TIMING REQUIREMENTS FOR PROTECTING YOUR IP

Securing intellectual property (IP) rights in the United States involves navigating specific timing requirements associated with each type of intellectual property. Here’s a breakdown of the main types of IP and their respective timing requirements:

Patents:

• Race To The Patent Office: The U.S. Patent and Trademark Office (USPTO) operates on a “first-to-file” system, which was implemented as a part of the America Invents Act (AIA) that went into effect on March 16, 2013. Under the “first-to-file” system, the right to a patent for a particular invention generally goes to the first person who files a patent application with the USPTO, regardless of who first invented it. This contrasts with the previous “first-to-invent” system where the patent could be awarded to the actual first inventor, even if they filed their patent application after someone else. Given the emphasis on filing date rather than invention date, there’s an implicit encouragement for inventors to file their patent applications as soon as possible to secure their rights.
• Provisional Patent Application: Offers a way to establish an early effective filing date without formal examination. After filing a provisional application, inventors have 12 months to file a corresponding non-provisional patent application.
• Non-Provisional Patent Application: Once filed, the U.S. Patent and Trademark Office (USPTO) examines the application, which can take several years. The patent term is generally 20 years from the filing date.
• Design Patents: Protect ornamental designs for 15 years from the date of grant.
• Maintenance Fees: To keep a patent in force, maintenance fees are required at 3.5, 7.5, and 11.5 years after the patent grant.

Trademarks:

• Intent-to-Use (ITU) Applications: Applicants can file an ITU application before using a trademark in commerce, but they will need to demonstrate actual use within six months after the USPTO issues a Notice of Allowance. This period can be extended in six-month increments for up to a total of 36 months with appropriate fees and reasons.
• In-Use Applications: Filed when the trademark is already in use in commerce. Once registered, the trademark protection can last indefinitely as long as the mark remains in use and renewal documents are filed in the required intervals (between the 5th and 6th year after registration, and every ten years thereafter).

Copyrights:

• Registration Timing: While copyright protection is automatic upon creation and fixation of an original work, registration with the U.S. Copyright Office provides legal advantages. There’s no strict deadline, but registering within three months of publication or before any infringement occurs allows the copyright owner to seek statutory damages and attorney’s fees in litigation.
• Duration: For works created by individuals, copyright protection lasts for the life of the author plus 70 years. For works created for hire, anonymous, or pseudonymous works, the duration is 95 years from publication or 120 years from creation, whichever is shorter.

Trade Secrets:

• Trade secrets have no registration requirement. However, to maintain protection, the owner must take reasonable steps to keep the information secret. If the information becomes public, the trade secret protection is lost.

Plant Variety Protection:

• Plant breeders can obtain protection for new, distinct, uniform, and stable sexually reproduced or tuber-propagated plant varieties. The term of protection is 20 years from the date of issue (25 years for trees and vines).

It’s important to note that while these are general timing requirements, the process for each IP right might involve additional, more nuanced deadlines and requirements. As such, consulting with an experienced IP attorney to ensure accurate and timely filing is critical. Learn more.