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This is a transcript of the on-line chat held on Tuesday, December
7, 2004. 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.
Jimmy Neutron (Dec 7, 2004 1:29:01 PM)
This is a test message in preparation of the 2pm on line chat
USPTO Expert2 (Dec 7, 2004 1:31:18 PM)
This is a test reply.
USPTO Expert2 (Dec 7, 2004 1:56:46 PM)
Welcome to the Inventors On-Line Chat. Today's chat will follow the same
format as previous chats and will begin at 2:00.
USPTO Expert2 (Dec 7, 2004 2:02:47 PM)
We are receiving questions and will begin posting the questions and answer
promptly at 2:00
JEFF (Dec 7, 2004 2:06:52 PM)
I WILL GIVE A HYPOTHETICAL QUESTION. IF I HAVE DIFFERENT COLORED FLAGS
THAT I WANT TO HAVE THE WORD VICTORY ON ALL OF THEM - SAME WORD VICTORY
- BUT DIFFERENT IMAGES -- ONE IS TO HAVE A RUNNER CROSSING FINISH LINE,
ANOTHER AN EAGLE SOARING, ETC. DO I HAVE TO INDIVIDUALLY TRADEMARK EACH
FLAG?
USPTO Expert (Dec 7, 2004 2:06:54 PM)
You have to file a separate trademark application for each image. You
could file one application for the word alone, but each image by itself
or each image with the word would have to be the subject of separate trademark
applications.
Guest (Dec 7, 2004 2:07:24 PM)
New idea and don't know where to start?
Guest (Dec 7, 2004 2:08:03 PM)
Not sure how this site works. Am I talking with reprs. working in the
patent office.
Jimmy Neutron (Dec 7, 2004 2:08:37 PM)
New idea and don’t know where to start?
USPTO Expert3 (Dec 7, 2004 2:09:15 PM)
The Inventors Assistance Center 1-800-786-9199 can send you basic information
on filing patent applications. Our website http://www.uspto.gov/
also has information on the patent process. Patent Depository Libraries
(locations on our website) can also provide you with information. In addition,
local independent inventor organizations are a good resource to help you
get started with patenting and promoting your invention.
patentor (Dec 7, 2004 2:09:56 PM)
Need specific uspto.gov address to download Provisional Patent Application
forms.
USPTO Expert2 (Dec 7, 2004 2:12:45 PM)
There are no required forms for provisional applications, however you
can download the provisional application cover sheet at:
http://www.uspto.gov/forms/index.html
Additional information about provisional applications is available at:
http://www.uspto.gov/web/offices/pac/provapp.htm
Dejah (Dec 7, 2004 2:14:13 PM)
We are first-time inventors. My husband has developed tools that do certain
mechanical jobs far better than existing tools, but we're not sure what
type of patent application we should submit. With the applications, are
digital photos OK or do we have to make a drawing of some kind?
USPTO Expert3 (Dec 7, 2004 2:15:13 PM) (Edited answer)
You are probably interested in filing a utility (non-provisional) application.
When filing a non-provisional application it is very important to completely
describe your invention. Digital photographs are not accepted by the Office.
You will need a black and white drawing of the tools. Color photographs
may be accepted if accompanied by the appropriate petition and fee. See
37 CFR 1.84. http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf
If you want to protect solely what the tools look like (the appearance)
you may be interested in filing a design application.
samy (Dec 7, 2004 2:15:16 PM)
Do I need an attorney
USPTO Expert2 (Dec 7, 2004 2:18:43 PM)
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
JEFF (Dec 7, 2004 2:18:56 PM)
CAN ANYONE TRADEMARK SOMETHING I HAVE ALREADY BEGUN AND AM USING IN COMMERCE?
CAN'T I OPPOSE THEM SO THEY CANNOT TAKE AWAY MY BUSINESS?
USPTO Expert (Dec 7, 2004 2:18:58 PM)
Someone can apply to register a trademark that you may already be using
particularly if they have no knowledge of your use. You may oppose the
registration of that mark after it publishes for purposes of opposition.
pb (Dec 7, 2004 2:19:31 PM) (edited question)
What is the difference between a provisional and unprovisional (non-provisional)
patent application?
