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On Line Chat Transcripts

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New Inventors

Any free help for patent search for new inventor? Do you have to have an attorney for a provisional patent. 

Inventors who need help in learning how to search patents can use the services of any of the 81 Patent and Trademark Depository Libraries (PTDLs) around the country.  For the PTDL nearest you check the USPTO Website:  www.uspto.gov/go/ptdl.  As for the second question, no you do not have to hire a patent attorney or agent to file a provisional patent application. Please contact our Inventors Assistance Center at 1-800-PTO-9100 for additional information. 

New Function

If I developed a pacifier with a new function would I need to file a design and utility patent?

A design patent only protects the ornamental design of a functional item. The utility patent protects the process of making, the process of using or the product itself.

Non-English Trademarks

Are there any restrictions from trademarking a product name that contains Spanish words?

The same laws and rules apply to marks in languages other than English. Other than those requirements, a non-English mark would have to be translated for the record.

Non-Obvious

I am working on an idea, but don’t know if our changes would be considered non obvious. The change is simple, but would help make the similar products standard by adding a plug, rather than a hard wire connection. Is something as simple as adding a plug considered non obvious?

The answer is not always that easy, please see MPEP 2141,  http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141.htm#sect2141 for guidance in determining obviousness.

What do you mean by non-obvious?

Obviousness is covered by 35 U.S.C 103. Under this statute, a patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. In a rejection under this statute, it is necessary to modify a single reference or to combine it with one or more other references. The term "obvious" applies to this modification/combination. If the modification/combination is obvious, then the rejection is proper.

To determine if a modification/combination is obvious, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. See MPEP 2142. 

Non-Provisional Patent

Can a non-provisional patent be filed prior to the expiration date of the provisional patent? If so, how soon can a non-provisional patent be filed?

A non-provisional application can be filed at any time between the filing date of the provisional application and within one year from the filing date of the provisional application.

Is it possible to file a non-provisional patent, which is based on a provisional patent, as a non-registered user of EFS-web?

You may file a non-provisional application via EFS-Web as a non-registered user. While the office encourages use of EFS-Web, you do not have to file a non-provisional application via EFS-Web.  You can mail your application to the office.

Non-US Citizens

My colleague and I are neither living in the US nor US citizens. We are interested in submitting a provisional patent for a method and apparatus. We already wrote the patent + drawings. Are we allowed to submit the patent? Do we require an address in the US? What other special requirements exist from Non US citizens?

You can file for the patent application without a US address. There are no special requirements for non-US citizens. 

Not been Examined

I am with a US start-up attempting to create jobs by manufacturing a unique new food product in the US. Over two years ago we filed a utility patent that still has not been examined. Unfortunately, this lack of protection has resulted in us not being able to attract investors to properly invest in manufacturing or marketing of our product. The result is that our business is close to failing. Ironically, there is a large foreign company actively promoting a product that would be in direct violation of our patent were it to be granted. Is there anything you can do to help us?

You should contact the Office for a status update, if necessary you want to consider filing a petition to make special, see  http://www.uspto.gov/web/offices/pac/mpep/documents/0700_708_02.htm#sect708.02

Not an Lawyer

Can someone who is not an lawyer complete the patent process?

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.

Notice of Allowance

Regarding a United States Trademark filing (registration as defined in U.S.C. 15 Sec. 1051(b)1) that completes "published for opposition" (without legal opposition) and "notice of allowance" requirements, what is additionally required in having a "U.S. Serial Number" develop as a "U.S. Registration Number"?

If you have received a Notice of Allowance (NOA), you must file either a Statement of Use (SOU) or a Request for An Extension of Time to Use the Mark within six months of the date. You must continue to file Extensions of Time every six months until you use the mark and can then file your SOU. You have a total of 36 months from the issuance of the NOA to file your SOU. But remember, you have to continue to file the six month Extension Requests until you are ready to file the SOU. Once your SOU is accepted, your registration will issue in due course.

Notice of Allowance Fees

I paid for a patent Notice of Allowance Fees on March 26 and Understand that it is now in the "Publication" Process at least since May 04. When could I anticipate to see issued patent? How long is typical "Publication" Process?

The average time is 4 months from issue fee payment to publication.

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Obtaining a Trademark

Which link on the PTO website would I go to begin my effort at obtaining a Trademark?

Try this -  http://www.uspto.gov/web/trademarks/workflow/start.htm

Obviousness

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 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?

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.]

Old Patents

I found an old patent (1927) that only came up when I entered the patent number but not when I entered the subject or Inventor's name. Is that a common problem?

Old patents are not searchable by text. Only those patents that have issued since 1976 to date can be searched by text.

Online

Is it true a comprehensive patentability search cannot be conducted online because many patents have not been posted by the USPTO?

A comprehensive patentability search involves searching both patent documents and non-patent literature.  U.S. patent and U.S. published applications may be searched on the USPTO Website.  Non U.S. patents and non U.S. published patent applications (e.g., foreign patent documents) may be searched on various free search databases of other patent offices.  Non-patent literature disclosures of inventions may be found in a variety of publications, many of which may not be freely available online such as journals and conference proceedings.  So, yes, there is more to a comprehensive patent search than just searching U.S. patents and U.S. published applications.  Searchers can get guidance on how to do comprehensive patent searching by visiting one of our 81 Patent and Trademark Depository Libraries, a nationwide network of libraries with trained personnel.  

Can I apply for a provisional patent on-line?

Yes, for additional information go to http://www.uspto.gov/ebc/efs_help.html .

Online Resources

Do any of the USPTO Libraries have online access?  I don’t have any very close to me.

You can access the USPTO Website at any public library with Web access.  At the Patent and Trademark Depository Libraries (PTDLs), you can receive expert assistance.  Check with your nearest PTDL to find out what kind of phone or chat reference assistance is available.

Could you please provide links describing how to file an appeal as an independent inventor?

Here is a link that provides an overview of the appeal process: http://www.uspto.gov/patents/process/appeal/index.jsp.  As per guidance on how to file an appeal, the best resource is Chapter 1200 of the Manual of Patent Examining Procedure (MPEP) available at http://www.uspto.gov/web/offices/pac/mpep/documents/1200.htm.  Please note sections 1204, 1205, 1205.01, & 1205.02, in particular. In addition, please see 37 CFR 41.31 and 41.37 available at http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf

Do you know of any online resources that allow a text search going back prior to 1900?

In searching older patents, one can do the most comprehensive job by searching via the U.S. Patent Classification.  Keyword searching, even if it were available for pre-1900 patents would likely miss patents due to the change in the language of technology from the pre-1900’s  One can learn how to search via U.S. patent classification at any one of the 81 Patent and Trademark Depository Libraries in our network (see www.uspto.gov/go/ptdl).  Some vendors have scanned early patents using OCR scanning with mixed results.

What is the name of your facebook page?

http://www.facebook.com/uspto.gov

Opposition

I currently have a trademark application that was published for opposition. A request was made to extend the opposition date. That date expired a month ago and I have not heard anything for the examining attorney or from voice messages left. What is the current time period to get a response?

That time period can vary. There are many papers filed regarding oppositions and the Trademark Trial and Appeal Board processes them as quickly as they can, but there is a significant backlog. You might try tracking your application on the TARR system since that will show when a paper is filed and give you some idea of the status of the opposition or extension of time to oppose situation.

If I file an opposition to another persons trademark, what will the trademark office ask of me after reviewing my opposition?

The USPTO doesn't "ask" for anything - it's the parties that ask for evidence, exhibits, etc. from each other and these requests just go through the office during the opposition process.

Outreach Programs

Does the USPTO offer any courses or other Out-Reach programs (in addition to these chats, the Inventor Assistance Center (which is Very Good), etc. to assist new inventors to the world of how to prosecute a patent?  Does the USPTO work with any Universities or Community Colleges to provide classes?

