intellectual property brochure

Intellectual Property PracticePatents, Trademarks, Copyrights

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.

Please contact one ofour offices if youhave any questionsin the area ofIntellectual Propertyand to match youwith the rightlawyer, in the rightgeographic location,to address yourIntellectual Propertyneeds.

You can also visitour website atwww.slk-law.comto learn more.

I N T E L L E C T U A L P R O P E R T Y

P R A C T I C E G R O U P

Protecting Your Interests

Shumaker, Loop & Kendrick, LLP’s intellectual property law practice

group counsels clients on issues relating to the creation, registration,

protection, licensing, and transfer of intellectual property rights;

assists clients in negotiating and documenting transactions involving

intellectual property; and represents clients in federal, state, and

administrative litigation of disputes involving intellectual property.

Our practice calls upon the expertise of our group in the areas of

domestic and international patent, copyright, trademark, trade dress,

trade secret, franchise, false advertising, and unfair competition law.

The following is a quick reference guide based on questions commonly

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.

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 confersthe 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, orcomposition of matter (chemical compositions and may includemixtures of ingredients as well as new chemical compounds), orany new and useful improvement thereof. The laws of nature,physical phenomena, and abstract ideas are not patentable subjectmatter.

Q: How do I obtain a patent?

A: To obtain a US patent, an application must be filed in the USPTOthrough a registered patent attorney or agent.

Q: If the USPTO grants me a patent on my invention, am I protectedthroughout the world?

A: No. US patent grants are effective only within the US, and its territories and possessions. However, separate patent protectionmay 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 theinvention has been in the public domain for more than 1 year before the date he or she applied for the patent. The underlyingpolicy is that once inventors decide to lift the veil of secrecy fromtheir work, they must choose between the protection of a federalpatent 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 makeand use the invention.





Q: What is the difference between a utility patent and a design patent?

A: A utility patent protects the way an article is used and works, while a design patent protects the way an article looks. Both utility and design patents may be obtained on an article if invention resides both in its utility and ornamental appearance.

Q: I have developed what I think is a unique business method. Is such a method patentable?

A: Possibly. Assuming your business method is new and non-obvious over the prior art, and has not already been patented, the USPTO could issue you a business method patent. Businessmethods are subject to the same legal requirements forpatentability as applied to any other process or method.

Q: What is a patentability search? Do I need one before I can file mypatent application?

A: A patentability search is designed to locate patents that help to determine the novelty and non-obviousness of an invention.Generally, a patentability search includes a review of both issuedUS, 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 registeredpatent agent or a registered patent attorney should have a patentability search performed to ensure that the invention hasnot already been patented.

Q: I worked with someone else to create an invention. To whom willthe 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 followedinstructions 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 thiscase, a granted patent will issue in the sole inventor’s name.

Q: I hired someone else to create an invention and furnish all of theideas 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 inthe USPTO in the inventor’s name. This is the person whofurnishes the ideas, not the employer or the person who furnishesthe 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.

PQ: How much will it cost to register a patent?

A: That depends. There are many costs associated with obtaining aUS 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 maintenancefees, 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 applicationcan vary. Depending on the complexity of the application, the attorneys’ fees for drafting the application can range from $7,500for 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 beable to make, use, offer for sale, sell, or import your invention inthe US.

Q: Are there any private or government organizations that can assistme in developing and marketing my invention?

A: Yes. In nearly all states, there are state planning and developmentagencies or departments of commerce and industry that seek newproduct 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 thisinformation 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’senthusiasm for their invention by making exaggerated promises,charging exorbitant fees, and procuring unduly narrow or altogetherworthless patents. The USPTO provides helpful information in avoidingscam invention promotion, marketing, and licensing companies at:www.uspto.gov/web/offices/com/iip/documents/scamprevent.pdf.





Q: When do I use the terms “patent pending” and “patent applied for?”

A: The phrases “patent pending” and “patent applied for” are interchangeable and have no legal effect, but only give informationthat an application for patent has been filed in the USPTO. Theprotection afforded by a patent does not start until the actual grant of the patent. These phrases are generally used by the patent applicant on or in conjunction with the manufacture or sale of a product or article encompassing the invention to informthe public that an application for patent on that product or articleis on file in the USPTO and generally may dissuade a potentialinfringer from intentionally copying or infringing your invention.Additionally, when an inventor is looking to market and/or havetheir invention manufactured, companies often find it more attractive to invest in a particular invention only after it has obtained “patent pending” status.

Q: Is there any danger that my attorney or the USPTO will give others information contained in my patent application while it is pending?

