2. Founded in 1925, Shumaker, Loop & Kendrick,
LLP is a multi-state law firm of more than 215
attorneys with offices in Toledo and Columbus,
Ohio;Tampa and Sarasota, Florida; and Charlotte,
North Carolina. Our attorneys represent a broad
spectrum of domestic and international business
clients. The firm is built on a tradition of
extraordinary service to our clients. Our continuing
commitment to our clients drives the efforts and
direction of the firm.
3. INTELLECTUAL PROPERTY
PRACTICE GROUP
Protecting Your Interests Please contact one of
our offices if you
Shumaker, Loop & Kendrick, LLP’s intellectual property law practice have any questions
group counsels clients on issues relating to the creation, registration, in the area of
protection, licensing, and transfer of intellectual property rights;
Intellectual Property
and to match you
assists clients in negotiating and documenting transactions involving
with the right
intellectual property; and represents clients in federal, state, and lawyer, in the right
administrative litigation of disputes involving intellectual property. geographic location,
to address your
Intellectual Property
Our practice calls upon the expertise of our group in the areas of
needs.
domestic and international patent, copyright, trademark, trade dress,
trade secret, franchise, false advertising, and unfair competition law. You can also visit
our website at
The following is a quick reference guide based on questions commonly www.slk-law.com
to learn more.
asked in the area of intellectual property. It is by no means intended
to be an exhaustive treatise on the vast expanse of law in the area
of intellectual property, but is instead intended to serve as a desktop
reference. We would be pleased to discuss any questions that you
might have in the area of intellectual property and to match you with
the right lawyer, in the right geographic location, to address your
intellectual property needs.
4. P
PATENTS
Q: What is a patent?
A: A patent is the grant of a property right to an inventor, issued
by the United States Patent and Trademark Office, which confers
the right to exclude others from making, using, offering for sale,
selling, and importing an invention in the United States.
Q: What can or cannot be patented?
A: Any new and useful process, machine, article of manufacture, or
composition of matter (chemical compositions and may include
mixtures of ingredients as well as new chemical compounds), or
any new and useful improvement thereof. The laws of nature,
physical phenomena, and abstract ideas are not patentable subject
matter.
Q: How do I obtain a patent?
A: To obtain a US patent, an application must be filed in the USPTO
through a registered patent attorney or agent.
Q: If the USPTO grants me a patent on my invention, am I protected
throughout the world?
A: No. US patent grants are effective only within the US, and its
territories and possessions. However, separate patent protection
may be procured in a variety of countries and international
agencies.
Q: How long do I have to apply for a patent?
A: That depends. If you make your invention known to the public,
you have 1 year from the date of publication to apply for a patent.
Federal law prohibits an inventor from obtaining a patent if the
invention has been in the public domain for more than 1 year
before the date he or she applied for the patent. The underlying
policy is that once inventors decide to lift the veil of secrecy from
their work, they must choose between the protection of a federal
patent or the dedication of their idea to the public.
Q: I have an idea, but have not actually created or built my invention.
Can I still obtain a patent?
A: A patent cannot be obtained upon a mere idea or suggestion.
The law requires at least a sufficient description to enable a
person skilled in the art to which the invention pertains to make
and use the invention.
5. INTELLECTUAL PROPERTY
PRACTICE GROUP
Q: What is the difference between a utility patent and a design Please contact one of
patent? our offices if you
A: A utility patent protects the way an article is used and works, have any questions
while a design patent protects the way an article looks. Both in the area of
utility and design patents may be obtained on an article if Intellectual Property
invention resides both in its utility and ornamental appearance.
and to match you
Q: I have developed what I think is a unique business method. Is with the right
such a method patentable? lawyer, in the right
A: Possibly. Assuming your business method is new and non-
geographic location,
obvious over the prior art, and has not already been patented, to address your
the USPTO could issue you a business method patent. Business Intellectual Property
methods are subject to the same legal requirements for needs.
patentability as applied to any other process or method.
