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This is a transcript of the on-line chat held on Tuesday, October
19, 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.
szcombi (Oct 19, 2004 2:09:02 PM)
Beware that an applicant whose invention is "in use" or "on
sale" (see 35 U.S.C. §102(b)) in the United States during the
one-year provisional-application pendency period may lose more than the
benefit of the provisional application filing date if the one-year provisional-application
pendency period expires before a corresponding non-provisional application
is filed. Such an applicant may also lose the right to ever patent the
invention (see 35 U.S.C. §102(b)). -- QUESTION - I did not understand,
can you explain. My product is still in Idea. If I try to make this as
a product within a provisional year, do I loose the patent filing right?
USPTO EXPERT
The statement above refers to the period of time during which a provisional
application is pending (the one year time period from date of filing of
the provisional application). If you have filed a provisional application,
then this statement warns that public use or sale of your invention could
jeopardize your ability to obtain a U.S. Patent if you do not file a non-provisional
application within the pendency of your provisional application. There
is no "provisional year". Once you have put your invention into
public use or offered it for sale, you have one year to file either a
provisional or non-provisional patent application. If you choose to file
a provisional application, you will have one year from the filing date
of the provisional application in which to file your non-provisional application.
Failure to do so may result in loss of the right to obtain a U.S. Patent.
See MPEP § 2133.
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2133.htm
- sect2133
Ideaguy (Oct 19, 2004 2:13:18 PM)
Ideaguy asked "My patent application has been in limbo for a couple
of years, it needed a response in ten days to office space re: clarification.
I was out of state, 10 days past. Number1 is my patent application considered
abandoned? Number 2 can I still put "patent pending" on product?
Number 3 what is process to reactivate application? Thanks for any info"
USPTO EXPERT
All Office actions from the USPTO will notify the applicant of a period
for response to the action. If you fail to reply within the period for
reply, the application will become abandoned. The period for reply may
be a “shortened statutory period” which can be extended by
filing a petition for extension of time and paying an extension of time
fee. The fee for an extension of time can be paid after the end of the
shortened statutory period, but must be paid before the end of the extension
period.
If you were given a shortened statutory period of three months to respond
to an office action, and you were out of town and missed the three-month
deadline, you may file a petition for extension of time and pay an extension
of time fee and buy up to three additional months to respond. See MPEP
§ 710.02(e).
http://www.uspto.gov/web/offices/pac/mpep/documents/0700_710_02_e.htm#sect710.02e
Fees for extensions of time can be found on our website using the link:
http://www.uspto.gov/web/offices/ac/qs/ope/fee2004oct1.htm#extend
Under 35 U.S.C. 292, it is unlawful to mark or designate any article
as “patent pending” or “patent applied for” for
the purpose of deceiving the public, if an application for patent has
not been filed or if your application is not pending. You may be fined
up to $500 for each such offense.
If your application has become abandoned, you may “revive”
it by filing a petition under 37 CFR 1.137(a) or (b). For these petitions
to be granted, they must include the required response to the Office action,
and the petition fee. The fee amounts can be found using the link above.
Forms PTO/SB/61 and PTO/SB/64 may be used to file these petitions and
may be found on our website using the link:
http://www.uspto.gov/web/forms/index.html#startforms
A petition under 37 CFR 1.137(a) is used when the abandonment of the
application was unavoidable. For such a petition to be granted you must
provide evidence that despite exercising diligence as generally used and
observed by prudent and careful person in relation to their most important
business, you were unable to respond to the Office action.
A petition under 37 CFR 1.137(b) is used when the abandonment of the
application was unintentional. The fee for this type of petition is higher
than for the unavoidable type, but you are not required to provide evidence
regarding the circumstances of the abandonment of the application.
See MPEP § 711.03(c) for information regarding petitions for reviving
an abandoned application.
http://www.uspto.gov/web/offices/pac/mpep/documents/0700_711_03_c.htm#sect711.03c
rjl (Oct 19, 2004 2:14:00 PM)
I have 3 patent applications. Two will absolutely help disadvantaged people
in every day use.3rd is a rescue system with military engineers already
interested in. I have been battling cancer to severe degree. Your suggestions
on an attempt for petition to make special; will it matter and estimated
time of process. I am 40 yrs.
