Want to join the Utah Business Law Section? Visit https://services.utahbar.org/ and use the "My Associations" portal card to access our exclusive resources today.
Home » Treatises » Copyrights and Patents
INTELLECTUAL PROPERTY OVERVIEW
Copyright is a protective right given to authors of creative original works to protect against most forms of unauthorized copying, distribution, and derivation. Generally, copyrights are one type of protection for intellectual property. Intellectual property generally refers to intangible assets that someone claims ownership in by virtue of creating those assets. Additionally, intangible assets may be transferred from the original creator to another person or entity.
Intellectual property rights typically cover four general areas:
PATENTS Patents cover inventions of new things. In the United States there are three types of patents: utility, design, and plant. Patents are issued only after a thorough examination process administered exclusively by the federal government. TRADEMARKS Trademarks cover words, graphics, logos, and even sounds and colors that are used as branding for specific products or services.
Trademarks can be federally registered after an examination process with the federal government. Trademarks can also be registered with state governments. COPYRIGHTS Copyrights cover works of authorship recorded in a tangible medium. Copyrights are registered with the federal government, but do not go through an examination process. TRADE SECRETS Trade secrets cover any form of secret information that derives independent economic value for the secret owner. Trade secrets are not examined or registered by government bodies, but are kept confidential.
Independent Copyright Systems Copyright systems are administered by governments and international organizations to allow inventors to receive exclusive protection for their works of authorship. Different countries and international organizations have their own laws, rules, and procedures to apply for or enforce copyright protection.
In addition to forming their own copyright systems, many countries also participate in international treaties or agreements that specify procedures for protecting the rights of foreign works from other countries. The protection of foreign works often depends on “points of attachment” which show a connection between an eligible work to be protected and member countries participating in a particular treaty. For example, an author’s nationality can provide a point of attachment. Similarly, the location where the work is first published can provide a point of attachment. However, some countries offer little or no copyright protection to foreign works. A list of countries and applicable relations maintained by the US with those countries can be reviewed in Circular 38A, International Copyright Relations of the United States, available online from the US Copyright Office.
The copyright laws and regulations established and administered by different governing bodies can change over time. Copyright laws, rules, and procedures can change as new laws are passed, new regulations are adopted, or new interpretations are established through the courts. This chapter will focus primarily on the copyright system currently established in the United States, with some additional discussion of the international patent application system.
Original Works of Authorship The fundamental premise of the U.S. copyright system is to offer authors a mechanism to protect their “original works of authorship” from unauthorized copying and use. Under constitutional and statutory authority, the U.S. government agrees to give certain rights to authors in a number of different artistic categories, including:
Literary works Musical works, including any accompanying words Dramatic works, including any accompanying music Pantomimes and choreographic works Pictorial, graphic, and sculptural works Motion pictures and other audiovisual woks Sound recordings Architectural works
These categories can be interpreted very broadly, for example, to cover computer programs as “literary works” or architectural plans as “pictorial, graphic, and sculptural works.” Also, the original works of authorship must be fixed in a tangible form of expression. For example, a performance of a dramatic work must be recorded, lyrics of a musical work must be written or recorded, and sculptural works must be sculpted. The intangible concept of an artistic work by itself cannot be protected under copyright laws.
Ineligible Works Some categories of material are not eligible for federal copyright protection. Some examples of ineligible works include:
Works that are not fixed in a tangible form of expression Titles, names, short phrases, and slogans Familiar symbols or designs Mere variations of typographic ornamentation, lettering, or coloring Mere listings of ingredients or contents Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices Works consisting entirely of information that is public property or information
Protection for the Author Copyright protection rests with the author who creates the work. This protection begins when the author places the work in a fixed or tangible form. Only the author or those deriving their rights through the author can rightfully claim copyright.
Copyright protection can be subdivided into several independent exclusive rights. These exclusive rights include reproduction, distribution, preparation of derivative works, public display, and public performance. Publication of the work by the author is not required for copyright protection. But if a work is published, copyright protection may require the author to have certain ties to the United States (e.g., be a citizen or resident), require the publication to occur in the United States or a foreign country participating in a treaty or agreement, or require the publication to be by the United Nations or another authorized international organization. For unpublished works, copyright protection is available regardless of the nationality or domicile of the author.
Co-Ownership for Co-Authors For works created jointly, the co-authors are co-owners of the copyright in the work. For collective works, or collections of individual
works that are combined into a single form, the authors of the individual works hold the copyright to their own work, while a separate copyright for the overall arrangement of works (the collective work) is held by the author of the overall arrangement.
