On Line Chat for Independent Inventors (16NOV2006)

This is a transcript of the on-line chat held on Thursday, November 16, 2006. This final version is an edited version of the actual transcript. Where you see “edited answer” below, the original on-line chat answer has been modified to ensure completeness and accuracy of the answers originally provided by USPTO staff.

As in our previous chats held so far, we received hundreds more questions then we had time to answer. We selected questions for posting which we believed would be of interest to others besides the author of the question. Once we selected the question, we developed the answer, and then posted the question and the answer for viewing by the public. During the actual chat, occasionally the answer was actually posted before the public saw the question. This edited transcript always has the question before the answer. In reviewing the transcript below, if you see the time of the answer before the time of the question, we originally posted them out of sequence.

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USPTO Expert (Nov 16, 2006 1:56:45 PM)
Welcome to the Independent Inventors Chat, we will begin promptly at 2:00 pm. Prior to the beginning of the chat you may want to review transcripts from our previous chats at http://www.uspto.gov/web/offices/com/iip/transcripts.htm . Not all questions can be answered in the timeframe of this chat, however, we will capture additional questions and post an answer with our transcript, which is usually posted within 2 weeks on the USPTO homepage. Questions are selected and answered with the intent of being applicable to the widest audience. As always if you do not see your questions posted in our transcript you can contact our Inventors Assistance Center at 1-800-786-9199.

BUSINESSLADY (Nov 16, 2006 2:04:25 PM)
WHY DOES IT TAKE SO LONG TO SEND THE NOTICE ALLOWANCE OUT AFTER THE PUBLICATION OF THE APPLICATION?

USPTO Expert (Nov 16, 2006 2:04:50 PM)
Businesslady - If you are talking about patents, the two processes are not linked, an application is normally published at 18 months from filing, a notice of allowance is issued only after a determination has been made that the application is allowable.

AC - What are the pros and cons of provisionals vs. non-provisionals?

USPTO Expert (Nov 16, 2006 2:06:17 PM) EDITED ANSWER
AC - The pros and cons depend on are far you are along with your invention. Here are some of the differences between the two. 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 issue as 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 applications and http://www.uspto.gov/web/offices/pac/utility/utility.htm for additional information about non-provisional (utility) applications.

turnitup (Nov 16, 2006 2:07:38 PM)
Can the patent term be extended for a reexamination due to a significant "administrative delay" by the PTO in reexamining the patent? All reexams are to receive "special dispatch" and this case in now in month 37.

USPTO Expert (Nov 16, 2006 2:10:33 PM) EDITED ANSWER
Turnitup - The patent term is set by the original patent and therefore, the patent term cannot be extended for a reexamination proceeding. In the later part of 2005, Commissioner Doll implemented several major initiatives to reduce the pendency of all re-exams. You can contact the Central Re-exam Unit at 571-272-1596.

Aaron (Nov 16, 2006 2:11:14 PM)
I want to trademark a name. Do I have to trademark my logo as well?

USPTO Expert2 (Nov 16, 2006 2:11:32 PM)
You can register one or both.

Alejandro (Nov 16, 2006 2:11:36 PM)
I am a citizen of venezuela but I have lived here for over 6 years. Can I file for a provisional patent?

USPTO Expert (Nov 16, 2006 2:12:00 PM) EDITED ANSWER
Yes, you do not have to be a US citizen to file a patent application in the United States.

Wilson (Nov 16, 2006 2:12:07 PM)
Thank you for making this chat session available. What is a continuation in part application?

USPTO Expert (Nov 16, 2006 2:12:58 PM) EDITED ANSWER
Wilson - A continuation-in-part application is an application that (1) is filed during the pendency of an earlier non-provisional application, (2) claims the benefit of the prior non-provisional application under 35 U.S.C. 120, and (3) repeats some substantial portion or all of the earlier non-provisional application and adding subject matter not originally described in the earlier non-provisional application.

Alejandro (Nov 16, 2006 2:13:21 PM)
Another question is: are published patents considered a public document? if so, can I copy some of the another invention's text and paste onto mine?

