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This is a transcript of the
on-line chat held on Tuesday, January 25, 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.
As in our previous chats held so far, we received hundreds more
questions than 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.
Jimmy Newtron (Jan 25, 2005 12:58:36 PM)
Here is my test question
USPTO Expert (Jan 25, 2005 12:59:02 PM)
Here is a test response.
USPTO Expert (Jan 25, 2005 2:01:37 PM)
Welcome to the Inventors On-Line Chat! We plan to begin the chat session
promptly at 2:00 PM. As in our previous chats we will not be able to answer
all the questions we receive, but we would like to point out that we have
compiled a FAQ (frequently asked questions) from our previous chats available
for your review at
http://www.uspto.gov/web/offices/com/iip/transcripts.htm.
You may find the answer in one of our previous chats. For those of you
submitting questions now, please remain logged in, we cannot post an answer
if you are no longer logged in and we do not give priority to questions
submitted prior to 2:00. Stay tuned.
Lanny (Jan 25, 2005 2:14:05 PM)
My provisional patent application expires in a month. Can it be renewed?
USPTO Expert2 (Jan 25, 2005 2:14:11 PM) (edited answer)
By law, provisional patent applications become abandoned 1 year after
filing. There is no way to renew or revive them. If you wish to have the
benefit of the filing date of your provisional application, you must file
your non-provisional application within one year from the filing date
of the provisional application.
Vanh (Jan 25, 2005 2:17:08 PM)
how much is a basic patent?
USPTO Expert2 (Jan 25, 2005 2:17:11 PM) (edited answer)
All USPTO fees are posted on our homepage,
http://www.uspto.gov
Click on "How to pay fees". Attorneys and other registered practitioners
set their own fees. The USPTO does not regulate or control these fees.
Please note that the USPTO fees are subject to change and you should refer
to our website for current fees.
mike w (Jan 25, 2005 2:17:56 PM)
Can we get a patent without an attorney?
USPTO Expert (Jan 25, 2005 2:18:27 PM)
You may file and prosecute your application yourself, but lack of familiarity
with patent laws and procedures may prevent you from obtaining the claims
that best protect your invention. The Office strongly suggests you hire
the services of a registered patent attorney or agent.
Magill (Jan 25, 2005 2:19:10 PM)
Hello, I was wondering about Companies like Davision & Assoc. Are
they reputable?
USPTO Expert (Jan 25, 2005 2:19:58 PM)
Complaints against invention promotion firms are available for viewing
at
http://www.uspto.gov/web/offices/com/iip/complaints.htm
or you may contact us at 1-866-767-3848.
tony (Jan 25, 2005 2:20:11 PM)
what are the proper steps to apply for a design patent?
USPTO Expert3 (Jan 25, 2005 2:21:27 PM)
The forms that need to be filed are PTO/SB 01(Declaration for utility
or design patent application), PTO/SB 17(fee transmittal form) and PTO/SB
18(design patent application form). With these forms you will also need
to file a drawing and specification along with the filing fee, search
fee and examination fee. You can also find on our web site a Guide to
Filing a Design Patent Application, which provides information about the
examination process and includes a sample specification on the last page.
kemdoit (Jan 25, 2005 2:21:49 PM)
How can you find a reputable patent attorney?
USPTO Expert (Jan 25, 2005 2:22:46 PM) (edited answer)
Our web site maintains a searchable roster of registered patent attorney/agents
available at
http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html
woodnw3 (Jan 25, 2005 2:22:54 PM)
What are the basic steps in obtaining a patent?
USPTO Expert2 (Jan 25, 2005 2:22:57 PM)
Contact our Inventor's Assistance Center at 1-800-786-9199 to request
a packet of information and ask specific questions on the patent process.
Jimmy Neutron (Jan 25, 2005 2:23:12 PM)
What is the difference between an independent and dependant claim?
USPTO Expert (Jan 25, 2005 2:25:40 PM)
An independent claim defines the metes and bounds of the invention by
describing the features of the invention. It stands alone and does not
refer to any other claim. Dependent claims depend from an independent
claim, i.e. they refer back to an independent claim and further limit
the independent claim generally by adding additional features.
