Patents, trade marks, copyright and designs in United States: overview

A guide to intellectual property law in the United States. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.

To compare answers across multiple jurisdictions, visit the Patents, trade marks, copyright and designs: Country Q&A tool.

This Q&A is part of the global guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-guide.

Patrick J. Coyne, Denise Main, Adriana L. Burgy, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Contents

Patents

1. What are the legal requirements to obtain a patent?

The legal requirements for utility patents are that they are:

  • Proper, new and have a useful subject matter.

  • Novel.

  • Non-obvious.

  • Able to be covered by disclosure, with a written description and appropriate claims.

The legal requirements for design patents are that they are:

  • New.

  • Non-obvious.

  • Original.

  • Ornamental.

  • A complete and unambiguous drawing or photograph.

The legal requirements for plant patents are that they are:

  • New.

  • Non-obvious.

  • Asexually reproduced and non-tuber-propagated plant varieties.

 
2. What categories are excluded from patent protection?

The following are excluded from patent protection:

  • Laws of nature, physical phenomena and abstract ideas.

  • Nuclear weapons.

  • Artistic works.

  • Claims "embracing" a human.

  • Tax strategies.

Design patents exclude offensive and functional designs.

Plant patents exclude:

  • Plants found in uncultivated fields.

  • Sexually reproduced plants.

  • Tuber-propagated plant varieties.

 
3. Which authority registers patents? Does its website provide guidance on the application procedure?

The United States Patent and Trademark Office (USPTO) (see box, The regulatory authorities) registers patents and guidance is given on the application procedure at its website (www.uspto.gov) USPTO considers each criteria for, and exclusions from, patentability (see Questions 1 and 2).

 
4. On what grounds and when can third parties oppose a patent application?

Pending patent applications

Patent applications with a priority date before 16 March 2013 can be challenged on the grounds that the invention was first made by another.

For all applications, a pre-issuance submission may be filed by a third party to submit:

  • Patents.

  • Published applications.

  • Printed publications.

  • A statement of their relevance.

Issued patents

Ex parte re-examination. This requires a substantial new question of patentability. Grounds are limited to anticipation or obviousness based on prior art patents or printed publications. There is no estoppel to relitigating issues provided that the petitioner has not already filed an inter partes review or a post-grant proceeding and a final decision has issued.

Inter partes review (IPR).The following applies:

  • For patents filed prior to 16 March 2013, an IPR may be initiated by a third party immediately after issuance.

  • For patents filed on or after 16 March 2013, an IPR may be initiated by a third party either nine months after the grant or reissue of the patent or the termination of any post-grant review proceeding, whichever comes later.

  • The petitioner must not have initiated a declaratory judgment action.

  • The IPR must be filed within one year of the petitioner having been served with an infringement complaint.

  • There must be a reasonable likelihood exists that at least one claim in a challenged patent is invalid. Grounds are limited to anticipation or obviousness based on prior art patents or printed publications. A petitioner is barred later from re-litigating issues that were raised or reasonably could have been raised.

Post-grant review (non-covered business methods). This may be initiated by a third party on a patent filed on or after 16 March 2013, within nine months of grant or reissue. It must be more likely than not that at least one claim is invalid. Grounds include:

  • Statutory subject matter.

  • Anticipation.

  • Obviousness.

  • Enablement.

  • Written description.

  • Indefiniteness.

The petitioner must not have initiated a declaratory judgment action. The petitioner is barred from re-litigating issues at a later date that were raised or reasonably could have been raised.

Post-grant review (covered business methods). These are the same as post-grant reviews except:

  • The petitioner must be sued or charged with infringement of a covered business method patent.

  • It may be initiated on any patent irrespective of filing date.

  • The petitioner is only barred from re-litigating issues at a later date that were actually raised.

 
5. When does patent protection start and how long does it last?

Utility and plant patent protection starts on grant and:

  • For applications filed on or after 8 June 1995, lasts 20 years from the filing date of the earliest US non-provisional application or Patent Cooperation Treaty (PCT) application to which priority is claimed.

  • For applications filed before 8 June 1995, or enforceable on 8 June 1995, lasts the longer of:

    • 17 years from patent grant; or

    • 20 years from the filing date of the earliest non-provisional US or PCT application to which priority is claimed.

Patent protection varies:

  • Design patents: 14 years from grant.

  • Plant Variety Protection Certificates: 20 years from grant.

  • Mask Work Protection Certificates: 10 years from grant.

Patent term extension is available to restore a portion of term lost due to prosecution delays attributable to the United States Patent and Trademark Office (USPTO).

