On Line Chat for Independent Inventors (11DEC2007)

This is a transcript of the on-line chat held on Tuesday, December 11, 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.

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USPTO Expert: (Dec 11, 2007 2:08:06 PM)
Welcome to the Inventors On-Line chat, we will begin answering questions at 2:00. Please note that all questions posted are not answered, we try to select the questions that appeal to the overall audience.

Samvel (Dec 11, 2007 2:10:34 PM)
If, according to Office Action, a patent application has some allowable claims,. Can I file a continuation application including claims restricted from parent application and claims rejected from parent application?
USPTO Expert: (Dec 11, 2007 2:11:38 PM)
Yes, you can cancel all claims that are not allowable and file a continuation application to prosecute all other claims. Reminder, file the continuation before your first application issues.

Akk (Dec 11, 2007 2:12:13 PM)
An application for Trademark has also been filed. The question is if my Trademark is approved it is valid only in US or in all territories to which PCT apply?
USPTO Expert2 (Dec 11, 2007 2:12:54 PM)
A US trademark registration is only effective in the United States. Trademark applications have nothing to do with the PCT system.

mtdiver (Dec 11, 2007 2:13:09 PM)
There is a requirement that a registration symbol must be used with all printed registered trademark names. Is there any requirement for where the symbol must be placed in relation to the registered name?
USPTO Expert2 (Dec 11, 2007 2:14:37 PM)
There is no requirement that the registration symbol be used with a registered mark. However, there are advantages to doing that which are enumerated in the Trademark Act. Neither are their guidelines or requirements concerning the placement of the mark. However, it should be displayed in close association with the registered mark. Your own trademark counsel can advise you as to the most effective placement of the registration symbol.

Vee (Dec 11, 2007 2:14:41 PM)
Can I print this forum?
USPTO Expert (Dec 11, 2007 2:15:00 PM)
All of our chats are posted on the Inventors Resource page at http://www.uspto.gov/web/offices/com/iip/onlineiip.htm . This chat transcript will be posted on our homepage in about 2-3 weeks,

Haste (Dec 11, 2007 2:15:04 PM)
In AE, the max claim limits are 3 independents and 20 total. Does this mean only the following MAXIMUM combinations are allowed: a) 1 IND and 19 DEPs; b) 2 INDs and 18 DEPs; or c) 3 INDs and 17 DEPs?
USPTO Expert3 (Dec 11, 2007 2:16:21 PM)
Under the accelerated examination program, applicants are limited to 3 independent claims and 20 total claims, so your answer is yes.

sher (Dec 11, 2007 2:16:37 PM)
where may i get a beginners kit at?
USPTO Expert (Dec 11, 2007 2:17:34 PM)
You can obtain a packet of information from our Inventors Assistant Center by calling 1-800-786-9199 or visit a Patent and Trademark Depository Library in your area, http://www.uspto.gov/go/ptdl/
 
Susie (Dec 11, 2007 2:18:53 PM)
Okay. I have several great inventions one of which every person in the world could use. I do not have money to pursue it. Is there any grants or people willing to put up the money for me?
USPTO Expert2 (Dec 11, 2007 2:18:57 PM)
The USPTO does not offer this type of service. However, you might be able to get information through a local inventor group./ You can find a list of these groups at www.uiausa.org.

Judy (Dec 11, 2007 2:19:34 PM)
I sent my idea to a co. called inventegration and they said they would do all the patent searches for me. Is it possible to do this on my own, and what is the expected length of time involved?
USPTO Expert (Dec 11, 2007 2:21:34 PM)
Judy, our web site has information that you should be aware of before doing business with any invention promotion firm, please visit http://www.uspto.gov/web/offices/com/iip/complaints.htm . You can also go to a Patent and Trademark Depository Library, http://www.uspto.gov/go/ptdl/ and conduct a search there.

BusPlan (Dec 11, 2007 2:21:35 PM)
Hello and thanks for this opportunity. I read previous transcripts and did not see the answer to my 2 questions.1. I am writing a business plan and would like to know the time to obtain a trademark and copywrites. 2. Does the copywrite need a lawyer?
USPTO Expert2 (Dec 11, 2007 2:21:51 PM)
The time to obtain a trademark varies on a case by case basis. The least amount of time is 6-9 months. For information concerning copyrights, please go to the copyright website at https://www.copyright.gov/ .

