FAQS ABOUT INTELLECTUAL PROPERTY
FAQS ABOUT IP IN GENERAL:
Who should read this?
“Newbies”, (entrepreneurs and investors), or employees assigned to manage an IP program with little knowledge about IP. Even lawyers with no knowledge about IP.
What will I learn here?
We cover only the basics, enough so when you work with your IP lawyer, you will not begin completely in the dark. However, this is not a substitute for legal advice.
What is IP?
IP is an embodiment or expression of an idea, not the idea itself, e.g., the design of a product, a process, a written work (including software), a work of art, etc.
What are the legal devices that protect IP?
IP can be protected by one or more of phrasing patents, design registrations or design patents, trademarks, copyrights, and trade secrets.
Why should I care about IP?
IP rights can protect the effort and money you are putting into your business. Also, a good IP strategy will help you get funding as you grow.
What protection do laws provide for IP?
IP laws give the owner the right to exclude others from using the protected IP. Sometimes, IP rights also affirmatively permit use by the owner.
In general, what do I need to do to protect my IP?
Usually, but not always, you file an application with a governmental agency. The application is then examined for compliance with legal requirements before approval.
What should I do if someone infringes my IP rights or if I am accused of infringing someone else’s IP rights?
Contact your attorney immediately. Prompt action can often minimize the damage or even avoid it altogether in both situations.
FAQS ABOUT INVENTIONS AND PATENTS:
What is an invention?
An invention is an embodiment of an idea, e.g., an article of manufacture, a machine, a process or a composition of matter, something involving technology.
What is a patent?
A patent is the legal device that protects the rights to an invention. It gives the owner the right to exclude others from making, using or selling the invention.
Does a patent give me the right to use my invention?
Not always. You may have improved on an earlier patented invention whose owner may be able to exclude you from making, using or selling your invention.
Who owns inventions created by my employees?
Subject to some limitations, inventions made in the course of employment belong to the employer. However, this should always be covered in an employment agreement.
What about inventions created by third-party contractors?
This is determined by the agreement between the parties, and should be clearly provided for in a written agreement.
Must I compensate an employee separately from his salary for inventions that become my property?
Many countries (but not including the U.S.) require compensation. Minimum amounts are sometimes specified and dispute resolution mechanisms are usually established.
Are there limits on what can be patented?
Patent laws usually specify subject matter that is not patent eligible, e.g., laws of nature, natural phenomena, business methods, and methods medical treatment.
Are the excluded subjects the same everywhere?
No. For example, in the U.S., methods of medical treatment are patent eligible.
How do I get a patent?
You file an application in the patent office of the country in which you want a patent. The application is examined and if it complies with the law, a patent is granted.
What has to go in a patent application?
A patent application must contain full disclosure of the invention, usually drawings, and claims which clearly define the scope of protection which is being sought.
What does “full disclosure” require?
There must be enough information to support the claims, and to allow one skilled in the relevant art to practice the invention.
What does “clarity” mean?
The claims must unambiguously (without indefiniteness) allow the skilled person to understand if some particular conduct is covered by the patent.
What are the legal requirements for patentability?
Apart from the full disclosure and clarity requirements, a patentable invention must have utility (sometimes expressed as industrial applicability) novelty, and be inventive.
What does “novelty” mean?
To be novel, the invention as defined by the claims, must not have been known to the public anywhere before the filing date of the application.
What does “inventive” mean?
An “inventive step” is one which would not have been obvious to a person skilled in the art in view of the knowledge available on the application filing date.
How long does patent protection last?
Patent terms are currently 20 years from an earliest priority date. However, maintenance fees need to be paid periodically to keep a patent in force.
What is a “priority date”?
Most countries adhere to the so-called “Paris Convention” that allows an initial filing date to apply as the effective filing date (priority) of later applications in other countries.
Is there a time limit as to when later applications be filed and get priority?
The later application must be filed within one year of the initial filing.
How much does it cost to file a patent application?
Depends on the country, e.g., in Israel, (for up to 50 claims) it is about $550. In the U.S. (for 3 independent claims and 20 claims total) it is almost $2000.
What if you have extra claims?
Excess claim fees are usually quite high. You also pay extra per page for large applications.
Do small companies and individuals get discounts?
Yes, the amount depends on the country. It can vary from 40% in Israel to up to 75% in some cases in the U.S.
Are there any other fees?
At a minimum, you will pay an issue or grant fee when the patent issues. Again, the amount will depend on the country.
What about legal fees?
In most places, you can expect to pay about $4000 to about $7500. For complicated inventions, for example, in the biotech and computer fields, it could be more.