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 monthsafter 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 mayrequest a copy of the application file. After the patent is issued,the USPTO file containing the application and all correspondenceleading 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 fromusing 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 byother 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 sellyour invention, at your direction, by entering into a licensing arrangement with such third parties. It is important, however, toconsult your attorney prior to entering into any such arrangementswith third parties to ensure that you maintain your rights in andto 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.

PQ: I see that someone is infringing my patent. Do I have to do

anything about it?

A: No, you do not have to do anything, but you should do whatevernecessary to protect your rights in and to your patent. If a patentis infringed, the patentee may sue for relief in the appropriate federal court. The patentee may ask the court for an injunctionto 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 rightsmay 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 inregional patent offices. Almost every country has its own patentlaws, and a person desiring a patent in a particular country mustmake 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 obtaina 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 wouldlike to keep your invention out of the public domain for a longerperiod 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-competitionagreements. In the event that your employees, agents, representatives, or other third parties breach such agreements and/or misappropriate your trade secret, most states have enactedthe Uniform Trade Secrets Act, which affords injunctive andmonetary 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 overinventions?

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.

TRADEMARKS Please contact one ofour offices if youhave any questionsin the area ofIntellectual Propertyand to match youwith the rightlawyer, in the rightgeographic location,to address yourIntellectual Propertyneeds.




Q: What is a trademark? How does it differ from a service mark?

A: A trademark is a word, phrase, symbol, device, design, a combination of them, or anything else used by a manufacturer ormerchant to identify its goods and distinguish them from those ofothers. A service mark is the same as a trademark, except itidentifies and distinguishes the source of a service, not of a product.“Trademark” or “Mark” is used throughout this publication to referto both trademarks and service marks.

Q: How do I acquire rights in a trademark?

A: You acquire rights in a trademark by using the mark in commerce.Such rights will be effective only in the geographic area of youractual use.

Q: Why should I perform a trademark search before using my trademark?

A: A full trademark search reviews existing and pending federal andstate registrations and actual uses of similar marks to determinewhether a third party might have a prior claim to exclusive use ofthe mark. Before expending money and time to develop and marketyour trademark, it is wise to determine whether someone else hasprior 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 potentiallyconflicting marks only if they are registered with the USPTO or ifsuch 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 validbasis for interfering with your use of the mark. Therefore, a broadersearch is advisable.

Q: If rights in a trademark arise from use, not registration, why shouldI 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 foreignregistrations; and

• the ability to file with the US Customs Service to preventimportation of infringing goods.

TMQ: Do I have to be using a trademark to register it with the USPTO?

A: You may file an application with the USPTO based on actual useor 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, suchuse must actually occur before the USPTO will issue theregistration.

Q: Should I register my mark with my state trademark office as wellas with the USPTO?

A: You may wish to file your trademark at the state level for a numberof reasons, including:• you cannot file with the USPTO because your business is purely

local and you do not use your mark in interstate or internationalcommerce;

• state trademark registration is generally cheap and quick andwill issue long before any federal registration; and

• third parties performing trademark searches that include stateregistrations 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 attorneyfile 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 orother 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 deceptivelymisdescriptive of the goods/services;

• the proposed mark is primarily geographically descriptive or primarily geographically deceptively misdescriptive of thegoods/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.



Q: How long will the protection afforded by my trademarkregistration last?

A: Trademark protection can last for as long as you are using the mark. Federal trademark registrations are granted for successive10-year terms. You must maintain the mark by filing proof of use between the 5th and 6th year of the registration and by filing for renewal every 10 years.

Q: When do I use the TM, SM and ® symbols?

A: You can use the ® symbol only for a federally registered trademark.You can use TM or SM (which mean “Trademark” and “Service Mark”) prior to registration. In any case, the symbol should be placed in close proximity to the actual mark.

Q: I have a trademark registration. Now what should I do?

A: If you fail to protect your trademark from infringement, you couldlose your rights in the mark. In order to protect your trademark,it is advisable to hire a third party firm to continuously monitor the market for infringing uses. Even without such a service, if you discover a possible infringing mark, you should take steps to notify the holder of the infringing mark of your prior claims tothe 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 pursuingregistrations of trademarks in various countries with the intent of requiring a payment from the rightful owner in considerationof relinquishing such prior registrations if and when the rightfulowner 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 markmay 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 enforcethose standards. If you license a trademark and grant the licenseecertain 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 advisableto consult an attorney knowledgeable in franchise matters before licensing your trademark.

CCOPYRIGHTS

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 audiovisualworks, 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 otheraudiovisual 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. Themost 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 copyrightin 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 preparedby 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 tobe 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 preparedis considered the author of the work and owns the copyright in the work. Otherwise, the employer or other person for whom thework is prepared will not own the work unless the copyright in the work is assigned to him or her in writing.



