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Guarding Against 'Brain Drain'
Protecting intellectual property moves front-and-center in the corporate legal arena
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Business New Haven
3/4/2002
By: Fiona Phelan
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As a fellow creator, Ray Nuzzo can identify with excited inventors when they seek his help in obtaining patents for their devices. Not only is Nuzzo a patent attorney, he also likes to tinker in his shop and fabricate new and useful gadgets.
One of his creations - a special holding device for a jigsaw - is currently under application at the U.S. Patent & Trademark Office, a division of the Department of Commerce. Nuzzo's patent application is one of more than 300,000 received by the USPTO annually.
In his role as patent, trademark and copyright attorney, Nuzzo has helped clients successfully receive patents on everything from fashion accessories to toys. In addition to his law degree, Nuzzo also holds bachelor's and master's degrees in electrical engineering. In order to become a patent attorney, a lawyer must pursue an additional year of training beyond law school and sit for a separate patent bar exam.
“The inventions that I see are typically mechanical or electrical consumer-type products,” explains Nuzzo, who has been practicing out of his East Haven office for the past decade. “I have corporations that come to me to file patent applications, small companies and individuals.”
Patents, trademarks and copyrights protect different types of materials. A patent for an invention is the grant of a property right to the inventor. Patents can be issued for inventions of discoveries of any “new and useful process, machine, article of manufacture or compositions of matters, or any new useful improvement thereof,” according to the USPTO Web site (www.uspto.gov).
Design patents may be granted to anyone who invents a new, original and ornamental design for an article of manufacture. A plant patent may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plants, the USPTO guidelines state.
Once issued, a patent is good for 20 years and cannot be renewed. Patents issued in the United States confer rights only within this country. To protect an invention in other parts of the world, separate patent applications must be filed in individual countries.
A patent allows the holder to exclude others from making, using, offering for sale, or selling the invention in the U.S., or “importing” the invention into this country.
The American legal system, says Stephen McNamara of St. Onge, Steward, Johnson & Reens, LLC, a group of 19 patent attorneys in New Haven and Hartford, has two distinct notions when it comes to patents. The first concept is to give authors and inventors the right to exploit their products; and the second - and opposing idea, McNamara adds - is that a vigorous brand capitalism allows the public more than one brand of product to choose.
“We don't want to inhibit competition by having patents that prohibit someone else from making a similar product,” he says.
According to Anthony Delio of Delio & Peterson, LLC in New Haven, it takes about 30 months to obtain a patent - from the time a patent search is initiated to the actual awarding of the patent. Working through an attorney such as Delio, the process can cost between $6,000 and $15,000 depending of the amount of work involved.
Attorneys like Delio, McNamara and Nuzzo can help inventors determine whether their product is patentworthy by searching through records at the Patent Search Room in Arlington, Va.. Attorneys and inventors can also conduct extensive preliminary Web-based searches to find out whether a similar device has already been patented.
“A patent is really helpful to a small business,” says Delio, who has been practicing for 27 years. “If the patent holder is genius enough, he can keep the big guys out of his business.
“When a corporation is issued a patent it's usually with the intent to put it to use,” Delio adds. “When it's an individual patent it's usually someone just trying to protect their invention.
“The patent procedure is complex and very competitive,” Delio notes.
“A lot of clients are not ready to market their invention but file the patent application anyway,” says Nuzzo. “They're under no obligation to market the product.
“Getting the patent is one thing,” he adds. “Selling the invention is lot of hard work. Individual inventors are often unrealistic about the marketability of their product.”
“By protecting their intellectual property, the creators of the product are trying to prevent others from doing the same thing as they are doing,” says McNamara. “They're preventing others from entering their marketplace.”
Once a patent application has been filed, the inventor must determine whether to market the product immediately before a patent is issued or wait until the patent is approved. If the decision is made to go ahead and market the device, the product can be labeled “patent-pending” or “patent applied for” However, those terms cannot be used unless a patent application has been filed with the USPTO.
“There are definitely some risks to marketing a product before the patent is issued,” says McNamara. “But if the market is ripe for the product, then you have to weigh the risks of missing the opportunity while you wait, or having someone else copy your idea.
“The question inventors have to ask is: Will the product or service be successful? It's important to have done all the homework,” he adds.
“Companies often get patents for defensive reasons,” says Nuzzo. “If they're already producing the item, then it puts their competitors on notice.”
According to the USPTO, two out of three applicants are granted patents. Thomas Edison is the record holder for the most patents held by an individual - 1,093 patents have been issued in his name. By contrast, U.S. corporations hold the rights to more than one million American patents issued between 1977 and 2000. In that same time span, the U.S. government received more than 26,000 patents and individual Americans hold 340,000 patents.
Foreign companies hold 847,000 U.S. patents; foreign governments hold 8,100 U.S. patents; and foreign individuals hold 118,000 U.S. patents.
Connecticut has a rich history of inventors and innovation: Eli Whitney, Simon Willard, Christopher Spencer, William Howe, John C. Garand, David Busnell and Frank Baldwin, to name a few. Between 1977 and 2000, more than 37,000 patents have been issued to inventors from Connecticut. More than 2,000 were issued in 2000.
Some of the more unusual patented inventions include the Braille slot machine (wonder if there are any of those at Foxwoods or Mohegan Sun?); a “levitationarium” for air flotation of humans (might be fun at your next séance); luminescent playing cards (for playing when the lights go out); a toe puppet (can't imagine why you'd ever need one, but to each his own); a biodegradable toothbrush (that has merit); and a motorized ice cream cone (for those of us too lazy to turn our own cones). Go figure.
While patents are issued for inventions, copyrights are bestowed to protect the writings of an author against copying. Literary, dramatic, musical and artistic works can be copyrighted. The content of a Web site may be copyrighted.
The copyright protects the form of expression rather than the subject matter of the writing. For instance, a description of a machine could be copyrighted as an original written work, but this would only prevent others from copying the description; it would not prevent someone from writing their own description or from making and using the machine. Copyrights are registered in the Copyright Office of the Library of Congress.
A copyright is good for the life of the author or artist, notes Delio, plus an additional 90 years after death. Once the copyright has expired, the material moves into the public domain.
Although content of a Web site can be copyrighted it is very difficult to maintain control over whether others have infringed on the copyright, notes McNamara. People are aware that copying of Web material takes place, he says, but the tricky part is keeping track of it.
If you think it's difficult to come up with and patent an invention, wait until you try to find a name for your creation. Finding the right trademark or service mark for your device can be another long process because there are so many goods and services available.
However, once again, a thorough search of trademarks - either through the USPTO searchable database or other online database - can significantly narrow the choices. To conduct a free search online for previously registered trademarks, visit: http://tess.uspto.gov.
A trademark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods or one party from those of another, according to the “Basic Facts About Trademarks” produced by the USPTO. The mark is issued indefinitely as long as the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documents with the USPTO at appropriate times.
Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling them under a non-confusing mark. Hence a pair of jeans may look like any other pair of jeans, but with a particular logo attached the jeans become identified with a specific trademark.
Although it is not necessary to register a trade- or service mark, use of the symbol “R” within a circle indicates that the mark has been registered with the USPTO and provides legal protection from misuse of the mark.
“Over the last five years the amount of material covered by a trademark has grown tremendously,” says Nuzzo. “Sometimes it takes a couple of go-rounds before your find a good mark that hasn't been used before and is not confusing with someone else's symbol.
“Most everyone is successful in obtaining a trademark,” he adds. “It might not be what they originally thought of, but it's close.”
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