The USPTO does not work with any universities or community colleges to provide classes; however, our outreach program conducts at least two regional or national conferences per year in addition to the information on our Website. We offer educational programs through the Patent and Trademark Depository Libraries. In addition, there are instructional videos on our Website as well as podcasts on iTunes. We suggest that you also contact a local independent inventor group for additional assistance. You can find a list of those attached to our Inventor Eye newsletter.

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Page Not Found

While searching on the USPTO website, "Page not found" comes up?

It is likely that the browser has "timed out", just resubmit the search query when the network is not as busy.

Pair

What does check status in PAIR mean and can I just call up the USPTO and give them the inventor name and they will tell me the status?

PAIR is the Patent Application Information Retrieval system available at  http://portal.uspto.gov/external/portal/pair or contacts the examiner

Patent Approval Process

Can one expedite the patent approval process by paying additional fees for fast approval of patents?

An applicant can file a petition to make special based on applicant’s age (65 or older) or applicant’s health (see 37 CFR 1.102(c)(1)).  Petition to make special under the accelerated examination program is also available under MPEP 708.02(a). In addition, if your invention is directed to Green Technology, you may also file a petition to make special.  See www.uspto.gov/patents/init_events/green_tech.jsp.  If you have two applications pending before the USPTO and you are willing to abandon one of the applications, you may file a petition to make special under the patent stimulus plan.  See www.uspto.gov/patents/init_events/PatentStimulusPlan.jsp.  The USPTO is currently proposing a Track approach to examination that will allow you to pay a fee and have the application be examined as special. See notice of proposed rule available at www.gpo.gov/fdsys/pkg/FR-2011-02-04/pdf/2011-2585.pdf

Patent Public Advisory Committee

Are ordinary citizens, who are not corporate leaders, ever appointed to the Public Patent Advisory Committee? 

The selection of individuals for the Patent Public Advisory Committee (PPAC) is done in accordance with 35 U.S.C. § 5 subsection (b) reproduced herein.  The USPTO strives to have the PPAC represent a wide variety of viewpoints including but not limited to corporate stakeholders.  

35 U.S.C. 5(b) BASIS FOR APPOINTMENTS.- Members of each Advisory Committee- (1) shall be citizens of the United States who shall be chosen so as to represent the interests of diverse users of the United States Patent and Trademark Office with respect to patents, in the case of the Patent Public Advisory Committee, and with respect to trademarks, in the case of the Trademark Public Advisory Committee;(2) shall include members who represent small and large entity applicants located in the United States in proportion to the number of applications filed by such applicants, but in no case shall members who represent small entity patent applicants, including small business concerns, independent inventors, and nonprofit organizations, constitute less than 25 percent of the members of the Patent Public Advisory Committee, and such members shall include at least one independent inventor; and(3) shall include individuals with substantial background and achievement in finance, management, labor relations, science, technology, and office automation. In addition to the voting members, each Advisory Committee shall include a representative of each labor organization recognized by the United States Patent and Trademark Office. Such representatives shall be nonvoting members of the Advisory Committee to which they are appointed. 

Patent and Copyright

What is the difference between a patent and copyright when it comes down to ideas and inventions?

The definition of a copyright can be found at http://www.copyright.gov/

Patent and Trademark Office Location

Where is there an office in Los Angeles?

There is only one US Patent and Trademark Office and it is located in Alexandria, VA. However, patent and trademark information is available at locations throughout the United States. To located the Library in Los Angeles go to  http://www.uspto.gov/web/offices/ac/ido/
ptdl/index.html

Patent Agent

Can I use a patent agent as opposed to a patent attorney to obtain a patent

Yes, as long as they are registered to practice before the USPTO. See  https://oedci.uspto.gov/OEDCI/

Is it allowed for a law firm to have someone who is not a registered patent agent or attorney write a patent application or responses as long as a registered attorney or agent is managing them – or is this a violation of USPTO rules?

The registered practitioner must actually review and approve the work of the unregistered individual before the papers are submitted to the office. In reviewing the work, the registered practitioner must conduct a reasonable inquiry as to each paper (each application, amendment, affidavit, declaration, petition, etc.). See 37 CFR 10.18(b)(2). A reasonable inquiry requires that each paper be read in its entirety, and the practitioner confirms that the claims and other legal contentions therein are warranted and not frivolous (see 10.18(b)(2)(ii)); and that the allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery (10.18(b)(2)(iii)); and denials of factual contentions are warranted on the evidence or if specifically identified, are reasonably based on lack of information.

Patent Application for an Internet Process

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?

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

Patent Applications

How important is it to provide examples in patent applications (in the specification)? Will a general disclosure suffice?

Examples are not usually required, however the written description must be in such clear, full and concise terms so as to enable one skilled in the art to make and use the invention. See 35 U.S.C. 112, first paragraph and MPEP 2161, which can be accessed at: http://www.uspto.gov/web/offices/pac/

Can I apply for a design and utility patent for the same product or is this overkill?

Yes, you can apply for both patents. A utility patent protects a new, useful, nonobvious and adequately discussed machine, manufacture, composition of matter, process, or improvement thereof. On the other hand, a design patent protects only the appearance of an article of manufacture, not the way the article functions or the materials of its manufacture. A better mousetrap could function (work) exactly like the mousetrap of old, but have a different appearance; it would then be appropriate for a design application. If, however, it had a new function in a way it trapped mice, it could also be appropriate for a utility application.

How do I know which patent application(s) to file: utility, design or both?

The two are not necessarily exclusive; one invention could be the subject of both kinds of patents. A utility patent protects a new, useful, nonobviousness and adequately discussed machine, manufacture, composition of matter, process or improvement thereof. On the other hand, a design patent protects only the appearance of an article of manufacture, not the way that article functions or the materials of its manufacture. A better mousetrap could function (work) exactly like the mousetrap of old, but have a different appearance; it would then be appropriate for a design application. If, on the other hand, it had a new function in the way it trapped mice, it could also be appropriate for a utility application.

I have a product patent and a process patent. Can I do both on 1 application?

Yes you may file a single application claiming both a product and a process. The examiner may require you to elect one invention for examination. You may then file a divisional application claiming the non-elected invention.

Can an individual legally file a Patent application? How?

Yes, an individual can file a patent application. And starting March 17, 2006 you can file electronically using EFS-WEB.

What is the wait time from application of a Patent to issuance?

The wait times varies widely among the various technologies. A relatively simple technology might have a wait time as short as 12 months while a more complicated technology could have a wait time as long as 4 to 5 years.

Can one apply for a worldwide patent in one place or one needs to apply in each country individually?

Currently, there is no world wide patent.  However, you can file an application under the Patent Cooperation Treaty (PCT) and designate those countries that you want to obtain patent protection.  You would then need to file an application, using the PCT application, as a national stage entry application in each country where you want patent protection.  If you need further information regarding the PCT, please contact the PCT Help Desk at 571-272-4300.

Patent Attorney

What are the chances of obtaining a patent if I don't use a patent attorney? Are there any pitfalls to avoid? Any advice?

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.

Do most inventors use a patent attorney and how do we go about finding a good one in our area?

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 familiar with your technology.

Can I write and file my own application but have further activity with regard to the same application, such as office action, handled by a patent attorney?

Yes you can, you would just have to file a "Power of Attorney"

I hired an attorney to handle my patent application and I don't think he is doing a good job. Is there anyway for me to speak directly to the examiner handling my case?

If you have hired an attorney to represent you in prosecuting your patent application, the USPTO will only correspond with the attorney. The USPTO will not conduct duplicate communications between the applicant and the attorney.  Procedures do exist for you to revocate your power of attorney in the case you do not wish to continue with the assistance of your attorney.  See Manual of Patent Examining Procedure, MPEP 402.05 http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r5_0400.pdf

What is the wait time from application of a Patent to issuance?

The wait times varies widely among the various technologies. A relatively simple technology might have a wait time as short as 12 months while a more complicated technology could have a wait time as long as 4 to 5 years.

