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This is a transcript of the on-line chat held on Thursday, May
26, 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 Expert (May 26, 2005 1:57:38 PM)
Welcome to this month's on-line chat. We will be starting promptly at
2:00. If you would like to refer to questions and answer from our previous
chats, go to our web site at http://www.uspto.gov/web/offices/com/iip/index.htm
JARV (May 26, 2005 2:14:14 PM)
This is a 2 part question Is there a maximum limit to the number of drawing
sheets, figures or diagrams that can be submitted with a patent application
for a complex mechanical device? Assuming that one picture is worth 1,000
(or 10,000) words it would follow that the more pictures one includes
the easier it would be to follow the written description and the easier
to prepare it. 2nd part. . . . would typical examiners in the USPTO complain
if they see too many drawings with an application or would they complain
more if they see too few.
USPTO Expert2 (May 26, 2005 2:15:03 PM) (EDITED ANSWER)
JARV, 1. There is no limit to the number of drawings you can file with
an application. However, note that for an application filed on o after
December 8, 2004, if the specification and drawings exceed 100 sheets
of paper, there is an application size fee (37 CFE 1.16(s)) of $125 (for
small entity) for each additional 50 sheets or fraction thereof. 2. Examiners
appreciate any drawings that help describe the invention.
jimh (May 26, 2005 2:16:06 PM)
What do these statuses mean in patent processing: Case Docketed to Examiner
in GAU, IFW TSS Processing by Tech Center Complete, and what can I expect
next in the process?
USPTO Expert (May 26, 2005 2:18:16 PM)
Case Docketed to Examiner means the case has been assigned to an examiner
in a particular Art Unit, IFW TSS... means the application has been reviewed
by the legal instruments examiner and all the papers have been entered
into the Image File Wrapper for the examination. What comes next is the
examination by the examiner and an Office Action.
ed (May 26, 2005 2:18:22 PM)
Hi! I filed an application and received the first office action two years
ago. The postage date was almost two weeks after the required date of
reply. So, I sent this fact to the supervisor and he said that he will
give this to the responsible people. It's now 17 months after the first
office action and nothing happened to my application. Is this how USPTO
works? I am from another country.
USPTO Expert (May 26, 2005 2:19:16 PM)
Seventeen months is an abnormal delay, we suggest you contact the supervisor
again, he/she will see what is causing the delay.
status (May 26, 2005 2:19:55 PM)
When submitting an an electronic application, what format should the figures
be in, jpeg or tiff?
USPTO Expert2 (May 26, 2005 2:19:58 PM)
Status, Please contact the electronic business center for assistance with
electronic filing issues. Go to http://www.uspto.gov/ebc/efs/index.html.
Equinox (May 26, 2005 2:20:19 PM)
Your site publishes patent applications received since March 15, 2001.
Can applications (or claims included therein) be opposed by an interesting
party, by showing that prior art obviously leading to what is claimed
was publicly available more than one year before publication ? If yes,
what happens if such opposition is received ?
USPTO Expert (May 26, 2005 2:20:32 PM) (EDITED ANSWER)
When an application is published, any member of the public may submit
patents or publications relevant to a pending published application pursuant
to 37 CFR 1.99 within 2 months from the date of the publication or prior
to the mailing of a notice of allowance, whichever is earlier. The submission
must comply with the requirements of 37 CFR 1.99. Once this time period
of 2 months expires, no protest or other form of pre-issuance opposition
to the grant of a patent is permitted. See 35 U.S.C. 122(c).
USPTO Expert (May 26, 2005 2:21:52 PM)
Approximately $4000-$5000 over the life of the patent.
Jimmy Newtron (May 26, 2005 2:22:59 PM)
How much does a normal Patent cost?
USPTO Expert (May 26, 2005 2:23:26 PM)
Jimmy - sorry we posted your answer first, these fees include the maintenance
fees as well.
ikneedhelp (May 26, 2005 2:23:32 PM)
Does the USPTO provide, or know where I can obtain, a confidentiality
agreement to protect my idea while looking for a buyer.
