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INTELLECTUAL PROPERTY TYPICAL Q & A

Q: Can I obtain an exclusive right to a trademark if I am not yet going to use it?

A: Yes, but you must show a good faith intent to use it in the near future.  Under the Lanham Act you can file an Intent-To-Use (ITU) trademark application.

Q: Which trademarks can be registered and which cannot?

A: Only as to federal trademark registration:  A trademark cannot be registered if it belongs to another or is very similar to another trademark.  Registration of trademarks which are misleading is prohibited.  The USPTO can deny registration of trademarks containing geographical terms, last names, or those deemed amoral or scandalous.

Q: Can a scientific discovery be patented?

A: No. Scientific discoveries, laws of nature, natural occurrences, materials and living organisms created without human participation, mathematical formulae, abstract ideas (as opposed to technical solutions of particular problems), and computer programs cannot get patent protection in the United States. 

Q: Is there a danger of disclosure and/or unlawful use of the invention while a patent application is being examined by the USPTO?

A: This requires a two part answer. 
 
First, as to the danger of disclosure:  all applications filed with the USPTO on and after November 29, 2000 are subject to mandatory publication 18 months after the application is filed or the earliest priority date if not counted from the date of filing. The inventor, however, can opt out of this rule by declaring that the invention is not going to be patented abroad. 
 
The USPTO keeps applications not subject to publication in the strictest confidence, whether it is too early to publish them or whether the inventor opted out. Disclosure to an outsider is highly unlikely if not impossible. 
 
Second, regarding illegal use as a result of disclosure: if they are proven, they are considered a violation of patent holder's rights.  After the patent is issued the patent holder may seek injunctive relief and compensation of damages. 

Q: How does the USPTO determine the invention priority date?

A: Under American patent law the process of inventing begins with conception of an invention and ends with reduction it to practice.  This means that the invention either exists in tangible form or that a complete patent application is duly filed with the US or a foreign Patent Office. 

The United States follows the "first to invent" principle: priority will be awarded to the inventor who either (a) first reduced the invention to practice or (b) first conceived the invention and since then diligently worked on reduction to practice without abandoning it up until the time of filing the application.

Q: How long does copyright last in the USA?

A: In 1998, President Clinton signed a law extending the copyright term in the United States by 20 years. This is known as the Sonny Bono Copyright Term Extension.
 
For works created in 1978 and after, the copyright term is the life of the author plus 70 years.  If there are several authors, the 70 years are counted from the date of death of the last author.   
 
In case of anonymous works or works published under a pen-name, and the authors names are not disclosed, or of works made "for hire" the copyright term will be either the lesser of 95 years from the first publication or 120 years from the creation of the work in question.  And so on, and so forth.

Q: How much of a work can I use without infringing upon its copyright?

A: First find out whether the work in question is still enjoying copyright protection.  If not, it is deemed to have fallen into public domain, and you can use all of it.   
 
If it is not in public domain, the US copyright law has something called "fair use" doctrine.  It allows limited and usually non-commercial use of small portions of copyrighted work for quotations, critique, research, commentary, parody and news reporting.  What is not specified is how large or small those portions may be, how many words, minutes or notes one can use, or what percentage of the entire work can be used without giving rise to infringement claim.  Each situation depends on its own particular circumstances; the courts determine these matters on a case-by-case basis.

Q: Must I use an attorney to register copyrights?

A: No, there is no such requirement. However, in many cases it is desirable. Although obtaining a copyright registration is often a straight-forward procedure, a registrant's mistake during that process may lead to loss of a valuable copyright. This is especially true with regard to registration of software copyrights. The copyright owner of the dBase programming language nearly lost all rights due to an innocent clerical omission to list certain information on the application.

© Valery Milgrom, 1997 - 2012

Disclaimer: This website is designed for general information only. The information presented should not be construed to be formal legal advice nor the formation of a lawyer/client relationship.

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