USPTO EXPERT
There are certain conditions, which will allow your application to be
expedited without a fee; your health is one of them. All applications
are examined in date order, if a petition to make special is granted,
your application will move to the front of the line. I am attaching the
particular rule that covers these petitions.
§ 1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination or for
further action except as provided by this part, or upon order of the Director
to expedite the business of the Office, or upon filing of a request under
paragraph (b) of this section or upon filing a petition under paragraphs
(c) or (d) of this section with a showing which, in the opinion of the
Director, will justify so advancing it.
(b) Applications wherein the inventions are deemed of peculiar importance
to some branch of the public service and the head of some department of
the Government requests immediate action for that reason may be advanced
for examination.
(c) A petition to make an application special may be filed without a fee
if the basis for the petition is:
(1) The applicant’s age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy resources;
or
(iii) Contribute to countering terrorism.
(d) A petition to make an application special on grounds other than those
referred to in paragraph (c) of this section must be accompanied by the
fee set forth in § 1.17(h).
Please see MPEP § 708.02 for all requirements specific to petitions
to make special,
http://www.uspto.gov/web/offices/pac/mpep/documents/0700_708_02.htm#sect708.02
Dr. DeCarlo (Oct 19, 2004 2:17:32 PM)
Hi. Just a simple question for now; does the 20-year clock on patent duration
begins at the priority date, for example a provisional patent receipt,
or from when?
USPTO EXPERT
The twenty year patent term is not measured from the filing date of a
provisional application. See 35 U.S.C. 154(a)(3) which states that “[p]riority
under section 119, 365(a), or 365(b) of this title shall not be taken
into account in determining the term of a patent.” The basis for
relying upon a provisional application in a subsequently filed non-provisional
application is 35 U.S.C. 119(e), which is specifically excluded in calculating
the patent term under 35 U.S.C. 154(a)(3).
For all utility and plant applications filed on or after June 8, 1995,
the twenty year term is measured from the filing date of the non-provisional
application. If the non-provisional application claims benefit under 35
U.S.C. 102, 121 or 365(c) to an earlier filed application, then the twenty
year patent term is measured from the earliest effective U.S. filing date
for which benefit is claimed.
Allan (Oct 19, 2004 2:19:37 PM)
I have an idea for a telecommunications device that will require both
hardware and software. How do I go about obtaining a patent for this idea?
Can I apply for a patent while it is still and idea, or do I have to have
it functioning first? Also, what level of detail do I have to provide
in order to obtain a patent?
USPTO EXPERT
The first step is deciding what you want your patent to cover. Since your
invention is a device with both hardware and software you may be able
to obtain patent protection on both. After you decide this, filing a patent
application would be the next step. There is a lot of information on our
website that will explain the basics of filing a patent application. Please
see the following link: http://www.uspto.gov/web/offices/com/iip/index.htm
A brochure, General Information Concerning Patents is also available
on our website:
http://www.uspto.gov/web/offices/pac/doc/general/index.html
While it is generally not necessary to have the device completely manufactured
at the time you file the application, you can apply for your patent as
long as the application that is filed adequately conveys how to make and
use your invention (the disclosure of the application as filed must comply
with 35 U.S.C. 112, first paragraph). I would highly recommend reading
through previous patents to get an understanding of what is needed in
order to file an adequate disclosure that complies with 35 U.S.C. 112.
The following link will take you to the US patent data base where you
can begin looking through issued US patents to study both form and content:
http://www.uspto.gov/patft/index.html
The level of detail in the application is what would be needed for one
skilled in the art to make and use the device; again, compliance with
35 U.S.C. 112, first paragraph is essential. After reading through numerous
patents, you will have a better understanding of the level of detail needed.
If you are unsure how to proceed after studying the issued US patents
and looking through the information on our website, you may want to consider
seeking assistance from a registered patent attorney or patent agent.
A registered patent attorney and agent listing by geographic region is
available on our website:
http://www.uspto.gov/web/offices/dcom/olia/oed/roster/region/index.html
oldscout (Oct 19, 2004 2:21:06 PM)
I have an idea for cleaning engine-cooling systems and there is an existing
patent which has part of my idea included in it. Can you give me any guidelines
as to how different or perhaps upgraded an idea has to be to be patentable
under these circumstances?
