Quite often, while working on various client matters, the phone rings with a prospective client on the other end of the line. I spend a few moments listening to their issues thinking to myself…if only they’d called before; I might have been able to save them some money and headaches.
For patent issues, entrepreneurs or small business owners don’t realize the significance of disclosing their inventions to others prior to securing their patent rights. In the United States, a patent may only be filed in the name of the inventor and must be filed no later than one year from public use or public disclosure. Practically what does this mean? If you have an idea and share it with someone else, who then improves or adds to its functionality, that someone else may be a joint inventor. If so, that someone else equally owns the patented invention, no matter what his contribution. If you openly share your idea with someone else, there is no guarantee that he or she won’t tell others or use the idea for their own benefit. Your disclosure may have started the clock ticking on the one year time bar in the United States. Thus, prior to obtaining input from others, a patent application should be filed or an agreement of non-disclosure of information and ownership rights to improvements should be entered into.
In this global economy, protecting an invention by securing patent rights only in the United States is often not significant. Inventors also don’t know at the time of invention or filing for United States patent rights whether their invention is the next “big” one. Outside the United States, almost every country requires absolute novelty for patentability. Practically what does this mean? If you disclose or use your invention publically anywhere in the world prior to filing a first (called “priority”) application, you cannot file in a country with the absolute novelty requirement. In other words, all your rights outside the United States are lost if you publically disclose or use the invention prior to filing the priority patent application. Once a priority application is filed, public use or disclosure of the invention is no longer a worry. Keep in mind, however, that there is a one year time period from filing the priority application to file in other countries.
In naming any business, there is much thought, creativity and emotion involved. After the perfect name is decided on, the next step is registering the business name, designing a logo, ordering business cards, creating stationary, etc. Each one of these steps requires spending money. What if after starting your business, you receive a call or letter asking you to stop using your “perfect” name because a third party already has rights to the name either through federally registered trademark rights or under common law trademark rights? This can happen if you have not taken the precautionary steps to research your name prior to use. Trademark rights begin upon use in commerce and there is no law requiring someone to register their name for use on goods or services. Practically what does this mean? To prevent unnecessary costs, a thorough trademark search should be conducted prior to using your “perfect” name as a business name or placing your “perfect” name on a good or service. The issue of prior user rights exists not only with the name of a business, but also with any products or services sold.
In each of these instances, the loss of patent rights or the pain of resolving disputes with third parties could easily be avoided by seeking professional legal advice early from intellectual property counsel. Myers & Kaplan Intellectual Property Law, L.L.C. is a boutique intellectual property law firm practicing exclusively in domestic and international patents, trademarks, copyrights, litigation and related matters. Myers & Kaplan prides itself on providing high quality representation at competitive rates. Every Myers & Kaplan attorney is registered to practice before the United States Patent and Trademark Office and specializes in providing complete and thorough intellectual property law representation. Additionally, the attorneys have been in the “real world,” most having had significant business and/or technological experience prior to their professional legal careers. Because of this wealth of experience, we have the unique ability to provide our business and entrepreneurial clients with “business-practical” advice and legal services, across a unique cross-section of industries and practice areas. Please visit our website at www.mkiplaw.com for more detailed information.
Authored by Cheryl J. Tubach, Esq., Director of Corporate IP Affairs. Ms. Tubach practices law with the firm of Myers & Kaplan Intellectual Property Law, L.L.C. Previously she was in-house counsel for The Coca-Cola Company and Eastman Chemical Company. Ms. Tubach received her law degree from Georgia State University in 1992 and her Bachelor of Science degree in Chemical Engineering from the University of Kentucky in 1984.
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