Practice Areas
IP Information Center
What is a patent?
A patent is a grant made by the government to an inventor giving the inventor the right to exclude others from making, using, selling, offering for sale, or importing the patented invention for a limited period of time.
What is a utility patent?
A utility patent is issued to the inventor of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof.
What is a design patent?
A design patent is issued to the inventor of an original design of a useful article of manufacture which makes the article distinctive in appearance.
What is a plant patent?
A plant patent is issued to the inventor of a novel and asexually-reproduced variety of plant, other than a tuber-propagated plant.
How do I get a patent?
A patent application must be filed in the United States Patent & Trademark Office ("PTO"). An applicant must demonstrate that the invention claimed in the patent application is novel, useful and non-obvious to one having ordinary skill in the art to which the invention pertains at the time of the invention. The invention must not have been publicly used or disclosed, described in a printed publication, sold or offered for sale more than one year prior to the filing date of the application.
What happens after I file a patent application with the PTO?
It is assigned to a patent examiner who is responsible for thoroughly searching the "prior art" relevant to the patent application and determining if the invention is entitled to a patent. The examiner may allow all of the claims in the application, reject all the claims in the application, or allow some claims and reject other claims based upon the prior art and other requirements for patentability.
If an examiner rejects one or more of the claims in a patent application, the applicant may submit arguments and/or claim amendments to the examiner which demonstrate the patentability of the invention compared to the prior art.
Patent prosecution is similar to an adversary proceeding between the PTO and the applicant. The PTO seeks to ensure that the applicant’s invention is entitled to patent protection in the United States, whereas the applicant seeks to obtain the broadest possible patent protection for the invention.
What does non-obvious mean?
Non-obvious means that the differences between the invention and the prior art must not have been obvious to one having ordinary skill in the technical field to which the invention relates at the time of the invention. In other words, the differences between the invention and the prior art must be more than obvious differences. The prior art that may be used to determine whether an invention is obvious includes prior patents and printed publications, public uses and commercial sales and offers for sale.
What does "patent pending" mean?
As soon as a patent application is filed with the PTO, the applicant may mark his or her product (or product packaging) with the notation "Patent Pending". While marking a product with the notation "Patent Pending" does not provide any legal protection, it will often discourage competitors from copying the invention. Falsely marking a product as "Patent Pending" may subject the false marker to fines.
How long does it take to get a patent?
For most utility patents directed to mechanical devices or methods, the patent prosecution typically takes approximately 24 months. For more complex inventions and business methods, the patent prosecution can take more than 36 months.
How long does a patent last?
Utility patents and plant patents have a term beginning on the date of issue and ending 20 years after the filing date. Design patents have a term of 14 years from the issue date.
Is there anything I should do before filing a patent application?
We almost always recommend that a professional patent search be conducted before filing a patent application, for two reasons. The first reason is that conducting a professional patent search may lean to the conclusion that the invention is not patentable. The second reason is that a professional patent search will assist us in preparing a patent application that provides you with the greatest possible patent protection while still avoiding the prior art. Without a search, the patent application may not claim the full extent of the patent protection available for the invention, or it may define the invention in a way such that it may be rejected based upon prior art that is not known to us.
We are bound by the law and professional rules of legal ethics to keep disclosures relating to your invention confidential, so you can feel comfortable that we will not take, misuse, and disclose your invention to anyone without your permission. Because others are not bound by the same laws and ethical rules that attorneys are bound by, you should not disclose your invention to anyone other than your lawyer without obtaining an agreement of confidentiality until you consult with your lawyer.
What information does your firm need from me to prepare a patent application?
Initially, we need a detailed written description of the invention and drawings of the invention. The drawings do not need to be professionally prepared or to scale, and we do not need a prototype or working model of the invention.
We also ask our inventors to complete an Invention Disclosure Form which asks the inventor a series of questions aimed at describing the invention, the problems the invention overcomes, previous attempts to overcome these problems, and disadvantages of the previous attempts to overcome the problems.
In addition, our Invention Disclosure Form asks the inventor to provide other information necessary for preparing a patent application.
May I conduct my own patent search on the PTO's web site?
You can conduct your own patent search on the PTO's web site, and doing so is a good way to get an idea as to the patentability of your invention. However, this type of search is not a substitute for a search conducted by a professional patent search company. In addition to conducting multiple and various database searches, professional patent search companies typically consult with one or more Examiners at the PTO who will likely examine a patent application directed to an invention like yours.
Does a U.S. patent protect my invention in other countries?
No.
