This country-specific Q&A provides an overview to intellectual property law in United States.
It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/
What different types of intellectual property rights exist in this jurisdiction to protect?
(a) Inventions (e.g. patents, supplementary protection certificates, rights in confidential information and/or know-how);
1) Utility patents for new and useful aspects of a process, a machine, a manufacture, and a composition of matter; 2) design patents for the ornamental and non-functional aspects of a design; and 3) plant patents for asexually reproducible plants.
Patent rights are distinct from rights in confidential information and/or know-how which are governed by trade secret laws.
(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);
Rights in trademarks, including service marks and trade dress (non-functional aspects of a product or its packaging) are provided for under U.S. common law and in the Lanham Act, 15 U.S.C. Chapter 22. Trademark rights arise in the U.S. based upon actual use of the mark in interstate or international commerce, not registration.
Subchapter III of the Lanham Act, included in §§ 1111-1127, sets forth the causes of action and remedies for trademark infringement as well as importation of infringing goods, false designations of origin, false descriptions and dilution of trademarks.
Subchapter IV of the Lanham Act, included in §§ 1141-1141n, sets forth the U.S. requirements for applications under the Madrid Protocol, which provides for international registration of trademarks.
(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in confidential information and/or know-how).
Copyrights protect original works of authorship that are fixed in a tangible medium. The Copyright Act of 1976, title 17 of the United States Code.
Databases that are an original work of authorship are generally protectable as compilations under the Copyright Act. The underlying data is not protectable merely because the collection of data within the database is protectable.
Semiconductor topography rights in the U.S. are governed by the Semiconductor Chip Protection Act (SCPA). Such rights are acquired by filing with the U.S. Copyright Office an application for a “mask work” registration under the SCPA.
Trade secrets are protectable. A trade secret, generally, may be all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing, that is not generally known, and that derives independent economic value for its owner.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
(a) Utility and Plant Patents
- If the application for patent was filed on or after June 8, 1995, the term of a U.S. utility or plant patent is twenty (20) years from the earliest filing date of the application and any U.S. nonprovisional patent application or Patent Cooperation Treaty (PCT) applications from which the patent claims priority.
- If the application for patent was filed before June 8, 1995, the term of a U.S. utility or plant patent is the longer of: (A) seventeen (17) years from the date the patent was issued, and (B) twenty (20) years from the earliest filing date of the application and any U.S. nonprovisional patent application or PCT application from which the patent claims priority.
Patent term is provided for in 35 U.S.C. § 154. The term of a U.S. patent may be adjusted for certain patent office delays, as set forth in 35 U.S.C. 154(b).
For products that require regulatory approval before the product may be sold in the U.S., and for methods of using or manufacturing such products, the patent term may be extended in certain circumstances, as set forth in 35 U.S.C. §156.
(b) Design Patents
- For applications filed on or after May 13, 2015, the patent term is fifteen (15) years from the date the patent issued.
- For applications filed before May 13, 2015 the patent term is fourteen (14) years from the date the patent issued.
A federal trademark registration can be maintained for as long as the mark remains in continuous use in interstate or international commerce. The registration must be renewed every ten (10) years and, a “declaration of use” must be filed between the fifth (5th) and sixth (6th) year following registration.
- Works of authorship created on or after January 1, 1978, per 17 U.S.C. § 302:
(A) If created by a single author, the copyright term includes the author’s life plus an additional seventy (70) years.
(B) If created by two or more authors, the copyright term endures for seventy (70) years after the last surviving author’s death.
(C) If created anonymously or pseudonymously, the copyright term endures for ninety-five (95) years from the first publication of the work or one hundred twenty (120) years from creation, whichever is shorter.
- Works that were in existence before January 1, 1978 but were neither published nor registered before that date have a term as set forth in (1)(A)(B) and (C) above, and in any event shall not have expired prior to December 31, 2002. If a work in this category was published before December 31, 2002, the term was extended another forty-five (45) years through the end of the year 2047. See 17 U.S.C. § 303.
- The copyright term for works under statutory protection before 1978 is set forth in 17 U.S.C. § 304.
