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This is a transcript of the on-line chat held on Tuesday, September
20, 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 (Sep 20, 2005 2:07:37 PM)
We will begin the chat promptly at 2:00pm. Before we begin today we would
like to remind all of you about protecting yourself against identity theft
when submitting information to the USPTO. When filing documentation in
support of applications or petitions, please take steps to protect all
personal information. “Personal information” includes social
security, credit card and banking account numbers. This type of personal
data is never required by the USPTO to support a petition or application.
To protect your privacy, we suggest that you delete such information from
any documentation you send the office. Alternatively, you may request
that the submissions be kept out of the public file, if appropriate. (See
MPEP Sections 724. 02 to 724.06.)
taruspet (Sep 20, 2005 2:16:37 PM)
I had an idea and started to make contact with an invention promotion
Company they asked me to e-mail my idea. I did not think that was a smart
thing to do. I found the USPTO website. From the resources and info on
the site I was able to file a PPA. I then took a print out to a patent
attorney he. He made a breif assesment and said the document was well
written and only needed formal drawings. Thank God for the way the USPTO
is structured. Help is a phone call away and information is a click away.
USPTO Expert (Sep 20, 2005 2:17:30 PM)
Thanks for the compliment, so others may get the information as well,
please visit our Inventors Resource page at http://www.uspto.gov/web/offices/com/iip/index.htm
Guest (Sep 20, 2005 2:18:01 PM)
I need to submit a form. I might not be getting the corrected name, but
I think it is the intention to continue to use the trademark in commerce.
USPTO Expert3 (Sep 20, 2005 2:18:55 PM)
If your mark is registered, you will need an Affidavit under Section 8
in which you provide information about your continued use of the registered
mark. It must be filed between the 5th and 6th year of registration.
keraj (Sep 20, 2005 2:19:04 PM)
What are the chances of allowing a patent if one do not go through a patent
attorney? Can one file one provisional patent which contains more than
one invention?
USPTO Expert (Sep 20, 2005 2:22:48 PM) (Edited answer)
KERAJ: There are no requirements that you must use a registered patent
attorney or agent. However the process of securing a patent can be complicated
and the Office strongly suggests using the services of a registered patent
attorney or agent. A listing is available at: http://www.uspto.gov/web/offices/dcom/olia/oed/
More than one invention may be described in a single provisional application.
Note that a provisional application is not examined and a patent cannot
issue from that provisional application. If you wish to obtain a patent
after you have filed a provisional application, you must file a non-provisional
application no later than one year after the filing of the provisional
ap0plication. If the non-provisional application contains claims to more
than one invention, the examiner may make a restriction requirement and
require you to elect claims to one invention for examination in the non-provisional
application.
Annie (Sep 20, 2005 2:22:28 PM)
Do I need to send in the following with my utility invention hardcopy?
The Fee Transmittal Form (Form PTO/SB/17) Utility Patent Application Transmittal
(Form PTO/SB/05) Application Data Sheet (see 37 CFR § 1.76) Specification,
Drawings Oath or Declaration- Forms PTO/SB/01, PTO/SB/01A, PTO/SB/02,
and PTO/SB/02LR Post card Fee of $150 + $250+100
USPTO Expert (Sep 20, 2005 2:24:46 PM)
Annie: No forms are required, however we suggest you use the forms you
mentioned with the exception of only 1 oath or declaration form is needed.
Everything else you mentioned is correct.
ace (Sep 20, 2005 2:24:53 PM)
Is an applicant allowed to make voluntary amendment (specification/claim)
before first OA, in response to first OA, and after the first OA which
indicates all claims are allowed?
USPTO Expert (Sep 20, 2005 2:26:52 PM) (Edited answer)
Ace: You may amend your application before first Office action (this is
called “preliminary amendment” and preliminary amendments
are governed by 37 CFR 1.115), or in response to a first Office action
(amendments filed in reply to a first Office action are governed by 37
CFR 1.111). All amendments must comply with 37 CFR 1.121 (manner of making
amendments) and no amendment may introduce new matter into the disclosure
of an application. After all claims are allowed your right to amend is
limited.
Paul (Sep 20, 2005 2:27:47 PM)
Do claims have to be backed up by scientific literature or evidence?
