The firm of Jensen & Puntigam, P.S. has more than twenty years of experience in the field of intellectual property, with considerable emphasis on counseling business owners.

What is Intellectual Property?  Patents  Trademarks  Copyrights

What is Intellectual Property?

"Intellectual Property" is property created by a person's mind. Intellectual property is often found in a tangible form in those documents created and presented by the U.S. Patent Office, the U.S.Trademark Office and the U.S. Copyright Office, as well as being secured by means of trade secrets. Most, if not all, foreign governments have similar agencies.

 Patents

To protect an invention legally, an inventor must file a patent application with the U.S. Patent and Trademark Office. A patent attorney (who is also an engineer or scientist) advises clients with respect to what is necessary for a patent to be granted. Three criteria are standard: 1) novelty; 2) lack of obviousness; and 3) usefulness. In many cases, a client is advised to have a patent search done to uncover patents which may have previously disclosed the inventive concept of the patent application, thereby precluding patent protection.

Once the decision is made to file for patent protection, the application is carefully drafted to secure the broadest protection of the invention as defined by the claims.

An application is almost never accepted on its initial presentation. The application is assigned to a patent examiner, who reviews it and searches for related disclosures. this process may take several months. The examiner then sends out an office action which details reasons for rejecting some or all of the application. It is then necessary to prepare a response. This process is called the "prosecution period". It may be several months before an examiner will allow an application in full or in part. For this reason, it is not possible to exactly predict the final costs of obtaining protection, although an experienced attorney is able to give a good estimate. Upon notice of allowability, an issue fee is paid prior to publication of the patent. Patents have a life of twenty years from the date of filing. Maintenance fees are due in intervals of 3-1/2, 7-1/2 and 11-1/2 years.

 Trademarks

A trademark protects the name and/or logo by which a product or service is identified in the eyes of the general public. The foremost criteria of protection of trademarks is prior use; however, such use may be limited to the immediate geographic area, and therefore, it is often advisable to seek federal registration.

A trademark registered with the U.S. Patent and Trademark Office provides protection throughout the United States from other sources using trademarks which may be confusingly similar. To obtain federal registration, it is necessary to file a trademark application. The intellectual property attorney can perform a search in the Trademark Office to uncover marks which may be too close or exactly the same. The attorney will also advise a client concerning other characteristics of a mark which may make it difficult to register. As with a patent, an attorney in the Trademark Office is assigned to examine the trademark, which includes a search of existing marks. If the examiner finds similar marks or has other objections, an office action is issued which requires a formal response. This is a "prosecution" period and charges incurred are not covered by the initial costs of filing the application. If no conflicting marks are uncovered, the trademark is passed to publication for opposition. A registration will issue if no opposition is filed. It is also possible to file for the protection of a mark that is not yet in use in order to prevent others from filing while the business product or service is being developed.

 Copyrights

Copyright protection begins at the creation of any copyrightable material. Registration at the Copyright Office is recommended, since unregistered works will not be protected by the federal courts.

© 1999 Jensen & Puntigam, P.S.
All Rights Reserved.