(e) Trade Secrets
A trade secret may endure so long as it remains a secret, that is, not generally known to the public, and confers some economic benefit on its holder, and is the subject of reasonable efforts to maintain its secrecy.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
The first owner of a U.S. patent (utlilty, design or plant) is the inventor. This is not different if the patented innovation was created in the course of employment or under a commission unless a written agreement to the contrary is executed by the inventor. An employer, in certain circumstances, may have a so-called “shop right” which provides an implied license for the employer to use the patented invention but this shop right does not provide ownership of the innovation to the employer.
The first owner of a U.S. trademark is the entity that uses the trademark in interstate or international commerce. The owner of a U.S. trademark registration is the entity that obtains the registration from the U.S. Patent and Trademark Office.
The first owner of a copyright in the U.S. is the author of the work, unless the work was a “work made for hire” as defined in 17 U.S.C. § 101.
(d) Trade Secret
Trade secrets are initially owned by the entity that holds the information and takes reasonable steps to maintain its secrecy.
Which of the intellectual property rights described in questions 1-3 are registered?
Copyrights are registered via the U.S. Copyright Office. Patents and Trademark registrations are granted by the U.S. Patent and Trademark Office, after review of an underlying application to ensure that the legal requirements for grant have been met.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
The inventor(s) or their legal respresentative, or a person or entity to whom the inventor has assigned or is under an obligation to assign the invention, may apply for a patent, with certain exceptions.
An entity that is using the mark in interstate or international commerce, or has a bona fide intent to do so, may apply for registration of a mark in the U.S. Under certain international agreements, owners of a foreign trademark application, a foreign trademark registration, including international applications and registrations, may seek registration for the same mark in the U.S.
The author or the author’s heirs or assignees can seek registration of a copyright, and otherwise own the rights provided for by common law to a work of authorship.
How long does the registration procedure usually take?
- Utility patents: The USPTO reports that the average utility patent application is granted as a patent or abandoned in about 26 months, although longer pendency is not uncommon.
- Design patents: The USPTO reports that the average design patent application is granted as a patent or abandoned in about 19 months.
- Plant patents: Average plant patent application pendency is difficult to predict because of the relatively few plant patents granted each year (around 1,000), and application pendency can vary considerably.
The USPTO reports that the average trademark application pendency is about 10 months.
Registrations are generally completed in 3 months for applications filed electronically and in 10 months if filed in paper form.
Do third parties have the right to take part in or comment on the registration process?
Third parties cannot protest or submit pre-issuance oppositions to the grant of a patent without express written consent of the applicant. Third parties can submit prior art references for consideration during a patent application’s pendency.
Once an application for registration is approved by the USPTO the mark is published and any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition or request an extension of time to file an opposition.
Third parties cannot participate in the registration process.
What (if any) steps can the applicant take if registration is refused?
The applicant may appeal to the Patent Trial and Appeal Board (PTAB) whose decision may be appealed to the U.S. District Court for the Eastern District of Virginia or to the Court of Appeals for the Federal Circuit.
The applicant may appeal to the Trademark Trial and Appeal Board (TTAB) whose decision may be appealed to: 1) the United States Court of Appeals for the Federal Circuit; or 2) any Federal district court which has jurisdiction over the applicant but if there are adverse parties residing in a plurality of districts not within the same state, or an adverse party residing in a foreign country, the United States District Court for the Eastern District of Virginia has jurisdiction.
Applicants may request reconsideration - a first reconsideration request is reviewed by the Copyright Office’s Registration Program and a second reconsideration request is reviewed by the Copyright Office’s Board of Review whose decision may be appealed to a U.S. Federal District court.
What are the current application and renewal fees for each of these intellectual property rights?
- Utility Patents:
The filing fee for a nonprovisional patent application with both 20 or fewer total claims and 3 or fewer independent claims is $1,600. After allowance, an issue fee of $960 must be paid. 3.5, 7.5 and 11 years after issuance, maintenance fees must be paid or the patent will expire. These fees are, respectively, $1,600, $3,600 and $7,400.
- Design Patents:
Application filing fee is $760. After allowance, an issue fee of $560 must be paid. No maintenance fees are due for a design patent.
- Plant Patents.
Application filing fee is $1,140. After allowance, an issue fee of $760 must be paid. No maintenance fees are due for a plant patent.
**** Patent fees may be reduced by 50% for small entities, and by 75% for micro entities.
Application filing fee is between $225 and $600 per international class of goods in the application, depending upon the manner in which the application is filed (in paper or electronically).