 
6. On what grounds can a patent infringement action be brought?

Unauthorised grounds are:

  • Making, using, selling, offering to sell within or importing into the US the subject matter of the patent.

  • Submitting an Abbreviated New Drug Application or Section 505(b)(2) Application under the Drug, Price Competition and Patent Term Restoration Action of 1984 (Hatch-Waxman Act) to the US Food and Drug Administration where the Reference Listed Drug is covered by an Orange Book-listed patent.

  • Importing into, using, selling, or offering to sell within the US a product made outside the US by a patented process.

Under the doctrine of equivalents, a party may be liable for infringement with an infringing device or process that falls outside the literal scope of a patent claim yet is equivalent to the claimed invention.

Induced infringement is:

  • Actively encouraging direct infringement by another.

  • Knowingly supplying components of a patented invention for assembly outside of the US.

Contributory infringement is:

  • Selling, offering to sell, or importing a component, knowing it is specially made or adapted to infringe.

  • Supplying a component, knowing and intending that it will be combined outside the US in an infringing manner.

 
7. Which courts deal with patent infringement actions?

US district courts and the US International Trade Commission (USITC) deal with patent infringement actions. Appeals are heard by the US Court of Appeals for the Federal Circuit.

 
8. What are the defences to patent infringement actions?

The defences to patent infringement actions are:

  • Non-infringement.

  • Invalidity of the patent.

  • Unenforceability.

  • Equitable defences, including acquiescence, laches and estoppel.

 
9. What are the remedies in patent infringement actions?

District court remedies include:

  • Compensatory damages.

  • Injunctive relief.

  • Enhanced damages (up to threefold) for wilful infringement.

  • Attorney's fees, in exceptional cases.

  • Costs.

US International Trade Commission (USITC) remedies include:

  • General or Limited Exclusion Orders.

  • Temporary exclusion.

  • Cease and Desist orders.

 
10. Is there a fast-track and/or a small-claims procedure for patent infringement actions?

No, but certain districts, for example, the Eastern District of Virginia, are faster. A preliminary injunction of infringing activity may be granted early during pendency of action.

 

Trade marks

11. What are the legal requirements to obtain a trade mark?

Common law rights must be used in commerce as a designation of source of the goods or services.

Federal rights must be used in interstate commerce.

 
12. Is it necessary or advisable to register trade marks?

Registration is not required but advisable. Federal registration presumes, among other things:

  • Ownership.

  • Exclusive use.

  • Validity.

Unregistered marks are protected by federal law for claims of:

  • False designation of origin.

  • False advertising.

  • Dilution.

 
13. Which authority registers trade marks? Does its website provide guidance on the application procedure?

United States Patent and Trademark Office (USPTO) registers trade marks (see box: The regulatory authorities). Its website provides guidance on the application procedure (www.uspto.gov).

 
14. On what grounds can the regulatory authority refuse to register a trade mark?

The grounds that a regulatory authority can refuse to register a trade mark are as follows:

  • Failure to submit the application in the required form.

  • Failure to use the mark in interstate commerce.

  • Non-distinctive mark.

  • An immoral, deceptive or scandalous mark.

  • Falsely suggesting a connection with, or tending to bring another or an institution into contempt or disrepute.

  • Falsely suggesting a protected geographic designation (for example, Champagne).

  • A state or national flag, insignia, or designation.

  • Name, signature or portrait of a living person without authorisation.

  • Name, signature or portrait of a US President.

  • Prior use or registration by another of the mark or of a mark that is confusingly similar.

 
15. On what grounds and when can third parties oppose a trade mark application?

Federal registration can be opposed on the same grounds on which the United States Patent and Trademark Office (USPTO) can refuse registration (see Question 14).

 
16. When does trade mark protection start and how long does it last?

Protection begins with the first use of the mark in commerce (state) or interstate commerce (federal) and lasts as long as the mark is used and continues to distinguish the owner as the source of the goods or services.

 
17. On what grounds can a trade mark infringement action be brought?

Trade mark infringement actions can be brought under the following grounds:

  • Likelihood of confusion.

  • Mistake.

  • Deception.

 
18. Which courts deal with trade mark infringement actions?

The following courts deal with trade mark infringement action:

  • US district courts.

  • US International Trade Commission (USITC).

  • State courts.

 
19. What are the defences to trade mark infringement actions?

Until the mark is incontestable, all grounds for denying registration are defences (see Question 14).

Defences to incontestable marks are:

  • Failure to use the mark in interstate commerce.

  • Unenforceability of the mark.

 
20. What are the remedies in trade mark infringement actions?

The remedies in trade mark infringement actions are:

  • Monetary relief.