USPTO EXPERT
35 U.S.C. 103 states that “a patent may not be obtained though the
invention is not identically disclosed or described as set forth in section
102 of this title, 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.”
Whether a change or improvement to an old invention is patentable or
not does not depend on how different or upgraded the new idea is, but
rather, whether the differences would have been obvious to a person having
ordinary skill in the art to which the invention pertains. Patent examiners
carry the responsibility of making a determination of whether a claimed
invention is obvious in view of the prior art. Examiners determine whether
the features of an invention are disclosed or suggested in prior patents
or publications. They then make a determination whether the differences
between the claimed invention and similar devices would have been obvious.
Examiners consider many factors, such as the level of skill of artisans
in the pertinent art, commercial success, long felt but unsolved needs,
failure of others to solve a problem, and whether the prior art as a whole
suggests the desirability and thus the obviousness of the changes to the
prior invention, when making a determination whether a claim is patentable
or not.
Barry d (Oct 19, 2004 2:27:24 PM)
If I file a design patent application, do I place “patent pending”
or design patent pending on the product? Also, is shading still necessary
on design patents? Can I have different embodiments on a design patent
to protect against small changes? Thank you.
USPTO EXPERT
Once a design patent application is filed with the USPTO "patent
pending" may be included on the commercial product in which the design
is embodied. Also, while surface shading is no longer required by 37 CFR
1.152, applicants are encouraged to include surface shading on the claimed
design shown in the drawing so as to clearly understand its shape and
contour. Multiple embodiments of a single design concept may be included
in a single design patent application so long as the shape and appearance
of the embodiments are not considered to be patentably distinct from each
other.
thomasmcruise (Oct 19, 2004 2:28:02 PM)
I have been attempting to file for my patent electronically, and am having
challenges getting the drawings to compress with the right compression
ration format (CCIG....etc). Would you please offer any suggestions in
getting these files to scan properly? (I know this is a fairly specific
question, but thought others may learn from the answer. (I already have
my customer number and PKI Cert from you). Thanks!
USPTO Expert (Oct 19, 2004 2:29:58 PM)
Thomasmcruise please contact the Electronic Business Center at 866-217-9197
oldscout (Oct 19, 2004 2:30:04 PM)
I recently spoke to representatives of Invent Tech Co and Invention Submission
Corp. I showed one of my ideas to a representative of Invention Submission
Corp. He signed a non-disclosure agreement that I have a copy of. I have
since found out that they have had legal proceedings against them for
misrepresenting their services. I wish to proceed with the patent application
in the next few weeks. Does this letter and meeting establish in anyway
a basis for the conception of my idea?
USPTO EXPERT
The Office strongly suggests you visit our web site, http://www.uspto.gov/web/offices/com/iip/data.htm#Complaints,
for information you should be aware of before doing business with any
invention promotion firm. You will not only see the published complaints
the USPTO has, but you will also find information that invention promotion
firms are required by the American Inventors Protection Act (AIPA) to
answer. Questions like, Total number of customers, known by the Company,
who have received a net financial profit as a direct result of the Company's
promotion services and what is the Company's success rate over the past
five years [that is, the number of clients who have made more money from
their invention than they have paid to the Company].
The Federal Trade Commission is another source to view published complaints
as well, http://www.ftc.gov/foia/frequentrequest.htm.
Since your intent is to proceed with your patent application, please
contact our Office at 1-800-786-9199 for patent information or visit the
USPTO’s web site.
As far as the legal implication of the agreement you signed, the USPTO
does not provide legal advice. We recommend that you should consult with
a registered patent attorney/agent. A registered patent attorney and agent
listing by geographic region is available on our website:
http://www.uspto.gov/web/offices/dcom/olia/oed/roster/region/index.html
shaoyu (Oct 19, 2004 2:31:34 PM)
What is the average time between paying issue fee and being published?
USPTO Expert (Oct 19, 2004 2:31:58 PM)
The average time is 3-4 months.
May (Oct 19, 2004 2:32:08 PM)
Hi I would like to know if there is a temporary patent that I can apply
to. I don't know if this is an appropriate question, but I'm very new
at this.
USPTO EXPERT
Although there is no category called “temporary patent” there
is a type of application that is called a provisional patent application.
A provisional application is not examined and cannot issue as a patent.
