On Line Chat for Independent Inventors (28JUN2007)

This is a transcript of the on-line chat held on Thursday, June 28, 2007. This final version is an edited version of the actual transcript. Where you see “edited answer” below, the original on-line chat answer has been modified to ensure completeness and accuracy of the answers originally provided by USPTO staff.

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

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USPTO Expert (Jun 28, 2007 2:04:54 PM)
Welcome to the USPTO Independent Inventors Chat, we will begin promptly at 2:00 pm. Before we begin, we would like to draw your attention to our top news story found on our homepage. Please take time to read "A Victory for Inventors." If you have any questions, please contact Harry Moatz, Office of Enrollment and Discipline at (571) 272-6069 or John Calvert, Inventor Assistance Program at (571) 272-4983. 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 the next 2 to 3 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.

EZ2 (Jun 28, 2007 2:09:48 PM)
I have filed for a patent in Jan. of this year which is pending. I have since made improvements to the invention. Do I need to file for another patent? If so, in addition to the improvements made, do I have to include all claims, background, summary and drawings of the previous patent application? Can I apply for a provisional patent for these improvements?

USPTO Expert (Jun 28, 2007 2:10:47 PM) EDITED ANSWER
If you want patent protection for the improvements of the invention then you will need to file an application on the improvements. This application may be filed as a continuation-in-part (CIP) of your original application (we are assuming that the original application was a non-provisional application) during the pendency of the original application. Subject matter that is in the CIP which has support in the original application is entitled to the benefit of the filing date of the original application. The subject matter that is only disclosed in the CIP application (the improvements) is entitled to the filing date of the CIP application. Each non-provisional application must contain a written description of the invention complying with 35 U.S.C. 112, claims, any necessary drawings, fees and oath or declaration. As to the question of whether he can file a provisional application for the improvements, I think the answer may be too complicated, tell him to call the Inventor's assistance center.]

donna (Jun 28, 2007 2:10:51 PM)
What is the average cost for a patent attorney?

USPTO Expert (Jun 28, 2007 2:14:10 PM)
The agency does not have that information but you can refer to our web site for a listing of all registered patent attorneys and agents. http://www.uspto.gov/

JIMMY NEUTRON - DO I NEED A PATENT ATTORNEY

USPTO Expert (Jun 28, 2007 2:15:39 PM)
You do not need a patent attorney. However, the patent process is a legal process so it is suggested that you acquire patent professional assistance.

jmw (Jun 28, 2007 2:15:49 PM)
Also is Kessler Corporation, Freemont , OH , a reliable patent promotion Company? Thanks.

USPTO Expert (Jun 28, 2007 2:17:45 PM)
To find out about Kessler Corporation, you should search your attorney general's web site, FTC.gov and the World Wide Web.

andre (Jun 28, 2007 2:19:23 PM)
which link would you recommend that gives the step by step guide in filing a patent?

USPTO Expert (Jun 28, 2007 2:21:18 PM)
Andre - USPTO's publication general information concerning patents includes the step by step process. Please go to the USPTO web page, click on patents then click on guides and manuals and that will take you there

JIMMY NEUTRON – WHAT IS THE DIFFERENCE BETWEEN A PATENT, A COPYRIGHT AND A TRADEMARK?

USPTO Expert2 (Jun 28, 2007 2:20:45 PM)
A patent covers the utility or design of an invention. A copyright protects the expression of an idea - it may be in writing, on film or other media. A trademark identifies the source of a product or service and distinguishes it from those of other. A registered trademark does the same thing but it is registered with the USPTO and that solidifies rights for the registered trademark owner under the federal Trademark Law.

jn (Jun 28, 2007 2:22:06 PM)
How long after filing the provisional patent can you file for a non provisional patent and its cost if any?

USPTO Expert2 (Jun 28, 2007 2:22:09 PM) EDITED ANSWER
You have up to one year after filing a provisional application to file a non-provisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e). Please refer to www.uspto.gov for costs.

Dr V (Jun 28, 2007 2:22:31 PM)
How do I find a section that I am referred to such as 37 CFR 1.111 (b)? A simple site search is worthless...

USPTO Expert (Jun 28, 2007 2:24:59 PM) EDITED ANSWER
Dr. V - Go to www.uspto.gov, click on patents, under “Laws & Rules” click on 37 CFR – Patent Rules, then click on 1.111.