  • Injunctive relief.

  • Enhanced damages.

  • Impoundment and destruction of infringing goods.

 
21. Is there a fast-track and/or a small-claims procedure for trade mark infringement actions?

No, but certain courts are faster.

 

Copyright

22. What are the legal requirements to obtain copyright protection?

Copyright subsists in original works of authorship fixed in a tangible medium of expression. Data exclusivity rights extend to certain information submitted to Government regulators. Certain data submitted to the Government is also confidential.

 
23. Can copyright be registered?

The US Copyright Office registers copyrights (see box, The regulatory authorities). Federal registration presumes ownership and validity, which is required for filing an infringement action, and can be used to protect against importation into the US. Data exclusivity and confidentiality rights are not registered.

 
24. When does copyright protection start and how long does it last?

Copyright protection runs as follows:

  • For works created after 1 January 1978: life of the author plus 70 years.

  • For anonymous, pseudonymous and works for hire: the shorter of 95 years from first publication or 120 years from creation.

  • For works first published prior to 1978, the term varies (see, www.copyright.gov/help/faq/faq-duration.html).

Data exclusivity rights are limited by the applicable regulatory process. Confidentiality rights extend as long as the information remains confidential.

 
25. On what grounds can a copyright infringement action be brought?

Unauthorised grounds are:

  • Reproduction, derivation and distribution of a work.

  • Public performance or public display of literary, musical, dramatic, choreographic works, pantomimes, motion pictures and other audiovisual work.

  • Public display of pictorial, graphic or sculptural work.

  • Digital audio transmission of a sound recording.

Data rights and confidentiality obligations are enforced under applicable federal regulations or state law.

 
26. Which courts deal with copyright infringement actions?

US district courts and US International Trade Commission (USITC) deal with copyright infringement actions. The Copyright Royalty Board determines rates for statutory licences. Data rights and confidentiality obligations are enforced in state or federal courts.

 
27. What are the defences to copyright infringement actions?

The defences to copyright infringement actions are:

  • Non-infringement.

  • Invalidity.

  • Inequitable conduct.

  • Equitable defences, including acquiescence and estoppel.

Copyright does not preclude the use of:

  • Ideas, procedures, processes, systems, methods, concepts, principles or discoveries and concepts.

  • Fair use.

  • Reproduction by libraries and archives.

  • Copy previously sold.

  • Certain performances or displays for teaching.

  • Certain secondary transmissions.

  • Certain transmission of sound recordings.

  • Photographs of architectural works.

  • Certain types of reproduction or distribution for the blind or disabled.

Defences to data rights and confidentiality obligations include defences recognised under the applicable federal or state law.

 
28. What are the remedies in copyright infringement actions?

The remedies in copyright infringement actions are:

  • Statutory damages.

  • Actual damages attributable to the infringement.

  • Defendant's profits that are attributable to the infringement and not accounted for in actual damages.

  • Injunctive relief.

  • Enhanced damages for wilful infringement.

  • Attorneys' fees to the prevailing party.

  • Impoundment and destruction of infringing copies.

Remedies for data rights and confidentiality are provided under applicable state or federal law.

 
29. Is there a fast-track and/or a small-claims procedure for copyright infringement actions?

No, but certain district courts are faster.

 

Registered designs

30. What are the legal conditions to obtain a registered design right?

For design patents, the legal conditions to obtain a registered design right are the same as for patents. For trade dress, the legal conditions to obtain a registered design right is the same as for trade marks (see Questions 1 and 11).

 
31. Which authority registers designs? Does its website provide guidance on the application procedure?

See Questions 3 and 13.

 
32. On what grounds and when can third parties oppose a registered design application?

See Questions 4, 14 and 15.

 
33. When does registered design protection start and how long does it last?

Design protection is as follows:

  • Design patents: 14 years from grant.

  • Trade dress: indefinitely from first use.

 
34. On what grounds can a registered design infringement action be brought?

An ordinary observer must perceive the designs as substantially the same for a registered design patent infringement action.

For trade dress the grounds are:

  • Likelihood of confusion.

  • Mistake.

  • Deception.

 
35. Which courts deal with registered design infringement actions?

US district courts and US International Trade Commission (USITC) deal with design patents and trade dress.

State courts deal with trade dress only.

 
36. What are the defences to registered design infringement actions?

See Questions 8 and 19.

 
37. What are the remedies in registered design infringement actions?

See Questions 9 and 20.

 
38. Is there a fast-track and/or a small-claims procedure for registered design infringement actions?

No, but certain district courts are faster.