JoeF (Jan 25, 2005 2:25:45 PM)
what document should I read if I intend file a design patent without an
attorney to get the best protection
USPTO Expert3 (Jan 25, 2005 2:27:58 PM) (edited answer)
On the USPTO web site you can find a brochure entitled A Guide to Filing
a Design Patent Application which provides information on how to file
a design patent application and the examination process. You can also
find the forms PTO/SB 01, 17 and 18 on the web site, can be used when
filing your application..
tkaestler (Jan 25, 2005 2:27:58 PM)
How long does the patent process generally take?
USPTO Expert2 (Jan 25, 2005 2:28:07 PM) (edited answer)
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.
Billy (Jan 25, 2005 2:28:14 PM)
My patent has expired due to non-payment of maintenance fees. I submitted
form SB 123 along with appropriate fees to have it reissued. What is the
likelihood it will indeed be reissued? If it is reissued, am I still fully
protected, or are there other steps I will have to take to ensure full
protection.
USPTO Expert (Jan 25, 2005 2:30:11 PM) (edited answer)
You can contact our Inventors Assistance Center at 1-800-786-9199 and
request to be transferred to the Office of Petitions, which handles these
inquiries. While you used the term “reissued”, we believe
you meant “revived”. There term “reissue” has
a specific meaning and is not related to patents that expire due to failure
to pay the maintenance fee.
Christine (Jan 25, 2005 2:30:18 PM)
I want to register my own consultancy company soon and I’ve been
looking for potential names. I saw on your website that one of the possible
names is already trademarked (live). Although it is for a product –
I will offer services – and in a different industry segment, do
you think I might run into trouble if I choose to take the same name?
What would you recommend I do? Also, the name is composed of two single
words, like for example “Big Day”. I am wondering if it might
make a difference at all if I would write it differently, let’s
say in a single word (“BigDay”) or with a hyphen (“Big-Day”)?
I appreciate any tips and advice you can give me on this. Thank you very
much for your help!
USPTO Expert3 (Jan 25, 2005 2:31:21 PM)
Trademark registrations for similar marks can co-exist on the register
so long as the goods or services identified in the registration are adequately
different so as not to raise a likelihood of confusion in the purchasing
public. That means, the public wouldn't think that those goods and services
are emanating from or sponsored by the same commercial entity. So depending
on the degree of difference between the goods and services, it's possible
to have similar marks registered for both. However, presenting a mark
as two words instead of one or with dashes is not considered a material
difference between marks. The way marks sound when spoken is significant
and these would sound the same.
MIKEY (Jan 25, 2005 2:31:26 PM)
Is it absolutely necessary to have a prototype first or can you patent
an idea?
USPTO Expert2 (Jan 25, 2005 2:31:31 PM)
You do not have to have a prototype or model of your invention to receive
a patent. You must describe your invention in such detail as to enable
anyone to make and use your invention. Additionally, your invention must
be new, useful and non-obvious.
gal (Jan 25, 2005 2:31:52 PM)
for a "software application" patent, is it necessary to specify
the intended end user platform or does the patent cover use on any platform?
USPTO Expert2 (Jan 25, 2005 2:32:17 PM) (edited answer)
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/com/hearings/software/analysis/computer.html.
kemdoit (Jan 25, 2005 2:32:22 PM)
Will we be able to get a transcript of this chat when it is over? There
are many links I would like to check on later.
USPTO Expert (Jan 25, 2005 2:32:39 PM)
Yes, the chat will be posted in approximately 2 weeks. The previous chats
are available for viewing at
http://www.uspto.gov/web/offices/com/iip/onlineiip.htm
Billy (Jan 25, 2005 2:33:04 PM)
I'd like to get a copy of the patent laws. However, the process to do
so is very confusing and lengthy.
USPTO Expert (Jan 25, 2005 2:35:06 PM)
Billy - Patent laws (35 USC) are available on our web site at
http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf
kirk (Jan 25, 2005 2:33:54 PM)
Are questions regarding trademarks permitted here?
USPTO Expert3 (Jan 25, 2005 2:34:03 PM)
Of course they are!
tmas (Jan 25, 2005 2:35:24 PM)
Last year my husband obtained a patent. He has another invention...it
has the same function as his last invention but a different implementation.
Can he revise the old patent or should he submit a new patent application?