USPTO Expert (Nov 16, 2006 2:15:13 PM) EDITED ANSWER
Alejandro - The document is available to the public, but the applicant to a published document retains patent rights to what is disclosed in the published application.

slowdog (Nov 16, 2006 2:15:39 PM)
Hi, I have two questions. First, in terms of reference/cited patents versus prior art. What qualifies as a reference versus what qualifies as prior art? Second, in terms of formatting of the patent application, is the applicant responsible for formatting the application in the form of the two-column final patent or will the application be formatted to conform by the USPTO?

USPTO Expert2 (Nov 16, 2006 2:15:48 PM) EDITED ANSWER
Prior art is a broad category that includes patents, patent application publications, books, articles, websites, etc. Patents are legal documents that grant rights to the patent owners. They can be used as prior art in rejecting the claims in a patent application. As to your second question: the two-column format is done by the printer as part of the publishing process for a patent.

Arnold Creek (Nov 16, 2006 2:16:49 PM)
Sorry if these questions have already been dealt with. We inadvertently just came in. What are the product tasks that have to occur between filing the provisional patent and the patent itself?

USPTO Expert (Nov 16, 2006 2:18:03 PM) EDITED ANSWER
Arnold Creek - You have 12 months from the filing date of the provisional application to file a non-provisional application and claim the benefit of the provisional application under 35 U.S.C. 119(e).

ecto (Nov 16, 2006 2:18:20 PM)
Do you have statistics on the success rate of utility applications filed via attorneys versus applications filed pro se?

USPTO Expert (Nov 16, 2006 2:19:09 PM)
ecto - No statistics are available.

Jer (Nov 16, 2006 2:19:14 PM)
Given the expense for filing patents internationally, what chances do inventors have for investors providing funds to complete applications?

USPTO Expert (Nov 16, 2006 2:20:54 PM)
Jer - The USPTO does not have legal authority to provide funding and is beyond the scope of the USPTO's mission.

jbd (Nov 16, 2006 2:21:02 PM)
Is something like a baseball card patentable if it has special holograms or other security devices that something that should be copyrighted?

USPTO Expert2 (Nov 16, 2006 2:21:05 PM)
A baseball card that includes special security devices as part of the card may be patentable if the security features are novel and non-obvious.

slowdog (Nov 16, 2006 2:21:36 PM)
In terms of prior art drawings, is copying from previous rederence/prior art patents allowed or do we have the recreate the drawings of those patents?

USPTO Expert (Nov 16, 2006 2:23:32 PM) EDITED ANSWER
slowdog - You may copy drawings from prior patents and include them in your patent application but you must label these drawings as prior art. See MPEP 608.02(g).

jerry (Nov 16, 2006 2:24:22 PM)
when i apply patent,do i need list reference?

USPTO Expert (Nov 16, 2006 2:25:15 PM) EDITED ANSWER
jerry - There is no requirement that you list references, but you are required to disclose information known to you which is material to the patentability of the claims in your patent application, see 37 CFR 1.56 and MPEP 609.

ram55 (Nov 16, 2006 2:25:20 PM)
Must we have to productise the idea for it to be accepted as a patent or is it sufficient if we file the idea, diagram and how it works?

USPTO Expert (Nov 16, 2006 2:26:54 PM) EDITED ANSWER
ram55 - You are not required to create a model or prototype, but you must have a written description of the invention complying with 35 U.S.C. 112 and drawings if necessary for the understanding of the invention (35 U.S.C. 113).

MyPatents (Nov 16, 2006 2:26:59 PM)
Why would you want to file a CIP rather than just filing a new application and incorporating the related application (either by reference, or simply copying it)? The claims directed to the new material in the CIP will not be afforded the earlier filing date of the related application anyway, so why do it?

USPTO Expert2 (Nov 16, 2006 2:27:10 PM) EDITED ANSWER
You would file a CIP rather than a new application if you want to claim the benefit of the filing date of the earlier application for the subject matter claimed in the CIP application that was disclosed in the earlier application. In a CIP, the new subject matter gets the filing date of the CIP and any claim containing subject matter not disclosed in the earlier application is only entitled to the filing date of the CIP application.

bitbyter (Nov 16, 2006 2:27:33 PM)
My question is much more rudimentary. I know nothing about the patent process. I have an idea for a product that I believe is useful. I don't know if there is prior art or patent for something similar. Where/how do I find out what I need to do to obtain a patent?

