On Line Chat for Independent Inventors (15APR2008)

This is a transcript of the on-line chat held on Tuesday, April 15 , 2008. 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.

---

USPTO Expert (Apr 15, 2008 2:07:26 PM)
Welcome to today's On-Line chat, we will begin answer questions at 2:00 pm. Please note, we receive many questions during the one-hour, so you may not see your questions posted. We select and answer the questions based on the widest appeal. While you wait for the chat to start please visit our transcripts from previous chats at http://www.uspto.gov/web/offices/com/iip/onlineiip.htm .

gdsgrl (Apr 15, 2008 2:12:37 PM)
After filing a provisional patent is my invention protected enough for me to shop it to sell it?
USPTO Expert (Apr 15, 2008 2:12:49 PM)
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. Exclusive rights are not granted until the non-provisional application issues.
USPTO Expert2 (Apr 15, 2008 2:13:48 PM)
Heidi - You can find information about 35 USC 112 (1) and 37 CFR 1.76 in the Manual for Patent Examining Procedure (MPEP) on the resource page. You can also check the MPEP index and find further information about this statute and rule.

mark (Apr 15, 2008 2:14:32 PM)
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. Unfortuantely, 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?
USPTO Expert (Apr 15, 2008 2:16:12 PM)
Mark, 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      

faith (Apr 15, 2008 2:16:14 PM)
My question is where do I start in getting this design trademarked or patented. Which comes first?
USPTO Expert2 (Apr 15, 2008 2:25:44 PM) EDITED ANSWER
Faith - This answer is out of sequence. If you would like to patent the appearance of an everyday household item, you can apply for a design patent. Design patents protect the ornamental design embodied in or applied to an article of manufacture.  The term of a design patent is 14 years from date of issue. You can also trademark the look of your invention, as long as there are aspects of the appearance that are not purely functional. There is no required order to applying for patents or trademarks - you can apply for both on the same day.

Peter (Apr 15, 2008 2:20:12 PM)
Am I at a disadvantage if I (inventor) file a patent on my own without using a patent attorney? What is the downside?
USPTO Expert (Apr 15, 2008 2:20:16 PM) EDITED ANSWER
Peter, The USPTO recommends hiring a registered patent practitioner (attorney or agent), if possible. There are no requirements that you must use a registered patent practitioner. However the process of securing a patent can be complicated and the Office strongly suggests using the services of a registered patent practitioner. A listing is available at: http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html

ZMON (Apr 15, 2008 2:21:49 PM)
I have question: I am looking to make a small time TV show for local viewing......... How & where do I check to see if the "Show Name" can be used? Example - "Indianapolis Law and Order"
USPTO Expert3 (Apr 15, 2008 2:21:53 PM)
Zimon - You can check to see whether the name of the TV series you want to use is a registered trademark or pending trademark application by searching the USPTO database. You should also check other sources such as state trademark registers or just a general Internet search to see if someone is using a similar mark but has not applied to register the title as a trademark with the USPTO. The URL to search the mark in the USPTO database is http://tess2.uspto.gov/bin/gate.exe?f=tess&state=i6klsb.1.1

mark (Apr 15, 2008 2:22:00 PM)
Thank you for your response. Is it appropriate to contact the examiner by phone? If not, how do you suggest we contact the office for a status update?
USPTO Expert (Apr 15, 2008 2:22:01 PM)
Mark, You can contact the examiner or his/her supervisor for a status update.

gdsgrl (Apr 15, 2008 2:24:01 PM)
Does the patent office stand behind standards of the product development companies?
USPTO Expert (Apr 15, 2008 2:24:20 PM)
gdsgrl, While the USPTO does not investigate complaints or participate in any legal proceedings against invention promoters/promotion firms, under the American Inventors Protection Act of 1999, [PDF] the USPTO will provide a public forum for the publication of complaints concerning invention promoters/promotion firms. Also, in the forum, the USPTO will publish responses to the complaints from the invention promoters/promotion firms. The USPTO will accept complaints filed against invention promoters/promotion firms and forward these complaints to the invention promoters/promotion firms for response. As mentioned above, both the complaints and the responses will be published in the public forum so that they will be publicly available. The USPTO does not accept complaints submitted under this system if the complainant requests confidentiality.

