| This is a transcript of the on-line chat held on Wednesday, February 22, 2006. This final version is an edited version of the actual transcript. Where you see “edited answer” below, the original on-line chat answer has been modified to ensure completeness and accuracy of the answers originally provided by USPTO staff.
As in our previous chats held so far, we received hundreds more questions then we had time to answer. We selected questions for posting which we believed would be of interest to others besides the author of the question. Once we selected the question, we developed the answer, and then posted the question and the answer for viewing by the public. During the actual chat, occasionally the answer was actually posted before the public saw the question. This edited transcript always has the question before the answer. In reviewing the transcript below, if you see the time of the answer before the time of the question, we originally posted them out of sequence.
USPTO Expert (Feb 22, 2006 1:40:17 PM)
Welcome to the Independent Inventors Chat, we will begin promptly at 2:00 pm. Prior to the beginning of the chat you may want to review transcripts from our previous chats at http://www.uspto.gov/web/offices/com/iip/onlineiip.htm. As in the past, not all questions can be answered in the timeframe of this chat. Questions are selected and answered with the intent of being applicable to the widest audience. We will select questions to post and answer later to be included in the transcript, which is usually posted within 2 weeks. As always if you do not see your question posted you can contact our Inventors Assistance Center after the chat at 1-800-786-9199.
dp (Feb 22, 2006 2:01:29 PM)
Has this started?
USPTO Expert (Feb 22, 2006 2:01:50 PM)
It's about to in one minute.
charlie g (Feb 22, 2006 2:02:09 PM)
I have an application with a restriction applied to 8 of 24 claims, 16 were allowable. I cancelled the 8 restricted claims to allow the application with the remaining 16 claims to issue. But when the patent issues, it issues with all 24 with no reasons given by Examiner why this happened. Is this a potential problem? I am not pursuing the divisional since the claims issued. Can someone later say an error was made for the "extra" 8 claims that were issued?
USPTO Expert2 (Feb 22, 2006 2:02:32 PM) EDITED ANSWER
It's possible that the extra claims issued due to a clerical error on the part of the Office. You should contact the examiner or supervisor as soon as possible to find out why the claims issued and for information on how to request a Certificate of Correction for your patent.
kell (Feb 22, 2006 2:02:56 PM)
Hi There! I have two questions....one being: When filing your design logo...do you need to include the TM in the drawing submitted. And, my second question is: I was told to use the Regular TEAS form to file this Trademark, because if there are any mistakes...it won't be $50- each mistake. Now, when filing the form...if I send it through standard mail, opposed to doing it electronically is it more money to do that.
USPTO Expert2 (Feb 22, 2006 2:02:59 PM)
Question 1: Do not include the TM in your drawing. Question 2: Sending a paper application using regular mail will cost more. TEAS filing costs more than TEAS Plus but less than sending paper through regular mail.
fractz (Feb 22, 2006 2:03:19 PM)
Can USPTO sponsor an online forum (a.k.a message or bulletin board) for individual investors? I or someone else can volunteer to setup and maintain the forum, but it would be more effective if it has USPTO moderators. The forum format can go into greater depth, accommodate unlimited users and be easier on you than a live meeting/conference such as this.
USPTO Expert (Feb 22, 2006 2:03:27 PM)
No, unfortunately the USPTO does not participate in on-line bulletin boards, however you may want to contact local inventor groups in your area or United Inventors Associations, http://www.uiausa.org/.
jott (Feb 22, 2006 2:03:47 PM)
We are looking for a patent attorney. What is the best way to research them or find ratings on them. We are in Jacksonville, FL.
USPTO Expert (Feb 22, 2006 2:04:46 PM)
The USPTO maintains a roster of registered patent attorneys/agents. To access this list go to http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html. You can search by geographical location.
Rony (Feb 22, 2006 2:05:19 PM)
I wish to file a utility patent on an invention for which I have already filed a design patent. The design patent has been allowed and the issue fee has been paid.
