In the U.S., there are three different kinds of patents: utility patents, design patents, and plant patents. The most common type of patent and the one that most people think about when they hear the word “patent” is the utility patent.
A utility patent is a legal document that grants to an inventor the exclusive right to exclude others from making, using, selling, offering to sell, or importing the claimed invention for the life of the patent which is usually 20 years from the filing date of the corresponding patent application.
What Types Of Inventions Can Be Protected By A Utility Patent?
Inventions that can be protected by utility patents include any useful, new, and non-obvious process, machine, article of manufacture, or composition of matter:
- Processes or methods are a series of steps for performing a function or accomplishing a result (e.g., a process for making soap).
- Machines are devices that perform some function and produce a certain effect or result (e.g., a radio).
- Articles of manufacture are hand-made or machined products with few or no moving parts (e.g., ceramics or gloves).
- Compositions of matter are intermixtures of ingredients to produce properties that none of the ingredients have in their separate states (e.g., a new chemical compound).
What Are The Benefits Of Obtaining A Utility Patent?
Because of the exclusive rights granted to utility patent holders, utility patents provide an essential means for protecting against copycats (i.e., patent infringers). The ability to prevent copying makes patented inventions more attractive to prospective investors and licensees.
A utility patent holder’s exclusive rights also allow them to negotiate the terms of licenses and agreements from a position of strength, including details relating to production and distribution. Utility patents may be combined with other forms of Intellectual Property such as design patents, copyrights and trademarks to establish more long-term brand protection.
How Is A Utility Patent Obtained?
The process of applying for and obtaining a U.S. utility patent usually takes several years, although expedited handling of patent applications is possible under certain circumstances and patents may sometimes issue faster.
A utility patent application is filed with the U.S. Patent & Trademark Office (USPTO) and assigned to a Patent Examiner. The Patent Examiner reviews the application for formalities and for compliance with the basic statutory requirements such as subject matter eligibility and clarity, and including the statutory sections for anticipation (novelty) and obviousness.
Anticipation and obviousness evaluations are conducted by reviewing the claimed invention in comparison with known products and processes (prior art) and determining whether the claimed invention has been previously disclosed.
The claims are commonly subjected to an Office Action in which one or more grounds of “rejection” of the claims are provided. Many applicants become unnecessarily concerned at this stage, as this is a normal part of the patent prosecution process.
In response to the rejections, the claims can be amended in a response to the Office Action. Once the claims overcome the rejection obstacles, and are approved, the applicant/inventor receives an issued U.S. utility patent.
What Is A Trademark?
A trademark is a symbol, word or design or other more unusual trade indicia such as smell or sound (including the unsuccessful attempt to trademark the “sound” of the Harley Davidson motorcycle engine) that provides an indication of the source for goods and services.
In other words, a trademark identifies and distinguishes one company’s products or services from those of others to help ensure that consumers are not deceived about the source of those goods or services. When properly protected, a trademark should serve as a “guarantee” of a certain level of quality expected from the source of goods.
When taken to the logical extreme, a trademark owner can “authorize” third parties to use the mark on their goods provided the goods meet the quality requirements of the owner, providing an avenue to rapidly expand the brand reach and recognition.
How Is A Trademark Obtained?
There is no absolute requirement to register a trademark, though there are benefits to doing so. Common law rights can be established based simply on the use of a mark in commerce in connection with the sale of goods or services.
Such common law rights are generally regional in nature and allow the trademark holder to prevent subsequent competitors from using the same or confusingly similar marks within the region the common law mark has been used. Common law trademark rights are indicated by the use of a TM symbol with the mark.
Federal registration, however, provides the trademark holder with the exclusive right to use the mark nationwide and the ability to sue infringers in federal court. A U.S. registration can also be filed with the U.S. Customs Service to prevent infringing foreign goods from being imported.
Use of the ® symbol can only be used for federally registered trademarks. A registered mark has the capability of allowing the holder/owner to seek more substantial damages over a common law holder, once infringement is found.
A federal trademark application is filed with the USPTO and assigned to a Trademark Examiner. The application generally contains a description of goods and services, which limits the scope of coverage of the mark to certain categories.
The Trademark Examiner reviews the application to determine if the mark is confusingly similar to existing or pending federal trademark registrations within the class of goods or services covered in the description of goods and services in the application, and to determine if the trademark meets legal requirements (e.g., is not generic or merely descriptive).
The Examiner may issue an Office Action indicating that certain similar marks have been found or that there are defects in the mark regarding the formalities. The Applicant may then file a response in which the mark itself may be amended along with the description of goods and services.
If approved, the proposed mark is published for opposition at which point parties may oppose the registration of the mark, usually as being confusingly similar to their registered mark. If the proposed mark survives the opposition period, then the mark is published on the Principal Register and federally registered.
A mark that may be deficient in some regards, i.e. as not meeting the criteria to identify a source of goods standing alone, may nevertheless be eligible for publication on the Supplemental Register until such a time as the mark can be established as gaining some level of recognition, while exclusive use is maintained.
What Is The Difference Between Utility Patents & Trademarks?
The main difference between utility patents and trademarks is that utility patents protect inventions while trademarks protect certain indicia of a brand, i.e. a source of goods or services. Trademarks can last indefinitely as long as the owner keeps using the trademark in commerce, while utility patent terms are 20 years from the filing date of the corresponding patent application.
The length of a trademark is testament to the power of the trademark in protecting a brand in the long term. Patent and trademarks, and other IP can be used together to establish a high-level IP/Brand building strategy.
For example, an unknown company entering a market may use a utility patent to establish a presence for its product or process. Once a firm market is established, trademarks may be used to protect the indicia of the source of manufacture of the goods or provision of the services.
For example, an entrepreneur may invent a revolutionary food-preparation process for cooking chicken that can be used in restaurants. A patent may be filed long before the first use of the process or the associated machine that performs the process.
When the process has proven itself viable, the entrepreneur may seek to establish a restaurant chain that uses the patent process and may trademark the name of the restaurant. As the term of the patent runs, the restaurant presumably builds popularity and adds strength to the trademarked “brand.”
However, once the patent expires anyone would be free to use the patented technology to open a competing restaurant. Therefore, other aspects of IP protection may become useful, such as the use of trade secrets.
One famous example would be the long-protected, spice recipe for KFC fried chicken. Other approaches may involve continuous refinement of the technology and the filing of follow-on patent applications to cover improvements in the process, staying ahead of the competition.
How Can Trademark Protection Complement Patent Protection?
As discussed above, trademarks should be viewed as a complementary form of intellectual property (IP) protection that can aid in establishing a long-term branding/marketing strategy. For example, if a company’s invention is a new kind of insulated cup, a utility patent would be used to initially protect its functional aspects.
Then, selling the insulated cup under a trademark during the term of the patent can help to establish brand recognition and loyalty with consumers that provide a barrier to competitors, essentially providing a de facto extension of the utility patent term.