Every January brings a burden to each of us: New Year’s Resolutions!
Many of these resolutions include “firsts” that we try to implement throughout the new year (or typically… just through the first few weeks of the new year). This January, you may notice that this is the first monthly IP column by Z. Peter Sawicki with a new co-author – another first! Fear not, James L. Young is still involved in this monthly column, sharing wisdom and providing editorial guidance, and is available to share practice tips and anecdotes in our musings about intellectual property.
When it comes to New Year’s resolutions, many of the new year “firsts” you hear relate to health, fitness or other lifestyle changes. But “firsts” are just as important when it comes to protecting intellectual property rights.
Patent Office Firsts
U.S. patent law allows for the issuance of a patent to the first inventor to file a patent application for protection of an invention. Moreover, U.S. patent law also provides protection for the “first to disclose” an invention. An inventor can (at their own risk!) disclose their invention publicly and that disclosure is prior art to other inventors, preventing others from patenting that same invention. However, the U.S. Patent Office will not consider that disclosure as prior art to the discloser as long as they file a patent application to protect that invention within one year of the disclosure.
It is safest to be the first to file an application to protect your invention to avoid extra hassle in the event you come up against competitors and prior art at the U.S. Patent Office.
Trademark Office Firsts
When it comes to Trademark rights in the United States, it is the first user of a trademark that generally holds superior rights to the trademark. Of course, we encourage filing a trademark application as soon as you start using a trademark in the United States (or even before). However, if another party files an application to register a mark that is confusingly similar to yours after you began using your mark, there are options to oppose the registration of the mark by another. If this happens and your mark is the subject of another party’s trademark application – or even a registration – you may be able to oppose – or cancel – the offending application or registration. You will need to provide evidence that you used the mark in commerce before the other party filed its trademark application.
It is safest to be the first to file an application to protect your trademark to avoid extra hassle in protecting your brand.
Copyright Office Firsts
Registration of a copyright in the United States is not required for you to have copyright rights in your original creative works.. But first creators are rewarded – copyright rights arise automatically upon the creation of an original work of authorship that is fixed in a tangible medium of expression.
With various social media sites and other platforms that allow users to create, post and/or share content, it is only a matter of time before someone copies your original work. It may be beneficial to mark your original creative works with a © symbol and the year in which you first published the work. If you believe there is a risk that your original creative work could go viral and be copied by others, it is worth considering the benefits of registering the work with the U.S. Copyright Office first, before you share it widely. A registration can make it easier to stop infringing users and could also result in a monetary damage award for infringement.
These firsts are just as important when it comes to protecting your intellectual property. Good Luck with your New Year’s resolutions!
