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Online2009Sept15

This is a transcript of the on-line chat held on Wednesday, September 15 , 2009. 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.

David Kappos: (14:04) Good Afternoon everyone, this is David Kappos.   As the new Director of the United States Patent and Trademark Office, I want to take this opportunity to welcome you to today’s bi-monthly chat for independent inventors.  America’s independent inventor community has always been a driver of innovation in this country.  The contributions you make to our economy and society cannot be overestimated.  These bi-monthly chats are part of the USPTO’s commitment to making sure that you have the resources you need and can take full advantage of our intellectual property protection system. I will do everything I can during my tenure to make sure that America’s independent inventor community continues to flourish and prosper. On November 5-6, I look forward to seeing many of you at the annual independent inventors conference.  It will be held at our headquarters in Alexandria, Virginia.  It will be my pleasure to give the keynote address at the conference.  At that time I look forward to laying out for you some of

David Kappos: (14:04) my plans for addressing the challenges that confront the USPTO.  But more importantly, I want to take advantage of the opportunity to hear from you about your ideas and how we can better serve you.   Registration and other information about the conference will be posted on our website, www.uspto.gov, tomorrow.Now let me turn things over to you for your questions and to our USPTO experts for answers.

Mary: (14:05) I am trying to start labeling my own spice blend, do I need to register a trademark to protect my recipe and logo/brand?

Expert 47: (14:05) Mary - You don't ''need'' to register a trademark but it's a good idea. You could register the name by which the public will identify your goods in the marketplace. However, generally, you can't protect a recipe by means of a trademark registration. A trademark registration does not protect the actual goods - it protects the name by which the goods or services are known.

Jon 2: (14:05) When applying for a trademark, do I need to first search BOTH the internet and the Trademark Office database for similar marks beofre I file?

Expert 9: (14:05) Jon 2, yes, it is a good idea to search both the USPTO database for federal registrations and applications, as well as searching the Internet and other business resources to see if there are possibly conflicting trademarks. 

Volker: (14:05) Can a utility patent be renewed at the expiration date?

Expert 15: (14:05) Volker, No. Patents are only good for a limited period of time per Article 1, Section 3, Clause 8 of the US Constitution.

Andre: (14:06) Hi. I'm a foreigner living in a foreign country. Can I file an electronic submission myself?

Expert 12: (14:06) Andre - yes, you may submit your application electronically.

Land of AZ: (14:06) Please discuss specific rules that goveren what's non-obvious vs obvious advancemnets. Thank you.

Expert 36: (14:06) 35 USC 103 governs what is obvious and what is not: see Manual of Patent Examination (MPEP) 2141; link:http://www.uspto.gov/web/offices/pac/mpep/mpep.htm and then click on section 2100 (either pdf or html, your preference)

Expert 7: (14:06) Don - Inventors do not need a practitioner registration number, go to http://www.uspto.gov/ebc/index.html

Don Darnell: (14:07) Trying to access Private Pair, but form SB125 for applying for a Customer number is asking for a practitioner registration number. Where does an inventor get that?

Expert 7: (14:07) Don - Inventors do not need a practitioner registration number, go to http://www.uspto.gov/ebc/index.html

RX2K: (14:08) I have an idea in my head, but how do I know where to go from there?

Expert 13: (14:08) A good place for beginners to learn about the patent application process and how to do a preliminary patent search is your local Patent and Trademark Depository Library (PTDL).  To find the nearest PTDL to you, you can check our website at www.uspto.gov/go/ptdl.  Also there are inventor resources found at www.uspto.gov/web/offices/com/iip/index.htm

inventor1000: (14:09) If i do not find my product idea among existing patents on your website, is my best next step to have an attorney do a search to see if a patent is already existing?

Expert 15: (14:09) Inventor1000, If you can't find anything like your invention you are probably searching in the wrong place. Our suggestion is that you search again expanding your words and then try to search using the patent classification. You can get help at a PTDL as noted in the answer to RX2K.

lisa: (14:09) must a ''word'' that I made up need to be trademarked or copyrighted?

Expert 47: (14:09) Lisa - A word can be registered as a trademark if it is used to identify the source of goods or services in the marketplace. You should contact the US Copyright Office for information regarding copyright registration go to www.copyright.gov

xyz123: (14:10) do i need to have an actual physical prototype of my invention before a patent can be issued?

Expert 15: (14:10) xyz123, no you do not. All you need is a written description of the invention.

Markm: (14:12) On web site, I saw anticipated time for first office action is 54 months on recently filed application, it is realistic?

Expert 14: (14:12) Marlkrn:  Our backlog varies depending on the filings in the specific technology area.

Jeff: (14:12) How does a provisional patent differ from a patent.?

Expert 7: (14:12) Jeff - 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.

Thomas Anderson 3: (14:12) There is a company called inventright that I was considering purchasing their info to learn more about the industry. Is this a recognized name in the field?

Expert 15: (14:12) Thomas Anderson 3, It is suggested that you go to our website to look at complaints that have been filed against invention marketing companies. If you don't see the company name listed there, then check your state attorney general's office or the FTC website (www.FTC.gov). You can also do a Google search on the company name to see if there are any fraud alerts.

inventor749: (14:13) Are all patent applications published?