 

Unregistered designs

39. What are the legal conditions for unregistered design rights to arise?

Protection for unregistered design rights is afforded by:

  • Trade dress.

  • Trade secret.

  • Copyright.

  • Unfair competition laws.

The unregistered design must be used in commerce in conjunction with the goods or services and function as a designation of the source of the goods or services.

 
40. When does unregistered design protection start and how long does it last?
 
41. On what grounds can an unregistered design infringement action be brought?
 
42. What are the defences to unregistered design infringement actions?
 
43. What are the remedies in unregistered design infringement actions?
 

Trade secrets and confidential information

44. What are the legal conditions for rights in confidential information to arise?

Trade secrets must:

  • Be commercially valuable to its owner.

  • Not be generally known to the public.

  • The owner must use reasonable steps to maintain confidentiality.

Confidential information must:

  • Not be publicly available.

  • Be shared in a relationship that will be maintained in confidence.

 
45. On what grounds can an action for unauthorised use of confidential information be brought?

Trade secret misappropriation occurs where there is:

  • Unauthorised use, or disclosure, of the trade secret.

  • Improper acquisition directly or from another source.

Unauthorised use or disclosure of a confidential relationship is also actionable.

 
46. Which courts deal with actions for unauthorised use of confidential information?

State courts and federal courts deal with actions for unauthorised use of confidential information, provided that the requirements for federal jurisdiction over state law claims are satisfied.

 
47. What are the defences to actions for unauthorised use of confidential information?

The defences to actions for unauthorised use of confidential information are:

  • Availability to the public.

  • Independent development.

  • The information is not kept confidential.

  • The defendant does not use the trade secret.

 
48. What are the remedies in actions for unauthorised use of confidential information?

The remedies in actions for unauthorised use of confidential information are:

  • Monetary awards.

  • Injunctive relief.

  • Punitive damages.

  • Disgorgement of profits.

 
49. Is there a fast-track and/or a small-claims procedure for actions for unauthorised use of confidential information?

No, but certain district and state courts are faster.

 

The regulatory authorities

US Patent and Trademark Office (USPTO)

W www.uspto.gov

Main areas of responsibility. Patent and trade mark registration.

Guidance on application procedure. www.uspto.gov

US Copyright Office

W www.copyright.gov

Main areas of responsibility. Copyright registration and Mask Work Registration Certificates.

Guidance on application procedure. www.copyright.gov

Plant Variety Protection Office (PVPO) at the US Department of Agriculture, Agricultural Marketing Service

W www.ams.usda.gov

Main areas of responsibility. Plant Variety Protection Certificates.

Guidance on application procedure. www.ams.usda.gov



Contributor details

Patrick J Coyne

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

T +1 202 408 4470
F +1 202 408 4400
E patrick.coyne@finnegan.com
W www.finnegan.com

Profession qualifications. Admitted in Washington DC, USPTO and various US district courts, US Courts of Appeal and US Supreme Court.

Areas of practice. Patents; trade mark; copyright; trade secret claims; related antitrust and unfair competition issues; general commercial litigation; products liability; domestic and international arbitration matters

Recent transactions. Clients include:

  • United Technologies.
  • LG Electronics.
  • InterDigital FMC.
  • Gold Peak.
  • Energy Conversion Devices and Ovonic Battery Company.
  • Ciena.
  • Mobil Oil Corporation.
  • Trex Company.
  • Danaher.
  • Jacobs Vehicle Systems.
  • Allegheny Teledyne.
  • Merrell Dow Pharmaceuticals.

Denise Main

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

T +1 202 408 4228
F +1 202 408 4400
E denise.main@finnegan.com
W www.finnegan.com

Professional qualifications. Admitted in Washington DC, Florida, US Courts of Appeal and US Supreme Court.

Areas of practice. US patent rights; Hatch-Waxman Act matters; patent rights in the chemical and pharmaceutical areas

Recent transactions.

Represents Otsuka Pharmaceutical Co, Ltd. in litigation proceedings concerning Otsuka's pharmaceutical drug Abilify®.

Adriana Burgy

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

T +1 202 408 4345
F +1 202 408 4400
E adriana.burgy@finnegan.com
W www.finnegan.com

Professional qualifications. Admitted in Washington DC, Maryland, USPTO.

Areas of practice. Patent rights for chemical, biological and biotechnology arts clients

Recent transactions. Represents the following clients in prosecution matters:

  • Blanchette Rockefeller Neurosciences Institute.
  • Pronova Biopharma.
  • Otsuka Pharmaceutical Co, Ltd.
  • Health Diagnostics Laboratories, Inc.
  • Ferring Pharmaceuticals, Inc (also in litigation matters).

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