Rony (Feb 22, 2006 2:05:22 PM)
1. Can I still file for the utility patent
Rony (Feb 22, 2006 2:05:25 PM)
2. How much time do I have within which to file?
USPTO Expert2 (Feb 22, 2006 2:07:53 PM)
Yes, you can file the utility application. If you are claiming priority to the design application then you must do this before the design patent issues.
Johnny (EDITED)
What is the difference between first to file and first to invent?
USPTO Expert (Feb 22, 2006 2:08:15 PM)
With first to file, priority is given to the application/invention with the earliest filing date. This is common in many international patent offices. However, the USPTO currently gives priority to the first to invent, where evidence supporting conception of the claimed invention prior to the filing date of the application may be considered to determine the first inventor of the invention.
laker (Feb 22, 2006 2:08:57 PM)
How does one find out status of a dead trademark & how to take ownership if available?
USPTO Expert2 (Feb 22, 2006 2:08:59 PM) EDITED ANSWER
You can find the status of a trademark application at the USPTO website using TARR. A dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing. It does not necessarily mean that there are not other marks that the trademark examining attorney would cite. It is also possible to revive an abandoned application (for example, if the USPTO declared the application abandoned for failure of the applicant to respond to an Office action, but the applicant later proved that a response was sent and the USPTO simply failed to match it with the file in a timely manner, then the case could be revived). Also, regardless of the status of an application within the USPTO, the owner may still claim common law rights, i.e, the mark may still be in use in commerce.
Bob (Feb 22, 2006 2:09:33 PM)
If a provisional application is filed and then after 12 months expires without filing a non-provisional application filed, does this prevent a patent ever to be issued?
USPTO Expert (Feb 22, 2006 2:10:42 PM) EDITED ANSWER
No, the failure of you to file a non-provisional application within 12 months from the filing of your provisional application would not prevent you from obtaining a patent. However, if you do file your non-provisional application after the expiration of the 12 months time period you will not be entitled to the benefit of the earlier filing date of your provisional application and the examiner may use prior art with a date prior to the filing date of your non-provisional application to reject the claims in your non-provisional application.
gymus (Feb 22, 2006 2:11:10 PM)
I have two issues, if I may: 1.) I submitted my Regular Patent Application (RPA) on Aug 7, 2004, but, after 1.5 years, I just found the Information Disclosure Statement (IDS) that I thought I also mailed. May I still submit my IDS (having not yet received an Office Action from the USPTO)? 2.) Since I submitted my RPA, I've found more information (another patent) that I should have addressed in my RPA. May I submit it as a supplement to my RPA (when I submit my IDS)? I'll assume there are fees associated with my proposed actions. Thank you, -james
USPTO Expert (Feb 22, 2006 2:14:15 PM) EDITED ANSWER
You may file an IDS anytime before a first Office Action without a fee. You should include all relevant information that you are aware of in the IDS. See 37 CFR 1.97(b) and MPEP Section 609.04(b), http://www.uspto.gov/web/offices/pac/mpep/documents/0600.htm. As to your second question, I am assuming that you have found another patent that should be submitted to the Office in an IDS and you would like to include that patent in your IDS. You can go ahead and add that patent to your IDS and submit the IDS prior to a first Office action without a fee.
Liz (Feb 22, 2006 2:14:27 PM)
If one develops an unusual book format /structure with the intent to display a specific kind of information (e.g. the structure makes learning celestial navigation easier), does one protect that using copyright (as 3-dimensional art) or as a patent (as a useful item)?
Liz (Feb 22, 2006 2:15:04 PM)
If an important part of your trademark is that it appears as a light color (say, white) on a dark field (say, black), does it need to be submitted that way? If so, is the trademark then not apply if you use it in a different color combination (like silver on brown)?
USPTO Expert2 (Feb 22, 2006 2:15:37 PM)
The clearest answer is that you are protected for exactly what is shown in your registration. Sorry, Liz, this answer is for the question immediately above.
sscw (Feb 22, 2006 2:15:51 PM)
We have filed a US patent application, and would like to file patent application in other countries, What should we do? When should we do? Are there any time limits? What is PCT, if we file a PCT application, can my US patent application enter national stage automatically?
