be obtained under this treaty without first having to register the mark in the applicant's home country. The registration is effective for ten years. Although signed by fourteen countries, only five countries have deposited an instrument of accession to the treaty, namely: Congo, Gabon; Togo Republic, Upper Volta; and the Russian Federation.

In the United States a foreign applicant, whose country of origin is a party with the U.S. to a trademark convention, or extends reciprocal rights to U.S. nationals, may base a U.S. application on: (a) ownership of a foreign trademark registration; or (b) ownership of a foreign application if the U.S. application is filed within six months of foreign filing.

If a mark has been registered in a foreign country, no use in commerce must be alleged. If relying on a foreign application, no U.S. registration will issue until the applicant alleges use or the foreign registration issues. Use of the mark is required to maintain a valid registration. The use requirements for obtaining U.S. trademark registrations have been eased for U.S. nationals, too, under a new law effective November 1989.

While the U.S. is only now eliminating its traditional requirement for actual use of the trademark on the goods in commerce before application for registration can be filed, most other countries have never had that requirement. Australia, Canada, West Germany, Italy, Japan, Great Britain, and Switzerland permit filing with only an intent to use. France and Sweden do not even require an intent to use in order to file.


C. Copyright

There are a number of international treaties which affect copyright, the most important of which are the Universal Copyright Convention, to which the U.S. has long been a party, and the premier treaty, the Bern Union, to which the U.S. has finally fully acceded with the amendments to U.S. law effective March 1, 1989.

The Universal Copyright Convention (UCC), adopted by approximately eighty countries including the United States and the Russian Federation, requires that each country treat nationals of other member countries the same as they do their own citizens. It gives copyrightable works protected by the UCC the same rights as domestic works. The UCC excuses compliance with all domestic member country formalities with respect to unpublished works, and published works which display the copyright notice, name of owner, and year of first publication. In the United States, the Congress has invoked a restrictive provision of the UCC to require domestic formalities in cases of works first published in the United States by U.S. citizens or UCC member country nationals. Accordingly, foreign nationals can begin a copyright infringement action without having a copyright notice or a recordation. U.S. citizens cannot. The UCC requires nationals to comply with the formalities of their own countries and avoids foreign formalities.

The Bern Union includes all major countries including European countries, Japan, and most recently, the United States. The Russian Federation is not a member. The Union has minimum requirements that must be met. Namely: the duration of the copyright must be at least for the life of the author plus twenty-five years, and copyright must be automatically granted without the need for formalities. Accordingly, the United States has formed a two-tier system. Works whose author's domicile is a foreign state adhering to the Bern Convention and where publication occurs first in a Bern State (except the U.S.) are exempt from the registration application prerequisite, and infringement suits may be brought with respect to such works, even if they have never been submitted for registration with the Copyright Office. Most other works, most importantly those of U.S. domiciliaries, must comply with the formalities of notice and filing before an infringement action may be brought.

There are also two Pan American Conventions: (a) Mexico City Convention of 1902; and (b) Buenos Aires Convention of 1922. These are agreements among approximately 17 South American member countries wherein a copyright obtained in one state is valid in the other states without formalities provided a notice reserving all property rights is included. The notice must read "copyright reserved" or "all rights reserved". This is not a very strong union, as the United States has separate treaties with most of the member countries. The Pan American Union is primarily of benefit to U.S. citizens who wish to obtain protection for their works in Bolivia.

The United States also has special treaties with a number of countries such as Taiwan to confer reciprocal copyright protection to U.S. and Taiwan citizens. In addition, the U.S. has enacted special legislation which extends U.S. copyright law to Guam and the U.S. Virgin Islands.

International protection for patents, trademarks and copyrights is widely available and becoming more and more necessary as the global marketplace becomes more a reality to all businesses, not just large multinational corporations. Careful planning can result in inexpensive yet extensive and valuable protection for products in international markets.



IV. FROM INVENTION TO PATENT: THE INVENTOR'S ROLE

The path to a patent begins with an invention. Strictly speaking, an invention requires a conceptualization of the invention and a reduction to practice of it. The conceptualization is not merely an idea but a concrete realization of how the invention can be effected: an existing problem solved, a new task that can be achieved. A reduction to practice is the actual building of a device or the execution of the steps of a method which implements the invention. A reduction to practice is not necessary prefatory to filing an application for a patent: conception is. While you may file a patent application immediately at this point, there are two other actions you should consider: record keeping and a preliminary patentability search.