What costs will there be during examination of the patent application?
Typically, your attorney will need to respond to about three communications from the Examiner, at a cost $2500-3000 each. There may also be additional official fees.
Why are products sometimes marked “patented” and “patent pending”?
The terms give notice to the public that you have a patent covering the product or are seeking one. This may increase the damages you can recover from an infringer.
What percentage of patent applications are granted?
Overall, in the U.S., it is estimated to be about 80%, but it is notably lower in the computer and biotech fields. Ten years ago, it was much lower overall.
What about in other countries?
Reliable statistics are hard to come by, but the numbers are probably not too different than in the U.S.
Is it worthwhile to conduct a patentability search before filing a patent application and what is the typical cost for it?
If know the state of the art, it may not be necessary. You should discuss this with your attorney. The cost for a search and report will be in the range of about $1000.
Can I get a single patent for the whole world?
No. Patent laws generally have only national effect, and there is currently no such thing as an international patent.
Since I can’t get one patent for the whole world, where should I try to patent my inventions?
You should try to get patents where you manufacture and sell your products. If you outsource design or development work somewhere, get patents there too.
Is there some convenient way to file corresponding applications in multiple countries?
The Patent Cooperation Treaty (PCT), lets you can file one international application from which National Phase (NP) applications can be filed in countries you select.
Do you automatically get a patent in the NP countries?
No, the NP applications are separately examined for compliance with national patent laws.
Are there any other options?
If you decide to file in only up to three countries, it’s more cost effective just to file in those countries and bypass the PCT process.
Any other possibilities?
A single European application can be filed. If it is approved, it will be effective in the selected EU countries and certain other European countries, subject to national laws.
Does something like that exist in other parts of the world?
There are similar mechanisms in Asia, Africa, and South America. A system that provides a single patent effective for all EU countries may soon be available.
Does patent protection differ from country to country?
Most countries determine patentability requirements in similar ways. There are differences in what is patent eligible, and how inventiveness is determined.
What should I know about the differences?
Your patent attorney will guide you in these matters when your applications are being prepared and during examination.
What does it cost to get a patent?
This varies greatly from country to country. You need to discuss this with your patent attorney.
What actions can be taken if I am charged with infringement?
If you or your attorney don’t think the patent is valid, there are usually administrative ways to challenge it that don’t involve the high cost of litigation.
What if the patent seems valid but I don’t think I infringe it?
In that case, you may have to go to trial. Even if you lose, the court might set a royalty rate to allow your continued activity.
What are my options if it appears that I do infringe a valid patent?
Try to design around the patent or try to obtain a license. It may also be possible to buy one or more patents from a third party which you can use as a bargaining tool.
What can I do to minimize the chance I will infringe someone’s patent?
The best protection is a freedom to operate evaluation. Consult with your attorney about this before your commercial activity begins.
Are there non-infringing ways someone else’s patented invention, can be used?
In many countries, you do not infringe certain kinds of patented inventions if your use is solely to obtain regulatory approval for sale of drugs.
What about under Israeli law?
In addition to a regulatory approval exception, it is also not infringement if the objective is to improve the patented invention or to develop another invention.
What about in Europe?
Regulatory approval exceptions and some form of experimental use exceptions exist everywhere in Europe. In the UK, non-commercial use also does not infringe.
What about in China?
In addition to a regulatory approval exception, you do not infringe if your product is implemented using what was public domain when the application for the patent was filed.
Can I limit how my customers use patented inventions I sell them?
In most countries patent rights are exhausted when a patented product or one made by a patented process is legally sold.
Are there exceptions to the exhaustion rule?
In many countries, replanting seeds harvested from plants grown with patented seeds infringes. In some places, contractual restrictions on the buyer are permitted.
How can I protect inventions related to plants?
In the U.S., patents are available for asexually produced plants, i.e., not resulting from the planting of seeds. Elsewhere, separate laws protect breeder’s rights.
What do “breeders rights” laws cover?
The rights protected granted to the breeders of new varieties including plants that are sexually reproduced.
Are breeders rights protected in the U.S.?
Yes. There is a Plant Variety Protection Act separate from the patent laws with somewhat different requirements which must be met.
Are there ways other than patents for protecting my inventions?
For minor innovations, a few of countries grant utility models. If you don’t want to disclose details of the invention, sometimes you can rely on trade secret law.
What is a Utility Model?
This is like a patent, but the legal requirements are less strict. A utility model is of shorter duration than a patent, and generally gives less protection.
What is a trade secret?