USPTO Expert2 (Feb 22, 2006 2:16:29 PM)
I suggest that you seek legal advice to answer all of your questions There is more to your question than can be answered in this forum.
fractz (Feb 22, 2006 2:17:04 PM)
Is it true that most software patents are filed as utility patents, and could a process patent be more appropriate in some cases?
USPTO Expert (Feb 22, 2006 2:17:08 PM)
Patenting a process is a type of utility patent. What can be patented - utility patents are provided for a new, nonobvious and useful: · Process · Machine · Article of manufacture · Composition of matter · Improvement of any of the above Patents on software related inventions are considered utility patents.
shaynee (Feb 22, 2006 2:18:14 PM)
I have created an addition to the average rolling luggage, specializing it for a particular use. Since rolling luggage has already been invented is it necessary to file a patent? I mean, isn't innovating an existing invention kind of any man's game?
USPTO Expert (Feb 22, 2006 2:18:59 PM)
Most patents are for improvements to already existing inventions like yours. As long as the improvement is found to be novel and non-obvious it may subject to patent protection.
Mitch (Feb 22, 2006 2:19:08 PM)
How many times can a claim be amended before prosecution of the application?
USPTO Expert2 (Feb 22, 2006 2:19:26 PM) EDITED ANSWER
Our current regulations do not have a limit as long as no new matter is added. However, once prosecution of the application is closed (e.g., final rejection), amendments are no longer entered as a matter of right. Only certain amendments may be entered. See 37 CFR 1.116.
USPTO Expert (Feb 22, 2006 2:21:03 PM)
As in the past, not all questions can be answered in the timeframe of this chat. Just because you don't see your questions doesn't mean we have not received it.
TonyP (Feb 22, 2006 2:21:06 PM)
Can I use a patent agent as opposed to a patent attorney to obtain a patent
USPTO Expert (Feb 22, 2006 2:22:41 PM)
Yes, as long as they are registered to practice before the USPTO. See http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html
geo1929 (Feb 22, 2006 2:22:46 PM)
What amount of drawings and written description are required for a provisional patent?? What is the fee (is the fee 1/2 off for the small inventor or nonprofit)??
USPTO Expert (Feb 22, 2006 2:23:42 PM) EDITED ANSWER
There is no set amount of drawings and written specification required in a provisional application. The requirement is that you make a full disclosure of your invention so that someone skilled in the field could make and understand your invention. However many pages that requires, is what you need to file. Please see, http://www.uspto.gov/web/offices/pac/provapp.htm. The basic filing fee for provisional applications is $200.00 for large entities and $100.00 for small entities. For applications filed on or after December 8, 2004, if the specification and drawings exceed 100 sheets of paper, an application size fee of $250.00 for large entities and $125.00 for small entities is required for each additional 50 sheets or fraction thereof. See 37 CFR 1.16(s). Small entities are defined as independent inventors, small business concerns and non-profit organizations. You must establish small entity status for purposes of paying small entity fees. See MPEP 509.03.
fred_h (Feb 22, 2006 2:23:49 PM)
I filed a patent application with Assignment. The USPTO replied confirming the receipt of the Assignment. The patent was granted, but published without the Assignment. Any reason for that? What corrective action needs to be taken?
USPTO Expert2 (Feb 22, 2006 2:25:57 PM) EDITED ANSWER
Unless the assignee name and residence data is included in the “Part B – Fee(s) Transmittal” form (PTOL-85), this information will not appear on the patent. If you did include this information on the form, you should file a request for a Certificate of Correction using a form PTO/SB/44 (http://www.uspto.gov/web/forms/index.html - patent) see MPEP Chapter 1400 (http://www.uspto.gov/web/offices/pac/mpep/index.html)
Paul (Feb 22, 2006 2:26:00 PM)
Is this a bonified Online Chat by the USPTO? If so, why is the submission of personal information required?
Paul (Feb 22, 2006 2:26:17 PM)
When I click on the link, the site requests personal information, such as name, address, phone number, etc.
