PATENT MARKING-IS IT ADVISABLE?

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Recently, one of my clients asked me about the pros and cons of marking “patent pending” on his invention.  I advised him that I thought he should mark his invention and here’s why.

First, it puts others on notice that you intend to protect your invention with a patent.  That means that if the patent covering your product issues, then others will need to assess whether they infringe your patent, if they use, make, sell, or offer for sale the product as described in the issued patent.

Second, while marking “patent pending” has no legal effect, when and if the patent issues, display of the patent number does impact your legal rights.  Failure to mark your invention, once a patent issues, will prevent you from collecting damages until you either begin marking or you give actual notice of patent infringement.

Third, if you are putting others on notice that your product may be patentable, that may be advantageous when talking to investors or potential licensees.  If your product becomes protected via a patent, then you have exclusive rights to exploit your patent for a period of 20 years from the date of filing.  This may be a significant business advantage depending on the area of technology and existing business environment. 

Finally, patent marking can be done either physically on the product itself or virtually.  Virtual marking requires a website where information on patented products for your organization can be found.  This saves in retooling time and expense.  In addition, changes to the website can be done quickly and easily to maintain a complete and accurate record of all patents covered by your company. 

Protecting your innovative developments is critical to any organization.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

THE SECRETARY OF STATE’S OFFICE IS NOT YOUR FRIEND

Many of my clients come in thinking that as long as they have a corporate name, they are free to use that name for advertising and marketing purposes.  Sadly, they are mistaken.

The corporate name granted by the Secretary of State’s office is only given for use as a business name.  The criteria for granting the name is based on whether the exact name is already in use.  That name is for use as a business name, for tax and regulation purposes, and not a clearance for marketing and advertising use. 

In order to use a name or logo for marketing and advertising, any company should conduct a full search and assessment as to the availability and use of their name and/or logo.  A search involves looking at all uses of a name and/or logo.  The search results are assessed to determined whether that name or logo would be available for use.  In other words, the results are reviewed to determine if there are any other uses of the same or similar names or logos that may result in trademark infringement or an allegation of infringement.   

Any business that intends to spend money on advertising or marketing of its goods or services should conduct a search and assessment as to the availability of a mark or logo.  In addition, if a business intends to expand beyond its state boundaries, it should consider federal registration of its mark.

Making sure your trademark or service mark is available for use is considered a best business practice designed to leverage what you consider a valuable critical asset.  Having the right person to help you make that decision is critical.  The Law Office of Kathleen Lynch is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.