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This is a transcript of the on-line chat held on Thursday, February
24, 2005. 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 Expert3 (Feb 24, 2005 2:05:57 PM)
Welcome to the Inventors On-Line chat, we will begin promptly at 2:00.
Please note, that questions posted before 2:00 pm may not be addressed
when the chat goes live. By the way the Federal Government has issued
an early dismissal, but we will be here throughout the duration of the
chat, so keep those questions coming.
tms (Feb 24, 2005 2:11:52 PM)
Question regarding TMs. I've search via your site and come across an existing
application for the same TM name. My question is at what point is the
application cinsidered abandon? The reason is based on the web site the
last corrospondence is 4/15/2004 and the trademark was filed 3/15/2004.
Can I contact the TM attorney to get further info.?
USPTO Expert (Feb 24, 2005 2:12:19 PM)
A trademark application is considered abandoned when there is no response
to an office action within the statutory six-month response period. However,
the application is not noted as abandoned for approximately 2 months following
the expiration of the response period. This is done to allow a response
that was filed on the last day of the response period time to be associated
with the file. It appears that this application should be noted as abandoned
but until that is posted as the official status you cannot assume that
is correct. You may check the status of this application on the TARR system
at the USPTO website. Since you are not the applicant in this application
you may not contact the Examining Attorney assigned to the application
for further information.
twojays (Feb 24, 2005 2:12:30 PM)
What are the pros and cons of a provisional vs, non-provisional patent
and what are the differences?
USPTO Expert3 (Feb 24, 2005 2:12:34 PM) (edited answer)
A provisional application cannot become a patent and it will automatically
be abandoned 12 months after its filing date. If you filed a provisional
application and you want a patent, you will have to file a non-provisional
application within 12 months from the filing date of the provisional application
referencing the provisional application. A non-provisional application
can become a patent and is the mechanism to provide actual patent protection.
See http://www.uspto.gov/web/offices/pac/provapp.htm
for additional information about provisional application and http://www.uspto.gov/web/offices/pac/utility/utility.htm
for additional information about utility applications.
twojays (Feb 24, 2005 2:13:06 PM)
I do a search on the uspto website and 'Page not found" comes up?
USPTO Expert3 (Feb 24, 2005 2:13:49 PM)
It is likely that the browser has "timed out", just resubmit
the search query when the network is not as busy.
Nick Leggett (Feb 24, 2005 2:13:54 PM)
Is the USPTO considering methods to help independent inventors to enforce
their patents in court? It is difficult for most independent inventors
to handle the financial and legal requirements for patent cases . Thank
you for your attention. Nick Leggett
USPTO Expert2 (Feb 24, 2005 2:13:57 PM) (edited answer)
While we sympathize with your concerns, the USPTO cannot get involved
in ligitation strategy as this would be a conflict of interest. Once a
patent issues, the USPTO can no longer be involved unless a reissue application
is filed or a reexamination proceeding is instituted. Further the rights
you obtain as a patent owner are your rights and your responsibility to
enforce. Independent inventor groups may be able to provide help and guidance
in the area of enforcement.
bucko (Feb 24, 2005 2:17:00 PM)
What is the least expensive way to conduct a pentability search?
USPTO Expert3 (Feb 24, 2005 2:17:03 PM)
Do the search yourself. 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,
prodcut licensing, market research, finding a patent attorney or agent,
etc. Visit the USPTO web site for a list of PTDLs with links to library
web sites and telephone numbers. List of PTDL libraries is http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html
Guest (Feb 24, 2005 2:17:43 PM)
Hi, Have a start up company for skin care products. I know to get my slogan
trademark. Is there anything else i should do?
USPTO Expert (Feb 24, 2005 2:18:51 PM)
Registering your slogan as a trademark will protect that slogan from use
by others of a similar slogan for similar or related goods - that's a
good start. Other start-up issues are business or legal decisions or you
must make and the USPTO cannot assist in that area.