This is information that derives business value from the fact that it is not generally known to others. It can relate to technology, business strategy, customer data, etc.
How do I protect my trade secrets?
Just take reasonable precautions to keep the information confidential.
What are reasonable precautions?
Mark documents confidential documents as such and have non-disclosure agreements with employees and third parties to whom the information is disclosed.
Limit access only to those with need to know, and be sure that the non-disclosure obligation still applies when an employee leaves your country.
Are there downsides to relying on trade secrets instead of patents?
The main risk is that it is legal from someone to discover the secret information by reverse engineering. If that is likely to be easy, get a patent instead.
Does protection of trade secrets vary from country to country?
Not much in terms of how to protect the information. The biggest differences are in the remedies available if the information is misappropriated.
What should I do if someone tries to steal my trade secrets?
You can take legal action, and often can obtain a preliminary injunction to stop used of the information before and during the trial.
What can I do to avoid someone accusing me of stealing his trade secrets?
Be careful to use only the public knowledge and experience of a former employee of a competitor. Don’t violate any post-employment obligations of the new employee.
The employment agreement should forbid disclosure to you and to other employees of the former employer’s trade secrets.
FAQs About Design Patents And Industrial Design Registrations:
What do design patents and design registrations protect?
These provide protection for the appearance of a product not dictated by functional considerations.
Why should I protect my industrial designs?
Good design can often be the difference between commercial success and failure of two products having similar functionality.
How do I protect my designs?
Design patents are available in the U.S. and China. Elsewhere, laws providing for registration of industrial designs offer similar protection.
Who owns designs created by my employees?
As in the case of other IP, designs created in the course of employment generally belong to the employer.
What about designs created for me by third-party contractors?
Generally, absent a contrary agreement, third parties own their creative work. You must therefore specifically provide for your ownership in an agreement.
What’s the difference between a design patent and a design registration?
Design patents are examined for compliance with substantive legal requirements. Design registrations are sometimes examined only as to formal requirements.
Does protection vary from country to country?
The remedies available and the substantive requirements for validity can vary to some degree.
How long does protection last for designs?
Design protection in the U.S. is now 15 years. In China, the term is 10 years. The term of design registrations is often 25 years.
Where should I protect my designs?
As with other IP, protect designs where you sell or plan to sell, and where your products are designed, manufactured or assembled.
You should consider China as well, even if you don’t plan to sell or manufacture there. Counterfeiting and pirating of IP is still a major problem there.
What can I do to avoid infringing someone else’s design rights?
Be aware of possible notice of design rights on competitors’ products. Also, consult your attorney about a possible freedom to operate evaluation.
Are integrated circuit topographies protectable by design patents and registrations?
No. They are protected under laws similar to copyright laws.
FAQs About Trademarks:
What can be a trademark?
Almost anything that can identify the source or origin of a product or service can be a trademark, including words, phrases, logos and trade dress.
What is trade dress?
This refers to characteristics of the visual appearance of a product or its packaging, or the design of a building such as a restaurant.
Are there some things that cannot be trademarks?
Common names of products or services (generic terms), national symbols, misdescriptive terms, immoral, or scandalous terms cannot be trademarks.
Except in the U.S., derogatory terms cannot be trademarks. Descriptive terms and trade dress are registrable if they have acquired distinctiveness.
What does “acquired distinctiveness” mean?
Acquired distinctiveness or secondary meaning results when a descriptive term or trade dress becomes associated with a supplier through exclusive use over time.
How do I create trademark rights?
In most countries, you just have to register the mark. In some countries such as the U.S., rights are created by use, but even there you should register your marks.
Can any trademark be registered?
Marks that are likely to cause confusion with another mark registered or in use in a particular country cannot be registered in that country.
What should I do to reduce the chance that I will infringe someone else’s trademarks?
Before you adopt a mark, you should have a thorough search done for existing registrations and evidence of use of similar marks for other products or services.
What protection can I get for my trademarks?
You can prevent use by others likely to cause confusion, or would suggest your approval or association with the user, or would tarnish or otherwise dilute your mark.
What does “tarnish” mean?
Tarnishment is conduct that tends to bring your mark into disrepute such as association with crime or in connection with low quality products.
What is “trademark dilution”?
Dilution results when someone uses your mark in a way that diminishes its distinctiveness, i.e., its ability to serve as an indication of origin.
Can any trademark be subject to tarnishment or dilution?
No, only famous marks, i.e., ones which have acquired a wide reputation, essentially apart from the goods and services on which they are used.
How do I protect my trademark rights outside my home country?
