On Line Chat Transcripts

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Fee

What is the fee for filing a patent with the USPTO? What is a typical charge for an attorney to take it through the process?

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.

What is the typical cost and maintenance fees of a utility patent? How long is the patent review process?

It is currently estimated that the fees for a small entity over the life of a patent are approximately $4,200.00. Please note that fees are subject to change and you should refer to our web site for current fees at http://www.uspto.gov/

Fee For Amending A Claim

Is there a fee for amending a claim?

No, as long as the response is timely filed and no extension of time fees are required.

Filed By Someone Else

How can I find the status of a patent that filed by someone else?

Any published application can be viewed in public pair go to http://www.uspto.gov/ebc/index.html

Filing

Do I need to have all the paperwork (i.e. claims, drawings, etc.) completed and ready before I begin filing my application?

A provisional application allows filing without a formal patent claim, oath or declaration, or any information disclosure statement; it provides the means to establish an early effective filing date for a later filed non-provisional patent application filed under 35 USC 111(a) within 12 months of the provisional application filing date.
A nonprovisional utility patent application must include a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing fee. A complete nonprovisional utility patent application should contain the elements listed below, arranged in the order shown.

Utility Patent Application Transmittal Form or Transmittal Letter

Fee Transmittal Form and Appropriate Fee

Application Data Sheet (see 37 CFR § 1.76)

Specification (with at least one claim)

Drawings (when necessary)

Oath or Declaration

Nucleotide and/or Amino Acid Sequence Listing (when necessary)

Filing_OnLine

In order to complete filing online utility patent application, what do I need?

Please go to our Electronic Business Center at: http://www.uspto.gov/ebc/efs_help.html

First-Step

have heard that the majority of my ideas would require "utility patents", and the first step is to look these ideas up. How would I go about doing that, and do I need to be discreet in as search when interacting with databases etc...?

You can go to your local Patent and Trademark Depository Library, a network of 85 libraries nationwide, to learn how to do a patent search, or on the USPTO web site at: http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html

First-to-File

Is "first-to-file" the policy of the USPTO and is it aligned with International norms?

The U.S. is one of the few nations that decide inventorship on a first-to-invent basis versus first inventor-to-file.

What is the difference between first to file and first to invent?

With first to file, priority is given to the application/invention with the earliest filing date. This is common in many international patent offices. However, the USPTO currently gives priority to the first to invent, where evidence supporting conception of the claimed invention prior to the filing date of the application may be considered to determine the first inventor of the invention.

Foreign Application

We want to apply for a patent in Australia as well in US. Do we have to link the 2 applications in some way?

If you have a foreign application you can claim priority to that foreign application in the U.S. provided that the foreign application was not filed more than one year before the U.S. filing date and all the requirements of 35 U.S.C.119(a) – (d) are satisfied. Priority should be claimed at the time of filing the U.S. application; however, you do not have to claim priority if you do not choose to do so.

Foreign Patent

How long after filing a US patent do you have to file foreign patent?

Usually 12 months after the filing of your US application, but it depends on the country you are seeking protection in.

Foreign Patents

Is it possible to view (in English) Foreign patents (EU, Canadian, Japanese) via the web?

Many foreign patent offices and international patent authorities have patent databases on the web. For example, the European Patent Office's espacenet database has more than 45 million patent documents and patent families. Many patent families have at least one document in English (US, UK, WIPO, or Canadian). The Japan Patent Office's Industrial Property Digital Library provides access to the Patent Abstracts of Japan (PAJ) from 1976 to the present and Utility and Model Patent Gazettes from 1971 to the present, in addition to other databases and documents. You can access espacenet at the EPO's web site at http://www.european-patent-office.org/. The JPO web site is http://www.jpo.go.jp/.

Forms

How do I know which forms I need and where can I obtain the forms?

You can use the new application transmittal form, the oath/declaration and the fee transmittal form from the USPTO web site. However, there are no required forms. However, if you file an application electronically using our EFS-ABX software it has an authoring tool that guides you through the parts of an application. Information on how to file an application electronically can be found on the Electronic Business Center (EBC) page of the USPTO web site. http://www.uspto.gov/ebc/efs_help.html

The application is a written description of your invention and should particularly point out all the aspects of your invention. Your claims, the legal definition of your invention, must begin on a separate sheet and should define what you want to protect in your invention.