USPTO Expert (Feb 22, 2006 2:27:12 PM)
Yes this is a chat sponsored by the USPTO. Answering personal information is voluntary and is not shared with anyone. The personal identification information is built into the software and not retained by the Office.
kirk (Feb 22, 2006 2:27:35 PM)
Can you trademark phrases as well as single words and internet sites.
USPTO Expert2 (Feb 22, 2006 2:27:39 PM)
Yes, you can register a phrase as a trademark or service mark.
geo1929 (Feb 22, 2006 2:27:56 PM)
There are a lot of good questions being asked here, where will we be able to get a copy of the transcript??
USPTO Expert (Feb 22, 2006 2:28:06 PM)
The transcript from this chat will be posted on the USPTO homepage in about 2 weeks.
Lyn (Feb 22, 2006 2:29:13 PM)
How far along in the invention process do you need to be in order to apply for a patent? Do you need a working mock-up? Is a prototype necessary?
USPTO Expert (Feb 22, 2006 2:29:57 PM) EDITED ANSWER
The Office requires an oath or declaration, written description, a least one claim, drawings if necessary for the understanding of the invention and a fee. A working model is not required in order to obtain a patent. The filing of an application which completely describes the invention is considered to be a constructive reduction to practice and is sufficient.
fractz (Feb 22, 2006 2:30:34 PM)
Is participation in the EFS-WEB beta still open?
USPTO Expert2 (Feb 22, 2006 2:31:02 PM) EDITED ANSWER
Membership in EFS-WEB beta is closed. We are ending the beta on March 10, 2006 and everyone will be able to use EFS-WEB on March 17, 2006. Check the EFS-WEB portal site for current information. http://portal.uspto.gov/external/portal/pair
Mitch (Feb 22, 2006 2:31:07 PM)
Is there a fee for amending a claim?
USPTO Expert (Feb 22, 2006 2:31:18 PM)
No, as long as the response is timely filed and no extension of time fees are required.
Liz (Feb 22, 2006 2:32:26 PM)
I'm sorry, did the following get answered out of sequence? I'm not finding the reply (thanks!): If one develops an unusual book format /structure with the intent to display a specific kind of information (e.g. the structure makes learning celestial navigation easier), does one protect that using copyright (as 3-dimensional art) or as a patent (as a useful item)?
USPTO Expert2 (Feb 22, 2006 2:33:25 PM) EDITED ANSWER
The answer to your question depends on how you want to protect your invention. If you want to protect unauthorized publication of your book, then a copyright may be sufficient, http://www.loc.gov/copyright If you want to protect the ornamental features of the product, then a design patent may be the best choice. Lastly, if you want to protect the use or the products utility, then a utility patent would give you the best coverage. For example, if your product is an educational device, then your product may be eligible for a utility patent. Often, more than one type of intellectual property protection (i.e. a combination of copyright, trademarks and/or patents) may yield the best coverage for your product. You should seek legal advice to see which intellectual property protection is most appropriate for your invention.
kirk (Feb 22, 2006 2:34:53 PM)
Which link on the PTO website would I go to begin my effort at obtaining a Trademark?
USPTO Expert2 (Feb 22, 2006 2:35:09 PM)
Try this - http://www.uspto.gov/web/trademarks/workflow/start.htm
Kevin (Feb 22, 2006 2:36:42 PM)
Who is liable for misrepresentation or fraudulent business practices within a patent submission company? Is it the company, the sales agent/employee of the company or both?
USPTO Expert (Feb 22, 2006 2:36:50 PM) EDITED ANSWER
The USPTO has no authority to investigate invention promotion firms, but if you would like to file a complaint about a particular invention promotion firm please go to http://www.uspto.gov/web/offices/com/iip/complaints.htm. You should seek legal advice as to any liability issues.
Chuck (Feb 22, 2006 2:37:17 PM)
Why don't these participants read the USPTO website for filing patents? Why are they wasting our time here for not doing their own homework?