USPTO Expert2 (Dec 7, 2004 2:21:01 PM)
A provisional application is generally filed for the purpose of establishing
an earlier date of invention. Provisional applications are not examined,
do not provide any protection and become abandoned one-year after filing.
A non-provisional application is examined by the USPTO and may issue as
a patent.
bemige (Dec 7, 2004 2:23:46 PM)
How do I approach a patent search to see if anything similar has been
done
USPTO Expert2 (Dec 7, 2004 2:24:08 PM)
There are 84 Patent and Trademark Depository Libraries (PTDLs) located
nationwide and Puerto Rico. PTDLs have qualified and experienced staff
who can assist you with patent and trademark databases and search tools
and finding information on related topics such as starting a business,
product licensing, market research, finding a patent attorney or agent,
etc. Visit the USPTO website for a list of PTDLs with links to library
web sites and telephone numbers. List of PTDL Libraries: http://www.uspto.gov/go/ptdl/
Jill (Dec 7, 2004 2:25:01 PM)
Once an attorney files a patent for a new cosmetic product, how long does
the U.S. patent protect me?
USPTO Expert3 (Dec 7, 2004 2:25:04 PM) (edited answer)
Once your application is filed you have limited protection and patent
pending rights. The term of a granted non-provisional utility patent is
twenty years from the earliest effective U.S. filing date for which benefit
is claimed under 35 U.S.C. 120, 121 or 365(c). In order to obtain full
protection for the entire patent term, maintenance fees are periodically
due to the Office.
JoeInventor (Dec 7, 2004 2:25:55 PM)
How do I see if a mark has been trademarked? Also, if I file and the mark
is refused, do I get my fees back?
USPTO Expert (Dec 7, 2004 2:25:56 PM)
You can search the USPTO database of registered and pending marks to find
out if someone has already registered or has applied to register a mark
in the USPTO. If you file a trademark application and the USPTO examining
attorney assigned to your application finds a previously registered or
applied for mark that would cause a likelihood of confusion and you cannot
overcome that refusal (or any other refusal that might be raised) to register
your mark, your fees are not refunded.
Jimmy Neutron (Dec 7, 2004 2:27:22 PM)
I believe that someone has taken my ideas from my research paper and filed
a patent application. What can I do?
USPTO Expert2 (Dec 7, 2004 2:32:49 PM)
There are several options available each with certain requirements and
risks. We cannot give you an exact answer since the options are extremely
fact dependent. Here are three of the more common situations that we see:
You may file a protest under 37 CFR 1.291. This situation is highly complex
and it is recommended that you seek the advice of a registered patent
attorney/agent who can fully explore the facts. If that patent application
has been published you may submit your research paper to the USPTO for
consideration 37 CFR 1.99. You must file your research paper within two
months of the date of publication of that patent application and comply
with the remaining requirements of 37 CFR1.99. Again, this process is
complex and it is recommended that you seek the advice of a retgistered
patent attorney or agent.
http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf
Or alternatively, you may apply for a patent on the invention yourself.
If the claimed inventions are the same, the USPTO may initiate an interference
proceeding to determine the first inventor.
Sally (Dec 7, 2004 2:32:50 PM)
If I don't see an answer come up to my question right under it does that
mean that it won't be answered?
USPTO Expert3 (Dec 7, 2004 2:32:54 PM)
We are receiving hundreds more questions than you see. We are selecting
the questions that are most informative.
vanslagle (Dec 7, 2004 2:33:23 PM)
We've had a prototype produced, but the means by which it was built is
different than how it would actually manufactured, and we don't quite
know all of the details about the process and materials that would be
used in manufacturing. So, should we go ahead and apply for the patent
now, or wait until we have all of our information?
USPTO Expert2 (Dec 7, 2004 2:35:54 PM)
If you have an article that you believe is patentable, you should file
an application to protect the article itself. This is true even if you
do not know how to manufacture the invention. Once you have worked out
how to manufacture the invention, you may also be able to file an application
for the method of manufacturing the article.
Subirac (Dec 7, 2004 2:35:56 PM)
My invention is application specific software. My understanding is that
I cannot patent the software itself, but I may patent its approach to
its application. If that is correct, then how specific must my patent/claims
be?