You have one year from the filing date of the provisional application
to file a regular/non-provisional application. The non-provisional application
may claim the benefit of the filing date of the provisional application.
The subsequently filed non-provisional application may mature into a patent.
A provisional application must clearly describe your invention in term
that would allow someone having ordinary skill in the specific area of
your invention the ability to make and/or use the invention with having
to unduly experiment in putting your invention together or taking a great
amount of time in learning how to use it. This is the same requirement
that is placed on regular applications. The difference between a provisional
application and a regular/non-provisional application is that the regular
application is required to have at least one claim that clearly defines
what the invention is, how it works or how it is made. No claims are required
for the provisional application. Our web site has the current fee schedule.
http://www.uspto.gov/web/offices/ac/qs/ope/fee2004oct1.htm
Kayt (Oct 19, 2004 2:32:41 PM)
How do I find out if an idea similar to mine has already been patented?
USPTO Expert (Oct 19, 2004 2:34:30 PM)
You can conduct a patent search via our web site, http://www.uspto.gov/,
click on "search". Or you can go to a Patent and Trademark Depository
Library located throughout the United States and conduct a search there.
To find the library nearest you go to our web site.
http://www.uspto.gov/go/ptdl/
thomasmcruise (Oct 19, 2004 2:38:36 PM)
Method Question - I'm filing a utility patent for a device, and the method
for usage. Do these go into the same patent? or do I file a separate Method
separate from the Utility Patent? Thank you in advance! :-)
USPTO Expert (Oct 19, 2004 2:39:16 PM)
You can file them in the same application, the examiner may require a
restriction. If so, that will be included in the Office Action.
Dr. DeCarlo (Oct 19, 2004 2:41:12 PM)
In the say line of questioning as cruise, we had restrictions, which we
accepted. Now should we take the restrictions and submit a new use patent
app, and if so, how do we claim the original priority date?
USPTO EXPERT
If two or more independent and distinct inventions are claimed in a single
application, the examiner may require the applicant to elect one of the
inventions for examination. This is called a restriction. The other invention
is withdrawn from consideration.
A) If the restriction was between claims drawn to a product and a process
claims (process of making/process of use) and you elected to have the
product claims examined then you may be entitled to have the process claims
rejoined with the product claims when the product claims are allowable.
The process claims must include all the limitations of the patentable
product and those claims must be in the application prior to a final rejection
or allowance, whichever is earlier. After final rejection, amendments
are not entered as a matter of right (See 37 CFR 1.116). The same applies
to amendments after allowance (See 37 CFR 1.312). In the event of a rejoinder,
the claims will be fully examined for patentability. That means, in order
to be allowable, the process claims must meet all the criteria for patentability
including the requirements for utility, enablement, clarity, novelty,
and non-obviousness.
B) Another option is to file a divisional application (second application)
claiming benefit to the first application. This application would be an
exact copy of the first application including the specification, oath,
etc. You need to file this application while your first application is
still pending in order to claim benefit of the earlier application. The
Application Data Sheet needs to reflect the claim for benefit of the earlier
application, or the specification needs to be amended to contain a reference
to the earlier application in the first sentence of the specification,
for example, "This application is a divisional of US Application
SN_______, filed _____." On the Utility Patent Application Transmittal
form (PTO/SB/05), available on our website, you would also check the box
"Divisional” under item 18.
The restriction practice is often difficult to understand for inventors.
Your examiner who made the restriction requirement is an excellent resource
for the options available to you.
Alternatively, since restrictions practice is often case specific you
can contact the Inventors Assistance Center to discuss in greater detail.
800-786-9199
Guest (Oct 19, 2004 2:42:48 PM)
My examiner seems to have a poor grasp of the English language. I get
vague office actions, he does not give clear answers, he does not call
my attorney with little questions that could be cleared up in 20 seconds.
I want to know if it is possible to get another Examiner on my application.
(I've waded through 2 years of silly office actions and I have infringers
out there).
USPTO EXPERT
We have answered this question at the end of the chat.
Kayt (Oct 19, 2004 2:43:56 PM)
I am having trouble finding answers to my questions on the USPTO's website.
I find it a little perplexing. Perhaps I need an "Idiot's guide to
the USPTO".
