Patent,
Copyright
& Trademark
By Attorney Richard Stim
9th edition
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Patent,
Copyright
& Trademark
By Attorney Richard Stim
9th edition
NINTH EDITION JULY 2007
Cover Design SUSAN PUTNEY
Production SARAH HINMAN
Index JANET PERLMAN
Proofreading EMILY K. WOLMAN
Printing CONSOLIDATED PRINTERS, INC.
Stim, Richard.
Patent, copyright & trademark / by Richard Stim. 9th ed.
p. cm.
ISBN-13: 978-1-4133-0646-0
ISBN-10: 1-4133-0646-2
1. Intellectual property United States Popular works. I. Title. II. Title: Patent,
copyright, and trademark.
KF2980.E44 2007
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2007002191
Copyright © 1996, 1997, 1999, 2000, 2002, 2003, 2004, 2006, and 2007 by Nolo and Richard Stim.
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Acknowledgments
A very big thanks to attorney Steve Elias. Steve wrote this book and edited the first
three editions at a time when intellectual property was just beginning to surface in
mainstream media. Thanks also to the Nolo production staff for maintaining this
information in a palatable format.

Table of Contents
Introduction 1
How Intellectual Property Law Works 3
Determining What Rights Apply to Your Work 6
Intellectual Property Laws Chart 6
Self-Help Intellectual Property Resources From Nolo 10
Your Legal Companion 11
PART 1: Patent Law 13
Overview 14
Definitions 23
Forms 133
Statutes 159
PART 2: Copyright Law 185
Overview 186
Definitions 195
Forms 307
Statutes 319
PART 3: Trademark Law 343
Overview 344
Definitions 357
Forms 445
Statutes 459
PART 4: Trade Secret Law 486

Overview 486
Definitions 489
Forms 531
Statutes 545
Index 551
Introduction
How Intellectual Property Law Works 3
Types of Intellectual Property Laws 3
Intellectual Property Overlap 4
International Laws 5
Determining What Rights Apply to Your Work 6
Intellectual Property Laws Chart 6
Self-Help Intellectual Property Resources From Nolo 10
Your Legal Companion 11
2 PATENT, COPYRIGHT & TRADEMARK
I
ntellectual property refers to products of the human intellect that have commercial
value and that receive legal protection. Typically, intellectual property encom-
passes creative works, products, processes, imagery, inventions and services and is
protected by patent, copyright, trademark, or trade secret law.
The commercial value of intellectual property comes from the ability of its owner
to control and exploit its use. If the owner could not legally require payment in
exchange for use, ownership of the intellectual property would have litle if any
commercial value.
EXAMPLE 1: At the end of the 1930s Walt Disney took a big gamble. Nobody
had ever made a full-length animated feature. Many people felt the idea was
foolish, including Mr. Disney’s business partner and brother, Roy. But Walt
Disney believed that the public was ready for full-length animated features and
in 1937 he borrowed heavily from Bank of America to make the film, Snow
White and the Seven Dwarfs. The success of that film led to other classic ani-

mated features including Fantasia, Lady and the Tramp, and 101 Dalmations.
These films are now among the most valuable copyright properties in the world
and have been rereleased numerous times and in different formats. The Dis-
ney Company has earned billions of dollars from the monopoly created by its
copyrights on full-length animated films. The company has successfully used
copyright law to prevent others from copying and selling the films without au-
thorization.
EXAMPLE 2: In the 1990s, Lonnie Johnson, an ex-NASA engineer, improved
upon a staple of every child’s toy weapons arsenal when he created one of the
most popular toys of the 1990s, a squirt gun with phenomenal spraying power.
Mr. Johnson acquired a U.S. patent for his invention (U.S. Pat. 4591071) and
was able to license the rights to several companies who paid millions of dollars
in royalties to Mr. Johnson. The product was sold under the trademarked name
“Super Soaker,” and the exclusive right to use this name further enhanced the
value and good will of the product. Under patent law, Mr. Johnson was able to
stop others, during the term of his patent, from the unauthorized making, using
and selling of his invention.
INTRODUCTION 3
How Intellectual Property Law Works
Intellectual property laws, along with court decisions and regulations, establish
rules for the following activities:
• sellingorlicensingofintellectualproperty
• resolvingdisputesbetweencompaniesmakingorsellingsimilarintellectual
property products and services, and
• theregistrationandadministrationofintellectualproperty.
Intellectual property laws don’t prevent someone from stepping on the owner’s
rights. But the laws do give an owner the ammunition to take a trespasser to court.
This is the most well-known benefit of owning intellectual property: The owner
acquires exclusive rights and can file a lawsuit to stop others who use the property
without authorization. If the intellectual property owner does not confront the per-

