The Team Approach to Premier Performance

For those who have intellectual property to protect, or with intellectual property issues, Thorpe North and Western (TNW) provides a full spectrum of outstanding legal services characterized by a unique team philosophy, approach and process. From offices in the heart of Utah’s technology corridor, the firm delivers a deep understanding and analysis of technology, a comprehensive response to relevant issues and, ultimately, the highest possible market value for the intellectual property of clients.

How Can We Help You?

Below are some answers to very common questions

PATENTS

Getting started

What is a patent?
Why apply for a patent?
What can be patented? 
What types of patents are there in US? 

Application process

How to apply for a patent in US?
How do I apply for a patent overseas?
How much will it cost?
Can I disclose my invention before applying?
What happens after a standard application has been filed in the US?
What to do before making an appointment?

What is a patent?

A patent is a right to stop others from profiting from an invention covered by the patent for a limited period of time. In the U.S. this period is typically 20 years from the filing of the patent application. During this period, competitors are not allowed to make, use, sell, or offer the invention for sale without permission from the patent owner.  In exchange for the right, the invention must be publicly disclosed in a patent specification.

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Why apply for a patent?

Apart from stopping competition, a patent owner can license the invention to someone else in return for royalty payments.  A patent is a business asset that may make a business more attractive to potential investors and commercial partners.

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What can be patented?

Any commercially useful invention in a field of science or engineering can be patented in the United States.  Examples of patentable material include mechanical devices, electrical products, software, pharmaceutical products, biotechnology products, and medical products.  The invention must be new and must be more than an obvious improvement or modification over existing technology. 

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What types of patents are there in the US?

  1. A utility patent provides protection of up to 20 years on devices and methods.  
  2. A design patent covers an artistic design of a device or product.  The term of protection is shorter and lasts for fourteen years. 
  3. A plant patent covers new types of plants.
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How do I start the patenting process in the US?

One possible first step involves filing a provisional application to establish a priority date.  An early priority date is important because anything published before this date can be used to attack the application.  The application will have priority over applications filed by potential competitors after the filing date.  The provisional application lasts for 12 months, which is a useful period for identifying marketability and value before investing further time, money and effort on the patent application.

To have a patent granted, a regular utility application must be filed within 12 months of filing the provisional application.  The complete application can be filed in US and/or using an international patent using the Patent Cooperation Treaty (PCT).  A patent specification for a complete application may be based on the provisional specification and includes details of any modifications, developments and improvements to the invention. No new matter may be added to a patent specification, be it a provisional patent specification or a complete patent specification.

Alternatively, the provisional patent filing may be skipped and a regular non-provisional utility application may be filed directly.

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How do I apply for a patent in foreign countries?

One option is to file a patent application directly in each country where protection is desired.  This option may be the most cost-effective if the applicant knows the exact countries in which protection is desired within 12 months of the priority date.

As a second option, the applicant may delay making decisions and incurring expenses for another 18 to 19 months (or up to 30 months from a first filing) by filing a single International (PCT) Application. The PCT Application reserves the applicant's rights to file individual applications in over 140 countries.  Filing individual applications following the filing of a PCT Application is known as entering national or regional phase.

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How much will it cost?

The cost for preparing and filing a patent application in the US varies depending upon a number of factors, such as complexity of invention and urgency.

Obtaining foreign patent protection can be an expensive and lengthy procedure.  There are also other costs associated with examining the application and payment of renewal fees in each country.

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Can I disclose my invention before filing a patent application?

It is recommended to keep an invention secret before a patent application is filed. Early disclosure of an invention may compromise your foreign patent rights, or may lead to that patent being invalid. In the US, you may have one year from a public disclosure or offer for sale to file a patent application.

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What happens after a utility patent application has been filed in the US?

A utility patent application number is assigned by the US Patent Office, and the full details of the patent application will be published 18 months after the priority date.

The application will be assigned to a technology art unit in the US Patent Office. Then after a period of 2 to 4 years, the patent application will be examined by an Examiner. If there are objections to the patent application (which currently occurs in 90% of patent applications filed in the US), an official Office Action will be sent out. Provided the invention is novel, the objections can usually be overcome by making amendments to the legal claims and/or presenting arguments.

