A patent is a grant from the federal government. It gives an inventor the right to exclude others from making, using, selling or importing his invention. Because the application process is lengthier than other intellectual property law, patent law in fashion generally focuses on the more long-term aspects of fashion and not the seasonal trends.
- I have a patent on something, and I know somebody else is selling it – what now? If you find that your patent is being infringed upon, we recommend that you contact a reputable intellectual property attorney immediately. The attorney will typically send out a cease and desist letter asking the infringer to stop selling the product or face legal consequences. He may also need to compare your patent to the infringing device to determine if it does in fact infringe.
- What if the infringer is in a foreign country – what laws apply? Even if the infringer is in a foreign country, the laws of the United States apply if the item is being sold in the United States, such as if it is sold to U.S. customers over the Internet. U.S. sales create "minimum contacts" which allow the United States to exercise jurisdiction over the foreign infringer. If the item which infringes is only being sold in the foreign country, then the laws of that country would apply. A U.S. patent will only protect your rights in the United States. Alternatively, to protect your foreign rights, you could file a Patent Cooperation Treaty ("PCT") application, followed by a "national phase" in designated foreign countries.
- My company is expanding and selling our product internationally. Does my U.S. patent protect our rights abroad? No. You have one year from the time you filed the U.S. utility application to file a PCT application which would generally cover the foreign countries that are members of the World Intellectual Property Organization ("WIPO"). You then have between 20-30 months, depending on the country, to decide if you want to further protect your rights in certain countries by filing individual applications in those countries. This timeline may be shorter for applications devoted to ornamental features.
- My employee invented a new product at work. Does it belong to him or me? This question goes to the employment relationship. If the nature of your business involves research, development and invention, it is a good idea to have all employees sign agreements stating that anything invented while they are working for you is your property. However, in the absence of such an agreement, the courts look at the type of employment the employee has. For example, if the employee is a garment designer, someone who was hired to invent new athletic wear or who would invent in the course of her work, the patent most likely belongs to the company. If the employee is an independent contractor (someone who provides her own materials for work and does not receive benefits from the company), in the absence of another agreement with respect to patents, she would likely own her invention. Other considerations the court would look at would be if the employee created the invention while on the clock and being paid for the time, or if she used materials or equipment from the job to create the invention. If you believe you may have an issue like this in the future, it is best to consult an attorney to have an agreement drafted that makes it clear that inventions devised at work are the company's property.
- What is the difference between a utility patent and a design patent? A utility patent protects the idea or function of an invention. In contrast, a design patent protects the overall ornamental appearance of an innovative design of a product. The utility patent is, generally speaking, what most people think of as a patent, and a design patent instead affords its owner rights that can often fill an important gap in and around his or her trade dress rights and copyrights in a commercial product.
- Should I apply for a design patent? Design patents are growing in prominence and effect across many fields of commercial goods. A design patent, wisely drafted, can be a very effective way to protect an inventor’s innovation – not just the ornamental design itself. That is, carefully drafted, a design patent can be very difficult for a competitor to design around, possibly leaving the competitor with no real way to put a competing product on the market.