Works Made for Hire In the case of works made for hire by an employee, the employer is considered to be the author. A “work made for hire” is specifically defined in copyright law as:
a work prepared by an employee within the scope of his or her employment; or a work specially ordered or commissioned for use as:
a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, an instructional text, a test, answer material for a test, or an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.
Term of Copyright Protection The term of protection available for copyright depends on when the work was originally created and whether the work was published.
For works originally created on or after January 1, 1978, the term of protection runs for the life of the author plus an additional 70 years after the author’s death. For co-authored works, the term is measured by the last surviving author plus 70 years. For works made for hire, the term is 95 years from publication or 120 years from creation, whichever is shorter. Anonymous and pseudonymous works have the same term as works made for hire.
For works originally created before January 1, 1978, the term depends on the publication status of the work. If unpublished by January 1, 1978, the term is the same as for works originally created on or after that date (see above), with some additional minimum terms depending on whether the work was later published after that date but before December 31, 2002. If published or registered before January 1, 1978, the term varies depending on automatic renewal periods, but currently grants up to 95 years of protection.
Congress holds the power to alter the term of copyright protection available under federal statute, and has changed the term multiple times over the years. Many speculate that changes in the statutory copyright term are driven by the pending expiration of rights held by prominent entertainment industry conglomerates.
For more information on the duration of copyright, see Circular 15A, Duration of Copyright published by the US Copyright Office.
Fair Use Although federal statutes grant exclusive rights to copyright owners, there is also a federal statute that allows “fair use” of a copyrighted work without permission from the author or owner. The statute generally states that uses of a copyrighted work for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research are not considered infringement of the copyrighted work. For specific cases, the statute establishes a set of factors that might be considered by the courts. These factors include:
the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or value of the copyrighted work.
The following explanations describe examples of each of the above factors that tend to favor a finding of fair use (instead of infringement):
noncommercial, nonprofit, and transformative uses; the original work is published and less creative (or more factual); use of smaller portions, unless it’s the ‘heart’ of the original work; and limited commercial harm to the market of the original work.
The US Copyright Office is prohibited from offering legal advice about specific fair use situations, but has compiled a list of cases that discuss fair use situations in different jurisdictions. That list can be browsed or searched at http://copyright.gov/fair-use/fair-index.html.
Copyright vs. Possession of a Work The ownership of a copyright is distinct from the ownership of the work itself. Mere ownership of a book, manuscript, painting, software program, digital music file, electronic recording, or other copy of a work does not give the owner of the work the copyright to the work. This allows an author to transfer the ownership rights of the work to another person to possess the actual work, without transferring the copyright to the new possessor.
Transfer of Copyright A copyright is a personal property right. While its existence derives from federal statutes, the ownership of a copyright is subject to state laws and regulations that govern person property rights. In general, a copyright can be transferred between people or other legal entities through sale, gift, inheritance, or other typical forms of ownership transfer.
A copyright owner may transfer some or all of his or her copyright. To transfer rights on an exclusive basis, the transfer must be in writing and signed by the owner of the rights conveyed (or an authorized agent) in order to be valid. No written agreement is required to transfer rights on a non-exclusive basis. In instances where written contracts are used, the transfer of copyright ownership can be recorded with the US Copyright Office. As with other recordations, recording a copyright transfer provides legal notice of the new ownership to third parties who might express an interest in the copyright.
Under certain circumstances, it is possible to terminate a grant of rights after 35 years. For older copyrights, other termination rights or timeframes might apply.
Copyright Registration An author or owner of copyright has a certain level of protection available without obtaining federal copyright registration. However, federal copyright registration is a relatively simple legal formality that is accompanied by several advantages. These advantages include:
establishing a public record of the copyright claim accessing federal courts to bring an infringement suit establishing prima facie evidence in court of the validity of the copyright and facts stated in the certificate (if filed within five years of publication of the original work) making it possible to assess statutory damages and attorney’s fees (if filed within three months of publication or prior to an infringement of the work) reserving the right to record the registration with the U.S. Customs Service for protection against the importation of infringing copies
Registration Procedures Compared with patents and trademarks, the copyright registration process is very simple. U.S. copyright registration requires submission of an application form, a filing fee, and a copy of the work to be deposited with the Copyright Office. The fee is nonrefundable, and the deposit is nonreturnable. Also, the type and form of deposit will depend on the type of work for which registration is requested.