USPTO Expert2 (Jan 25, 2005 2:36:09 PM) (edited answer)
Once a patent is issued it generally cannot be revised unless the patent
is considered to be wholly or partly in operative or invalid through error
without any deceptive intent. In such case, the patentee may file a reissue
application to correct the error. However, subject matter that does not
have support in the original application (that issued as a patent) cannot
be added to the reissue application. Based on what you said, your husband
should file a new application to obtain another patent on the new invention.
For more information on a reissue application, see the Manual of Patent
Examination Procedure (MPEP) 1400, http://www.uspto.gov/web/offices/pac/mpep/documents/1400.htm
kirk (Jan 25, 2005 2:36:14 PM)
I am confused on the usage of the (TM) symbol. Can I use the (TM) symbol
at will? Is this symbol governed or regulated by anyone, local Secretary
of State?
USPTO Expert3 (Jan 25, 2005 2:37:05 PM)
The use of TM simply means that the user is holding out the matter as
a trademark. It has no legal significance and is not regulated by an entity
at any level of government. The R in the circle may be used only when
a mark is registered at the USPTO and carries legal presumption that are
valuable in protecting one's trademark.
Sketch (Jan 25, 2005 2:37:44 PM)
Are US patents protected overseas? If not can they be?
USPTO Expert (Jan 25, 2005 2:38:23 PM) (edited answer)
No, US patents protect you only in the United States. Only by obtaining
a patent in each country can you get protection for your invention in
that country.
Danielle (Jan 25, 2005 2:39:09 PM)
Can you do a patent search without an attorney? If so, how?
USPTO Expert2 (Jan 25, 2005 2:39:12 PM) (edited answer)
You can do a preliminary patent search at the USPTO website, http://www.uspto.gov
or you can also do a search at your nearest Patent and Trademark Depository
Library (PTDL). There are 84 PTDL's located nationwide and in Puerto Rico.
The have qualified and experienced staff who can assist you. http://www.uspto.gov/go/ptdl/
gal (Jan 25, 2005 2:40:37 PM)
is there an area on the USPTO website that specifically addresses questions
regarding software applications and programs?
USPTO Expert (Jan 25, 2005 2:41:18 PM)
Yes, this information is available at http://www.uspto.gov/web/offices/com/sol/og/con/files/cons093.htm
and http://www.uspto.gov/web/offices/pac/compexam/examcomp.htm
Jimmy Neutron (Jan 25, 2005 2:41:52 PM)
What do I do if I think someone is copying my idea?
USPTO Expert (Jan 25, 2005 2:43:27 PM) (edited answer)
It depends on if you have patented the product or not. If it is patented,
you should seek the counsel of an attorney to enforce your rights. If
it is not patented, you may be able to file your own patent application.
However if your product has been on sale or in public use for more than
1 year you may be precluded from filing a patent application since the
law requires that a patent application be filed within one year of the
first public use or sale or offer for sale. We recommend that you seek
the advice of a registered patent attorney or agent.
RonHills (Jan 25, 2005 2:43:33 PM)
What are the fees to perform a search at a PTDL location?
USPTO Expert2 (Jan 25, 2005 2:43:37 PM)
There are no fees required to run a search at a PTDL.
kirksl (Jan 25, 2005 2:44:15 PM)
Does submitting a trademark in black and white vs color protect you against
all colors? The same applies for other specifics; does keeping it simple,
imply specifics you leave out?
USPTO Expert3 (Jan 25, 2005 2:44:42 PM)
The safest answer to give you is that you're protected for exactly what
is presented in your application for registration. If you file for a black
and white drawing, you may display the mark in color when actually using
it, but that doesn't necessarily protect you from other users of similar
colors. The same goes for other specifics - your clear protection is for
exactly what's set forth in your application.
Richard Speights (Jan 25, 2005 2:44:53 PM)
How complete is the online patent database? Can I do a complete patent
search online or will I have to go to one of the repositories to complete
my search?
USPTO Expert2 (Jan 25, 2005 2:44:55 PM)
The online patent database is substantially complete, missing only some
very old documents. However, the database is not text searchable for
documents issued prior to 1970. They must be searched using the US Patent
classification system or by patent number. Patents issued after 1970
are text searchable.
VTresearch (Jan 25, 2005 2:46:27 PM)
When researching prior art and including it in a patent application, how
does one determine what prior patents are appropriate to cite? I have
noticed that some applications reference a wide history of relevant patents,
while others only cite those of significant similarity.