Expert 36: (14:13) inventor749 - No,there are exceptions, see the MPEP at http://www.uspto.gov/web/offices/pac/mpep/mpep.htm; click on Appendix R, rule 1.213

ravishankerkv: (14:14) on what basis is a patent granted ....would some information in public domain or published ...fall under the perview or scope of patent ...

Expert 15: (14:14) ravishankerkv, a patent is granted based on statutory requirements set forth in Title 35 of the United States Code. The three things an examiner looks for are novelty, nonobviousness and utility.

Jon 2: (14:14) if someone is using my proposed trademark in, say Europe,  And I have not applied yet in the USdo I have to worry about that in the United States?

Expert 9: (14:14) Jon 2, trademark rights in the United States are based on the prior use of a mark on goods or in connection with services.  Therefore, you should consider investigating whether the mark in Europe is being used in the United States, even if they have not yet filed a trademark application or obtained a registration in this country.

Bruce Ferguson: (14:15) Do I need  a working proto type to get it(my invention) licenced?

Expert 15: (14:15) Bruce Ferguson, please see answer above for an answer to this question.

Monica Payton: (14:15) If I have a Trademark for service that includes both sound and movement, should I register each component indivisually or combined?

Expert 47: (14:15) Monica Payton - if the sound and movement is used together and are inseparable in the perception of the public, they can be included in the same application. However, there are application requirements for sound and movement marks that are rather unusual. You should consult the Trademark Manual of Examining Procedure which available at the USPTO website for the special requirements concerning applying for sound and/or movement marks.

Ric Calhoun: (14:16) I have a provisional application that expires on the 18th and I need more time to submit the additional paperwork for the patent, is there a provisional extension available

Expert 7: (14:16) Ric - Provisional application cannot be extended beyond the one year period. 

Mr. Burns 5: (14:16) My invention will reqire both types of patents (design and utility) does the USPTO have some type of Combo deal or something...the fees are not cheap seperate!

Expert 14: (14:16) Mr. Burns 5:  Unfortunately for you, no.  There is not a combo deal for filing both a design and patent application.

denise: (14:17) Just getting started with new invention, USPTO good place to start?

Expert 11: (14:17) Denise, The Inventor Resources page on our website contains a wealth of information to help you start the process

John G 2: (14:18) Trademarks:  Can the same word be trademarked more than once based on its classification?  If yes, hwo do i go about protecting my name to the best extent.

Expert 47: (14:18) John G 2 - a trademark can be registered for goods or services in more than one class. You must have actual use or a bona fide intent to use the marks on all of the goods or services listed in your registration. So long as you meet one of those criteria, you can protect your trademark to the extent that you are using or intend to use your mark on goods or service.

Foolfully: (14:18) Is computer code considered a process or just the results of the computer code?

Expert 7: (14:18) Foolfully - Computer code per say is copyrightable, please visit www.copyright.gov for additional information

allinone: (14:18) what is the current wait Q I have been waiting for a review for over 3 years

Expert 36: (14:18) allinone - Current wait time to first action depends on the particular subject matter of your application.

Mark: (14:18) Good afternoon, I have THREE questions:  FIRST, can you give me some recommendations concerning the steps to learn about patents and course of study for someone who has some invention ideas but does not know the steps to obtain a patent if I try to do it myself?  SECONDLY, does the USPTO have on-line courses or live WebEx broadcast for instruction for Independent Inventors and what colleges specialize in course work concerning patents and trademarks?  FINALLY, can you recommend some organizations or clubs which educate and inspire High School students to learn more about how to patent their own inventions and help to develop entrepreneurship within America youth.  Thank you.

Expert 13: (14:18) Mark, good questions.  1-A great place to research the steps involved in patenting iand searching patents is your nearest PTDL Patent & TM Depository Library (see www.uspto.gov/go/patents). 2) Many of our PTDLs have created online tutorials for beginners such as University of Texas Austin.  See the links at the PTDL page.  Also there is a search tutorial on the USPTO web site at www.uspto.gov/go/ptds/tutorials.html.  3)  The National Inventors Hall of Fame has Camp Invention (see www.invent.org) and www.first.org has a robotics competition for high school age students.

Intl Inventor: (14:19) Can you speak more about the electronic filing of patents - improvements, where does this stand in terms of going live, what improvements are there, etc?

Expert 15: (14:19) Intl Inventor, an applicant who wants to file an application electronically, can do so using the electronic filing system. If you need assistance, please contact our Electronic Business Center through our website at www.uspto.gov/ebc/indexebc.html

Jeff: (14:19) Can a provisional patent be renewed?

Expert 7: (14:19) Jeff Provisional applications cannot be renewed.

Volker: (14:20) can an abandoned patent be revived and if so what is the term limitation?