Patent Classifications 

When filing for a patent, where do you find the proper classifications?

The Patent Office will determine the proper classification. If you are e-filing, there is a place for you to suggest a classification, but this portion can be left blank.

Where would I find a list of the US and International patent classifications?

You can go to  http://www.uspto.gov/web/patents/classification/ for classification help.

Patent Lawyer

Do I need a patent lawyer to write a patent. I feel like I can write a simple patent on my own. If it is a straightforward idea, then perhaps I don't need a lawyer. Are there many inventors that do this? If so, do they have problems getting accepted?

You may file and prosecute your application yourself, but lack of familiarity with patent laws and procedures may prevent you from obtaining the claims that best protect your invention. The Office strongly suggests you hire the services of a registered patent attorney or agent.

Patent Insurance

What is “patent insurance”?

In theory, patent insurance is similar to any other kind of insurance, i.e. home, auto, etc. except it protects a patent holder against loss due to infringement of a patent. The choice as to whether one should seek patent insurance is strictly up to the patentee and should be carefully considered as with any other type of insurance purchases.

Where do your purchase patent insurance?

In theory, patent insurance is similar to any other kind of insurance, e.g., home, auto, except it protects a patent holder against loss due to infringement of a patent. The choice as to whether one should seek patent insurance is strictly up to the patentee and should be carefully considered as with any other type of insurance purchases.

I read the fact sheet- however, are you saying that one can purchase patent insurance from an insurance company like State Farm?

I don't know that State Farm sells it, but any insurance company that sells business insurance typically sells it. Please check with your insurance company.

I was not aware of patent insurance until today, where is a good rsource to research other concerns and post allowed subjects that I should be aware of just in case I have an allowed patent?

Another resource is your local independent inventor groups.

Patent Model

Are there any circumstances where a patent model is still required as part of an application? 

The USPTO can request an applicant to submit a patent model in certain circumstances. Please note 35 U.S.C. 114 Models, specimens and 37 CFR 1.91 Models or exhibits not generally admitted as part of application or patent.

Patent Office Action

What options do you have once you have received a final office action - other than file a notice of appeal?

You may file a request for continued examination (RCE) under 37 CFR 1.114. An RCE requires the payment of a fee and a submission, which may be an amendment or arguments. You may also further amend your application or request reconsideration, but the examiner may refuse to enter amendments after final if they raise new issues which were not raised previously.

Patent Owner

Patent Owner: Can more than one (owner) name be issued on a patent?

Yes, a patent is personal property and may be sold to others or mortgaged; it may be bequeathed by a will, and it may pass to the heirs of a deceased patentee. The patent law provides for the transfer or sale of a patent, or of an application for patent, by an instrument in writing. Such an instrument is referred to as an assignment and may transfer the entire interest in the patent. The assignee, when the patent is assigned to him or her, becomes the owner of the patent and has the same rights that the original patentee had. See  http://www.uspto.gov/web/offices/pac/doc/general/assign.htm

Patent Pending

Is there any fines for misuse of Patent Pending? 

Regarding your question pertaining to use of the term patent pending, 35 U.S.C. 292 addresses the  false marking of products with any of the  terms “patent,” “patent applied for,” or “patent pending.”  The statute sets forth the penalties for improper marking and provides for proper/improper marking. To ascertain how the statute applies to your particular situation, it is recommended that you consult a registered patent attorney.

Can you please explain what the term “patent pending” means and what rights the inventor has to the product if the status is pending:

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.

What protection does "patent pending" offer?  Is it best to wait for a proper patent to be granted prior to manufacture?

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 to the public 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. 

Patent Pending Status

Once I have filed my non-provisional patent on-line, at what point can I claim patent-pending status?

You can use "patent pending" upon the filing date receipt of the provisional application for the duration of the one year, unless you file a non-provisional application within that year.

Patent Protection

Are US patents are protected Internationally?

No, U.S. Patent only gives you the right to keep others from making, using, offering for sale, or selling the invention in the United States.

Once an attorney files a patent, how long does the U.S. patent protect me?

Once your application is filed you have limited protection and patent pending rights. The term of a granted non-provisional utility patent is twenty years from the earliest effective U.S. filing date for which benefit is claimed under 35 U.S.C. 120, 121 or 365(c). In order to obtain full protection for the entire patent term, maintenance fees are periodically due to the Office.

Patent Renewal

Is there a link where we can find instructions on renewing our patents?

Patents are not renewable, in rare circumstances the term
may be extended, see  http://www.uspto.gov/web/offices/pac/dapp/opla
/term/index.html for additional information.

Patent Public Advisory Committee (PPAC)?

Website Who at the USPTO should I contact about the due dates for nominations for the Patent Public Advisory Committee (PPAC)?

Information about PPAC nominations is available at:  http://www.uspto.gov/web/offices/com/advisory/index.html.

Patent Search

How do I approach a patent search to see if anything similar has been done?

There are 84 Patent and Trademark Depository Libraries (PTDLs) located nationwide and Puerto Rico. PTDLs have qualified and experienced staff who can 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, finding a patent attorney or agent, etc. Visit the USPTO website for a list of PTDLs with links to library web sites and telephone numbers. List of PTDL Libraries:  http://www.uspto.gov/go/ptdl/

How long does it take to get a patent search done?

Unless a patent application is filed, the Office does not conduct patent searches for the public. There are private search firms which can provide this service (we do not regulate their fees). However, you can conduct your own search via our web site or at a Patent and Trademark Depository Library.

If I have an idea that I would like to purse a patent for, what is the best way to go about doing patent research?

You can go to our web site at  http://www.uspto.gov/ and conduct a search or you can go to one of 84 Patent and Trademark Depository Libraries (PTDLs) located nationwide and Puerto Rico. PTDLs have qualified and experienced staff who can 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, finding a patent attorney or agent, etc. Visit the USPTO website for a list of PTDLs with links to library web sites and telephone numbers.
http://www.uspto.gov/go/ptdl/

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/

What is the safest method for searching the patent database and can a prospective inventor do it efficiently?

From the USPTO homepage,  http://www.uspto.gov/ , click on "How to Search" on the top black and blue bar. On the blue box for searching patents click on "How to search for patents at a PTDL" to pull up the 7-Step strategy which can be done on-line as well as at a PTDL.

Patent Security

How do I know that my invention isn’t going to be stolen during the application process for a patent? Can I trust an attorney? Can I apply for a patent without an attorney? What are the risks when I do that?

All patent applications that have not been published are kept in confidence by USPTO personnel. An attorney in your employ must keep your confidences and secrets. You can apply for an application without an attorney, however, patents are legal documents and the use of a registered patent attorney/agent is strongly encouraged.

Patent Services

Is there information I can obtain regarding patent services and the pros and cons?

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.

Patent Submission Company

Who is liable for misrepresentation or fraudulent business practices within a patent submission company? Is it the company, the sales agent/employee of the company or both?

The USPTO has no authority to investigate invention promotion firms, but if you would like to file a complaint about a particular invention promotion firm please go to  http://www.uspto.gov/web/offices/com/iip/complaints.htm . You should seek legal advice as to any liability issues.

Patent Term

How long does a patent last?

Utility patent protection is approximately 20 years from the filing date of the application. Design patent protection is 14 years from the issue date.

Patent Value

What is the point of getting a Patent?

Patents grant a right to exclude others from making, using, offering for sale, or selling the patented invention. Often the mere fact that a product is patented will prevent others from copying in order to avoid the possibility of litigation. Patents also provide a mechanism to allow inventors to license and sell their inventions. The courts are the mechanism for enforcing patent rights so lawyers necessarily are involved.

Patentability Standards

Does the USPTO have published standards to determine patentability?