USPTO Expert2 (Nov 16, 2006 2:28:31 PM)
Start with the PTO website - www.uspto.gov . Under the resources for independent inventors you will find lots of information. You may also want to visit a Patent & Trademark Depository Library (PTDL) to conduct a search to see if your product has already been patented. You can find a list of PTDLs at our website.

turnitup (Nov 16, 2006 2:28:41 PM)
What rights are established when a US non-provisional patent application is published? Do these rights, if any, extend outside the US?

USPTO Expert (Nov 16, 2006 2:30:41 PM) EDITED ANSWER
turnitup - When your non-provisional application is published you have the right to put "patent pending" on the product covered by the claims of the non-provisional application. You do not have exclusive rights until such time as a patent is granted and the rights do not extend outside the US.

USPTO Expert (Nov 16, 2006 2:31:17 PM)
Pops - Thank you for the feedback.

eric (Nov 16, 2006 2:31:21 PM)
I have a question on section 8 cancelled trademark that was cancelled in 1997, because no affidavit was filed for continuous us in 5 to 6 year period. What complications may arise from trying to trademark the same word?

USPTO Expert2 (Nov 16, 2006 2:31:33 PM) EDITED ANSWER
It is possible that the owner of the cancelled registration is still using the mark even though it has allowed the registration to cancel. An application you file to register a similar mark may be approved for publication by an attorney at the USPTO, but if the prior registrant is still using the mark, he or she may bring an opposition proceeding that could prevent or delay your mark from getting registered.

yogi (Nov 16, 2006 2:32:44 PM)
How do I obtain the official rule manual in patents and trademarks?

USPTO Expert (Nov 16, 2006 2:33:18 PM)
Yogi - Please refer to the USPTO website, for patents go to http://www.uspto.gov/web/offices/pac/mpep/mpep.htm and for trademarks go to http://tess2.uspto.gov/tmdb/tmep/. You can also order both on-line.

needapatent (Nov 16, 2006 2:33:30 PM)
When an application is submitted electronically, how does it get to the examiner? Is the supervisor responsible to assign it, or does the examiner retrieve it? There has been one time where something was assigned the next day and other times it takes weeks. Is there any person responsible for this work?

USPTO Expert2 (Nov 16, 2006 2:34:41 PM) EDITED ANSWER
When an application is submitted electronically, it is uploaded into our Image Filewrapper System and enters the normal docketing process. The amount of time it takes to be assigned to an examiner depends on the technological subject matter disclosed therein and the backlog in that area.

romi1218 (Nov 16, 2006 2:34:50 PM)
we have an idea but are not sure where to start

USPTO Expert (Nov 16, 2006 2:35:19 PM)
romi1218 - A good place to start is with our Inventors Assistance Center at 1-800-786-9199 to request a packet of information and ask specific questions.

turnitup (Nov 16, 2006 2:35:33 PM)
If a US provisional application is filed, does the inventor have the right to use "patent pending' on literature and the product?

USPTO Expert (Nov 16, 2006 2:36:16 PM) EDITED ANSWER
turnitup - Yes you can use the phrase "patent pending" starting from the filing date of your provisional application until one year thereafter. If you don't file a non-provisional application during this one-year period claiming the benefit of the filing date of the provisional application, you will need to stop using the phrase "patent pending." However, if you file a non-provisional application during the one-year period claiming the benefit of the filing date of the provisional application, you can continue to use the phrase "patent pending."

Alpina (Nov 16, 2006 2:37:24 PM)
I have an invention that I don't think I could get my hands on the materials to make it. Could I have it drawn up and then patent it?

USPTO Expert2 (Nov 16, 2006 2:38:16 PM) EDITED ANSWER
If you can disclose how to make and use your invention such that others would be able to make and use the device (in compliance with 35 USC 112), then you can file a patent application. This is called a constructive reduction to practice.

Van (Nov 16, 2006 2:40:43 PM)
I am in need of renewing my trademark and am bumping up against the extension deadline, so I am wondering should I send in my continue of use form by mail or electronically? Thanks for your help.