Expert 15: (14:20) Volker, abandoned patents can be reinstated through filing of a petition and payment of appropriate fees. If you need assistance, the Petitions Help Desk can be reached at 1-800-PTO-9199

Sandi 2: (14:22) What is the cost for applying for patents

Expert 7: (14:22) Sandi 2 - The USPTO's current fee schedule is available at http://www.uspto.gov/web/offices/ac/qs/ope/fee2009september15.htm

lisa: (14:22) can you pls give me an exAMPLE OF A WORD THAT ''IDENTIFIES THE SOURCE OF GOOD OR SERVICES?'' PLEASE

Expert 47: (14:22) Lisa - They are all around you - APPLE  for computers, HERSHEY for chocolate, XEROX for photocopying machines to name just a few

Ric Calhoun: (14:22) what forms are needed to complete the patent application if you already have a provisional online?

Expert 12: (14:22) Ric - please contact the Inventors Assistance Center at 1-800-786-9199.

Maria del Carmen: (14:22) if I made a patent, lets say in Cuba, its good here in the USA??

Expert 15: (14:22) Maria del Carmen, if you get a patent in another country, it does not provide protection in the United States. In order for you to have protection in the US, you must file for a US patent. Each country has their own patent laws and you must file in each country where you want to have protection.

Masa Kasahara: (14:23) How much does it cost to file for a utility patent as of today?

Expert 7: (14:23) Masa Kasahara - The USPTO's current fee schedule is available at http://www.uspto.gov/web/offices/ac/qs/ope/fee2009september15.htm

Cheryl: (14:23) To be on the safe side, should you file for both a utility and a design patent, in the event that your utility patent is rejected but your idea would still count as a design ?

Expert 36: (14:23) Cheryl - Filing for both a utility and a design patent is permissible, granted that you follow the specific filing requirements unique to each one.  see www.uspto.gov for guidance

Cameron: (9/16/2009 14:23) Another question. When persuing help from 3rd party invention companies like InventHelp, how can you protect yourself from someone stealing your patent? They will not discuss a lot of pricing and help information until you tell them about your idea.

Expert 15: (14:23) Cameron, that is the risk you take when dealing with a company that will do everything for you. Your safest option is to deal directly with a patent attorney or ag

MJ: (14:24) The nearest PTDL is 300 miles from me, is there some other way to gain the expertise of the libriarians from a distance?

Expert 13: (14:24) MJ.  Try contacting that PTDL.  Most PTDLs will be able to provide assistance over the phone on how to search patents and trademarks, though it can be more productive face to face.  Your PTDL librarian can recommend local resources that could be of assistance, also.

Volker: (14:24) How can I prevent an election requirement office action?

Expert 11: (14:24) Volker, MPEP 803 defines when restrictions are proper and MPEP 806 gives the details on how to determine if inventions are independent and distinct.  http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r5_0800.pdf

Bruce Ferguson: (14:25) Once you have a patent and a written description how do I find some company to buy it?

Expert 7: (14:25) Bruce - The USPTO does not assist with marketing your product, however, the Small Business Administration (SBA) provides excellent information on starting, planning, marketing, obtaining venture capital and financing a small business. The SBA also provides training and counseling.

Mavens3: (14:25) I know that I have to use an identification with my trademark. Should that identification be everything that I make listed or a general description?

Expert 9: (14:25) Mavens3, you are correct that you must describe your goods or services in your trademark and/or service mark appilcation.  The ID should be specific as to the goods and/or services with which the mark is in use or with which you have a good faith intention to use the mark.  Please check the Identification of Goods and Services Manual, available online on the Trademark page of the USPTO website, which allows you to search for appropriate language for IDs and gives you an idea of the level of specificity required.

inventor749: (14:26) If something has not been patented, but is out in the marketplace, and I have a similar idea and apply for a patent, what would be the USPTO position/stance on this?

Expert 15: (14:26) Inventor749, if the similar idea creates a situation where your invention is not new or is obvious in view of what is in the marketplace, then your application will be denied because it does not meet the statutory requirements of novelty and nonobviousness.

allinone: (14:26) if you filed for a design and it should have been a utility can it be changed

Expert 47: (14:26) Allinone - The USPTO has a process for converting design patent applications into utility patent applications. If you believe your application should be converted, please contact the Patent Office Help Desk at 1-800-PTO-9199.

Maria del Carmen: (14:26) My name is Maria del Carmen. I have two patents of two new models of sugar cane juice clarifier, those were patented in cuba twenty years ago, i need to know if if there is any way i can use those patents here in the USA???

Expert 14: (14:26) Maria del Carmen: Regarding protection in the US using a Mexican patent. You would not have protection in the US unless you file for an patent in the US before the publication of your Mexican patent

patentcurious 2: (14:27) Good Afternoon, thank you for doing this! I have a great idea which I want to file some sort of patent for today. I want to file a patent to protect the ''idea'' until I can get the prototype completed. Is there a particular patent type that satisfies this need without exposing the concelt to teh rest of the world to move quicker than I can on proto and thus secure patent before me?

Expert 36: (14:27) patentcurious 2 - filing a provisional application would meet your needs. see http://www.uspto.gov/web/offices/pac/provapp.htm for guidance

Markm: (14:27) Is there a way of expediting already filed utility patent application?