James (Feb 24, 2005 2:19:21 PM)
What can we do as independent inventors to improve the time between issue
fee payment and patent number issue and publication? Is there an expedited
request and fee available for this? Thank you.
USPTO Expert2 (Feb 24, 2005 2:19:24 PM) (edited answer)
Unfortunately, there is nothing you can do other than pay your issue fee
in a timely manner. Publication depends on many factors within the publishing
contractor's control. There is no process available to expedite publication.
kazza (Feb 24, 2005 2:23:12 PM)
my question is that my father and I have a pop up trailer that we want
to apply for a patent in Australia as well in US. Do we have to link the
2 applications linked in some way? He has retired in Australia and has
had the application prepared by an attorney over there.
USPTO Expert2 (Feb 24, 2005 2:23:16 PM) (edited answer)
If you have a foreign application you can claim priority to that foreign
application in the U.S. provided that the foreign application was not
filed more than one year before the U.S. filing date and all the requirements
of 35 U.S.C.119(a) – (d) are satisfied. Priority should be claimed
at the time of filing the U.S. application; however, you do not have to
claim priority if you do not choose to do so.
halberg (Feb 24, 2005 2:24:39 PM)
Does the USPTO do any foreign patent search as part of the utility patent
issue process?
USPTO Expert2 (Feb 24, 2005 2:24:41 PM)
Yes, we search all appropriate areas including foreign patents and publications.
tms (Feb 24, 2005 2:26:34 PM)
So if the TM applicaton is offically abandon 8 months after last corrospondence
than I could file an application and not be refused?
USPTO Expert (Feb 24, 2005 2:26:50 PM)
That’s much too broad a statement to say “yes” to. There
are many factors that go into allowing or refusing registration of a mark.
It is also possible for an abandoned application to be revived. You can
submit your application at any time but, of course, you take the chance
of refusal. If your application is refused because this prior-filed application
was revived and the Examining Attorney finds there is a likelihood of
confusion between it and your application, you will be refused registration
until prosecution of the prior-filed application is complete.
Randy (Feb 24, 2005 2:26:55 PM)
I've had a copyright registered at your copyright office since 1997 for
a board game I have invented. It is finally coming to market this year.
Do I need a patent also on the product? Even though the product is being
sold with my
USPTO Expert3 (Feb 24, 2005 2:27:00 PM)
You should check with a patent attorney/agent since you filed for a copyright
in 1997 you may be subject to a statutory bar due to possible disclosure
of your product.
Harry (Feb 24, 2005 2:29:14 PM)
Does USPTO provide any special discounts for student inventors
USPTO Expert2 (Feb 24, 2005 2:29:15 PM)
Student inventors would most likely qualify for small entity status and
be eligible for reduced fees. Our website http://www.uspto.gov/
details the process for obtaining small entity status.
littleyiu (Feb 24, 2005 2:29:44 PM)
I checked the File History of my application using private PAIR and found
the remark "Receipt into Pub" on 2/23/2005.This remark was done
after " Workflow -Printer Rush request-finished". The issue
fee was paid on Sep. 2004. Could you explain the meaning of " Receipt
into Pub "? Is this FMF? Also, How soon the allowed appication will
be issed?
USPTO Expert3 (Feb 24, 2005 2:30:11 PM)
You should contact customer service in the Office of Publication at 703.308.6789/1.888.786.0101
or E-mail: Pubscustomerservice@USPTO.GOV.
Jessica (Feb 24, 2005 2:32:11 PM)
What is the cost of the issue fee?
USPTO Expert3 (Feb 24, 2005 2:32:37 PM)
Issue fees can be found on our fee schedule located on the web site at
http://www.uspto.gov/main/howtofees.htm - patapp
Individual Inv hsntsc@hotmail.c (Feb 24, 2005 2:32:58
PM)
Question 2: What is the easiest and simplest way for individual inventor
to write his own inventor application personally ? with a minimum required
info and contect and without any further and optional infomration?