son or company or who has acted without permission, then the illegal activity will
likely continue.
Types of Intellectual Property Laws
Intellectual property law consists of several separate and overlapping legal disci-
plines, each with their own characteristics and terminology.
• Patent law. There are three types of patents: utility, design, and plant. Util-
ity patents (the most common patent) are granted to the inventor of a new,
nonobvious invention. The utility patent owner has the exclusive right to
make, use, and sell the invention for a limited term—usually 17 to 18 years.
A design patent (for a new but nonfunctional design) lasts 14 years after the
date the patent issues. A plant patent expires 20 years from the date the pat-
ent was filed.
• Copyright law. Copyrights are granted for original creative expressions pro-
duced by authors, composers, artists, designers, programmers, and similar
creative individuals., Copyright law does not protect ideas and facts; only
the manner in which those ideas and facts are expressed. Copyright protec-
tion lasts a long time, often more than 100 years.
• Trademark law. Trademark law protects the rights of businesses who use
distinctive names, designs, logos, slogans, or other signifiers to identify and
distinguish their products and services. This protection can last as long as
the company uses the trademark in commerce—for example, many trade-
marks such as Coca-Cola and General Mills have been protected for over a
century.
4 PATENT, COPYRIGHT & TRADEMARK
• Trade secret law. A trade secret is any confidential information that gives a
business a competitive advantage. Under trade secret law, the owner of this
confidential information can prevent others from using the information if it
was obtained illegally. Trade secret protection lasts for as long as the busi-
ness maintains the secret.
Legal Basis of Intellectual Property Laws

The sources of intellectual property laws vary according to the subject
matter. Copyright and patent laws are derived from powers originating in
the U.S. Constitution and are specifically and exclusively implemented
by federal statutes. In all of these areas, court decisions provide important
principles governing the application of intellectual property laws. Trade-
mark laws originate primarily in both federal and state statutes but also are
derived from court decisions that apply principles developed by earlier
courts as part of the common law. Trade secret law derives both from feder-
al and state legislation and from court cases that have developed their own
set of principles used to decide new trade secret cases that come before
them (termed the “common law”).
Intellectual Property Overlap
Sometimes, trade secret, copyright, patent, and trademark laws intersect with each
other with respect to a particular product or service. Some common examples of
this are as follows:
• Trade secret and patent. It is possible to pursue a patent application while
simultaneously maintaining the invention as a trade secret, at least for the
first 18 months of the U.S. patent application process. The U.S. Patent and
Trademark Office (USPTO) treats applications as confidential until they are
published. Unless the applicant files a Nonpublication Request (NPR) at
the time of filing, and doesn’t file for a patent outside the U.S., the PTO will
publish the application within 18 months of the filing date.
• Copyright and trademark. It’s not uncommon for an item to be protected
under both trademark and copyright law. For example, the expressive art-
work in a package design may be protected by copyright, while the overall
look and feel of the package may be protected as a form of trademark. Like-
INTRODUCTION 5
wise, an advertisement may include some material covered by copyright (for
example, a jingle) and other material covered by trademark (the product or
company name). The difference here is that copyright protects the literal ex-