A. A Patent Begins With the Invention

Record keeping properly done establishes evidence of the earliest provable date of the conception of the invention. It also establishes evidence of the fact of and the date of the reduction to practice and of diligence of the inventor in bringing the invention from the conceptual stage to the reduction to practice. Those two dates and the level of diligence between them is what the U.S. Patent and Trademark Office considers when it is determining which one of two different inventors is going to receive the patent for the invention.

The best proof for this purpose is documentary evidence corroborated by an unbiased witness or two. A bound, page-numbered notebook which cannot have pages added or removed surreptitiously is a good recording medium. The concept and all thoughts on improvements, variations, and applications should be written in the notebook and each page dated and signed by the inventor identified as such. Each page should also be signed and dated by one or more witnesses who have read and understood the inventor's descriptions. The witnesses should sign under a legend such as: "Explained to and understood by me." For this witnessing is not, as in the case of a will or trust, merely that the signing party is not subject to duress or coercion, and is who he says he is and appears sane and sober. In this case the witness is testifying that concepts on this page were made known to him on that date. A notarized document is not nearly so probative.

A self-addressed postmarked envelope containing the inventor's own letter describing the invention is of little worth. For it can only be entered into evidence on the inventor's sworn statement that he did not open or tamper with the letter. If the inventor's word as to the letter was acceptable proof, then so would his word concerning the date of conception. That is not likely and should not be counted on.

Take care to have the inventor(s) and witness(es) clearly identified and distinguished. Serious problems have arisen when a party assumed to have signed as a witness later claims to have signed as inventor or co-inventor!

A preliminary patentability search is generally advisable, but not mandatory. The basic purpose of such a search is to determine the general state of the art in the area of the invention. This helps the inventor understand whether there is something patentable about his invention and the scope of the protection that may be available.

Understand that a preliminary patentability search is a single purpose search with a narrow goal. It covers only issued U.S. patents, whether expired or not, not U.S. patent applications. They are secret unless and until they actually are issued. It does not cover any patents or patent applications of any other countries and does not cover the scientific and technical literature at all. Such a comprehensive search would be quite expensive. The preliminary patentability search is by no means exhaustive. It is a limited search done on a limited budget in a limited period of time. Pertinent references could be overlooked, temporarily missing or misclassified. A favorable outcome of a preliminary patentability search in no way guarantees the patentability of the invention. The U.S. Patent and Trademark Office Examiner will do his own search and make up his own mind as to whether the invention is patentable.

In a preliminary patentability search, the searcher attempts to cover in the U.S. Patent and Trademark Office files the most likely areas where relevant art should be found in accordance with his own experience, the recommendations of patent examiners, the studies of the classification manuals and definitions therein, and of the original and cross-reference classifications of relevant patents uncovered during the course of the search. Even so, relevant art may not be discovered. For example, the issuing patent Examiner may not have properly classified and/or cross-referenced the patent. The Patent Office search files, even at their best, are never wholly complete. Finally, there is the consideration that this is merely a preliminary patentability search and must be done within acceptable price limits.

Also be aware that consciously or subconsciously an inventor often shifts the focus of his invention after a search is done, either as a result of: a sharpened focus after seeing the search results, a subconscious refusal to accept that his invention is already known, or a further understanding of his invention. Whatever the reason, such a shift may make the original search inapplicable since there is now a different invention being emphasized.

Finally, don't mistake a preliminary patentability search for an infringement search. A preliminary patentability search attempts to bring to your attention the general prior art in the area of the invention so you can get a feel of whether and to what extent your invention may be patentable. In contrast, an infringement search attempts to uncover not just patents which may contain disclosures of your invention. Rather, this search seeks to find unexpired patents which are of the same scope, a more dominant coverage, or even a more narrow coverage which would prevent or interfere with your right to freely practice or license your invention. These searches are much more time consuming and expensive than simple preliminary patentability searches.


B. Preparing the Patent Application

Preparing a patent application is a unique and rewarding experience and one in which the inventor must fully participate if he wishes to have a patent that protects his invention to the fullest extent possible. The cost of preparing a patent application by a patent attorney is strictly a matter of time. The more time it takes, the more it will cost. And the time it takes depends upon the sophistication of the technology, the articulateness of the inventor, and the closeness of the prior art.

The impact of the sophistication of the technology can be seen by a simple example. If the invention is a non-slip doorknob it will take less effort and time to understand and write a background which explains the problems that existed before the invention and which quickly and sharply focusses on the invention which is the solution to those problems. Compare this with an invention involving a new method of injecting a dopant in integrated circuit transistor fabrication which enables much higher packing density and greater computing power that makes possible an operating system that supports a truly adaptive learning system. This requires the clear understanding and explanation of half a dozen different disciplines just to understand the context of the improvement. Only after that can the work begin on attempting to define just what is the invention.