AlMichael (Dec 11, 2007 2:22:08 PM)
We have been told that getting a provisional patent is worthless and a waste of time. What form of protection if any does a PPA afford to the small entitiy that buys this for $100?
USPTO Expert3 (Dec 11, 2007 2:25:33 PM)
A provisional application perserves a filing date and gives you a year to write and file your patent application. It also allows you to mark your product patent pending during this year. However, a provisional patent cannot mature into a patent. The value of a provisional application depends on your situatuion and is a business decision.

RUTH (Dec 11, 2007 2:25:38 PM)
I have three different inventions. What codes do I use on USPTO.GOV to check to see if these inventions already exist and is it neccessary to hire someone to do a patent check? If these prove to be improvements or original ideas what forms should I use to protect my invention when I seek help from an attorney or a manufacturer?
USPTO Expert (Dec 11, 2007 2:25:46 PM)
There are over 16,000 different classes of invention in the USPTO classification system. You can search by term using the index of classification. This can be found at http://www.uspto.gov/go/classification/uspcindex/indextouspc.htm

Akk (Dec 11, 2007 2:25:50 PM)
Is there a way in way in which Trademark can be registered to be used in other countries? or it is Country specific?
USPTO Expert2 (Dec 11, 2007 2:25:58 PM)
Trademarks must be registered on a county by country basis. However, the process is made easier by filing your application through the provisions of the Madrid Protocol. Through that treaty, your application can be routed to other countries that are signatories to that treaty. For further information concerning this process, consult the Madrid Protocol area under Trademarks at the USPTO website - www.uspto.gov

Max (Dec 11, 2007 2:26:06 PM)
We have developed a solution that requires a software application. To file for a patent do we need to include the coding for the software?
USPTO Expert3 (Dec 11, 2007 2:26:56 PM)
No, you don't have to include the coding for the software but it may be necessary to support the written description of the invention. So it is very important that the description that you provide fully covers the invention.

boogiebob (Dec 11, 2007 2:27:35 PM)
if you have patent pending already, can i revise it and will cost me anything.
USPTO Expert (Dec 11, 2007 2:27:38 PM)
If you want patent protection for the improvements of the invention then you will need to file an application on the improvements. This application may be filed as a continuation-in-part (CIP) of your original application (we are assuming that the original application was a non-provisional application) during the pendency of the original application. Subject matter that is in the CIP which has support in the original application is entitled to the benefit of the filing date of the original application. The subject matter that is only disclosed in the CIP application (the improvements) is entitled to the filing date of the CIP application. Each non-provisional application must contain a written description of the invention complying with 35 U.S.C. 112, claims, any necessary drawings, fees and oath or declaration.

AlMichael (Dec 11, 2007 2:28:25 PM)
What rights does the designation: "Patent Pending" afford the inventor in terms of protection and marketing the product?
USPTO Expert (Dec 11, 2007 2:28:30 PM)
The marking of an article as patented when it is not in fact patented is against the law and subjects the offender to a penalty. Some persons mark articles sold with the terms “Patent Applied For” or “Patent Pending.” These phrases have no legal effect, but only give information that an application for patent has been filed in the USPTO. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.

Judy (Dec 11, 2007 2:29:58 PM)
what is approximate cost to obtain a patent?
USPTO Expert (Dec 11, 2007 2:30:23 PM)
Our current fee schedule is available at http://www.uspto.gov/web/offices/ac/qs/ope/fee2007september30.htm . The Office does not regulate patent attorney/agents fees.

