Patent - History Of U.S. Patent Office

In this article we're going to do a brief historical review of the United States Patent Office.

The first national patent system was influenced by Thomas Jefferson in 1790. This was actually added to the United States Constitution in order to protect the rights of inventors. From this began the growth of the American corporation. Even though the original thirteen colonies has individual patent laws it wasn't until this constitutional act that the patent system became uniform for everyone.

Actually, the modern concept of the patent itself was established in Great Britain in the year 1449. That year King Henry VI issued a patent to John of Utynam for stained glass manufacturing. The actual history of the English patent system is important for understanding the patent system of the United States but is not the focus of this article. There are plenty of documents online where this information can be found.

In the United States, congress actually passed several patent acts; one in 1790, one in 1793 and one in 1836. Each act added different things to the patent system as we know it today.

The patent act of 1790, the one influenced by Jefferson, required that all applications for patents had some kind of model, whether it be a drawing or prototype, to go along with the application. This was because Jefferson believed ideas should not be patentable.

The patent act of 1793 was actually a revision of the patent act of 1790 due to some differences of opinions between Jefferson and Alexander Hamilton who wanted to add provisions for overlapping patents, where two inventors applied for the same or similar patents. The act of 1793 created a patent board that was responsible for issuing patents. A two-thirds majority of the board, made up of the Secretary of State, Attorney General, and Secretary of War, would be required to issue a patent. This act was passed largely because of complaints by inventors that the act of 1790 was not sufficient to protect their rights as inventors.

It wasn't until the patent act of 1836 that the United States Patent Office was actually established. The patent office was created primarily because of the inefficiency of the other two acts in processing patents. Henry Ellsworth was mostly responsible for establishing this act. He was also appointed the first commissioner of patents.

Through this act a system was created for distributing new patents to libraries in every state. This way it would be easy for an inventor to research whether or not a patent existed for a particular invention. This would save the inventor a great deal of time applying for a patent that he couldn't get because it was already issued.

Much has changed in the patent office since those early days. What once took a relatively short period of time now takes years as far as securing a patent. Many times a patent isn't issued until long after the technology has been around for quite some time. Unfortunately in the current climate and with the rate of technological advances increasing everyday, patents are now viewed as nothing more than a bargaining chip in a court of law.

Your Independent guide to Patents

Trademarks in India: Law & Procedure

Legislation

The Indian law of trademarks is enshrined in the Trade Marks Act, 1999. The Act seeks to provide for the registration of trademarks relating to goods and services in India. The rights granted under the Act, are operative in the whole of india.

What is a Trademark

A TRADEMARK is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs is used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise from those of others. A SERVICE MARK is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.

A trademark is different from a copyright or a patent or geographical indication. A copyright protects an original artistic or literary work; a patent protects an invention whereas a geographical indication is used to identify goods having special characteristics originating from a definite territory.

Classification of Goods and Services*

Almost all jurisdictions including India employ a classification system in which goods and services have been grouped into classes for registration. Most countries follow the same classification system, namely the International Classification of Goods and Services, which consists of 34 classes of goods and 8 classes of services. (The WIPO recently revised the Nice Classification, adding three service classes (43, 44, 45) and restructuring Class 42, retaining certain services. This provision has not yet been implemented in India).

For example, printed matter, newspaper and periodicals are classified in Class 16 while services in the field of publication comes under Class 41. Time Incorporated, USA is the registered proprietor of the trademark ?TIME? in about 150 countries.

Rights conferred by registration

The registration of a trademark confers on the registered proprietor of the trademark the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. While registration of a trademark is not compulsory it offers better legal protection for action for infringement.

Who Can Apply For A Trademark

Any person can apply for registration of a trademark to the Trademark Registry under whose jurisdiction the principal place of the business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.

Trademark Search

Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.

Filing and Prosecuting Trademark Applications

An application for trademark may be made on Form TM-1 with prescribed fee of Rs. 2500/- at one of the five office of the Trade Marks Registry located at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad depending on the place where the applicant resides or has his principle place of business. The application is examined to ascertain whether it is distinctive and does not conflict with existing registered or pending trademarks and examination report issued. If it is found be acceptable then it is advertised in the Trade Marks Journal to allow others to oppose the registration. If there is no opposition or if the opposition is decided in favour of the applicant then the mark is registered and a certificate of registration is issued. If the applicant's response does not overcome all objections, the Registrar will issue a final refusal. The applicant may then appeal to the Intellectual Property Appellate Board, an administrative tribunal.

A common ground for refusal is likelihood of confusion between the applicant's mark with registered mark or pending prior mark. Marks, which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused registration. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.