pression, while trademark protects whatever is used to designate the source
of a product or service being offered in the marketplace.
• Patent, copyright, and trademark. Patent law can intersect with copyright
and trademark law in the case of certain products. For example, the design-
er of a toy or of jewelry may protect the device’s name or appearance (as a
trademark), the design of the item (design patent), the appearance of any art-
work or graphics (copyright) and the novel, nonobvious functionality of the
device (utility patent).
Intellectual Property and the Internet
Intellectual property laws came under intense scrutiny with the popularization
of the Internet at the end of the 20th century. The ability to transform
documents, movies, music, and other expressions into digital copies suddenly
made near-perfect copying possible for everyone, not just bootleggers and
pirates. The Internet enabled the widespread distribution of these unauthorized
copies as well as a plethora of other issues relating to trademarks and domain
names, the publication of trade secrets, the linking of websites, and the
invention of patentable business processes (business method patents). Along
with these changes came disputes and new laws. Throughout this book, we
have included Internet-related definitions and issues.
International Laws
Most countries in the world have entered into intellectual property treaties that afford
members mutual rights. This does not mean that anything protected in the U.S. will
be protected abroad. However, intellectual property that is protected in America may
achieve protection abroad under the standardized rules established by the various
treaties. For example, the Madrid Protocol has standardized the process for obtaining
trademark protection among member countries. Similarly, the Berne Convention es-
tablishes international copyright principles, and the Paris Convention and the Patent
Cooperation Treaty offer harmonization for owners of patents. Trade secrets may
receive international protection under GATT (General Agreement on Tariffs and Trade).
6 PATENT, COPYRIGHT & TRADEMARK

Determining What Rights Apply to Your Work
If you are concerned with a creation of your own, you’ll first need to know what
form (or forms) of intellectual property applies to it. On the next few pages, we’ve
provided a detailed chart that classifies how creative works are protected
These basic rules can help you get started.
• Utility patents are awarded for new processes, machines, manufactures, or
compositions of matter, or new uses of any of the above
• Design patents are awarded to nonfunctional, ornamental, or aesthetic de-
sign elements of an invention or product.
• Plant patents a granted for asexually or sexually reproducible plants (such
as flowers).
• Copyright law protects expressions of creative ideas such as songs, artwork,
writing, films, software, architecture, and video games.
• Trademark law protects marketing signifiers such as the name of a product
or service or the symbols, logos, shapes, designs, sounds, or smells used to
identify it.
• Trade secret law commonly protect confidential designs, devices, processes,
compositions, techniques, formulas, information, or recipes.
Is It Primarily Functional or Aesthetic?
Intellectual property rights are often divided between functional elements
(protected by utility patents and trade secrets) and nonfunctional elements
(protected by trademarks, copyrights and design patents). Sometimes you
can start your analysis of intellectual property protection by asking the
question: “Does this creation accomplish a task or goal or is it done pri-
marily to appeal to the senses or provide information or entertainment?”
Intellectual Property Laws Chart
Below, we’ve provided a detailed chart to further help you identify the applicable
law. The chart lists categories of creations, followed by indications of what sorts of
intellectual property laws generally apply.
INTRODUCTION 7

Guide to Use of Intellectual Property Protections
APPLICABLE LEGAL RIGHTS
CREATIVE WORK
Trade Unfair
Secret Copyright Patent Trademark Competition No Rights
advertisement (billboard,
card, flyer, sign) ■ ■
advertising copy ■
architectural drawings, renderings ■
arrangement of facts ■
artwork (see specific entries) ■ ■
biography ■
biological inventions ■ ■
blueprints ■
book design ■ ■
book titles ■
carpet design ■ ■
cartoons ■ ■
characters—animated ■ ■
characters—books ■
characters—comic strips ■ ■
characters—TV or movies ■
charts ■
chemical inventions ■ ■
choreographed works ■
clothing accessories and designs
(belts, hats, scarves, suspenders) ■
comic strips ■ ■
commercial names ■ ■
computers ■  ■

