To protect a new invention, patent rights must be applied. The provision of patent rights is exclusively federally regulated in the US through the US Patent and Trademark Office (OSPTO).
- The acquisition of a patent requires a patentable invention. In the American patent law there are four groups of patentable inventions: methodological processes, machines, methods of manufacture, and compositions of matter. Everyone, including non-resident foreigners, can apply for a patent. Moreover, industrial design is protectable. For the acquisition of a patent in the USA with legal costs and contract fees, one could expect to pay between $15,000 and $25,000.
- Furthermore, it will be allowed to last until the point in time where, due to the level of technology, an opposing invention from an average specialist can be built. Additionally, the invention must be for commercial purposes, that is why they must have an economically useful function.
- The relevant idea must be novel and may not be identical to another. Moreover, the patented item (or invention) may not be one that is already in use in the USA or in any other foreign land for one longer than one year. It is consequently recommended to not apply for a patent earlier than one year before the USA application. The regulations of the Patent Cooperation Treaty of 1978, state that an inventor can simultaneously obtain the effect of a national application for protection in every other treaty country by having made inventions in the USA, it is valid to presume that a patent application in another treaty country is allowed. The provision for international application is that it must be sent within six months of the US application.
Generally, in terms of the patent protections, German nationals in the USA through the regulations of the Paris Convention for the Protection of Commercial Property of 1883 are equated to American citizens. This convention regulates that every associated country is protected, even when they have in every country neither their residence nor a branch office. Although the patentability is clearly defined, it is still advisable to contact a lawyer to evaluate individual cases.
Extent of Protection
The extent of a patent through the US Patent and Trademark Office makes possible that the inventor has a seventeen-year monopoly on the product in question. For this to occur, however, the invention must become disclosed. After the expiration of the patent it states becomes available for everyone. The general protection period for a patent in the USA is 20 years from the beginning of the patent proposal.
Rights in the Case of a Breach
Upon a breach of the patent rights, the owner of the patent can claim several differing legal recourses, such as: injunctive relief, financial damages compensation, and cost reparations.
Transfer of Rights
Patent rights can be altogether ceded, and within a License Agreement they can be transferred in the form of user rights. The owner’s arrangement of the Licence Agreement comes with broad contract freedom, however some restrictions are to be followed. Those involved in Liscence Agreements are obliged to follow anti-trust laws. Commonly, an agreement in work contracts, those that bind the employees’ products with their position, rests the rights to the invention on the employer.
In narrow relationships with the patent rights states the right to trade secrets. It directs, however, that contrary to patent rights and it is not governed by federal law. Trade secrets are, contrarily governed by case law in the individual states. Case law generally recognizes trade secrets as protection-worthy property rights.
Generally, economically valuable information will be viewed as trade secrets if they will be treated as valuable, or confidential, secrets and not generally known or open to the public. Specific company practices, secret production methods, or forms for the chemical compositions of a product can be trade secrets. Trade secrets of a foreign entrepreneur are thereby treated in the same way protected as those of a domestic.
Extent of protection and rights in the case of a breach
The use of company secrets by people, who use them in an unfair way (e.g. corporate spying, knowledge obtainment, or disclosing confidential information meant for internal company uses) is illegal. The dissemination or use of trade secrets to corner the market can legally be disabled. Legal protections will be warranted likewise in the form of small damages and small claims of issuances of the profits.
A contractual agreement to stop the dissemination of information for employees is recommendable. With such a contractual agreement (or non-disclosure agreement), it is possible to maintain monopoly of use. A disadvantage comes when an idea is protected as “trade secret” and not a “patent”. The status of trade secrets, and with that all of its protections are lost, when someone who is neither contractually obligated to secrecy nor otherwise the engaged with the secret holder, finds the secret through independent, experimental, or logical action and brings it to public knowledge. Additionally, the owner loses all rights, to exclude a third party from the use when the secret becomes generally known to the business world. It is, though, possible to keep the information confidential, and the protection of the trade secret in contrast to a patent protection has no expiration.
Trademarks are generally every word, symbol, name or slogan that will be used by those who develop a product to distinguish themselves from other businesses. Service marks are in principle the same. The provision of trademark rights in the USA occurs through federal law as well as through case law and the legislation of the individual states. The registry of trademarks can be made on federal and state level. In the USA, trademarks will be protected already through their actual use in trade.
US trademark law differs between common law trademarks and registered ones. That is why trademarks will be used in commercial activities without being registered by USPTO. “Registered Trademarks” are only those that are are registered with the USPTO.
- Conditions at the Federal Level
A registered item must be distinctive and the novel characteristics of the trademark must be identifiable.A trademark can be registered in following cases by the USPTO:When the trademark is already used in commerce, a proposal can be enlisted with the registry.In cases where an applicant still has made no use of the trademark in commerce he can provide a proposal to the Registry through an Intent-to-Use Application. Through this application, he protects his trademark from third parties given the situation that someone in between the time of development and use wishes to use the same trademark.Foreign trademarks are an exception to registry. For foreign trademark holders that want their trademarks in the USA to be assumed as registered: the originating land of the trademark must be a member of an international trademark accord. Additionally, the insurance of intent must be brought before in the USA and the trademark actually will be acquired in commerce.At the time of application in view in their homeland foreigners can also appoint privileges of a trademark, so long as the proposal of application in the USA will not be introduced later than six months after the application in the original country will.
