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How to Apply for Patents and Trademarks
IMR, April 1999Steve Singer, CFC, spent four years and about $10,000 to obtain a patent on an industry-related invention. Singer, president of Micro Format Inc., a distributorship in Wheeling, Ill., received a patent last year for thermochromic ink used as a security feature on checks. "It's an expensive process, but if you patent something that's valuable, it's marketable," says Singer. He's proof of that. Singer capitalized on his invention when he sold the technology to Verify First Technologies, a supplier of document security features based in Paso Robles, Calif.
Patents and trademarks are more commonplace in the manufacturing side of the industry. Perhaps the most well-known patent is on Standard Register's VOID pantograph technology. Some independent manufacturers such as FormStore Incorporated®, Fenton, Mo., and TRANSKRIT®, Roanoke, Va., have trademarked their company names as well as products. But distributors such as Singer find value in obtaining them, too.
"They are an asset to your company," says Singer. "Any patents or trademarks you have are company property that have intrinsic value. If you hold them, you're seen [by prospects] as a professional organization."
The two kinds of intellectual property, granted by the U.S. Patent and Trademark Office, serve different purposes.
Patents: Protecting an Invention
A patent for an invention is a grant of property right by the U.S. government to the inventor. The right conferred "excludes others from making, using, offering for sale or selling" the invention in the United States, according to federal law. Inventors can obtain patents on "any new and useful process, machine, manufacture or composition of matter," the law says. The patent lasts 20 years from the application date, and maintenance fees are required.There are two types of applications for patents: a non-provisional application and a provisional application. A non-provisional application, made to the assistant commissioner for patents, should include a written document that comprises a specification (description and claims) and an oath or declaration; a drawing, if necessary; and the filing fee. The basic filing fee is $380 for companies with less than 500 employees.
In 1995, the PTO began offering inventors the option of filing a provisional application, which was designed to provide lower cost first-patent filings. Claims and oaths or declarations are not required for a provisional application. The provisional application fee is $75 for companies with fewer than 500 employees. After filing a provisional application, inventors can use the term "patent pending" in connection with the invention.
Trademarks: Branding a Product
A trademark relates to any word, phrase, symbol or device used in trade to indicate the source or origin of goods and to distinguish them from the goods of others. In addition to his patent for thermochromic ink, Singer has received numerous trademarks for paper his company markets: the Super Color® line of ink jet products, Banner Band® paper rolls for signs and banners, and Virtual Reality Paper® with a 3-D effect are a few of Singer's trademarks. "If you're going to build a product line, you should register a trademark," he suggests. "It's a product identification, and it gives you legal ground to protect the line."Trademark rights may be used "to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling them under a non-confusing mark," according to the PTO. A service mark is the same as a trademark except it identifies and distinguishes the source of a service rather than a product.
Unlike patents, trademark rights last indefinitely if the owner continues to use the mark. The term of a trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the initial registration date, the registrant must file an affidavit to keep the registration alive.
Applicants in the United States can file for registration with the assistant commissioner for trademarks in two ways: If applicants have begun using the mark, they file a "use" application; if applicants haven't used the mark, they file an "intent-to-use" application. Both require a written application form, a drawing of the phrase or symbol to be trade marked on a separate piece of paper, and the filing fee, which is $245. A "use" application requires three specimens showing actual use of the mark with the goods.
Anyone who claims rights on a mark may use the trademark (™) or service mark (SM) symbols. It isn't necessary to have a registration, or even a pending application, to use these designations. The registration symbol (®) may be used only when the mark is registered with the PTO.
The PTO receives hundreds of thousands of applications for patents and trademarks each year. In 1998, it granted 90,649 patents, and during fiscal 1997 it registered 112,509 trademarks. However, applying for a patent or trademark is not something you want to do on a whim, says Singer. The process can be time-consuming and expensive, and it often requires the help of an attorney. "If you're doing it simply for the sake of doing it, don't," says Singer. "But if it adds value to your company or protects something you created, then do it. Our industry is changing rapidly. We have to come up with unique reasons for companies to turn to us." A patented product or trademarked brand name may provide that competitive edge.
For more information on patents and trademarks, contact the U.S. Patent and Trademark Office at (800) 786-9199 or (703) 308-4357. Visit the PTO's Web site.