This article is written by Shivani Mane who is pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction

Intellectual property (IP) refers to an invention, brand, design or any other creation, which any person (natural or legal entity) has business rights over. Copyright, Patents, Trade marks, Design rights are some common types of IP. According to World Intellectual Property Organisation (WIPO), ‘Intellectual Property (IP) refers to the creations of mind, such as inventions; literary and artistic works; designs; and symbols, names, and images used in commerce’. IP does not mandatorily require registration, but registration does act as a prima facie evidence of ownership of the IP. Legal rights are automatically created with the creation of the IP. Examples on unregistered IP include trade secrets, copyright, etc. The registration of IP involves application to a designated government authority of the jurisdiction and involves various formal steps to be undertaken.

Registering a Patent in the US

The major types of patents are a utility patent which protects the technology behind an invention, including its functionality and structure and a design patent, which applies to the look of an original design. Filing a patent is a lengthy experience but it certainly pays its dividends in the long run by granting protection to one’s creation. A new patent gives the inventor a 20-year time period from the application date in which no other person can benefit from manufacturing and distributing their invention or design. The patentability of an invention depends upon its novelty and utility, i.e., the invention must not have been discovered, anticipated or in use before and it should have tried to address an existing issue by providing solutions which can be manufactured on a large scale to benefit the society at large. 

In order to register a patent for one’s product, one needs to register with the United States Patent and Trademark Office (USPTO), typically done with the help of a patent attorney. The Manual of Patent Examining Procedure (“MPEP”) is an elaborate guide for the USPTO’s patent filing process. 35 U.S. Code Title 35 – PATENTS covers the patent filing and prosecution in the United States. One first needs to apply for a customer number and digital certificate and pay any applicable fees. Then, one can proceed to file for a provisional patent application which allows to make refinements, adopt marketing strategies etc. to the invention.

It requires only a general description of the innovation with drawings. The USPTO operates on the “first to file” principle. This means that whoever files a patent for a particular invention or design first will have the patent’s protection rights. A provisional application helps secure this ‘priority date’ for the invention. A ‘complete’ application needs to be submitted within 12 months of the provisional filing date. It can also be submitted directly without filing a provisional application. The application should cover the following:

• the title of the invention,
• cross-reference to related applications,
• a detailed description of the invention,
• claims,
• abstract of the disclosure,
• statement regarding federally sponsored research or development,
• background of the invention,
• summary of the invention, and
• description of drawings. 

The total fee is $1,250 USD. The fees also vary depending upon the entity applying for the patent, details of which can be accessed from the USPTO website. The forms required to be submitted along with the non-provisional (complete) application draft and fees are:

• Application Data Sheet.
• Certificate of Mailing/Transmission.
• Information Disclosure Statement.
• Inventor’s Oath or Declaration.
  
• Power of Attorney.
  
• Non-Publication request if required. 

Registering a Trademark in the US

A trademark is defined as any sign (word, name, symbol or device) capable of distinguishing goods or services of one undertaking from those of other undertakings (refer to TRIPS Article 15). Trademarks are important as identification tools which communicate a brand’s identity. Trademarks are able to garner a positive impact on customer loyalty, revenues and profits and directly impact advertising and marketing of the product. It serves a common function of reducing “distance”, i.e., search costs between consumers and producers. Trademark registration in the US is not a legal requirement as ‘the first to use’ the trademark is the one who commercially owns the rights to it. A registration provides a constructive notice to the public of the registrant’s claim of ownership of the mark. The mark ‘TM’ (trademark) or ‘SM’ (service mark) may be used by anyone claiming a particular mark. However, in order to use “®” one needs to register the mark with USPTO mandatorily. 

The following components need to be looked into while applying for a trademark registration in USA:

• Determining the filing basis, i.e., whether the trademark is in ‘use in commerce’ or ‘intent to use in commerce’. Commerce is all commerce that the U.S. Congress may lawfully regulate. There must be a bona fide use of the mark in the ordinary course of trade and not use simply made to reserve rights in the mark. 
• Determining whether to register the trademark as a standard character trademark or a special form trademark. A standard one requires very little information while a special form requires submission of a JPG version of the trademark as well as its description. 
• Determining whether someone else has already registered or applied for the same mark using the Trademark Electronic Search System (TESS). ‘Likelihood of confusion’ needs to be avoided at all costs. 
• Determining the identification and classification of the goods and services using the Trademark ID Manual. This affects the application costs as the fees are calculated on a per-class basis based on listed goods and services. A standard form fee is $275 per class.
• One needs to file an application through the USPTO’s TEAS and TEASi portal, i.e., the Trademark Electronic Application System and TEAS International.

The pillars of trademark protection are distinctiveness, i.e, the ability to identify the products to which a mark is affixed and to differentiate them from similar competing products, and priority, i.e., to have priority in time over identical or similar marks used for similar products. Hence, careful attention needs to be given to these features while filing the trademark for increasing the chances of success. 

Registering a Copyright in the US

The US Copyright Law protects “original works of authorship” fixed in a tangible medium including literary, musical, dramatic, pantomimes and choreographic works, pictorial, graphic, sculptural works, audio-visual works, sound recordings, derivative works (like translations in to a different language), compilations and architectural works. The seat and brow doctrine does not grant copyright protection to facts. Any works created and registered after January 1, 1978, are protected for the life of the author with an addition of 70 years upon death. It is pertinent to note that in an employer-employee agreement the copyright vests with the employer as the entity is considered the author of the work.

Copyright registration is not required for either published or unpublished copyright. It is, however, strongly advised for a client to get their work protected as it gives an opportunity to obtain statutory damages and attorneys’ fees in court. Statutory damages entitle successful plaintiffs to recover automatic damages (instead of actual) ranging from $200 to $150,000 per infringing work.

The United States Copyright Office has an application form which needs to be filled. It came done by the copyright holder itself as it isn’t particularly difficult and the Office has clear online instructions on how to go about the registration process. The time it takes to process all claims on an average is 120 days. There is a standard application cost of $55. The following items need to be submitted along with the application for those who choose to register their copyrighted work with the U.S. Copyright Office:

• a completed application form;
• a nonrefundable filing fee; and
• at least one copy of the work(s) being registered.

Upon completion and submission of the application to the Office, it is advised to keep the Office abreast on any changes made to the registration including change of name or address. A timeframe of 6 to 8 months is realistic to be notified that one’s registration application has been approved.

USA is signatory to the following international IP agreements. If any person not based out of the USA wants to get their work protected in the country, they can refer to processes mentioned in these agreements. 

• Paris Convention – Any person from a signatory state can apply for a patent or trademark in any other signatory state and will get the benefit of same enforcement rights and status as a national of that country. 
• Berne Convention – Each member state recognises the copyright of authors from other member states in the same way as the copyright of its own nationals.
• Madrid Protocol – This is a central system for obtaining a ‘bundle’ of national trade mark registrations in different jurisdictions, through a single application. 
• Patent Cooperation Treaty – It assists applicants in seeking patent protection internationally for their inventions and allows the applicant to use the priority date obtained in one member state for a period of 12 months to apply in other member states of their choice.  
• The USA is not a signatory to the Hague Agreement, which allows the protection of designs in multiple countries through a single filing. 

Conclusion

It is always recommended to register one’s IP to allow better protection and economic exploitation of the creation. IP laws in the USA are of a very high standard and offer comprehensive protection as the enforcement agencies can deal with any kind of infringement. 

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skill.

LawSikho has created a telegram group for exchanging legal knowledge, referrals and various opportunities. You can click on this link and join: