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IP Q&A: Expiry Dates, Copyrighting Performances, Patenting Packages

    
copyrighting performances patenting packages

*This blog post is continued from IP Q&A part 1 and part 2. Please see the disclaimer included in part 1.

7. Do patents and trademarks have expiry dates?

Trademarks must be renewed between the 5th and 6th year after registration, the 9th and 10th year after registration, and every ten years thereafter. If a renewal is not filed showing continued use of the mark with the goods/services in the application, then the mark will go abandoned. A trademark can be used in perpetuity without registration but if you want the registration to stay “alive” then renewals must be filed.

Patents expire. The life of a patent is known as the “patent term.” The maximum patent term attainable is twenty (20) years measured from the filing date of the non-provisional patent application. Thus, if a patent application is pending for three years before being issued, about seventeen (17) years remain for the maximum patent term. The USPTO does provide “patent term adjustments” that extend the patent term for patent applications that take an extraordinary long time to issue through no fault of the applicant.

In order to obtain the benefit of the full twenty year patent term, a patent owner must pay three scheduled maintenance fees at various times during the life of the patent. The first maintenance fee is due 3.5 years after the issue date, and it extends the patent term by four (4) years, otherwise the patent will expire on the four (4) year anniversary of the patent’s issue date. The second maintenance fee is due 7.5 years after the issue date, and it extends the patent term by another four (4) years, otherwise the patent will expire on the eight (8) year anniversary of the patent’s issue date. Finally, the third maintenance fee is due 11.5 years after the issue date, and it extends the patent term to the full twenty years, otherwise the patent will expire on the twelve (12) year anniversary of the patent’s issue date.

8. How to you copyright music that you have performed publicly?

The work needs to be recorded in some way and then it is important to choose the right application to protect what is intended. Is the sound recording what is being protected? Or, is it a musical or dramatic work? The application form at the Copyright Office can be found here: http://www.copyright.gov/forms/formpa.pdf.

9. If your idea has been patented, should you still pursue your plan? Should you file a new patent with tweaks to move forward?

A patent should be thought of as a sword and not a shield. That is, a patent holder does not necessarily have an unrestricted license to make or sell their invention per se. Instead, the patent holder has the right to exclude others from making or selling their invention. As such, if entity A has a patent for a new engine, entity A can exclude others (i.e., sue them) from making or selling the novel engine. If entity B has a patent for an improvement on entity A’s engine, then entity B can exclude others, including entity A, from making or selling theimproved engine. Thus, in this scenario entity A can continue to make and sell their own engine without the improvements without fear of litigation from entity B since entity B only has a patent for the improvements. By contrast, entity B cannot make or sell their improved engine without a license from entity A because entity B is inevitably making or selling the underlying entity A engine every time entity B makes or sells its improved engine.

Therefore, deciding whether or not to pursue a patent for improvements on an existing, patented invention ultimately is a business decision. The applicant needs to consider that even if they are awarded a patent for the improvements they will not be able to make or sell the improved device themselves without a license from the original device’s patent holder. However, the applicant may determine that their improvements are so valuable that the original patent holder may desire to license the applicant’s improvements.

With all that said, a person who discovers that their idea has already been patented may not necessarily be prevented from making and selling their invention. A patent attorney may closely review the existing patent in question and determine that it is unenforceable (e.g., it is expired) or that it may be easily “designed around.” Not all patents are created equal: some are broad patents that may not be easily designed around while some are narrow patents that may be more easily designed around. Designing around a patent involves making or selling a product or practicing a method while leaving out a feature of the product or method that is specifically “claimed” by the existing patent. Referring to the engine example given above, if entity A’s engine patent specifically claims (i.e., requires) that the engine provide a compression ratio of 11.0 or greater, entity B may still make or sell an engine that is substantially similar to entity A’s patented engine so long as entity B’s engine has a compression ratio that is, for example, less than 11.0.

Please be aware that deciding to make or sell a product or practice a method that is similar to one described in a valid patent entails great risk, including the specter of facing a patent infringement lawsuit. Please see a patent attorney before taking any such action.

10. How do you submit product packaging for copyright registration? Is it a PDF or a photo, or the actual packaging?

You can send in digital photographs showing each view (top, bottom, front back, sides, etc.) of the packaging. It is considered a work of visual art.

*Answers were provided by Tina Loza and Raz Messerian.