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This is a transcript of the on-line chat held on Thursday, March
31, 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 Expert2 (Mar 31, 2005 2:07:02 PM)
Welcome to the On-Line Chat. We will begin promptly at 2:00. Transcripts
from our previous chats are available at http://www.uspto.gov/web/offices/com/iip/onlineiip.htm.
You may want to review prior to the start of our chat.
Guest (Mar 31, 2005 2:13:53 PM)
Hi, Trademark question: do you have a similar class registration system
as they do in Europe? i.e. say I registered JAMES as the name of a drink
could somebody come and register it in another class as they can in Europe?
USPTO Expert3 (Mar 31, 2005 2:13:55 PM)
We use the Nice Classification system in the US as they do in Europe and
in many other countries in the world. However, classification does not
control one's right. The actual language of the goods or services in the
registration defines the parameters of the scope of protection of a registration.
Therefore, in the US, a similar mark could register in more than one class
or even in the same class if the goods or services are different enough
to avoid confusion in the marketplace.
red (Mar 31, 2005 2:14:19 PM)
what is the web site to get patent forms to file for a provisional patent
forms
USPTO Expert2 (Mar 31, 2005 2:14:21 PM)
The provisional application cover sheet is available on our web site at
http://www.uspto.gov/web/forms/index.html,
scroll down to PTO/SB/16.
Guest (Mar 31, 2005 2:16:00 PM)
if i am combining two current patented items and adding my ideas to them,to
come up with a new unique item,can i use drawings and descriptions from
their patents with my ideas for a new patent?
USPTO Expert (Mar 31, 2005 2:16:19 PM)
Yes. You can use drawings and descriptions of other inventions. You must
clearly identify the subject matter as the invention by another and label
the drawings "Prior Art".
KJ (Mar 31, 2005 2:17:15 PM)
What is the safest method for searching the patent database and can a
prospective inventor do it efficiently.
USPTO Expert2 (Mar 31, 2005 2:18:55 PM)
KJ - From the USPTO homepage, http://www.uspto.gov/,
click on "How to Search" on the top black and blue bar. On the
blue box for searching patents click on "How to search for patents
at a PTDL" to pull up the 7-Step strategy which can be done on-line
as well as at a PTDL.
Amar (Mar 31, 2005 2:19:24 PM)
Are there any current (or proposed future) options to file for patent
applications electronically?
USPTO Expert2 (Mar 31, 2005 2:20:45 PM)
Amar - You can currently file electronically. Please visit our web site,
at http://www.uspto.gov/ebc/efs/index.html
for details on how to file electronically.
apple (Mar 31, 2005 2:23:16 PM)
Which is the mail stop for sending the new non-provisional utility patent?
USPTO Expert2 (Mar 31, 2005 2:23:17 PM)
Our mailing addresses are located at http://www.uspto.gov/web/offices/com/sol/og/patboxs.htm
Gaddock (Mar 31, 2005 2:23:38 PM)
If I registered a Trademark for 'QWERTY' that sells 'qwerties'. And then
find somebody else has the Internet domain www.qwerty.com and is also
selling 'qwerties'. Can I stop them from using that Internet domain?
USPTO Expert3 (Mar 31, 2005 2:23:39 PM)
You may have some recourse against the later domain name user. You should
consult the Domain Name Resolution Policy. I'm sorry I don't have a link
for that but you should be able to find references for it on the web if
you do a comprehensive search on a good search engine.
Popcorn (Mar 31, 2005 2:25:06 PM)
Can a patent be filed jointly by two or more persons
USPTO Expert2 (Mar 31, 2005 2:25:25 PM) (EDITED ANSWER)
Popcorn- Yes, please see 37 CFR 1.45 for detailed information about joint
inventors, http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf
betty (Mar 31, 2005 2:26:20 PM)
under what circumstances would you file for a provisional patent vs. a
utility patent. (advantages) My product is sports apparel based.
USPTO Expert (Mar 31, 2005 2:27:18 PM)
A provisional application cannot become a patent and it will automatically
be abandoned 12 month 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.
Eric (Mar 31, 2005 2:28:12 PM)
I'Ve seen the fee's for application fee, search fee and examination fee,
what other fee's am I missing for a design thats one page in description
and design.
USPTO Expert3 (Mar 31, 2005 2:29:06 PM)
There are no other fees required to file a design application. An additional
fee will be required upon issue.
bobcat (Mar 31, 2005 2:30:33 PM)
What happens to a PPA after it has been abandoned?