USPTO Expert2 (Feb 22, 2006 2:37:32 PM)
Chuck, we're not here to judge whether questions are too simple. We're here to help people. We recommend that all participants review the USPTO website to see if some of their questions may be answered there before submitting them to the forum. There's also a lot of information at the Independent Inventor link - http://www.uspto.gov/web/offices/com/iip/index.htm
kirk (Feb 22, 2006 2:38:35 PM)
Can an individual legally file a Patent application? How?
USPTO Expert2 (Feb 22, 2006 2:39:27 PM)
Yes, an individual can file a patent application. And starting March 17, 2006 you can file electronically using EFS-WEB.
Eli (Feb 22, 2006 2:39:35 PM)
Can you explain to me the least expensive process for patenting. I've got so many ideas and do not know how to proceed with any of them- some of them I have prototypes for.
USPTO Expert (Feb 22, 2006 2:39:37 PM)
Eli, there is no simple response that we can answer here; you may want to contact the Inventors Assistance Center to discuss in detail. 1-800-786-9199.
dp (Feb 22, 2006 2:39:44 PM)
I have a new design for an existing (commodity) product, but much improved. Is it better to consider a Design or Utility patent, as the improvements can change the way the product is used?
USPTO Expert (Feb 22, 2006 2:41:57 PM)
Design and utility inventions are protected under 2 statutes: 35 USC 101 and 171; they are concerned with different subject matter; so they are not exclusive; the same invention could be appropriate for both patents.
luap (Feb 22, 2006 2:42:53 PM)
how do I research paper place mats to determine if a patent already exists?
USPTO Expert2 (Feb 22, 2006 2:43:50 PM)
You can search U.S. patents at our web site - click on Search under Patents on the home page. You can search using text terms or search our manual of classification to identify areas in the U.S. Patent Classification System to search. See "How to Search" at the top of the USPTO home page for search tips.
Mark (Feb 22, 2006 2:44:04 PM)
Would I be allowed to patent a new "skin" to outside of an existing product and add audio software to the existing software? I would need to obtain licenses from the creator of the character to use the new 'skin' and audio. Thru entertainment these additions would encourage children to correctly use a medical device which helps their doctor monitor a chronic disease.
USPTO Expert (Feb 22, 2006 2:44:07 PM) EDITED ANSWER
A new "skin" for an existing product would be patentable if the differences between the new product and the existing product were novel or non-obvious. Basically, when you are improving on an existing device, the change you make to the device must be novel or non-obviousness for you to obtain a patent (See 35 USC sections 102 and 103). The USPTO examiner will analyze the differences between the claim(s) in your patent application and the existing device (generally called the “prior art”). The examiner then applies the standards of 35 USC 102 and 103 to determine if the claim is novel or if the differences between the claim and the “prior art” would have been “non-obviousness”. As long as the claim meets the statutory requirements of 35 U.S.C. 101, 102, 103 and 112, it may be patented.
teachme (Feb 22, 2006 2:44:14 PM)
should you file an information disclosure statement if you receive an international search report, and should you simply file the whole report? Should you list it on SB08B as a non-patent literature document?
USPTO Expert (Feb 22, 2006 2:46:20 PM) EDITED ANSWER
Teach me - yes, you should file your international search report in an IDS. It should be listed on the PTO/SB/08 http://www.uspto.gov/web/forms/index.html or PTO-1449. See MPEP 609.04(a) http://www.uspto.gov/web/offices/pac/mpep/index.htm
kirk (Feb 22, 2006 2:46:25 PM)
Is there a specific link to a part of the PTO site where I can see all the steps involved in applying for a service mark?
USPTO Expert2 (Feb 22, 2006 2:46:28 PM)
Applying for a service mark follows the same procedure as applying for a trademark.
TomR (Feb 22, 2006 2:46:42 PM)
What is the likelihood that electronic application filing by pdf will be available by May 2006?
USPTO Expert (Feb 22, 2006 2:48:47 PM)
March 17th, EFS-Web will be available to everyone on the USPTO website. You will be able to submit PDF files with this system. Go to http://www.uspto.gov/ebc/efs_help.html
jrinner (Feb 22, 2006 2:49:24 PM)
Where would I find a list of the US and International patent classifications?