How do i get the patent forms?

Go to http://www.uspto.gov/web/forms/index.html

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Holidays

Can you file patent applications using EFS-WEB or EFS on federal Holidays? Can you submit one using Fax on a Federal Holiday? For electronic filing (EFS-WEB) and Fax filing is the submission based on EST or on the time zone of the sender (i.e., when is midnight)?

Yes you can file using EFS-WEB at any time including federal holidays - the filing date is based on East Coast time. You cannot file a new patent application by fax. See the MPEP for more information on these filing rules. See 37 CFR 1.6, http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf

How Long Does It Take

I have asked the question of about how long the patent process takes and cannot see previous posts concerning this question. Could you please advise?

Our backlogs are technology specific. Presently the time runs from 14 months to 4 years.

How long does it take to get a New Patent Application Number from the USPTO for a Continuation appplication?

All applications go through the Office of Initial Patent Examination (OIPE). Normal processing for all applications is approximately 12-16 weeks depending on current backlogs.

How long to get a patent

How long to get a patent after your application is in the USPTO office and it is ready for examination does it take to get the actual patent?
The issuance of a patent can take anywhere from 12 -36 months depending on how we classify your invention.

How to Proceed

Can you explain to me the least expensive process for patenting. I've got so many ideas and do not know how to proceed with any of them- some of them I have prototypes for.

There is no simple response that we can answer here; you may want to contact the Inventors Assistance Center to discuss in detail. 1-800-786-9199.

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Ideas

I believe that someone has taken my ideas from my research paper and filed a patent application. What can I do?

There are several options available each with certain requirements and risks. We cannot give you an exact answer since the options are extremely fact dependent. Here are three of the more common situations that we see: You may file a protest under 37 CFR 1.291. This situation is highly complex and it is recommended that you seek the advice of a registered patent attorney/agent who can fully explore the facts. If that patent application has been published you may submit your research paper to the USPTO for consideration 37 CFR 1.99. You must file your research paper within two months of the date of publication of that patent application and comply with the remaining requirements of 37 CFR1.99. Again, this process is complex and it is recommended that you seek the advice of a retgistered patent attorney or agent.

http://www.uspto.gov/web/offices/pac/mpep/
consolidated_rules.pdf

Or alternatively, you may apply for a patent on the invention yourself. If the claimed inventions are the same, the USPTO may initiate an interference proceeding to determine the first inventor.

New idea and don’t know where to start?

The Inventors Assistance Center 1-800-786-9199 can send you basic information on filing patent applications. Our website http://www.uspto.gov/ also has information on the patent process. Patent Depository Libraries (locations on our website) can also provide you with information. In addition, local independent inventor organizations are a good resource to help you get started with patenting and promoting your invention.

What is the best way to find out if your idea is the same or similar to something someone else has already registered?

You can do a preliminary patent search at the USPTO web site, http://www.uspto.gov/ or you can also do a search at your nearest Patent and Trademark Depository Library (PTDL). They are located throughout the US and have a specially trained staff to assist you with patent and trademark databases and search tools, and finding information on related topics such as starting a business, product licensing, market research, etc. http://www.uspto.gov/go/ptdl/

Ideas For a Product

I am curious as to weather or not an idea for a product can be patented or copyrighted before there is an actual product. Also, if you can, how do you find out if that particular idea has already been patented or copyrighted?

Yes, as long as one skilled in the art would know how to make and use your product. You do not need an actual working prototype. Inventors my perform patent searches on our website

Image-only PDF

I searched EFS-WEB FAQ, and did a Google search of USPTO site, but didn't find an answer to my question. PDF files are of 2 kinds: (a) test-searchable, (b) image-only which requires OCR to be searchable. Can I submit image-only PDF files to EFS-WEB?

Image based PDF is fine. We OCR these images to do classification and security clearance on the documents

Improvements

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?
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.

Improvements to My Provisional

I filed provisional application last year. Since then I obtained more data supporting my application and may also include some improvements to my provisional. Can I include my new data to replace the data in the provisional application in the non provisional and PCT?

Any additional new data cannot be added to a provisional application. It can, however, be put in a new provisional or non provisional application. The newly added data would be afforded the filing date of the newer applications.