Expert 11: (14:27) Markm, The USPTO has established procedures under which the examination of a patent application may be accelerated. Under one of these procedures, the USPTO will advance an application out of turn for examination if the applicant files a grantable petition to make special under the accelerated examination program.  http://www.uspto.gov/web/patents/accelerated/

Eduardo: (14:28) Hello everyone, I have an invention idea and I have not seen it in stores or tv ads but someone told me to check if my idea has been invented already or is patent pending. Is there a web site for me to check and not waste my time.

Expert 15: (14:28) Eduardo, searching for an idea is a very difficult task. However, you can take a look for patents at our website at teh following link - http://patft.uspto.gov. You can also go to a Patent and Trademark Depository Library.

william : (14:28) I received a mail solicitation to have an agency pay my maintenance fee and they say you must file an MFT form.  But I already paid the maintenance online, so do I still need the transmital form?

Expert 7: (14:28) William - Unless the Maintenance Fee notice came directly from the USPTO, you should probably disregard.  If you have concerns call the USPTO directly at 1-800-786-9199.

Eduardo: (14:28) Hello everyone, I have an invention idea and i have not seen it in stores or tv ads but someone told me to check if my idea has been invented already or is patent pending. Is there a web site for me to check and not waste my time.

Expert 13: (14:28) Eduardo, the USPTO website has a database for searching all U.S. patents and published patent applications; it is updated weekly.  Check www.uspto.gov .  A good place to learn how to do a thorough job of searching patents on the USPTO website is your local Patent and TM Depository Library (www.uspto.gov/go/ptdl).

Mr. Burns 5: (14:29) Does the USPTO website have information for contacting local independent inventor organizations?

Expert 15: (14:29) Mr. Burns 5, the USPTO does not have a direct link to independent inventor organizations; however, you can find that at www.uiausa.org.

David: (14:29) If I start a new corproation with a unique name, do I have to trademark that name?

Expert 47: (14:29) David - a business name can only be registered as a trademark if it is used as a trademark and not just the name of the business. For example, XYZ Inc. used in small letters on a label with the name and address of the company would not be considered trademark use of the name. However, XYZ used elsewhere on the label in the manner that trademarks are commonly used, can support an application to register that expression as a trademark.

Thomas Paul Downs: (14:29) Could the TM Office provide support of protection of TM Names from registration of TM Names by all domain name companies to non TM Name owners registering a name that is a U.S. Trademark?

Expert 9: (14:29) Thomas Paul Downs, no trademarks and service marks and domain names are completely different and are registered and protected through completely different systems, rules, and regulara. 

CD Rowsell: (14:30) can patents now be filed via the internet?

Expert 36: (14:30) CD Rowsell - patent application can be filed via efs web - see http://www.uspto.gov/ebc/efs_help.html

Volker: (14:30) If my independent claim is rejected does this mean all dependent claims based on this independent claim are rejected by default?

Expert 14: (14:30) Volker:  No.

Jerry Lowery: (14:31) I am applying for a patent on a wind machine. I have completed the application such as required forms, the abstract, claims, detailed descriptions and drawings. I have built and tested a prototype of the machine but I am not sure where in the application I should put the results of this test. I also have a video on a DVD showing the prototype working but I don't believe that the USPTO accepts videos .

Expert 15: (14:31) Jerry Lowery, that could go in either the summary of the invention or the detailed description of the invention.

SJM Design: (14:31) Should you include a registration mark next to trademarked company name on business cards?

Expert 47: (14:31) SJM Design - the registration symbol (R in a circle) should only be used in close association with the mark that is actually registered. If a portion of a company name is registered as a trademark but not the entire name, the circle R should not be used in association with the entire name on business cards or anywhere else.

Seth: (14:32) Can someone answer my questions in simple terms on how to get a patent?

Expert 36: (14:32) Seth - please see http://www.uspto.gov/web/patents/howtopat.htm for guidance

allthegold: (14:32) hello, I hope I'm in the right place. I have an idea for a new product and wish to obtain a simple copyright/patent on my idea so I can shop it around to industry. can anybody help me??

Expert 14: (14:32) allthegold: I would start by getting some basic information from our Inventor Assistance Center @ 800 786-9199. 

mary173: (14:32) i have a homemade prototype of my idea. what is the next step to take

Expert 15: (14:32) Mary 173, you should do a thorough patent search and if you find that your invention is different from those patents you find, you should use those patents as a template to write your own application or you should contact a patent professional for assistance in filing your application.

Foolfully: (14:34) WHen using the trademark search at uspto why are all similiar results shown and not the exact phrase you are looking for? There are too many similiar results for me to look through!

Expert 9: (14:34) Foolfully, if you wish to search for the exact phrase you are looking in the trademark database, try placing the phrase in quotation marks.  Without quotation marks, the system will search each term in the phrase separately

KBruce: (14:34) Will these questions and answers be available for later review?

Expert 12: (14:34) KBruce - the questions and answers will be posted to our website in the coming weeks.  Please check our

Mark: (14:34) Will the USPTO be making more podcast and posting them on sites like ''iTunes'' ?    (So far, the USPTO podcast that I have watched are vague and do not get into the details concerning how to submit a patent or trademark.)  Would it be possible that the USPTO could consider posting instructional videos on sites like ''Youtube''?  Thank you.