Patentability is based on statutory law and case law. See 35 USC sections 101, 102, 103 and 112. Title 37 of the Federal Register sets forth the Patent Rules see http://www.uspto.gov/web/
offices/pac/ mpep/consolidated_rules.pdf Further, the Manual of Patent Examination Procedures sets forth guidelines for examination, see in particular Chapter 700 and 2100, http://www.uspto.gov/web/ offices/pac/ mpep/ mpep_e8r2_2100_508.pdf

Patents

Can I register a patent from germany or would I have to travel to the U.S.?

No, you do not need to come to the United States. You may file the application directly by mail or by using EFS. You may engage a US patent attorney/agent to represent you. A roster of attorneys/agents is available at  http://www.uspto.gov

Do I have to get a patent in each state?

No you do not. A U.S. patent protects your invention in all the U.S. states and it's territories. Patents are granted by the USPTO only and cannot be granted by States.

Does a patent protect your product in other countries?

A US patent, with limited exceptions, protects the claimed invention only in the United States and its territories.

How is it possible to obtain a patent for a product that is already out there (ex mops). Does it matter if the function is the same but the design is different? Can a utility patent be made on one product but then a design patent on a similar product?

Most patents are improvements over old technology, i.e. , the inventor starts with something known and develops or engineers something that is different. In analyzing these "differences", the patent examiner is ascertaining whether the modified device is "novel" and not "obvious" with respect to the known technology (generally called the "prior art"). The examiner then analyzes these differences in light of the statutes (35 USC 102 and 103) to conclude whether the claims in the application are patentable over the prior art. Claims, which meet this standard, are allowed and claims, which do not, are "rejected".

Is a patent required where the invention is the use of a material for a different purpose?

You may want to apply for patent protection in order to protect a new use of an old product.

We've had a prototype produced, but the means by which it was built is different than how it would actually manufactured, and we don't quite know all of the details about the process and materials that would be used in manufacturing. So, should we go ahead and apply for the patent now, or wait until we have all of our information?

If you have an article that you believe is patentable, you should file an application to protect the article itself. This is true even if you do not know how to manufacture the invention. Once you have worked out how to manufacture the invention, you may also be able to file an application for the method of manufacturing the article.

Patents - Publicly Available

When does a patent application become available for public review?

It becomes available when the application is published, generally 18 months from the earliest filing date claimed.

Patents on the Web Site

Is it possible to view pre patent items on your webaite?

Applications published 18 months after the filing date are available for viewing on our web site. Go to http://www.uspto.gov/patft/index.html

Patent vs Copyright

How do you determine whether something should be patented vs. copyrighted? Is copyright just for written materials or would it also apply to a product name?

A patent is a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted. Whereas copyrights protect the form of expression of a creator against copying. Literary, dramatic, musical and artistic works are included within the protection of U.S. copyright law. The USPTO does not register copyrights. Please refer to the Copyright Office at:  http://www.copyright.gov/

Patents Without An Attorney or Agent

What are the chances of allowing a patent if one does not go through a patent attorney?

There are no requirements that you must use a registered patent attorney or agent. However the process of securing a patent can be complicated and the Office strongly suggests using the services of a registered patent attorney or agent. A listing is available at:  http://www.uspto.gov/web/offices/dcom/gcounsel/oed.htm

Canada will allow individuals to apply without an agent. Can I apply for a usa patent without hiring any usa nor qualified agent in canada who is legal in the usa.

An inventor can file and prosecute his or her own application without hiring a registered patent agent or patent attorney.

PCT

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?

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

Is it worth it to file a U.S. patent anymore, considering the advantages of PCT?

PCT is a mechanism that makes it easier to file patent applications in multiple treaty member countries. In order to obtain patent rights from a PCT application, one must enter the national stage in each country according to their laws. Most importantly PCT, in and of itself, does not give you the right to exclude others from making and using your invention in this or a foreign country.

I filed PCT application on Nov 20, 2003 (with priority date May 9, 2003). I received International Search report on November 12, 2004, and have filed case II (demand) for written report. My international search authority is US. How do I go about protecting my intellectual rights in designated countries? What’s the time limit? Is attorney mandatory? Kindly advise fees etc. too. I have 66 designated countries/regions in my PCT.

Protecting your intellectual property rights in the designated/elected offices is achieved by obtaining patents in the national/regional offices. Since you have already filed an international application under the PCT, the next step is to enter the national/regional phase in the designated/elected offices where you desire patent protection. Assuming that your Demand was filed within 19 months of your priority date, you will have at least 30 months to enter the national phase in each office. Some offices will set a later deadline but a full list of national/regional phase entry deadlines can be obtained from the following web address:  http://www.wipo.int/pct/en/texts/pdf/time_limits.pdf .

Regarding specifics of national/regional phase entry, such as representation requirements, fees, etc., each national/regional office prescribes specific requirements according to their own laws. The PCT Applicant's Guide, available at the following web address, provides specific instructions/requirements for entering the national/regional phase in each office:  http://www.wipo.int/pct/guide/en/index.html

Further information can be obtained from the main PCT page on the web site of the World Intellectual Property Organization (WIPO):  http://www.wipo.int/pct/en/

We have filed a US patent application, and would like to file patent application in other countries, What should we do? When should we do? Are there any time limits? What is PCT, if we file a PCT application, can my US patent application enter national stage automatically?

I suggest that you seek legal advice to answer all of your questions There is more to your question than can be answered in this forum.

Exactly what Fees are required for Initial International PCT fillings with 12 Months after filling a U.S. Non Provisional Patent I want to know the costs of filling international patents in order to recieve the additional 18 months before filling in other countries?   How does filling international effect an U.S. non provisional patent application?

You may want to visit our Web site at http://www.uspto.gov/patents/int_protect/index.jsp or contact the PCT help desk at 571-272-4300.

Can I start National Phase application under PCT in other countries through the USPTO?

The answer to your question is no.  You will need to file an application in each country designated in the PCT application for national stage entry. For information regarding the PCT, please contact the PCT Help Desk at 571-272-4300.

Phone

Is it possible to communicate by phone with the reviewer to discuss the matters enclosed in his first office action letter?

Yes, patent examiners are available to discuss office actions with inventors when no attorneys or the agents represents the inventor. Please refer to MPEP 713 for further information about requesting an interview. http://www.uspto.gov/web/offices/pac/ mpep/index.html

Physical Design

If the functionality of a new item depends on its physical design, should I pursue a design patent, a method for using the item, or both?

If your invention's function depends on its physical design, you might be better off applying for a utility patent which protects the function or use of the invention. Inventions having an appearance that is dictated by functionality would not be able to receive a design patent.

Pictures Versus Drawings

Can you take pictures of a prototype to use as your art in the actual patent, and not use drawings?

Photographs are not ordinarily permitted in utility and design patent applications. The USPTO will accept photographs in utility and design patent applications if photographs are the only practicable medium for illustrating the claimed invention. See 37 CFR 1.84(b) for additional information regarding photographs.

Can we provide a photograph instead of a drawing along with detailed description for a PPA?

Photographs, including photocopies of photographs are not ordinarily permitted in utility and design patent applications.  The USPTO will accept photographs in utility and design applications if the photographs are the only practicable medium for illustrating the claimed invention.  See 37 CFR 1.84(b). If the photographs are color, then you must also submit a petition under 37 CFR 1.84(a)(2).  See 37 CFR 1.84(b)(2).

Practitioner's Registration Number

We are trying to complete the Patent form for viewing patent applications on-line and the form asks for a "practitioner's registration number" is that the inventor's patent number?

No, that is the registration number of a registered patent attorney. You do not need to include a number there.

Prior Art

Can the regulations regarding prior art be adjusted so that provisional patent applications can be referenced as evidence of prior art when a patent application has been submitted?