USPTO Expert (Sep 20, 2005 2:30:03 PM) (Edited answer)
All patented inventions must be operable. While initially you don't have
to provide evidence that an invention is operable, an examiner may reject
a claim as being inoperable. In this instance you would be required to
prove the invention is operable.
bill (Sep 20, 2005 2:30:11 PM)
If a product name for your invention is within the text of the patent
pending, and the name was not trademarked by anyone before the date of
this patent's filing, would the patent applicant have priority to trademark
that name later on (by virtue of a kind of patent umbrella if you will)?
USPTO Expert3 (Sep 20, 2005 2:30:14 PM)
If the term is used in the patent as a generic or descriptive term, it
would probably not be considered as being used as a trademark and, therefore,
entitled to claiming that use as a use of the mark. If the term is used
as a trademark , the user may be entitled to claim first use priority
against later users. Of course, if you used the term as a mark before
the filing of a patent, you would be the holder of the priority first
use date.
lf (Sep 20, 2005 2:30:49 PM)
I have applications filed in August 2003, pre-assigned to art unit 2673
and 2674. I haven't heard from PTO except for reception and publication
notice, can you tell me the status of these two art units?
USPTO Expert (Sep 20, 2005 2:34:34 PM) (Edited answer)
One can check on the status of applications in the art unit by checking
the OG notices. For example, go to http://www.uspto.gov/,
then click on Patents, under the heading “Search Aids” click
on OG (Official Gazette) then click on 2005, week 38, then scroll down
to the Technology Centers specific to your application. It will give you
the average filing date of application receiving a first office action
in the last 3 months. 2670 includes the two art units that you mentioned
and the average filing date of application receiving a first Office action
in the 3 months is 8/11/03.
Ja (Sep 20, 2005 2:35:04 PM)
I have a great idea for a patent, what do I do next?
USPTO Expert3 (Sep 20, 2005 2:35:03 PM)
Do your homework - search the USPTO website for prior published patents
or published applications. Visit the Inventors' Resource page and contact
your local inventor group.
CatamountCountry (Sep 20, 2005 2:35:42 PM)
If I am approved for a trademark in Vermont what rights does that give
me nationally? ie a logo for a T-Shirt?
USPTO Expert3 (Sep 20, 2005 2:36:52 PM)
Having a state registration does not give you any national rights. Only
registration with the USPTO would give you nation-wide rights in your
mark. A logo for a T-Shirt can be registered as a trademark with certain
qualifications. You should look in the TMEP for more information on this
specific topic.
CK (Sep 20, 2005 2:37:02 PM)
Can a board game be patented? And if so, how can I see current board games
that have been patented? Also, how much different does one game need to
be from another?
USPTO Expert (Sep 20, 2005 2:37:34 PM) (Edited answer)
Yes, a board game can be patented. You can see examples by conducting
a search on our web site, go to http://www.uspto.gov/patft/index.html
. For information regarding whether you invention is patentable or not,
go to the Inventors’ Resource page on the USPTO web site.
LdyLex (Sep 20, 2005 2:37:44 PM)
Is there a person I can contact who can walk me through the patent process?
USPTO Expert (Sep 20, 2005 2:38:16 PM)
You can contact our Inventors Assistance Center at 1-800-786-9199.
Drew (Sep 20, 2005 2:38:51 PM)
How expensive is it to file a Patent?
USPTO Expert (Sep 20, 2005 2:40:00 PM) (Edited answer)
Drew, our fee schedule is available at http://www.uspto.gov/web/offices/ac/qs/ope/fee2005oct01.htm
elistl (Sep 20, 2005 2:40:32 PM)
If one has a complete the design and build of his invention. Would it
be a good idea to provide the USPTO with the actual product?
USPTO Expert (Sep 20, 2005 2:41:18 PM) (Edited answer)
Unless requested by the examiner, it is not necessary to provide a model
of your invention or the actual product. Your specification and drawings
must sufficiently describe your invention.
Drew (Sep 20, 2005 2:42:26 PM)
If I file for a Trademark in the State of Calif. is it still good in all
other of the United States?
USPTO Expert3 (Sep 20, 2005 2:42:42 PM)
See the response to the CatamountCountry inquiry posted earlier.
Big Al (Sep 20, 2005 2:44:17 PM)
If an application is made for an idea in it's broadest sence, does the
USPTO make the determination of how broad the scope of the patent can
be?