Expert 15: (14:34) Mark, we have plans to post a number of podcasts and videos on our website as well as using Youtube or other social networking links to disseminate information to the public. Please stay

UnRoadWarrior: (14:35) This site does not open - www.uspto.gov/go/ptdl

Expert 13: (14:35) UnRoadWarrior, that should have worked, but you can also try http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html as an alternative.

am: (14:36) where can we find a patent professional?

Expert 7: (14:36) am- The USPTO maintains a roster of registered patent attorneys and agents, go to https://oedci.uspto.gov/OEDCI/

moven: (14:36) Does the trademark filing date serve as a form of protection, until the assigned attorney assign a registration number?

Expert 47: (14:36) Moven - The filing date will only be an indicator of the commencement of protection in an intent-to-use basis application. IF the application proceeds to registration, the filing date will be come the ''effective'' date of first use of the mark vis-a-vis potential infringers that began use of the mark or filed for use of the mark after the filing date of your application.

inventor749: (14:36) can someone explain in ''laymens'' terms the 3rd requirment of a patent, obvious vs non-obvious in reference to an ''article of manufacture?'

Expert 15: (14:36) inventor749, obviousness is a difficult question to answer. The Supreme Court struggled to answer the question in 26 pages in a recent ruling called KSR; however, in the simplest terms we can say, it is something that would have been a variation on an existing product or article that would have been known or realized by someone having ordinary skill in that particular technology

Foolfully: (14:38) Where can I go to USPTO school?

Expert 7: (14:38) foolfully- There is no USPTO school, however, we will be hosting our Annual Independent Inventors conference, information will be on the homepage tomorrow

Dave Bakke: (14:38) What is the success rate of filing a patent by yourself vs. using a patent attorney?

Expert 36: (14:38) Dave Bakke - the maturing of a patent application into a US patent depends on the subject matter, independent of whether your prosecute the application by yourself (Pro Se), or appoint a patent attorney.  Keep in mind that ther patent process is complicated. 

moven: (14:38) Does the government provide financial assistance to inventors ie grants? So, what sites would you recommend?

Expert 12: (14:38) Moven - The USPTO does not provide assistance on financing or marketing your invention.  Please refer to the Small Business Admistration at http://www.sba.gov/.

Mr. Burns 5: (14:39) What do you (USPTO) consider a ''thorough patent search''...please provide at least your top three steps...thanks!

Expert 15: (14:39) Mr. Burns 5, think of words and concepts that could be synonyms or antonyms of your invention. Expand your search to include the classification of your invention from the US classification manual and use forward and backward searches of similar patents that you made have found in searching your invention; that is finding patents that were cited in the patent or patents that cite that patent

Intl Inventor: (14:40) If I have recd a patent in the US and a company in a foreign country copies it and markets it as their own, what protection do I have if I have not filed a patent app in that foreign country?  What if the country in question is part of the Paris Convention or a PCT country?

Expert 7: (14:40) Intl Inventor - Information about PCT's is available at http://www.uspto.gov/web/offices/pac/dapp/pctlegaladminmain.html

qin zhang: (14:40) 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?

Expert 36: (14:40) qin zhang - please telephone the examiner's supervisor (contact information should be listed at the end on the examiner's office action )

Thomas Paul Downs: (14:41) Domain name companies are selling name to people that do not own the TM.  We need you help in stopping this. I have a TM and a domain name company sold the name to another person that is blocking me from using it on the internet. 

Expert 47: (14:41) Thomas Paul Downs - The USPTO cannot help in this situation. However, you should consult with your own attorney and possibly bring an action through the UDRP which is administered by ICANN.

Derron A: (14:41) Hi, god afternoon. Should your patent agency help somewhat in providing a clear discription that includes the technicality of your idea?

Expert 7: (14:41) Demon A - Your patent agent should help you clearly draft your application so others can understand what your invention is.

Eric Teng: (14:41) My nightmare as an indepedent inventor with mulitiple on-going applications is that for some reason a mailing from USPTO is not received by me, then I have to suffer the serious consequence of having to pay thousands of dollars to revive my application, or worse yet, lose my potentially very valuable patent and all my hard work in its entirety.  This potential probem is very real and does occure it has already happened to me.  What can we do about this?

Expert 15: (14:41) Eric Teng, please make sure that we have your correct address for sending correspondence. You can use form PTO/SB/122 to change the correspondence address. If your address is correct and mail has not been received, you may be able to revive the application with out the payment of a fee. Please contact the Petitions Help Desk for assistance at 1-800-PTO-9199

Cheryl 2: (14:41) I have an invention that is similar to one that was patented in 1979.  Can I still apply for my patent?

Expert 11: (14:41) Cheryl, you cannot get patent protection for the same invention as that in the 1979 patent.  But if your invention is novel or non-obvious in light of that 1979 patent or other prior art, you may be able to receive a patent for your invention.

