by Henri Charmasson and John Buchaca Patents, Copyrights & Trademarks FOR DUMmIES ‰ 2ND EDITION Patents, Copyrights & Trademarks For Dummies, ® 2nd Edition Published by Wiley Publishing, Inc. 111 River St. Hoboken, NJ 07030-5774 www.wiley.com Copyright © 2008 by H. Charmasson and J. Buchaca Published by Wiley Publishing, Inc., Indianapolis, Indiana Published simultaneously in Canada No part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording, scanning, or otherwise, except as permitted under Sections 107 or 108 of the 1976 United States Copyright Act, without either the prior written permission of the Publisher, or authorization through payment of the appropriate per-copy fee to the Copyright Clearance Center, 222 Rosewood Drive, Danvers, MA 01923, 978-750-8400, fax 978-646-8600. 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Library of Congress Control Number: 2008930832 ISBN: 978-0-470-33945-9 Manufactured in the United States of America 10 9 8 7 6 5 4 3 2 1 About the Authors Henri Charmasson is an attorney with a 35-year career in the field of intellectual property (IP) law. He has been a naming adviser to major corpo- rations. Henri is also an inventor with his name on 15 U.S. patents and an entrepreneur who sits on the board of several small business corporations. In his early engineering career, Henri designed computer hardware. Henri has authored several articles and delivered lectures on patent, copyright, trade- mark and trade secret topics, and written an authoritative treatise about the art of naming companies and branding new products. Born, raised, and edu- cated in sunny Provence, France, he’s found in California the ideal place to exert his enterprising spirit. John Buchaca, also an Intellectual Property law attorney, is a former soft- ware engineer and occasional inventor, and has worked with Henri for more than 15 years. Indeed, when Henri wrote the first edition of this book, John regarded himself as the “first dummy.” Before becoming a lawyer, he worked in ocean acoustics analysis and modeling and computer programming. His undergraduate degree is in applied mathematics. But his highest claim to fame (according to Henri) is to be married to Henri’s daughter and to be the father of two of Henri’s grandchildren. He lives in San Diego, California where he is a partner at Charmasson, Buchaca & Leach, LLP, an IP law firm. Dedication To Marcia and Mari Authors’ Acknowledgments Thanks to our editorial team and particularly to our project editor, Corbin Collins, who tactfully coached us into expressing many arcane legal principles in limpid prose. Publisher’s Acknowledgments We’re proud of this book; please send us your comments through our Dummies online registration form located at www.dummies.com/register/. Some of the people who helped bring this book to market include the following: Acquisitions, Editorial, and Media Development Project Editor: Corbin Collins (Previous Edition: Mike Baker) Acquisitions Editor: Tracy Boggier Copy Editor: Corbin Collins (Previous Edition: Laura Peterson) Editorial Program Coordinator: Erin Calligan Mooney Technical Editor: Michelle Falkoff Media Development Producer: Jenny Swisher Editorial Managers: Jennifer Ehrlich Editorial Supervisor and Reprint Editor: Carmen Krikorian Editorial Assistants: Joe Niesen, David Lutton, Jennete ELNaggar Cover Photos: © Comstock Cartoons: Rich Tennant (www.the5thwave.com) Composition Services Project Coordinator: Kristie Rees Layout and Graphics: Carl Byers, Christin Swinford, Abby Westcott Proofreaders: Melissa Bronnenberg, Bonnie Mikkelson Indexer: Potomac Indexing, LLC Publishing and Editorial for Consumer Dummies Diane Graves Steele, Vice President and Publisher, Consumer Dummies Joyce Pepple, Acquisitions Director, Consumer Dummies Kristin A. Cocks, Product Development Director, Consumer Dummies Kathleen Nebenhaus, Vice President and Executive Publisher, Consumer Dummies, Lifestyles, Pets, Education Publishing for Technology Dummies Andy Cummings, Vice President and Publisher, Dummies Technology/General User Composition Services Gerry Fahey, Vice President of Production Services Debbie Stailey, Director of Composition Services Contents at a Glance Introduction 1 Part I: Corralling Your IP Assets: Intellectual Property Basics 7 Chapter 1: Marshalling Your IP Tools 9 Chapter 2: Fencing In the Herd 19 Chapter 3: Calling in the Cavalry and Picking Up the Tab 29 Chapter 4: Trade Secrets: Often-Overlooked IP Tools 41 Part II: Going for the Gold: Patenting Your Product 49 Chapter 5: Understanding Patents and How They Work 51 Chapter 6: Testing the Patent Water Before You Dive in 63 Chapter 7: Hoping It Ain’t There: The Patent Search 75 Chapter 8: Preparing Your Patent Application 89 Chapter 9: Filing Your Patent Application 109 Chapter 10: Wrestling with the Patent Examiner 123 Chapter 11: Reeling In the Prize: Getting Your Patent Issued 151 Part III: Asserting Your Copyrights 167 Chapter 12: If It’s Got Style, You’ve Got Copyrights 169 Chapter 13: Untangling Ownership Issues 187 Chapter 14: Giving Your