You can also visit
Q: What is a patentability search? Do I need one before I can file my
patent application? our website at
www.slk-law.com
A: A patentability search is designed to locate patents that help
to determine the novelty and non-obviousness of an invention. to learn more.
Generally, a patentability search includes a review of both issued
US, European Patent Office (“EPO”), and World Intellectual
Property Organization (“WIPO”) patents, and published US, EPO,
and WIPO applications. Before you apply for a patent, a registered
patent agent or a registered patent attorney should have a
patentability search performed to ensure that the invention has
not already been patented.
Q: I worked with someone else to create an invention. To whom will
the patent for the invention be granted?
A: If more than one person conceived the claimed invention, the
patent application must be filed in the name of all inventors. In
this case, a granted patent will issue in the name of all of the
inventors. If any of the inventors is not named in the application,
it must be amended to provide the USPTO with correct inventor-
ship of the invention. If, on the other hand, only one person
conceived the invention, and the other person(s) only followed
instructions in making or using the invention, the person who
conceived the invention is the sole inventor, and the patent
application must be filed in the name of the sole inventor. In this
case, a granted patent will issue in the sole inventor’s name.
Q: I hired someone else to create an invention and furnish all of the
ideas to make the invention. To whom will the patent for the
invention be granted?
A: The application must be signed by the true inventor, and filed in
the USPTO in the inventor’s name. This is the person who
furnishes the ideas, not the employer or the person who furnishes
the money.
Q: How long will it take to register a patent?
A: That depends. The entire process from patentability search to
registration generally takes anywhere from 18 to 30 months.
6. Q: How much will it cost to register a patent?
P A: That depends. There are many costs associated with obtaining a
US patent, including patentability search fees and filing, search,
and examination fees with the USPTO. At the time of issue, you
will be required to pay a utility issue fee. Over the course of the
life of the patent, you will be required to pay patent maintenance
fees, which are payable 3.5 years, 7.5 years, and 11.5 years after
the patent issues. In addition to the fees charged by the USPTO,
the attorney’s time spent drafting and prosecuting the application
can vary. Depending on the complexity of the application, the
attorneys’ fees for drafting the application can range from $7,500
for relatively simple applications to $20,000 or more for more
complex applications.
Q: How long will the protection afforded by my patent registration last?
A: Generally, the term of a new patent is 20 years from the date on
which the application for the patent was filed in the US, or, in
special cases, from the date an earlier related application was
filed, subject to the payment of maintenance fees, as set forth
above. Under certain circumstances, patent term extensions or
adjustments may be available.
Q: What happens to my invention after my patent expires?
A: Your invention will be open to the public and anyone will be
able to make, use, offer for sale, sell, or import your invention in
the US.
Q: Are there any private or government organizations that can assist
me in developing and marketing my invention?
A: Yes. In nearly all states, there are state planning and development
agencies or departments of commerce and industry that seek new
product and new process ideas to assist manufacturers and
communities in the state. If you do not know the names or
addresses of your state organizations, you can obtain this
information by writing to the governor of your state. However,
great care must be taken when using private invention promotion,
marketing, and licensing companies. Many invention promotion,
marketing, and licensing companies take advantage of an inventor’s
enthusiasm for their invention by making exaggerated promises,
charging exorbitant fees, and procuring unduly narrow or altogether
worthless patents. The USPTO provides helpful information in avoiding
scam invention promotion, marketing, and licensing companies at:
www.uspto.gov/web/offices/com/iip/documents/scamprevent.pdf.
7. INTELLECTUAL PROPERTY
PRACTICE GROUP
Q: When do I use the terms “patent pending” and “patent Please contact one of
applied for?” our offices if you
A: The phrases “patent pending” and “patent applied for” are have any questions
interchangeable and have no legal effect, but only give information in the area of
that an application for patent has been filed in the USPTO. The
Intellectual Property
protection afforded by a patent does not start until the actual
grant of the patent. These phrases are generally used by the and to match you
patent applicant on or in conjunction with the manufacture or with the right
sale of a product or article encompassing the invention to inform lawyer, in the right
the public that an application for patent on that product or article geographic location,
is on file in the USPTO and generally may dissuade a potential to address your
infringer from intentionally copying or infringing your invention.