The USPTO solicits feedback with respect to regulations governing patent prosecution.  Currently, the USPTO has issued a Federal Register notice seeking input on USPTO regulations which would include those you mention.  See http://edocket.access.gpo.gov/2011/pdf/2011-6660.pdf.   As to your question, provisional patent applications are maintained in confidence and are not published. Please submit a comment in response to the above-noted Federal Register notice if you suggest that changes to the regulations would be beneficial to the innovation process or helpful in pursuing strong patent protection.

In the 2008 Supreme Court ruling on obviousness that there must be a suggestion or teaching for the combination of prior art references cited to be combined can a design patent teach or suggest anything without written text? Is not a design patent just an ornamental design?

The Supreme Court decision that you may be referring to is KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007). In the KSR decision, the Supreme Court stated that the teaching-suggestion-motivation rationale was one of a number of rationales that could be used to determine obviousness. It is not the only rationale for determining obviousness. Whether the claimed subject matter would have been obvious to one of ordinary skill in the art is very much fact dependent. The examiner must apply the factual inquiries of Graham v. John Deere in determining obviousness (see MPEP 2141). Prior art such a design patent can be used to reject a claim in a utility patent application.   

Priority

I have a number of published patents. I would like to refer to one or more of them in new applications to the USPTO. What is the method to refer back ? Also, does the USPTO refer or recommend prototype services?

I am assuming that you are referring to a U.S. patent in your question and not a foreign patent. To answer your first question, I will cover the situations when a prior U.S. patent may be cited in a later filed application. There are situations when a prior patent may be cited in an application: 1) as background information, 2) to incorporate by reference the subject matter of that prior application or patent.

1) The simplest situation is when you are using the published patent to establish the background of the invention. This is sometimes called the state of the art for the particular invention. There are two purposes for doing this. You can either put the invention in context related to other inventions or to provide a framework for others to understand your invention. When citing a published patent, all that must be done is to list the patent number and the inventor's name in the "Background Of The Invention" section of your application and describe the details of that patent that you think are relevant.

2) An application may incorporate by reference the subject matter of another patent or application. Incorporation by reference is a shorthand way of saying that the disclosure of the earlier application or patent is a part of the present application. Incorporation by reference is clearest when you use the phrase "incorporation by reference" when you first mention the application or patent that you want to incorporate by reference into your application. See 37 CFR 1.57 and MPOEP 608.01(p) on incorporation by reference.

If your “new applications” were filed in the USPTO during the pendency of your “patents,” meaning that your “patents” have not issued as patents at that time and these applications are pending in the Office, your “new applications” may claim the benefit of the filing dates of the prior applications under 35 U.S.C. 120 provided 5 requirements must be met. These requirements are set forth in MPEP 201.11.

Finally, in answer to your second question, the USPTO cannot recommend the services of any business.

Product (idea) But Fails to Follow Up On It

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.

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.

Product Name

If a product name for your invention is within the text of the patent pending, and the name was not trademarked by anyone before the date of this patent's filing, would the patent applicant have priority to trademark that name later on (by virtue of a kind of patent umbrella if you will)?

If the term is used in the patent as a generic or descriptive term, it would probably not be considered as being used as a trademark and, therefore, entitled to claiming that use as a use of the mark. If the term is used as a trademark, the user may be entitled to claim first use priority against later users. Of course, if you used the term as a mark before the filing of a patent, you would be the holder of the priority first use date.

Product Worth Patenting

Is an inexpensive product worth patenting? Something that would sell for 2-3 dollars.

It depends upon whether you are planning to market the invention. Even though a product may be inexpensive, if there is a large volume then there may be a corresponding benefit. The purpose of patents is to prevent others from making, using, offering for sale/selling, or importing an invention.

Pro-Se Filing

What is the easiest and simplest way for individual inventor to write his own inventor application personally? with a minimum required info and contact and without any further and optional information?

You should search the area of your invention and use a patent as your guide. If you see a particularly well written patent you should use this as the basis for writing your application. Remember, the claims are the most important thing in your application. Since they define your patent protection.

Protection

What protection does a patent give the person who files it?

A patent is a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

A patent attorney told me that once I received the case number for a patent, that would grant me the legal protection should someone try to take the invention. The USPTO says that only once the patent is actually granted does the protection actually begin. When does the protection actually begin, and what difference does it make with having a "patent pending" on a product?

The protection begins when a patent is granted, not when you receive an application number. Once you have received a patent application number, you may put “patent pending” on your product. This just gives notice to the public that you have filed a patent application in the USPTO. It does not give you “patent protection.”

Provisional

If I filed a provisional patent, then later file a non-provisional on the same subject matter but did not claim the original provisional, can I claim it later if there is an interference (which could be years later in some cases)?  If so, how does that affect foreign filing since foreign filing must be done within 12 months from filing – would the non-provisional filing date be the one counted or the later claimed provisional date? If an interference necessitated claiming the earlier provisional patent; could that nullify foreign filed patents that were not filed within the 12 month window of the provisional but were filed within 12 months of the non-provisional filing?

The requirements and timing for claiming the benefit of the filing date of the provisional application in your non-provisional application are set forth in our rules, 37 CFR 1.78(a)(4) to (a)(6) (http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf).  37 CFR 1.78(a)(6) sets forth what is required for a late claim of the benefit of the filing date of the provisional application.  As to your question on foreign filing, note that a provisional application is a regular national filing that starts the Paris Convention priority year. Foreign filings must be made within 12 months from the filing date of the provisional application if you wish to rely on the filing date of the provisional application in the foreign filed application. See MPEP 201.04(b) (http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r5_0200.pdf).  You can contact the Inventor’s Assistance Center at 1-800-786-9199.

My Provisional Pending Patent 's deadline is April 3...Can I apply for an extension on this patent pending or do I need to apply for a Patent before this date?

Provisional applications are not extendable. If you want the benefit of your earlier filing date you must file your non-provisional application within 1 year of the filing of the provisional application. See  http://www.uspto.gov/web/offices/pac/provapp.htm

Provisional Application

Can you file a non-publication request on a provisional patent?

No. Provisional applications are not published. If you want to file a non-publication request, you will need to file the request in a nonprovisional application. 

If I filed a PPA and it expired, can I re-send it and receive a new filing date?

Rob: as long as you have not made a public disclosure more than one year prior to the filing date, you can resend it and receive a new filing date.

Provisional applications are not examined?

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.

I heard that you don't have to file any claims in a provisional application. Does that mean I can file unlimited claims?

Filing claims in a provisional is not required. 37 CFR 1.16 exempts provisional applications from excess claim fees. However, claims filed in provisional applications are not examined.

Approximately how long does a provisional patent application take to be accepted or declined?

Provisional applications are not examined so they are not "accepted or declined" nor do they mature into a patent. 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 will be examined by the Office.

What do I need to do to get a provisional patent?

The requirements for a provisional application are a 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 (which can be found at  http://www.uspto.gov/web/offices/pac/provapp.htm )

However, you do not need to file a provisional application, you can directly file a non-provisional application.

See also Applying for Provisional Patents Online 

If a provisional application is filed and then after 12 months expires without filing a non-provisional application filed, does this prevent a patent ever to be issued?

No, the failure of you to file a non-provisional application within 12 months from the filing of your provisional application would not prevent you from obtaining a patent. However, if you do file your non-provisional application after the expiration of the 12 months time period you will not be entitled to the benefit of the earlier filing date of your provisional application and the examiner may use prior art with a date prior to the filing date of your non-provisional application to reject the claims in your non-provisional application.

I have a great idea that I want to protect but I'm not ready to file a patent application because I want to spend more time developing my invention. I have heard about a document disclosure program. Would that help me protect my invention?

The disclosure document program has been discontinued in favor of the filing of provisional patent applications. Thus an inventor would not only be able to establish a date of invention but also would be entitled to the benefit of that earlier provisional application filing date when a nonprovisional application is subsequently filed claiming the benefit of the earlier filed provisional application under 35 U.S.C. 119(e). A provisional application is not examined and cannot issue as a patent.  It is the nonprovisional application that is examined and can issue as a patent.

