FAQ'S

One needs to only look as far as the recent $1 billion jury verdict in the Apple v. Samsung phone litigation and the recent patent bidding wars between several tech companies to know that firms continue to place a significant value on intellectual property (IP). Whether you are an individual inventor, company, or university, IP protection can provide barriers of entry for competitors and a secure source of revenue. Indeed, some of clients tell me that the phrase “Patent Pending” alone gets competitors to think twice about copying a product. The Law Office of Shane V. Cortesi is committed to delivering sound, cost-effective legal advice in the areas of 1) protecting and licensing IP; 2) drafting and negotiating contracts; and 3) assisting in the formation of corporations and LLCs. For information on these services, please contact us.

Intellectual property (IP) consists of patents, trade secrets, copyrights and trademarks.

The most common type of patent is a utility patent. Utility patents protect useful processes, machines, articles of manufacture and compositions that are “new” and “not obvious.” For a further discussion of these requirements, please click here. Types of inventions that are commonly protected by utility patents include medical devices, pharmaceuticals, machines and electronics. In addition, in some cases, it is possible to patent the use of software-based inventions. In his experience, Shane has found that preliminary patentability opinions are often helpful to inventors in determining whether to invest the time and resources in filing a patent application. For information on patentability opinions and their cost, please contact us.

Another type of patents are design patents. Design patents protect new, original and ornamental designs. Unlike utility patents, design patents protect the way an article looks. If the design of an article is primarily dictated by article’s function, a design patent probably is not the appropriate form of protection. Subject matter that potentially can be protected by design patents includes things like furniture (e.g., leg lamps), jewelry, and even potentially the shape of electronic devices.

The third and final type of patents are plant patents. Plant patents are granted to those discovering and asexually reproducing a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state.

In the United States, all three types of patents are granted by the federal government. Moreover, as opposed to granting one the right to practice an invention, patents grant one the right to exclude others from practicing an invention. In other words, while a patent may be used to block others, the granting of a patent does not mean that the inventor himself is free to practice the invention without infringing a patent of an earlier inventor. If you are concerned about patents held by third parties, a freedom to operate opinion may help alleviate some of your concerns. For more information about freedom to operate opinions, please contact us.

The commonality of all three types of patents is that the U.S. government grants a monopoly for a limited period of time to the inventor in exchange for the inventor disclosing the invention to the public. A benefit of holding a design or utility patents is that a patentee is generally able to enforce a design or utility patent against another person or company even if that person or company had no knowledge of the patent and independently invented the product or process that is accused of infringing the patent.

By contrast, the second type of IP protection, trade secrets, generally arises under state law. Trade secrets last for an indefinite period of time (generally as long as the invention is kept secret) and are granted because the inventor has taken steps to maintain confidentiality. Because trade secret protection generally arises under state law, the requirements for obtaining trade secret protection can vary from state to state. However, as a general rule, the trade secret must give the owner a competitive advantage over others, the information must not be widely known and the owner must take reasonable measures to maintain its secrecy. The downside to trade secrets is that trade secret protection generally does not provide protection if the product is reverse engineered or independently discovered. Common examples of trade secrets include the recipes for Coke®, Pepsi®, and Kentucky Fried Chicken®. Often times to guard against disclosure of trade secrets, an inventor will have its employees, independent contractors and prospective investors sign a non-disclosure agreement (NDA) to guard against disclosure.

The third form of IP is copyrights. As a general rule, copyright law protects expression – not ideas. Common examples of material that may be copyrighted include song lyrics, non-fiction and fiction stories, sculptures, paintings, photographs and potentially the content on a website and the layout of one’s website. To be copyrightable, the work must be original (in other words, it has to be one’s own work) and the work must entail a minimal degree of creativity. Most works of art and stories readily entail the necessary degree of creativity to be copyrightable. Often times, the types of works where creativity becomes a closer issue are things like certain business logos and compilations of facts like telephone directories. In addition, though layout and content of a website may be copyrightable in some circumstances, the degree of protection may be thin, particularly if the content is only a compilation of facts and/or if there are only a limited number of ways to present the subject matter.