USPTO Expert (May 26, 2005 2:24:58 PM) (EDITED ANSWER)
We do not, we suggest you contact an attorney.
ed (May 26, 2005 2:25:06 PM)
I've submitted to the supervisor everything about my case. I can see that
my status is still "abandoned." I sent an email also to the
supervisor but doesn't reply to me.
USPTO Expert2 (May 26, 2005 2:27:54 PM)
Ed, I would suggest you call the supervisor. If your issue does not get
resolved, please call the Technology Center's Director. As a reminder,
e-mail communications are not considered secure and therefore the Office
does not generally conduct business by e-mail.
bigbrain (May 26, 2005 2:28:07 PM)
Hi, as an independent inventor, I create my own e-application. I find
that the first claim generally explains the whole invention. For example,
if the invention is a better mouse trap, it explains the whole thing in
claim 1. But part of the construction might be that of an existing mousetrap.
In that case, is it on stepping on the claim of the existing mouse trap?
Please explain.
USPTO Expert3 (May 26, 2005 2:28:09 PM)
This is a complex question. Our written transcript will include the answer.
RudyNV (May 26, 2005 2:28:21 PM)
What is the best way to follow up on the status of an application? I have
tracking my application with PAIR since 12-2002 and it has most recently
been Docketed to Examiner for the third time. I take it that this means
there has been positive progress. Is there an easy way to get more detailed
information beyond PAIR without being perceived as a "pest?"
I've never done anything except PAIR to follow up on my application.
USPTO Expert (May 26, 2005 2:29:12 PM)
We do have technologies where cases filed before December 02 have not
been examined. We suggest you contact the supervisor who should be able
to tell you when to expect an Office Action.
Guest (May 26, 2005 2:29:25 PM)
can we all get a printed record of this hour chat of answers and questions
conference2005May26 (May 26, 2005 2:30:02 PM)
United States Patent and Trademark Office trademark applications cost
$325 regarding an Internet electronic filing and $375 regarding a paper
filing (United States dollars). Does the United States federal legal code
improve with a $375 paper filing?
USPTO Expert3 (May 26, 2005 2:30:49 PM)
There is no difference in the application of the law for these two fees.
The USPTO seeks to encourage electronic filings so the fee for those filings
is lower. than for paper filings.
sue (May 26, 2005 2:31:11 PM)
I have the same question as Equinox. I didn't know if I would be allowed
to contact a patent examiner directly about a published application that
is similiar to my issued patent. Will I be able to see the answer?
USPTO Expert (May 26, 2005 2:31:37 PM)
The transcript will be posted on our homepage in a couple of weeks. Look
for it there.
jimh (May 26, 2005 2:31:45 PM)
Are the rumors true that USPTO may change over to first to file versus
first to invent for granting patents?
USPTO Expert2 (May 26, 2005 2:32:28 PM)
JImH, If that does happen it would be by an Act of Congress, not a change
in policy by the USPTO.
sue (May 26, 2005 2:32:39 PM)
If I pay maintenance fees as a small entity but then license my patent
to a large company, will my fees change?
USPTO Expert (May 26, 2005 2:33:58 PM)
Yes, since a large entity licensed the patent you/they would pay large
entity fees.
Ajax (May 26, 2005 2:34:09 PM)
Do attorneys have better access to PTO examiners than private individuals?
USPTO Expert2 (May 26, 2005 2:35:05 PM)
Ajax, All members of the public have equal access to examiners. However,
if an inventor is represented by counsel, the examiner will only discuss
the merits of your application with your attorney present.
mvela (May 26, 2005 2:35:11 PM)
How a US patent application may become abandoned before the issue of the
first official action? Is that possible?