Intellectual Property
Additionally, when an inventor is looking to market and/or have
their invention manufactured, companies often find it more needs.
attractive to invest in a particular invention only after it has
obtained “patent pending” status. You can also visit
our website at
Q: Is there any danger that my attorney or the USPTO will give
www.slk-law.com
others information contained in my patent application while it
is pending? to learn more.
A: Your attorney cannot disclose to others information contained
in your patent application unless you instruct him to do so.
However, most patent applications will be published 18 months
after the filing date of the application unless a specific request
is made at the time of filing the patent application. After the
application has been published, any member of the public may
request a copy of the application file. After the patent is issued,
the USPTO file containing the application and all correspondence
leading up to issuance of the patent is made available for
inspection by anyone on the USPTO’s website or at the File
Information Unit.
Q: I have a patent. Now what do I do?
A: That depends. A patent allows the owner to exclude others from
using the claimed invention. It does not, however, necessarily
mean that you are free to make, use, or sell the device. For
example, many patented inventions are subject to regulation by
other government agencies. If your invention is not regulated
by any law or agency, you may make, use, or sell the device
yourself. You may also permit third parties to make, use, or sell
your invention, at your direction, by entering into a licensing
arrangement with such third parties. It is important, however, to
consult your attorney prior to entering into any such arrangements
with third parties to ensure that you maintain your rights in and
to your invention.
Q: What does it mean if someone is infringing my patent?
A: Infringement of a patent consists of the unauthorized making,
using, offering for sale, or selling of any patented invention
within the US or its territories and possessions, or importing
into the US or its territories and possessions any patented
invention, during the term of the patent.
8. Q: I see that someone is infringing my patent. Do I have to do
P anything about it?
A: No, you do not have to do anything, but you should do whatever
necessary to protect your rights in and to your patent. If a patent
is infringed, the patentee may sue for relief in the appropriate
federal court. The patentee may ask the court for an injunction
to prevent the continuation of the infringement and may also
ask the court for an award of damages because of the
infringement. However, undue delay in enforcing your rights
may result in injunctive relief being unavailable.
Q: After my patent issues, can the USPTO help me enforce my
patent in the event of infringement?
A: No. Once a patent is issued, the patentee must enforce the
patent without aid of the USPTO.
Q: How can I protect my invention outside of the US?
A: You must apply for a patent in each of the other countries or in
regional patent offices. Almost every country has its own patent
laws, and a person desiring a patent in a particular country must
make an application for patent in that country, in accordance
with the requirements of that country.
Q: I have an idea, but I am not sure whether or not I want to obtain
a US patent. What other options do I have?
A: A US patent only affords the patent owner protection on their
invention for 20 years from the date of application. If you would
like to keep your invention out of the public domain for a longer
period of time, you may be able to protect your invention (as
well as all confidential information associated therewith) as a
trade secret. To maintain the secrecy of your invention, it is
necessary when dealing with your employees, agents,
representatives, or other third parties to enter into various
agreements, including development agreements, transfer
agreements, confidentiality agreements, and non-competition
agreements. In the event that your employees, agents,
representatives, or other third parties breach such agreements
and/or misappropriate your trade secret, most states have enacted
the Uniform Trade Secrets Act, which affords injunctive and
monetary relief to trade secret owners. Please contact your
attorney for more information about this complex area of the law.
Q: Does each state have its own laws which afford protection over
inventions?
A: No. Patent protection is available exclusively through the USPTO.
In general, laws governing patent protection and the USPTO
are codified in Section 35 of the United States Code.