USPTO Expert (Feb 22, 2006 2:49:40 PM)
You can go to http://www.uspto.gov/web/patents/classification/ for classification help.
Johnny EDITED
Where do I mail my patent application?
USPTO Expert (Feb 22, 2006 2:51:14 PM)
Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
Feuersteinfaust (Feb 22, 2006 2:51:32 PM)
Can you file patent applications using EFS-WEB or EFS on federal Holidays? Can you submit one using Fax on a Federal Holiday? For electronic filing (EFS-WEB) and Fax filing is the submission based on EST or on the time zone of the sender (i.e., when is midnight)?
USPTO Expert2 (Feb 22, 2006 2:52:00 PM) EDITED ANSWER
Yes you can file using EFS-WEB at any time including federal holidays - the filing date is based on East Coast time. You cannot file a new patent application by fax. See the MPEP for more information on these filing rules. See 37 CFR 1.6, http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf
FreeSpirit (Feb 22, 2006 2:52:08 PM)
Will the EFS-Web be secure, or is "snail mail" submissions still considered to be the most secure method?
USPTO Expert (Feb 22, 2006 2:52:44 PM)
EFS uses a secure transmission protocol.
invent1 (Feb 22, 2006 2:54:21 PM)
how long after filing a US patent do you have to file foreign patent?
USPTO Expert (Feb 22, 2006 2:54:36 PM)
Usually 12 months after the filing of your US application, but it depends on the country you are seeking protection in.
Xone (Feb 22, 2006 2:55:08 PM)
Is there a list at USPTO of the complaints made by individuals of the invention promotion companies and if so how can we view it???
USPTO Expert (Feb 22, 2006 2:55:31 PM)
For a listing of published complaints, please go to http://www.uspto.gov/web/offices/com/iip/complaints.htm
USPTO Expert (Feb 22, 2006 2:57:12 PM)
Paul we can't post your question but please contact the EBC with your questions regarding Private PAIR at 866-217-9197.
James (Feb 22, 2006 2:57:15 PM)
My Provisional Pending Patent 's deadline is April 3...Can I apply for an extension on this patent pending or do I need to apply for a Patent before this date??? Thank You
USPTO Expert (Feb 22, 2006 2:59:10 PM)
Provisional applications are not extendable. If you want the benefit of your earlier filing date you must file your non-provisional application within 1 year of the filing of the provisional application. See http://www.uspto.gov/web/offices/pac/provapp.htm
Blexcroid (Feb 22, 2006 2:59:18 PM)
I have been trying to look at the status of my patent application. I understand that the app number is the year plus 7 digits, but the database asks for an 8-digit number. What number is it asking for?
USPTO Expert (Feb 22, 2006 3:00:42 PM)
The number that starts with the year is the publication number not the application number. Application numbers start with a 2 digit series code, i.e. 11/xxxxxx.
johno (Feb 22, 2006 3:00:51 PM)
Does the EFS-WEB pdf file need to be text-searchable?
USPTO Expert2 (Feb 22, 2006 3:00:56 PM) EDITED ANSWER
Check the EFS-Web help and tutorial site for the pdf creation tips. http://www.uspto.gov/ebc/efs_help.html
YZ (Feb 22, 2006 3:01:00 PM)
Can a patent be denied for any other reason that finding a previous one that covers the same subject in the USPTO search?
USPTO Expert (Feb 22, 2006 3:02:05 PM)
Good questions, we will answer this in our transcript to be posted in a couple of weeks on the USPTO homepage.
Earl (Feb 22, 2006 3:02:51 PM)
You guys are really smart!
USPTO Expert (Feb 22, 2006 3:03:50 PM) EDITED ANSWER
Thanks Earl and thank you to everyone that joined the chat today. Please check our homepage in a couple of weeks for a posted transcript of today's questions. Again, for additional help you can contact our Inventors Assistance Center at 1-800-786-9199.