USPTO Expert2 (Jan 25, 2005 2:46:48 PM) (edited answer)
We strongly encourage you to read and familiarize yourself with 37 CFR
1.56, http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf,
and the Manual of Patent Examination Procedure (MPEP) 2000 – Duty
of Disclosure. http://www.uspto.gov/web/offices/pac/mpep/documents/2000.htm
tkaestler (Jan 25, 2005 2:47:12 PM)
If two people come up with an idea together can both names be on the patent?
USPTO Expert (Jan 25, 2005 2:49:54 PM) (edited answer)
If both individuals created the claimed invention together then they must
apply for a patent jointly and both names must be listed and both must
sign the declaration for patent application. If a patent issues, both
inventors will be printed on the issued patent.
Billy (Jan 25, 2005 2:50:03 PM)
If I find an expired patent, what can I do to have it reissued in my name?
What are the steps to making someones expired patent work for me??
USPTO Expert2 (Jan 25, 2005 2:50:05 PM)
Patents are only issued to the original inventor of the invention. An
expired patent cannot be reissued in another inventor's name.
c2020 (Jan 25, 2005 2:50:53 PM)
Does the online search database contain the non-provisional patent applications
or only actual issued patents?
USPTO Expert2 (Jan 25, 2005 2:51:00 PM) (edited answer)
The database contains all patent applications which were published 18
months after their filing date, and all issued patents.
Rog (Jan 25, 2005 2:51:30 PM)
Not sure if this got through earlier, question: Should any claims be stated
on a provisional application?
USPTO Expert2 (Jan 25, 2005 2:51:33 PM)
You may include one or more claims in a provisional application, but it
is not required.
InspectorGadget (Jan 25, 2005 2:52:41 PM)
Does a trademark or copyright take as long to approve as a patent, in
general?
USPTO Expert3 (Jan 25, 2005 2:54:11 PM)
A Copyright is a relatively quick process because it is a deposit system
that has very few threshhold requirements. A trademark usually takes less
time to approve than a patent, but the exact time period depends on the
complexity of the trademark prosecution and whether there is a challenge
from an outside party in the form of an opposition. That would take place
before issuance of the registration and could take many years.
arjuna (Jan 25, 2005 2:54:40 PM)
Why are the patents prior to 1970 not text searchable?
USPTO Expert2 (Jan 25, 2005 2:54:42 PM) (edited answer)
The patents issued prior to 1970 are searchable by US patent classification.
A trained librarian at a PTDL can show you how to do a classification
search. There is a significant cost to make them text searchable.
Jeffe (Jan 25, 2005 2:55:06 PM)
What is the difference between a published and issued patent?
USPTO Expert2 (Jan 25, 2005 2:55:15 PM) (edited answer)
We will answer this first presuming that you meant “what is the
difference between and published application and issued patent.”
We will limit this answer to practice in the United States. A U.S. patent
grants to the owner a legal right to exclude others from making, using
the claimed invention for a specified period of time. In addition, a patent
also includes the right to obtain reasonable royalty during the period
beginning on the date of publication of the application and ending on
the date the patent issues. See 35 U.S.C. 154(d), http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf
. You can only enforce all these rights after the patent issues. You cannot
enforce these rights with just a patent application publication.
If your question was correct as drafted and wanted to know “the
difference between a published and issued patent”, the term “published
patent” is not a conventional one and has no defined meaning to
us. The more common term is “patent issue date”, which is
the date that the patent was granted by the USPTO, and the date that the
right to exclude others begins.
Sketch (Jan 25, 2005 2:55:47 PM)
How long is a design patent valid? Can it be renewed or extended?
USPTO Expert3 (Jan 25, 2005 2:56:08 PM)
A design patent is issued for 14 years and cannot be renewed or extended.
Billy (Jan 25, 2005 2:56:10 PM)
This is all very interesting. Do you have these live chats every month?
USPTO Expert (Jan 25, 2005 2:56:52 PM)
Yes, we do. Check our homepage in a couple of weeks, we will post the
transcript and the date for the next chat.
nib (Jan 25, 2005 2:56:56 PM)
Not sure if submitted my question properly earlier. Does the first named
author on a patent have any advantages, legal or otherwise, over other
authors named on that patent?
