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Intellectual Property

Patents in the U.S.

The U.S. Patent and Trademark Office (USPTO) is the governmental authority that examines patent applications and issues patents. A patent is a type of property right that gives the patentee the right to exclude others from making, using, offering to sell, selling or importing into the United States the subject matter for a limited time.

There are three types of patents in the United States: utility, design and plant. There are two types of utility and plant patent applications – provisional and nonprovisional. A provisional patent application is not examined by a patent examiner and is automatically abandoned 12 months after its filing date. A nonprovisional application must be filed during the pendency of the provisional application. A nonprovisional application is examined by a patent examiner and may result in a patent. A plant patent may cover asexually reproduced plants, other than a tuber propagated plant, or a plant found in an uncultivated state.

A nonprovisional utility patent application must be submitted in the English language or be accompanied by a translation in the English language and a statement that the translation is accurate and a fee. If a nonprovisional utility application is filed in a language other than English without the translation, statement or fee, the applicant will be given a notice and time period to submit the missing item(s). A nonprovisional utility patent application must include a specification, including a description, a claim, drawings, an oath or declaration, and fees.

The process for obtaining a patent can vary greatly in terms of time. A qualified lawyer should assist you in this process.

U.S. Patents for Foreign Inventors

Any inventor, regardless of citizenship, may apply for a patent in the U.S. having the same footing as a U.S. citizen. Nonetheless, there are issues of special interest to applicants located in foreign countries.

A patent will not be granted in the U.S. if the invention was patented abroad before applying in the U.S. if the foreign patent application was filed more than 12 months before the U.S. filing date. A certified copy of the foreign application is required to claim priority.

Also, the applicant must affirm the country in which the application was filed and provide the filing date. When the applicant is in a foreign country, the affirmation is made in the presence of a diplomatic officer of the U.S. or before any officer having an official seal and authorized to administer oaths in the foreign country. The application papers must be ribboned and sealed or each individual paper must be impressed with the official seal of the officer before whom the affirmation was made.

Trademarks and Service Marks

A trademark or service mark consists of any word, name, symbol, device or combination, used or intended to be used to identify and distinguish the goods or services of one provider from those of others, and to indicate the source of the goods or services. Registration of the mark provides notice to the public of the registrant's claim of ownership of the mark, legal presumption of ownership nationwide, and exclusive right to use the mark on or in connection with the goods or services.

A trademark application identifies a standard character mark, a design mark, or a sound mark and the goods or services to which the mark will apply. The basis for filing the mark must be designated as either "use in commerce" or "intent to use." The types of commerce covered are interstate, territorial, and between the United States and a foreign country.

If the mark was used in commerce, it can be filed under the "use in commerce" basis. If the mark has not been used, but is intended to be used in the future, it must be filed under the "intent to use" basis. Use is established by providing the date of first use of the mark anywhere, the date of first use, and an example of the use. Under certain international agreements, you may file in the U.S. based on a foreign application, foreign registration, or international registration.