| This is a transcript of the on-line chat held on Thursday, October 25, 2007. 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: (Oct 25, 2007 1:46:48 PM)
Welcome to the Inventors On-Line chat, we will begin answering questions at 2:00 pm. Please note that all questions posted are not answered, we try to select the questions that appeal to the overall audience. While you wait for the chat to go live you may want to visit our transcripts from previous chats at http://www.uspto.gov/web/offices/com/iip/transcripts.htm.
USPTO Expert: (Oct 25, 2007 2:14:19 PM)
We apologize for the incorrect URL posting and have taken expedited steps to correct that. Please begin posting your questions for review.
Glenda: (Oct 25, 2007 2:17:34 PM)
Hi. After I file a patent and I want to make improvements to my product, do I need to advise the patent office of the improvements to my product?
USPTO Expert: (Oct 25, 2007 2:18:11 PM) EDITED ANSWER
No, you do not have to tell us about your improvements unless you want to seek patent protection for the improvement. You would need to file an application on the improvement if you want patent protection for the improvement.
Nate: (Oct 25, 2007 2:21:37 PM)
I heard there are new rules that give broader power to US Patents internationally (within many countries). If I file a US patent, does it give any protection in Europe, Japan, etc. by itself, or do I also need to file a PCT or for patents in each country/region?
USPTO Expert: (Oct 25, 2007 2:22:10 PM)
Yes you will need to file an application in each country that you would like to seek patent protection. PCT does not give you global patent protection. Please see http://www.uspto.gov/web/offices/pac/dapp/pctlegaladminmain.html for additional information.
Tvasq: (Oct 25, 2007 2:22:53 PM)
Is there someone/somewhere I can get help understanding the language of patents when I do a search? I'm not sure if I have found a patent that is similar because I was unsure of the "language" used to describe the item.
USPTO Expert: (Oct 25, 2007 2:30:51 PM)
To answer Tvasq's question, you should go to your local Patent and Trademark Depository Library. The personnel there can lead you to resources that can help you understand the language used in patents as well as patent attorneys and agents who can assist you. The URL for the libraries is http://www.uspto.gov//web/offices/ac/ido/ptdl/index.html.
Glenda: (Oct 25, 2007 2:27:06 PM)
Thank you. Also, what if I want to change the name of my product? Do I need to do anything with the patent office?
USPTO Expert2: (Oct 25, 2007 2:36:43 PM)
Glenda, the name of the product protected by your patent sounds like you're referring to a trademark for those goods. If you are referring to the brand name by which your product is or will be known by the public, you should look into filing an application to register that name as a trademark.
Hummingbird King: (Oct 25, 2007 2:27:42 PM)
Is there information I can obtain regarding patent services and the pros and cons?
USPTO Expert: (Oct 25, 2007 2:27:10 PM)
The Office provides basic information on our web site concerning patents at http://www.uspto.gov/web/offices/com/iip/index.htm. If you are looking for information concerning complaints the office has received you can find them on this page as well.
lois: (Oct 25, 2007 2:32:21 PM)
How does a Servicemark protect us differently from a trademark?
USPTO Expert2: (Oct 25, 2007 2:32:24 PM)
A registered service mark has the same protection as a trademark. The difference is that a service mark is used on services such as banking, restaurants, insurance agencies, etc. while a trademark is used on goods such as furniture, clothing, software, etc.
Peter: (Oct 25, 2007 2:33:23 PM)
When applying for a patent do you have to disclose the name of your assignee if you have one?
USPTO Expert: (Oct 25, 2007 2:34:09 PM)
While it is recommended, it is not required to file your assignment document with the USPTO.
Mattie: (Oct 25, 2007 2:34:18 PM)
Do most inventors use a patent attorney and how do we go about finding a good one in our area?
USPTO Expert: (Oct 25, 2007 2:34:20 PM)
The USPTO does not suggest attorneys. There is a link on our web site of registered patent attorneys/agents, http://www.uspto.gov/web/offices/dcom/gcounsel/oed.htm. You can also check with local inventors groups. Try to find one that is familar with your technology.
Parker: (Oct 25, 2007 2:35:25 PM)
What is the average cost of a patent, and what is the average cost for a Patent Attorney or Patent Agent?
USPTO Expert: (Oct 25, 2007 2:36:23 PM)
The Office has no oversight over attorney/agent fees. The USPTO fees can be found on the Inventors Resource Page at http://www.uspto.gov/web/offices/com/iip/index.htm.