containers ■ ■
cosmetics ■ ■
databases ■
decorative hardware ■ ■
design (see specific entries) ■ ■ ■
drawings ■
electrical inventions ■ ■
electronic inventions ■ ■
engineering plans ■
etchings ■
fabric ■ ■
fabric design ■ ■ ■
facts ■
flow charts ■ ■
food inventions ■ ■
forms ■
formulas—chemical ■ ■
formulas—cosmetic ■ ■
8 PATENT, COPYRIGHT & TRADEMARK
formulas—food ■ ■
furniture design
■ ■
games—board, box, and instructions ■ ■ ■
hardware ■ ■
housewares ■ ■
ideas by themselves ■
interior design ■ ■
Internet domain names ■
jewelry ■ ■ ■
labels ■

landscape designs ■ ■
laser light show ■ ■
law of nature ■
lectures ■
lithographs ■
logos ■ ■
machines ■ ■
machines—internal parts ■ ■
magazines ■ ■
magic tricks or techniques ■ ■
manufacturing process ■
maps ■
mathematical algorithms ■
mechanical inventions ■ ■
medical accessories, devices
(splints, braces, supports) ■ ■
method of doing business ■ ■
movie—film or video ■
movie—plot (not written) ■
movie—script ■ ■
movie—treatment ■ ■
murals ■
musical composition ■
musical instrument
■ ■
names—business
■ ■
names—entertainer/celebrity ■ ■
names—famous animals ■
names—product or service ■ ■

odors—new use/process
■ ■
odors—used in marketing
■
packaging ■ ■
paintings ■
pamphlets ■
periodicals
■ ■
APPLICABLE LEGAL RIGHTS
CREATIVE WORK Trade Unfair
Secret Copyright Patent Trademark Competition No Rights
INTRODUCTION 9
APPLICABLE LEGAL RIGHTS
CREATIVE WORK Trade Unfair
Secret Copyright Patent Trademark Competition No Rights
photographic processes ■ ■
photographs ■
plants and plant inventions ■ ■
plays—written or performances ■
pottery
■ ■
prints
■
project designs ■ ■
radio programs ■  ■
record books ■
recreational gear
■ ■
reproductions

■
schedules ■
scientific treatises ■ ■
sculpture
■
shapes ■ ■
shoes
■ ■
signs ■ ■ ■
slogans ■ ■
software ■ ■ ■
software titles ■
songs—jingles for marketing ■ ■ ■
songs—not written or recorded ■
songs—recorded or written ■
sounds—new ways to make
■ ■
sounds—original sequence ■
sounds—used in marketing
■ ■
sporting goods—designs
■ ■ ■
sporting goods—equipment
■
stained glass
■
structural plans ■
symbols
■ ■
titles—books, plays

■
titles—magazines
■ ■
titles—movies, songs, TV shows
■
toys ■ ■ ■
translations
■
videotape
■
wallpaper design
■
weavings
 ■ ■
Web pages ■  ■ ■
words by themselves  ■
writing—articles, essays, poems,
novels, short stories, nonfiction books ■
10 PATENT, COPYRIGHT & TRADEMARK
Self-Help Intellectual Property Resources From Nolo
If you’re interested in intellectual property, Nolo, the publisher of this book, offers a
number of excellent self-help resources. You can find more information at the back
of this book or at the Nolo website, www.nolo.com.
All I Need Is Money: How to Finance Your Invention, by Jack Lander, is packed
with advice and strategies to help the reader find sources of funding for new
inventions.
Getting Permission: How to License & Clear Copyrighted Materials Online &
Off, by Richard Stim, spells out how to obtain permission to use art, music,
writing, or other copyrighted works.
What Every Inventor Needs to Know About Business & Taxes, by Stephen Fish-