Once the objections have been overcome, the application is may be issue and be granted. The US patent office charges a fee associated with the patent issuance. Later, patent maintenance fees must be paid to keep the patent in force.

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What can you do before making an appointment?

Please consider these questions to allow us to more effectively help you.

escribe what existed in the field prior to the invention. What problems did the existing technology have which the invention addresses? If possible, please provide a description of the closest known prior technology, for instance scientific papers or product descriptions.

Describe the invention and its advantages. If possible, prepare a detailed write-up with sketches and/or flowcharts.

Are there any publication or product launch deadlines? This will determine the urgency (and cost) of the work.

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TRADEMARKS

Our trademark team offers advice in the development of strong and effective trademarks.

What is a trademark?
Why apply for a trademark registration?
What should I consider when choosing a trademark?
What preliminary work can I do?
Why should I conduct a trademark search?
How long does trade mark protection last for in the USA?
What about foreign protection?

What is a Trademark?

A trade mark may be a word, device, packaging, product shape, combinations of these, or indeed, almost any aspect of branding that serves to differentiate your products and services from those of your competitors. A strong trade mark distinguishes your products from others in the marketplace and is a memorable symbol for the quality of your products and services.

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Why apply for a trademark registration?

  • A trademark application reserves the trademark for your use while you are preparing for product launch
  • Registration gives you the exclusive right to use the trademark in the US and stops others from using it or a similar trademark with the same type of goods
  • A registration is an enforceable right against misuse by competitors
  • A registration is an asset and property right which may be licensed or sold
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What should I consider when choosing a trademark?

Good trademarks are distinctive of your products and can be registered as identifying a source of goods, including invented words such as "EXXON" and "XEROX", or arbitrary words such as "APPLE" for computers.

Other good trademarks convey information about the products in a suggestive way, but do not describe the products, for example "DURACELL" for batteries, "MICROSOFT" for computers or "CYCLONE" for fencing.

Weak trademarks which feature descriptive or generic words such as "DELUXE", "CLASSIC" or "LITE" are hard to register and provide limited prospect of preventing competitors using the same trade mark.

It is important to choose a trade mark that can be registered and is a strong differentiator.

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What preliminary work can I do?

Trademark searching is important to determine whether someone else is using your mark for similar goods or services. Before using a new trademark it is wise to conduct searches. A search will reveal if the use is likely to infringe an existing registered trademark, conflict with a trademark that is in use, and indicate the prospects for obtaining registration. A good place to start your searching is to search using Internet search engines to see if other companies are already using the trademark you want use. In addition, we can perform a professional search to further ensure the chances that you will not have a trademark conflict with another party.

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We can conduct a search of the US Trademarks office database to:

  • ensure use of the mark will not infringe any prior trade mark
  • to assess the prospects for registration

Additional searches for common law trademarks (trademarks which are in use but are not registered) including searches of telephone directory listings, domain names, company and business names, internet searches and searches of industry publications and databases, should be undertaken to ensure there are no competing common law trade mark rights which may conflict with use and registration of your trade mark.

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How long does trade mark protection last for in the US?

A US trademark registration is renewable every ten years, and may be retained indefinitely by paying the renewal fees. A showing of use of the trademark must also be made 5 years after the trademark application is granted.

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What about foreign protection?

It is possible to file foreign trademark applications using a number of foreign systems and it is a matter of deciding which system is preferable.

  1. Madrid Protocol system. This is an "international registration" allowing the filing of a single application designating the country or countries of interest. The costs vary depending on the countries nominated. There are over 50 countries in the Madrid Protocol system. The whole of the EU can be designated as a single region.
  2. European Community Trademark. The CTM regime is a single application covering all member countries of the EU. This is a valuable mechanism for European trademark protection but is less cost effective than filing a Madrid Protocol application designating the EU.
  3. National applications. An application may be filed directly in the country of interest, and the costs vary from country to country. Some countries are not members of the Madrid Protocol or the EU, such as Canada, New Zealand, South Africa, some Asian countries, and the South American countries, and national registration is the only option currently available for these countries.
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COPYRIGHTS

Copyright FAQ

What is copyright?