Nick: (Oct 25, 2007 2:37:16 PM)
When is the USPTO going to select the new members for the Patent Public Advisory Committee (PPAC)? The USPTO posted a request for nominations in June 2007 in the Federal Register (docket PTO-C-2007-0023).
USPTO Expert: (Oct 25, 2007 2:37:49 PM) EDITED ANSWER
All nominations are currently being considered. The terms of three members on the PPAC ends on December 3, 2007.
Jerry: (Oct 25, 2007 2:37:54 PM)
Would the name of a store be servicemark or trademark?
USPTO Expert2: (Oct 25, 2007 2:37:58 PM)
A retail store can be the subject of a service mark application.
JimmyNeutron: (Oct 25, 2007)
I have an invention that I have been using for 30 years can I apply for a patent.
USPTO Expert: (Oct 25, 2007 2:40:20 PM)
Unfortunately a 30 year invention that has been in public use is not entitled to patent protection. If an invention has been in public use for more than 1 year you are barred from seeking patent protection.
Motiksnipil: (Oct 25, 2007 2:40:55 PM)
If I want to process a patent application for an internet process (online application at a web site) which type of patent am I applying for?
USPTO Expert: (Oct 25, 2007 2:43:03 PM)
Your invention would be considered a utility patent application. There are no special filing requirements for this type of application. http://www.uspto.gov/web/offices/pac/utility/utility.htm.
Ladyl: (Oct 25, 2007 2:43:36 PM)
Where can you register for a trademark online?
USPTO Expert2: (Oct 25, 2007 2:44:55 PM)
You can do that at the USPTO website using either the TEAs or TEAS Plus application form. These forms are available at http://www.uspto.gov/teas/index.html.
Jimmy Neutron: (Oct 25, 2007)
How do I found basic information about patents?
USPTO Expert: (Oct 25, 2007 2:45:10 PM) EDITED ANSWER
You can visit our Inventors Resource Page at http://www.uspto.gov/web/offices/com/iip/index.htm, where the brochure, General Information Concerning Patents and A Guide to Filing a Utility Application can be found. And you can contact our Inventors Assistance Center at 1-800-786-9199 for answer to specific questions.
Smard: (Oct 25, 2007 2:47:31 PM)
Where can I find other archived chats hosted by USPTO?
USPTO Expert: (Oct 25, 2007 2:48:22 PM)
All previous chat questions and answer are posted at http://www.uspto.gov/web/offices/com/iip/onlineiip.htm. You can find answer to many of your questions there.
Basicjazz: (Oct 25, 2007 2:48:32 PM)
what is the cost to file for a trademark or to register a name of your product. And can a book name be registered.
USPTO Expert2: (Oct 25, 2007 2:48:34 PM)
The cost of filing for a trademark registration is dependent on the number of classes included in your application and the nature of the application process you choose to use. There are also additional fees if your application is based on an intent to use the mark in commerce. These fees and more information on trademark application filing is available at the USPTO website at http://www.uspto.gov/web/trademarks/workflow/start.htm.
JimmyNeutron: (Oct 25 2007)
What is the difference between a utility and a design application?
USPTO Expert: (Oct 25, 2007 2:51:36 PM)
A design patent only protects the way an article “looks,” i.e. size, shape, configuration, dimensions, overall appearance. A design patent only has one claim and the claim refers to “the ornamental design for the article (specify name) as shown or as shown and described.” The term of a design patent is 14 years from the date of grant. A utility patent protects the way an article is used or works. A utility patent can have more than one claim. The term of a utility patent filed on or after June 8, 1995 is generally 20 years measured from the U.S. filing date. For additional information regarding the differences between a utility patent and a design patent, see MPEP 1502.01 (http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r5_1500.pdf).
Sara: (Oct 25, 2007 2:53:31 PM)
Hi and thanks for having this Q & A session. I have 3 questions that all kind of inter-related. (i) If I want to produce a product that already exists in the market place and has already been granted a patent, would I be infringing on their patent protection even if my product has significant differences and modifications? (ii) What are the chances of being granted a patent if the product functionality is similar but not exactly the same because of these modifications? (iii) Can you explain the "Test of Obviousness"? Thanks again for all your help...
USPTO Expert: (Oct 25, 2007 2:53:28 PM)
The response to (i) and (ii) leans more to legal advice and you should probably contact a registered patent practitioner to obtain an opinion on these questions. The USPTO does not provide legal opinions on infringement and cannot provide an opinion regarding whether something is patentable or not without the filing of a patent application. As to (iii), the Office applies the inquiries set forth by the Supreme Court in Graham v. John Deere to determine obviousness. The examiner (1) determines the scope and content of the prior art, (2) ascertains the differences between the prior art and the claims in issue, and (3) resolves the level of ordinary skill in the pertinent art. The examiner will also evaluate evidence of secondary consideration. See MPEP 2141 (http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r6_2100.pdf). The examiner then determines whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.]