USPTO Expert (May 26, 2005 2:37:20 PM)
An application may become abandoned prior to examination for failing to
respond to a requirement set by the Office of Initial Patent Examination
or the applicant may expressly abandon the application at any time during
its prosecution.
djl (May 26, 2005 2:38:02 PM)
As an individual (as opposed to a company), I am very frustrated by the
length of time to get a patent (or any feedback). As an individual trying
to start a business, obtaining patents is extremely important for getting
the attention of investors, etc. My business development efforts have
been severely stunted by the inability to get any feedback on my patent
application, which I filed over a year ago (but less than 18 months, so
no publication yet). Means to expedite are so limited that there is really
nothing to do other than sit and wait. I would appreciate any feedback
on this issue and how the USPTO is trying to address this. I fear that
the length of time for patent issuances is severely stunting the ability
of independent inventors to move forward our extremely fast paced technological
society.
USPTO Expert (May 26, 2005 2:39:43 PM)
Last year Congress authorized PTO to raise our fees and increased our
appropriations. As a result the PTO will hire approximately 900 patent
examiners in fiscal year 2005, which ends September 30th, 2005. We plan
significant hiring in the future and are developing other initiatives
to reduce pendency.
jimh (May 26, 2005 2:39:45 PM)
If a PPA is filed, then a full application, does the PPA filing in any
way effect the timing of the patent processing?
USPTO Expert2 (May 26, 2005 2:39:46 PM) (EDITED ANSWER)
JimH, No. The Provisional Patent Application date does not effect the
order of examination of the non-provisional application. The order of
examination is based on the filing date of the non-provisional application.
ed (May 26, 2005 2:40:35 PM)
Thanks, I called the supervisor several times and have always left my
name and number in his answering machine. Nothing happened. The last email
I received from him was that my case "will be resolved within two
weeks." It's now more than a year after his email. What is the best
way to communicate with the Technology Center's Director?
USPTO Expert2 (May 26, 2005 2:42:04 PM)
Ed, Please dial 571-272- XXXX to get to the Technology Center's phone
system. XXXX should be the specific Technology Center where your application
is, e.g. 1600, 1700, etc.
Not Cool (May 26, 2005 2:42:13 PM)
Question?: I am responding to a restriction: combination and subcombinations
(don't worry, not seeking legal advise), and the return address was for:
Commissioner O Patent & Trademarks, Washington D.C. 20231. Is this
a valid address
USPTO Expert (May 26, 2005 2:42:23 PM)
No that address is no longer current, please go to http://www.uspto.gov/web/offices/com/sol/og/patboxs.htm
for our current mailing addresses.
User1111 (May 26, 2005 2:42:37 PM)
If the Examiner reports to the SPE, and the SPE reports to the Group Direction,
then to whom does the Group Director report?
USPTO Expert (May 26, 2005 2:43:26 PM)
The Group Directors report to the Deputy Commissioner for Patent Operations.
AKM (May 26, 2005 2:44:23 PM)
I mistakenly sent my idea by email to some company with three cities listed
on the website (one was Philadelphia) that I think was named IPS (Intellectual
Patent Something...) though I'm not sure exactly, asked for a confirmation
email and still have not received anything.
USPTO Expert (May 26, 2005 2:45:51 PM)
We're not sure what company you sent your idea to, but you should visit
our web site for information you should be aware of before dealing with
any invention promotion firms. Go to http://www.uspto.gov/web/offices/com/iip/index.htm
Ajax (May 26, 2005 2:45:56 PM)
Can two embodiments in a provisional application subsequently be separated
into two non-provisional applications?
USPTO Expert (May 26, 2005 2:46:10 PM)
Yes
jimh (May 26, 2005 2:46:23 PM)
In reference to the answer to "mvela" question, Is there some
indication on the PAIR transaction screen that there has been a failure
to respond to a requirement by the office?