USPTO Expert3 (Dec 7, 2004 2:38:06 PM) (edited answer)
Software alone is not patentable. However, if claimed in combination with
computer readable media executable on a computer, patent protection may
be obtained. Essentially, the claim of the invention must be directed
to the application of a software product that is technically embodied
on a computer. For example, computer programs claimed as computer listings
per se, i.e., the descriptions or expressions of the programs, are not
physical "things," nor are they statutory processes, as they
are not "acts" being performed. Such claimed computer programs
do not define any structural and functional interrelationships between
the computer program and other claimed aspects of the invention which
permit the computer program's functionality to be realized. In contrast,
a claimed computer-readable medium encoded with a computer program defines
structural and functional interrelationships between the computer program
and the medium which permit the computer program's functionality to be
realized, and is thus statutory. Accordingly, it is important to distinguish
claims that define descriptive material per se from claims that define
statutory inventions. More information on Examination Guidelines for Computer-Related
Inventions is available on the USPTO website at: http://www.uspto.gov/web/offices/com/hearings/software/analysis/computer.html.
Jim (Dec 7, 2004 2:38:11 PM)
Is it possible to view (in English) Foreign patents (EU, Canadian, Japanese)
via the web?
USPTO Expert2 (Dec 7, 2004 2:42:17 PM)
Jim, many foreign patent offices and international patent authorities
have patent databases on the web. For example, the European Patent Office's
espacenet database has more than 45 million patent documents and patent
families. Many patent families have at least one document in English (US,
UK, WIPO, or Canadian). The Japan Patent Office's Industrial Property
Digital Library provides access to the Patent Abstracts of Japan (PAJ)
from 1976 to the present and Utility and Model Patent Gazettes from 1971
to the present, in addition to other databases and documents. You can
access espacenet at the EPO's web site at http://www.epo.org/.
The JPO web site is http://www.jpo.go.jp/.
Angel (Dec 7, 2004 2:40:58 PM)
Hello my name is Angel, from a foreign country and I have a question for
expert3. I would like to know if I want to get a trademark for my product
do I have to be an American?
USPTO Expert (Dec 7, 2004 2:41:32 PM)
No you don't have to be an American citizen to apply to register a trademark
in the US. Simply fill out the online trademark application form accurately
for your specific situation.
huggie (Dec 7, 2004 2:42:39 PM)
Is there a beginners kit that I can get to help start the process of my
idea?
USPTO Expert3 (Dec 7, 2004 2:42:41 PM)
The Inventor Assistance Center, 1-800-786-9199, can send you an information
packet to help you get started
exjoelise (Dec 7, 2004 2:45:35 PM)
How can I insure that my patent or trademark is protected internationally?
USPTO Expert2 (Dec 7, 2004 2:45:12 PM)
U.S. patents only protect your invention in the United States. To protect
your invention internationally you must file applications in each country
where you seek protection. The same goes for trademarks. International
filings can be quite complicated you may want to consult with a registered
patent attorney/agent.
Guest (Dec 7, 2004 2:46:09 PM)
Can you please explain how the USPTO determines if the goods and services
in a registered or pending trademarks are different from the goods and
services in my trademark application? I received a notice of publication
and my trademark was published, but now is being opposed, by a registered
trademark owner, but I am confused how they can oppose when the USPTO
stated this - The examining attorney has searched the Office records and
has found no similar registered or pending mark which would bar registration
under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.???
Sally (Dec 7, 2004 2:47:44 PM)
Can a company file for a patent or only a natural person(s)
USPTO Expert2 (Dec 7, 2004 2:50:05 PM) (edited answer)
Applications must be filed in the name of the inventor(s). The inventor(s)
must sign the oath or declaration for patent application. However, a company
may have the patent rights assigned to them. Once the inventor(s) has
assigned the rights to the company, the company may take action in the
patent application.
Guest (Dec 7, 2004 2:50:47 PM)
Guess my question is not important enough ..... recovering what was already
talked about comes first. Guess no one but me wanted to know about patent
assistance companies ... thank you anyways
WidgetGuru (Dec 7, 2004 2:52:26 PM)
Do you have any information on invention assistance companies/firms?