USPTO Expert (Oct 19, 2004 2:44:55 PM)
You should contact the Inventors Assistance Center and speak to one of
the representatives there for answers to specific questions. Contact them
at 1-800-786-9199.
Dominique (Oct 19, 2004 2:45:09 PM)
I'm new to this and would like to know if I could learn to do an complete
and accurate patent search on my own that would be thorough enough to
depend on as being totally correct??? Thank you!
USPTO Expert (Oct 19, 2004 2:46:22 PM)
You can go to our web site or a Patent and Trademark Depository Library
located throughout the United States. There are skilled librarians that
can give you guidance on patent searching. To locate the library nearest
you to go our Patent and Trademark Depository Library web site, http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html
ODIN (Oct 19, 2004 2:46:26 PM)
Can I file a patent online if I am outside USA? Can get ePAVE?
USPTO EXPERT
Yes, Patent Attorneys and Independent Inventors, regardless of geographic
location, may file Patent Applications and follow-up on submissions to
the USPTO, securely over the Internet using the Electronic Filing Software
supplied by USPTO. Software may be downloaded from the USPTO web site,
http://www.uspto.gov/ebc/efs/downloads/downloadndx.htm or may be requested
by contacting the Patent Electronic Business Center (EBC). The EBC can
be reached at 866-217-9197 (toll-free) or 703-305-3028 or 703-308-6845
or via email at ebc@uspto.gov. For
Additional information regarding electronic filing please refer to the
main eFiling web page, located at http://www.uspto.gov/ebc/efs/index.html
Guest (Oct 19, 2004 2:48:37 PM)
How do I apply for a patent if not online?
USPTO EXPERT
Patents may be applied for either online or by mail. If filing by mail,
new applications for all types of Patents should be mailed to the following
address:
U.S. Department of Commerce
Patent and Trademark Office
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
For example, in order to file a Non Provisional Utility Patent Application,
please submit the following items to the address listed above:
1) Utility Patent Application Transmittal Form (Form PTO/SB/05)
http://www.uspto.gov/web/forms/sb0005.pdf
2) Executed Oath or Declaration (Form PTO/SB/01 or the like)
http://www.uspto.gov/web/forms/sb0001.pdf
3) Fee Transmittal Form (Form PTO/SB/17) and Appropriate Fee
http://www.uspto.gov/web/forms/sb0017.pdf
4) Application Data Sheet (See 37 CFR § 1.76) http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_76.htm
- cfr37s1.76
5) Specification (with at least one claim)
6) Drawings (when necessary)
7) Nucleotide and/or Amino Acid Sequence Listing (when necessary)
For a more detailed explanation of the filing requirements for a Non-Provisional
Utility Patent Application, please see the USPTO's website at http://www.uspto.gov/web/offices/pac/utility/utility.htm.
WINK (Oct 19, 2004 2:50:55 PM)
When a patent is accepted by the patent office for reexam, how long does
it take to finish and or what is the full time process window?
USPTO Expert (Oct 19, 2004 2:52:39 PM)
All re-exams are handled with special dispatch, i.e. the examiner takes
them out-of turn. It is difficult to put a time frame on it, since it
depending on the complexity of the prosecution and the number of actions.
We are not familiar with the term, "full time process window"
Hope this answers your question.
oldscout (Oct 19, 2004 2:54:20 PM)
What is ePAVE?
USPTO Expert (Oct 19, 2004 2:54:57 PM)
ePAVE stands for Electronic Packaging and Validation Engine This is the
software component for electronic filing. Go to http://www.uspto.gov/and
click on "patents"
szcombi (Oct 19, 2004 2:55:17 PM)
The English language on the USPTO is worded so that only lawyers can understand.
Do you have web page where everything is explained in a very simple language
to common man?
USPTO Expert (Oct 19, 2004 2:55:57 PM)
Yes, you can go to the Independent Inventors Resource page for "plain
language" http://www.uspto.gov/web/offices/com/iip/index.htm
Frustrated (Oct 19, 2004 2:56:55 PM)
Are you getting my posts?
USPTO Expert (Oct 19, 2004 2:58:17 PM)
Dear Frustrated, your questions was what to do if you don't feel the examiner
in charge of the application is providing assistance. We recommend that
you contact the examiner's supervisor for clarification and assistance.
That person’s title is SPE (Supervisory Patent Examiner).
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