Heidi (Apr 15, 2008 2:24:57 PM)
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?
USPTO Expert (Apr 15, 2008 2:25:23 PM)
Heidi, the link is http://www.uspto.gov/web/offices/pac/mpep/documents/0500_509_03.htm#sect509.03

Marla (Apr 15, 2008 2:26:08 PM)
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?
USPTO Expert (Apr 15, 2008 2:27:27 PM)
Marla, 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/

Dynewar (Apr 15, 2008 2:27:42 PM)
Is there a listing of invention promoters/promotion firms that have had numerous complaints by independent inventors?
USPTO Expert (Apr 15, 2008 2:28:12 PM)
Please visit our web site for a list of complaints the Office has posted at http://www.uspto.gov/web/offices/com/iip/complaints.htm

mike (Apr 15, 2008 2:28:49 PM)
How do you report someone who fraudulently represents the usage of a TM that is not registered or has any form of a corporate presence in any us jurisdicition?
USPTO Expert3 (Apr 15, 2008 2:29:40 PM)
Mike - There is no method for reporting this at the USPTO. The TM indication is just a notation by the user that he or she believes that this mark is their exclusive property. However, it does not indicate that there has been any approval or recognition of the terminology as a valid trademark or service mark under the US Trademark Act. You should consult with a local attorney to find out if there is some method outside of the USPTO for instituting a concern of this kind.

Peter (Apr 15, 2008 2:30:49 PM)
Can an individual apply for a Trademark? Or do I have to incorporate a company first, before applying for a trademark?
USPTO Expert3 (Apr 15, 2008 2:31:18 PM)
Peter - an individual may apply to register a trademark. You do not have to be a corporation or other formally organized legal entity to apply.

zenom (Apr 15, 2008 2:34:04 PM)
Does the USPTO provide any measures to enforce patents against others?
USPTO Expert (Apr 15, 2008 2:34:05 PM)
Enforcing the patent is the right of the inventor or the assignee not the USPTO.

nventor bust (Apr 15, 2008 2:34:32 PM)
I have heard that the majority of my ideas would require "utility patents", and the first step is to look these ideas up. How would I go about doing that, and do I need to be discreet in as search when interacting with databases etc...?
USPTO Expert (Apr 15, 2008 2:36:06 PM)
Nventor bust, You can go to your local Patent and Trademark Depository Library, a network of 85 libraries nationwide, to learn how to do a patent search, or on the USPTO web site at http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html

Howard (Apr 15, 2008 2:36:32 PM)
In order to complete filing online utility patent application, what do I need?
USPTO Expert (Apr 15, 2008 2:39:03 PM)
Howard, please go to our Electronic Business Center at http://www.uspto.gov/ebc/index.html  

faith (Apr 15, 2008 2:36:45 PM)
One I have obtained my design patent, where should I begin in marketing the item
USPTO Expert2 (Apr 15, 2008 2:36:48 PM) EDITED ANSWER
Faith - the USPTO cannot assist in marketing a patented design. You may wish to consult with a business development expert - perhaps the Small Business Administration.
USPTO Expert2 (Apr 15, 2008 2:40:02 PM)
Chanty - An idea cannot be patented. In order to obtain a patent you must describe your invention in terms where others in the technology of your invention can understand, make, and/or use it. The application for a patent must contain at least one claim defining your invention. You can find more information about patent requirements at http://www.uspto.gov/web/offices/com/iip/index.htm

april (Apr 15, 2008 2:40:33 PM)
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?
USPTO Expert3 (Apr 15, 2008 2:40:40 PM)
April - 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.

Anitch (Apr 15, 2008 2:41:44 PM)
I understand that a provisional patent is good for one year. Is there any way that this can be extended?
USPTO Expert2 (Apr 15, 2008 2:45:29 PM)
Anitch, The one year period of a provisional application is set by statute and cannot be extended. Keep in mind that a provisional application is not examined and the provisional application can never issue as a patent.  If you want to obtain a patent after you have filed a provisional application, it is important that you file your non-provisional application prior to the expiration date of the provisional application and you may claim the benefit of the filing date of your provisional application for subject matter that has support in the provisional application. Also, if you have not made a public disclosure, you can refile your provisional application, which sets another one-year period.