9. INTELLECTUAL PROPERTY
PRACTICE GROUP
TRADEMARKS Please contact one of
our offices if you
have any questions
Q: What is a trademark? How does it differ from a service mark? in the area of
A: A trademark is a word, phrase, symbol, device, design, a Intellectual Property
combination of them, or anything else used by a manufacturer or and to match you
merchant to identify its goods and distinguish them from those of with the right
others. A service mark is the same as a trademark, except it
lawyer, in the right
identifies and distinguishes the source of a service, not of a product.
“Trademark” or “Mark” is used throughout this publication to refer geographic location,
to both trademarks and service marks. to address your
Intellectual Property
Q: How do I acquire rights in a trademark? needs.
A: You acquire rights in a trademark by using the mark in commerce.
Such rights will be effective only in the geographic area of your You can also visit
actual use. our website at
www.slk-law.com
Q: Why should I perform a trademark search before using my
trademark? to learn more.
A: A full trademark search reviews existing and pending federal and
state registrations and actual uses of similar marks to determine
whether a third party might have a prior claim to exclusive use of
the mark. Before expending money and time to develop and market
your trademark, it is wise to determine whether someone else has
prior rights to a similar mark and, thus, might have the right to
interfere with your use.
Q: I searched the USPTO database to see if my mark was already
registered by someone else and found nothing. Am I cleared to
use my mark or do I need to do anything else?
A: A proper search of the USPTO records will alert you to potentially
conflicting marks only if they are registered with the USPTO or if
such a registration is pending. Since rights to trademarks come
from use, not registration, someone who is using the mark but
does not have a registration or an application could have a valid
basis for interfering with your use of the mark. Therefore, a broader
search is advisable.
Q: If rights in a trademark arise from use, not registration, why should
I register?
A: Federal registration of a trademark provides several advantages,
including:
• constructive notice to the public of your claim of ownership of
the mark;
• a legal presumption of your ownership of the mark nationally
and right to exclusive use;
• the right to use your US registration as a basis for certain foreign
registrations; and
• the ability to file with the US Customs Service to prevent
importation of infringing goods.
10. Q: Do I have to be using a trademark to register it with the USPTO?
TM A: You may file an application with the USPTO based on actual use
or based on your good faith intent to use the mark in the future.
If you file based on your intent to use the mark in the future, such
use must actually occur before the USPTO will issue the
registration.
Q: Should I register my mark with my state trademark office as well
as with the USPTO?
A: You may wish to file your trademark at the state level for a number
of reasons, including:
• you cannot file with the USPTO because your business is purely
local and you do not use your mark in interstate or international
commerce;
• state trademark registration is generally cheap and quick and
will issue long before any federal registration; and
• third parties performing trademark searches that include state
registrations will be advised of the existence of your mark.
Q: How much will it cost to register my trademark?
A: You must pay a fee set by the USPTO when filing a trademark
application with the USPTO. In addition, if you have an attorney
file the application you will need to pay for time and expenses
in preparing and filing the application and in following up and
responding to office actions filed by the USPTO in response to
the application.
Q: How long will it take to register my trademark?
A: In the best case scenario, barring any objections on statutory or
other grounds, a registration may issue in about 1 year from
initial filing. Some reasons the examining attorney may refuse
your mark include, but are not limited to:
• a likelihood of confusion exists between your proposed mark
and another mark that is registered or pending in the USPTO;
• the proposed mark is primarily merely descriptive or deceptively
misdescriptive of the goods/services;
• the proposed mark is primarily geographically descriptive or
primarily geographically deceptively misdescriptive of the
goods/services;
• the proposed mark is primarily merely a surname; or
• the proposed mark is ornamental.
Please note that this is not an exhaustive list of all possible
grounds of refusal of registration of a mark.
11. Q: How long will the protection afforded by my trademark
registration last? Please contact one of
A: Trademark protection can last for as long as you are using the our offices if you
mark. Federal trademark registrations are granted for successive have any questions
10-year terms. You must maintain the mark by filing proof of in the area of
use between the 5th and 6th year of the registration and by Intellectual Property
filing for renewal every 10 years. and to match you
with the right
Q: When do I use the TM, SM and ® symbols?
lawyer, in the right
A: You can use the ® symbol only for a federally registered trademark.
geographic location,
You can use TM or SM (which mean “Trademark” and “Service
Mark”) prior to registration. In any case, the symbol should be to address your
placed in close proximity to the actual mark. Intellectual Property
needs.