USPTO Expert2 (Mar 31, 2005 2:31:00 PM)
Bobcat - The files are disposed of after one year from the filing date.
PeterK (Mar 31, 2005 2:32:29 PM)
Are there any restrictions from trademarking a product name that contains
Spanish words?
USPTO Expert3 (Mar 31, 2005 2:32:37 PM) (EDITED ANSWER))
Peter K - The same laws and rules apply to marks in languages other than
English. Other than those requirements, a non-English mark would have
to be translated for the record.
Guest (Mar 31, 2005 2:32:46 PM)
how long does it take to get a patent search done?
USPTO Expert2 (Mar 31, 2005 2:33:24 PM) (EDITED ANSWER)
Stacey – Unless a patent application is filed, the Office does not
conduct patent searches for the public. There are private search firms
which can provide this service (we do not regulate their fees). However,
you can conduct your own search via our web site or at a Patent and Trademark
Depository Library.
Jimmy Newtron (Mar 31, 2005 2:34:36 PM)
How long does a patent last?
USPTO Expert (Mar 31, 2005 2:34:38 PM) (EDITED ANSWER)
Utility patent protection is approximately 20 years from the filing date
of the application. Design patent protection is 14 years from the issue
date.
water (Mar 31, 2005 2:35:56 PM)
what is the design application fee?
USPTO Expert (Mar 31, 2005 2:37:00 PM) (EDITED ANSWER)
The basic fee for filing a design application by a large entity is $200;
small entity is $100.
Guest (Mar 31, 2005 2:37:30 PM)
What options do you have once you have recieved a final office action
- other than file a notice of appeal?
USPTO Expert (Mar 31, 2005 2:39:41 PM)
You may file a request for continued examination (RCE) under 37 CFR 1.114.
An RCE requires the payment of a fee and a submission, which may be an
amendment or arguments. You may also further amend your application or
request reconsideration, but the examiner may refuse to enter amendments
after final if they raise new issues which were not raised previously.
Guest (Mar 31, 2005 2:40:07 PM)
How do I know that my invention isn’t going to be stolen during
the application process for a patent? Can I trust an attorney? Can I apply
for a patent without an attorney? What are the risks when I do that?
USPTO Expert2 (Mar 31, 2005 2:41:26 PM) (EDITED ANSWER)
All patent applications that have not been published are kept in confidence
by USPTO personnel. An attorney in your employ must keep your confidences
and secrets. You can apply for an application without an attorney, however,
patents are legal documents and the use of a registered patent attorney/agent
is strongly encouraged.
bobcat (Mar 31, 2005 2:41:35 PM)
I found an old patent (1927) that only came up when I entered the patent
number but not when I entered the subject or Inventor's name. Is that
a common problem?
USPTO Expert (Mar 31, 2005 2:41:40 PM)
Bob-Cat, Old patents are not searchable by text. Only those patents that
have issued since 1976 to date can be searched by text.
Guest (Mar 31, 2005 2:42:24 PM)
what is the difference between a design appl and a patent appl
USPTO Expert3 (Mar 31, 2005 2:42:26 PM)
fudge - A design patent protects only the appearance of an article. A
utility patent protects the way an invention works. The applications are
somewhat different.
apple (Mar 31, 2005 2:42:55 PM)
Which is the mail stop for sending the new non-provisional utility patent?
USPTO Expert2 (Mar 31, 2005 2:43:04 PM) (EDITED ANSWER)
Apple - There is no specific mail stop send to: Commissioner for Patents
P.O. Box 1450 Alexandria, VA 22313-1450. For information regarding mail
stop, see http://www.uspto.gov/web/offices/com/sol/og/patboxs.htm
jenny (Mar 31, 2005 2:43:59 PM)
What is a disclaimer and why is it used?
USPTO Expert2 (Mar 31, 2005 2:44:29 PM) (EDITED ANSWER)
A disclaimer is a statement filed by an owner (of an undivided part interest
or of the entire interest) of a patent or of a patent to be granted (i.e.,
an application), in which the owner relinquishes certain legal rights
to the patent.
There are generally two types of disclaimers: a statutory disclaimer and
a
terminal disclaimer.
