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Ways You Can Protect Your Intellectual Property Be

5/27/2003

The Global Gaming Expo (G2E) is fast approaching. While everyone in the industry appears to be busy completing their line-up of products to unveil at the show, it is very important to take a moment and put equal emphasis on protecting your new products. U.S. laws provide various types of protections for the products of the mind. Relying on these laws may help you reap long-term rewards for your innovativeness.

NEW IDEAS
Ideas may be protected by applying for a patent. A U.S. patent is generally a grant of a right from the federal government to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States. The federal government grants patents to inventors in exchange for their disclosure of their inventions to the public. The disclosure must generally be written in a manner that allows one of ordinary skill in the art to make and use the invention based on the disclosure. Generally, patents are enforceable beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States.

Your idea may be patentable if it is a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. For an idea to be considered “new,” the idea generally must not have been previously known or used by others in U.S., or patented or described in a printed publication anywhere. The idea must also not have been taught or suggested by prior art (i.e. non-obvious).

A patent search may help you evaluate the likelihood of obtaining a patent of a desired scope before you spend a substantial amount of time and money in preparing the patent application. A patent search may also reveal some potentially conflicting patent, which may pose a patent infringement liability to you. Although you may conduct a free patent search, such as using the U.S. Patent and Trademark Office website, you may find it very easy to miss a particular keyword that might bring out the relevant prior art. You may also be overwhelmed with the amount of references a search query may reveal. Therefore, a professional patent search is highly recommended.

When you unveil your products at a trade show for the first time, you will likely set the clock ticking (if you have not done so already) for the deadline to file your patent application. U.S. patent laws will bar you from obtaining a patent if it took you more than one year to file your patent application after you have publicly used or offered the invention for sale in the U.S. Most large companies file their patent applications before unveiling products at tradeshows for several reasons. First, they eliminate the risk of having their inventions barred from being patented. Second, they preserve their rights to file abroad because many foreign countries require absolute novelty to file. Absolute novelty means the invention must not have been disclosed anywhere before the application is filed. Lastly, they can place “patent pending” labels on their products, which provide marketing appeal and warn potential copycats from designing around the invention.

As you may now realize, having an early filing date is critical to establish ownership of the invention in the United States and all around the world. An early filing date may preserve your chances for patenting your invention in light of your prior public use or offer for sale. An early filing date may also help you obtain a broad scope of protection for your invention. By filing early, you increase your chances of pre-dating similar inventions that others seek to patent. This means that subsequent disclosures may not be treated as prior art, and they may not be used to reject your patent application.

If you are not ready to file a regular patent application because of time pressures, you may file a provisional application to preserve an early filing date. A provisional application usually has the components of a regular application, except for the claims section. You should note that provisional applications do not issue into patents. The U.S. Patent and Trademark Office does not publish or examine provisional applications. While many benefits can be derived from filing a provisional application, patent law imposes complex requirements for obtaining the full benefits from a provisional application. It is also important to note that you must file a regular application within one year after the filing of your provisional application to try to obtain a patent for your invention. Failure to file a regular application within the required time frame will result in the abandonment of the provisional application.

NEW MARKS
If you plan on using a word for the consumers to associate to your new product, you may consider filing a trademark registration. A trademark may be a word, symbol, or other indicum, such as arrangement of scent or sound, that indicates to the consumer the origin of the goods or services and the quality associated with the goods or services. Examples of registered trademarks include NIKE, EXXON, and COKE.

A trademark may be protected under state, federal, and common law. Common law grants an automatic right to a mark by virtue of mere use of the mark. However, obtaining a registration for the mark would be a more prudent approach because a trademark registration can be assigned, transferred, sold, or licensed. Thus, a trademark registration can be a very valuable intellectual property asset.

Before you make your final decision on which mark to use, it is prudent to do a trademark clearance to minimize trademark infringement liability. Defending a trademark infringement lawsuit is very expensive. Many lawsuits can easily cost tens or hundreds of thousands of dollars in attorney's fees alone. An important due diligence strategy is to conduct a common law search. As stated earlier, common law rights to a mark is established without the requirement of registration. Thus, many common law rights are not recorded. A common law search using highly specialized databases containing possible common law usages may help you find potential common law rights as well as potential trademark infringement liability.

The analysis and suggestions offered in this article are not a substitute for the individual legal research and personalized representation with an attorney, which is essential in every case. The analysis and suggestions offered in this article further do not create a lawyer-client relationship.

If you have any questions regarding this article, please contact the Law Offices of Tong & Kwan by phone (213) 382-1888, by fax (213) 639-1670, or by sending an email to info@tongandkwan.com. You may also visit our website at www.ideastopatents.com or you may send a letter to 3580 Wilshire Blvd., Suite 1120, Los Angeles, CA 90010.

This article is written by Rolando J. Tong. Mr. Tong is a Registered Patent Attorney and a partner at the Law Offices of Tong & Kwan. Mr. Tong has prepared and filed numerous patent applications for clients with inventions in the fields of gaming, electrical, mechanical, computer hardware and software, optics, medical devices, and biomedical technologies. He is admitted to practice in the United States Patent and Trademark Office, all state courts of California and Nevada, and the Federal District Court of Nevada. He is a member of the American Intellectual Property Lawyers Association.

Contact Information:
- Law Offices of Tong & Kwan
- Rolando J. Tong
- 2133821888