On Line Chat Transcripts
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.
If my examiner allows my application when will the fee need to be submitted?
With the notice of allowance you get a notice to file the issue fee. It’s three months from the date of notice of allowance.
Is a patent money?
There is a fee to file your patent application. Please visit our website at http://www.uspto.gov, click on "How to pay Fees".
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.
Feedback regarding USPTO
Is there a contact group for providing feedback regarding our experiences with the USPTO? Part II… If an individual at the USPTO is particularly rude and/or unhelpful is there some reporting mechanism?
There is a new feedback channel posted on the USPTO homepage, http://www.uspto.gov/blog/ In reference to Part II, if your examiner is being rude, you should contact his Supervisory Patent Examiner, you can find out who that is through the Employee Locator, http://portal.uspto.gov/external/portal/emlocator
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
How do I file a patent application and keep it confidential i.e. can the patent office be restricted from publicly disclosing the contents of the application?
You may file a Non-Publication Request at the time of filing to prevent the application from being published at 18 months, however if the patent is granted it will become public.
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)
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
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
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.
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.
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.
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/ .
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?
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.
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.
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
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
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).
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.
If I file a provisional applic then begin manufacure and sale of an item, could someone else submit a non-provisional applic, obtain a patent, then be entitled to profits I have made?
This is very complicated issue. Someone else may be able to file a non-provisional application and receive a patent. If you fail to file a non-provisional application then the other filer may be able to take you to court for infringement. There is the possibility that the two application may be placed into an interference proceeding to determine who was the first to invent. Under the current law, the "first to invent" is entitled to the patent rights when there is a dispute similar to this situation.
Last December I invented something and filed an application. I just saw the same thing in a store. Is there anything I can do to stop them from selling my idea?
You don't have protection until you get a patent. Once you get a patent, you have protection for the subject matter in your claims, so if the object you saw in the store infringes on your claims, you can enforce your patent rights by taking the manufacturer of the object to court. The USPTO recommends that you obtaining the services of a patent attorney if you think someone may be infringing the claims once you have obtained a patent.
What is admissible as evidence in the 'first to invent" interference proceeding? Presumably content submitted to USPTO.
You should submit all the evidence that you might have and the Board of Patent Appeals and Interferences (Board) will make the determination. Additional information about the Board, including their contact information is 571-272-9797.
Innovating or Improving 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.
If my invention is an improvement on, or otherwise involves, someone else's intellectual property how do I properly reference that in my patent application without violating their copyright, trademark, etc.? I know I can't use it in the title of the invention, but can I reference it by name? Can I include photographs or images taken from an add or web page?
If you want to reference someone else’s trademark in your application, you may do so by following the guidance set forth in MPEP 608.01(v) (http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r7_0600.pdf). If you want to reference a U.S. patent or a U.S. patent application publication, you may include the patent number or the U.S. patent application publication number. As to photographs or images taken from an advertisement or Web page, you may submit such information as an information disclosure statement (IDS) if such information is material to the patentability of the claims in your application. See 37 CFR 1.97 and 1.98 (http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf)for rules governing IDS
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.xml 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:
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
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
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/
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).
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.
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.
I am a consultant who is an inventor on patent applications filed by a client. The patent rights are assigned to the client. Is there any way I can independently track progress of the applications? Although I signed away the benefits from patents to these inventions, I didn't (to my knowledge) agree to be kept away from the patenting process.
If you are a named inventor in a patent application, you may obtain status information regarding your patent application from the Technology Center (TC) where your application is/will be examined. You may follow the prosecution process of your application via Private PAIR only if your client (I am assuming that your client is the assignee of record of the application) provides you with the Customer Number that is associated with the application. If your client does not provide you with the Customer Number information then you will need to contact the TC as noted above or you may follow the prosecution process once the application is published and is available in Public PAIR. If you are not a named inventor in a patent application, then you will either have to obtain permission from the applicant, attorney/agent of record, or the assignee of record to access the application (see 37 CFR 1.14(c)) or wait for the application to be published and is available via Public PAIR.
Do you know of any local (Alexandria) inventors groups or organizations that meet regularly?
The local (Alexandria, VA) inventors group is INCA (Inventors Network of the Capital Area). Here's their link: http://dcinventors.org/. For inventors who live in other parts of the U.S., you can look at the Website for the United Inventors Association to see if there is a local inventors group near you, www.uiausa.org
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/ .
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
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
Can a patent be filed jointly by two or more persons?
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.
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.
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.
Is there way to search applications that weren't successfully granted. I filed an application 12 years ago and lost the paperwork. How could I find that application?
Please contact the Application Assistance Unit Customer Service at 571-272-4000.
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.
Where do I mail my patent application?
Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450
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/
Which is the mail stop for sending the new non-provisional utility patent?
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.
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.
My question concerns maintenance fees. Is there a way to pay the maintenance fee for a patent beyond the 6-month grace period?
Yes, you can pay maintenance fees beyond the 6 month grace period. You have to file a Petition which you can do online. Procedures for filing a petition for reinstating an expired patent are set forth in MPEP, section 2590. There are two different petitions that are available to you. The first one is a petition under the unavoidable standard under 37 CFR 1.378(b), and the second is a petition under the unintentional standard under 37 CFR 1.378(c) and 35 U.S.C. 41(c)(1).
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
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.
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.