USPTO Expert3 (Feb 24, 2005 2:33:49 PM)
You should search the area of your invention and use a patent as your
guide. If you see a particularly well written patent you should use this
as the basis for writing your application. Remember, the claims are the
most important thing in your application. Since they define your patent
protection.
Jimmy Newtron (Feb 24, 2005 2:39:26 PM)
What is the point of getting a Patent?
USPTO Expert2 (Feb 24, 2005 2:39:26 PM) (edited answer)
Patents grant a right to exclude others from making, using, offering for
sale, or selling the patented invention. Often the mere fact that a product
is patented will prevent others from copying in order to avoid the possibility
of litigation. Patents also provide a mechanism to allow inventors to
license and sell their inventions. The courts are the mechanism for enforcing
patent rights so lawyers necessarily are involved.
Jimmy Newtron (Feb 24, 2005 2:40:55 PM)
I have invented a fashion accessory that uses an integrated circuit. Should
file for a utility patent or a design patent?
USPTO Expert3 (Feb 24, 2005 2:41:22 PM)
The accessories' ornamental design may be protected by a design patent
and it's function may be protectable by a utility patent.
Craig327 (Feb 24, 2005 2:42:06 PM)
I have an idea for a new home product. Do I have to manufacture a working
model before I am issued a patent?
USPTO Expert2 (Feb 24, 2005 2:42:10 PM)
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.
Harry (Feb 24, 2005 2:45:30 PM)
Does US patents are protected Internationally
USPTO Expert2 (Feb 24, 2005 2:46:37 PM) (edited answer)
No, U.S. Patent only give you the right to keep others from making, using,
offering for sale, or selling the invention in the United States.
yunsong (Feb 24, 2005 2:46:58 PM)
What are the common mistakes the independent inventors intend to make
when they file a patent application without using patent attorney/agent?
USPTO Expert (Feb 24, 2005 2:48:30 PM) (edited answer)
First, the most common mistake is not doing your homework by understanding
what is needed in an application. Our web site, http://www.uspto.gov/
has a wealth of information. Second, the claims are usually written as
what the invention does, how it works or what it is intended to do rather
than how it is made. It is important to clearly define what the invention
is. Finally, the written descriptions that most often cause trouble are
those that don't clearly describe their invention. You can contact our
Inventors Assistance Center at 1-800-786-9199 for additional information.
Guest (Feb 24, 2005 2:48:34 PM)
Hi how can I find out if there is another product like mine already patented
USPTO Expert2 (Feb 24, 2005 2:50:01 PM)
You want to search for similar products. A good place to start is a patent
and trademark depository library (PTDL). Librarians at PTDL's can assist
you in searching patents and patent publications. A list of PTDL's can
be obtained from our website http://www.uspto.gov
rabbit (Feb 24, 2005 2:52:41 PM)
I got ahold of a business and submitted my idea to them since then they
have call to want a large amount of money but I have not sent them anything
I since have done some research on your web site and found they have 7
complaints against them.I have sent for information from you to do my
own patent,Should I tell them I want my paper work back or do they have
to send them back to me I don't want to say anything to them untill I
get my patent submitted.Thanks Rabbit
USPTO Expert3 (Feb 24, 2005 2:53:40 PM)
You should contact the Inventors Assistance Program at 1-866-767-3848
to discuss your concerns with the invention promotion company.
Mammy (Feb 24, 2005 2:54:07 PM)
Can you take pictures of a prototype to use as your art in the actual
patent, and not use drawings?
NJS (Feb 24, 2005 2:55:18 PM)
What is a ballpark estimate for filing a patent
USPTO Expert2 (Feb 24, 2005 2:55:40 PM)
NJS - Fees charged by the Office are posted on our website http://www.uspto.gov/web/offices/ac/qs/ope/fee2005feb01.htm
Attorney fees are set by attorneys.