manti (Apr 15, 2008 2:46:12 PM)
I have a utility/design that I want to patent that has four additional components that attach to the surface of the design and change the design look. My ? is would these four additional design components become new designs patents or can I attach these designs to my patent design application for my original utility/design and is the 37 CFR 1.16 (f) the right form?
USPTO Expert3 (Apr 15, 2008 2:46:19 PM)
Manti - if the four additional components do not change the overall appearance of the invention, they could be presented in the same application as the basic design. However, if the components change the overall appearance, you could apply for a design patent for each different combination of basic article and attached component. You can also apply separately for a design patent on each of the four components.

zenom (Apr 15, 2008 2:46:54 PM)
How important is it to provide examples in patent applications (in the specification)? Will a general disclosure suffice?
USPTO Expert (Apr 15, 2008 2:47:03 PM) EDITED ANSWER
Zenom, 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/mpep/documents/2100_2161.htm#sect2161

faith (Apr 15, 2008 2:47:25 PM)
what is the fee for a design patent?
USPTO Expert (Apr 15, 2008 2:47:44 PM)
Faith, the fee schedule is located at http://www.uspto.gov/web/offices/ac/qs/ope/fees.htm .  For your information, the current basic filing fee for a design application is $150 for small entity and $210 for non-small entity.  The current search fee is $50 for small entity and $100 for non-small entity.  The current examination fee is $65 for small entity and $130 for non-small entity.

Dave8 (Apr 15, 2008 2:48:08 PM)
Expert2, is it not true that if an application does not contain any claims, that the examiner MUST come up with at least 2 claims?
USPTO Expert (Apr 15, 2008 2:49:07 PM) EDITED ANSWER
Dave8, Any non-provisional application submitted without at least one claim would be considered incomplete and no filing date will be granted.  Applicant would be notified of the deficiencies and given a set period to respond.

shelley (Apr 15, 2008 2:49:11 PM)
hi everyone,, my first question is usally how much out of pocket expensis does it cost to patent something and start and invention?
USPTO Expert2 (Apr 15, 2008 2:49:15 PM) EDITED ANSWER
Shelly - Searching, which is the first thing you should do, is free. Filing a regular non-provisional application cost $515.00 for small entity if you file by mail (basic filing fee - $155, search fee - $255, and examination fee - $105) and $435.00 if you file electronically.

Carol (Apr 15, 2008 2:51:29 PM)
Are fashion shoes patentable ?
USPTO Expert3 (Apr 15, 2008 2:51:31 PM)
Carol - 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.

Larry1 (Apr 15, 2008 2:53:05 PM)
What are the rules about who should be listed as a coinventor on a patent?
USPTO Expert (Apr 15, 2008 2:53:42 PM) EDITED ANSWER
Larry1, Information about coinventors can be found in 37 CFR § 1.45, (attached) Joint inventors. (a)Joint inventors must apply for a patent jointly and each must make the required oath or declaration: neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47. (b)Inventors may apply for a patent jointly even though (1)They did not physically work together or at the same time, (2)Each inventor did not make the same type or amount of contribution, or (3)Each inventor did not make a contribution to the subject matter of every claim of the application. (c)If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.

alli82 (Apr 15, 2008 2:53:45 PM)
How detailed does a design patent need to be? My device that I have a utility patent on has magnets molded into it and I would like to patent the exact positioning of the magnets. Is that something that would fall under a design patent? How many drawings are recommended?
USPTO Expert2 (Apr 15, 2008 2:53:48 PM)
Alli 82 - Design patents are directed to the appearance for an article of manufacture, so the appearance of the magnets could be patentable as a design. Your application should include very good drawings showing all features of your claimed design so that someone skilled in making your device could make and use it. See a Guide to Filing a Design Patent Application; http://www.uspto.gov/web/offices/com/iip/pdf/brochure_05.pdf

gdsgrl (Apr 15, 2008 2:53:56 PM)
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?
USPTO Expert3 (Apr 15, 2008 2:53:58 PM) EDITED ANSWER
gdsgrl - 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.