JMB: (Oct 25, 2007)
I have a mark that I am not using yet in commerce, can I file with your Office now or should I wait until I am actually using it?
USPTO Expert2: (Oct 25, 2007 2:54:04 PM)
JMB - in response to your question, you can file an intent to use (ITU) application at any time - provided you have a bona fide intent to use the mark in the application in commerce and that use will happen within about four years of filing your application. While there is an extra step with an additional cost if you file an ITU application, you have the benefit of being "in line" before you would be if you waited until you were actually using the mark in commerce. But the decision is yours
J.W.: (Oct 25, 2007 2:55:38 PM)
How long after your application is in the USPTO office and it is ready for examination does it take to get the actual patent?
USPTO Expert: (Oct 25, 2007 2:57:00 PM)
The issuance of a patent can take anywhere from 12 -36 months depending on how we classify your invention.
Amoraroca: (Oct 25, 2007 2:58:06 PM)
Can someone who is not an lawyer complete the patent process
USPTO Expert: (Oct 25, 2007 2:58:55 PM)
The Office has no requirement that your application be filed by an attorney/agent, however if you are not familiar with the patent process you are strongly encouraged to use the services of a registered practitioner.
Mon78: (Oct 25, 2007 3:01:48 PM)
Can I file a provisional patent application with more than one invention? Or do I need to file a separate provisional application for each invention?
USPTO Expert: (Oct 25, 2007 3:01:51 PM) EDITED ANSWER
Provisional application are not examined by the Office, you should fully disclose what your invention is without regards to how the inventions might be divided upon filing a non-provisional application.
Stacy: (Oct 25, 2007 3:02:18 PM)
Where can I get a transcipt of this chat next week? I got on late and would like to have the entire chat.
USPTO Expert: (Oct 25, 2007 3:02:27 PM)
The transcript will be available on the USPTO homepage, .
Hummingbird King: (Oct 25, 2007 3:03:20 PM)
I have a trademark. I paid for its production, use it as my company logo, use it on my business card, website and so on. What is the best measure to protect it on a long term basis. I'm speaking of lifetime if possible. Can I keep someone from using it in commerce if I don't have it on packaging or the product?
USPTO Expert2: (Oct 25, 2007 3:05:36 PM)
In order to qualitfy for trademark registration, your mark must be used in a trademark manner. If your mark is used on goods, The mark must appear on the goods as it moves in commerce. Use on websites, business cards or as a company logo is usually not considered trademark use. However, iIf your use meets, or will meet, the crieteria for trademark registration, your registration can exist as long as the owner files the required maintenance documents. As far as stopping someone from using it in commerce, that is something that you must discuss with your own, private trademark counsel.
Dag: (Oct 25, 2007 3:05:43 PM)
Obviousness: This is really a very difficult subject matter to understand, even with the new SC ruling on the subject, because there will always be experts who will see a novel idea as obvious over an old one, given the time to think about it. The question then is, if it were so obvious, why was was it not invented before and why did the referenced prior arts not do anything about it? Didn't the SC rule a while back that in order for an invention to be obvious, it must have been specifically taught by prior art? Please elaborate. Thanks
USPTO Expert: (Oct 25, 2007 3:05:45 PM) EDITED ANSWER
–The USPTO has recently published examination guidelines for determining obviousness in view of the Supreme Court decision in KSR International Co. v. Teleflex Inc. (http://www.uspto.gov/web/offices/com/sol/notices/72fr57526.pdf). As stated by the Supreme Court in KSR, the proper analysis for determining obviousness is those set forth in Graham v. John Deere. That is, the examiner (1) determines the scope and content of the prior art, (2) ascertains the differences between the prior art and the claims in issue, and (3) resolves the level of ordinary skill in the pertinent art. The examiner will also evaluate evidence of secondary consideration. See MPEP 2141 (http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r6_2100.pdf). The examiner then determines whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.]
LCS: (Oct 25, 2007 3:07:10 PM)
Can I file a design patent and a utility patent on the same item? Does it make sense to do that based on their definitions?
USPTO Expert: (Oct 25, 2007 3:07:14 PM) EDITED ANSWER
On the same product, yes. The design patent would protect the ornamental appearance and the utility patent would protect the way the product is used or works.