USPTO Expert2 (May 26, 2005 2:46:25 PM)
JimH, As an applicant you have access through private PAIR to all incoming
and outgoing communications.
sue (May 26, 2005 2:47:27 PM)
What are restrictions on claims? I thought that claims would either be
accepted or rejected.
USPTO Expert (May 26, 2005 2:50:06 PM) (EDITED ANSWER)
When more than one invention is claimed in one application, the examiner
may require that applicant choose which invention that want examined in
the application. Please see MPEP, Chapter 800.
Not Cool (May 26, 2005 2:52:25 PM)
Question?: Is it possible for find out if some of your claims will be
granted before the patent finally isssued. I mean, after an examiner has
been assigned to the case.
USPTO Expert2 (May 26, 2005 2:54:27 PM)
Not Cool, If the examiner determines that the application should issue
as a patent then notice will be sent to applicant, prior to issuance of
the patent, that the claims are allowed. For instance, some claims may
be found allowable where others are rejected.
lawyer (May 26, 2005 2:54:32 PM)
Are there some questions your are answering out of order? Did you receive
mine?
USPTO Expert (May 26, 2005 2:54:35 PM)
We receive many more questions than we can answer, we try to answer questions
that are helpful to many users.
beagle47 (May 26, 2005 2:55:59 PM)
Is there a website at which one can learn about becoming a registered
patent attorney?
USPTO Expert (May 26, 2005 2:56:54 PM)
You can go to the Office of Enrollment and Disciplines web page at http://www.uspto.gov/web/offices/dcom/gcounsel/oed.htm
Gottlieb (May 26, 2005 2:57:31 PM)
When searching patents, clicking on Images returns a blank screen with
a small square icon in the upper left corner. I have used AOL and Internet
Explorer with the same results. Is there a recommended browser or software
program available. I am currently using Windows 2000 and Windows XP.
USPTO Expert (May 26, 2005 2:59:07 PM)
You may go to the Electronic Business Center web site for assistance,
http://www.uspto.gov/ebc/efs/index.html
or try the image help site at http://www.uspto.gov/patft/help/images.htm
Equinox (May 26, 2005 3:00:51 PM)
Can a detailed, in-depth written examination of Prior Art likely to apply
to a patent contribute to a) increase the likelihood of acceptance without
modifications b) speed up the examination process ?
USPTO Expert (May 26, 2005 3:02:05 PM)
It will clearly establish a strong record but the examiner will still
independently do a search for related inventions.
ed (May 26, 2005 3:02:49 PM)
Is the Art Unit the same as the Technology Center number?
USPTO Expert2 (May 26, 2005 3:02:49 PM)
Ed, The Art Unit is a subunit within the Technology Center. For example,
Art Unit 3654 is in Technology Center 3600
bigbrain (May 26, 2005 3:03:39 PM)
Gottlieb, if you go through the faq, there is a link for a free TIFF software
that you can download. Once you do that, you will see the images
USPTO Expert (May 26, 2005 3:04:01 PM)
Thank you bigbrain.
Guest (May 26, 2005 3:05:31 PM)
If, in a patent application, you fail to include an IDS and you would
have included your own prior art in the IDS, and later, the examiner cites
all of your own prior art in an office action, should you still send in
an IDS that includes your prior art?
USPTO Expert (EDITED ANSWER)
You should file an IDS if you are aware of additional prior art that is
material to examination. If the information that you are aware of is already
of record (cited by the examiner), there is no need for you to cite the
same information in an IDS. See 37 CRF 1.56(b).
Gottlieb (May 26, 2005 3:05:43 PM)
With a Utility patent, are the fees for Search and Examination required
at the time of filing (with Basic Filing fee)?
USPTO Expert (May 26, 2005 3:06:04 PM) (EDITED ANSWER)
Yes, these fees are required at filing. Effective July 1, 2005, if the
search and examination fees are not paid at the time of filing of the
application, a surcharge will be required.