USPTO Expert2 (Jan 25, 2005 2:56:58 PM) (edited answer)
The particular order in which the names appear on the patent is of no
consequence insofar as the legal rights of the joint applicants are concerned.
See MPEP 605.04(f), http://www.uspto.gov/web/offices/pac/mpep/documents/0600_605_04_f.htm#sect605.04f
c2020 (Jan 25, 2005 2:57:26 PM)
I notice some of the questions I asked are being answered, while others
are not. Should I expect the rest of the answers in a written transcript,
even if you don't explicitly state so in your answer?
USPTO Expert (Jan 25, 2005 2:57:55 PM)
No, we receive hundreds of questions and cannot answer all of them in
the time allowed.
kirksl (Jan 25, 2005 2:58:05 PM)
Why would I submit an application for trademark now under "intent
to use" instead of waiting until I am actually providing goods or
service? Securing the earlier filing date if legality arises? Faster registration
once the Allegation of Use is instated? Can implement the (R) quicker?
USPTO Expert3 (Jan 25, 2005 2:59:42 PM)
The main reason would be to get an earlier filing date. Once the mark
is registered (IF it registers) your filing date becomes your presumptive
date of first use and your registration can be used against possible infringers
who may have filed after your Intent to Use application even if their
applications were based on actual use that was later than your filing
date. However, it doesn't affect the speed with which you get your registration
or can use the circle R.
Falcon (Jan 25, 2005 2:59:43 PM)
If I present my idea to the public for market research purposes does that
start the one year clock for public use or sale?
USPTO Expert2 (Jan 25, 2005 2:59:46 PM)
Yes, once your invention is publicly disclosed the one-year clock starts
running.
terry (Jan 25, 2005 2:59:58 PM)
What does a copyright do for you?
USPTO Expert (Jan 25, 2005 2:59:59 PM)
Copyrights fall under the Library of Congress, for information about copyrights
go to:
http://www.copyright.gov/
Jai (Jan 25, 2005 3:00:42 PM)
Can a utility patent be approved for a product that another person has
a design patent on? Example if there is a packaging product that can actually
be packaged, sold as, and has a use as the actual product vs. external
packaging.
USPTO Expert2 (Jan 25, 2005 3:01:55 PM) (edited answer)
There is not a yes or no answer. It depends on what is claimed in the
utility application and what is disclosed in the design patent. Drawings
and pictures can anticipate claims if they clearly show the structure
which is claimed. However, the picture must show all the claimed structural
features and how they are put together. The origin of the drawing is immaterial.
For instance, drawings in a design patent can anticipate or make obvious
the claimed invention, as can drawings in utility patents. When the reference
is a utility patent, it does not matter that the feature shown is unintended
or unexplained in the specification. The drawings must be evaluated for
what they reasonably disclose and suggest to one of ordinary skill in
the art.
hgb (Jan 25, 2005 3:02:05 PM)
If the Patent Office withdrawals issuance of a application and the Examiner
then issues a Final Office Action, can the finality of the Action be challenged?
USPTO Expert (Jan 25, 2005 3:03:38 PM) (edited answer)
Yes, if you do not agree with the "finality" of the Office action,
you can petition to have the finality withdrawn. If you do not agree with
any rejection in a Final Office action or an application that is twice
rejected, you can appeal to the Board of Patent Appeals and Interferences.
carl (Jan 25, 2005 3:04:12 PM)
I am going this week to Arlington to file 2 provisional patents I was
told to include drawings and a complete description is there something
frequently forgotten or overlooked I should be aware of
USPTO Expert (Jan 25, 2005 3:05:20 PM)
Be sure to include the required fee, $100.00 for small entity, a provisional
application cover sheet, a description of the invention, and drawings
if necessary for the understanding of the invention.
hgb (Jan 25, 2005 3:05:27 PM)
What can I do about an Examiner who is unfairly prejudiced against me?
USPTO Expert2 (Jan 25, 2005 3:05:34 PM)
If you feel your examiner is not treating you fairly you should contact
the examiner's supervisor.
Twest (Jan 25, 2005 3:06:14 PM)
is there a number I can call to find out more info on getting a patent
USPTO Expert (Jan 25, 2005 3:06:30 PM)
You can contact the Inventors Assistance Center at 1-800-786-9199. |
