An NFT or non-fungible token is a non-interchangeable unit of data stored on a blockchain, a form of digital ledger, a network of computer record transactions giving the buyer proof of authenticity and ownership. This digital record can be sold and traded. Types of NFT data units may be associated with digital files such as photos, videos, and audio. In other terms NFTs make digital art unique, and therefore sellable.

But if a digital photo is bought through use of an NFT, who owns the intellectual property (IP) rights? This is important to know because even if you own the digital file or NFT it does not mean you own the IP rights to make, use, or produce, the image contained in the digital file. You can look at the digital photo, produce it in physical copy to be mounted on your own wall, but you cannot use the image on a mug, t-shirt, or any other item of commerce to sell for a profit.

The creator or owner of the IP rights to the file/photo, which would be in the form of a copyright registration, retains the rights to reproduce the photo and sell products with its image, just as they did to you through sale of the NFT. The same is true for a registered trademarked name or logo. Just because you own an NFT with a brand associated with it does not mean you hold the rights to the brand and can reproduce the image with the brand on it. The registered trademark owner still retains those rights.

Many individuals and companies trading in the NFT space have sought copyright and trademark registrations to protect their digital creations and brands in the digital space. Even Nike, the sports apparel and footwear icon, created CryptoKicks and secured a patent around tokenizing exclusive shoe designs. When a customer buys a pair of CryptoKicks they also receive a NFT digital asset unique to that pair of shoes that may be bought, sold, or traded.

Creators should make sure they have IP registrations in place before trading NFTs for their assets via copyright, trademark, or patent protection. A copyright registration is used for works for art such as photos, images, music, works of literature, and video or movie content. A trademark protects a brand name or logo associated with a product or service used in commerce. A patent protects an apparatus or method, with a design patent protecting with an item looks like.

For anyone interested in NFTs, IP should be considered first. IP rights can be licensed from owners in exclusive or non-exclusive licenses. But any re-use of the registered trademark, copyright, or patented item or method without permission would be an infringement of the IP holder’s rights.

Questions? Contact me.

Tricia Brzostowicz
Superior Patent Group, LLC

Tricia is a Registered Patent Agent with over twelve years’ experience in patent searches, drafting, filing, and prosecuting applications with the US Patent & Trademark Office. Find out more about Tricia here. Sign up for her monthly bonus content here or schedule some time on her calendar with this link.

1. Launching your product before filing patent application
Once you launch a product on a website, social media, or anywhere, it is in the public domain. This starts a time bar. If you don’t file within a year of releasing, then you are barred from obtaining a patent. The invention is considered donated to the public. The U.S., like other countries have done for some time, is now a first to file system. Another could file an application on a similar device or method and obtain a patent, excluding you from making and using your invention.


2. Publicly using invention before filing patent application
Like launch of a product, using your invention in public starts a time bar clock. You must file within a year of a first public use. There are certain allowances for research purposes, but you must prove you made an effort to keep the device or method private during testing.


3. Publishing before filing patent application
Like a product launch or public use, publication on a website or printed publication starts a time bar clock. You have one year from publication to file an application or you lose the right to obtain a patent. Any public use, publication, or launch of a product is a risk of another filing an application before you file yours, which would negate your patent rights as well in our first to file system.


4. Filing too soon
If you file an application before you have your final product design complete, you could waste time and money in filing an un-needed application. If you have a product, method, or idea in a fast moving technical field, I suggest filing a provisional patent application, or multiple provision applications as your invention evolves. I can aid you in filing a provisional application and help you learn if this is right for your case.


5. Filing too late
As noted in part one of this series, publication, product launch, or public use starts a time bar. You have one year from such an event to file an application or your patent rights are waived. If you want to do market testing, public product evaluation, or publicly seek investment funds, file a provisional application first. I can aid you in filing a provisional application that protects your idea.


6. Submitting badly written provisional patent application
For a provisional application to serve as a priority document (i.e. save your date) there needs be enabling disclosure. Not enabling your idea is the biggest mistake most people make when filing a provisional application.


7. Not getting a professional patent search
The internet is an amazing thing and Google Patents as well as the Advanced Google Patent Search site are great places to start if you want to know if others have filed applications or have granted patents on items similar to your idea/invention. But having a professional who knows how to find patent technology area categories, find prior art of applications and patents, and use keywords and search terms correctly is key. Granted, even a professional searcher can’t guarantee 100% that every reference will be found, but they can help you get a more comprehensive view of the patent landscape. Beyond knowing prior art, a patent search can help you craft your patent application to differentiate your idea from others.


8. Not doing an internet search
Again, the internet is a wonderful thing, and in this case, please use it. Search Google and other search sites with keywords for similar products. I suggest doing this before or requesting that your professional searcher do this as well. Note company names to see if that company has published patent applications or granted patents on their products. This can also tell you if there is already too much competition with a certain product and whether your investment will be worthwhile.