Chandler: (14:41) Sorry I am late to the ''chat,'' but If I have an idea what are the steps I need to take to protect it. Thanks

Expert 36: (14:41) Chandler - lease see http://www.uspto.gov/web/patents/howtopat.htm and http://www.uspto.gov/web/offices/pac/doc/general/index.html

Donna: (14:41) Where can you search to find out if an idea has been created

Expert 13: (14:41) Donna, to check and see if an invention has been granted patent protection, you can go to the USPTO website and search our PatFT (Patents Full-Text) and AppFT (Applications Full-Text) databases.  To learn more about how to do a comprehensive job of searching you can contact your nearest PTDL (http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html) --Patent & TM  Depository Library.

qin zhang: (14:42) I believe that the patent claim language should interpreted by reading the specification, what if the examiner does not agree?

Expert 36: (14:42) qin zhang - again, please discuss your concerns with the examiner's supervisor.

Jeffrey T. Spangler: (14:43) How may independent inventors shop the market to find suitable patent attorneys or agents?

Expert 15: (14:43) Jeffrey, you can find registered patent attorneys and agents on our website by clicking on the ''resource'' button on the far right side of the home page. You can find attorneys who have filed application of similar technology by looking at published applications and patents.

Kevin Davis: (14:43) Can I apply for a trademark on a name if a trademark has not been registerd (even if I'm not the person who came up with the name)?

Expert 9: (14:43) Kevin Davis, this is complicated question, due in part to the fact that rights in a trademark are created by the prior use of the trade mark in commerce on or in connection with goods and/or services.  These rights exist even if a trademark owner never files an application or obtains a federal registration. You should consider consulting a private trademark attorney regarding these ''common law'' rights that exist based on the prior use of a mark.

Thomas Anderson 3: (14:44) where can i find templates of sheets already created and submitted that show other ideas that have been granted patents?

Expert 15: (14:44) Thomas, there are no templates; however, we suggest that you look in the patents and published applications that are similar to your idea and use those that are closest as a template for you to copy.

Eduardo: (14:45) I have seen shows on tv about ordinary people who are now wealthy do to a simple invention they came up with. In the show one of the inventors said that he went straight to the company and sold his idea. Can this be done.

Expert 7: (14:45) Eduardo - The USPTO does not assist with marketing your invention, however some companies encourage solitations from inventors.

Intl Inventor: (14:45) Do you provide info about patent attorneys experienced in filing foreign country patent apps?

Expert 15: (14:45) Intl Inventor, no we do not provide that information.

Sandi 2: (14:45) When applying for a patent original drawings should be submiited in what form by that I mean sketches or drawn profeesionally?

Expert 36: (14:45) Sandi 2 - please see http://www.uspto.gov/web/offices/pac/mpep/documents/appxr.htm , rule 1.84 for guidance.

TimR: (14:46) I am considering imports of OEM products to build my inventory for an e-commerce site.  I plan to market the product under a brand name that I would like to TM.  Are there any restrictions on TM'ing an imported ''white label product''  which may also be same or similar to product another company is offering under TM - but not patented?

Expert 47: (14:46) Tim R - there are common law rights in trademarks that have not been registered. So attempting to register a name that is being used by another entity on similar goods could be problematic for you - even if that trademark isn't registered with the USPTO.

Cheryl 2: (14:46) I tried to find the place where I can get the application to file for a patent where is that location?

Expert 7: (14:46) Cheryl 2 - The USPTO is only located in Alexandria, VA.  You can contact the Inventors Assistance Center at 1-800-786-9199 and request information be sent to you.

ABC123: (14:46) I have 3 questions: 1) Do I have to abandon a patent application in order to prevent the publication? 2) Can I still claim a matter discussed in the abandoned application at a later time? 3) Can I file provisional patent application online?

Expert 14: (14:46) ABC123: 1) Before an appication is allowed, you can file a request for non-publication of the application.  After a Notice of Allowance is sent to you, you would have to abandon the application in order to not have it publicly issued. 2) Please refer to MPEP 201.07 and 201.08 regarding contunation applications.  3)  Yes, you can file a provisional application online.

Thomas Anderson 3: (14:47) do you pay for the provisional patent only if it is found that your idea is unique and provisional granted or are you charged even if the state does a search and finds it already exists and rejects your idea?

Expert 11: (14:47) Thomas Anderson 3, Provisional patent applications are not examined and thus cannot become actual patents.  If you are looking to to determine patentability and receive an action on the merits of your application performed by a Patent Examiner, you should file a non-provisional application.

Lou R. 2: (14:47) Hello, USPTO Expert.  Any recommendations on a reliable non-USPTO book, CD, or  DVD explaining the entire ''Patent'' process? Gracias!

Expert 12: (14:47) Lou R. - we do not recommend books but we have a wealth of information on our website http://www.uspto.gov.

Vic Kley: (14:47) What is the basis for the division of inventors into small entities and large entities and how do change it to reflect the reality of Individual entities (less then 9 people andtypically 1)?

Expert 15: (14:47) Vic, a small entity is any individual, non-profit, university, or small business with fewer than 500 employees. All others are considered large entity.

Vic Kley: (14:48) After one year is a provisional application approved automatically for foreign publication?

Expert 15: (14:48) Vic, no.

inventy: (14:49) what is a good resource for helping you with how to word claims

Expert 36: (14:49) inventy - Wording of claims is critical - if you are prosecuting the application yourself (Pro Se), the examiner in charge of your application can draft a claim for you.  Otherwise, your representative (i.e. patent attorney) can assist you.