USPTO Expert3 (Feb 24, 2005 2:55:44 PM) (edited answer)
Mammy - Photographs are not ordinarily permitted in utility and design
patent applications. The USPTO will accept photographs in utility and
design patent applications if photographs are the only practicable medium
for illustrating the claimed invention. See 37 CFR 1.84(b) for additional
information regarding photographs.
tms (Feb 24, 2005 2:56:08 PM)
can the same TM name be used by seperate companys in differenct areas
of business and will the TM office approve the application?
USPTO Expert (Feb 24, 2005 2:56:18 PM)
Again, too broad to simply say “yes.” The standard for finding
likelihood of confusion is a comparison of the marks and a comparison
of the goods or services provided under that mark. The closer either one
of those elements are, the more possible is a finding of likelihood of
confusion. Thus, it is possible for somewhat similar marks to be registered
for differing goods or services. Remember, though, a third party can oppose
the registration of a mark even if the Examining Attorney has allowed
the mark to publish for opposition.
USPTO Expert3 (Feb 24, 2005 2:57:42 PM)
Please note, if you are not seeing your question, understand we can only
post a limited amount of questions and answers.
Michele (Feb 24, 2005 2:58:39 PM)
Is it necessary to go to a depository for patent research or does an online
search at the uspto website have the same info?
USPTO Expert2 (Feb 24, 2005 2:59:29 PM) (edited answer)
It's not necessary to go to a PTDL. Our website has searchable copies
of U.S. patents and patent application publications. However, PTDL's can
offer search assistance and other resources.
Bill Schneider (Feb 24, 2005 2:59:33 PM)
FYI: the Federal government announced a 2 hour early dismissal for Washington
DC area employees due to the snow storm. I will have to leave in my vanpool
at 3pm so I can't continue this conversation.
USPTO Expert3 (Feb 24, 2005 2:59:35 PM)
Thanks Bill, our session is over at 3pm and we will be departing promptly.
Harry (Feb 24, 2005 3:00:27 PM)
Whom to contact for unanswered questions ?
USPTO Expert3 (Feb 24, 2005 3:01:11 PM)
You can contact the Inventors Assistance Center at 1-800-786-9199 and
also review our previous on-line chat, your question may already have
been answered. http://www.uspto.gov/web/offices/com/iip/transcripts.htm
magna (Feb 24, 2005 3:03:58 PM)
How can I go about pursuing a patent on a non- useful novelty item?
USPTO Expert3 (Feb 24, 2005 3:04:33 PM)
To receive a patent an invention must be useful, novel and non-obvious.
Mary Ann (Feb 24, 2005 3:05:23 PM)
When filing for a patent, where do you find the proper classifications?
USPTO Expert2 (Feb 24, 2005 3:06:06 PM)
The Patent Office will determine the proper classification. If you are
e-filing, there is a place for you to suggest a classification, but this
portion can be left blank.
Michele (Feb 24, 2005 3:06:14 PM)
When fighting an opposition to a TM application, should you have an independent
company perform a survey to show there is no likelihood of confusion?
Is it OK to conduct a survey yourself? Is a survey necessary at all?
USPTO Expert (Feb 24, 2005 3:06:21 PM)
Whether or not to have a survey done is a huge legal question with many
ramifications. It’s a question that you should discuss with a trademark
attorney. The USPTO cannot provide advice on this issue.
Invent (Feb 24, 2005 3:06:46 PM)
Can you protect the text and symbols on an LCD display via a copyright?
USPTO Expert3 (Feb 24, 2005 3:07:15 PM)
Copyrights fall under the Library of Congress, you can contact them at
202-707-3000.
beachgirllookingforaball (Feb 24, 2005 3:09:29 PM)
what do you mean by non-obvious
USPTO Expert3 (edited answer)
Obviousness is covered by 35 U.S.C 103. Under this statute, a patent may
not be obtained if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains.