The application may be submitted by the author, a person or organization with ownership of all the rights under the copyright, or the owner of an exclusive right (one of many subdivided and transferrable rights of the overall rights). Additionally, a duly authorized agent of the preceding people or entities can act on behalf of the person or entity.
The application can be filed in either paper or electronic form. Several advantages are given to the electronic form, including a lower filing fee, faster processing time, email confirmation of the submitted application, online payment, online status tracking, and electronic submission of certain types of deposits. However, some specific types of applications must be filed in paper form.
After the application is filed, the author will receive a certificate of registration if the work can be registered. The effective date of registration is assigned as the date on which the Copyright Office received all of the required submissions—the application, fee, and deposit. Otherwise, if the work cannot be registered, the Copyright Office will send a rejection letter or contact the author via letter, telephone call, or email to request further information.
Preregistration For certain categories of works that historically are subject to prerelease infringement, it is also possible to preregister a work. Preregistration is not a substitute for registration, but allows an infringement action to be brought before the authorized commercial distribution of a work and full registration of the work. In other words, preregistration makes it possible to enter the federal courts before actual registration is completed. This makes it possible once the full registration is complete to receive statutory damages and attorneys’ fees in a related infringement action. In order to qualify for preregistration, the work must be unpublished, in the process of being prepared for commercial distribution, and a type of work with a history of infringement prior to authorized commercial distribution (e.g., motion pictures, sound recordings, literary works, computer programs, etc.).
Copyright Enforcement Copyright law creates a federal cause of action for copyright infringement, or the unauthorized copying of an original work of authorship. There are some basic requirements to consider before taking action against a potential infringer.
The infringement action must be brought in federal court by a party who has standing. In order to have standing the party must be the legal owner or exclusive licensee of at least one exclusive right of a copyright. Authors typically have standing to sue an infringer, unless the author has transferred his or her right to another person or entity. Once an author transfers the exclusive rights, the new owner has the right to sue for infringement based on the exclusive rights the new owner holds. When there are co-authors, it is possible under certain circumstances for either co-author to sue for infringement without obtaining permission from the other co-author.
The infringement action must be based on a valid and registered copyright. Although registration is not required to obtain copyright protection generally, registration is a prerequisite for filing an infringement suit in federal court.
Also, the infringer must be notified of the infringing use. The use of the symbol ‘©’ or other copyright information on a copy of the work can serve as the required notice. Otherwise, the owner may notify the infringer in another manner.
The infringing action requires proof of copying of the original work and infringement of an exclusive right, such as reproduction, distribution, preparation of derivative works, public display, or public performance. Copying can be shown by evidence of direct copying. Alternatively, copying can be shown through circumstantial evidence showing the infringer had access to the original work and the infringing work is substantially similar to the original work.
Defenses to Infringement If liability is found, the strict liability nature of copyright infringement does not give consideration to whether or not the copying was unintentional or inadvertent. However, there are a number of other possible defenses that can be relied on to justify the otherwise infringing action. These defenses include expiration of the statute of limitations (typically three years), fair use, first sale, grant of a license, DMCA safe harbors, and more. The first sale defense refers to an owner’s right to use his or her own copy of a work, including reselling it or gifting it to another person, without infringing the rights of the copyright owner.
The DMCA safe harbor defense relates to claims against online copyright infringement and establishes specific procedures for providing notice and requesting that an internet service provider take down an infringing use.
Additional Resources In addition to the information provided in this chapter, the US Copyright Office maintains several useful factsheets and circulars that discuss basic copyright procedures as well as more specific copyright situations. For example, these resources discuss such issues as copyright registration of specific types of works, compulsory licenses, and obtaining permission to use a copyright. The factsheets and circulars can be viewed at http://copyright.gov/circs/.
Intellectual Property Overview Patents are evidence of rights given to inventors to protect their inventions. Generally, patents are one type of protection for intellectual property. Intellectual property generally refers to intangible assets that someone claims ownership in by virtue of creating those assets. Additionally, intangible assets may be transferred from the original creator to another person or entity.
PATENTS Patents cover inventions of new things. In the United States there are three types of patents: utility, design, and plant. Patents are issued only after a thorough examination process administered exclusively by the federal government. TRADEMARKS Trademarks cover words, graphics, logos, and even sounds and colors that are used as branding for specific products or services. Trademarks can be federally registered after an examination process with the federal government. Trademarks can also be registered with state governments.
