You may notice that this is the first IP column by Z. Peter Sawicki with a new co-author! Fear not, James L. Young is still involved, sharing wisdom and providing editorial guidance, and is available to share practice tips and anecdotes in our musings about intellectual property.
In this article, we want to discuss “firsts” when it comes to protecting intellectual property rights.
Patents
Since 2013, the “first to file” a United States patent application has the presumptive right to the granted U.S. patent. Before 2013, the right to a patent in the United States was awarded to the “first to invent” rather than considering who was the first to file for a patent.
There were many reasons for changing this rule, one being harmonizing U.S. law with the patent laws in other countries. Globally, the current system grants patent rights to the first person or legal entity that files for a patent.
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.
This “first to file” policy arguably gives an advantage to corporations which have the wherewithal to file in multiple countries. However, small companies with lesser financial resources can take advantage of treaties such as the Paris Convention and the Patent Cooperation Treaty (PCT). The filing date of the U.S. application can provide a priority filing date, when filing in a foreign patent office within one year of the U.S. filing (using the Paris Convention). Proceedings (and costs) can be delayed another 18 months by making a PCT filing. By using these treaties, the original U.S. filing date serves as a filing date in most other countries.
Furthermore, the costs can be consolidated by filing through regional organizations, such as the European Patent Office (38 countries), the Eurasian Patent Office (eight countries), and several other similar regional treaties. Such regional treaties eliminate the need to file in individual countries, thus reducing costs.
Trademarks
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.
In the opinion of many, trademarks in other countries are just as important as securing patent protection. The first brand to market with a new product establishes goodwill and name recognition (i.e., a trademark). The United States arguably has the largest and most lucrative marketplace in the world. Buyers in other countries associate brands developed in the United States with specific products.
Unlike patent protection which has filing time restrictions, trademark protection is always available as long as someone else has not beaten the trademark owner to that country’s trademark office. Again, being first to file is important!
Unlike the United States, in most other countries use of a trademark in that country is not needed to obtain a registration for that mark. This opens the door for enterprising individuals or companies to register a trademark that is being used in the United States. A counterfeit product can then be sold in that country by that enterprising individual or company, and the counterfeiter owning that registration can then prohibit the U.S. trademark owner from selling its branded product in that country.
U.S. companies should also be concerned about filing first when establishing a relationship with a distributor in that country. On occasion, the distributor may volunteer to register the trademark under the guise that it is doing this for the benefit of the U.S. company. If the relationship goes south, the distributor then has leverage since it owns the trademark registration. The distributor can demand a royalty on the use of the trademark in that country, stop a different new distributor from importing goods there, or require an exorbitant amount of money to sell the registration back to the U.S. company.
Copyrights
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.
Globally, copyright law is pretty much the same. The Berne Convention is one of the oldest intellectual property law treaties (1886) and established international standards for the protection of authors’ rights. The United States was not an original signatory, but finally ratified the Berne convention in 1989. This was largely because U.S. copyright law at the time emphasized formalities (such as registration and notice requirements) which were inconsistent with the Berne Convention’s principle of automatic copyright protection upon creation.
In IP filings, being first to file is critical to success.