Statutory Disclaimers:
Under 37 CFR 1.321(a) the owner of a patent may disclaim a complete claim
or claims of his or her patent. This may result from a lawsuit or because
he or she has reason to believe that the claim or claims are too broad
or otherwise invalid. A statutory disclaimer is not, however, a vehicle
for adding or amending claims, since there is no provision for such in
the statute (35 U.S.C. 253) nor the rules (37 CFR 1.321). Thus, claims
of a patent cannot be disclaimed in favor of new claims to be added to
the patent or an amendment to existing claims.
The following link will provide you with a form for disclaimers under
1.321(a):
http://www.uspto.gov/web/forms/sb0043.pdf
Terminal Disclaimers:
37 CFR 1.321(a) also provides for the filing by an applicant or patentee
of a terminal disclaimer which disclaims or dedicates to the public the
entire term or any portion of the term of a patent or patent to be granted.
37 CFR 1.321(c) specifically provides for the filing of a terminal disclaimer
in an
application or a reexamination proceeding for the purpose of overcoming
a judicially created double patenting rejection. See MPEP § 804.02
at the following link: (http://www.uspto.gov/web/offices/pac/mpep/documents/0800_804_02.htm
- sect804.02)
This link will provide you with a form that can be used to file a terminal
disclaimer to overcome an obviousness-type double patenting rejection:
http://www.uspto.gov/web/forms/sb0026_fill.pdf
For more on Disclaimers, please see the Manual of Patent Examining procedure
(MPEP) Chapter 1490 (see link below):
http://www.uspto.gov/web/offices/pac/mpep/documents/1400_1490.htm
- sect1490
water (Mar 31, 2005 2:45:16 PM)
is the uspto expert available after today?
USPTO Expert2 (Mar 31, 2005 2:45:45 PM)
We do have experts available to answer your questions at our Inventors
Assistance Center, call 1-800-786-9199/
Wicker (Mar 31, 2005 2:46:21 PM)
I have a product patent and a processs patent. Can I do both on 1 application??
USPTO Expert (Mar 31, 2005 2:46:23 PM) (EDITED ANSWER)
Wicker, Yes you may file a single application claiming both a product
and a process. The examiner may require you to elect one invention for
examination. You may then file a divisional application claiming the non-elected
invention.
Carm (Mar 31, 2005 2:48:29 PM)
Once a utility patent is filed, will the inventor be allowed access to
examiner notes (e.g., patentability reports, search criteria, etc.) contained
in the file wrapper at any time?
USPTO Expert3 (Mar 31, 2005 2:48:54 PM) (EDITED ANSWER)
Carm - an applicant may access the entire file through Private PAIR. See
the Electronic Business Center on our web page on how to use this feature.
http://www.uspto.gov/main/faq/p120pair016.htm
John50 (Mar 31, 2005 2:48:59 PM)
my last name on my patent certificate is incorrect. is there any way i
can submit the proper spelling and get a new certificate. thanks.
USPTO Expert (Mar 31, 2005 2:49:01 PM) (EDITED ANSWER) John50, Yes you
may file a request for a certificate of correction. The patent, however,
will not be reprinted. See http://www.uspto.gov/web/offices/pac/doc/general/correct.htm
Guest (Mar 31, 2005 2:50:55 PM)
Can I apply for a design and utility patent for the same product or is
this overkill?
USPTO Expert3 (Mar 31, 2005 2:51:48 PM)
Yes, you can apply for both patents. A utility patent protects a new,
useful, nonobvious and adequately discussed machine, manufacture, composition
of matter, process, or improvement thereof. On the other hand, a design
patent protects only the appearance of an article of manufacture, not
the way the article functions or the materials of its manufacture. A better
mousetrap could function (work) exactly like the mousetrap of old, but
have a different appearance; it would then be appropriate for a design
application. If, however, it had a new function in a way it trapped mice,
it could also be appropriate for a utility application.
kb (Mar 31, 2005 2:53:07 PM)
If a provisional application is filed does the non-provisional have to
match exactly or can additional information be included in the non-provisional
application.
USPTO Expert (Mar 31, 2005 2:53:28 PM)
kb, Yes a non-provisional application may add additional subject matter,
but the new subject matter may not be entitled to the earlier filing date
of the provisional application.
Gaddock (Mar 31, 2005 2:54:02 PM)
I want to register a 'name' that is to be used as a 'Brand Name' so to
speak. I want to have many products with this name on it from factories
I contract to manufacture the products. Would a Trademark be appropriate
for this? or is there another method better used for protecting the name?