AGA (Dec 11, 2007 2:31:54 PM)
Just to make sure: Do I need to send in the following with provisional application : provisional application cover sheet ( PTO/SB/16), a written description that complies with 35 USC 112 first paragraph , drawings if necessary for the understanding, and the current fee $105 for small entity ,with Fee Transmittal Form PTO/SB/17 (but there is no space for credit card number or for a check number . Do I have to use Credit Card Payment Form and Instructions PTO-2038 ?).And does the electronic signature look like this: /NAME\ or like this: "/NAME\" or it doesn't matter? Are there other forms I have to send?
USPTO Expert (Dec 11, 2007 2:32:30 PM) EDITED ANSWER
AGA - You are correct in that the provisional application must include the cover sheet, a written description of the invention that complies with 35 USC 112, first paragraph, drawings if they are necessary to understand the invention, and the fee. You can pay by check, U.S. Postal Service money order, USPTO deposit account, or credit card. If you are paying by credit card use form PTO-2038 which can be found at http://www.uspto.gov/web/forms/index.jsp#patent  where all of our forms can be found.
The use of an electronic signature is an option that you have for signing documents. The format for the electronic signature is to type your name and then immediately adjacent to the typed name put your name between forward slashes (//). An example of this would be as follows:
         /your name/
          Your Name
Some variations are permitted but you should be consistent in the S-signature that you choose. An S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and punctuation (i.e., commas, periods, apostrophes, or hyphens). "Letters" include English and non- English alphabet letters, and text characters (e.g., Kanji). Non-text, graphic characters (e.g., a smiley face created in the True Type Wing Dings font) are not permitted. The rules require that a person, which includes a practitioner, must insert his or her own signature using letters and/or Arabic numerals, with appropriate commas, periods, apostrophes, or hyphens as punctuation and spaces. The “must insert his or her own signature” requirement is met by the signer directly typing his or her own signature using a keyboard.

AGA (Dec 11, 2007 2:33:04 PM)
What does it mean to establish small entity status? Do I have to be registered somehow as small entity status? Do I need to be 'registered independed inventor' :) or to have small business?Or everybody besides big companys can claim small entity status?
USPTO Expert (Dec 11, 2007 2:33:19 PM)
If you are an independent inventor, small-business concern or a non-profit organization you are entitled reduced fees usually 50%. For a definition of small entity, see 37 CFR 1.27. http://www.uspto.gov/web/offices/pac/mpep/ consolidated_rules.pdf

USPTO Expert2 (Dec 11, 2007 2:35:09 PM)
Registration of your trademark is always advised. It's not required, but it's always a good business practice do register your mark.

m@km3 (Dec 11, 2007 2:35:27 PM)
I live in a rural area and recently looked in the phone book for attorneys that specialize in patents and did not find any. Is there a specific or other type of attorney that might be able to help me?
USPTO Expert3 (Dec 11, 2007 2:35:33 PM)
Here is the link to the registered patent attorneys/agent, go to http://www.uspto.gov/ . The roster is searchable by geographical location. http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html . All have passed our certification exam. However, the USPTO cannot recommend one over any other.

airserts (Dec 11, 2007 2:36:11 PM)
Question regarding doing a Patent search, specifically searching FOREIGN references. Question: How can I get access to, and search, all the FOREIGN patents in a class/subclass the Examiners in the USPTO have access to?
USPTO Expert (Dec 11, 2007 2:36:14 PM)
Many Patent and Trademark Depository Libraries have access to the same foreign patent holdings as the examiners via the PubWEST databases. Contact your local PTDL for further assistance, http://www.uspto.gov/go/ptdl/.

TAG (Dec 11, 2007 2:36:38 PM)
does the uspto review or authorize the firms that provide services in searches and documentation etc. I am concerned that they may not keep my idea safe ...I assume if I am willing to put in the time etc. that I can do all the processes myself?
USPTO Expert (Dec 11, 2007 2:37:58 PM)
We do not make recommendations or authorize search firms. You can check or interview various companies or get recommendations from local inventor groups at www.uiausa.org. You can also search on your own or visit the local Patent & Trademark Depository Library. The link is http://www.uspto.gov/go/ptdl/

BuffaloWill (Dec 11, 2007 2:38:56 PM)
Where can I get information regarding the required forms for filing a patent application? Does the PTO have a website for such forms that I can print out? Does the PTO have any website that would offer any other beneficial information to potential patent applicants? Thanks.I can visit to obtain other.
USPTO Expert3 (Dec 11, 2007 2:39:22 PM)
Go to http://www.uspto.gov/web/forms/index.jsp

vpp (Dec 11, 2007 2:41:24 PM)
For a provisional application, are the only items that are NOT required the Claims and declaration? If so does the full research including US and Foreign patents, Abstract & Description (General and Detailed) need to be done before filing?
USPTO Expert (Dec 11, 2007 2:42:35 PM)
You are not required to do a search for a provisional application, although it is a good idea. The requirements for a provisional application are a provisional application cover sheet, a written description and drawings if necessary for the understanding of your invention and the filing fee. Additional information about provisional applications can be found at http://www.uspto.gov/web/offices/pac/provapp.htm

AGA (Dec 11, 2007 2:42:56 PM)
If the protection afforded by patent does not start until the actual grant of the patent ,then the "patent pending" doesn't guarantee that
USPTO Expert3 (Dec 11, 2007 2:43:08 PM)
Patent pending does not guarantee patent protection, but once a patent is issued you may have provisional rights to the time of patent pending status if infringed.