Since most countries don’t require use, you just need to register the mark. Your registration may, however, be canceled if it is not used for three consecutive years.
How long does protection for a trademark last?
Your rights continue for as long as the mark remains in use, and even if you discontinue use temporarily for a good reason, but you intend to resume use.
What are “trademark squatters”?
In a first to register country such as China, trademark squatters register trademarks in use by others elsewhere to block the real owner’s use there.
Why use China as an example?
Trademark squatting has happened elsewhere, but it is an everyday occurrence in China.
What protection do I have against trademark squatters?
Squatters cannot register marks that a famous (well known) in China and a significant effort is being made to strengthen enforcement.
What can I do as a practical matter to prevent registration of my mark by a squatter?
The best way to avoid the problem is to register your mark in China immediately if there is a chance you might want to sell or have your product manufactured there.
Are there non-infringing ways someone’s trademark can be used?
You can use a trademark in parody and in internet keyword advertising as long as your use does not create confusion.
What is parody?
In the context of trademark law, it relates to use of someone’s mark to make some kind of humorous statement.
What is keyword advertising?
Keyword advertising is the purchase the right for your advertisement to appear in the search results by a search engine if a purchased word is part of a search.
Can I use someone’s trademark as a keyword?
Yes, but don’t use it in your advertisement itself without first consulting your attorney.
FAQs About Copyrights:
What is protected by copyright law?
Copyright law protects original works of authorship, and specifically, the manner of expression of an idea. The term “original” essentially means sufficiently creative.
What kinds of works are protected by copyrights?
Copyrights protect written materials including software, music, photographs, audiovisual works such as movies and TV programs, graphics and works of art.
Are there limits on what can be protected by copyrights?
Only the manner of expression of an idea is protectable. If the two are essentially inseparable, they are said to merge and the manner of expression is not protected.
Are there other exceptions?
Elements that are standard, stock or common to a topic are called “scenes a` faire” and are not protected by copyright. Designs dictated by function are also excluded.
Do these limitations apply world-wide?
Although the terms merger and scenes a` faire are terms of U.S. law, there a similar limitations in the laws of other countries.
Are there other common exceptions?
In most places, things like current news, calendars, numerical tables or forms for general use and formulas are excluded from copyright protection.
Why should I be concerned about copyrights?
Advertising materials, instruction manuals, product literature and website contents can be important to almost any business and should be protected.
What protection does copyright law afford for software?
Copyright protects the literal code itself but not the principles underlying its operation. In the U.S., APIs are protected, but not in Europe
How do I establish a copyright?
A copyright comes into existence automatically when a work is created. Under U.S. law, however, fixation in some form is required. Publication is not required.
Do I need to take any action to secure a copyright?
Mark the work with the symbol © or the abbreviation “Corp.” and the name of the owner.
Do I have to register a copyright?
Registration is not required and is not even provided for in many countries. Where registration systems exist, there are usually benefits, so you should register.
What kinds of rights are covered under copyright laws?
There are economic rights which can belong to the author or an employer and can be transferred, and moral rights that belong exclusively to the author.
What are the economic rights provided under copyright law?
These include the right to copy, reproduce, distribute and publicly display protected works, to make derivative works and to permit others to do these activities.
Are there country-to-country differences?
The specific rights and how they are expressed vary somewhat from place to place, but the differences are not that significant, especially for tech-related businesses.
What is a “derivative work”?
This is a work based on a preexisting work that has been transformed in some way, e.g., by translation, abridgment, updating or improving, including as to software.
What are “moral rights”?
These generally are the right of attribution, the right to have a work published anonymously or pseudonymously, and the right to protect the integrity of the work.
What does “protect the integrity of a work” cover?
This generally prevents unauthorized alteration, distortion, mutilation, or other actions by others that might embarrass the creator, or tarnish his or her reputation.
Do moral rights apply to all kinds of works protected by copyright law?
In some countries, moral rights do not exist as to works made during the course of employment and at most, only to a limited extent as to software.
Are there any other limitations?
In the U.S., moral rights apply only to works of visual arts such as paintings, drawings, prints, sculpture, and still photographic images.
How long does copyright protection last?
It varies from place to place. The minimum is 50 years. In many places, it is for the life of the creator plus 70 years.
How long do moral rights last?
Moral rights usually extend for the life of the creator. They are not transferrable and terminate when the creator of the work dies.
Can the buyer of a copy of a protected work sell the copy?
Yes, if the transfer is (or is authorized) by the copyright owner. However, the other economic rights of copyright owner and the creator’s moral rights, remain in force.
Who owns the copyrights for works created by my employees?