USPTO Expert3 (Dec 7, 2004 2:50:50 PM)
The Office cannot comment on particular patent assistance companies. However,
general information on avoiding being scammed is available on our website:
http://www.uspto.gov/web/offices/com/iip/data.htm
- Complaints See brochure entitled "Are You the Target?"
Blue (Dec 7, 2004 2:52:49 PM)
Can I apply for a provisional patent on-line?
USPTO Expert2 (Dec 7, 2004 2:53:28 PM)
Yes, for additional information go to http://www.uspto.gov/ebc/efs/index.html
kccreator (Dec 7, 2004 2:53:51 PM)
I accidentally logged off do I have to resubmit my questions.
USPTO Expert3 (Dec 7, 2004 2:55:20 PM)
Yes, please resubmit your question.
daver (Dec 7, 2004 2:55:33 PM)
see.... I was "THE TARGET"... they GOT me...I need a little
simple advice, because I don't have $500 per hour for a fancy attorney...the
venture capitalist has wrecked my existing business...
USPTO Expert2 (Dec 7, 2004 2:56:45 PM) (edited answer)
Daver - You should contact the Inventors Assistance Program at 1-866-767-3848
to discuss your situation further and receive some guidance.
doctor (Dec 7, 2004 2:56:49 PM)
I filed PCT application on Nov 20, 2003 (with priority date May 9, 2003).
I received International Search report on November 12, 2004, and have
filed case II (demand) for written report. My international search authority
is US. How I go about protecting my intellectual rights in designated
countries? What’s the time limit? Is attorney is mandatory? Kindly
advise fees etc. too. I have 66 designated countries/regions in my PCT.
USPTO Expert3 (Dec 7, 2004 2:57:06 PM) (edited answer)
Protecting your intellectual property rights in the designated/elected
offices is achieved by obtaining patents in the national/regional offices.
Since you have already filed an international application under the PCT,
the next step is to enter the national/regional phase in the designated/elected
offices where you desire patent protection. Assuming that your Demand
was filed within 19 months of your priority date, you will have at least
30 months to enter the national phase in each office. Some offices will
set a later deadline but a full list of national/regional phase entry
deadlines can be obtained from the following web address: http://www.wipo.int/pct/en/texts/pdf/time_limits.pdf
Regarding specifics of national/regional phase entry, such as representation
requirements, fees, etc., each national/regional office prescribes specific
requirements according to their own laws. The PCT Applicant's Guide, available
at the following web address, provides specific instructions/requirements
for entering the national/regional phase in each office:
http://www.wipo.int/pct/guide/en/index.html
Further information can be obtained from the main PCT page on the web
site of the World Intellectual Property Organization (WIPO): http://www.wipo.int/pct/en/
dingle (Dec 7, 2004 2:57:37 PM)
Will we all get a script of this dialogue after we sign off?
USPTO Expert3 (Dec 7, 2004 2:58:06 PM)
The transcript will be posted on our website: http://www.uspto.gov/
within a couple of weeks.
kccreator (Dec 7, 2004 2:58:50 PM)
Can you please advise what an examining USPTO trademark attorney compares/examines
when reviewing pending and registered trademarks to see if your trademark
will be allowed to be published.
USPTO Expert (Dec 7, 2004 2:58:24 PM)
This combines your original question and your present one. The determination
of likelihood of confusion is quite subjective. It is possible that the
USPTO attorney may have determined that there are no registered marks
or pending applications that would cause a problem but the owner of a
registered mark or pending application may feel differently. For example,
the registrant or prior-filed applicant may have evidence that is not
available to the examining attorney that would support a likelihood of
confusion. Such evidence can only be brought forth by means of an opposition.
USPTO Expert (Dec 7, 2004 2:59:01 PM)
See above.
Sally (Dec 7, 2004 2:59:16 PM)
Where do I find the definition of "small entity" for purposes
of determining the fees?
