Michael J. Foycik Jr., Esq.

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Introduction
The US law provides for patent and trademark protection. The administrative agencies responsible for this are the US Patent Office and the US Trademark Office, which are combined and called the US Patent and Trademark Office, abbreviated as USPTO. In the following, the abbreviation USPTO will be used throughout.

Preparing a patent application
A US Patent Lawyer, also called a US Patent Attorney, normally prepares a US Patent Application for filing with the USPTO. The US Patent Lawyer works with the inventor to draft a specification having a description of the invention, including drawings when possible. The draft is then studied by the inventor, and changes are made if necessary. When the draft is accepted by the inventor, the inventor signs a form called a Declaration, claiming inventorship of the application. Once it is filed, it receives a Serial Number and an Official Filing Receipt, and thus becomes an official US Patent Application.

At some point in this process, it is advisable but not necessary to perform a US patent search. The US patent search can find prior art patents that show the extent of the closest prior art, and whether the invention has been patented at an earlier time. If an expired patent is discovered which is very close to the invention, then that expired patent can confer a “right to use” that invention. If a pending US Patent covers the invention, and has claims which are sufficiently broad to cover the invention, then it is possible that infringement would occur. It is important to know if a new product might infringe an existing unexpired US Patent. If no patent exists which covers the invention, then it is possible that the invention can be patented. As noted above, it is not necessary to conduct a patent search prior to filing a new patent application.

The Role of the USPTO in Examining the Patent Application
The US Patent Application is examined in due course by a patent examiner. The US patent examiner will be an expert in the particular art in which the invention resides. The US patent examiner will search the prior art patent literature, and will make a search report and send it to the inventor along with a first Office Action on the merits.

If an invention is finally rejected, that rejection can be appealed. In that case, it is taken up for review by a board of appellate examiners. Each appellate examiner is likely to be a USPTO Patent Attorney or USPTO Patent Lawyer. If the appeal is refused, it can be taken further to a US District Court, in which case the USPTO is represented by the Solicitor’s Office. In that case, the Solicitor in Court will be a USPTO Patent Lawyer or USPTO Patent Attorney. Such higher appeals are not frequent, but are more likely to occur when the invention is particularly valuable.

The Role of the US Patent Attorney in the Examination Process
The US Patent Attorney or US Patent Lawyer considers the Office Actions received from the USPTO, and transmit’s the Office Action to the inventor along with any advice or comments on how to respond. The US Patent Attorney or US Patent Lawyer then responds to the Office Action, usually by providing legal arguments in support of patentability.

If the Office Action is a Notice of Allowance, then the response by the US Patent Attorney or US Patent Lawyer simply transmits the Issue Fee Due along with a transmittal form required by the USPTO.

During this time, the inventor may be commercializing the invention. In this case, a successful invention might be licensed or assigned, or distribution agreements may be made. In all these cases, the US Patent Attorney or US Patent Lawyer performs an important role in making sure these agreements serve the interests of the inventor.

The Role of the US Patent Attorney or US Patent Lawyer after the Patent is Issued
Once the patent issues, it can be enforced against competitors. In that case, the US Patent Attorney or US Patent Lawyer normally first sends a warning letter to the infringing competitor. If the infringement continues and no licensing agreement or assignment agreement is reached, then a lawsuit can be filed by the US Patent Attorney or US Patent Lawyer in a US District Court or in a state court.

The filing of a lawsuit, and the defense of such a lawsuit, are usually referred to as US Patent Litigation, or simply Patent Litigation. Such lawsuits can be short or long, and many businesses with successful products consider it commercially economical to conduct Patent Litigation to protect their rights.

Foreign Entities
Foreign entities must be represented by an attorney or lawyer, in order to obtain a patent or trademark, and in order to maintain a lawsuit in the US. In a Trademark case, the US Patent Attorney or US Patent Lawyer can be appointed as the Domestic Representative of the foreign entity.