USPTO Expert (Sep 20, 2005 2:45:08 PM) (Edited answer)
The USPTO examiner will review the application when filed and will make
a search of the prior art. If a claim is too broad because it is not supported
by the description in the application as originally filed, or by a n enabling
disclosure, the examiner will reject the claim under 35 U.S.C. 112, 1st
paragraph. If a claim is too broad because it reads on the prior art (the
claim is supported by the description), the examiner will reject the claim
under either 35 U.S.C. 102 or 103, as appropriate.
DonnaG (Sep 20, 2005 2:45:11 PM)
three years ago I submitted an application for a patent. Since then there
have many applications filed with the same idea as mine. Shortly after
filing my application I sent flyers out ot all possible customers. shortly
after my idea was being used and now being used. How can I expite my application
to be come a patent.?
USPTO Expert3 (Sep 20, 2005 2:46:43 PM)
You may file a petition to make your application special based on potential
infringement. See MPEP 708.02 for more information. The MPEP link is available
at the site index at the USPTO website – http://www.uspto.gov/
STEPH (Sep 20, 2005 2:47:02 PM)
I signed a confidentiality agreement with a invention company but have
not agreed to their terms or sent any money. They are interested in the
invention but I have decided not to use them. Any advise on how to move
forward without their services. They are asking for $2100 for a prelininary
patentability search PPS.
USPTO Expert (Sep 20, 2005 2:49:22 PM)
The Office strongly suggests you review information we have that all inventors
should be aware of before doing business with any invention promotion
firm, go to http://www.uspto.gov/web/offices/com/iip/index.htm.
As far as moving forward get information from our Office about the patent
process, consider the public library for self help books or look for a
local inventors group at www.uiausa.org
Wanda (Sep 20, 2005 2:49:41 PM)
I let my patent attorney know of my address change...should I notify the
USPTO Both of us have gotten correspondence from them
USPTO Expert3 (Sep 20, 2005 2:49:45 PM)
Once you have an attorney, we only deal with that attorney. We do not
provide dual correspondence sent to both the applicant and his or her
attorney.
JimLundberg (Sep 20, 2005 2:50:27 PM)
Does Canada recognize a US patent or do we have to file there also?
USPTO Expert (Sep 20, 2005 2:50:36 PM)
US patents protect your invention only in the US. You must file separately
in every country in which you want patent protection.
mikee (Sep 20, 2005 2:51:24 PM)
I have asked the question of about how long the patent proscess takes
and cannot see previous posts concerning this question. Could you please
advise?
USPTO Expert (Sep 20, 2005 2:52:10 PM)
Our backlogs are technology specific. Presently the time runs from 14
months to 4 years.
chris (Sep 20, 2005 2:52:24 PM)
What recourse do I have for someone who took my demo of a product that
I applied for a patent 3 years ago and have had on market for 1 year and
they are trying to say it is there idea with 1 change on it
USPTO Expert (Sep 20, 2005 2:52:52 PM)
You should consult with a patent attorney for legal advice. Our roster
is available at http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html
forlwb (Sep 20, 2005 2:53:50 PM)
Is my question being posted. I can't double click for any private conversations
with anyone. Help!
USPTO Expert3 (Sep 20, 2005 2:55:42 PM)
We get many more questions than we can possibly answer in this session.
We try to answer those questions that would provide information to the
greatest number of participants. For further information or help with
a question we aren't able to get to in this session, call the Inventors'
Assistance Center at 800-786-9199.
Bren (Sep 20, 2005 2:56:00 PM)
I would Like to know if after a Disclosure Document has ran out if you
can get an extention.
USPTO Expert (Sep 20, 2005 2:57:02 PM) (Edited answer)
There are no extensions for disclosure documents. For information about
the disclosure document program, go to http://www.uspto.gov/web/offices/pac/disdo.html
pjiang (Sep 20, 2005 2:57:45 PM)
what is a normal licensing fee as a percentage of sales for a mechanical
product?
USPTO Expert (Sep 20, 2005 2:58:53 PM)
The USPTO has no authority relative to licensing, you may go to the Licensing
Executive Society at http://www.les.org
for information.
Drew (Sep 20, 2005 3:00:13 PM)
can you manufacture and sell a product before you get your applied for
patent, or do you have to wait 14 months to 4 years for an answer... seems
like a long long time to wait.
USPTO Expert (Sep 20, 2005 3:01:04 PM) (Edited answer)
You can manufacture and market your product at any time. However, if your
product is in public use in the U.S., or you sell or offer it for sale
more than one year in the U.S. before you file your application, you will
barred from obtaining a patent.
