- USPTO Trademarks
- Europe (CTM)
- World Intellectual Property Organization (WIPO)
A trademark name cannot be descriptive. You may be able to get a trademark that is suggestive of the goods/services, but a strong trademark is fanciful (think Apple computers, Galaxy smartphone). A trademark is only registered for a particular set of goods, or services. This means that if you trademark XXXX for an electronic golf game, someone else can use the same trademark for their brand of clothing. Once you have decided on the name you would like to use, search and make sure that the name is not already in use!
Proper use of a trademark is either on the goods themselves, or at the point of order. The customer must actually see the name in connection with the goods – not just on a marketing flyer. Use the TM symbol immediately, and until the trademark is actually registered in your target markets, then switch to the registered trademark symbol ®. In an article, or other written publication, the trademark symbol should appear next to the trademark the first time it appears in the text.
Don’t use someone else’s trademark without indicating that it belongs to them! You should avoid using trademarks of others completely, if possible.
In most countries there is a maintenance process – a fee is paid every few years. In the US you also must actually show use in connection with the goods. As you expand your market, remember to keep your trademark in sync with your new activities. The first step in entering a new market is to register the trademark yourself – otherwise the foreign representative will end up owning your name in that market (no matter what your contract says)!
A patent agent/attorney is a professional licensed to represent you before a country’s patent office. The term “patent agent” is particularly relevant in the U.S. where only a licensed attorney may use the term “patent attorney”. An attorney is one who can represent you in court, whereas a patent agent may only represent you before the patent office.
It is usually worthwhile to invest in a search before you begin to think of a patent. A search will enable you to understand what is out there, and what has been published, so you can better define what is your “point of novelty”. You can search under:
Don’t publish until you have filed for patent protection! Never discuss your invention with others (without a non-disclosure agreement), or show it in public, before filing for patent protection.
If your novel feature is what the customer wants, and you get the patent on it, you are in a commanding market position!
In order to properly prepare a good patent, you should come prepared with:
1. Always spell out what the acronyms you are using mean – at least once!
2. Don’t spend too much effort on color drawings – patents are almost always black and white line drawings!
3. Your solution, in words and drawings:
4. If you know anything about how others have attacked this problem, and why they do not adequately solve it, describe it (but keep it short – this is not the main course!). If you did a search, bring the results of the search.
5. What is the technical problem your invention needs to solve (not the market problem!)
6. Explain in detail how your invention works – refer to the drawings
7. How does the solution solve the technical problem.
This is an application filed in the U.S. which does not require claims. It is alive for 1 year, and then “dies”. It can be used as a “first filing”, allowing you to say that all important “patent pending” for your product/service.
Patents are enforced per country. In order to decide where to obtain patent protection, you want to think about:
- What are the main markets for your new invention?
- Is each potential market big enough to justify the cost of patent protection?
- This is an agreement among 151 countries for a unified search and publication for your application (through the National Phase deadline).
- For a single fee, you get a search report, with a non-binding written opinion as to patentability of the application, and publication.
- The PCT application can be filed 12 months from your initial application (be that a US Provisional, or Israel application). You then get an additional 18 months before you have to enter “National Phase” separately in each country. This gives you a total of 2-1/2 years to decide in which countries to file the patent application.
A patent can be kept in force for up to 20 years from the date of first filing. (Note if you first file a provisional patent application in the US, the provisional year doesn’t count).
There are many different factors involved in the cost of a patent:
- There is an initial cost to draft the patent application – the cost depends on the complexity of the invention.
- There are filing fees, which depend on which countries you file in.
- Many countries have annual maintenance fees. Some of them, like Europe, Canada and Australia, charge annual fees even before the patent is granted.
- The patent office will typically first reject some, or all, of the claims based on one or more previously published documents (known as “prior art”). The patent agent/attorney, in cooperation with the inventor, will then amend the claims to more clearly recite the point of novelty – there will be a cost for this work.
- Once the patent is allowed, there is usually a grant fee.
- After the patent is issued there are maintenance fees. Many countries charge an annual fee, while others, such as the US and Israel, charge fees at fixed points during the life of the patent. The fees are higher the longer the patent is in force.
This is called a trade secret. It allows you to keep the monopoly of your invention forever (think Coca Cola secret formula!). But you must make efforts to keep it a secret:
- Make sure that everyone in your company who is exposed to the trade secret knows that it is a trade secret!
- Make sure that anyone you share the trade secret with is under an obligation to keep it secret using a non-disclosure agreement (NDA).
c. If you share you trade secret under an NDA with someone outside of your company, after the meeting send an e-mail that identifies in writing what the trade secret that you revealed was.
Label your publications (data sheets, etc.) as being protected by copyright. Try to keep a history of your publications/ web-site. This may be necessary to show that you were the first to publish something, and therefore own the copyright!