Finally, the fourth form of IP protection, trademarks, refer to a word, phrase, symbol, or logo that is used to distinguish the source of goods or services of one entity from another. In certain circumstances, a slogan may be protected under trademark law. Common examples of trademarks include McDonald’s®, the Golden Arches (both the phrase and the symbol), Kodak®, Apple®, iPod® and iPad®. Trademarks may be registered with the federal government as well as state governments. As a general rule, to serve as a federally registered trademark, the word, phrase, symbol, or logo generally must be 1) used in interstate commerce prior to the granting of registration and 2) either inherently distinctive or have acquired distinctiveness through secondary meaning. Generic terms are not protectable. Examples of inherently distinctive marks are fanciful or arbitrary marks, like Kodak® for film, or marks that are merely suggestive, like Tide® for detergent. Examples of marks that have acquired distinctiveness through secondary meaning include marks that are descriptive or use someone’s last name or a geographical place of origin but, through the use of advertising, the marks have become associated with a particular company or product over time. Examples of marks that have acquired distinctiveness include Ford®, Sharp® televisions, and McDonalds®. Marks that have become generic include terms that have become so associated with a type of goods or service that they cannot function as an identifier of source. Examples of names that have been held to be generic include turkey stick for turkey on a stick, aspirin, and cellophane. Finally, it should be noted that a trademark applicant that is filing a U.S. trademark application based on registration of a mark in a foreign country must show an intent-to-use the mark prior to the granting of federal registration. For more information on trademark protection, including the interstate commerce and distinctiveness requirements, please contact us.

There are 3 types of patents: utility patents, design patents, and plant patents.

Utility patents are the most common types of patent. Types of inventions that are commonly protected by utility patents include medical devices, pharmaceuticals, machines and electronics. In addition, in some cases, it is possible to patent the use of software-based inventions.

To obtain utility patent protection in the U.S., an invention must be “new” and “not obvious” in light of the “prior art”. On March 16, 2013, the U.S. changed from a first to invent system, in which the patent was generally awarded to the first person to conceive of the invention (in the case of two or more people that filed competing patent applications) to a first inventor to file system, in which the patent is generally awarded to the first inventor to file the patent application.

The scope of the “prior art” depends on whether the application falls under the new regime or the old regime, which can be difficult to determine without speaking with a patent attorney. Thus, I recommend that you contact usto discuss the novelty and nonobvious requirements.

It is also important to note that under both the old law and the new law, a sale, public use, or publication by anyone (even the inventor himself) more than 1 year prior to the date the inventor filed his patent application can prevent an inventor from obtaining a patent. In Shane’s experience, the aspect of U.S. patent law that most surprises inventors is that their own public use, sale or publication more than one year before a patent application is filed can preclude one from obtaining a U.S. patent. The standard is even more stringent when it comes to obtaining patent protection overseas because in many countries absolute novelty is the rule and any public disclosure prior to the filing of a patent application can prevent one from obtaining a patent. Depending on the circumstances, it may make sense for an inventor to 1) file a patent application and/or 2) have third parties sign a non-disclosure agreement (NDA), prior to disclosing his/her invention to others. For more information on NDAs, please contact us.

In addition to being new and not obvious, an invention must be patentable subject matter. Outside of software and processes that can be performed in one’s head, inventions in most industries (e.g., electronic hardware, medical devices and pharmaceuticals) will usually readily qualify as patentable subject matter. The more difficult questions arise when the invention is a diagnostic method, a business method or a program that can be performed in someone’s head. The law on patentable subject matter in the United States is continually evolving. Given the evolving state of the law, please contact us for more information on patentable subject matter.

The second type of patents are design patents. Design patents protect new, original and ornamental designs. Unlike utility patents, design patents protect the way an article looks. If the design of an article is primarily dictated by the article’s function, a design patent probably is not the appropriate form of protection. Subject matter that potentially can be protected by design patents include things like furniture (e.g., leg lamps), jewelry, and even potentially the shape of electronic devices, like iPads®.

The third and final type of patents are plant patents. Plant patents are granted to those discovering and asexually reproducing a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. For more information on plant patents, please contact us .

In his experience, Shane has found that preliminary patentability opinions are often helpful to inventors in determining whether to invest the time and resources in filing a utility patent application. For information on patentability opinions and their cost, please contact us.

In Shane’s experience, the aspect of U.S. patent law that most surprises inventors is that their own public use, sale and publication more than one year before a patent application is filed can prevent them from obtaining a patent. The standard is even more stringent when it comes to obtaining patent protection overseas because in many countries absolute novelty is the rule and any public disclosure prior to the filing of a patent application can prevent one from obtaining a patent. Depending on the circumstances, it may make sense for an inventor to 1) file a patent application and/or 2) have third parties sign a non-disclosure agreement (NDA), prior to disclosing their invention to others. For more information on NDAs as well as the standards required to obtain patent protection in the U.S., please contact us.

Trade secrets generally arise under state law, last for an indefinite period of time (generally as long as the invention is kept secret) and are granted because the inventor has taken steps to maintain confidentiality. Because trade secret protection generally arises under state law, the requirements for trade secret protection can vary from state to state. However, the common theme in trade secret law is that the trade secret must give the owner a competitive advantage over others, the information must not be widely known and the owner must take reasonable measures to maintain its secrecy. Often times, companies find it desirable to protect trade secrets by having employees, independent contractors and prospective investors, sign non-disclosure agreements (NDAs). For more information on trade secrets and whether it may make sense for you to have others signs NDAs, please contact us.