Duration of a Trademark

The term of a trademark registration is for a period of ten years. The renewal is possible for further period of 10 years each. Unlike patents, copyrights or industrial design trademark rights can last indefinitely if the owner continues to use the mark. However, if a registered trademark is not renewed, it is liable to be removed from the register.

Use of the "TM," "SM" and "(R)" Symbols

Anyone who claims rights in a mark can use the TM (trademark) or SM (service mark) designation with the mark to alert the public of the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, (R), may only be used when the mark is registered.

Remedies For Infringement And Passing-Off

Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are: - ?an action for infringement' in case of a registered trademark and ?an action for passing off*' in the case of an unregistered trademark.

The basic difference between an infringement action and an action for passing off is that the former is a statutory remedy and the latter is a common law remedy. Accordingly, in order to establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. In the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient. The use of the mark should be likely to deceive or cause confusion. Further, in a passing off action it is necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff?s goodwill, whereas in an infringement suit, the use of the mark by the defendant need not cause any injury to the plaintiff.

However, the registration cannot upstage a prior consistent user of trademark in India, for the rule followed is ?priority in adoption prevails over priority in registration`. In many other jurisdictions like Saudi Arabia, Nepal etc. where the first party to register a trademark is considered the party to own the mark, regardless of prior use of the mark.

*Passing off originated with the tort of deceit. The doctrine is based on the principle that one trader is not to sell his goods under the pretence that they are the goods of another trader. Historically, marketplace has been concerned with guaranteeing consumers the quality of goods that they had come to rely upon in the course of trade. To further that guarantee, the common law developed the tort of passing off, which helped to assure that a person was representing his goods as being his and not the goods of someone else.

Safeguards to be taken by the proprietor of a registered trade mark to protect his rights: -

The proprietor should use and renew the trademark regularly and in time. If the trademark is misused by others he should file a suit for infringement and passing off and also take criminal action.

The proprietor should keep a watch in respect of trademarks published in the Trade Marks Journal and institute opposition proceedings if identical or deceptively similar trademarks are advertised. He should initiate rectification proceedings if an identical or deceptively similar trademark is registered.

Use Of Trademarks In Foreign Countries

Trademark rights are granted on a country-by-country basis. An Indian registration provides protection only in India and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws.

International trademark protection

There is no system as yet wherein a single trademark application is sufficient to protect the trademark right internationally. However, Paris convention* provides certain privileges to member countries in trademark registration. A party that files their first trademark application in a member state of the Convention, such as India, can within six months of that filing date file applications in other member countries claiming the priority of the first application. If such a trademark is accepted for registration it will be deemed to have registered from the same date on which the application is made in the home country.

It is also possible to utilize multinational filing systems in certain regions in order to obtain trademark protection. For example, Belgium, the Netherlands and Luxembourg have a single trademark registry, commonly referred to as the Benelux Trademark Register. The European Union consisting of 15 countries has adopted its own trademark system, known as the Community Trademark. The African Organization for Intellectual Property (OAPI), a group of African nations, have replaced their national trademark offices with a common trademark office which offers a single trademark registration valid in all of the member states.

Almost all countries have trademark offices in which applications may be filed. Therefore, when contemplating trademark protection in various countries, it is most helpful to start with a list of countries where registered trademark protection is available. Deciding where to register a trademark involves various considerations. Countries where a trademark is currently in use, but prior use of trademark is not recognized, should be the first to be considered for seeking registered protection. If commencing use shortly or expanding use to other countries within a few years, then such countries should also be included. The last group of countries should be those have a history of unauthorized registration of other's trademarks.

* Paris Convention is the most basic and important multilateral convention relating to intellectual property, including trademarks, of which India is a member. It defined the meaning and scope of industrial property rights protection and established basic principles and rules.

P.M. George Kutty Attorney at Law of http://www.pmgip.com

Trademarks and Proprietary Rights in Franchise Systems

One of the things that a franchisor has to offer a potential franchisee is their brand name. A strong brand name means the built-in potential customers for the franchisee and his franchise outlet. Each franchisor must stipulate how their trademarks and proprietary information within the confidential operations manual will be used during the term of the franchise. It is far better in my opinion to be upfront with this issue into address it in the franchise agreement prior to the signing or exchanging of any monies for the franchise business. It is for this reason that I developed a clause to put into our franchise agreement, which was a little different than most other franchisors. Below is a copy of that clause;