Vee (Dec 11, 2007 2:43:32 PM)
OK, I know my questions are not as advanced as some of the others being answered - but my funds are quite limited - do I need an agent or lawyer to assist me so my idea is protected?
USPTO Expert (Dec 11, 2007 2:43:44 PM)
You do not need a patent attorney. However, the patent process is a legal process so it is suggested that you acquire patent professional assistance.

USPTO Expert2 (Dec 11, 2007 2:44:56 PM)
The rules governing opposition procedures are very specific. You should contact the Trademark Trial and Appeal Board for the answer to your specific question or consult the TTAB Manual of Procedure (TBMP) for the rules and procedures for filing responses in oppositions. They are too extensive to go into detail on them in this forum.

shanoje (Dec 11, 2007 2:45:27 PM)
what do you think of invention companys, such as isc, helping you to submit your idea?
USPTO Expert (Dec 11, 2007 2:46:56 PM)
You should check our web site at http://www.uspto.gov/web/offices/com/iip/complaints.htm for complaints about invention promotion companies. You can also get a list of questions you should ask those companies. Remember to get those answers in writing. The questions are available at http://www.uspto.gov/web/offices/com/iip/documents/scamprevent.pdf

Tom C (Dec 11, 2007 2:48:16 PM)
How long is a typical patent valid/active for? If there is an expiry date, is there an automatic system in place to advise the patent holder of the pending expiry date with ample time for revalidation/reactivation?
USPTO Expert (Dec 11, 2007 2:49:52 PM)
A patent term is currently 20 years from the date of filing. There is no system in place to notify a patentee when maintenance fees are due.

nik (Dec 11, 2007 2:49:57 PM)
I'm confused with trademarks,etc. would the name of my product be a trademark or copyright issue?
USPTO Expert2 (Dec 11, 2007 2:50:01 PM)
The name under which your product is marketed could be registered as a trademark. It is unlikely that it would qualify for copyright protection.

JoKal (Dec 11, 2007 2:51:40 PM)
1. The applicant has filed for an invention (utility patent) that involves "tight art," i.e., between 1963 and 2004, four prior patents were issued for similar devices. However, in each prior art, there was a problem with the invention that made mass production of the invention impossible or commercially impracticable. The applicant's invention solves the problems inherent in the prior art via a unique fabrication process. Does the fact that the four prior patents could not be fabricated provide support to the applicant's claim of non-obviousness? 2. Does the PTO provide an applicant with an opportunity to demonstrate the invention to the Examiner? The applicant is confident that such a demonstration will make clear the unique nature of the invention.
USPTO Expert (Dec 11, 2007 2:52:52 PM) EDITED ANSWER
JoKal - The answer to your first question can be summed up by saying there are two ways of handling the comparison of prior art and they are “you can do it right or you can do it right”.  That may appear to be a bad answer, but the best way to present a comparison is by including a discussion of prior art in the specification particularly pointing out the problems associated with each of the prior patents.  Following that should be a discussion of the improvements of the invention and how it overcomes the difficulties associated with the prior art.  If you have already filed an application and did not include this information in the specification as originally filed you may need to file an affidavit under 37 CFR 1.132.  Under this type affidavit you would need to provide evidence that the prior art was impossible to use in mass production and that the difference in your invention afforded a correction of the art.  There are many ways of doing this type affidavit and we suggest that you consult a patent professional for assistance in preparing a proper document.
Your second question is a good one.  We encourage applicants to interview with the examiner in order to make a case for patentability.  While we do not want models to keep in the Office we do have demonstrations of inventions provided to the examiner by applicants.  We find that this exchange can help clarify matters and advance prosecution.  All you need do is request an interview through your patent professional or call your examiner.