Jimmy (Apr 15, 2008 2:54:29 PM)
I did not include a suggested class in my non-provisional utility patent application. Would it be appropriate to suggest a class as part of a preliminary amendment?
USPTO Expert (Apr 15, 2008 2:54:39 PM)
Jimmy, That is not necessary

Dave8 (Apr 15, 2008 2:55:18 PM)
But I thought the fee for a nonprovisional App for a small entity, was only $155, and not $515 as was stated by USPTO Expert 2!! is teh $515 a transcription typo?
USPTO Expert3 (Apr 15, 2008 2:56:19 PM)
Shelley - A great starting place for researching patent and trademark
USPTO Expert (Apr 15, 2008 2:56:27 PM) EDITED ANSWER
Dave8, at the $155 that you are referring to is the current basic filing fee, however there is a search fee of $255 and an examination fee of $105 as well for a total of $515.00.

alli82 (Apr 15, 2008 2:56:56 PM)
Would you be considered a small business entity if you are a corporation, but are only 2 people with no employees?
USPTO Expert (Apr 15, 2008 2:57:39 PM)
alli82, Yes by definition, see For a definition of small entity, see 37 CFR 1.27. http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf

fred (Apr 15, 2008 2:57:43 PM)
Filed a Business Method patent and related PCT in August 2007, and now seek some sort of estimate, based upon the current USPTO caseload, when I might expect to see the next steps in the application process in terms of months to the first step, and typical average number of months between steps thereafter.
USPTO Expert2 (Apr 15, 2008 2:58:39 PM)
Fred - please contact the supervisor or the examiner in charge of the application

shelley (Apr 15, 2008 2:58:20 PM)
how much research does it take? where do i start researching?
USPTO Expert3 (Apr 15, 2008 2:58:22 PM)
Shelley - A great starting place for researching patent and trademark information is your local Patent and Trademark Depository Library. For a list of contacts for these libraries see www.uspto.gov/go/ptdl Your PTDL librarian can show you how to access searchable databases on the USPTO web site. The time needed to do a thorough preliminary patent search varies by customer.

manti (Apr 15, 2008 2:59:30 PM)
Thanks - Is PTO/SB/01 the utility/design application form?
USPTO Expert (Apr 15, 2008 3:00:22 PM)
Manti, PTO/SB/01 is the declaration for utility/design applications and should accompany your application, you may want to contact our Inventors Assistance Center at 1-800-786-9199 for additional information

Jimmy (Apr 15, 2008 3:03:26 PM)
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?
USPTO Expert2 (Apr 15, 2008 3:04:46 PM) EDITED ANSWER
Jimmy - 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.

Carol (Apr 15, 2008 3:04:55 PM)
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
USPTO Expert (Apr 15, 2008 3:04:56 PM)
Carol, 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.

not_rob (Apr 15, 2008 3:05:15 PM)
I need some advice. can anyone help?
USPTO Expert (Apr 15, 2008 3:05:39 PM)
not rob, The Office cannot provide legal advice but you can contact our Inventors Assistance Center at 1-800-786-9199.

zenom (Apr 15, 2008 3:06:41 PM)
Is an examiner allowed to come to visit an invention site?
USPTO Expert (Apr 15, 2008 3:07:46 PM)
Zenom, Periodically our examiners do go to tour sites, however it is not based on a single application.

Dave8 (Apr 15, 2008 3:07:51 PM)
If a provisional application is filed, and time is running out to file a nonprovisional application, can another provisional application be filed, thus buying a one year extension?
USPTO Expert2 (Apr 15, 2008 3:12:40 PM) EDITED ANSWER
Dave8 - If you file two provisional applications, you have two different filing dates, if you do not file a nonprovisional application at the one year date from the filing of the first provisional application, you will not be able to claim the benefit of the filing date of the first provisional application. You will have the second date as your date for filing a nonprovisional application and that nonprovisional application can only claim the benefit of the filing date of the second provisional application. This all depends if there is a public disclosure more than a year prior to the filing of the second provisional application.

not_rob (Apr 15, 2008 3:11:33 PM)
I am working on an idea, but dont 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?
USPTO Expert (Apr 15, 2008 3:12:04 PM) EDITED ANSWER
not_rob 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.
USPTO Expert (Apr 15, 2008 3:13:44 PM)
Thank you for joining us today, as usual we receive far more questions than we can answer. If you did not see your questions, please visit our FAQ's from previous chats or contact our Inventors Assistance Center at 1-800-786-9199. Next chat will be June 2008 and posted on the homepage. The transcript from today will be posted in about 2 weeks on the USPTO homepage.

Download [PDF] Reader