Even in its founding Constitution, the US acknowledges the importance of protecting IP Rights, say Charles Miller and William Allen, IP attorneys at Banner & Witcoff. But has the US risen to meet the challenge of this early vision?
Signed in 1787, the US Constitution grants Congress the power to: ‘Promote the progression of science and useful arts by securing, for limited times to Authors and Inventors, the exclusive right to their respective writings and discoveries.’ The provision was passed unanimously by America’s founding fathers, and it has since provided the foundation for American patent and copyright law.
The first Patent Act of the United States was signed into law by President George Washington on 10 April 1790. The first patent was awarded that same year. It was given to Samuel Hopkins of Pittsford, Vermont for a new method of making potash, an industrial chemical used in the manufacture of soap, glass and gunpowder. Since then, the United States Patent and Trademark Office (USPTO) has issued over 7,000,000 patents, and that number continues to climb. In 1881, the functions of the Patent Office extended to also include the registration of trademarks. Today it annually reviews more than 326,000 patent and 232,000 trdemark applications.
The United States Copyright Office looks after registrations of copyright and mask works, and has accepted the registration of more than 30,000,000 applications since it was established in 1870. It works closely with the Library of Congress, and has provided many millions of deposits (including books, serials, motion pictures, music, sound recordings, maps, prints, pictures, and computer works) to the Library’s collections.
Registering your IP Rights
Foreign applicants may apply for a US patent on the same basis as a US citizen. They may find that the application process differs slightly from the registration rules in their home territory. For example, in the US, it is the actual inventor and not the company that must apply for the patent. The applicant must also sign a declaration that they believe themselves to be the original inventor of the subject matter included in the patent application. There are also strident rules that foreign applicants need to be aware of. The US will not award utility or design patents to foreign inventors if they have patented the invention in a foreign country more than 12 months in advance of their US application. To be successful in their US applications, foreign inventors must therefore start to think about patenting their products in the US at the same time as they apply for registrations in the home territories.
Unlike patents, trademark applications can be submitted by an individual, a corporation, a partnership, or any other type of legal entity that controls the nature and quality of the goods and/or the services rendered in connection with the mark. And while it is not necessary for owners to register their trademarks in the US, registering them with the USPTO does provide owners with certain advantages. Not least, it serves as a constructive notice of the registrant’s claim of ownership of the trademark and of their presumption of the exclusive right to use the trademark. Obtaining a trademark registration from the USPTO is also a prerequisite should it come to bringing an action for trademark infringement in federal courts.
In the US, the legislation is in place to allow independent inventors and larger corporations to exploit the full potential of their patent and trademark rights.
In the US, patent infringement suits are exclusively brought in federal courts. Successful plaintiffs are entitled to adequate compensation for infringement, which cannot be less than a reasonable royalty. Damages may be calculated by considering factors such as existing royalty rates, any lost profits, and possible price erosion. Treble damages are often awarded in cases involving wilful infringement, and attorney fees may be awarded in exceptional cases. Trademark infringement suits can be brought in state and federal courts. But trademark owners generally prefer to file suits in federal courts, which may grant punitive damages and attorney fees against wilful infringers. Successful plaintiffs are generally entitled to damages that are equal to the trademark infringer’s profits, as well as the cost of the action.
Copyright infringers are liable for the copyright owner’s actual damages and any additional profits that the infringer has made. Infringers who knowingly traffic in counterfeit goods also risk criminal prosecution.
IP Rights owners may also file an action with The International Trade Commission (ITC), as an alternative to using the state and federal courts for enforcement of their IP Rights. An ITC action is available to protect US industry from injury resulting from unfair methods of competition, relating to the importation of goods into the US. Unfair methods of competition include infringement of patents, trademarks, and copyrights owned by US industry.
A fair system?
From its early days, US law has carefully adhered to the Constitution’s early desire to ‘promote the progression of science and useful arts’ by continuing to emphasis the importance of the inventor, and IPR in general. The system to record it is far from perfect (the USPTO is currently suffering from a hefty backlog in unprocessed applications), but one thing is clear. In the US, the legislation is in place to allow independent inventors and larger corporations to exploit the full potential of their patent and trademark rights.
The US has signed up to the following treaties and conventions:
- The Berne Convention for the Protection of Literary and Artistic Works
- The Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of their Phonograms
- The Madrid Protocol Concerning the International Registration of Marks
- The Paris Convention for the Protection of Industrial Property
- The Nice Agreement Concerning the International Classification of Goods and Services
- The WIPO Copyright Treaty
- The WIPO Performances and Phonograms Treaty
- The Patent Co-operation Treaty
- The Patent Law Treaty
- The Trademark Law Treaty
- The WTO Agreement on Trade-related Aspects of Intellectual Property (TRIPS)
AT A GLANCE... NATIONAL LEGISLATION
Current IP laws in force in the US:
Patent Act of 1952
The Patent Act of 1952, as amended, protects inventions for 20 years from the date of filing and designs for 14 years from the date of grant.
Trademarks Act of 1946
The Trademarks Act of 1946 defines a trademark as: ‘Any word, name, symbol, device or any combination thereof adopted by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.’ Registrations are initially valid for 10 years and can be renewed indefinitely in subsequent 10 year intervals, provided the mark is in constant use.
Copyright Act of 1976
The Copyright Act of 1976, as amended, protects authors of literary, dramatic, musical and artistic works. The term of protection extends for a period of 70 years after the death of the author. For works made for hire, the term of protection extends for a period of 95 years from the first publication or 120 years from creation – whichever expires first.
This article first appeared in IP Review, issue 11