Legal Question in Intellectual Property in New York

Re: patents

The two are not mutually exclusive.

Generally, in order to prevent the use of your branding, trademark protection is important - no matter what the life cycle of a particular product might be.

Re: patents

Your question is a good one and one that all inventors seeking patent protection should consider even if they don�t consider their invention a fad item.

First, as soon as you file a patent application, you invention takes on "patent pending" status. This does not mean that you can immediately take any action against a potential infringer, but it does put them on notice that you have filed a patent and that if a patent issues and they are found to infringe, they may face damages including triple damages with an award of attorney fees if it is shown that they deliberately infringed. This is often enough to keep reputable companies from stealing your invention. Of course there are grey market companies that specialize in providing the marketplace with imitation goods and then disappear before any real action can be taken against them. This means that merely filing a patent does provide some benefit with respect to protection; although certainly not total. Frankly, not even an issued patent can provide that.

Second, patent protection may not make sense if it is a �fad� invention since coming to market first may be the most important business plan in that case and writing a patent does take some time. Most people do not wait until the patent issues before they start marketing their invention. It will depend on the kind of invention, the market and your business plan, so you will have to talk with your patent attorney to get a more specific recommendation.

As to trademark, technically trademarks do not offer any protection from others bringing your product to market. Trademarks are meant to identify a source of a good or service. If you plan to market under a trademark, then registering makes sense, but it will not keep someone else from selling your product, it will only keep them from marketing under your trademark. Also, you do not have to register a trademark; as soon as you start selling under your mark, you begin to accrue rights in the mark. Having said that, there are advantages in registering your trademark.

Hope this helps. If you have more questions, feel free to call me toll free for a free consultation.

Re: patents

In addition to the points made by the previous 2 respondents, I would point out that U.S. patent law was amended a few years ago to provide patent applicants with a bit of protection while their patents are pending, under certain limited circumstances. Once the application is officially published by the U.S. Patent and Trademark Office, an applicant may send notice of the application to the source of a copycat product. Then, once the patent issues, and the owner of the patent sues the copycat, the amount of damages would be calculated retroactively based on the copycat's sales of infringing product from the date it received notice of the pending application. However, this works only if an infringed claim of the patent is virtually the same as the corresponding claim in the published application. When U.S. patent applications are published, it is generally at 18 months from the priority filing date. However, an applicant can optionally ask that publication be expedited. Also an applicant can ask that the patent application be re-published after claims have been amended.

Yes, it can be useful to follow a belt-and-suspenders strategy of intellectual property protection. In the U.S., a trademark can be protected under the common law, by registering it with the various states, and/or by registering it in the U.S. Patent and Trademark Office. And sometimes the distinctive "look" of, e.g., a restaurant can be protected by the unfair competition provision in the federal trademark act and/or various provisions of state law.

Moreover, sometimes copyright can be useful in protecting aspects of a new product.

In addition, a design patent can protect the "look" of a product, but in the U.S. those also take many months before they are granted. If the product is to be marketed internationally, however, it may be possible to get registration more speedily in certain foreign countries under the law of industrial design registrations.

Thus, if someone is going to start marketing a product and wants to protect it from coattail-riders, it would be wise to develop a coordinated strategy by consultation with an attorney versed in the various tools of intellectual property.