10 Things Every Trademark Attorney Should Know About Patents
Steven Cooper | April 07, 2023
For some trademark attorneys, the detailed scientific description and legalese claims of a patent may seem eccentric or daunting. And then there are those pesky patent attorneys with their USPTO registration numbers, technical degrees, and whatnot. But as a patent attorney myself, I am here to tell you that not only are patent attorneys generally OK people, but also that a little bit of knowledge about patents can go a long way for trademark attorneys. Even if you will not file or prepare patent applications yourself, there are a few things you should know about US patents to guide your client towards the most effective IP protection strategy.
At the end of this article, I hope that you will know just enough about patents to feel comfortable spotting issues for your client, and realize that patents aren’t that scary after all! And because I want you to feel that way at the end of the article, let’s get the scary parts out of the way first.
1. Patent Applications Have Strict Filing Deadlines
In US trademark practice, rights are based on actual use of a trademark in commerce. Applications are often filed after public use of the trademark has occurred in connection with the sale of goods, and for most US-based applicants, registrations cannot be granted until actual use has begun. For patent applications, any notion of “rights arising from actual use” should be left behind.
35 USC 102(a)(1) states that “[a] person shall be entitled to a patent unless the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” This means that public disclosure or sale of an invention that occurs before a patent application is filed on that invention can be used to bar a patent from being granted.
One of the most significant and practical things one should know about patents is this: if a client may have an invention warranting the filing of a patent application, don’t wait to pursue it. If a client waits to file a patent application only after their product has had market success or they see similar products appear from a competitor, it could be too late to obtain patent protection.
Having said all of this, some latitude is provided by 35 USC 102(b)(1) for disclosures made by the applicant or inventor within the one year before an application is filed. But many other countries do not afford such a grace period. So filing a patent application before any public disclosure is the safest way to preserve global filing options, and reduce the likelihood the client’s own activities preclude obtaining patent protection in the US or abroad.
2. There is No Common or State Law Protection Available for Patents
Now you may be thinking, if my client misses the application filing deadline at the USPTO, there still is common or state law protection available for patents just like with trademarks, right?
Article I, Section 8 of the US Constitution states: “Congress shall have 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.”
Translation: Only the US government can grant patent rights in the US, not states or common law. If a client can’t get a patent from the USPTO, they can’t get a patent in the US.
3. Application Priority is Given to the First Inventor To File a Patent Application
To understand the importance of how patent application priority is determined, it is helpful to first know how it isn’t determined, at least not anymore. For applications filed before March 15, 2013, priority was based on who invented it first. So if John filed a patent application on April 1 for an invention he invented March 1, and Sally filed a patent application on July 1 for the same invention she independently invented February 1, Sally had priority over John, even though Sally filed second, because she invented it first.
If you look again at 35 USC 102(a)(1) above, you will notice that it refers to “before the effective filing date”. The US shifted to a “first inventor to file” system as of March 15, 2013, where priority is now based on the effective filing date of an application (i.e., the actual filing date or the earliest applicable priority filing date). Take the same example with John and Sally from the last paragraph and apply current law, absent limited exceptions, John now has priority because he filed first.
So to put a bow on these three points, even if you are not a patent attorney, when working with a client on IP protection for a new product or service, it is important to apprise your client of patent protection considerations at the earliest possible stage, as patent law disincentivizes delaying filing patent applications.
Even though you now know the importance of why patent protection must be addressed as early as possible, you might still be wondering: what exactly do patents protect anyways?
4. Utility Patents Protect “Useful” Inventions
The most common type of patent is a utility patent, which protects a “new and useful method, machine, article of manufacture, composition of matter.” (35 USC 101). As the clever name suggests, claimed inventions in a utility patent application must have a specific and substantial utility. Because such inventions need a “useful application”, it is unlikely that a client will rely on a utility patent to protect the same features they may protect with a trademark or trade dress, where useful or functional elements are not protected. But if a client wants to protect how their product or process works, a utility patent could be appropriate.
5. Design Patents Protect Ornamental Articles of Manufacture
While utility patent rights may not overlap with trademark rights, design patents can be a trademark attorney’s best friend (only metaphorically speaking, I hope).
Design patents protect the “new, original and ornamental design for an article of manufacture.” Unlike utility patents, design patents do not protect functional aspects of a product, only their ornamental features. Therefore, design patents can overlap with and complement trade dress protection. For clients with product design or product packaging they want to protect, they can pursue trade dress and design patent protection. While high quality drawings are encouraged for a design patent application to show the claimed design in detail from all necessary viewpoints, the written component of a design patent application is much shorter than for a utility patent application, meaning a design patent application can be less costly to prepare and file than a utility patent application.
6. Provisional Patent Applications Are Used to Establish Priority Dates for Utility Patent Applications
A third type of patent application to know about is a provisional patent application. Provisional applications contain fewer formal requirements than design and utility patent applications and do not get examined by the USPTO or mature into issued patents. Provisional applications give the filer 12 months to file a utility patent application for the subject matter disclosed in the provisional application and claim priority to provisional filing date. This can be helpful in situations, when for example, a client is about to publish the invention and needs to get something filed quickly to establish a filing date before the publication occurs, or when clients wish to establish a filing date for their invention but want to delay seeking utility patent protection in the US or abroad.