CT (Dec 11, 2007 2:52:56 PM)
How long will it take to get an answer back on my business method patent ap?
USPTO Expert (Dec 11, 2007 2:54:34 PM)
It is very difficult to predict, first actions for business method applications is running about 40 months from filing.

meecie (Dec 11, 2007 2:54:37 PM)
Does the patent office examine all the patent applications submitted by lawyers before they examine applications submitted by an individual inventor? I believe people think this and get a lawyer so their patent application will be reviewed quicker.
USPTO Expert2 (Dec 11, 2007 2:57:52 PM)
Absolutely not. Having an attorney or not does not affect how quickly your application is examined. The only instance that an application would be examined sooner are those applications that have had a petition to make special granted.

Dimples (Dec 11, 2007 2:57:57 PM)
What is the first step since I have designed a product and everyone wants to purchase it just by my marketing it by my wearing it daily ?
USPTO Expert3 (Dec 11, 2007 2:58:03 PM)
By you wearing your product you have made a public disclosure of the invention. If you desire patent protection, you need to file a patent application, provisional or non-provisional within one year of the first public disclosure.

jk (Dec 11, 2007 2:59:44 PM)
Can you be a small entity if you have licensed your invention to a large corporation?
USPTO Expert3 (Dec 11, 2007 3:01:40 PM)
Once you have licensed your invention to a large entity (large company) you cannot claim small entity status. You should note that the USPTO does not investigate small entity status and it is the applicant's responsibility to claim the appropriate status.

jk (Dec 11, 2007 3:01:42 PM)
If you get a non-final action can you get an extention if you don't answer within the 3 month deadline?
USPTO Expert (Dec 11, 2007 3:01:59 PM)
The period for reply to a non-final office action is 3 months but can be extended up to an additional 3 months with the payment of additional fees. The extension of time fees can be found at http://www.uspto.gov/web/offices/ac/qs/ope/fee2007september30.htm - extend

CT (Dec 11, 2007 3:02:19 PM)
When can I start marketing my idea? Right after I apply for a patent, or should I wait until it gets approval?
USPTO Expert3 (Dec 11, 2007 3:02:38 PM)
You can begin marketing your idea anytime.

nik (Dec 11, 2007 3:03:27 PM)
Still on the "juice" subject...in the trademarking process, do I need specific percentages of each ingredient or can I just say it is vitamin juice and generally list ingredients until I can get it prototyped and labeled, thus applying for a trademark without disclosing specifics for others to copy?
USPTO Expert2 (Dec 11, 2007 3:04:50 PM)
You seem to be confusing patents and trademarks. A trademark is a word or symbol that identifies your goods in the marketplace and distinguishes them from those of others. How it's made, what it's made from, etc. is more the subject of a patent filing. The only thing that would have to be indicated in a trademark application concerning the goods themselves is that it is "apple juice."

Samvel (Dec 11, 2007 3:04:57 PM)
What would be effective date of US patent application (not yet patent) to swear it behind as a referance? Publication date? Filing date? Or even claimed provisional patent application date?
USPTO Expert3 (Dec 11, 2007 3:05:08 PM)
The earliest effective filing date is a provisional filing date if a provisional application is filed and a non-provisional date if no provisional application is filed.

Tom C (Dec 11, 2007 3:07:26 PM)
With respect to submitted patent data commonly referred to as “drawings” or “technical drawings”, does the USPTO have the means to accept data in 3D CAD formats in lieu of obsolete 2D drawing formats?
USPTO Expert (Dec 11, 2007 3:08:23 PM)
We will accept drawings in whatever format you have as long as they can scanned into our system.

OC_resident (Dec 11, 2007 3:09:20 PM)
My ? is does the patent for Gadget X's electromagnetic operation mechanism includes the same gadget being patented for manual operation as well.
USPTO Expert3 (Dec 11, 2007 3:10:24 PM)
Patent protection depends on the nature of the claim language. If the claims are properly composed you may have protection on both ideas.

USPTO Expert (Dec 11, 2007 3:11:50 PM)
Thank you very much for participating. For those that wonder why their questions did not post, it is because we receive hundreds of questions and only the questions that are answered are posted. Our transcript will be posted on the homepage in about 2-3 weeks. Previous transcripts are available at http://www.uspto.gov/web/offices/com/iip/onlineiip.htm. Our next chat will be February 28th, Good-bye to all and Happy Holidays.