USPTO Expert3 (Mar 31, 2005 2:54:23 PM)
Yes that would be the appropriate thing to do.
Jimmy Newtron (Mar 31, 2005 2:54:44 PM)
Does the USPTO have published standards to determine patentability?
USPTO Expert2 (Mar 31, 2005 2:54:46 PM)
Jimmy Neutron - Patentability is based on statutory law and case law.
See 35 USC sections 101, 102, 103 and 112. Title 37 of the Federal Register
sets forth the Patent Rules see http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf
Further, the Manual of Patent Examination Procedures sets forth guidelines
for examination, see in particular Chapter 700 and 2100, http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r2_2100_508.pdf
Ralph (Mar 31, 2005 2:55:18 PM)
I patented and sold a version of my invention to a distributor for resale
to the public. A few days later a patent was filed and has since issued.
The patent appears to cover the version of my invention. Can the reciept
(1099) of my sale to the distributor be used as prior art if I request
a reexamination of the patent?
USPTO Expert2 (Mar 31, 2005 2:56:07 PM)
If the invention was not in public use or sale in this country more than
one year before the filing for your invention it will not be used as prior
art.
ERMERTC (Mar 31, 2005 2:57:33 PM)
IS IT POSSIBLE TO VIEW PRE PATENT ITEMS ON YOUR WEBSITE?
USPTO Expert2 (Mar 31, 2005 2:58:20 PM)
Applications published 18 months after the filing date are available for
viewing on our web site. Go to http://www.uspto.gov/patft/index.html
ron (Mar 31, 2005 2:58:44 PM)
How long will it be. My patent application was published about a year
ago.
USPTO Expert (Mar 31, 2005 2:58:45 PM)
Ron, The length of time will depend on the specific technology. It generally
takes about 18 months to receive a first office action from the patent
examiner. Some technologies are experiencing backlogs and therefore it
may take longer. On average it takes about 27 months for a patent to issue
after it is filed.
KT (Mar 31, 2005 2:59:14 PM)
Hi, i'm getting ready to launch a line of greeting cards based on a theme.
If I plan to expand that line to include other items do I need to apply
for those items separately or can they be included under the registered
name of the card line?
USPTO Expert3 (Mar 31, 2005 2:59:21 PM)
If the mark for the cards is already registered, you cannot add goods
or services to that existing registration. You would have to file a new
registration for the expansion of goods. If you have not yet applied to
register the mark for the cards, you can include whatever goods or services
on which you intend to use the mark in the same application.
culb (Mar 31, 2005 3:00:11 PM)
What criteria do you use to determine if a patent application should be
divided into two or more separate patent applications?
USPTO Expert2 (Mar 31, 2005 3:00:51 PM) (EDITED ANSWER)
Restriction, a generic term, includes (1)the practice of requiring an
election between distinct inventions, for example, election between combination
and subcombination inventions, and (2)the practice of requiring an election
between independent inventions. Independent inventors means the inventor
has no disclosed relationship. They are unconnected in design, operation
or effect.
The basis for restriction is found in the following statute and rules:
35 U.S.C. 121
If two or more independent and distinct inventions are claimed in one
application, the Director may require the application to be restricted
to one of the inventions. If the other invention is made the subject of
a divisional application which complies with the requirements of section
120 of this title it shall be entitled to the benefit of the filing date
of the original application. A patent issuing on an application with respect
to which a requirement for restriction under this section has been made,
or on an application filed as a result of such a requirement, shall not
be used as a reference either in the Patent and Trademark Office or in
the courts against a divisional application or against the original application
or any patent issued on either of them, if the divisional application
is filed before the issuance of the patent on the other application. If
a divisional application is directed solely to subject matter described
and claimed in the original application as filed, the Director may dispense
with signing and execution by the inventor. The validity of a patent shall
not be questioned for failure of the Director to require the application
to be restricted to one invention.
37 CFR 1.141
(a) Two or more independent and distinct inventions may not be claimed
in one national application, except that more than one species of an invention,
not to exceed a reasonable number, may be specifically claimed in different
claims in one national application, provided the application also includes
an allowable claim generic to all the claimed species and all the claims
to species in excess of one are written in dependent form or otherwise
include all the limitations of the generic claim.
(b) Where claims to all three categories, product, process of making,
and process of use, are included in a national application, a three way
requirement for restriction can only be made where the process of making
is distinct from the product. If the process of making and the product
are not distinct, the process of using may be joined with the claims directed
to the product and the process of making the product even though a showing
of distinctness between the product and process of using the product can
be made.