man, provides the information you will need if you want to make a profit
from your invention, or if you have to understand legal protections, business
rules, and tax deductions.
Profit From Your Idea: How to Make Smart Licensing Deals, by Richard Stim,
guides the reader through the important process of giving others permission
to use, develop, and market an invention.
Nolo’s Patents for Beginners, by David Pressman and Richard Stim, is a quick
and easy guide to patent law that sets out the basics for protecting, search-
ing, documenting, and registering patentable inventions.
Patent It Yourself, by David Pressman, a patent attorney and former patent ex-
aminer, takes inventors through the entire process—from conducting a pat-
ent search to filing a successful application.
Patent Pending in 24 Hours, by Richard Stim and David Pressman, shows you
how to prepare, assemble, and file a provisional patent application—an ab-
breviated patent application that preserves your priority of invention for 12
months.
The Copyright Handbook, by Stephen Fishman, takes the reader through the
process of protecting all kinds of written expression under copyright law.
The Inventor’s Notebook, by Fred Grissom and David Pressman, is an anno-
tated book that can be used to document the creation of an invention.
How to Make Patent Drawings: A Patent It Yourself Companion, by Jack Lo and
David Pressman, teaches how to use pen and ink, computerized drawing
programs, and photography to prepare patent drawings.
The Public Domain: How to Find Copyright-Free Writings, Music, Art & More,
by Stephen Fishman, is an essential roadmap for determining whether mu-
sic, writing, artwork, and movies are free to use.
INTRODUCTION 11
Trademark: Legal Care for Your Business & Product Name, by Stephen Elias,
shows how to choose a distinctive name, conduct a trademark search, and
register a mark with the U.S. Patent and Trademark Office.

Web & Software Development: A Legal Guide, by Stephen Fishman, covers
website development, software development, intellectual property laws, and
the legalities of working with independent contractors and employees.
Your Crafts Business: A Legal Guide, by Richard Stim, explains the law for crafts
artists including taxes; starting and running your crafts business; and selling,
licensing, and protecting crafts.
NOLO PODCASTS—Nolo offers a series of podcasts on legal subjects includ-
ing several episodes relating to intellectual property. Check them out at
www.nolocast.com.
Your Legal Companion
A photographer is wondering why an advertising agency can copy her photographs
without permission. An inventor is wondering why he cannot stop a foreign manu-
facturer from making his patented invention. A man named McDonald is wonder-
ing why he cannot open a restaurant called McDonald’s. And a woman who spends
$600 on a software program is wondering why it’s illegal to share copies with her
friends.
Welcome to the wonderful world of intellectual property.
Writers, inventors, and artists transform ideas into tangible property. When this
property qualifies under law for protection it’s known as intellectual property (or
IP)—for example, patents, copyrights, trademarks, and trade secrets. Creators of
IP are granted certain rights. For example, the author of a book can prevent others
from copying it; and the owner of a patented invention can prevent others from
making, using, or selling the device.
After a time, these exclusive rights may be lost or taken from the owner and given
to the public. For example, copyright protection has ended for Mark Twain and any-
one is free to copy his books Huckleberry Finn and The Adventures of Tom Sawyer.
The patent on the original roller blade invention expired and companies are now
free to copy the device.
But not all products of the mind can achieve protection under intellectual prop-
erty law. Determining what can be protected and why used to be the exclusive

domain of patent, copyright and trademark lawyers. Unfortunately, few businesses,
nonprofits, or educational institutions can afford to call an attorney with every
12 PATENT, COPYRIGHT & TRADEMARK
question. And lately, there are a lot more questions. Globalization, digital data, and
the Internet have all contributed to a greater need for more information about IP.
The truth is that intellectual property is not an inscrutable discipline. Anybody
can understand the basics. This book is proof that IP law is not a mystery. For over
a decade, engineers, scientists, businesspeople, academics, and attorneys have
used this book as a reference for understanding basic patent, copyright, trademark
and trade secret principles. This helpful desk reference has—over nine editions—
evolved to include hundreds of definitions, statutes, forms, and how-to information
about protecting and preserving intellectual property.
So before you pick up the phone to call an attorney, check out this book. It
may save you time and money … and it will hopefully make your job easier, your
employer more secure, and your business more prosperous.
●
Part 1
Patent Law
Overview 14
What is a patent? 14
How do inventors benefit by holding a patent? 14
What kinds of patents may be issued? 14
What types of inventions qualify for a utility patent? 15
What is the procedure for applying for a utility patent? 16
What happens if there are multiple applications for the same invention? 16
Under what circumstances is a utility patent application approved? 16
How are patent rights enforced? 17
When does a patent expire or otherwise come to an end? 17
What about international protection for U.S. patents? 18
What’s new in patent law since the last edition? 19