SDIP (May 26, 2005 3:06:18 PM)
Is there a mechanism in the PTO for having an independent review of an
Examiner's basis/bases of rejection, short of a formal Appeal? I'm thinking
of the situation where an Examiner is, or appears to be, quite reluctant
to consider arguments for patentability (particularly arguments against
an obviousness rejection).
USPTO Expert (May 26, 2005 3:06:30 PM) (EDITED ANSWER)
This is an appealable issue. Therefore, if you disagree with the examiner,
you may file a notice of appeal after your claims have been rejected twice,
see 37 CFR 41.31.
neice (May 26, 2005 3:06:50 PM)
I have spoken to patent places that say you have to join with them to
get things done and I am a little cautious.Can you give some input on
those places?
USPTO Expert (May 26, 2005 3:08:28 PM) (EDITED ANSWER)
There are many unscrupulous invention firms out there. Our web site has
information you should be aware of before doing business with any invention
promotion firm. Go to http://www.uspto.gov/web/offices/com/iip/documents/scamprevent.pdf
robin (May 26, 2005 3:09:39 PM)
Is there one complaint that all examiners have that they would wish applicants
to make sure to be aware of?
USPTO Expert2 (May 26, 2005 3:11:39 PM)
Robin, While it is not required, one suggestion is that you include claims
of varying scope from the broadest which you believe is patentable to
the narrowest that will adequately protect your invention.
Guest (May 26, 2005 3:11:49 PM)
Can I apply for a PPA before doing a patent search? If there is prior
art - would my PPA be denied?
USPTO EXPERT (EDITED ANSWER)
A provisional patent application is not examined and will not issue as
a patent. You would have to file a non-provisional application within
one year of the filing of the provisional application and that non-provisional
may issue as a patent. The prior art can be filed as an IDS in the non-provisional
application.
Buckeye (May 26, 2005 3:12:09 PM)
This message is to niece. You can also go to the FTC who implements rules
against fraudulent invention firms. Ask for a small pamphlet "Invention
Promotion Firms (January 1994).
USPTO Expert (May 26, 2005 3:12:28 PM)
Thanks Buckeye
Guest (May 26, 2005 3:12:43 PM)
how do I get a provisional patent application?
USPTO (EDITED ANSWER)
The requirements for a provisional application are a provisional application
cover sheet, PTO/SB/16, a written description that complies with 35 USC
112 first paragraph, drawings if necessary for the understanding and the
current fee (which can be found at http://www.uspto.gov/web/offices/pac/provapp.htm)
The provisional application cover sheet is available on our web site at
http://www.uspto.gov/web/forms/index.html
roger (May 26, 2005 3:13:23 PM)
By submitting provisional application, does it protect the patent from
being patent in other country?
USPTO Expert2 (May 26, 2005 3:17:01 PM) (EDITED ANSWER)
Roger, No. Provisional applications do not provide patent protection in
other countries. Provisional applications are not examined on the merits.
However, you can file an application in a foreign office under the Paris
Convention to claim the benefit of the provisional application filed in
the U.S.
cita (May 26, 2005 3:17:05 PM)
When making trademark application through the Madrid Protocol what protection
is offered? Does one have to individually apply for each country for protection
in that country?
USPTO Expert3 (May 26, 2005 3:17:23 PM)
The filing of a trademark application does not provide any protections
different from the filing of any other type of application. However, in
the application you indicate what countries in the Protocol you want to
have your application extended to and the application will go to those
countries. You do not have to apply individually in countries that are
members of the Madrid Protocol - it may all be done through your US application
filed under the provisions of the Protocol.
USPTO Expert (May 26, 2005 3:18:32 PM)
Good-bye and thank you to all the participants, look for the transcript
on the homepage, www.uspto.gov, in a couple of weeks. Our next chat will
be sometime in July. We will also be posting information about the 10th
Annual Independent Inventors Conference here at the new USPTO campus this
year on August 12-13th. Have a great Memorial Day Weekend!
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