Works created in the course of employment are considered as “made for hire” and belong to the employer.
Do I need to take any action to assure ownership or works made for hire?
Employment agreements should specify the scope of employee’s duties in relation to works subject to copyright and contain an express assignment of such works.
What about works created for me by third-party contractors?
Subject to a contrary agreement, the third party usually owns the copyright. Some countries limit the kinds of works that can be covered by such agreements.
Is there an international copyright?
No. Copyright protection is a matter of national law. The owner must seek protection in any country in which the copyright is being violated.
How do I protect my copyrights in other countries?
Most countries adhere to international agreements that simplify protecting copyrighted works of foreign origin, but you probably will have to bring suit abroad.
Why do you say “probably”?
Sometimes it is possible to find a basis under the laws of your own country that will permit you to bring suit at home. Consult your lawyer as to this.
How does a court determine if a copyright has been infringed?
Generally speaking, infringement requires proof of actual copying. Copying can also be inferred from substantial similarity to the copyrighted work.
How is “substantial similarity” determined?
It is a subjective evaluation based on whether an ordinary observer would regard the aesthetic appeal of the copyrighted and copied works as the same.
Are there special rules for proving software copyright infringement?
The “Abstraction-Filtration-Comparison” (AFC) test is the most frequently used method world-wide for determining substantial similarity in cases involving software.
How is the AFC test applied?
A court first identifies increasing levels of abstraction of the program and non-protectable elements are identified filtered out. Then, the programs are compared.
What are “levels of abstraction”?
The term characterizes amount of detail shown in a view of the program, the highest level being a general flow chart, and the lowest level being the code itself.
What elements are “non-protectable”?
Some examples include expression dictated by efficiency, or by external factors, such as interoperability, or a conventional way of accomplishing a function.
How are the programs compared?
The programs are compared looking only at the protectable elements identified in the first two steps. The court may also consider the significance of any copied material.
Are there non-infringing ways that someone’s copyrighted work can be used, i.e., without permission of the copyright owner?
In the U.S., there is a doctrine known as “fair use”. A similar doctrine known as “fair dealing” exists in other English-speaking countries.
What is fair use?
This is limited copying for commentary, criticism, parody, teaching etc. that is “transformative”, i.e., has something new been created.
How does a court determine if a use is “fair”?
Courts consider the purpose and character of the use, the nature of the copyrighted work, the amount used and the effect on the owner’s potential market.
How does “fair dealing” differ from “fair use”?
Fair dealing is based on specific enumerated principles listed in the country’s law. Fair use is more flexibly interpreted based on the four factors mentioned above.
Are there comparable exceptions in the rest of the world?
Similar exceptions are specifically enumerated in the laws of some countries.
FAQs About Restrictions on Former Employees:
Can I force my employees to agree not to compete with me or work for a competitor if they leave my company?
Strict time and geographical limits are usually imposed on such agreements, and on employees with whom they can be used. California forbids them almost entirely.
Do laws impose limits on the kinds of post-employment restrictions I can require?
The restrictions, where permitted, must meet a legitimate business need, and not unduly limit future employment opportunities.
Are there special rules for trade secrets?
Post employment agreements to protect trade secrets are almost always legal and can extend for as long as the information actually remains unknown to the public.
What will happen if I demand too much, do I lose everything?
In some places, the courts will cancel unreasonable provisions but enforce the rest of the agreement. In others, the whole agreement will be rendered unenforceable.
FAQs About Licensing:
What is a license?
A license is an agreement with an IP owner allowing you to use the IP under certain conditions in return for compensation to the owner.
What IP can be licensed?
Any IP can be licensed. In the case of a trademark, the owner must retain the right to control the quality of the goods on which the mark will be used.
Why would someone license IP to others?
Universities and others not in a position to commercialize their IP will seek manufacturers to do so.
I am a manufacturer. When should I license my IP to others?
If you can’t meet the demand for your product or you do not need to use certain IP in your business, licensing it can be a source of income.
Are there special legal considerations for licensing IP?
Generally, you need to comply with antitrust and unfair competition laws.
Are there situations in which I may be forced to license my patents?
Some countries require compulsory licensing of drug patents to lower drug prices. You must also license SEPs, i.e., patents that are incorporated in standards.
What are SEPs?
SEPs are “standard essential patents”. SEPs must be used by anyone desiring to meet the standard, and must be licensed on FRAND terms.
What are FRAND terms?
FRAND means fair, reasonable and non-discriminatory. Royalties may be lower than for non-SEPs, e.g., based on the importance of the patent to the standard.