Patent Attorney Mark Trenner is on the radio today. Tune in and listen to KHOW – Denver 630AM. Mark answers callers questions on intellectual property – including patents, trademarks, and copyrights.
Question 1: Should you do a prior art search?
I typically recommend doing a prior art search for an invention. There are times when it is a good idea to file first, even before doing a search. For example, if you are up against a bar date (a filing deadline), or if you are concerned someone else may file before you. The US Patent System is now first to file – to getting a filing date as soon as possible is important.
Question 2: Does an employer own copyright to your work?
Generally, an employer is going to own the copyright in any work that an employer does for their employer. But if the work is unrelated to the employment, then the employer may not own the copyright. For example, if you work the counter at a fast food restaurant, and write a fiction work on your own time, then the restaurant probably won’t own the copyright to the fiction work. But if you are charged with updating an employer’s website, the employer will likely own the copy you put on their website.
The question gets trickier when you distinguish between independent contractor and employer. Independent contractors are generally going to own copyright to their work – absent a written agreement to the contrary.
Best practice is to get everything in writing. If you’re an employee and want to specifically exclude your work from the employer owning the copyright, then ask them to put that in a signed writing. If you hire an independent contractor and want to own copyright in their work, then get that in a signed writing.
Learn more at the University of Texas Copyright Crash Course.
Question 3: What is a trademark?
A trademark is any word, logo, or combination of word and logo, that designates a source of goods or services. Examples of famous trademarks include NIKE (TM), the NIKE (TM) “swoosh”, and Starbucks. While you may be able to use the same or similar mark to designate entirely different products or services – you cannot use a famous trademark. For example, you likely could not put NIKE (TM) on any product because of the high likelihood for confusion. That is, the ordinary consumer would likely believe the shoe company is behind that product.