Q: Who may file an application for copyright?

A: The following persons are legally entitled to submit an applicationform:• the author. This is either the person who actually created the

work or, if the work was made for hire, the employer or otherperson for whom the work was prepared;

• the copyright claimant. The copyright claimant is defined inCopyright Office regulations as either the author of the work ora person or organization that has obtained ownership of all therights under the copyright initially belonging to the author. Thiscategory includes a person or organization who has obtained by contract the right to claim legal title to the copyright in anapplication for copyright registration;

• the owner of exclusive right(s). Under the law, any of theexclusive rights that make up a copyright and any subdivisionof them can be transferred and owned separately, even thoughthe transfer may be limited in time or place of effect. The term“copyright owner” with respect to any one of the exclusiverights contained in a copyright refers to the owner of thatparticular right. Any owner of an exclusive right may apply forregistration 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 authorizedto act on behalf of the author, other copyright claimant, or ownerof exclusive right may apply for registration.

Q: What are the advantages of registering my copyright?

A: A copyright registration conveys several important rights on theregistrant, including:• the right to sue for infringement;

• prima facie evidence of the validity of the copyright and of thefacts stated in the certificate of registration of the copyright;and

• statutory damages and attorneys’ fees in litigation, if the copyrightis registered prior to the infringement or within three monthsafter the first publication of the work.

Q: What if I have not registered my copyright and I see that someoneis 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 orattorneys’ fees in litigation. In order to preserve your rights tostatutory damages and attorneys’ fees, you must have alreadyregistered your copyright with the US Copyright Office prior tobringing suit, unless such registration is made within 3 monthsafter the first publication of the work.

CQ: How much will it cost to register my copyright?

A: The filing fee for an online application is in most cases $35.00. The attorneys’ fees for preparing and prosecuting the applicationvary based on the complexity of the application, and are generallybilled 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 severalmonths before the certificate of registration of the copyright is issued. However, the registration date will be the date the completeapplication was received by the US Copyright Office. In certaincircumstances, 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 registrationlast?

A: The term of copyright in a work runs from the date of the work’screation 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 anonymouswork, a pseudonymous work, or a work made for hire, the termof 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 termof 67 years.



Q: When do I use the © symbol?

A: The © symbol is used any time that you desire to give notice thatyou are claiming copyright in a work that you have created, irrespective of whether the copyright has been registered. The copyright notice generally includes three elements:

• the symbol ©, or the word “Copyright,” or the abbreviation “Copr.;”

• the year of first publication of the work; and

• the name of the owner of the copyright in the work.

You may add to the end of the notice the words, “All rights reserved.” For example, a copyright notice might read“Copyright © 2004 ABC Corp. All rights reserved.” Irrespectiveof whether you register your copyright in a particular work, it isadvisable to place a copyright notice on all copies of the work.

Q: I see that someone is infringing my copyright. Do I have to do anything about it?

A: No, but you may eventually lose your right to pursue the infringement if you do not. The statute of limitations for a copyrightinfringement action is 3 years after the claim accrues. If you arepursuing injunctive relief for an infringement, you may be subjectto an equitable defense of laches if you unduly delay in pursuingthe infringement and the defendant establishes that he or she has been materially prejudiced by the delay. There is, however, a strong presumption that delay is reasonable so long as the3-year statute of limitations has not lapsed.

Q: Can someone use my copyrighted work without my permission?

A: There are many limitations on the exclusive rights granted by theUS Copyright Act. If you become aware of a possible infringement,consult with your attorney so that they can assess whether the use of your work falls under one of these exceptions.

Q: How can I protect my copyright outside of the US?

A: The US, together with most other countries, is a party to the BerneConvention, by which the copyrights of US authors are protectedautomatically in other member countries, and vice versa. The USis also a party to the Universal Copyright Convention and otherbilateral treaties with many other countries. In most cases, thereis no need for a US author to register copyrights outside of theUS in order to enjoy protection in foreign countries.

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CHARLOTTEFirst Citizens Bank Plaza128 South Tryon StreetSuite 1800Charlotte, North Carolina 28202704.375.0057Local contact - Joseph J. Santaniello

COLUMBUSHuntington Center41 South High StreetSuite 2400Columbus, Ohio 43215614.463.9441Local contact - Michael J. O’Callaghan

SARASOTA240 South Pineapple Avenue10th FloorSarasota, Florida 34236941.366.6660Local contact - Douglas A. Cherry

TAMPABank of America Plaza101 East Kennedy BoulevardSuite 2800Tampa, Florida 33602813.229.7600Local contact - J. Todd Timmerman

TOLEDO1000 Jackson StreetToledo, Ohio 43604419.241.9000Local contact - Lyman F. Spitzer

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