Willie (Jun 28, 2007 2:25:05 PM)
I filed my patent, and was rejected. Then I amended the claims and argued with the examiner, and again filed RCE with continued arguements. But the examiner contined sending the old same actions on rejection without response on my arguments. I believe the examiner did not understand the technical merits well, and the cited references are also not related much to my invention. What should I do?

USPTO Expert (Jun 28, 2007 2:27:49 PM) EDITED ANSWER
You may file a request for a pre-appeal brief conference, where the examiner, a supervisor and art expert will look at your arguments. If you are not satisfied with the decision of the pre-appeal brief conference, you may then file an appeal brief. Information regarding pre-appeal brief conference is available in the Official Gazette notice dated July 12, 2005 at 1296 OG 67.

BigB (Jun 28, 2007 2:28:00 PM)
What's the best way to research for a product idea that may already exist?

USPTO Expert (Jun 28, 2007 2:30:25 PM)
Big B - Research your idea using USPTO's patent search tool find on the web site and we suggest the patent and trademark depository library in your region. A listing of the 85 nationwide libraries is found on http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html

Samir (Jun 28, 2007 2:30:32 PM)
Does provisional give the dates for the foreign countries too?

USPTO Expert (Jun 28, 2007 2:31:41 PM)
Filing a provisional application in the U.S. does not give any provisional date for foreign countries, but does start the clock running for filing in other countries.

GeneV (Jun 28, 2007 2:31:54 PM)
When converting a provisional application to a non-provisional application, how much new information can be added to the new application?

USPTO Expert (Jun 28, 2007 2:33:23 PM) EDITED ANSWER
Provisional applications are not converted to non-provisional applications. You would have to file a non-provisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e). You may add any information you want in the non-provisional application, however, only that information which has support in your provisional application is entitled to the benefit of the filing date of the provisional application. See 35 U.S.C. 119(e).

USPTO Expert2 (Jun 28, 2007 2:33:59 PM)
We're able to answer questions concerning trademark registration if anyone want to pose one.

jn (Jun 28, 2007 2:34:03 PM)
If money is sent with your invention to be patented, and it is already patented, do you get your money back?

USPTO Expert (Jun 28, 2007 2:34:33 PM) EDITED ANSWER
No. Money paid for the filing, search and examination of your application are not refundable unless the money was paid by mistake or in excess of that required. A change of purpose after payment of the fee will not entitle a party to a refund of that fee. See 37 CFR 1.26(a).

Samir (Jun 28, 2007 2:35:01 PM)
How to search the patents published / granted in the specific time period with a given keyword

USPTO Expert (Jun 28, 2007 2:37:37 PM)
The USPTO's search tool on the website allows combining a date with a keyword. Also, the patent and trademark depository librarians can assist you with this. See the posting above for the listing.

Janny (Jun 28, 2007 2:37:41 PM)
After filing my patent and let's say that it is accepted by the USPTO, do I need to file a trademark application too?

USPTO Expert2 (Jun 28, 2007 2:37:43 PM)
Filing a trademark application is not a requirement and it is not dependent on the filing of a patent application. It is recommended that a trademark be registered with the USPTO in order to be able to benefit from the provisions of the US Trademark Act.

ChrisC (Jun 28, 2007 2:37:54 PM)
In producing a series of books, we are your recommendations on trademarking the brand of the series?

USPTO Expert2 (Jun 28, 2007 2:38:55 PM)
The trademark for a series of books can be registered but we cannot provide any legal recommendations, but there is a lot of information at the USPTO website ( http://www.uspto.gov/ ) that will help you through the registration process.

kreiger (Jun 28, 2007 2:38:58 PM)
I filed a provisional about two years ago. I am still working on funding. Can I file another provisional if I have not sold the idea in any form? I want to present it to some new people.

USPTO Expert (Jun 28, 2007 2:39:16 PM)
You can file another provisional IF you have not made your invention known to the public more than one year prior to filing the new provisional.

jn (Jun 28, 2007 2:39:36 PM)
Thank you, my invention is small, how will I know how much to send?

USPTO Expert (Jun 28, 2007 2:40:20 PM)
Our fees are posted at http://www.uspto.gov/ . The fees are based upon the size of your company, not the size of your invention.

donna (Jun 28, 2007 2:40:41 PM)
If I filed for a trademark and now it shows as abandoned, will it still be on file and for how long and what do I do to reinstate it so that I can finished getting it to be a registered trademark?