What is the response to a provisional utility patent?  Is a patent actually granted?

Provisional applications are not examined and can never issue as patents.  It is a non-provisional utility application that is examined and can issue as a patent. Therefore, if you filed a provisional application and you want patent protection, you must file a non-provisional application within one year from the filing date of the provisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e).

I have an additional method that I thought of two years after filing my PA, I now need to file a new PA for the apparatus the parts are all the same only the new claim will include a method of use, when I write my application the wording will be basically the same other than the method of operation will be changed, is this correct?

You may file a non-provisional application claiming a method of using the apparatus disclosed in your first filed non-provisional application. Your second non-provisional application may claim the benefit of the filing date of your first non-provisional application provided you comply with all the requirements of 35 U.S.C. 120.

Would my provisional app filing date be cosidered my "invention date," and how can I tell if someone else has filed a similar one? before selling the product or continuing to file the non-prov app?  I'm confused about any advantage to beginning with a provis app, if I'm sure I can sell the product...

Your provisional application filing date would be considered the invention date if the provisional application covers all that is in your non-provisional application.  The question as to who was the first to invent will be decided by the Board of Patent Appeals and Interferences if and when an interference is declared.

Is it better for me to just file a non-prov app and wait for a patent number before selling a product? Seems like it could take a long time and involve litigation anyway.

We can not advise you how you should file for protection.  This a business decision that you will need to make.  Under the potential change to "first-inventor-to-file" the first to the PTO with an application has a more certain opportunity in obtaining the patent rights.

Provisional Application - Abandoned

What happens to a PPA after it has been abandoned?

The files are disposed of after one year from the filing date.

Provisional Application Cover Sheet

What is the web site to get patent forms to file for a provisional?

The provisional application cover sheet is available on our web site at  http://www.uspto.gov/web/forms/index.xml , scroll down to PTO/SB/16.

Provisional Patent

I've read articles written by patent attorneys that imply that a Provisional Patent is not worth much.  My sense is that it at least provides a "beginning" of the process, and thus has value.  Comments? 

A primary benefit of filing a provisional application is to establish a filing date for your invention.  It also enables you to indicate that your invention is "patent pending."  More information about the provisional patent process is available at http://www.uspto.gov/web/offices/pac/doc/general/index.html#prov

What amount of drawings and written description are required for a provisional patent?? What is the fee (is the fee 1/2 off for the small inventor or nonprofit)??

There is no set amount of drawings and written specification required in a provisional application. The requirement is that you make a full disclosure of your invention so that someone skilled in the field could make and understand your invention. However many pages that requires, is what you need to file. Please see,  http://www.uspto.gov/web/offices/pac/provapp.htm . The basic filing fee for provisional applications is $200.00 for large entities and $100.00 for small entities. For applications filed on or after December 8, 2004, if the specification and drawings exceed 100 sheets of paper, an application size fee of $250.00 for large entities and $125.00 for small entities is required for each additional 50 sheets or fraction thereof. See 37 CFR 1.16(s). Small entities are defined as independent inventors, small business concerns and non-profit organizations. You must establish small entity status for purposes of paying small entity fees. See MPEP 509.03.

Provisional Patent Application Forms

Need specific uspto.gov address to download Provisional Patent Application forms?

There are no required forms for provisional applications, however you can download the provisional application cover sheet at:
http://www.uspto.gov/web/forms/index.xml

Additional information about provisional applications is available at:  http://www.uspto.gov/web/offices/pac/provapp.htm

Provisional Patent Application with More Than One Invention

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?

Provisional applications 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.

Provisional Versus Non-Provisional Applications

Under what circumstances would you file for a provisional patent vs. a utility patent? (advantages) My product is sports apparel based.

A provisional application cannot become a patent and it will automatically be abandoned 12 month after its filing date. If you filed a provisional application and you want a patent, you will have to file a non-provisional application within 12 months from the filing date of the provisional application referencing the provisional application. A non-provisional application can become a patent and is the mechanism to provide actual patent protection. See  http://www.uspto.gov/web/offices/pac/provapp.htm for additional information about provisional application and  http://www.uspto.gov/web/offices/pac/utility/
utility.htm for additional information about utility applications.

What are the pros and cons of a provisional vs, non-provisional patent and what are the differences?

A provisional application cannot become a patent and it will automatically be abandoned 12 months after its filing date. If you filed a provisional application and you want a patent, you will have to file a non-provisional application within 12 months from the filing date of the provisional application referencing the provisional application. A non-provisional application can become a patent and is the mechanism to provide actual patent protection. See  http://www.uspto.gov/web/offices/pac/provapp.htm for additional information about provisional application and  http://www.uspto.gov/web/offices/pac/utility/utility.htm for additional information about utility applications.

What is the difference between a provisional and unprovisional (non-provisional) patent application?

A provisional application is generally filed for the purpose of establishing an earlier date of invention. Provisional applications are not examined, do not provide any protection and become abandoned one-year after filing. A non-provisional application is examined by the USPTO and may issue as a patent.

With a patent, then, the non-provisional application is required? Or do you file one or the other?

If you first filed a provisional application, that provisional application is not examined and cannot issue as a patent. In order to obtain a patent, you must file a non-provisional application. That non-provisional application can claim the benefit of the filing date of the earlier-filed provisional application provided you comply with all the requirements of 35 U.S.C. 119(e). Whether to file a provisional application before the filing of a non-provisional application is a business decision that you will need to make. For example, you may choose to file a provisional application first and then file a non-provisional application within one year after the filing of the provisional application since the cost of filing a provisional application is much less than the cost of filing a non-provisional application and claims and a declaration complying with 37 CFR 1.63 are not required in a provisional application. In addition, this will give you additional time to obtain funding to cover the cost of the filing and prosecution of a non-provisional application.

Publication of Provisional and Regular

If I abandon my Provisional application, will it still be published? Same question for the Regular application. Is there a procedure to stop publication of Provisional and Regular?

A provisional application is not published. Non-provisional applications are published after 18 months unless a proper request for non-publication is submitted at the time of filing.

Q

Questions

Who are the people answering these questions? All internal Patent Examiners? 

Yes, we are all USPTO employees and experts from different areas within the Office.  We actually did a quick count of years of experience and it was over 300 years worth of experience. 

Are there other ways to get answers to our questions in the event that they are not selected today?

You may contact the Inventor Assistance Center at 1-800-786-9199 for help with your specific questions.

R

Reexamination

I patented and sold a version of my invention to a distributor for resale to the public. A few days later a patent was filed and has since issued. The patent appears to cover the version of my invention. Can the receipt (1099) of my sale to the distributor be used as prior art if I request a reexamination of the patent?

If the invention was not in public use or sale in this country more than one year before the filing for your invention it will not be used as prior art.

Register Domain Name

If an individual is the first one to register domain name 1997/98 and continued to pay fees inclusive of US government fees for the right to that license, what type of copyright, TM protection does that afford? Would you recommend registering the domain as a Word mark including or not including the .com?

Registration of a domain name does not provide any copyright or trademark protection. A domain name can be registered as a trademark is if it used as a trademark - that is, a source identifier - and not just an Internet address or location. It's up to you whether you use it with or without the .com extension. You must follow all rules and requirements that apply to all trademark applications. For copyright information, please consult the copyright site at http://copyright.gov

Registered Trademark

I need to submit a form. I might not be getting the correct name, but I think it is the intention to continue to use the trademark in commerce.

If your mark is registered, you will need an Affidavit under Section 8 in which you provide information about your continued use of the registered mark. It must be filed between the 5th and 6th year of registration.

If a company with a registered Trademark doesn't use the the mark commercially for a period of time or anymore......Can anyone use the same mark?