While almost all foreign countries have patent laws to protect inventors, foreign patent laws vary widely from country to country. In general, European countries, Japan, and many Far East countries require that a patent application be filed before any public use or disclosure, commercial sale or offer for sale, or printed publication describing the invention is disclosed. In foreign countries that are signatories to the Paris Convention Treaty, if you file a patent application in the United States first, you will then have one year within which to file a companion patent application in the foreign country, in order to obtain the benefit of your U.S. filing date.
Consequently, if you are considering foreign protection for your invention, you must file a patent application in the United States or in the foreign country in which you seek protection before you make any public use or disclosure, commercial sale or offer for sale, or printed publication describing your invention.
The cost of obtaining foreign patent protection can be very expensive. In addition to the cost of preparing and filing patent applications in foreign countries, most foreign countries charge additional fees for a patent search and the examination of the patent application. Further, in most foreign countries, maintenance fees are due annually beginning from the date on which the patent application is filed.
What is a trademark?
A trademark is used to identify and distinguish the products derived from one manufacturer or source from products derived from another source. A trademark may be a word, phrase, symbol, distinctive design or ornamentation, sound, or even a color. Trademarks assist consumers in obtaining goods from a consistent source, and of a consistent quality, which they have come to expect. Consequently, trademarks tend to prevent consumer confusion, mistake, and deception.
What is a service mark?
A service mark identifies services provided for the benefit of another and distinguishes those services from services offered by another provider. A service mark may be word, phrase, symbol, distinctive design or ornamentation, or even a sound. Service marks assist consumers in obtaining services from a consistent source, and of a consistent quality, which they have come to expect. Consequently, service marks tend to prevent consumer confusion, mistake, and deception. Sometimes the term "trademark" is used to describe a service mark.
What is a trade name?
A trade name is the name under which a business operates. Sometimes, trademarks and trade names can be very similar or even identical. For example, the Coca-Cola Company makes a soft drink which is sold under the trademark Coca-Cola.
What is trade dress?
Trade dress is the design, packaging, and manner of sale of products and services. The shape of a product, for example, if distinctive and nonfunctional, may be protected as trade dress. An example is the well-known shape of the original Coca-Cola bottle.
How do you obtain a trademark?
Trademark rights are obtained by proper use of the mark in commerce to distinguish the products of the trademark owner (or the owner's licensee) from those of others. However, a trademark should not be adopted and used unless the trademark owner is reasonably certain that the mark will not be used in a way that is likely to cause confusion with another party's prior (and continuing) use of its own mark.
How can I be reasonably certain that the mark I have selected is available for my use?
There is no way to be absolutely certain. However, a trademark clearance search can be conducted to determine if other parties are using similar marks for similar goods or services. A search may be used to clear a mark for use before significant advertising costs are incurred in advertising a product or service under a new mark.
What is trademark registration?
Registration is a process by which trademark rights can be significantly enhanced. Registration can proceed based on actual use of the mark in commerce or on an intent to use the mark in interstate commerce. However, if the registration process is based on an intent to use the mark, a registration for the mark will not issue until use in commerce is demonstrated.
Registrations are territorial. Thus a registration for a particular state or country generally confers no benefits outside that state or country. However, without registration, the rights in a mark are geographically limited to the specific trading areas in which the mark has been used.
What are the benefits of federal registration?
Federal registration of a trademark that is used in interstate commerce entitles the owner of the mark to several important benefits:
- The owner can bring an action for trademark infringement in federal court. Furthermore, he can recover profits, damages, and the costs of bringing the action from an infringer.
- A federally registered mark is entitled to nationwide priority, except as against prior users. In other words, a federally registered mark expands the geographic scope of rights in the mark to the borders of the United States, except for the specific areas in which prior users may have used a similar mark.
- A federally registered trademark is presumed to be valid, and its ownership and the exclusive right to use the mark in commerce in connection with the goods or services specified in the registration are presumed to reside in the registrant.
- After five years of continued registered use of a mark, the federal trademark registration for that mark may be deemed incontestable.
- A U.S. application for registration entitles the trademark owner to priority of the U.S. filing date in filing in other Paris Convention countries, if a foreign application to register the same mark for use in connection with the same goods or services is filed within six months of the U.S. filing date.
- The U.S. Customs Service may exclude articles bearing infringing marks from importation into the United States.
- A U.S. trademark registration may also provide the basis for extending the owner's trademark protection to the various countries which are signatories of the Madrid Protocol.
When can the trademark registration symbol - ® - be used?
This symbol can only be used after the owner of the trademark or service mark has obtained a federal registration for the mark. Any person who claims rights in a mark may use the symbol "TM" for a trademark or a service mark, or the symbol "SM" for a service mark.