Kevin Davis: (14:49) Can I apply for a trademark on a name if a trademark has not been registered and the name was never associated with a good/service, meaning they never provided a good/service in commerce (even if I'm not the person who came up with the name)?

Expert 47: (14:49) Kevin Davis  - A trademark only functions as a trademark if it IS used in association with particular goods or services. However, if this other entity has filed an application in the USPTO based on a bona fide intention to use the mark on particular goods or services, there would be a valid claim to rights in that mark if that application proceeds to registration.

william : (14:50) Is there any way to find out where I am in the examination que, lile emailing the examiner.  I have been pending a total of 5 years.

Expert 12: (14:50) Williams - please contact the Supervisory Patent Examiner in that art unit.

william : (14:50) My attorney told me a few years ago that  if a patent is being infringed there was a way to expedite examination, but to wait and see.  Since then I filed for continuation and it's been another 2 years.  So is it true that I can do something to get to examination quicker if it's being infringed?

Expert 15: (14:50) William, about 2 years ago, the procedures changed as to how an application may be advanced. At this time, an application may not be made special because of an allegation of infringement. Once the application has been filed and not examined, it may be made special because the applicant is over age 65 or if the inventor is seriously ill.

Renate: (14:50) Thank you for taking my question.  What guidelines do you use to decide novelty when two exising pattents are combined?

Expert 11: (14:50) Renate, MPEP 2131 details all the requirements for determining novelty under 35 USC 102.  http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r6_2100.pdf

John Straub: (14:52) If you write down in detail your idea/invention/business idea on paper, then seal it in an envelope and mail it to yourself. Then do not open it.  Does the US post mark and date protect your idea in anyway?

Expert 13: (14:52) John Straub, No, this does not provide your idea/invention with  any protection, though it is a popular myth.  C

Mike: (14:52) If my patent expires (I believe after 10yrs) does it then become public domain?  Meaning anyone can copy/create my invention?

Expert 15: (14:52) Mike, a patent becomes public domain at the end of the term of the patents, currently that is 20 years from date of filing. At that time, others may make, use, sell, offer for sale or import your invention.

chris: (14:52) can you expain :patent pending ''seen on products. what did they file to get this and is their product protected

Expert 12: (14:52) Chris: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.

moven: (14:53) Will the intent-to-use form protect against infringement , if the trademark has not been assigned a registration number?

Expert 47: (14:53) Moven - First, NO trademark protects against infringement - that action is up to you. However, you would not have the ability to enforce rights in a trademark if you have an intent-to-use until the application matures into a registration. It is only upon successful registration and use of the mark on the goods indicated in the marketplace can the claims in a once intent-to-use application be used to protect against infringement.

Sarah: (14:53) I received a patent, but they mistakenly put the wrong illustration on the front page.  I got a change in the paperwork, but is there a way on Internet site to correct this.  Now, people see the wrong figure.  They have to dig to find the correct one that best exemplifies the patent.  Thank you.

Expert 36: (14:53) Sarah - please see http://www.uspto.gov/web/patents/pubs/ for contact information

Hinesal: (14:54) Hello, If I fill a provisional patent application , would that allow me to design, make a prototype and try to pitch my idea to a company without having someone steal my idea and get there own patent

Expert 7: (14:54) Hinesal - Provisional applications allows you to use the term ''patent pending'' for the duration of one year from filing.  Only an issued patent allows to exclude others from making, using or selling your product.

SJM Design: (14:55) My husband recently received a trademark registration for his company name and stylized ''W''. I have included the R in circle on all ads and other printed pieces but do I also include it in stationery pieces, ie, business cards?

Expert 47: (14:55) SJM Design - you should use the circle R wherever the actual mark that has been registered is used - on your products, on stationary, on business cards. But it should only be used in association with the mark - not a business name that includes elements that are part of your registered mark.

inventor749: (14:55) If an application has already been published, does this mean it is more likely to receive a patent? Are all applications published?

Expert 11: (14:55) inventor749, in the absence of the applicant filing a request for nonpublication, all applications are published at 18 months regardless of their potential patentability.

TimR: (14:56) Expert 47:  Thanks,  I do not intend on using the same name to market the product - I only wonder if TM protection extends to the likeness of the product which bears the TM.  The company of which I speak is, I assume, doing the same action I wish to take - that is, to import OEM products from China and assign a TM name to them.

Expert 47: (14:56) Tim R - a trademark does not protect a product. It protects the name by which the product is known in the marketplace.

Vic Kley: (14:56) Expert 15 please clarify if the provo is not autmatically approved then the office has an obligation to inform the inventor. After many provos I have never been so informed so what is the story do we have to make some special request? Since we normally file foreigns simultaneous with US at the end of the provo period just what is going on?

Expert 15: (14:56) Vic, the provisional application is a time stamp. Since the one year time frame is up for your provisional and for filing in the foreign country, you must file your non-provisional application in the US to keep the date of the provisional. Filing a foreign application at the one year date provides you with the provisional date for the foreign filing as well. Provisional applications are not examined or approved; they are simply a date stamp other filings.

guest1979: (14:56) Does an inventor have to file two seperate patents when said invention is both a utility and a design invention?