The registration is considered valid until the registrant fails to file timely renewal documents. If you believe that the company is no longer using the mark and don't want to wait until they fail to file the required documents, you can bring a cancellation proceeding at the Trademark Trial and Appeal Board. Until a registration is cancelled, it is considered viable and the mark is entitled to all of the presumption afforded a registration under the law. You use the mark at your peril if the registration is not cancelled.

I'm getting ready to launch a line of greeting cards based on a theme. If I plan to expand that line to include other items do I need to apply for those items separately or can they be included under the registered name of the card line?

If the mark for the cards is already registered, you cannot add goods or services to that existing registration. You would have to file a new registration for the expansion of goods. If you have not yet applied to register the mark for the cards, you can include whatever goods or services on which you intend to use the mark in the same application.

Rejection

What is the differences of 101, 102, 103 and 112 rejection and I reply to each? 

Each of these statutes addresses different rejections made by the examiner in an Office action. In order to provide a reply that is considered responsive to the examiner’s Office action, you must reply to every ground of objection and rejection in the Office action.  See 37 CFR 1.111(b) available at http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf.  These statutes are accessible at the link http://www.uspto.gov/web/offices/pac/mpep/documents/appxl.htm. 

What can I do if the examiner refuse to explain the reason for rejecting the claim, or refuse to accept my argument without giving me the reason?

Please telephone the examiner’s supervisor (contact information should be listed at the end on the examiner’s office action).

Rejected Patent Applications

If a patent is not approved by USPTO does it become available for public review?

The short answer is patent applications that are abandoned and are not claimed or referred to in another issued or published application are not made publicly available. However, 37 CFR 1.14 explains in greater detail, see http://www.uspto.gov/web/offices/pac/
mpep/consolidated_rules.pdf

Having just received a second rejection on allowance of my claims stemming from an Office Action which cite three prior art references that make no suggestion motivation or teaching that they should be combined, is it allowed for the Examiner to just assume the combination should be made? My invention deals with improved aerodynamics for a pick-up truck. In all three prior art references the Examiner cites none even mention the word aerodynamic as is in the title of my application and throughout the text and claims of my patent application. How can the examiner object my claims when there is no reference to aerodynamics or fuel efficiency in all prior art references cited?

Whether the claimed subject matter would have been obvious under 35 U.S.C. 103 based on the prior art is very fact dependent.  The examiner must apply the factual inquiries of Graham v. John Deere in determining obviousness (see MPEP 2141).  As noted by the Supreme Court in a recent decision, KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007), the teaching-suggestion-motivation rationale was one of a number of rationales that could be used to determine obviousness.  It is not the only rationale for determining obviousness. If you feel that the examiner has made a mistake you can point out the error in your response.  In the alternative, since your claims have been rejected twice, you may appeal the examiner’s rejections to the Board of Patent Appeals and Interferences.  See 35 U.S.C. 134.You may also contact the Supervisory Patent Examiner if you feel that he/she should be made aware of the issues you raised.

Can a design patent be used as one of the references of prior art being combined with two utility patents to block claims in a Patent Application even though the design patent has no claims?

Yes, an examiner would consider design patents just the same as any other prior art references. Note that a design patent does have a single claim.  See 37 CFR 1.153.  The requirements for utility claims specified in 37 CFR 1.75 do not apply to a design claim.

Renewed

(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 abandonment?

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.

Research

How do I research paper place mats to determine if a patent already exists?

You can search U.S. patents at our web site - click on Search under Patents on the home page. You can search using text terms or search our manual of classification to identify areas in the U.S. Patent Classification System to search. See "How to Search" at the top of the USPTO home page for search tips.

 Response Time 

I just got my first office action for a patent from the examiner. How do I know how much time I have to reply? What happens if I don't reply in time?

Your response time is set by statute.  The shortened statutory period for reply is generally set for 3 months from the mailing date of the Office action and the time period for reply is noted on your Office action.  Extension of time is available for a fee if needed. If you don’t submit a timely reply, your application will become abandoned.

Is there a time limit for patent examiner to reply on each office action? some mention 2 or 3 month, is that accurate?

Examiners generally have up to 2 months to respond to communications made by applicants in response to non-final Office actions, and 10 days to respond to communications made in response to Final Office actions.

I just got my first office action for a Trademark from the examiner. How do I know how much time I have to reply? What happens if I don't reply in time?

The statutory deadline is 6 months to respond. However, in certain situations there is a 30-day response period.  Please pay attention to the deadline specified in the Office action.

Restriction

I have an application with a restriction applied to 8 of 24 claims, 16 were allowable. I cancelled the 8 restricted claims to allow the application with the remaining 16 claims to issue. But when the patent issues, it issues with all 24 with no reasons given by Examiner why this happened. Is this a potential problem? I am not pursuing the divisional since the claims issued. Can someone later say an error was made for the "extra" 8 claims that were issued?

It's possible that the extra claims issued due to a clerical error on the part of the Office. You should contact the examiner or supervisor as soon as possible to find out why the claims issued and for information on how to request a Certificate of Correction for your patent.

Restriction Requirement

What criteria do you use to determine if a patent application should be divided into two or more separate patent applications?

Restriction, a generic term, includes (1)the practice of requiring an election between distinct inventions, for example, election between combination and subcombination inventions, and (2)the practice of requiring an election between independent inventions. Independent inventors means the inventor has no disclosed relationship. They are unconnected in design, operation or effect. The basis for restriction is found in the following statute and rules: 35 U.S.C. 121

If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. If a divisional application is directed solely to subject matter described and claimed in the original application as filed, the Director may dispense with signing and execution by the inventor. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention. 37 CFR 1.141

(a) Two or more independent and distinct inventions may not be claimed in one national application, except that more than one species of an invention, not to exceed a reasonable number, may be specifically claimed in different claims in one national application, provided the application also includes an allowable claim generic to all the claimed species and all the claims to species in excess of one are written in dependent form or otherwise include all the limitations of the generic claim. (b) Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is distinct from the product. If the process of making and the product are not distinct, the process of using may be joined with the claims directed to the product and the process of making the product even though a showing of distinctness between the product and process of using the product can be made.

You can read more about restriction and species requirements by consulting the MPEP at http://www.uspto.gov/web/offices/
pac/mpep/mpep.htm on our website. The chapter to read is MPEP 800.

Revoke an Agent

Can you please tell me how to revoke an agent of record for patents? Is there a special form you need to fill out or can you just submit correspondence?

You do not need a special form to revoke the power of attorney, but a form is available for your convenience on our website (PTO/SB/82) at  http://www.uspto.gov/web/forms/ . The revocation containing the new correspondence address needs to be filed with the Office.

S

Same Name

If there is a trademark known in another country for a different market can I obtain a trademark for the same name in the US?

It's possible to register a mark in the US that's used in another country so long as it's not registered here in the US. Foreign applicant's can register their marks in the US without necessarily using them in the US.

Scammed

How does a person avoid being scammed in the Inventors community?

Go to our homepage, and see  http://www.uspto.gov/web/offices/com/iip/documents/scamprevent.pdf
http://www.uspto.gov/web/menu/plugins/office.htm for information about invention promotion firms.
http://www.uspto.gov/

Search

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.

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

Searching

Is it necessary to go to a depository for patent research or does an online search at the uspto website have the same info?

It's not necessary to go to a PTDL. Our website has searchable copies of U.S. patents and patent application publications. However, PTDL's can offer search assistance and other resources.

Secure The Name

If I am in the process of finishing a product I want to market, can I secure the name for that product before its finished?

You can apply to register a trademark that you intend to use on your finished product before that product gets to market. It's an intent-to-use application under Section 1(b) of the Trademark Act. However, you have to use the mark on the goods in interstate commerce and file papers when you do that with the USPTO before a registration can issue.

Security

EFS Web will likely be a target for hackers. Has it been tested for security?

Yes, and procedures have been put in place to mitigate any suspicious activity.

Selling Your Product

Can you manufacture and sell a product before you get your applied for patent, or do you have to wait 14 months to 4 years for an answer... seems like a long long time to wait.