9. Filing the wrong type of patent application
There are several types of non-provisional patent applications. Which application test is best for your product or idea depends on prior art and the product/idea itself as well as your goals for the product and budget. Utility applications apply to inventions drawn to new and useful methods, articles of manufacture, or compositions. Utility applications are the most common for protecting a new product or method and provide the best protection. Design applications apply to the aesthetic value of an article, the shape of a pillow, key, bookcase, for instance, or any physical good. A design patent is a good vehicle if your idea does not rise to the standard of novelty and non-obviousness required for utility applications. (Note: Other forms of protection such as Trade Dress and Copyright may be applicable to purely decorative, non-functional design articles.)



10. Filing too narrow of a patent application
Filing too narrow of a disclosure and claims in your application can leave your product or method poorly protected.


I hope this information is beneficial to you. If you have questions or need advice or assistance with patent applications, trademarks, or copyright, schedule a meeting here or call me at 303-862-0862.


Tricia Brzostowicz
Registered Patent Agent
Superior Patent Group, LLC
tricia@superiorpatentgroup.com
www.superiorpatentgroup.com


©2021, Superior Patent Group, LLC

Filing a patent application can seem like a daunting, overwhelming tasks. If you're a small business owner or private inventor you already have your to-do list full. There are several reasons to file an application for patent including attracting investors, protecting a new idea so that others can't copy it, and desire to license and/or sell your method or technology to one or more others.

There are two main issues that factor into whether your method or product could be patentable. First it must be novel or new. It must a new item, article of manufacture, composition, or non-natural hybrid plant, or improvement thereof. It cannot be an abstract idea or law of nature. Beyond being novel, the item or method must also be non-obvious based on the state of the art in the technical area. This can be a trickier issue than novelty. If you are in the business method, software, or artificial intelligence fields there are also additional considerations that require a person with experience in filing those applications to analyze your particular situation.

There are a few considerations when thinking about what type of application to file. An application called a design application covers what an item looks like, not what it is or what it does. A key may not be novel, but a key that looks like a teddy bear may be. The second type of application is a utility application that protects what something is or what it does, and/or a method of using an item. There are also plant applications which protect hybrid plant varieties.

There are several considerations on timing of filing. If you are in a hot technology area, you should file as soon as you have a clear idea of what your product is and what it does. Even if you just have half of an idea it may be advisable to file a provisional application to ensure you have a date secured with the patent office. If there is new data then you can always file a second or more provisional applications and claim priority to each of those. A provisional application is a vehicle for holding a date for one year. You must file a regular utility application within a year of filing a provisional application to proceed with the application process. Provisional applications are not available for design applications. Provisional applications are not reviewed and are secret unless you file a regular application so can give a company time to do market research or refine an idea. They also do not require a particular format or formal drawings. Pictures, photos, hand drawings, even color drawings or photos are allowed. Just be sure to have at least one claim and a full disclosure in your provisional application.

The first step in discovering if your idea is novel and non-obvious is performing a patent search. Google patent search is a great tool along with the USPTO (United States Patent and Trademark Office) site. You can find links to these and other search sites on my resources page.

The USPTO website offers electronic filing for private inventors and registered agents who are allowed to file applications for other parties. A registered agent and/or patent attorney can help with searches, patentability assessment, creating the application and drawings, and filing on behalf of an inventor or company.

If you have questions, I am always happy to help. Call me at 303 862 0862 or email me at tricia at superior patent group dot com, no spaces, for a free consultation.

Tricia Brzostowicz
Registered Patent Agent
Owner, Superior Patent Group, LLC

I get a lot of questions about being a registered patent agent and how agents are different from patent attorneys. Here is all you need to know about registered agents and patent attorneys.

A registered patent agent is someone who meets requirements established by the USPTO (US Patent and Trademark Office) to become a registered agent. These requirements include that you have completed masters level course work in a science or engineering field and that you pass a patent bar exam. The patent bar exam is equivalent to the bar exam attorneys take to become registered attorneys, but covers the rules related to patent filing.

A patent attorney would also be (or should be) a registered patent agent. They are attorneys who passed the patent bar exam and became registered agents or vice versa.

Being a registered patent agent allows you to file patent applications for others with the USPTO and prosecute those applications on behalf of the inventors and/or owners of the application. Prosecuting an application means responding to or answering office actions from the patent office. These office actions often are objections to or rejections of claims with reasons why the office feels your patent application should not be granted.

Registered agents are viewed the same as patent attorneys in the eyes of the patent office. That is why hiring a registered patent agent can be a good value for inventors and companies. Often times applicants do not need someone to file a suit or case in a court of law, they need an application written, filed, prosecuted, and hopefully granted by the patent office.

All agents registered with the patent office are listed on their website here.

Still have questions? Comment below or contact me.