Information Disclosure Statement (IDS)

I submitted my Regular Patent Application (RPA) on Aug 7, 2004, but, after 1.5 years, I just found the Information Disclosure Statement (IDS) that I thought I also mailed. May I still submit my IDS (having not yet received an Office Action from the USPTO)? Since I submitted my RPA, I've found more information (another patent) that I should have addressed in my RPA. May I submit it as a supplement to my RPA (when I submit my IDS)? I'll assume there are fees associated with my proposed actions.

You may file an IDS anytime before a first Office Action without a fee. You should include all relevant information that you are aware of in the IDS. See 37 CFR 1.97(b) and MPEP Section 609.04(b), http://www.uspto.gov/web/offices/pac/mpep/documents/0600.htm. As to your second question, I am assuming that you have found another patent that should be submitted to the Office in an IDS and you would like to include that patent in your IDS. You can go ahead and add that patent to your IDS and submit the IDS prior to a first Office action without a fee.

In my IDS, can I submit research article, abstract in lieu of entire articles?

37 CRF 1.56 requires you to submit information known to you which is material to patentability. If the entire article is material then you will need to submit the entire article. If only a portion is material, you may submit just the portion. See 37 CFR 1.98 (a)(2)(iv).

Infringement

How can the USPTO help small inventors determine if a company is infringing on a patent? Can or does the USPTO issue "infringement opinions"?

No the USPTO is not authorized to provide infringement opinions since this constitutes providing legal advice.

Innovating an Existing Invention

I have created an addition to the average rolling luggage, specializing it for a particular use. Since rolling luggage has already been invented is it necessary to file a patent? I mean, isn't innovating an existing invention kind of any man's game?

Most patents are for improvements to already existing inventions like yours. As long as the improvement is found to be novel and non-obvious it may subject to patent protection.

Intent To Use

How long is the intent to use application good for? And can you tell me of any other steps I should take before attempting to market my product?

And intent-to-use trademark application must show use no later than 36 months after the mark receives a Notice of Allowance following publication in the Official Gazette. How much of that time you take is up to you and your R&D and marketing efforts. As for the second part of your question, the USPTO cannot assist you in deciding what steps you should take to market your product.

International Search Report

Should you file an information disclosure statement if you receive an international search report, and should you simply file the whole report? Should you list it on SB08B as a non-patent literature document?

Yes, you should file your international search report in an IDS. It should be listed on the PTO/SB/08 http://www.uspto.gov/web/forms/index.html or PTO-1449. See MPEP 609.04(a) http://www.uspto.gov/web/offices/pac/mpep/index.htm

Invention Assistance Companies/Firms

Do you have any information on invention assistance companies/firms?

The Office cannot comment on particular patent assistance companies. However, general information on avoiding being scammed is available on our website:

http://www.uspto.gov/web/offices/com/iip/documents/
scamprevent.pdf[PDF], a brochure entitled "Are You the Target?"

Is there a list at USPTO of the complaints made by individuals of the invention promotion companies and if so how can we view it???

For a listing of published complaints, please go to http://www.uspto.gov/web/offices/com/iip/complaints.htm

Invention Model

If one has a complete design and build of his invention. Would it be a good idea to provide the USPTO with the actual product?

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.

Invention Promotion Firms

I signed a confidentiality agreement with an 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 preliminary patentability search PPS.

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

Have you heard of an invention company that helps people patent their idea? Are they reliable or are they out to get your money?

Our office cannot tell you whether a company is reliable or not, we do however, post complaints we receive from the public at
http://www.uspto.gov/web/offices/com/iip/
complaints.htm. Additional information you should be aware before you do business with any invention promotion firm is available at http://www.uspto.gov/web/
offices/com/iip/documents/scamprevent.pdf

I am currently involved with a inventors help thingy online and over the phone. They are helpful with my questions and seem to have answers for everything. They want a lot of money to put together a patent, copyright, and trademark. They also want to show my idea at tradeshows and so forth. What's your opinion?