Renewal fees are between $300 and $500 per class if filed electronically or in paper form. An affidavit of use is also due with the renewal application and costs $125 (electronic filing) or $225 (paper filing).
The renewal rules do not apply to registered extensions of international registrations to the United States.
Most application filing fees are between $35 and $85 depending upon the work being registered and whether the application is submitted in paper form or electronically. Specialty applications for a vessel hull design are $400, and a mask work application is $120. The fee to preregister certain unpublished works is $140.
Renewals are not needed under the 1976 Act. For works covered by the prior Copyright Act, renewal fees are $100 but renewal is optional as the term is now extended by operation of law even without requesting renewal.
- Utility Patents:
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
A patent expires if a maintenance fee is not paid. If the failure to pay the maintenance fee was unintentional, the patentee may petition the USPTO to accept a late payment and reinstate the patent. 37 C.F.R. § 1.378. A reinstated patent is subject to the conditions set forth in 35 U.S.C. § 41(c)(2).
The registration expires if the renewal application is not timely filed. Failure to timely file the renewal application cannot be cured.
Renewing registrations for works created before January 1, 1978 is optional and the term extends even without renewing the registration. Renewal is not needed under the current copyright act.
What are the requirements to assign ownership of each of the intellectual property rights described in questions 1-3?
35 U.S.C. § 261 governs assignments of patents and patent applications, which must be in writing. The general rules of a contract apply, including the requirements for mutual assent, consideration, legal purpose and legally competent parties.
A trademark assignment must be in writing “duly executed” and must include the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of an symbolized by the mark. The general rules of a contract apply, including the requirements for mutual assent, consideration, legal purpose and legally competent parties.
An intent-to-use application cannot be assigned until an allegation of use has been filed in the USPTO, unless the assignment is made to a successor to the business of the applicant, or the portion thereof to which the mark pertains.
15 U.S.C. §1141 applies to assignment of an extension of protection to the United States of an international registration may be assigned, together with the good will associated with the mark, only to a person who is a national of, domiciled in or has a bona fide and effective industrial or commercial establishment in a country that is either (1) party to the Madrid Protocol or (2) a member of an intergovernmental organization that is a party to the Madrid Protocol.
Any or all of the copyright owner’s exclusive rights or any subdivision of those rights may be transferred (assigned or licensed). The transfer agreement must be in writing and signed by the owner of the rights being conveyed or such owner’s duly authorized agent. A nonexclusive transfer does not require a writing.
(d) Trade Secrets
Trade secrets can be assigned to another. General contract rules apply to such assignments including the requirements for mutual assent, consideration, legal purpose and legally competent parties.
What are the requirements to licence a third party to use each of the intellectual property rights described in questions 1-3?
(a) Patents, Trademarks and Trade Secrets
A license must comply with the general contract rules including the requirements for mutual assent, consideration, legal purpose and legally competent parties. A license agreement need not be in writing, but there are advantages to a written license agreement.
Grants of exclusive rights must be in writing, but grants of non-exclusive rights are not required to be in writing.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Registration or recordation of an assignment is not required for patents, trademarks, copyrights or trade secrets, but there are benefits of doing so for patents, trademarks and copyrights.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Generally, only the owner and successors in title can sue another party for patent infringement. An exclusive licensee will typically have the right to sue another party under the patent to protect the exclusivity granted. A non-exclusive licensee does not have the right to sue another party under the patent – the patent owner must be joined in any such lawsuit.
Under certain circumstances, an exclusive licensee can pursue a trademark infringement action. A non-exclusive licensee cannot.
The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for infringement of a right to which they have exclusivity. A non-exclusive licensee cannot sue another party for copyright infringement.
(d) Trade Secrets
In at least some jurisdictions, both exclusive and non-exclusive licensees may bring an action for misappropriation of the licensed trade secret.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Patent infringement in the U.S. is not punishable by criminal penalties. However, criminal penalties are available for trademark and copyright infringement as well as the theft of trade secrets in some circumstances. With respect to trademark infringement, the Federal Anti-Counterfeiting Criminal Statute provides that any person who intentionally traffics in goods or services and knowingly uses a counterfeit mark on or in connection with the goods or services can be liable for up to ten years of imprisonment and fines of up to $2M. See 18 U.S.C. § 2320. A second offense can raise these penalties to $5M and imprisonment of up to twenty years. Copyright infringement may be punished with up to five years of imprisonment for a first offense and up to ten years for a second offense and fines of up to $250,000. See 18 U.S.C. § 2319. In addition, the Federal Economic Espionage Act (18 U.S.C. § 1832) punishes theft of trade secrets with imprisonment of up to 10 years and the greater of $5M or three times the value of the stolen trade secret to the organization. To invoke this, the facts are provided to a prosecutor’s office that determines whether criminal proceedings are appropriate.