Copyright Fangs 197 Part IV: Protecting Your Commerical Identity 217 Chapter 15: Flashing Your Badge 219 Chapter 16: Coining the Next Household Name 233 Chapter 17: Searching for Name Availability 245 Chapter 18: Establishing and Registering Your Commercial Identifier 259 Part V: Making Your IP Rights Work for You 283 Chapter 19: All Abroad: Protecting Your IP Rights in Other Countries 285 Chapter 20: Making ’Em Pay: Licensing Your IP Rights 303 Chapter 21: Catching Them Rustlers (Infringers) 317 Part VI: The Part of Tens 327 Chapter 22: Ten Most Common IP Misconceptions 329 Chapter 23: Ten Patent Application Pitfalls 333 Chapter 24: Ten Practical Copyright FAQs 337 Chapter 25: The Ten Worst Naming Blunders 341 Appendix: How to Use the CD-ROM 345 Index 351 Table of Contents Introduction 1 About This Book 1 Conventions Used in This Book 2 Foolish Assumptions 3 How This Book Is Organized 3 Icons Used in This Book 5 Part I: Corralling Your IP Assets: Intellectual Property Basics 7 Chapter 1: Marshalling Your IP Tools . . . . . . . . . . . . . . . . . . . . . . . . . . . .9 Defining Intellectual Property 9 Exploring the Patent Process 11 Copyrighting Your Creations 13 Proclaiming Your Identity: Trademarks and Other Commercial Handles 14 Keeping It Under Your War Bonnet: Trade Secrets 16 Let’s Make a Deal: Looking at Contractual IP Rights 16 Putting Your IP to Work at Home and Abroad 17 Chapter 2: Fencing In the Herd. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .19 Questioning Your Motives 19 Implementing an IP Program 21 Chapter 3: Calling in the Cavalry and Picking Up the Tab . . . . . . . . . .29 Getting the Help You Need 29 Finding and Retaining an IP Professional 34 Staying within Your Meager Means 35 Working with Foreign IP Professionals 39 Coordinating with Other Professionals 40 Chapter 4: Trade Secrets: Often-Overlooked IP Tools. . . . . . . . . . . . . .41 Taking a Gander at Your Operation 41 Patenting or Secreting? 44 Safeguarding Your Trade Secrets 46 Patents, Copyrights & Trademarks For Dummies, 2nd Edition xii Part II: Going for the Gold: Patenting Your Product 49 Chapter 5: Understanding Patents and How They Work. . . . . . . . . . . .51 Defining the Nature of the Beast 51 Dissecting the Beast: Three Patent Types 53 Checking Out the Mechanics: Specifications and Claims 55 Playing by the Rules: The Three-Part Patentability Test 58 Chapter 6: Testing the Patent Water Before You Dive In . . . . . . . . . . .63 Assessing What You Have 63 Making Sure that 10-Gallon Hat Is Right for You 67 Starting Things Off on the Right Foot 72 Chapter 7: Hoping It Ain’t There: The Patent Search. . . . . . . . . . . . . . .75 The Preliminary Online Search: What Did We Do without the Internet? 76 Upping the Ante: The Professional Anticipation Search 77 Conducting Your Own “Professional” Anticipation Search 79 Looking at Other Patent Searches 87 Chapter 8: Preparing Your Patent Application . . . . . . . . . . . . . . . . . . . .89 Understanding the Patent Application 89 Choosing Between Formal and Provisional Applications 90 Deconstructing the Patent Application 92 Disclosing Your Invention in the Specification 94 Arguing Your Case for Patentability 95 Staking Your Claims 96 Chapter 9: Filing Your Patent Application . . . . . . . . . . . . . . . . . . . . . . .109 Packaging the Application 109 Sending Your Application to the USPTO 112 Meeting Your Filing Deadlines 113 Keeping Your Application under Wraps 113 Asking for Special Status: Speeding Up Your Application 116 Preparing and Filing Patent Applications 118 Wise Things to Do While You Wait 120 Entering a Continuation Application 120 Chapter 10: Wrestling with the Patent Examiner. . . . . . . . . . . . . . . . .123 Touring the USPTO 124 Clearing Initial Administrative Hurdles 126 Splitting Up Is Hard to Do: Restricting the Application 128 Getting In on the Office Action 130 Reacting to a Final Rejection 145 Getting Flagged for Interference 147 Requesting a SIR 149 xiii Table of Contents Chapter 11: Reeling In the Prize: Getting Your Patent Issued . . . . . .151 Getting the Green Light 152 Put Down the Champagne: Taking Corrective Action 153 Dealing with Defective Patents 154 Submitting to Reexamination 160 Changing the Names of the Inventors or Assignees 164 Remembering to Pay Maintenance Fees 165 Marking Your Widgets with the Patent Number 165 Part III: Asserting Your Copyrights 167 Chapter 12: If It’s Got Style, You’ve Got Copyrights . . . . . . . . . . . . . . .169 Getting to Know the Copyright 169 Defining an Original Work of Authorship 170 Determining What Is Copyrighted and What Isn’t 173 The Scope of Copyright Protection 175 So What Does a Copyright Do for Me? 179 Chapter 13: Untangling Ownership Issues . . . . . . . . . . . . . . . . . . . . . .187 Making Sure You Own the Copyright 187 Changing the Owner: Transferring Interest in a Copyright 192 Investigating the Status of a Copyright 194 Chapter 14: Giving Your Copyright Fangs. . . . . . . . . . . . . . . . . . . . . . . .197 Making It Official: Registration 197 Finding and Filling Out Forms 201 Depositing Copies of the Work 207 Marking Your Copyrighted Work 212 Getting Help from Uncle Sam 213 Recording Copyright Documents 214 Part IV: Protecting Your Commerical Identity 217 Chapter 15: Flashing Your Badge . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .219 A Commercial Identifier Inventory 219 Putting Commercial Identifiers to Work 224 Testing the Legal Strength of Commercial Identifiers 228 Chapter 16: Coining the Next Household Name . . . . . . . . . . . . . . . . . .233 Marketing Power: Components of Good Commercial Identifiers 234 Trying the Tricks of the Trade 237 Avoiding the Seven Deadly Sins 241 [...]... descriptions, this book is for you How This Book Is Organized Patents, Copyrights & Trademarks For Dummies, 2nd Edition, is organized so that you can easily access the information that you need We’ve put the material in six parts, each with chapters related to a common theme We now give you a preview of coming attractions Projector, please 3 4 Patents, Copyrights & Trademarks For Dummies, 2nd Edition Part I:... on the CD 346 Troubleshooting 348 Wiley Publishing, Inc End-User License Agreement 348 Index 351 xv xvi Patents, Copyrights & Trademarks For Dummies, 2nd Edition Introduction W elcome to Patents, Copyrights & Trademarks For Dummies, 2nd Edition! We’ll try to make your visit as pleasant and enlightening as we can In our technology-driven world, intellectual property (IP)... through licensing agreements and other rewarding schemes Each of the main types of IP protection — patents, copyrights, and trademarks — is covered in its own complete part We also dedicate a chapter to the toooften overlooked subject of trade secrets 2 Patents, Copyrights & Trademarks For Dummies, 2nd Edition After reading this book, you’ll have a solid grasp of the processes involved in acquiring,... materials, ranging from forms to examples of back-and-forth communications with patent and trademark examiners In a pinch, the entire body of U.S IP laws is included as a surefire cure for insomnia Icons Used in This Book Marks tips and tricks that you can put to use to make your life easier while you’re protecting and profiting by your IP 5 6 Patents, Copyrights & Trademarks For Dummies, 2nd Edition Highlights...xiv Patents, Copyrights & Trademarks For Dummies, 2nd Edition Chapter 17: Searching for Name Availability 245 Practicing Prudence 245 Defining the Scope of Your Search 247 Carrying Out Your Search 250... under lock and key Whenever that happens to be the case, and you can’t keep some information as a trade secret, then you need to rely on other types of IP rights — patents, copyrights, or trademarks — for protection In Chapter 4, we explain how you can implement a trade secret strategy and how the law provides for enforcement of trade secrets in case of negligent or intentional disclosures We also... often called a Proprietary Rights Agreement See Chapter 13 for information on assigning and licensing copyrights and Chapter 15 for information about commercial identifiers The contract should always be in writing and be signed by all parties to the agreement You can also acquire contractual rights to intellectual property by buying a franchise for a specific type of business — fast-food and dry-cleaning... your IP assets? Sorry, Charlie, but an unprotected IP asset is up for grabs — anyone can copy it, steal it, or change it for the worse (possibly damaging your good reputation) The bottom line is that your unprotected IP will fatten the bad guy’s bottom line But there’s more to IP assets and rights than mere talk of patents, copyrights, and trademarks, and that’s what this chapter is all about First of... influenced by the pre-existing work For example, just think of how many books have recounted the life stories of the Kennedys Don’t forget: Unlike a patent, a copyright protects the form in which an idea or concept is expressed, not the idea or the concept itself Copyright basically doesn’t extend to abstractions or to anything technical or functional For example, an idea for a new TV program isn’t protected... perceptible and reproducible form without the need for any formality That means that as soon as you print out your great American novel, it’s already copyrighted That’s a big advantage over patents If, however, you want to sue someone for infringement — or worse yet, someone sues you — you need to prove that it’s actually your original work That’s why you should make it official and apply for a registration . by Henri Charmasson and John Buchaca Patents, Copyrights & Trademarks FOR DUMmIES ‰ 2ND EDITION Patents, Copyrights & Trademarks For Dummies, ® 2nd Edition Published by Wiley Publishing,. Agreement 348 Index 351 Patents, Copyrights & Trademarks For Dummies, 2nd Edition xvi Introduction W elcome to Patents, Copyrights & Trademarks For Dummies, 2nd Edition! We’ll try to. descriptions, this book is for you. How This Book Is Organized Patents, Copyrights & Trademarks For Dummies, 2nd Edition, is organized so that you can easily access the information that you need.