In a rejection under this statute, it is necessary to modify a single
reference or to combine it with one or more other references. The term
"obvious" applies to this modification/combination. If the modification/combination
is obvious, then the rejection is proper.
To determine if a modification/combination is obvious, three basic criteria
must be met.
First, there must be some suggestion or motivation, either in the references
themselves or in the knowledge generally available to one of ordinary
skill in the art, to modify the reference or to combine reference teachings.
Second, there must be a reasonable expectation of success. Finally, the
prior art reference (or references when combined) must teach or suggest
all the claim limitations. See MPEP 2142.
alisha (Feb 24, 2005 3:10:35 PM)
Is there an organization that we could call to ask questions about filing
a trademark application?
USPTO Expert2 (Feb 24, 2005 3:10:59 PM)
Trademark Assistance Center can help. Phone 703-308-9000.
eddie (Feb 24, 2005 3:11:05 PM)
Can Copy righted names be registered for Trade Mark?
USPTO Expert (Feb 24, 2005 3:11:09 PM) (edited answer)
Yes they can, provided they meet all of the requirements of the Trademark
Act.
OCG (Feb 24, 2005 3:11:47 PM)
Dear Experts, Thank you for your time. I have a number of published patents.
I would like to refer to one or more of them in new applications to the
USPTO. What is the method to refer back ? Also, does the USPTO refer or
recommend prototype services?
USPTO Expert3 (edited answer)
I am assuming that you are referring to a U.S. patent in your question
and not a foreign patent. To answer your first question, I will cover
the situations when a prior U.S. patent may be cited in a later filed
application. There are situations when a prior patent may be cited in
an application: 1) as background information, 2) to incorporate by reference
the subject matter of that prior application or patent.
1) The simplest situation is when you are using the published patent
to establish the background of the invention. This is sometimes called
the state of the art for the particular invention. There are two purposes
for doing this. You can either put the invention in context related to
other inventions or to provide a framework for others to understand your
invention. When citing a published patent, all that must be done is to
list the patent number and the inventor's name in the "Background
Of The Invention" section of your application and describe the details
of that patent that you think are relevant.
2) An application may incorporate by reference the subject matter of
another patent or application. Incorporation by reference is a shorthand
way of saying that the disclosure of the earlier application or patent
is a part of the present application. Incorporation by reference is clearest
when you use the phrase "incorporation by reference" when you
first mention the application or patent that you want to incorporate by
reference into your application. See 37 CFR 1.57 and MPOEP 608.01(p) on
incorporation by reference.
If your “new applications” were filed in the USPTO during
the pendency of your “patents,” meaning that your “patents”
have not issued as patents at that time and these applications are pending
in the Office, your “new applications” may claim the benefit
of the filing dates of the prior applications under 35 U.S.C. 120 provided
5 requirements must be met. These requirements are set forth in MPEP 201.11.
Finally, in answer to your second question, the USPTO cannot recommend
the services of any business.
Guest (Feb 24, 2005 3:13:05 PM)
Can a new software idea/program be patented?
USPTO Expert3 (Feb 24, 2005 3:13:57 PM) (edited answer)
The answer to this question can be found in our January transcript and
it inserted below:
When software is claimed as part of the claimed invention, the applicant
does not need to specify the end user platform. There is an important
distinction between copyright protection on software and patent protection
for inventions that utilize software. Patent claims to a computer system
which includes executable software can be made. In addition, claims to
computer readable media are also statutory and eligible for patent protection.
For further information see Examination Guidelines for Computer-Related
Inventions which is available for download on the USPTO website http://www.uspto.gov/web/offices/pac/mpep/documents/2100.htm.
USPTO Expert3 (Feb 24, 2005 3:14:43 PM)
Good-bye and thanks to everyone that participated, look for our posted
transcript next week.
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