From IPE: Ten Things to Know to Be Effective In Working on Intellectual Property Matters

Ten Things to Know to Be Effective In Working on Intellectual Property Matters
guest author: Maxine Lynn Barasch
Intellectual property (IP) laws can seem like a maze. From understanding the different forms of IP to knowing how to obtain protection for each, there is a lot to learn.  Figuring it all out can be daunting. Here are the top ten things to know when working on IP matters.

  1. Know the forms of Intellectual Property. Intellectual Property (“IP”) describes four categories of intangible assets
    1. Patents protect inventive technology
    2. Trademark registrations protect brands, logos, taglines, etc.
    3. Copyright registrations protect creative works, such as books, music, and movies
    4. Trade secret is applicable to secrets that give a company a competitive edge in the marketplace
  1. Know the main types of Patents and Applications
    1. provisional patent application is basically a place holder. It gets the client a filing date for whatever is disclosed within it, so long as a utility application with a proper “priority claim” is filed within a year from the date of the filing of the provisional application.
    2. utility patent protects processes, machines, articles of manufacture, or chemicals
    3. design patent protects ornamental characteristics of useful items
  1. Know the requirements for invention
    1. Novelty requires that the invention was not known to the public prior to the filing date of the patent application
    2. Non-obviousness requires that the invention was not obvious in light of art prior to the filing date
    3. Usefulness requires that the invention provides some benefit from use
  1. Know the timelines for filing in the U.S., in foreign countries, and internationally via the Patent Cooperation Treaty (PCT)
    1. utility patent application must be filed within one year of the filing of a provisional patent application in order to benefit from the filing date of the provisional
    2. PCT application must be filed within one year of the priority date, meaning the first filing claiming a particular invention
    3. Check the laws of foreign countries (as well as applicable treaties) for the rules of applicable to each
  1. Know how to use the U.S. Patent & Trademark Office’s online patent systems at
    1. Private PAIR allows you to see and file patent documents online for clients
    2. Public PAIR allows you to view and access documents in published patent cases
  1. Know how to navigate the trademark systems at
    1. TESS allows you to search trademarks at the USPTO
    2. TEAS allows you to file trademark forms online
    3. ESTTA allows you to file forms online relating to trademark appeals at the Trademark Trial and Appeal Board
  1. Know how to choose and use the proper forms for online filing
    1. There are various forms for applications
    2. A “use” application is filed with a different form than “intent-to-use
    3. Forms are also provided for responses to Office Actions, voluntary amendments, declarations, and renewals, etc.
  1. Know the requirements for copyright
    1. The work must be original, meaning independently created by the author
    2. The work must be fixed in a tangible medium, such as paper, CD, DVD, etc.
  1. Know how to use the U.S. Copyright Office website ( website for online filing
    1. The Electronic Copyright Office Registration System allows you to file applications for clients online
    2. The website provides information and forms for recording documents
    3. The website allows you to research copyrighted works
  1. Know basics of protecting trade secrets
    1. non-disclosure agreement (NDA) is a contract that binds a party to refrain from disclosing particular information to third parties
    2. non-compete agreement is a contract that binds a party to refrain from competing with the other party for a particular period of time
Maxine Lynn Barasch is an attorney with the law firm of Keohane & D’Alessandro, PLLC in Albany, NY. She focuses her practice exclusively on intellectual property matters. Note that the content of this article is not legal advice, and therefore, should not be relied on as such.

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