Q: I have a trademark registration. Now what should I do?
A: If you fail to protect your trademark from infringement, you could You can also visit
lose your rights in the mark. In order to protect your trademark, our website at
it is advisable to hire a third party firm to continuously monitor www.slk-law.com
the market for infringing uses. Even without such a service, if
to learn more.
you discover a possible infringing mark, you should take steps
to notify the holder of the infringing mark of your prior claims to
the mark and demand that they discontinue their use.
Q: How can I protect my trademark outside of the US?
A: In many foreign countries, rights to trademarks result from
registration, not use. There is a large industry devoted to pursuing
registrations of trademarks in various countries with the intent
of requiring a payment from the rightful owner in consideration
of relinquishing such prior registrations if and when the rightful
owner decides to enter the market. If you have plans to enter
foreign markets, it is advisable to register early to identify any
problems in advance.
Q: I want to license my trademark. Now what?
A: Trademark licensing can be a lucrative business. However, if a
trademark owner does not maintain control of the goods and
services marketed under its mark, the owner’s rights in the mark
may be lost. Therefore, it is important to license marks under a
written agreement which imposes standards on the goods and
services to be marketed and for the trademark owner to enforce
those standards. If you license a trademark and grant the licensee
certain operational support, you may have created a franchise.
Sales of franchises are regulated by federal and state laws and
require the franchisor to meet certain disclosure and filing
requirements as well as impose restrictions on the relationship,
including restrictions on termination and renewal. It is advisable
to consult an attorney knowledgeable in franchise matters
before licensing your trademark.
12. COPYRIGHTS
C Q: What is a copyright?
A: Copyright is the set of exclusive rights given to creators of original
“works of authorship, including literary, dramatic, musical,
”
artistic, and certain other intellectual works.
This set of exclusive rights includes the rights:
• to reproduce the copyrighted work in copies or phonorecords;
• to prepare derivative works based upon the copyrighted work;
• to distribute copies or phonorecords of the copyrighted work
to the public by sale or other transfer of ownership, or by rental,
lease, or lending;
• in the case of literary, musical, dramatic, and choreographic
works, pantomimes, motion pictures, and other audiovisual
works, to perform the copyrighted work publicly; and
• in the case of literary, musical, dramatic, and choreographic
works, pantomimes, and pictorial, graphic, or sculptural works,
including the individual images of a motion picture or other
audiovisual work, to display the copyrighted work publicly.
Copyrights do not protect concepts and ideas.
Q: How do I acquire a copyright?
A: Copyright vests in the author of a work the moment the work is
“fixed in a tangible medium. Fixation can take many forms. The
”
most common examples are when your work is written down,
printed, or recorded in such a way that it can be played back.
Q: I hired someone to create a work for me. Who owns the copyright
in the work?
A: The person that you hired might own the copyright. Copyright
in a work initially belongs to the person who creates the work,
unless the work is a “work made for hire, i.e., (1) a work prepared
”
by an employee within the scope of employment or (2) a work
specially ordered or commissioned, if it is of a particular type,
and if the parties agree in writing that the work is considered to
be a “work made for hire. If the work is a “work made for hire,
” ”
then the employer or other person for whom the work is prepared
is considered the author of the work and owns the copyright in
the work. Otherwise, the employer or other person for whom the
work is prepared will not own the work unless the copyright in
the work is assigned to him or her in writing.