What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in questions 1-3? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
Intellectual property owners can enforce their rights in a variety of forums. For example, patent, registered trademark, and registered copyright owners can file infringement claims in federal district courts. In addition, intellectual property owners can also seek to enforce their rights with the International Trade Commission by filing a section 337 complaint. The ITC can investigate allegations of patent, trademark, or copyright infringement as well as other allegations of unfair competition.
What is the length and cost of such procedures?
The length and cost of these procedures can vary depending on a variety of factors. For example, the federal courts in the U.S. are divided into different geographical districts and each of these districts have different case load volumes that could affect the length of time needed to resolve a dispute. Further, intellectual property disputes vary in their complexity, which will affect the amount of resources consumed. Generally speaking, most intellectual property cases require more than eighteen months to resolve.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
Federal courts have jurisdiction over patent law under the Patent Act, enforcement of trademarks (registered and unregistered) under the Lanham Act, and federally-registered copyrights under the Copyright Act. Complaints are filed in federal district court where venue is proper. After a complaint has been filed and served on the defendant, the defendant files an answer and discovery begins. The amount of time that passes between filing of the complaint and judgment from the court can vary between one to three years, depending on the docket of the court. Trials can be carried out before ultimately resolving the matter and the trials are decided by a jury or by the judge in a bench trial if the right to a jury trial has been waived. Intellectual property owners may be entitled to monetary damages, injunctive relief, or both. Litigants in a patent dispute have the right to an appeal to the Court of Appeals for the Federal Circuit, which usually provides a decision within twelve to eighteen months. Otherwise, final judgments can be appealed to a geographically-located court of appeals.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so?
a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
Federal judges generally do not have scientific or technical backgrounds. However, the judges can become knowledgeable about different technologies despite lacking specific expertise.
With respect to patent trials, each party can provide an expert witness who can draft an expert report providing a technical explanation of the product as well as an interpretation of how a person skilled with that technology would interpret a patent at issue. Also, the judge can appoint a mutually-agreed-upon special master or technical advisor who can review the technical interpretations offered by each party and provide an opinion to the judge as to the merit of the different positions.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Discovery is available as the mechanism through which parties share information about the dispute. The parties are obligated to provide certain information to each other without direction to do so by discovery requests. In addition, each party can specifically request relevant information from the opposing party. In response, the opposing party should provide the requested information. But, if they are not cooperative, a motion for an order compelling disclosure can be filed and the court can direct the opposing party to provide the requested information if the court determines that the information is discoverable. The parties usually apply for a protective order that limits the dissemination of particularly sensitive information.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
Evidence is almost always introduced to the court through a sponsoring witness who has personal knowledge of the evidence and can confirm the veracity of what is offered. Sometimes, an expert witness without personal knowledge of the evidence can be used to introduce the evidence. Opposing parties almost always seek to cross-examine the sponsoring or expert witness.
What customs procedures are available to stop the import and/or export of infringing goods?
Intellectual property owners can report their registered trademark or registered copyright as well as an exclusion order resulting from a finding of patent infringement issued by the ITC with U.S. Customs and Border Protection (CBP) that enforces intellectual property rights at all U.S. ports of entry. The CBP can exclude from entry, detain, and/or seize merchandise with counterfeit trademarks and gray market trademarked goods as well as pirated copies of copyrighted works.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
Enforcement of intellectual property rights against an alleged infringer generally falls to the federal court system. Federal courts often require that parties to litigation submit to facilitation, mediation, or arbitration as an alternative mechanism that can bring parties to a resolution. However, these proceedings cannot be mandated to resolve the dispute.
What options are available to settle intellectual property disputes in your jurisdiction?
Infringement and validity of intellectual property can be challenged in any federal district court while the validity of some intellectual property rights can be challenged at the Patent Trial and Appeal Board or the Trademark Trial and Appeal Board at the United States Patent and Trademark Office.
What is required to establish infringement of each of the intellectual property rights described in questions 1-3? What evidence is necessary in this context?
