This post will give some tips geared toward high school entrepreneur competition participants. However, these tips are generally applicable to inventors of all ages. This Spring I judged part of The Next Big Thing regional competition. None of the teams I judged specifically mentioned any intellectual property: trademarks, patents, copyrights, or trade secrets.
TRADEMARKS
The easiest way to determine if the trademark is taken is to search for the domain name. If the domain name is available, it is likely that the trademark will be available. A Google search will also reveal if the name is being used for similar products. Finally, go to tmsearch.uspto.gov and search TESS “basic word mark search.” Made-up words are the best trademarks and the easiest to get registered. For the competition, a cursory search may be all that you need. Later, an attorney can do a more involved search to determine whether similar trademarks could keep you from getting registered.
PATENTS
Provisional and design patents
Before disclosing a potentially patentable invention publicly, an inventor should seek to file a patent application with a registered patent attorney. Because the United States is a first-to-file country, an unscrupulous person could see the invention and file for the patent first. To keep someone else from patenting the invention, the inventor may file a provisional application to hold the filing date for a year. In the year, the inventor can do a search and look for investors. On or before the first anniversary of filing the provisional, the inventor must file a non-provisional utility patent application. If the invention is a new design for a product, then the inventor must file a design application instead of a provisional. The inventor cannot file a design application claiming the date of the provisional.
Patent searches
To determine if a product or invention is patentable, start with a Google search and see if anyone is selling your product. All of the competitors did this. The next step is to look at the products and see if they have a patent number on them. Patent owners are required to mark their products with the patent number. If there is a patent number, then go to www.google.com/patents and type in the patent number to see what is described. Even though the patent title, abstract or claims may not describe the product, be careful that the product is not described in the background or other parts of the patent. The participant will not be able to get a patent on product described in a patent or anywhere else.
If no patent numbers are on the products, a keyword search on www.google.com/patents should net some results with similar concepts. A more advanced way to search google patents is using patents.google.com to search both google scholar and google patents at the same time. The problem with more advanced searching is sorting through the results.
The United States Patent and Trademark Office also has links for patent (PatFT) and patent application (AppFT) searching in their Quick Links tab:
Patent may not be necessary
Entrepreneurs sell products every day that are not patented. For instance, furniture often is not patented but is sold in large quantities every year. A patent holder only has the right to exclude others from making a product. A patent is not necessary for a product to be marketed.
Patent holders can keep you from marketing an infringing product
If someone tries to market a patented product, the patent holder can take steps to enforce the patent. One method of enforcement is by sending a cease and desist letter to the seller and/or websites that are selling the product such as eBay or Amazon. Another route is a lawsuit. A common myth is that an expensive lawsuit is the only method of enforcement.
Contact a patent attorney for patentability and freedom-to-operate opinions
A patent attorney should be able to give opinions on patentability of products, an opinion on whether the product infringes someone else’s patent also called a freedom-to-operate opinion, and an opinion on enforcement options.
COPYRIGHTS AND TRADE SECRETS
Software can be protected by patents, copyrights, and trade secrets. The source code can be copyrighted as a written work. Copyrights are for written works, art works, performances, etc. Some software companies choose to protect their inventions through trade secrets. Trade secrets keep competitors from discovering how the software or other product was put together.
It is important for competitors not to use anything someone else has protected. If they can obtain information legally, the information is not a well-protected trade secret. Competitors should at least be aware that copyright and trade secrets are options available to protect their inventions.
ABOUT THE AUTHOR:
Julie Tennyson is licensed to practice law in Kentucky, Tennessee, and Georgia and is a registered patent attorney. She focuses her practice on intellectual property, employment, corporate, and litigation. Her email is jtennyson@marcumtennyson.com and her phone number is 270-534-5135. Her website is marcumtennyson.com.