USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
1. Intellectual Property Rights and Granting Procedure 1.1 Types of Intellectual Property Rights The USA offers protection of inventions through the intellectual property rights associated with patents or trade secrets. Patents provide broad, time-limited rights to the patentee in exchange for public disclosure of the invention. In contrast, trade secrets are not publicly known; have nar- rower rights; and, in principle, an indefinite dura- tion. Patents arise from federal law. Congress created the US patent system based on its authority in the US Constitution, which grants Congress power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”. Title 35 of the US Code contains the federal laws related to patents. Trade secret law is primarily based on state law. Specific definitions vary but, generally, a trade secret must not be known to the public, must confer economic benefit on its holder because it is not publicly known, and the trade secret-hold- er must take reasonable measures to keep such information secret. Most states have adopted the Uniform Trade Secrets Act (1979) as amend- ed, or a variation of it, so there is a measure of uniformity among the state laws. In addition to state law causes of action, the Defend Trade Secrets Act of 2016 provides a federal cause of action for trade secret misappropriation. The statutory language creates a foundation for patents and trade secrets, but the law continues to evolve through case law as courts interpret legal terms and concepts.
1.2 Grant Procedure The US Patent and Trademark Office (USPTO) conducts the patent approval process and grants any resulting patents. Applicants file either a provisional or non-provisional patent application with the USPTO. Provisional applications provide a quick and inexpensive way for inventors to establish a US filing date for their invention, which can be claimed in a non-provisional application that is filed later. A provisional application must contain a description of the invention and may include drawings necessary to understand the invention. A provisional application has fewer requirements than a non-provisional application but cannot develop into a patent without a correspond- ing non-provisional application filed within 12 months. A non-provisional patent application must include both a description of the invention and claims describing the scope of the protections sought in the patent. A non-provisional appli- cation may be filed without a prior provisional application. However, a non-provisional applica- tion may gain the benefit of the earlier filing date of a corresponding provisional application if filed within 12 months of the provisional application. Non-provisional applications undergo substan- tive examination by the USPTO to ensure com- pliance with the legal requirements for a patent. As a preliminary matter, a patent must claim patent-eligible subject matter. At a minimum, the US Supreme Court has stated that laws of nature, natural phenomena and abstract ideas are not patentable. Patents must also describe an invention that is novel and non-obvious with sufficient detail and clarity that a person of ordi- nary skill in the art of the invention can make and
570 CHAMBERS.COM
Powered by FlippingBook