3.11.1 Proprietary Rights

Franchisee acknowledges the exclusive right, title and interest of Franchisor in and to the Marks. Franchisee agrees that the Service Marks, Confidential Operations Manual, and System are Franchisor?s sole and exclusive property. Nothing in this Agreement or any other agreement will give Franchisee or others any right, title, or interest whatsoever in or to the Service Marks, Confidential Operations Manual, or System as it exists or as it is developed. Franchisee?s license to use the Service Marks is non-exclusive. Franchisor, in its sole discretion, may operate under the Service Marks and may grant licenses to others to use the Service Marks on any terms and conditions Franchisor deems appropriate. Franchisor may make reasonable efforts to protect Franchisee?s rights to use the Service Marks. In those states and nations where applicable, Franchisee agrees to execute on request all documents necessary to record Franchisee as a registered user of the Service Marks.

Franchisee will immediately notify Franchisor of any infringement of, or challenge to, their use of the Service Marks. Franchisor will have sole discretion to take or not to take action, as Franchisor deems appropriate. If Franchisor undertakes the defense or prosecution of any litigation involving Franchisee or any litigation involving the Service Marks, Franchisee agree to execute any and all documents and to do all acts and things, that in the opinion of Franchisor?s counsel are necessary or advisable to carry out the defense or prosecution. This may be done either in Franchisor?s name or in Franchisee?s name, as Franchisor will elect. Franchisee will modify or discontinue use of any franchise names or Service Marks, or will use one or more substitute names or marks, if Franchisor so directs in writing at any time.

Franchisor?s sole obligation in this event will be to reimburse Franchisee for their tangible costs in complying with Franchisor?s direction (i.e., cost of changing signs, stationery, etc.). Under no circumstances will Franchisor be liable to Franchisee for any other damages, costs, losses, rights, or detriments related to any modification, discontinuance, or substitution. All obligations or requirements imposed upon Franchisee relating to the Service Marks will apply with equal force to any modified or substituted names or marks.

Franchisee will not contest, directly or indirectly: Franchisor?s ownership, title, right, or interest in the Service Marks, the Confidential Operations Manual, the Confidential Marketing Manuals or the System; or Franchisor?s exclusive right to register, use, or license others to use the Service Marks, Confidential Operations Manual, the Confidential Marketing Manuals and System. Franchisee will not advertise or use the Service Marks without following Franchisor?s then current guidelines and requirements. These may include, but will not be limited to, the placement of appropriate (C) or (R) copyright and registration marks, or the designations TM or SM, where applicable.

Any and all goodwill associated with the Service Marks, as existing or as developed, including any goodwill that might be deemed to have arisen through Franchisee?s activities, will accrue directly and exclusively to the Franchisor?s benefit, except as otherwise provided by applicable law. Franchisee appoints Franchisor as their agent and attorney-in-fact to amend or cancel any Registered User or Business Name filings obtained by Franchisee or on Franchisee?s behalf that involve or pertain to the Service Marks.

Franchisee acknowledges and agrees at all times and in all respects that Franchisor?s trademarks, trade names, service marks, patents, copyrights and all goodwill (local, regional and national) are the Franchisor?s sole and exclusive property. Franchisee also acknowledges that Franchisee has only a license to use such rights and marks according to the provisions of this Franchise Agreement and in strict accordance with the standards, specifications and procedures as outlined in the Confidential Operations Manual. Franchisee will not take any action contesting or impairing the exclusive right, title and interest of the Franchisor?s in any trademarks, trade names, service marks, patents and copyrights. Franchisee will not represent that Franchisee has any ownership rights in the Marks and Franchisee acknowledges that use of the Marks will not create in its favor any right, title or interest in or to the Marks, but that all uses will inure to the benefit of the Franchisor. Neither Franchisee nor any officer, director, agent or employee of Franchisee shall in any way register or attempt to register the Marks, whether within or outside the Marketing Area, with any government or any other authority, nor dispute or impugn the validity of the Marks, any registration or application to register any of the Marks, Franchisor?s rights to the Marks, or Franchisor?s rights to use Marks or grant licenses to others to use the Marks.

Franchisee must affix and change trademark notices and indications of registration when and as instructed by Franchisor. Franchisee must assist Franchisor to the extent reasonable requested in obtaining or maintaining any registration of any of the Marks to the extent reasonably requested, including by providing advertising samples.

It behooves all franchisors to make an audit of their brand-name ended their proprietary information and decide how best to protect its value. It is advised to discuss this at length, as it is money well spent with a competent, knowledgeable and experienced franchise attorney to best strategize ways to protect your franchisee company and its proprietary information. Do consider this in 2006.

Lance Winslow, a retired entrepreneur, adventurer, modern day philosopher and perpetual tourist.