Intellectual Property Law Firm FAQs
Many of our clients are unsure of what IP services or strategies they need. Over the years, we’ve acquired a great deal of insight from serving some of the most innovative companies in Utah and beyond. Below are some of the most frequently asked questions our intellectual property law firm receives from new and existing clients.
Frequently Asked Questions:
Giving You the Answers You Need
Why should I hire Project CIP?
We are more accessible, have more experience, and do better work at lower prices than our competitors.
What are the most common intellectual property mistakes businesses make?
Some of the more common mistakes that we see involve failing to:
- Perform clearance searches for products and product names and thereby infringing on others’ rights
- Think through possible protection strategies and thereby not harvesting valuable intangible assets
- Consider intellectual property within markets, industries, and business objectives and thereby not having a strategic approach or center
- Think globally and thereby exposing manufacturers and supply chains to risks overseas
Is my invention patentable?
Patent law governs whether an invention is protectable with a patent. A few categories of inventions are excluded from patentability. Many other invention types may be patented. Of these inventions, a patent may be obtained if the underlying invention: (1) hasn’t been invented before (anticipated); and (2) wouldn’t be obvious to invent. A prior art or patentability search and analysis is often required in order to determine whether a particular invention meets these criteria. Some exceptions to this may include certain provisional patent or design patent applications. But, an inventor should always consult a good patent attorney to determine the best path forward.
How do I get a patent?
Obtaining a patent is the last step in the legal process of patent application, patent prosecution, and patent examination. As first steps, proper pre-filing due diligence (like prior art search) should be conducted. A patent application should be carefully and precisely drafted with understanding of the prior art and patent law and regulations. A tailored patent application is then filed with the United States Patent and Trademark Office (USPTO) (or other patent office as applicable). Non-provisional patent applications are assigned to a patent examiner for substantive examination. Often, patent examiners initially reject patent applications. The patent attorney then advocates for the inventor before the patent examiner by addressing rejections, citing facts and case law, and further tailoring the claims of the application to obtain the broadest rights possible. Depending on the type of patent sought, this process can last for many months or even years. According to current USPTO statistics, the total average duration of patent examination is about twenty-four (24) months. The USPTO has helpful resources for inventors to educate themselves about the patent process.
How much does it cost to get a patent?
The cost of obtaining a patent varies as a function of the complexity of the invention, the type of patent sought, and the specific application path. For simple provisional or non-provisional patent applications, costs begin around $3,000 (including filing fees). Some design patents can be obtained for under $4,000. However, non-provisional, utility patent or international (PCT) applications may cost between $15,000 and $25,000 or more over the course of 3 – 5 years. A good patent attorney can help you identify your business objectives, determine odds for success, the best paths forward, and estimated costs.
Do I need a patent attorney to get a patent?
The patent process is complicated. Although an inventor is not legally required to use a patent attorney, he or she definitely should as a practical matter. The United States Supreme Court has stated that a patent application is one of the most difficult legal instruments that can be drafted. Moreover, the USPTO states:
The preparation of an application for patent and the conducting of the proceedings in the United States Patent and Trademark Office (USPTO or Office) to obtain the patent is an undertaking requiring the knowledge of patent law and rules and Office practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention. Inventors may prepare their own applications and file them in the USPTO and conduct the proceedings themselves, but unless they are familiar with these matters or study them in detail, they may get into considerable difficulty. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention. Most inventors employ the services of registered patent attorneys or patent agents.
Will a patent really protect me?
Inventors may be justifiably skeptical of patents. Significantly, like any property right, the rights conveyed by a patent are limited. So, a patent is not typically a silver bullet that will automatically prevent or destroy all competition. Patents are more like “moats” that can deter competition. Some patents may create moats that are narrow, while others create moats that are very wide. Specific business objectives should be evaluated to determine whether a patent makes sense in a particular case. Often, obtaining a patent can be an important step to create business assets, value and market share, competitive advantage, and position for future transactions like investment or purchase.
Can I register my trademark?
Trademark law governs whether a trademark is protectable through federal registration. Some categories of trademarks are automatically unprotectable, for example, if they are too generic or descriptive. Beyond this, a trademark may qualify for registration if it is not confusingly similar with a prior mark. Often, a trademark clearance search is required to identify relevant prior marks and whether the proposed mark is confusingly similar with any of them. Trademark clearance searching should be performed by a qualified and experienced trademark attorney. Although one can always prepare and file a trademark application without conducting such analysis, this is not generally recommended.
How do I register my trademark?
Obtaining a registered trademark is a legal process. Proper pre-filing work—like trademark clearance searches and analysis—should be conducted. After this, trademark applications must be carefully and precisely drafted with understanding of trademark law and regulations and the relevant goods and/or services. Once prepared, a trademark application is filed with the United States Patent and Trademark Office (USPTO) (or other trademark office as applicable). The application is assigned to a trademark examining attorney and substantively examined. Applications may be rejected for any number of legal reasons. However, if proper pre-filing work has been performed, the risk of rejection is significantly reduced. In any event, if the trademark application is rejected, the trademark attorney addresses the rejections with facts and case law to obtain the broadest possible rights for the applicant. The overall trademark examination process can last for months or even a year or more. According to current USPTO statistics, the total duration of the trademark examination process is about ten (10) months. The USPTO has helpful resources to educate yourself about the trademark registration process.
How much does it cost to register a trademark?
The exact cost of registering a trademark varies as a function of the breadth of goods and services the applicant wants to cover with the mark. But generally, the median cost of the first steps of trademark clearance, search, opinion, and application in the United states is around $2,000 (less government fees, which start at $225). Project CIP prides itself on performing this work at a cost significantly below this. We offer trademark clearance searches at $700 and trademark application and filing at $400. Most trademarks can be registered at an overall cost of around $1,750.
Do I need a trademark attorney to register a trademark?
You are not legally required to use an attorney to register a trademark. But, getting a trademark registration can be complex. The United States Patent and Trademark Office (USPTO) highly recommends that you use an experienced trademark attorney. And, studies have shown that your odds of success increase dramatically if you do so.
What is the difference between patent, trademark, and copyright?
Patents, trademarks, and copyrights are different types of intellectual property that can each (or together) protect different facets of products and brands. The USPTO has great resources to explain the differences between these intellectual property types. But roughly:
- A patent for an invention is the grant of a property right to the inventor
- A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others; and
A copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.
Do I need a copyright registration?
Although, in theory, copyright rights attach upon creation of a work. There are many benefits to formal registration. For example, copyright registration is required before enforcing copyright in the federal court system. Also, if a work is registered before infringement begins, authors are entitled to: (a) elect statutory damages against the infringer of up to $30,000 per work; (b) attorney’s fees; and (c) costs. Next, copyright registration optimizes the effectiveness of removing infringing online content under the Digital Millennium Copyright Act (DMCA). Finally, a U.S. copyright registration can convey similar benefits and rights in other countries through treaty.