Fred G. Meyer (Sep 20, 2005 3:01:21 PM)
What kind of legal protection do I have in the time between application
and registration?
USPTO Expert3 (Sep 20, 2005 3:01:23 PM)
We are assuming you are talking about trademark registration since there
is no registration of patents - patents are issued, not registered. If
you filed your trademark application based on actual use of the mark,
you have some protection dating from your actual first use of the mark.
If you filed your trademark application based on an intention to use the
mark, your rights you related back to the application date is your application
matures into a registration.
forlwb (Sep 20, 2005 3:02:03 PM)
What happens after a continuation in part is filed and it's been 2 years
since any correspondence?
USPTO Expert (Sep 20, 2005 3:02:25 PM)
You should contact the examiner in charge and inquire about it's status
or check the status in PAIR.
elistl (Sep 20, 2005 3:02:32 PM)
Can I start by submiting my idea to the USPTO and later on have an attorney
involved to further protect my rights?
USPTO Expert (Sep 20, 2005 3:04:43 PM)
Yes, you can file your application without an attorney and later appoint
an attorney.
dstanley (Sep 20, 2005 3:04:48 PM)
what if your patent can cross international grounds via internet
USPTO Expert3 (Sep 20, 2005 3:04:52 PM)
If you want to do business in other countries you need to obtain patent
protection in each country you do business in. You need to consult an
attorney on how to proceed.
ace (Sep 20, 2005 3:06:51 PM)
If I am not satisfied with the allowed claims of my application, can I
file a continuation or continuation in part application with amended claims
and let the original application go abandoned?
USPTO Expert3 (Sep 20, 2005 3:07:27 PM)
Yes, but you have to file the continuation or continuation in part before
the original goes abandoned.
forlwb (Sep 20, 2005 3:07:37 PM)
What does check status in PAIR mean and can I just call up the USPTO and
give them the inventor name and they will tell me the status?
USPTO Expert (Sep 20, 2005 3:06:48 PM)
PAIR is the Patent Application Information Retrieval system available
at http://portal.uspto.gov/external/portal/pair
or contact the examiner
lf (Sep 20, 2005 3:09:04 PM)
How can I find the examiner of my application before the first OA?
USPTO Expert (Sep 20, 2005 3:11:20 PM)
Generally for most of our technologies applications are being assigned
to the supervisor first who will assign it to an examiner when it gets
closer to the expected date of first action. Contact the supervisor for
more information.
Orbit (Sep 20, 2005 3:11:43 PM)
What is the average time period to register a trademark? Does having a
registered TM at all protect your application for a patent, prior to patent
issue?
USPTO Expert3 (Sep 20, 2005 3:12:35 PM)
The time varies greatly - the shortest time is about one year. Other than
that, it depends on the amount of correspondence between the USPTO and
the applicant. Having a registered trademark has no relevance regarding
your rights in your patent application.
JimLundberg (Sep 20, 2005 3:13:28 PM)
Is there a link where we can find instructions on renewing our patents?
USPTO Expert (Sep 20, 2005 3:14:17 PM)
Patents are not renewable, in rare circumstances the term may be extended,
see http://www.uspto.gov/web/offices/pac/dapp/opla/term/index.html
for additional information.
inventor (Sep 20, 2005 3:14:23 PM)
What does IFW TSS Processing by Tech Center Complete mean?
USPTO Expert (Sep 20, 2005 3:15:35 PM)
This is really an internal code for PTO staff, but It means that our technical
support staff are processing the application in image format.
JimLundberg (Sep 20, 2005 3:15:49 PM)
Is there a link where we can get the status of a Trademark?
USPTO Expert (Sep 20, 2005 3:16:49 PM)
Yes, go to http://tarr.uspto.gov/
Big Al (Sep 20, 2005 3:17:05 PM)
Thank you for these answers. When is the next online dialogue?
USPTO Expert (Sep 20, 2005 3:19:42 PM)
Thank you Big Al, our next chat will be sometime next month and will be
posted on the homepage. The transcript from this chat will be posted in
the next 7 days on the homepage. Previous chat questions are also posted
at http://www.uspto.gov/web/offices/com/iip/onlineiip.htm.
You can also contact the Inventors Assistance Center at 1-800-786-9199.
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