- Extent of Protection
By applying for a trademark, the knowledge of the owner’s general protection rights will be waived. Also, a good faith exception, which states ignorance of the continuing use of the trademark, is no longer applicable. Additionally, the registry applies as evidence of the first appearance for the validation of the protection and exclusive rights of the owners at the use of the mark. A protection that prevents that exceptions being raised enters first so far as after the fifth and sixth year after the first application date the use will be once more detected. In other words, this means that when a business person applies for trademark reservation they are protecting themselves from others using that same trademark. This also means that the businessperson is nolonger protected if she is using a trademark developed by someone else who already has rights to its use.Furthermore, the trademark owner exhibits a federal right to sue, a guarantee of a legal recourse against those who wish to infringe on them. Also the trademark owner has the possibility to register that trademark in foreign lands on the grounds of government agreements.A renewal of the application at the federal level must be carried out every 10 years under acknowledgement of continual use of the symbol. The protection of a trademark ends when the trademark is unused for longer than two years.The registry at a state-level is not essential, however advisable, to as such label the trademark. After registering the trademark, one is allowed to use the Federal Registration Symbol (the circled “R”). Then and only then, when it really acts as a registered trademark, is the use of the Federal symbol allowed.
- Transfer of Rights
It follows, that the trademark represents a symbol for the firm for the entrepreneurs. That is why trademarks can only be transmitted in conjunction with the good faith exception. It is advisable to register to leave an assignment with the USPTO.Through a license the user’s rights to a trademark be allowed. As a condition for the validity of a license the retention of the control over art and quality of the goods is through the license giver to the protection of the generality. Additionally the trademark licenses are restricted to follow by the owner’s monopoly right.
The protection of Intellectual property is federally governed since the inception of the Copyright Act of 1978.
The creator’s protection will only be allowed for the original intellectual work by the Copyright Act. The attribute originality means that the author achieved the work as a result of his ability and efforts without the help of others. Not protected by the Copyright Act are those copyright protected ideas, production methods, and processes drawn from them. Only under the following set of conditions, concerning their beginnings, will published works be protected:
- If the creator of the work was on the day of the first publication a citizen of the USA or had an office there, or if he was in that timeframe a national or resident of one of the countries with which the USA has an agreement.
- The work was either in the United States or a member country to the World Creator’s Agreement published.
- It acts the work of a national of a signing country of the “Bern Accord to Protect Works of Literature and Art” or the first publication has been produced in a signing country.
- Extent of Protection
The creator’s right grants the owner the exclusive right to publication, production, and duplication. The protection extends itself to the lifetime of the author plus another 70 years after his death. In the case of the construction of a work through an employee it is protected for 95 years after the first publication.
- Rights in the Case of a Breach
The measure for the existence of creator’s rights breach is the similarity to the original in substantial portions. Upon the existence of a creator’s rights breach the legal owner can demand from the offender injunction, damages, restitution of profits, and restitution of costs, as well as cause a judicially arranged confiscation.
- Transfer of Rights
The transfer of creater’s rights has to be in written form. It is possible, but not required, to perform a registry of legal transfer from the copyright office.
Contractual Protection of Immaterial Property and Non-Disclosure and Confidentiality Agreement (NDA)
A Non-disclosure and Confidentiality Agreement (NDA) is a confidentiality agreement that should be contracted between two parties to protect in-house immaterial property like business related and in-house secrets. With the NDA both parties agree to confidential association with the obtained information. In case of a breach of the mutually agreed upon rules and the violation of in-house secrets, the parties have rights to sue for damages.
In the NDA confidential information is not only limited to what is written, but the use of such information is also limited. Furthermore, the contract holds that rights to the information protected by the documents are to be ceded in the case of a loss in trial.
Consultant Innovations and Proprietary Rights Assignment Agreement
The terms of supporting an American business activity with consultant services ought to be agreed upon by both parties in a written agreement. It should state clearly that the consultant yielded contributions to the undertaking and the consultant is in no way given the legal right to the undertaking. A Consultant Innovations and Property Rights Assignment Agreement accomplishes rights security and helps avoid a costly and drawn-out legal conflict (e.g. over intellectual rights to products).
Licensing the rights to immaterial goods offers the entrepreneurs the possibility to obtain the proper license partner, early market access, and a quick market penetration. Moreover, can one affect a possible technology exchange between the license-giver and the license-taker, that is good for both sides. One disadvantage of licensing lies in the possible loss of copyright, trademark, and patent rights.
This information serves the specific purpose of orienting the reader. It represents no legal advice or exclusive legal view. Due to the fact that the American legal system often undergoes several subtle changes, the information here can become partially outdated. The GACC California, therefore, expressly rejects liability for consequences that develop for owner based on the reliance on the information above.