USPTO Expert2 (Nov 16, 2006 2:40:47 PM) EDITED ANSWER
Yes - it's always more efficient to use the electronic forms. Certainly if you are running up against a due date, you should use the electronic form. As soon as the electronic form is taken in by the USPTO it is considered filed.

ram55 (Nov 16, 2006 2:41:26 PM)
Does any one in USPTO suggest how an idea should be presented as a Utility patent? I know the patent attorney will do that... Actually, I already spent few thousands by going through Invent-tech company. So I am considering to do it myself.

USPTO Expert (Nov 16, 2006 2:43:29 PM)
ram55 - The Office strongly suggests you uses the services of a registered patent attorney or agent, however you can file your own application, pattern it after issued patents in the same technology. In reference to Invent-Tech, please visit our web site for published complaints about invention promotion firms, http://www.uspto.gov/web/offices/com/iip/complaints.htm .

AC (Nov 16, 2006 2:43:40 PM)
If you first announce a product or process in the press, am I correct that you have one year from that date to file the patent?

USPTO Expert (Nov 16, 2006 2:44:28 PM) EDITED ANSWER
AC - yes you have one year to file a patent application in the United States.

pt (Nov 16, 2006 2:45:11 PM)
If a product design can be used for multiple purposes and usages, does it require a separate patent for each different purpose or application of usage?

USPTO Expert2 (Nov 16, 2006 2:46:27 PM) EDITED ANSWER
If the product is patentable, then all uses of the product would be covered and could be filed in the same application. However, if your invention is a new use for a known product, you would need to file an application for each patentably distinct method of use.

duke (Nov 16, 2006 2:46:37 PM)
i HAVE A PRODUCT THAT DEALS WITH APPERAL iS IT BEST TO GET A DESIGN PATENT

USPTO Expert (Nov 16, 2006 2:46:56 PM) EDITED ANSWER
duke - It depends on if it is a function of the apparel or if it is about the appearance of the object only. If it has functionality then you may file for a utility patent application, if it is for the appearance then you may file a design application.

May (Nov 16, 2006 2:47:04 PM)
Is there example of patent application?

USPTO Expert (Nov 16, 2006 2:48:00 PM) EDITED ANSWER
May - Every US patent is a reformatted US patent application, and can be used as an example. Recent patents are the best to look at as they are in conformance with the current rules.

eric (Nov 16, 2006 2:48:04 PM)
is there a significant lag here. i finally got connection resolved but have significant lag

USPTO Expert2 (Nov 16, 2006 2:48:45 PM)
Our answers are not instantaneous since we get many questions and it takes time to answer them. Posting an answer to a question is not contemporaneous to the submission of your question. You should find an answer to your original posting of your question above.

USPTO Expert (Nov 16, 2006 2:51:18 PM)
buka - The examiner determines the classification of an application, if you want to know, for search purposes, you can go to the Index of Classification at http://www.uspto.gov/web/patents/classification/uspcindex/indextouspc.htm .

mark d. (Nov 16, 2006 2:51:29 PM)
mark d i was wondering how do i get a patent application.

USPTO Expert (Nov 16, 2006 2:53:24 PM) EDITED ANSWER
Mark d - You or your attorney have to write the patent application, file it with the USPTO and pay the fees. The Office does not sell patent applications or template but you can call our Inventors Assistance Center at 1-800-786-9199 for information on "how to file".

Coach (Nov 16, 2006 2:53:27 PM)
A question about the chat -- is it possible to save it?

USPTO Expert (Nov 16, 2006 2:53:49 PM)
Coach - We will post a transcript on our web page in about 2 weeks.

New Inventor (Nov 16, 2006 2:55:50 PM)
I paid an invention company (similar to rav55) for a patent search-opinion. Is it normal/ethical to receive the results directly from the company instead of the patent lawyer? I was expecting to receive the results from the lawyer, not in a big useless package.

USPTO Expert (Nov 16, 2006 2:55:58 PM)
New Inventor - Good question, we will answer in our transcript.