Patent infringement involves determining the boundaries of what has been invented by determining the elements of each claim and how those elements are defined by the patent. Once those boundaries have been established—during a process called claim construction--it is determined whether an accused device or process satisfies all of the elements of at least one claim as those elements have been defined by the patent. A patent owner must establish that the accused device includes all of the elements of at least one claim by a preponderance of the evidence to establish infringement.
The trademark owner can establish trademark infringement when a junior user’s use of a similar mark creates a likelihood of confusion. Establishing that a likelihood of confusion exists can be shown with survey evidence that confusion exists, evidence of actual confusion between the two marks, and an inference drawn from a comparison of the two marks and the context of their use in the marketplace. A preponderance of the evidence must establish that a likelihood of confusion exists.
Copyright infringement is shown when a copyright owner establishes ownership of the copyright and that one of the following rights has been violated: 1) reproduction of a copyrighted work; 2) preparation of derivative works based on the copyrighted work; 3) distribution of copies or phonorecords of the copyrighted work to the public; 4) performance of the work publicly; 5) display of the work publicly; or 6) with respect to a sound recording, performance of the work publicly by means of digital audio transmission. An owner establishes copying by proving that the infringer had access to the copyrighted work and that the copied work is substantially similar to the copyrighted work. This must be established by a preponderance of the evidence.
What defences to infringement are available?
Patent infringement defenses generally involve establishing that an accused device does not infringe the claims(s) of the patent or invalidity of an asserted patent. Non-infringement includes establishing that the accused device does not meet one or more elements found in the asserted claim(s). And a patent can be found invalid by establishing, for instance, that the 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 patent or that the applicant for the asserted patent committed inequitable conduct while obtaining the patent thereby rendering the patent unenforceable.
Trademark defenses include no likelihood of confusion and any of the available attacks on the validity of a trademark registration as well as equitable defenses such as laches and estoppel. Copyright infringement defenses include failing to establish ownership or copying as well as a number of other defenses, such as fair use, copyright invalidity, a license/assignment from the copyright owner, and joint ownership of the work along with equitable defenses. A statute of limitations defense is also available for copyright disputes.
Who can challenge each of the intellectual property rights described in questions 1-3?
In federal court, defendants who have been sued for patent infringement can challenge infringement as well as the validity of the asserted patent. However, anyone can challenge the validity of a patent at the Patent Trial and Appeal Board (PTAB). A third party can file petition with the PTAB for inter partes review of a particular patent and submit evidence that the patent is invalid. With regard to trademarks, Defendants to a complaint alleging trademark infringement can challenge the validity of the trademark registration asserted. And a third party can file a petition for an inter partes opposition, cancellation, or concurrent use proceeding at the Trademark Trial and Appeal Board (TTAB). Defendants named in a copyright infringement complaint filed in federal court can challenge the validity of a federal copyright registration.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
The validity of patents can be challenged after they have been issued while application for trademark registrations can be challenged after the registrations have been published. And copyright registrations can be challenged after those registrations have been asserted against an alleged infringer.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
Patent validity can be challenged in a federal court where venue is proper as well as the PTAB. A person or corporation wanting to challenge validity can file a complaint seeking declaratory judgment against the patent owner. However, the person/corporation does not have a right to file a declaratory judgement––there must be an imminent threat of litigation. Validity may also be challenged using a request for inter partes review with the PTAB. Trademark validity can also be challenged in federal court by filing a complaint or in the TTAB with a petition for inter partes review of the registration.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described in questions 1-3, for example, declaratory relief or licences of right?
Sometimes alleged infringers are able to assert that they have rights to intellectual property without an explicit license. For example, an employee who develops an invention using the equipment and facilities of the employer may effectively grant the employer a license to use that invention based on the common law “shop right” of the employer.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in questions 1-3?
Owners of patents and registered trademarks can seek infringement remedies that include monetary as well as injunctive relief. Injunctive relief may be preliminary or permanent. Owners of a registered copyright is entitled to actual damages and any of the infringer’s profits or statutory damages, which can be up to $150,000, as well as cost’s and attorney’s fees.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
Costs for enforcing intellectual property rights vary widely depending on the tribunal determining the rights and complexity of the dispute. There is no mechanism for security of costs. But an infringer who appeals may have to post a bond to secure the damages amount pending the outcome of the appeal.