You can manufacture and market your product at any time. However, if your product is in public use in the U.S., or you sell or offer it for sale more than one year in the U.S. before you file your application, you will be barred from obtaining a patent.

Seminar

Does the USPTO have seminar in the Alexandria office or classes to assist with patents, it may seem simple to ready however in theory it sounds more technical?

We will be holding our Annual Independent Inventors Conference here at the USPTO on August 8-9, 2008; look for more information on the homepage in the month's to come.

Service Mark

How does a Service mark protect us differently from a trademark?

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.

I'm interested in registering a Service Mark but noticed there are two types of applications. What are the differences?

There is only one application for either a service mark or a trademark in the electronic trademark filing system at the USPTO website. You are encouraged to file electronically if possible. If you are looking at paper forms, the information required for a trademark and a service mark is basically the same - only the terminology differs slightly. If you are filing a paper application, you should file the service mark application if you are applying for a service mark just to keep things from getting confusing. But it's best to use the "one-size-fits-all" application for filing either a trademark or service mark that's available on line.

Regarding the Service Mark registration question, specifically, what is the difference between registering for a Service Mark and registering for a Collective Service Mark?

a Collective Service Mark refers to a very unique type of service mark. Its use is controlled and owned by a single entity, but it may be used to identify the services of other service providers that the owner gives permission to for use of the mark. Think of a dairy collective. A service mark, on the other hand, identifies the services of the applicant itself and the use of the mark is by the applicant itself.

Is there a specific link to a part of the PTO site where I can see all the steps involved in applying for a service mark?

Applying for a service mark follows the same procedure as applying for a trademark.

Service Mark or Trademark

Would the name of a store be service mark or trademark?

A retail store can be the subject of a service mark application.

Shoes

Are fashion shoes patentable?

A shoe, fashionable or not, may qualify for a utility patent if functionality is being protected or a design patent if merely the ornamental design is protected. See  http://www.uspto.gov/main/faq/index.html for a detailed definition of what qualifies for a utility or design patent.

Can I perform a comprehensive trademark search using the USPTO resources to adequately protect myself?

Yes, you can search the USPTO database of federally registered, pending, and dead marks free of charge through TESS (Trademark Electronic Search System) available on the USPTO Website at http://tess2.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk. You can also perform a free search in the Trademark Public Search Library located at the USPTO.  Please keep in mind that if you elect to file a trademark application with the USPTO, your application will be assigned to an examining attorney who will perform their own search of USPTO records.

Small Business

Would you be considered a small business entity if you are a corporation, but are only two people with no employees?

Yes by definition, see for a definition of small entity, see 37 CFR 1.27.  http://www.uspto.gov/web/offices/pac/mpep/documents/0500_509_03.htm#sect509.03

Small Entity

The site says that “Small entities” are defined as independent inventors, small business concerns and non-profit organizations. You must establish small entity status for purposes of paying small entity fees. See MPEP 509.03.” Where do I find “MPEP 50903” and how do I establish small entity status?

The link is:  http://www.uspto.gov/web/offices/pac/mpep/documents/0500_509_03.htm#sect509.03

As the sole inventor, do I quality as a small entity?

Yes, a sole inventor is a small entity.

Where do I find the definition of "small entity" for purposes of determining the fees?

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/documents/appxr_1_27.htm#cfr37s1.27
consolidated_rules.pdf

Small Entity Fee

How do you know if you qualify for a small entity fee?

Small entity is defined as an independent inventor, small business concern or non-profit organization. If you fall into one of those categories you may be entitled to the reduced fees unless you license your invention to a large entity employing more than 500 people. See MPEP 509.02 for more information.

 http://www.uspto.gov/web/offices/pac/mpep/
mpep.htm

Is it okay to submit the small business entity "declaration" in a cover letter along with the PPA application documents?

You may submit a small entity declaration with your provisional application documents in order to establish small entity status for the purpose of paying small entity fees. In the alternative, you may just check the box on the provisional application cover sheet (PTO/SB/16) stating that “Applicant claims small entity status. See 37 CFR 1.27.”

Software

Can a new software idea/program be patented?

When software is claimed as part of the claimed invention, the applicant does not need to specify the end user platform. There is an important distinction between copyright protection on software and patent protection for inventions that utilize software. Patent claims to a computer system which includes executable software can be made. In addition, claims to computer readable media are also statutory and eligible for patent protection. For further information see Examination Guidelines for Computer-Related Inventions which is available for download on the USPTO website  http://www.uspto.gov/web/offices/pac/mpep/
documents/2100.htm .

My invention is application specific software. My understanding is that I cannot patent the software itself, but I may patent its approach to its application. If that is correct, then how specific must my patent/claims be?

Software alone is not patentable. However, if claimed in combination with computer readable media executable on a computer, patent protection may be obtained. Essentially, the claim of the invention must be directed to the application of a software product that is technically embodied on a computer. For example, computer programs claimed as computer listings per se, i.e., the descriptions or expressions of the programs, are not physical "things," nor are they statutory processes, as they are not "acts" being performed. Such claimed computer programs do not define any structural and functional interrelationships between the computer program and other claimed aspects of the invention which permit the computer program's functionality to be realized. In contrast, a claimed computer-readable medium encoded with a computer program defines structural and functional interrelationships between the computer program and the medium which permit the computer program's functionality to be realized, and is thus statutory. Accordingly, it is important to distinguish claims that define descriptive material per se from claims that define statutory inventions. More information on Examination Guidelines for Computer-Related Inventions is available on the USPTO website at:   http://www.uspto.gov/web/offices/pac/mpep/
documents/2100.htm.

Software Patent

Is it true that most software patents are filed as utility patents, and could a process patent be more appropriate in some cases?

Patenting a process is a type of utility patent. What can be patented - utility patents are provided for a new, nonobvious and useful: • Process • Machine • Article of manufacture • Composition of matter • Improvement of any of the above Patents on software related inventions are considered utility patents.

SPE

What does SPE stand for?

SPE stands for Supervisory Patent Examiner.  You may contact them by looking up their name using this link:  http://portal.uspto.gov/external/portal/emlocator.  To determine what art unit your application has been assigned to, you may call:  1-800-786-9199.

Speeding up Application

My patent application has been pending for four years; I feel like the examiner keeps sending the same arguments even though I have changed the claims. I don't understand why this is taking so long and seems to have stalled. What can I do to move things along?

You can contact the "Ombudsman Program" Please visit http://www.uspto.gov/patents/ombudsman.jsp

State Registration

If I am approved for a trademark in Vermont what rights does that give me nationally? i.e. a logo for a T-Shirt?

Having a state registration does not give you any national rights. Only registration with the USPTO would give you nation-wide rights in your mark. A logo for a T-Shirt can be registered as a trademark with certain qualifications. You should look in the TMEP for more information on this specific topic.

Status

Would I be able to find out the status of a trademark from here?

If "from here" you mean from the chat room - the answer is no. However, you can get the status of any trademark application or registration at the USPTO website by going to the TARR system that's accessible from the Trademark page of the website.

Status of My Patent Application

I have been trying to look at the status of my patent application. I understand that the app number is the year plus 7 digits, but the database asks for an 8-digit number. What number is it asking for?

The number that starts with the year is the publication number not the application number. Application numbers start with a 2 digit series code, i.e. 11/xxxxxx.

Student Inventors

Does USPTO provide any special discounts for student inventors?

Student inventors would most likely qualify for small entity status and be eligible for reduced fees. Our website  http://www.uspto.gov/ details the process for obtaining small entity status.

Substitute Specification

Are the vertical change bars in the left margin of an MS Word "redline" permitted as part of the marked-up version of a substitute specification?

For the marked-up version, the rule, 37 CFR 1.125(c) requires the added text to be shown by underlining and the deleted text to be shown by strike-through.

 

 

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Last Modified: 8/6/2012 4:33:08 PM