As a general rule, copyright law protects expression – not ideas. Common examples of material that may be copyrighted include song lyrics, fiction and non-fiction stories, sculptures, paintings, photographs and potentially the content on a website and the layout of a website. To be copyrightable, the work must be original (in other words, it has to be one’s own work) and the work must entail a minimal degree of creativity. Most works of art and stories readily entail the necessary degree of creativity to be copyrightable. Often times, the types of works where creativity becomes a closer issue are things like certain business logos and compilations of facts like telephone directories. In addition, though layout and content of a website may be copyrightable in some circumstances, the degree of protection may be thin, particularly if the content is only a compilation of facts and/or if there are only a limited number of ways to present the subject matter.

One fact that some people don’t know is that we have a permissive copyright registration system in the U.S. In other words, as a general rule, registering a work with the U.S. Copyright Office is not required to obtain copyright protection. However, the law still provides advantages for registering copyrights, including the ability to sue for copyright infringement and the ability to obtain statutory damages and attorneys fees for infringement. Further, registering a work may be helpful in persuading an internet service provider (ISP) to take down infringing content on someone’s website. Finally, registration of the work provides evidence of the validity of the copyright.

To serve as a federally registered trademark, as a general rule, the word, phrase, symbol, or logo must be 1) used in interstate commerce prior to the granting of trademark registration and 2) either inherently distinctive or have acquired distinctiveness through secondary meaning. Generic terms are not protectable. Examples of inherently distinctive marks are arbitrary or fanciful marks, like Kodak® for film, or marks that are merely suggestive, like Tide® for detergent. Examples of marks that have acquired distinctiveness through secondary meaning are marks that are descriptive or use someone’s last name or a geographical place of origin but, through the use of advertising, the marks have become associated with a particular company or product over time. Examples of marks that have acquired distinctiveness include Ford®, Sharp® televisions and McDonalds®. Marks that have become generic include terms that have become so associated with a type of goods or service that they cannot function as an identifier of source. Examples of names that have been held to be generic include turkey stick for turkey on a stick, aspirin and cellophane. Finally, it should be noted that a trademark applicant that is filing a U.S. trademark application based on registration of a mark in a foreign country must show an intent-to-use the mark prior to the granting of federal registration. For more information on trademark protection, including the interstate commerce and distinctiveness requirements, please contact us.

Yes. The most obvious way to obtain multiple forms of IP protection over a product portfolio is to register the brand name and if appropriate, the logo and slogan, and then apply for copyright registration or patent protection for the underlying product. For example, an inventor of a patented product may sell his product under a trademark. In addition, an author may obtain trademark protection for the title of a book series and register the contents of the books within a series with the U.S. Copyright Office.

In addition, in some cases, one may be able to obtain trademark, patent and/or copyright protection for the same item. For example, certain logos can be protected through trademark and copyright protection if the requirements of both trademark and copyright registration are met. Further, physical works of art, for example, in some circumstances may be protected by applying for a design patent and copyright registration.

Nonetheless, it is prudent to consult with an attorney for products that are potentially subject to multiple forms of IP protection. For counseling on IP protection, please contact us.

Unfortunately, there is no such thing as an international patent. However, most countries of the world are parties to the Paris Convention Treaty (PCT) and, thus, allow inventors to file a PCT application with an international receiving office, such as the U.S. Patent and Trademark Office and the European Patent Office. Then, after filing the PCT application, the inventor has a proscribed time period to decide whether to file individual patent applications in specific countries or regions. The advantage of the PCT system is that it buys an inventor time to decide which countries he wishes to file a patent application in. For more information on patent filings outside of the U.S., please contact us.

Nashville offers start-up companies a number of advantages, such as:

1. A talented pool of engineers and other high tech workers due to the presence of Vanderbilt University.
2. A talented pool of high tech workers in the healthcare industry, including healthcare information technology (IT) professionals, due to the presence of large players in the healthcare industry, such as HCA®, in Nashville.
3. A vibrant venture capital and angel investor community.
4. Access to entrepreneurial resources such as the Entrepreneur Center in Nashville.
5. Relatively affordable housing and a temperate climate.
6. No income tax for individuals.


Nashville has been ranked the third-best American city for minority entrepreneurs, according to Forbes® magazine. In addition, Site Selection™ magazine recently rated Tennessee in the top ten states for business climate.

Resources for entrepreneurs in Nashville include:

• The Entrepreneur Center www.entrepreneurcenter.com
• The Nashville Chamber of Commerce www.nashvillechamber.com
• Life Science Tennessee (for life science companies) www.lifesciencetn.org
• Cumberland Emerging Technologies (for life science companies) www.cet-fund.com
• Tennessee Technology Development Corporation www.tntechnology.org