COPYRIGHTS Copyrights cover works of authorship recorded in a tangible medium. Copyrights are registered with the federal government, but do not go through an examination process. TRADE SECRETS Trade secrets cover any form of secret information that derives independent economic value for the secret owner. Trade secrets are not examined or registered by government bodies, but are kept confidential.
Independent Patent Systems Patent systems are administered by governments and international organizations to allow inventors to receive exclusive protection for their new and useful inventions. Different countries and international organizations have their own laws, rules, and procedures to apply for a patent or to use or enforce a granted patent.
In addition to forming their own patent systems, many countries also participate in international treaties or agreements that specify procedures for recognizing patent rights from other countries. These joint programs are typically administered by a separate international organization, which specifies the procedures for complying with a set of common rules that all participating countries have agreed to recognize. This type of international cooperation makes it possible for an inventor from one country to apply for patent rights in many other countries, in addition to their own country.
The patent systems established and administered by different governing bodies can change over time. Patent laws, rules, and procedures can change as new laws are passed, new regulations are adopted, or new interpretations are established through the courts. This chapter will focus primarily on the patent system currently established in the United States, with some additional discussion of the international patent application system.
An Agreement with the Government The fundamental premise of the U.S. patent system is to offer inventors an incentive for publicly disclosing their new and useful inventions. Under constitutional and statutory authority, the U.S. government agrees to give certain rights to inventors in exchange for disclosure of the inventor’s invention.
The rights granted to the inventor are relatively broad, but are limited to a specific term or time period. The inventor agrees that the invention will become publicly available at the end of the patent term. In other words, the inventor agrees to dedicate the invention and the inventor’s knowledge specifically disclosed in the patent to the public when the life of the patent ends.
Basic Terminology PATENT or PATENT APPLICATION—For accuracy, it is critical to distinguish between a “patent” and a “patent application.” The term “patent” refers to an issued document that has been granted by the governing body (the U.S. government). This gives the patent owner rights that can be enforced against unauthorized infringers of the patented invention.
In contrast, the term “patent application” refers to the documents that are filed with the government body, but have not yet been issued as a granted patent. Thus, patent applications are in the examination stage, or are waiting to be examined, whereas an issued patent has successfully passed the examination stage.
A patent application gives the applicant “patent pending” status, but is not enforceable against infringers. Only an issued patent can be enforced against infringers.
PROVISIONAL PATENT APPLICATION—A “provisional
patent application” is a specific type of patent application that also provides “patent pending” status. Provisional patent applications are discussed in more detail below. In brief, provisional patent applications are never examined, so they can never result in a granted patent. Consequently, there is no such thing as a “provisional patent.”
PRIOR ART—Prior art refers to certain categories of publicly available information that can be used to show that an invention is not new and/or useful. The most common forms of prior art referenced during examination include other issued patents and public patent applications. However, there are many other types of prior art such as books, academic papers, company technical documents, website documentation, and so forth. Prior art is also used often in litigation to try to show that a granted patent should not have been granted because the invention was not new and/or useful over the prior art that was already available to the public.
INFRINGEMENT—Patent infringement refers to the unauthorized activities that make use of patent owner’s rights granted in an issued patent. The issue of infringement focuses on what rights are held by a patent owner, and whether or not someone else is performing activities that use those rights without permission from the patent owner. In many ways, patent infringement is independent of whether or not an invention is patentable.
A Negative Right Patents grant a “negative right” to the patent owner, making it possible for the patent owner to exclude others from making, using, selling, offering to sell, or importing copies of the invention or discovery. In this way, a patent owner may stop an infringer from practicing the invention. In contrast, patents do not grant to the patent owner a right to make or use the patented invention, because other existing patent rights may be infringed by making or using an invention or discovery. So it is possible for a patent owner to infringe another patent owner’s existing patent rights by making or using his or her own invention.
Patent Laws and Regulations The U.S. Constitution grants to Congress the 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.” This is the constitutional basis used to pass federal laws (“patent laws”) that govern how patents are granted and enforced.
The patent laws give the executive branch of the federal government the latitude to adopt additional regulations (“patent rules”) that govern specific procedures for examining patent applications and granting patents.
These patent laws and rules are used by the U.S. Patent and Trademark Office (USPTO) to manage the patent process for all inventions seeking U.S. patent protection. Similarly, U.S. courts use the patent laws to settle patent disputes.
Individual states do not have patent systems or authority to grant or govern patents. All patents are governed by the federal laws and regulations. However, contractual agreements tangential to patent rights (transferring ownership or licensing rights) are governed by individual state laws.