You can read more about restriction and species requirements by consulting
the MPEP at http://www.uspto.gov/web/offices/pac/mpep/mpep.htm
on our website. The chapter to read is MPEP 800.
apple (Mar 31, 2005 3:02:17 PM)
Can you please tell which forms are used for the Fee Transmittal, Patent
Application Transmittal Letter, Patent Application Declaration? Thanks.
USPTO Expert2 (Mar 31, 2005 3:02:39 PM)
Apple - all our forms are available on our web site at, http://www.uspto.gov/web/forms/index.html
Larry (Mar 31, 2005 3:03:19 PM)
Can you file several provisional patents and then claim the benefit of
all of them in one regular patent application, before the one year term
?
USPTO Expert (Mar 31, 2005 3:03:38 PM) (EDITED ANSWER)
Yes, you may. The non-provisional application must be filed within 1 year
of the earliest field non-provisional application.
Popcorn (Mar 31, 2005 3:04:09 PM)
When does a patent application become available for public review
USPTO Expert (Mar 31, 2005 3:04:42 PM) (EDITED ANSWER)
Popcorn, It becomes available when the application is published, generally
18 months from the earliest filing date claimed.
Tami (Mar 31, 2005 3:06:39 PM)
When will the transcripts be available?
USPTO Expert2 (Mar 31, 2005 3:07:23 PM)
Transcripts are posted within about a week, previous chats posted at http://www.uspto.gov/web/offices/com/iip/transcripts.htm
smudge (Mar 31, 2005 3:07:29 PM)
How are characters like a hypen treated in a tradmark. For example if
"i-name" is registered could I register "iname"
USPTO Expert3 (Mar 31, 2005 3:07:31 PM)
The pronunciation of the trademark is the most controlling factor. So
whether or not similar marks have dashes separating elements of one or
the other mark wouldn't make much difference in deciding whether there
would be a likelihood of confusion in the market place.
water (Mar 31, 2005 3:08:16 PM)
have you hear of the invention company that help people patent their idea?
are they reliable or they are there to get your money?
USPTO Expert2 (Mar 31, 2005 3:09:40 PM)
Our office cannot tell you whether a company is reliable or not, we do
however, post complaints we receive from the public at http://www.uspto.gov/web/offices/com/iip/complaints.htm.
Additional information you should be aware before you do business with
any invention promotion firm is available at http://www.uspto.gov/web/offices/com/iip/documents/scamprevent.pdf
Popcorn (Mar 31, 2005 3:09:55 PM)
If a patent is not approved by USPTO does it become available for public
review
USPTO Expert (Mar 31, 2005 3:10:06 PM) (EDITED ANSWER)
The short answer is patent applications that are abandoned and are not
claimed or referred to in another issued or published application are
not made publicly available. However, 37 CFR 1.14 explains in greater
detail, see http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf
Tami (Mar 31, 2005 3:10:14 PM)
As the sole inventor, do I quality as a small entity?
USPTO Expert3 (Mar 31, 2005 3:11:10 PM)
Tami - Yes, a sole inventor is a small entity.
excell (Mar 31, 2005 3:11:27 PM)
Where is there an office in Los Angeles
USPTO Expert2 (Mar 31, 2005 3:12:19 PM) (EDITED ANSWER)
There is only one US Patent and Trademark Office and it is located in
Alexandria, VA. However, patent and trademark information is available
at locations throughout the United States. To located the Library in Los
Angeles go to http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html
Cia (Mar 31, 2005 3:12:41 PM)
We are in the process of developing a TV serial with my name as the title
of the show, how can we protect that name in connection to the show title
and to merchandising products?
USPTO Expert3 (Mar 31, 2005 3:13:10 PM)
It can be registered as a trademark for both the show and the related
merchandising products.
Cia (Mar 31, 2005 3:14:17 PM)
2. Which is the best to file right away, a trademark, a service mark or
an intent to use the service mark and/or the trademark?
USPTO Expert3 (Mar 31, 2005 3:14:32 PM)
You can file them all at the same time. There's no order requirement or
advantage.
USPTO Expert2 (Mar 31, 2005 3:15:45 PM)
Thank you everyone for participating today in our chat. As usually there
are many more questions than we have time to answer. If your question
wasn't answered you can contact the Inventors Assistance Center at 1-800-786-9199.
Thanks and good-bye
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