USPTO Expert2 (Jun 28, 2007 2:40:42 PM)
You can revive an expired trademark application if you file for revival within 60 days of actual or presumed knowledge of abandonment. If you miss that time period, you must file a new application. Once an application is abandoned, it has no further force and effect in the USPTO.

GeneV (Jun 28, 2007 2:42:12 PM)
If a non-provisional application contains information from a provisional application and new information, would there be two different priority dates associated with the application?

USPTO Expert2 (Jun 28, 2007 2:42:55 PM) EDITED ANSWER
If a claim in your non-provisional application contains only subject matter that has support in your earlier-filed provisional application, that claim is entitled to the benefit of the filing date of the provisional application. If a claim in your non-provisional application contains subject matter that is only disclosed in the non-provisional application (i.e., has no support in the earlier-filed provisional application), that claim is entitled to the filing date of the non-provisional application.

Gregg (Jun 28, 2007 2:43:45 PM)
Is there a way to designate primary and secondary inventors, so that I may give credit to someone for helping, yet keep myself as the sole holder of intellectual property?

USPTO Expert (Jun 28, 2007 2:44:41 PM) EDITED ANSWER
Gregg - This question requires a detailed answer and will be answered within the next two to three weeks on our posted transcripts. [MG comment: what is the response? I would suggest answering something to the effect that in order to list a person as a joint inventor, that person must have made a contribution to the subject matter of at least one claim of the application. See 37 CFR 1.45(c). All joint inventors are listed as joint inventors in the order identified in the oath or declaration. There is no way to designate primary and secondary inventors.]

jn (Jun 28, 2007 2:44:47 PM)
Thank You, I am not a company I am an indiviual with an invention, How are fees based for me?

USPTO Expert2 (Jun 28, 2007 2:44:48 PM)
You're a small entity as an individual in our fee charge sheet.

kreiger (Jun 28, 2007 2:45:24 PM)
By public, you mean outside of family and friends and not makeing any money through the sale of the idea?

USPTO Expert (Jun 28, 2007 2:46:11 PM)
That's a tricky legal question and it is suggested that you consult an attorney to get your answer.

billN (Jun 28, 2007 2:46:24 PM)
A trademark in USA is it automatically protected to any other countries due to the Madrid agreement? Is there a really a need of a lawyer or online legal services to file for a trademark? Can an individual do the job himself correctly?

USPTO Expert2 (Jun 28, 2007 2:47:54 PM) EDITED ANSWER
A US trademark application only gets protection (if it is issued) in the USA - even if filed under the Madrid protocol. An attorney is not required to file a trademark application - an individual may file a trademark application himself or herself using the USPTO online application forms.

jmw (Jun 28, 2007 2:48:05 PM)
Is it better to Trademark my Patent before it is marketed? jmw

USPTO Expert2 (Jun 28, 2007 2:48:48 PM)
That is a business decision for you to make. Legally, there is no correlation between the timing of filing a patent and trademark application.

Willie (Jun 28, 2007 2:49:03 PM)
To traverse the patent rejection on claim, is it enough to argue one of the features of certain claim, or we have to argues all the features of the claim to content?

USPTO Expert (Jun 28, 2007 2:49:56 PM)
You need to address every objection and rejection the examiner has stated in the office action.

billN (Jun 28, 2007 2:50:20 PM)
if you have trademark something in USA and you want to pass the trademark to Europe do you have to do that for every country in EU.

USPTO Expert2 (Jun 28, 2007 2:51:32 PM)
You can start the registration process for your mark in all EU countries by filing through the EU trademark office - also known by the acronym OHIM. Their website has filing forms and instructions.

Samir (Jun 28, 2007 2:51:47 PM)
After filing a provisional, if idea has been refined by another person. Then we should be allowed add the inventors while converting it to non-provisional application.

USPTO Expert (Jun 28, 2007 2:51:58 PM) EDITED ANSWER
Note that provisional applications are not converted into non-provisional applications. You have to file a non-provisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e). You may add another inventor when you file a non-provisional application if someone adds to the invention filed in the provisional.

marge (Jun 28, 2007 2:52:10 PM)
How do I do a patent search and a 1 year patent?

USPTO Expert2 (Jun 28, 2007 2:52:46 PM)
Doing combined searches is a complicated process. We suggest you contact the Patent & Trademark Depository library in your region. See posting above for locations.