As noted above, different countries and international organizations have their own laws, rules, and procedures to apply for a patent and to enforce a granted patent. Attorneys or other patent practitioners in each country can assist inventors and applicants through the specific processes in their respective countries.
Types of Patents In the U.S. there are three different types of patents: Utility, Design, and Plant. Each type of patent has its own filing requirements, examination procedures, term of protection, and criteria for enforcement against infringers.
Utility Patents A utility patent recognizes an invention or discovery for a new and useful process, machine, article of manufacture, or composition of matter. These categories are often referred to by other names, including methods of use, business methods, methods of manufacture, apparatuses, devices, systems, and other names. The invention or discovery may be entirely new or may be an improvement on an existing method, device, system, or chemical composition.
Utility patents are the most common type of U.S. patent. They are usually valid for 20 years from the time that the patent application was originally filed. Maintenance fees are required at certain times throughout the 20 years in order to keep the patent in force. As with other patent rights, utility patents are only enforceable after the patent goes through the examination process and is granted.
Design Patents A design patent recognizes a new, original, and ornamental design for an article of manufacture. This type of patent focuses on the ornamental design, instead of the physical structure or functionality.
A design patent is typically valid for 14 or 15 years from the time the patent application was originally filed. There are no maintenance fees to maintain a design patent in force once it is issued. A design patent protects against other ornamental designs that are confusingly similar.
Some products are suitable for protection using both design patents and utility patents. For example, the ornamental design aspects of a product (the shape, icons, graphical or industrial form, etc.) can be protected by a design patent, while utility patents might protect the structural and functional features of the product, how the product is made, and how the product is used.
Design patent protection can also coordinate with the protection offered by copyrights. Like design patents, copyrights protect the works of art or authorship, which are often ornamental in nature. Unlike design patents which can be infringed by confusingly similar designs, copyright protection requires evidence that an infringer copied the work from the original artist or author. There is no requirement to show copying for design patent infringement.
Similarly, design patent protection can apply to designs that are also used as trademarks or trade dress. In particular, the use of a particular new design which qualifies for protection under a design patent can be applied as a brand identifier for specific products or services. Once applied to market or brand the specific products or services, the same design protected by a design patent can also qualify for protection as a trademark or trade dress. The legal tests for infringement of design patents and trademarks are also similar, as both are based on a determination whether there is a likelihood of confusion between conflicting designs.
Plant Patents A plant patent recognizes distinct and new asexually reproduced varieties of plants. Some aspects of such plants, and the methods of making them, can also be protected by utility patents. Plant patents provide protection for 20 years from the date of filing of the patent application. Given the special nature of this type of patent, and it’s relatively limited use, this chapter will not focus on the additional details of obtaining or enforcing plant patents.
The Lifecycle of a Patent The patent lifecycle can be roughly divided into two stages: 1) obtaining the patent, and 2) enforcing the patent. The typical costs and legal services required for each of these stages can be quite different from one another.
OBTAINING A PATENT
The process of obtaining a patent begins when an inventor determines that he or she has invented something new that is worthy of protection against potential copiers or infringers. The inventor can then submit an application to the governing body (the U.S. Patent and Trademark Office in the United States). The application must meet very particular requirements for both form and substance.
In addition to many formatting rules, the basic contents of a U.S. patent application must include a description of the invention and at least one claim. The description must provide enough detail to teach another person skilled in similar technology how to make and use the invention. And if the invention is conducive to illustrations, then illustrations can be provided and referenced in the description.
The claims establish the legal boundaries of the invention the applicant seeks to protect. Claims can be submitted in various forms, as long as they meet the specific formatting requirements. Also, claims can be directed to different aspects of a single invention. For example, some claims may be directed to a device, while other claims may be directed to methods for making and/or using the device.
Each claim defines an invention, which can impact the type of person or organization who might be expected to infringe that claim. For example, a claim to a device might be infringed by someone who makes the device, someone who sells the device, someone who imports the device, and so forth. In contract, a claim directed to how the device is made might only be infringed by others who make the device (e.g., manufacturers), but not by people who merely use the device without making it. Similarly, a claim directed to how a device is used might only be infringed by others who use the device (e.g., consumers and end users), but not be people who make the device solely for sale to the consumers or end users. In this way, different types of claims can be drafted with different groups of potential infringers in mind.