We strongly encourage you to visit our Inventors Resources page on our website for valuable information about invention promotion firms. Through the Inventors Resource page links are also provided to the Federal Trade Commission (FTC) and your local Attorney General's Office (AGO).

http://www.uspto.gov/web/offices/com/iip/
information.htm#LicensePromotion - License Promotion

You can also recieve help from our Inventors Assistance Center (IAC) concerning general questions on USPTO practice and procedure. The number for the IAC is 1-800-786-9199.

http://www.uspto.gov/web/offices/pac/dapp/
pacmain.html

Investion Site

Is an examiner allowed to come to visit an invention site?

Periodically our examiners do go to tour sites; however it is not based on a single application.

Investors

Can USPTO sponsor an online forum (a.k.a message or bulletin board) for individual investors? I or someone else can volunteer to setup and maintain the forum, but it would be more effective if it has USPTO moderators. The forum format can go into greater depth, accommodate unlimited users and be easier on you than a live meeting/conference such as this.

No, unfortunately the USPTO does not participate in on-line bulletin boards, however you may want to contact local inventor groups in your area or United Inventors Associations, http://www.uiausa.org/.

IP Bar

I am wondering where I might find the guidelines or rules governing the IP Bar. Is there a web link where I can go to find the set of criteria that determine who is eligible to take the bar exam?
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

Issue Fee

What is the cost of the issue fee?

Issue fees can be found on our fee schedule located on the web site at http://www.uspto.gov/main/howtofees.htm - patapp

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Joint Inventors

Can a patent be filed jointly by two or more persons?

Yes, please see 37 CFR 1.45 for detailed information about joint inventors, http://www.uspto.gov/web/offices/pac/mpep/
consolidated_rules.pdf

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Licensing

What is a normal licensing fee as a percentage of sales for a mechanical product?

The USPTO has no authority relative to licensing, you may go to the Licensing Executive Society at http://www.les.org for information.

Logo

I created a logo for my business. To prevent anyone else using it, I should get it trademarked, right?

Yes you can obtain a registration subject to meeting the requirements of U.S Trademark Law for the logo that is being used as your trademark.

Long-Term Basis

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?
In order to qualify 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, if your use meets, or will meet, the criteria 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.

Madrid Protocol

Having submitted a TM application to the USPTO for the US, I now want to use the Madrid Protocol application to apply in other countries. If I mark Russia as one of the countries in which I want to register, will I (1) have coverage for translation of my mark into Russian, (2) have coverage in English only, or (3) both?

The mark will appear in Russia (or any other country to which you extend your application) in the language that it appears in your underlying US application or registration - in this case, English. The mark itself is not translated into the language of the receiving country.

Mail

Where do I mail my patent application?

Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450

Mailing

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?
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.

Mail Stop

Which is the mail stop for sending the new non-provisional utility patent?

There is no specific mail stop send to: Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450. For information regarding mail stop, see http://www.uspto.gov/web/offices/
com/sol/og/patboxs.htm

Mailing Address

Which is the mail stop for sending the new non-provisional utility patent?

Our mailing addresses are located at http://www.uspto.gov/web/offices/com/sol/
og/patboxs.htm

Your mailing address has changed, where do I submit a design patent?

Design applications should be submitted to, Commissioner for Patents, P.O. Box 1450, Mail Stop Design Application, Alexandria, VA 22313-1450

Mailing My Application

I'm an individual filing a Provisional Patent under the guidance of a Patent Attorney – to save $. Upon mailing my application is there any follow up I should do to make sure it is accepted and without errors to ensure my Provisional Patent Application date goes on record? I don't want to later learn that errors resulted in my loss of a Provisional Patent Application date.

If you provisional application does not meet the minimum filing requirements by law, the Office will notify you and allow you a set time to respond to the notice. If the application is complete upon filing you will received a filing receipt with bibliographic information.

Maintenance Fees

How do you get additional time to pay maintenance fees?

You can contact our Maintenance Fee Customer Service Office at 703-308-5068 or 703-308-5069.

Mark That I Am Not Using

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?

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

Marketing

Once I have obtained my design patent, where should I begin in marketing the item ?

The USPTO cannot assist in marketing a patented design. You may wish to consult with a business development expert - perhaps the Small Business Administration.

Multiple Provisionals

Can you file several provisional patents and then claim the benefit of all of them in one regular patent application, before the one year term?

Yes, you may. The non-provisional application must be filed within 1 year of the earliest field non-provisional application.

Multiple Inventions in a Provisional Application

Can one file one provisional patent that contains more than one invention?

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.