Gregg (Jun 28, 2007 2:53:32 PM)
So far, my patent is written as an abstract and a set of claims. Is that sufficient to apply for a provisional patent (plus fee and declaration)?

USPTO Expert (Jun 28, 2007 2:54:10 PM) EDITED ANSWER
Your patent application must also include a written description clearly explaining your claimed invention. It must convey the invention so one having knowledge in the same technology can make, and/or use the invention. See 35 U.S.C. 112. A provisional application does not require a declaration or claims. See 35 U.S.C. 111(b).

jmw (Jun 28, 2007 2:54:15 PM)
Can a very old and treasured receipt be Trademarked?

USPTO Expert2 (Jun 28, 2007 2:54:33 PM)
No - the entire text of a recipe cannot be registered as a trademark. If there is a distinction name for the product and it is marketed in interstate commerce, the name by which the product is known can be a source identified and, therefore, function as a trademark.

Einstein (Jun 28, 2007 2:54:41 PM)
Who do I contact in order to patent my ideas/invention.

USPTO Expert (Jun 28, 2007 2:55:51 PM)
To obtain a patent you must file an application with us, the United States Patent and Trademark Office (USPTO).

dt (Jun 28, 2007 2:56:02 PM)
Are collateral materials not necessarily specifically named or described in a patent but important for the operation of the invention (e.g., training manuals,) protected by the patent or should they be covered under other protections, like copyright?

USPTO Expert (Jun 28, 2007 2:57:22 PM)
The claimed invention is all that is covered in a patent. The name if used to identify this product should be trademarked and any written materials for use with the product should be copyrighted.

skirk (Jun 28, 2007 2:57:26 PM)
If a 102 rejection has been made for example: claimed : a fork , rejected over a spoon; and the reason given is they are both utensils, other than arguing and pointing out the finer differences between the spoon and the fork, would I have any other recourse? Is it possible to get another examiner, or is the only thing to do is appeal to the board?(i am not really claiming a spoon, but the analogy is correct)

USPTO Expert (Jun 28, 2007 2:58:59 PM) EDITED ANSWER
You may file a request for a pre-appeal conference, where the examiner, supervisor and art expert will look at your arguments. If not satisfied with the decision of the pre-appeal, you may then file an appeal brief. [see suggested changes in USPTO Expert (Jun 28, 2007 2:27:49 PM) above]

Gambes (Jun 28, 2007 2:59:32 PM)
I understand the U.S. PTO is currently working on a package of significant changes to current patent prosecution practice. Three questions: 1. When are the changes expected to be made public?

Gambes (Jun 28, 2007 2:59:34 PM)
2. How will you announce the changes?

USPTO Expert (Jun 28, 2007 3:01:07 PM)
Gambes - the rule packages are at OMB for review. Once they are finalized they will be announced on our web-site (www.uspto.gov).

skirk (Jun 28, 2007 3:01:17 PM)
where do i find information on making a pre-appeal conference.

USPTO Expert (Jun 28, 2007 3:03:20 PM) EDITED ANSWER
Please call 1-800-PTO-9199 for further information about pre-appeal brief conferences. Also, information regarding pre-appeal brief conferences is available in the Official Gazette notice dated July 12, 2005 at 1296 OG 67.

Einstein (Jun 28, 2007 3:03:44 PM)
Is it best to get a design and utility patent.

USPTO Expert (Jun 28, 2007 3:05:36 PM)
It is business decision that you need to make. Do you want to cover the ornamental design or how things work or how they are put together or what they are made of? The first part of the question covers a design patent and the last part covers a utility patent.

NADHOW (Jun 28, 2007 3:05:41 PM)
I am 17years old and I believe I have a great idea how do i get started with presenting this idea to some one.

USPTO Expert (Jun 28, 2007 3:06:13 PM)
No minimum age on filing a patent application Marketing or presenting your product is beyond the scope of our Office, however I would refer you to the National Inventors Hall of Fame, Invent Now web site for some useful information, www.inventnow.org .

USPTO Expert (Jun 28, 2007 3:09:07 PM)
Thank you for participating, unfortunately we were unable to answer all the questions submitted in the allotted time. The full transcript of today's on-line session will be posted within the next two to three weeks. Check the USPTO website for the date and time of future on-line sessions.