How long can a trademark be maintained?
Since trademark rights derive from use in commerce, they can be maintained for as long as the trademark is so used. A trademark registration generally lasts for 10 years, but it can be renewed for successive terms so long as the mark is still being used in commerce.
What is a Copyright?
Copyright applies to any original work of authorship that has been fixed in any tangible medium of expression, and includes:
- Literary works, such as books
- Musical works and lyrics, including theme music
- Choreographic works, such as dance routines and pantomimes
- Pictorial, graphic, and sculptural works, such as photographs, sculptures, and three-dimensional art
- Movies and similar works
- Sound recordings
- Computer software
- Architectural works and drawings.
What is a Work for Hire?
A work made for hire is a work which was created for an employer. In such situations, the law views the employer as the author. However, a commissioned work is not considered a work made for hire unless it fits within one of several narrow categories specified in the Copyright Act.
What if Someone Violates My Copyright?
The owner of a copyright registration who sues for copyright infringement in federal court must, at a minimum, show that the copyright registration is valid, that the defendant had access to the copyrighted work, and that the alleged infringing work is substantially similar to the work which is the subject of a copyright registration. The Copyright Act provides both civil and criminal penalties against those who infringe on valid copyright registrations. Among the civil penalties are injunctive relief, impounding and destruction of infringing articles, damages, lost profits, costs and attorney's fees. The statute of limitations within which to bring copyright infringement actions is three years after the claim accrues.
What is a Trade Secret and How Can It Be Stolen?
Tennessee has adopted a slightly modified version of the Uniform Trade Secrets Act. A trade secret is defined under the Tennessee Act as follows:
- "Trade secret" means information, without regard to form, including, but not limited to, technical, nontechnical or financial data, a formula, pattern, compilation, program, device, method, technique, process, or plan that:
- Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by other persons who can obtain economic value from its disclosure or use; and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.
What are the Characteristics of Trade Secrets?
In states adopting the Uniform Trade Secrets Act, six characteristics have been used to determine whether or not something is a trade secret:
- The extent to which the information is known outside of its owner's business
- The extent to which it is known by employees and others involved in its owner's business
- The extent of measures taken by the owner to guard the secrecy of the information
- The value of the information to its owner and to its competitors
- The amount of effort or money expended by its owner in developing the information
- The ease or difficulty with which the information could be properly acquired or duplicated by others.
Labor and Employment
Chambliss, Bahner & Stophel’s Labor and Employment Group handles a broad spectrum of labor and employment law issues. We work with clients in developing policies and procedures that are in compliance with federal and state employment statutes and which make good business sense. As issues arise, we are available to provide immediate legal and practical advice. Much attention is given to “preventive maintenance” counseling clients on employee relations issues before problems arise. We strive not only to tell you what the “law” is, but also to provide recommendations on the best course of action, considering both the legal risks and what is right and fair to the employee and the company.
When claims and lawsuits are filed, we provide our clients with a vigorous defense. Each member of our labor and employment practice group is an experienced litigator. We have handled numerous cases before state and federal administrative agencies, such as the Equal Employment Opportunity Commission, Tennessee Human Rights Commission, and Tennessee Department of Labor and Workforce Development. Over the years, we have developed good working relationships with officials at each of those agencies.
Our employment lawyers are experienced in both jury and nonjury cases, and have successfully defended lawsuits in both state and federal court.
Some of the specific areas in which we provide advice and representation are
- Development of personnel policies and procedures and employee handbooks
- Title VII of the Civil Rights Act of 1964 (discrimination based on race, sex, religion, etc.)
- Age Discrimination in Employment Act
- Americans with Disabilities Act (ADA)
- Family and Medical Leave Act (FMLA)
- Pregnancy Discrimination Act and maternity leave
- Workplace violence
- Wage and hour laws, including minimum wage and overtime issues under the Fair Labor Standards Act
- Drug and alcohol testing and substance abuse policies
- Executive Order 11246 (affirmative action by government contractors)
- Individual employee rights (employee privacy, access to personnel files, polygraph testing, etc.)
- Layoffs and reductions in force
- Unemployment compensation
- Severance agreements
- Employee noncompetition agreements
- Unfair labor practice charges and proceedings before the National Labor Relations Board
- Union avoidance
- Grievance arbitration
- Worker’s compensation
- Retaliatory discharge.
Helping our clients understand the implication of these laws is important to us. We regularly provide information through one-on-one consultation and the presentation of seminars to groups of management personnel.
We pride ourselves on being available to assist you on a moment’s notice at any time of the day or night. Please do not hesitate to call on us.