Copyright grants protection for original works of authorship fixed in a tangible medium of expression. Copyright covers both published and unpublished works.

What does copyright protect?

Copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.

How is a copyright different from a patent or a trademark?

Copyright protects original works of authorship and the expression found in these works, while a patent protects inventions or discoveries. Ideas and discoveries are not protected by the copyright law, although the way in which they are expressed may be. A trademark protects words, phrases, symbols, or designs identifying the source of the goods or services of one party and distinguishing them from those of others.

When is my work protected?

Your work is under copyright protection the moment it is created and fixed in a tangible form that it is perceptible either directly or with the aid of a machine or device.

Do I have to register to be protected?

No. In general, registration is voluntary. Copyright exists from the moment the work is created. You will have to register, however, if you wish to bring a lawsuit for infringement of a U.S. work.

Why should I register my work if copyright protection is automatic?

Registration is recommended for a number of reasons. Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. Registered works may be eligible for statutory damages and attorney's fees in successful litigation. Finally, if registration occurs within 5 years of publication, it is considered prima facie evidence in a court of law.

I’ve heard about a “poor man’s copyright.” What is it?

The practice of sending a copy of your own work to yourself is sometimes called a “poor man’s copyright.” There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration. This is simply an urban legend.

Is my copyright good in other countries?

The United States has copyright relations with most countries throughout the world, and as a result of these agreements, we honor each other's citizens' copyrights. However, the United States does not have such copyright relationships with every country.

SEARCHING

Searching FAQs

Patent

Patent Searching

Patents provide a vast resource of technical information which can be searched for a variety of reasons. Examples include checking that a new product does not infringe an earlier patent, determining whether an invention is new and patentable, and watching developments in a particular class of technology or a competitor's activities. It is now also possible to search the Internet for other publications and products.

Freedom to Operate / Infringement Searching

Before launching a new product in the US you may want to ensure that your product will not infringe an earlier patent. An infringement search is perhaps the most difficult type of search to conduct. Infringement searching is fundamentally different from other searches because the focus of the search is primarily on the claims.

The costs associated with infringement searches vary considerably. We provide estimates on a case by case basis (without obligation or charge) in advance of searching.

Patentability Searching

In order to be patentable an invention must be new and not obvious. The patent offices around the world conduct searches, mainly of earlier patents, as part of their examination procedure. If they find relevant earlier documents they cite these against patent applications in order to argue that they should be refused, either on the ground of lack of novelty or that of obviousness. An earlier patentability search can anticipate examination and provide a good indication of the likelihood of a patent application being successful.

Keyword Searching on the Internet

Searching on certain patent collections is available for free, at the following sites:

  • US Patent Office
  • European Patent Office
  • Google Patents

The Limitations of Searching

However much time is spent conducting searches it is for a number of reasons impossible to be completely sure that every relevant item has been found. First the databases are sometimes incomplete. In addition, the classification schemes can be difficult to interpret and mistakes are sometimes made in classifying documents and in searching the correct classes. There is also a delay before documents are captured by databases, and of course since patents are not usually published for at least eighteen months, there is a time lag before a completely up-to-date search can be made.

Trademark Searching

Prior to adopting a trademark or filing a trademark application, it is valuable to conduct a search of the US trademarks database to:

  • ensure use of the mark will not infringe any prior mark;
  • to assess the chances for registration.

Additional searches may also be undertaken including searches of telephone directories, domain names, company and business name registrations, internet searches and searches of industry publications and databases as well as marketplace investigations.

RENEWALS

Patent Offices around the world charge taxes on intellectual property rights, such as patents, trademarks, registered designs and plant breeder’s rights. These are called 'renewal fees' or 'maintenance fees' or sometimes 'annuities'. The frequency and amount of the fee varies depending on a number of factors, but the fee must be paid on time or the intellectual property right will lapse. Usually the intellectual property right can be automatically reinstated by paying additional fees within a 6 month period. After that the reinstatement period, it is difficult or impossible to reinstate the intellectual property right.

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