BEANIE302 (Nov 16, 2006 2:56:09 PM)
CAN THE NAME MORGANTOWN HOCKEY BE TRADEMARKED SINCE IT IS A CITY NAME AND A SPORT, I WAS TOLD IT WAS TOO GENERIC.

curios (Nov 16, 2006 2:57:00 PM)
is it true that you can take a picture of your idea and mail to yourself and then not open it that once a branch of the federal government stamps it ,it is official.

USPTO Expert2 (Nov 16, 2006 2:57:30 PM)
This response if for BEANIE 302.It is possible to register that phrase as a trademark but the applicant will have to show that the terminology is not only recognized as a town and type of sport but that it is recognized by the public as identifying goods or service produced by the applicant.

USPTO Expert (Nov 16, 2006 2:58:32 PM)
curious - This process is not official you have no legal rights.

MyPatents (Nov 16, 2006 2:58:41 PM)
During prosecution, do examiners prefer telephone interviews or written responses to office actions?

USPTO Expert (Nov 16, 2006 2:59:38 PM) EDITED ANSWER
MyPatents - A written response to an Office action is required since all business with the USPTO must be transacted in writing (see 37 CFR 1.2), but examiners are open to telephone interviews before you file a response.

Ty (Nov 16, 2006 3:00:09 PM)
I'm not sure why my questions are not getting through. I posted my first one 40 minutes ago... real quick... how different does a design/invention need to be to avoid infringement?

USPTO Expert (Nov 16, 2006 3:00:23 PM)
ty - You should probably seek legal advice from a patent attorney/agent.

Lew (Nov 16, 2006 3:02:17 PM)
My apology for signing in here late...I recently acquired a patent that has just one drawing. Unfortunately, there were 2 versions of that drawing, and I dopily sent in the wrong one--which now appears in the patent. (It shows an extra part--and not even in the right place!) How can I get the patent corrected to include the proper drawing? "Lew"...independent & very small entity

USPTO Expert2 (Nov 16, 2006 3:02:36 PM)
This question will be answered in our transcript.

MyPatents (Nov 16, 2006 3:03:06 PM)
My attorney sent me a declaration and power of attorney to sign. He said he is using electronic filing and I can sign by putting my name in capital letters between forward slashes. Is that right?

USPTO Expert (Nov 16, 2006 3:03:10 PM)
MyPatents-Yes

yogi (Nov 16, 2006 3:03:41 PM)
what state would be the best place to hire a patent attorney?

USPTO Expert (Nov 16, 2006 3:04:33 PM)
yogi, we do not make recommendations, however we do maintain a roster of registered patent attorneys/agents, please see http://www.uspto.gov/web/offices/dcom/gcounsel/oed.htm ,

USPTO Expert2 (Nov 16, 2006 3:05:21 PM)
Contact the Copyright Office at 202-707-3000.

USPTO Expert (Nov 16, 2006 3:06:33 PM)
Thank you for participating in chat today, as always we receive more questions than we can answer in the allotted time, please visit our FAQ's from previous chats at, http://www.uspto.gov/web/offices/com/iip/transcripts.htm and look for our transcript to this chat in about 2 weeks. Thank you!

Additional Questions Not Posted During Chat

duke (Nov 16, 2006 3:12:21 PM)
Can I do two or more design on the same patent if the apperal al have the same concept just different appearances.

A design patent is limited to one invention; indeed, it is also limited to one claim.  The courts have said that a single invention may have more than one appearance (embodiment) but any differences in appearance must be patentable indistinct, i.e., obvious in view of the other.  Generally, a concept is not enough to serve as a basis for finding patentable indistinction.  This is the most useful answer: file all the embodiments in a single application and wait for the examiner to say that you must select only one of them. 

conchitas (Nov 16, 2006 3:12:00 PM)
Can anyone please help me to understand what defines a reference patent vs. prior art.

There is no such thing as a "reference" patent.  References, sometimes referred to as prior art, are printed documents that examiners use as the basis for rejecting claims.  References can include patents, published applications, books, journals, magazines, dictionaries, and even web pages.  To qualify as a reference (prior art) with respect to a patent application the printed document must meet one of the criteria set forth in 35 U.S.C. § 102.  For more information on what qualifies as a reference (prior art) see MPEP §§ 2128 and 2131.