Related Attorney: Mark B. Mizrahi
by Mark Mizrahi
When it comes to protecting intellectual property rights, time is absolutely not on your side. It doesn’t pay to procrastinate (and could cost you dearly). IP rights are determined or significantly enhanced by filing for protection early. And timing affects each of the primary IP rights: patents, trademarks, and copyrights.
Patents – First to File
Recently, the United States became a “first to file” jurisdiction. This means that, with some notable exceptions, the earliest filer for a particular invention before the United States Patent and Trademark Office will be entitled to the patent for that invention.
In addition, in contrast to most foreign countries, in the United States, an inventor is provided with a one-year grace period from the time he or she first discloses/publishes/publicly uses an invention to file a patent application for that invention or risk forever losing the opportunity to patent that particular invention. We do not recommend relying on that grace period, however, as it is full of traps and exceptions, which in many instances renders it useless; rather, we recommend filing as early as possible after conceiving of the invention.
Many companies often prefer to “test” an invention in the marketplace before laying out the significant sums required to obtain a well-prepared patent application. One solution is to file a provisional application early, buying some time before incurring the significant costs associated with filing for full patent protection.
As a matter of practice, companies/inventors should adopt practices designed to explore patent protection strategies with a registered patent attorney as early in the invention process as feasible in order to avoid the many potentially negative consequences of having waited too long.
Trademarks – Highly Dependent on Timing
An important factor regarding the trademark of brand names and logos is that trademark rights are highly dependent upon timing. The first to use a trademark in a particular geographic territory – on actual goods/services in the marketplace – typically has the exclusive right to continue the use that trademark in that territory for such goods/services. Oftentimes, however, one knows early that she/he intends to use a trademark on particular goods and services, but the use is not likely to commence for months or years, due to product and market development. In such cases, one should file a U.S. Trademark Application without delay, even before use commences. This is because, provided a registration ultimately issues, the filing party’s priority rights to that trademark will be measured from the date of filing, not the date that the filing party ultimately uses the trademark in the marketplace. This is true even if a third party used its mark on goods/services in the marketplace before you did.
Filing early also avoids being “scooped” by having another party file before you. As far as the U.S. Patent and Trademark Office is concerned, at least during the application process, the first to file is entitled to registration of the mark. Someone who can prove that he or she used the trademark in the marketplace in connection with similar goods/services before another party filed its trademark application may be able to attack the filed application. But this first user would be required to spend much time and money demonstrating its superior rights in the trademark to the U.S. Patent and Trademark Office — something that could have been avoided had the first user filed its trademark application first.
Copyrights – Ability to Recover Damages
There are also important reasons to file for copyright protection for graphic designs, text, music, audiovisual works, etc. as early as possible. Valuable “statutory damages” — damages that do not need to be proved with precision and that may be enhanced significantly if willful infringement is found — with rare exception are only available if the application for registration was filed before the infringement occurred. The same holds true for recovery of attorney’s fees from the infringer.
The ability to recover statutory damages and attorney’s fees gives the copyright owner significant leverage over infringers. This leverage may be lost if the owner delays in filing for copyright registration. Additionally, if the application is not filed within five years of first publication of the work that is the subject of the copyright application, then the registration is not afforded a presumption of validity. This means that, while the registration is still enforceable, the owner must prove the facts stated in the certificate. If the application was filed within five years of first publication, then it is the infringer that must prove that the facts stated in the certificate are not true.
Finally, in light of a recent Supreme Court opinion, a plaintiff must obtain a copyright registration BEFORE filing for copyright infringement. Not having a copyright registration in hand at the time of infringement by a third-party can substantially delay being able to enforce your rights. This, too, militates in favor of filing for copyright registration early on.
As with many things in life, and particularly with regard to IP rights, timing may prove to be everything.
This article is made available for educational purposes and to provide general information on current legal topics, not to provide specific legal advice. The publication of this article does not create any attorney-client relationship and should not be used as a substitute for competent legal advice from a licensed professional attorney.
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