Court: (Oct 25, 2007 3:07:49 PM)
want to file efs lost my registration info camn I file as anon registered
USPTO Expert: (Oct 25, 2007 3:08:04 PM)
You should be able to contact the Electronic Business Center for assistance, http://www.uspto.gov/ebc/indexebc.html.
Glenda: (Oct 25, 2007 3:09:00 PM)
Provisional applications are no examined?
USPTO Expert: (Oct 25, 2007 3:09:16 PM) EDITED ANSWER
Provisional applications are not examined. Once a provisional application is filed applicant may use the term "patent pending". Within one year of the filing date of the provisional application, the applicant must file a non-provisional application which claims the benefit of the provisional application and the non-provisional application will be examined by the Office.
Kumar: (Oct 25, 2007 3:09:53 PM)
In regards to trademarking words or phrases, (1) How long is a trademark good for once it’s granted and (2) How often to trademarks need to be renewed before it goes into abandonement?
USPTO Expert2: (Oct 25, 2007 3:10:52 PM)
Kumar, in answer to your question, a trademark registration is "good" for as long as there is someone to file maintenance documents. There is a document that must be filed between the fifth and sixth year of registration and then a combined affidavit that must be filed every ten years from the date of registration.
Sbcsken: (Oct 25, 2007 3:11:09 PM)
Is there another chat scheduled?
USPTO Expert: (Oct 25, 2007 3:10:14 PM)
We will be hosting our On-line Chats every other month and information is always posted on our home page, www.uspto.gov.
Nick: (Oct 25, 2007 3:11:14 PM)
Many thanks to the USPTO for this interesting chat today.
USPTO Expert: (Oct 25, 2007 3:11:52 PM)
We will be hosting our On-line Chats every other month and information is always posted on our home page, www.uspto.gov. Thank you for joining us and this concludes our chat for today. You can always contact our Inventors Assistance Center at 1-800-786-9199 for information.
USPTO Expert: (Oct 25, 2007 3:12:01 PM)
THANK YOU!!
ADDITIONAL QUESTIONS CAPTURE AFTER THE CHAT
Smard: (Oct 25, 2007 3:16:20 PM)
If someone patents a product (idea) but fails to follow up on it (ie. they don't prove that they can execute the technology) is it considered abandoned? I've seen patents with a similar concept to mine but no proof that they actually ever built or developed it in any way.
USPTO EXPERT:
Smard, Do not confuse the granting of a patent with market success. When an application is allowed, the patent is good for 20 years from filing, provided the maintenance fees are paid over the life of the patent. Getting that product into the market is a challenge that many inventors may not achieve. In other words, the issuance of a patent does not guarantee market success.
Lady: (Oct 25, 2007 3:16:43 PM)
What time frame can be expected from time of mailing in until receipt of acceptance for temporary or permanent patent? I understand temporary is $105 and permanent is $220 which includes search. I have already started to search for anything similar?
USPTO EXPERT:
There is no temporary or permanent patent. I am guessing you mean a provisional application (which is not examined, and claims are not required but can never issue as a patent. You can put “patent pending” on your product after you have filed your provisional application. If you want a patent then you must file a non-provisional application within one year of the provisional application claiming the benefit of the filing date of the provisional application) and a utility application (a non-provisional application) which is examined by the Office and may or may not become a patent). In either case, all applications go through the initial review for filing requirements and that takes about 8-12 weeks. Once completed you will receive a filing receipt with bibliographic information about your application. The provisional application filing fee for a small entity (independent inventor) is $105.00, the basic filing fee for a utility (non-provisional) application (independent inventor) is $515.00 this includes the filing fee, search fee and examination fee.
Mikenchicago: (Oct 25, 2007 3:16:53 PM)
I have a quick question for anyone who might now. I am wondering where I might find the guidelines or rules governing the IP Bar. Is there a weblink where I can go to find the set of criteria that determine who is eligible to take the bar exam???
USPTO EXPERT:
We would only have information related to taking the exam to be a registered patent attorney/agent before the Office. Information is available at http://www.uspto.gov/web/offices/dcom/olia/oed/examregist.htm.
Motiksnipil: (Oct 25, 2007 3:17:05 PM)
Generally speaking, what are the chances of obtaining a patent if I don't use a patent attorney? Are there any pitfalls to avoid? Any advice?
USPTO EXPERT:
There are no requirements that you must use a patent attorney/agent. Filing a patent application is a legal process and can be a challenge to the novice inventor. However, if you do your homework and are willing to spend the time to familiarize yourself with the rules, there is nothing that prohibits you from filing your own application. You must do your homework beforehand. Spend sometime on our homepage, www.uspto.gov to decide if this is the path you want to take.
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