USPTO Expert2 (Dec 7, 2004 2:59:28 PM)
If you are an independent inventor, small-business concern or a non-profit
organization you are entitled reduced fees usually 50%. For a definition
of small entity, see 37 CFR 1.27. http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf
JPTL (Dec 7, 2004 3:01:19 PM)
Are there other ways to get answers to our questions in the event that
they are not selected today?
USPTO Expert3 (Dec 7, 2004 3:01:23 PM)
Unfortunately, we cannot answer everyone's questions during this chat.
However, you may contact the Inventor Assistance Center at 1-800-786-9199
for help with your specific questions.
daver (Dec 7, 2004 3:02:04 PM)
Essentially I asked, how does an inventor set aside an assignment, rendered
under false promises since reneged?
USPTO Expert3 (Dec 7, 2004 3:02:55 PM)
The USPTO merely records patent assignments. We make no determination
as to the validity of an assignment.
huggie (Dec 7, 2004 3:03:22 PM)
can more than 1(owner) name be issued on a patent?
USPTO Expert2 (Dec 7, 2004 3:03:51 PM)
Yes, a patent is personal property and may be sold to others or mortgaged;
it may be bequeathed by a will, and it may pass to the heirs of a deceased
patentee. The patent law provides for the transfer or sale of a patent,
or of an application for patent, by an instrument in writing. Such an
instrument is referred to as an assignment and may transfer the entire
interest in the patent. The assignee, when the patent is assigned to him
or her, becomes the owner of the patent and has the same rights that the
original patentee had. See http://www.uspto.gov/web/offices/pac/doc/general/assign.htm
dingle (Dec 7, 2004 3:04:10 PM)
Rather than call the Inventor Assistance Center, can I download the Packet
to get started? If yes, what is the address?
USPTO Expert2 (Dec 7, 2004 3:05:05 PM)
Yes, you can go to the Inventors Resource page at http://www.uspto.gov/web/offices/com/iip/index.htm
and view a number of our brochures on-line.
dingle (Dec 7, 2004 3:06:00 PM)
If the USPTO merely records patent assignments, who does the research
to make sure there is not an existing similar invention? I thought that
was part of the search, fee, application, etc.???????
USPTO Expert3 (Dec 7, 2004 3:06:03 PM)
You are confusing patent assignments with granting of patents. Assignments
merely record who has ownership of the invention.
buzzo (Dec 7, 2004 3:06:39 PM)
Do you plan to do this again in the near future ??
USPTO Expert2 (Dec 7, 2004 3:07:35 PM)
Yes, we will be conducting our next chat in January, stay tuned to our
home page and for a transcript of previous chats go to http://www.uspto.gov/web/offices/com/iip/onlineiip.htm
auntiem (Dec 7, 2004 3:08:01 PM)
Hello. If I have an idea that I would like to purse a patent for, what
is the best way to go about doing patent research?
USPTO Expert2 (Dec 7, 2004 3:09:24 PM)
You can go to our web site at http://www.uspto.gov/
and conduct a search or you can go to one of 84 Patent and Trademark Depository
Libraries (PTDLs) located nationwide and Puerto Rico. PTDLs have qualified
and experienced staff who can assist you with patent and trademark databases
and search tools and finding information on related topics such as starting
a business, product licensing, market research, finding a patent attorney
or agent, etc. Visit the USPTO website for a list of PTDLs with links
to library web sites and telephone numbers.
http://www.uspto.gov/go/ptdl/
International Inventor (Dec 7, 2004 3:09:29 PM)
My colleague and I are neither living in the US nor US citizens. We are
interested in submitting a provisional patent for a method and apparatus.
We already wrote the patent + drawings. Are we allowed to submit the patent?
Do we require an address in the US? What other special requirements exist
from Non US citizens?
USPTO Expert3 (Dec 7, 2004 3:09:31 PM)
You can file for the patent application without a US address. There are
no special requirements for non-US citizens.
USPTO Expert2 (Dec 7, 2004 3:12:33 PM)
Thank you very much for participating. For those who wondered why their
questions did not post, it is because we receive hundreds of questions
and only the questions that are answered get posted.
USPTO Expert2 (Dec 7, 2004 3:14:10 PM)
Look for the next chat in January, good-bye to all and Happy Holidays,
may your intellectual property be protected!
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