Expert 36: (14:56) guest1979 - yes, two separate applications would be needed.  See http://www.uspto.gov/web/patents/howtopat.htm

Nbynum: (14:57) How do you sugest that I patent an idea without hiring an attorney?

Expert 7: (14:57) Nbynum-While a patent attorney/agent is not required, the Office strongly suggests using their services.  Materials are available on our web site or plan on attending our upcoming conference to educate yourself about the patent application process.

Thomas Paul Downs: (14:57) Can the Patent Office provide an extention on a Patent Maintenance Fee due to Financial vicissitude and or health problems of the Patent Owner?

Expert 15: (14:57) Thomas, extenstions of time are not available to patentees for the payment of maintenance fees since the time period is set by statute. However, you may be able to reinstate the patent given the financial condition or health. Such facts would require the filing of a petition with supporting evidence. Please contact the Petitions Help Desk for assistance at 1-800-PTO-8199

Eduardo 2: (14:57) I noticed that there are diferent types of applications for patents, design is one. How would I know which one to fill out.

Expert 47: (14:57) Eduardo 2 - There are three types of patents: utility, design and plant patents. If your invention is for how something is made, how it work, or what it's made of, apply for a utility patent. If you want to patent the ornamental design for an article of manufacture, file a design patent application. Plant patent applications are for - yes - plants.

Maria del Carmen: (14:57) I am a permanent reisdent here, can I obtein a US patent?

Expert 14: (14:57) Maria del Carmen: Yes you may file for a patent.  You do not have to be a US cititzen to file for a patent in the US.

MJ: (14:58) if one has a really super idea and files a patent, could a patent examiner steal the idea?

Expert 36: (14:58) MJ - no, patent examiners are not permitted to file patent applications.

Nbynum: (14:59) How do you tell if all of the  free ''invent help'' televised patent companies are legit?

Expert 12: (14:59) Nbynum - we have information available on our website at http://www.uspto.gov/web/offices/com/iip/complaints.htm

guest1979: (14:59) Is it absolutely necessary to have a patent agent /attorney in order to get a patent?

Expert 11: (14:59) guest1979, we have numerous pro se applicants who prosecute their own applications and receive patents.  Please see our Inventor Resource page for a good place to start.  http://www.uspto.gov/web/offices/com/iip/index.htm

Don Darnell: (14:59) When performing a patent search it would be handy to search on key words based only on patent Class/Sub Class text to help narrow down the search to a few class/subclass pairs. Is such a search site available?

Expert 13: (14:59) Don Darnell, the USPTO website allows key word (text) searching on US patents back to 1976; prior to that date, only U.S. patent classification number (class/subclass) can be used to search.  We have a recommended 7 step strategy in doing prelminary patent searches at our PTDLs.  See our tutorial at www.uspto.gov/go/ptdl/tutorials.html  .

Markm: (14:59) Publication in 18 months after filing patent application will have any adverse effect, if application has not got first office action?

Expert 36: (14:59) Markm - no

Vic Kley: (14:59) Expert 15 please answer my question a statement of the meaning of large and small was neither requested or questioned. My actual question was: What is the basis for the division of inventors into small entities and large entities and how do we get Kappos to change it to reflect the reality of Individual entities (less then 9 people and typically 1)?

Expert 15: (14:59) Vic, the breakdown has been long established. The office will be exploring many changes over the next few years.

Kevin Davis: (14:59) Sorry for asking further clarification. So, if the person never filed an application in the USPTO based on a bona fide intention to use the mark on particular goods or services, then I can apply for a trademark on said name? Also, is there a way to search for trademarks that are currently under review (i.e. have not been approved)?

Expert 9: (14:59) Kevin Davis -- even if a trademark owner has never filed any application with the USPTO, they may still claim common law rights in the mark if the mark is being used.  Therefore, before filing a trademark application, you should consider a search of the USPTO records via our website (called TARR), as well as a search of the Internet and other business resources for third-party use of marks with goods and/or services related to those of interest to you.

Mr. Burns 5: (14:59) Can I trademark a name composed of commonly used.typical words for my patent/business...such as ''the drink water'', or the ''the run fast''?

Expert 47: (14:59) Mr. Burns 5 - yes, you can register common names as trademarks so long as those words do not describe the nature of the goods or services listed in your registration.

Mr. Burns 5: (15:00) Can I trademark a name composed of commonly used.typical words for my patent/business...such as ''the drink water'', or the ''the run fast''?

Expert 7: (15:00) Thank you to all that joined the chat today, as always we received far more questions than we can answer.  If you did not see your question posted, please visit our FAQ’s from previous chats or contact our Inventors Assistance Center at 1-800-786-9199 or send an e-mail to independentinventor@uspto.gov.  Our next chat will be November 2009 and the exact date will be posted on the USPTO homepage.  The transcript from today will be in about 2 – 3 weeks on the USPTO homepage.  As Under Secretary Kappos indicated please join us in November for our 14th Annual Independent Inventors Conference here at the USPTO campus information will be posted at www.uspto.gov tomorrow.

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