Preparing a Trademark Application
A US Trademark Lawyer, also called a US Trademark Attorney, normally prepares a US Trademark Application for filing with the USPTO. The US Trademark Lawyer works with the applicant to draft an application having a description of the goods/services together with a drawing showing the trademark. The draft is then studied by the applicant, and changes are made if necessary. When the draft is accepted by the applicant, the applicant signs a form called a Declaration, claiming ownership of the application. Once it is filed, it receives a Serial Number and an Official Filing Receipt, and thus becomes an official US Trademark Application.

At some point in this process, it is advisable but not necessary to perform a US trademark search. The US trademark search can find prior art trademarks that show the extent of the closest prior marks and whether the mark has been registered at an earlier time. If an expired trademark is discovered which is very close to the application, then that expired trademark might or might not mean the mark is available to other applicants. If a pending US Trademark Registration covers the mark and is in the same or similar field of goods as the applicant’s mark, then it is possible that infringement could occur. It is important to know if a product or service might infringe an existing unexpired US Trademark Registration. If no USPTO registration exists which covers the trademar, then it is possible that the trademark can be registered. As noted above, it is not necessary to conduct a trademark search prior to filing a new trademark application.

The Role of the US Trademark Office in Examining the Trademark Application
The US Trademark Application is examined in due course by a trademark examining attorney. The US trademark examining attorney will usually be an expert in the particular class of goods or services in which the trademark resides. The US trademark examining attorney will conduct a US Trademark search of the prior trademark literature, and will make a search report and send it to the applicant along with a first Office Action on the merits.

If an application is finally rejected, that rejection can be appealed. In that case, it is taken up for review by a board of appellate examiners. Each appellate examiner is likely to be a USPTO Trademark Attorney or USPTO Trademark Lawyer. If the appeal is refused, it can be taken further to a US District Court, in which case the USPTO is represented by the Solicitor’s Office. In that case, the Solicitor in Court will be a USPTO Trademark Lawyer or USPTO Trademark Attorney. Such higher appeals are not frequent, but are more likely to occur when the trademark is particularly valuable.

The Role of the US Trademark Attorney in the Examination Process
The US Trademark Attorney or US Trademark Lawyer considers the Office Actions received from the USPTO, and transmits the Office Action to the applicant along with any advice or comments on how to respond. The US Trademark Attorney or US Trademark Lawyer then responds to the Office Action, usually by providing legal arguments in support of registrability.

If the Office Action is a Notice of Allowance, then the response by the US Trademark Attorney or US Trademark Lawyer may be to file any required forms and/or transmit any fees due (often no fee is required), along with a transmittal form required by the USPTO. When no response is required, then the US Trademark Attorney or US Trademark Lawyer so informs the applicant, and a Certificate of Registration will be received in due course from the USPTO via the US Trademark Office.

During this time, the applicant may be commercializing the trademark. In this case, a successful trademark might be licensed or assigned, or distribution agreements may be made. In all these cases, the US Trademark Attorney or US Trademark Lawyer performs an important role in making sure these agreements serve the interests of the inventor.

The Role of the US Trademark Attorney after the Trademark is Registered
Once the trademark is registered, it can be enforced against competitors. In that case, the US Trademark Attorney or US Trademark Lawyer normally first sends a warning letter to the infringing competitor. If the infringement continues and no licensing agreement or assignment agreement is reached, then a lawsuit can be filed by the US Trademark Attorney or US Trademark Lawyer in a US District Court or in a state court.

The filing of a lawsuit, and the defense of such a lawsuit, are usually referred to as US Trademark Litigation, or simply Trademark Litigation. Such lawsuits can be fairly short, and many businesses consider it commercially economical to conduct Trademark Litigation to protect their rights.

The US Copyright Office
The US Copyright Office is completely separate from the USPTO. However, insofar as copyrights are intellectual property, many (but not all) of the same laws cover copyrights as those which cover patents and trademarks. As such, the whole field is sometimes called Intellectual Property, abbreviated as IP.

US Copyright applications can be easier to prepare, and less costly, than US patent applications or US trademark applications. A US Copyright Attorney or US Copyright Lawyer can provide legal advice and/or assist in the preparation of such copyright applications.

The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.