Once a patent application is drafted and submitted to the patent office, the patent application will eventually be assigned to an examiner. The examiner will review the patent application to make sure it complies with all the formal requirements. The examiner will also search for documentation of “prior art” that might teach some or all of the aspects of the invention claimed in the patent application.
Any reasons why the examiner thinks the claimed invention is not patentable will be issued in an office action. The applicant has the right to respond to the issues raised by the examiner in a response to the office action. For each response, there is usually a fixed response period, although in some cases extensions of time can be obtained through the payment of additional fees. Communications can go back and forth between the examiner and the applicant many times before either the examiner determines the invention is patentable and issues a notice of allowance. Alternatively, the examiner ultimately may maintain that the claimed invention is not patentable. When this happens, the applicant has a couple different options. First, the applicant may stop pursuing the patent application. Second, the applicant may pay additional fees to request further consideration by the examiner. Third, the applicant may pay additional fees and submit documents to initiate an appeal of the examiner’s position. This appeal is administrative within the patent office, not within a court of law (although further proceedings could be brought in a court of law).
Once patent claims are determined to be allowable, the applicant will receive a notice of allowance and a statement of the issue fees due. After payment of the issue fees, the patent typically will issue within the next few months. Later, at certain times during the life of the patent, the patent owner will be required to make maintenance fee payments if the patent owner wants to continue the term of the patent. Those fees can be paid at each interval to keep the patent in force through the full term of the patent. However, if those fees are not paid then the patent expires earlier than the full term of the patent.
ENFORCING A PATENT
Once a patent is issued, the patent owner has the right to enforce the patent against infringers. Notably, the burden to enforce a patent is one the patent owner. The U.S. patent office does not monitor for potential infringers of any patents.
A typical infringement scenario includes identifying a potential infringer, performing an analysis of the accused product or method relative to the relevant claims of the issued patent, and then taking some action to notify the accused infringer of the issued patent. This notification can be performed in many ways—the two most common ways are by either sending a cease-and-desist letter or filing a patent infringement suit in federal court.
Cease-and-desist letters usually inform a potential infringer of the patent owner’s rights in an issued patent. There are many potential risks that can be raised when a cease-and-desist letter is issued to a potential infringer. One of the most prevalent risks is the possibility that the potential infringer might use the letter as the basis to file a separate suit to have the federal court declare the issued patent invalid. The disadvantage to the patent owner in this situation is that the potential infringer can select the location where the suit will be brought, which likely will be chosen to be inconvenient and/or expensive for the patent owner and, if possible, might be a jurisdiction where courts are historically less favorable toward patent rights.
Instead of contacting a potential infringer through a cease-and- desist letter, some patent owners prefer to initiate a patent infringement suit first and let the suit itself serve as notice to the potential infringer. This allows the patent owner to control more of the choices as to where and when the suit will occur. It also may indicate a higher level of commitment by the patent owner.
Patent negotiations and law suits proceed in many aspects similarly to other negotiations and law suits. Readers may refer to other sections for more detailed information about specific negotiation and/or litigation techniques.
Ultimately, the patent owner will be advocating for validity of the patent claims and infringement by the accused infringer in order to stop and collect damages for the infringing activities and/or establish a licensing arrangement to collect royalties in exchange for authorization to allow the accused infringer to practice the patented claims.
On the other hand, the accused infringer will be advocating for non-infringement of the patented claims. In some situations, the accused infringer will also be advocating for invalidity of some or all of the issued patent claims. For any claims that are found to be invalid, the accused infringer will not be liable for infringement.
Regardless of the initial outcome of the patent infringement litigation, one party or the other (or both) may request that the case be reviewed by an appellate court, which may review parts of the case for proper application of the law and, in some cases, may review whether or not the basic facts of the case were dealt with justly.
Different Fee Schedules The U.S. Patent and Trademark Office has established a normal fee schedule for most services they provide. The Office has also set up two other payment schedules, often with lower fees, for applicants who qualify as a “small business entity” or a “micro entity” within the established rules.
In general, the criteria to qualify as a small business entity are set by the Small Business Administration and, at the time of this writing, recognize business with less than 500 employees and less than certain annual revenues as small business entities. Qualifying applicants pay about half of the normal fees for some of the services.
Other applicants who have a limited number of prior patent or patent applications, and who make less than a specified amount of income (e.g., three times the poverty level for an individual), and who meet other criteria specified by the Office, can qualify for further reductions in fees as a micro entity. The fees for micro entities are often about half of what a small business entity would pay. Some higher education institutions and other organization can also qualify for micro entity status with the Office.