An important thing to know about provisional applications is that the priority date is only effective for what it discloses. So if a utility patent application adds or changes subject matter from the provisional application, the provisional application filing date may not grant the expected priority, particularly if relying on the priority date for countries outside the US with stricter requirements for textual claim support. Provisional applications are very useful for clients and don’t need to be as formal as a utility patent application, but be careful not to be too informal and file one without the important details you may need later to obtain utility patent protection.
Another important caveat for the trademark attorney to know about provisional patent applications: a design patent application cannot claim priority to a provisional application. The client still needs to file a design patent application to establish a filing date for the design. However, a design patent application can claim priority to a utility patent application. So if your client discloses all elements of its design in a utility patent application, the utility patent application filing date can be relied on by a design patent application (but not any provisional filing date cited in that utility patent application). All of that make sense? Great, on to the next topic!
7. Distinctiveness Is Not a Consideration In Examination of Patent Applications
One requirement for trade dress (and trademark) protection is distinctiveness: the trade dress must serve to identify and distinguish the owner’s goods or services from those of others. In contrast, design (and utility) patents have no distinctiveness requirement. Instead, a claimed invention in a patent application must be novel and non-obvious.
Novelty asks whether the claimed invention already exists in the prior art in substantially the same form. Non-obviousness asks whether the invention, even if not found in an identical form in the prior art, would have been obvious to a person having ordinary skill in the art. For example, a claimed invention may be found obvious if it has only minor or inconsequential differences from the closest prior art or combines elements from multiple prior art references in a way that would have been considered obvious.
A design can be different enough from the prior art to be new and non-obvious for patenting, but not protectable as trade dress due to lack of distinctiveness because consumers would not find that the subject matter identifies and distinguishes the source of the applicant’s goods or services. With design patents, provided it is the ornamental design of an “article of manufacture,” it does not matter if it is product packaging or product design, because the patentability requirements are the same and do not include distinctiveness.
This also means that having a design patent for a product has no bearing on whether the product has distinctiveness for trade dress protection. However, because a design patent can prevent others from making, using, or selling the claimed design during the life of the patent, a design patent can help provide an exclusivity window to support a later Section 2(f) acquired distinctiveness claim in a trade dress application based on continuous and substantially exclusive use.
So if you are looking for my two cents (or Two Pesos) on the matter, design patents are an incredibly valuable tool for clients looking to obtain protection for the designs of their products alongside of, or in lieu of, trade dress protection.
8. The Life Span of Patents and Trademarks Are Not the Same
A major difference between patents and trademarks is that patents have a finite duration with maximum term. For a utility patent, the term is 20 years from the US application filing date (or the earliest relevant priority date). Periodic maintenance fees are required to reach that term, but unlike trademark maintenance filings where use submissions are required, patent maintenance fees just require fee payments.
For design patents, the patent term is 15 years from the patent issue date, and design patents do not have any maintenance fees or renewals required during the term.
And despite their duration differences, one area where US trademark and patent applications are finding common ground: taking a long time to get to examination. In recent years, the time for receiving a first action in a US trademark application has increased from 3-4 months to (currently) 8.5 months. Many patent attorneys would welcome that timeframe, as the current first office action pendency is about 16 months for utility patent applications and 17 months for design patent applications. With patent applications however, there are procedures available to expedite examination of the application, such as Prioritized Examination and the Patent Prosecution Highway (PPH) for utility patent applications, and Expedited Examination for design patent applications.
9. An Inherently Distinctive Trademark Does Not Describe the Relevant Products or Services. Utility Patent Applications Must Describe the Relevant Products or Services
A trade-off in the patent system is that a patent application must describe the invention so others are able to make and use the invention. The government grants the patentee a window of time to exclude others from exploiting the invention, but the patentee has to disclose the invention in a way that enables others to make and use that invention when the time expires.
On the other hand, trademarks are (ideally) not descriptive of the goods or services they are used with. Given this incompatibility, there is not much upside to including a trademark in a patent application to describe the invention, but there is downside. An arbitrary, fanciful, or suggestive term will not help explain the invention in technical terms like a descriptive or a generic term would, so using the trademark to describe the invention may not help the patent. And because terms used in patent applications are often descriptive and generic, it certainly will not help future distinctiveness arguments if someone points out that your client’s trademark was used to describe the product in their patent application.
So if possible, work with your client and your client’s patent attorney before and during the drafting of a patent application to avoid the use of actual or possible trademarks in the text to describe their invention. As a corollary, if you are looking to challenge another’s trademark as descriptive, check their patent applications to see if they use the trademark descriptively.
10. USPTO Examining Attorneys Will Consult Utility Patents When Determining Functionality of Trade Dress
Related to the last item, here’s one that you can also file under “Things Every Patent Attorney Should Know About Trademarks”: patent applications are a common resource for determining whether trade dress is functional. Sometimes, a client may want to protect an invention in other ways once the patent expires, such as trade dress. But there is a problem with this approach (according to the US Supreme Court):
A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 US 23, 29-30 (2001).
So again, work with your client and your client’s patent attorney to help them avoid describing the functionality of ornamental product features that could serve as trade dress one day. This could be difficult because you may not know what product design features could become distinctive trade dress a decade or more later. But if you can help your client root out these issues from Day 1 of the patent process to avoid this pitfall, your client will certainly appreciate your foresight and functionality in maximizing their IP protection strategy.