The articulateness of the inventor is a critical factor, not only in the cost but the breadth of the patent protection sought. A patent is not a scientific paper, nor is it a simple statement of an idea. It is a complete disclosure of one embodiment of the invention. It must describe the best mode of carrying out the invention presently known to the inventor; the inventor may not disclose his second best implementation of the invention and keep the best a secret. And the disclosure must be sufficient for others skilled in the art to make and use the invention without undue experimentation. But it is not a how-to manual, nor does it require proofs and citations as does a scientific paper or a doctoral thesis. The inventor may not even understand why the invention works, only that it does. Most importantly, the inventor should strive at some point to rise above the specific embodiment, above the mathematical or scientific proof that the invention is sound, and above all the other details, and attempt to see the broader concept which can be extracted from the details: the underlying notion, the generic nature or philosophy of the invention. Only then can the patent be properly drafted with claims broad enough to fully protect the broad scope of the invention, not just the embodiment presently contemplated.

Finally, the closeness of the prior art must be considered. An anti-gravity machine or room temperature fusion energy source are easy to see against the background of prior art, like a full moon against the night sky. But consider trying to patentably distinguish a new nail. There are dozens of different types of nails: wood, concrete, horseshoe, in many types of sizes and shapes, with many different surfaces and textures. A patent claim to a new nail would have to be expressed very, very carefully to avoid all those prior art nails and yet gain for this new nail the fullest scope of protection to which it is entitled.

In addition to spending anywhere from half an hour to a number of hours with a patent attorney, an inventor should provide background material. This does not mean piles and piles of documents. Remember, as an attorney and a professional member of the patent bar, the patent attorney has a duty to read and understand anything you supply so he can determine what is truly prior art to be patentably distinguished and what is not. This takes time, and time means cost. So provide the attorney only with those things that are material to the invention so he can properly define your invention and patentably distinguish it. He must also bring all prior art to the attention of the U.S. Patent and Trademark Office Examiner. If that is not done a patent may later be invalidated for failure to bring pertinent art to the attention of the Office during prosecution of the patent application.

The most effective information that an inventor can supply to his attorney includes, first, a background of no more than two or three pages explaining the problems that gave rise to the need for the invention. This background should start out with a general description of the field to which the invention relates and gradually get more specific until all the problems confronting the inventor and solved by the invention are spelled out. Second, a list should be compiled of all the advantages of the invention. These advantages are the solutions to the problems raised in the background and should be in functional terms, e.g., faster, less expensive, more compact, uses less toxic chemicals, has more and faster memory. Third, a set of drawings is required, which may be as simple as hand sketches or may be CAD/CAM or draftsman drawn. These drawings should start with a broad view of the environment of the invention and gradually get more specific until the details of the invention itself are revealed. Finally, the inventor should attempt to express in one sentence the basic inventive concept. Preparing and submitting this to the attorney in advance can considerably shorten the actual meeting time.

At the meeting with the attorney the background and advantages will be discussed in detail and the attorney will obtain a complete description and understanding of one specific embodiment of the invention as disclosed in the drawings. At this point a solid estimate of cost could be obtained provided nothing changes. Ultimately, the attorney will explore the scope and breadth of the invention to get a good idea of just how broad the invention is. Prior art will be analyzed and distinguished and claims will be discussed against the background of the market and product the inventor wishes to protect and the likely attempts of competitors to design around the invention.

The inventor must be fully involved in this process to insure that the patent application seeks the level of coverage necessary to protect the inventor. This lays the groundwork for drafting the claims, to which the attorney devotes substantial time and effort. It is not uncommon for an attorney to spend half the time required to write an application just drafting the claims. Claims are the most important part of the patent. It is the claims which define the protection afforded by a patent. It is the claims which must read on an infringing device if the patent is truly infringed and it is the claims which the Examiner examines, usually rejects, and finally agrees are allowable, often after amendment, if the patent ultimately is granted.

Once the first draft of the patent application is completed it is sent along with drawings created by the inventor and attorney to the inventor, who reads it and makes comments, changes and corrections on the draft itself and returns it to the attorney for preparation in final form. If the changes are understandable the attorney prepares the final draft, but if they are not or the attorney is not comfortable with them because they change the focus of the invention, for example, then another meeting with the inventor may be required.

Often the opportunity to read the presentation of the invention in the draft application inspires other, deeper reflections by the inventor which may result in a fundamental change in his perception of the invention. This certainly would require another meeting and perhaps a second draft of the patent application. Eventually, after the first or subsequent draft is approved by the inventor, the patent application is prepared in final form and submitted to the inventor for reading