08-17-12 | Blog Post
Does someone else own it? That’s the practical starting point for many intellectual property issues that come up in my practice. Whether we’re talking about patents (which protect machines, systems, and even industrial designs), trademarks (which protect brand identifiers such as product or service names), or copyrights (which protect literary and artistic works, including software code, GUIs, webpage content, etc.), it is often necessary to identify whether your activities, present or planned, may be covered by someone else’s intellectual property.
And while it is still usually necessary to consult an attorney at some point in the process (and preferably early in the process since the old saying that “an ounce of prevention is worth a pound of cure” is nowhere more true than in the context of litigation), the Internet has enabled individuals and businesses to do a considerable amount of upfront intelligence gathering on their own. Here are a few examples:
The website for the Copyright Office (www.copyright.gov), though admittedly pretty bland visually, is still a great resource for searching copyright registrations. Through this site, you can search the records of the Office by the title of the work (if you know it, which is not usually the case), or by the name of the author or other owner.
While the site doesn’t allow you to actually see the work that was deposited (which can sometimes be a disadvantage if the title is ambiguous), you may be able to determine if a competitor or complaining party has a registered copyright. Particularly for copyrights, this information can be very important; even though it’s possible to infringe an unregistered copyright, the owner can’t recover attorneys’ fees or court-determined statutory damages for infringement occurring before registration.
The U.S. Patent and Trademark Office (“USPTO”) is responsible for granting trademarks as well as patents, so its website (www.uspto.gov) is the gateway for searching both. The “Trademark” tab on the site’s homepage will take you to the trademark landing page, through which you can search the database by, among other things, keywords in a trademark, the goods or services covered by the registration or application, and the name of the trademark owner.
It’s important to remember that trademarks can be protected — though to a more limited extent — even if not registered in the USPTO. Because of this, most trademark searching is done either to check if a proposed trademark is available, or to look at the details of another party’s trademark registration after they have made an infringement charge.
By far and away the most searching I do in my practice is of the USPTO’s patent database, which can be reached through the “Patent” tab on the site’s homepage. Here you can search the database by, among other things, keywords that may appear in patents of interest, by classification numbers (kind of a Dewey Decimal System for categorizing patents), by inventor name, by owner name, etc.
You can also look at the entire record of back-and-forth correspondence for issued patents and published applications, which is key to evaluating their true scope. A word of caution, however – if you find what you’re looking for, that’s great. But if not, don’t take that as a sign that it’s not there. The sheer size of the database (there are about 8 million patents) and the difficulties inherent in searching by keywords (since what one patent may call a “widget” another can call a “gear”) make searching the patent records a skill acquired over years of practice.
Because I’m an attorney, I have to end by noting that this is not, nor is it a substitute for, legal advice. These and other sites are great tools for anyone to gather information, and even keep legal costs down, but using them to make business decisions without professional guidance is like using WebMD to skip a doctor’s visit because you think you’ve diagnosed your condition.
Christopher A. Mitchell, Attorney, Dickinson Wright
Mr. Mitchell focuses his practice in the areas of consumer products, life sciences and medical devices. He has represented biochemical producers, manufacturers of food products, sporting goods and building products, food service franchisors, consumer product companies, medical device manufacturers and online service providers.
Mr. Mitchell’s industry experience includes working in a research capacity with the UpJohn Company in the department of Bioprocess Research and Development.
Mr. Mitchell counsels clients in adopting and leveraging intellectual property beginning with the earliest phases of product development and continuing beyond commercialization. He has significant experience in the areas of patent, trademark and copyright procurement and litigation, including administrative proceedings. He frequently handles the international procurement of intellectual property, including PCT applications before the World Intellectual Property Organization.
Mr. Mitchell has handled numerous copyright, trademark and patent infringement lawsuits, representing the interests of plaintiffs as well as defendants.
Mr. Mitchell is admitted to practice before the U.S. Patent and Trademark Office and the Canadian Intellectual Property Office.
Christopher Mitchell was a guest speaker during an Online Tech hosted webinar, mHealth Intellectual Property 101 (watch the recording and view a slideshow). Don’t miss our next upcoming healthcare webinar, Implications of Recent Medicare Announcements on Trends in Physician Payment Methods, next Tuesday, August 21 @2PM ET.