13. Q: Who may file an application for copyright?
Please contact one of
A: The following persons are legally entitled to submit an application
our offices if you
form:
• the author. This is either the person who actually created the have any questions
work or, if the work was made for hire, the employer or other in the area of
person for whom the work was prepared; Intellectual Property
• the copyright claimant. The copyright claimant is defined in and to match you
Copyright Office regulations as either the author of the work or with the right
a person or organization that has obtained ownership of all the lawyer, in the right
rights under the copyright initially belonging to the author. This geographic location,
category includes a person or organization who has obtained
to address your
by contract the right to claim legal title to the copyright in an
application for copyright registration; Intellectual Property
needs.
• the owner of exclusive right(s). Under the law, any of the
exclusive rights that make up a copyright and any subdivision
of them can be transferred and owned separately, even though You can also visit
the transfer may be limited in time or place of effect. The term our website at
“copyright owner” with respect to any one of the exclusive www.slk-law.com
rights contained in a copyright refers to the owner of that to learn more.
particular right. Any owner of an exclusive right may apply for
registration of a claim in the work; or
• the duly authorized agent of such author, other copyright
claimant, or owner of exclusive right(s). Any person authorized
to act on behalf of the author, other copyright claimant, or owner
of exclusive right may apply for registration.
Q: What are the advantages of registering my copyright?
A: A copyright registration conveys several important rights on the
registrant, including:
• the right to sue for infringement;
• prima facie evidence of the validity of the copyright and of the
facts stated in the certificate of registration of the copyright;
and
• statutory damages and attorneys’ fees in litigation, if the copyright
is registered prior to the infringement or within three months
after the first publication of the work.
Q: What if I have not registered my copyright and I see that someone
is infringing my copyright? Can I register my copyright and
pursue the infringer?
A: You may register and then sue for infringement, however, you
will generally not be entitled to receive statutory damages or
attorneys’ fees in litigation. In order to preserve your rights to
statutory damages and attorneys’ fees, you must have already
registered your copyright with the US Copyright Office prior to
bringing suit, unless such registration is made within 3 months
after the first publication of the work.
14. Q: How much will it cost to register my copyright?
A: The filing fee for an online application is in most cases $35.00.
C The attorneys’ fees for preparing and prosecuting the application
vary based on the complexity of the application, and are generally
billed on an hourly basis.
Q: How long will it take to register my copyright?
A: From the date a copyright application is filed, it may be several
months before the certificate of registration of the copyright is
issued. However, the registration date will be the date the complete
application was received by the US Copyright Office. In certain
circumstances, an applicant may request expedition of the
processing of an application upon payment of an additional
special handling fee.
Q: How long will the protection afforded by my copyright registration
last?
A: The term of copyright in a work runs from the date of the work’s
creation for a term consisting of the life of the author plus 70
years. In the case of “a joint work prepared by two or more
authors who did not work for hire, the term lasts for 70 years
”
after the last surviving author’s death. In the case of an anonymous
work, a pseudonymous work, or a work made for hire, the term
of the copyright in a work runs for 95 years from the date of its
first publication, or 120 years from the date of its creation,
whichever expires first.
Any copyright, the first term of which is subsisting on January 1,
1978, shall endure for 28 years from the date it was originally
secured. In the case of any work copyrighted by a corporate
body (otherwise than as assignee or licensee of the individual
author) or by an employer for whom such work is made for hire,
the proprietor of such copyright shall be entitled to a renewal
and extension of the copyright in such work for the further term
of 67 years.
16. ,
CH A R LO TTE
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Suite 1800
Charlotte, North Carolina 28202
704.375.0057
Local contact - Joseph J. Santaniello
COLUM B US
Huntington Center
41 South High Street
Suite 2400
Columbus, Ohio 43215
614.463.9441
Local contact - Michael J. O’Callaghan
SA R AS OTA
240 South Pineapple Avenue
10th Floor
Sarasota, Florida 34236
941.366.6660
Local contact - Douglas A. Cherry
TA M PA
Bank of America Plaza
101 East Kennedy Boulevard
Suite 2800
Tampa, Florida 33602
813.229.7600
Local contact - J. Todd Timmerman
TO LE DO
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Toledo, Ohio 43604
419.241.9000
Local contact - Lyman F. Spitzer
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