Patent resources 21
Definitions 23
Forms 133
Patent Application Basics 134
Preparing a Utility Patent Application 134
Preparing a Design Patent Application 153
Statutes 159
Overview
14 PATENT, COPYRIGHT & TRADEMARK
T
here are three types of patents: utility patents, design patents, and plant patents.
Commonly, when people refer to a patent, they are referring to a utility patent,
which allows the creator of a useful, novel, nonobvious invention to stop others from
making, using, or selling that invention for a period of approximately 17 to 18 years.
What is a patent?
A patent is a grant by the U.S. Patent and Trademark Office (USPTO) that allows
the patent owner to maintain a monopoly for a limited period of time on the use
and development of an invention.
How do inventors benefit by holding a patent?
Most patent owners make arrangements with an existing company to
commercialize an invention. Typically, the arrangement takes the form of a license
agreement under which a company (the licensee) is authorized to commercially
exploit the invention in exchange for paying the patent owner royalties for each
invention sold.
A license may be exclusive (only one company is licensed to exploit the
invention) or nonexclusive (a number of companies are licensed to make and sell
it). The license may be for the duration of the patent or for a shorter period of time.
Sometimes the patent is sold outright (an assignment) to the company for a lump
sum payment.
On occasion, a licensee may sublicense other companies to market or distribute

the invention. The right to do this and the extent to which the patent owner will
benefit from these sublicenses depends on the terms of the agreement between the
patent owner and the licensee.
Licenses are often limited by geography (for instance, different licenses for
different countries or for different parts of one country) and by use. In many cases,
one company will trade licenses with other companies—called cross-licensing—so
that companies involved in the trade will benefit from each other’s technology.
What kinds of patents may be issued?
The U.S. Patent and Trademark Office (USPTO) issues three types of patents:
• Utility patents. New, nonobvious, useful inventions that fall into one of
five categories—a process, a machine, a manufacture, a composition of
matter, or an improvement of an existing idea—may qualify for a utility
patent. Often, an invention will fall into more than one of the categories.
Overview
PATENT LAW: OVERVIEW 15
For instance, computer software can usually be described both as a process
(the steps that it takes to make the computer do something) and as a
machine (a device that takes information from an input device and moves
it to an output device). Regardless of the number of categories in which an
invention falls, only one utility patent may be issued on it.
• Design patents. New and original designs that ornament a manufactured
article can qualify for a design patent. For example, a new shape for a car
fender, bottle, or flashlight that doesn’t improve its functionality would
qualify.
• Plant patents. The least-frequently issued type of patent are plant patents—
granted for any asexually or sexually reproducible plants (such as flowers)
that are both novel and nonobvious.
What types of inventions qualify for a utility patent?
Most types of inventions (the term we’ll use for innovative ideas) qualify for a utility
patent if they offer something new (are novel) and are particularly clever (that is,

nonobvious). However, some types of inventions do not qualify for a patent, no
matter how nonobvious they are. For instance, mathematical formulas, newly
discovered laws of nature, and newly discovered substances that occur naturally in
the world traditionally have been considered to be unpatentable.
When deciding whether an invention qualifies for a patent, the USPTO first must
determine whether the invention is novel in some way—that is, a new development
in at least one or more of its constituent elements—as of the date of invention
(usually the date the inventor conceived it or when the patent application was
filed).
If the USPTO determines that the invention is novel, it then must make another
decision: Is the invention nonobvious? To make this determination, the USPTO
asks this question: Would someone who was skilled in the particular field as
of the invention date consider the invention to be an unexpected or surprising
development?
If the invention is found to be both novel and nonobvious, and it fits within one
or more of the five statutory categories discussed above, it may qualify to receive a
patent.
Among the many types of creative works that might qualify for a utility patent
are biological inventions; new chemical formulas, processes, or procedures;
computer hardware and peripherals; computer software; cosmetics; electrical
inventions; electronic circuits; food inventions; housewares; machines; magic tricks