Additional questions added from the chat
Thomas EFS Web will likely be a target for hackers. Has it been tested for security?
USPTO Expert Yes, and procedures have been put in place to mitigate any suspicious activity.
Johno I searched EFS-WEB FAW, and did a Google search of USPTO site, but didn't find an answer to my question. PDF files are of 2 kinds: (a) test-searchable, (b) image-only which requires OCR to be searchable. Can I submit image-only PDF files to EFS-WEB? Thanks
USPTO Expert Image based PDF is fine. We OCR these images to do classification and security clearance on the documents
Ken If I file an opposition to another persons trademark, what will the trademark office ask of me after reviewing my opposition?
USPTO Expert The USPTO doesn't "ask" for anything - it's the parties that ask for evidence, exhibits, etc. from each other and these requests just go through the office during the opposition process.
Mspcon How can one find the expiration date for a specific patent?
USPTO Expert Patent term is usually 20 years from the earliest effective U.S. filing date subject to the payment of the maintenance fees.
Teachme Is it allowed for a law firm to have someone who is not a registered patent agent or attorney write a patent application or responses as long as a registered attorney or agent is managing them – or is this a violation of USPTO rules?
USPTO Expert The registered practitioner must actually review and approve the work of the unregistered individual before the papers are submitted to the office. In reviewing the work, the registered practitioner must conduct a reasonable inquiry as to each paper (each application, amendment, affidavit, declaration, petition, etc.). See 37 CFR 10.18(b)(2). A reasonable inquiry requires that each paper be read in its entirety, and the practitioner confirms that the claims and other legal contentions therein are warranted and not frivolous (see 10.18(b)(2)(ii)); and that the allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery (10.18(b)(2)(iii)); and denials of factual contentions are warranted on the evidence or if specifically identified, are reasonably based on lack of information.
Flyby Can a person file a patent without using an attorney?
USPTO Expert The answer to this question is below, I extracted it from one of our previous chats, http://www.uspto.gov/web/offices/com/iip/transcriptsa_e.htm#attorney
There are no requirements that you must use a registered patent attorney or agent. However the process of securing a patent can be complicated and the Office strongly suggests using the services of a registered patent attorney or agent. A listing is available at:
http://www.uspto.gov/web/offices/dcom/olia/oed/
roster/index.html
Bklyngrrl How do I figure out if an idea that I have has already been patented?
USPTO Expert The following answer can be found on our Inventors Resource page, http://www.uspto.gov/web/offices/com/iip/patents.htm#PatentableInvention.
FreeSpirit Can you please explain what the term “patent pending” means and what rights the inventor has to the product if the status is pending:
USPTO Expert The marking of an article as patented when it is not in fact patented is against the law and subjects the offender to a penalty. Some persons mark articles sold with the terms “Patent Applied For” or “Patent Pending.” These phrases have no legal effect, but only give information that an application for patent has been filed in the USPTO. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.
PatentReference.Com What is “patent insurance”?
USPTO Expert In theory, patent insurance is similar to any other kind of insurance, i.e. home, auto, etc. except it protects a patent holder against loss due to infringement of a patent. The choice as to whether one should seek patent insurance is strictly up to the patentee and should be carefully considered as with any other type of insurance purchases.
Gymus In my IDS, can I submit research article, abstract in lieu of entire articles?
USPTO Expert 37 CRF 1.56 requires you to submit information known to you which is material to patentability. If the entire article is material then you will need to submit the entire article. If only a portion is material, you may submit just the portion. See 37 CFR 1.98 (a)(2)(iv).
Cal I'm an individual filing a Provisional Patent under the guidance of a Patent Attorney – to save $. Upon mailing my application is there any follow up I should do to make sure it is accepted and without errors to ensure my Provisional Patent Application date goes on record? I don't want to later learn that errors resulted in my loss of a Provisional Patent Application date.
USPTO Expert If you provisional application does not meet the minimum filing requirements by law, the Office will notify you and allow you a set time to respond to the notice. If the application is complete upon filing you will received a filing receipt with bibliographic information. |
