Online Chat for January 12, 2010
This is a transcript of the on-line chat held on Tuesday, January 12, 2010. 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 34: USPTO 19:Welcome to today’s USPTO on-line chat. Before we begin we would like to make sure you are aware of a new pilot program, Patent Application Backlog Reduction Stimulus Plan. Small entity applicants that have two or more co-pending applications filed earlier than October 1, 2009, that have not been taken up for examination. You can expressly abandon one application and move another application to special status, thus reducing the amount of time an applicant would wait for a first Office Action. This program has been extended until June 30th, 2010. For more information please refer to http://www.uspto.gov/patents/law/notices/74fr62285.pdf. We will begin promptly at 2:00 pm EST today and please remember questions are selected and answered with the intent of being applicable to the widest audience. Please refer to our FAQ’s to see if your questions have previously been answered. See http://www.uspto.gov/inventors/independent/chats/faq/index.jsp
email@example.com: Do any of the USPTO Libraries have online access? I dont have any very close to me.*
USPTO 17: EDITED ANSWER Mbidde: You can access the USPTO Website at any public library with Web access. At the Patent and Trademark Depository Libraries (PTDLs), you can receive expert assistance. Check with your nearest PTDL to find out what kind of phone or chat reference assistance is available.
firstname.lastname@example.org: Is it normal to take 6 years to prosecute an application and within the pervue of Examiner authority to challenge the use of a comma or semi-colon in describing the application details?
USPTO 31: EDITED ANSWER Kenschena - Pendency numbers vary from art unit to art unit. As for commas and semi-colons, this is rare as the examiner's primary focus is on the patentability of the claimed invention. However, sometimes as a courtesy an examiner may note such editorial suggestions to you in the office action. You should contact and discuss this matter with the examiner and/or the examiner’s supervisor (SPE).
email@example.com: ?If I filed a provisional patent, then later file a non-provisional on the same subject matter but did not claim the original provisional, can I claim it later if there is an interference (which could be years later in some cases)? If so, how does that affect foreign filing since foreign filing must be done within 12 months from filing – would the non-provisional filing date be the one counted or the later claimed provisional date? If an interference necessitated claiming the earlier provisional patent; could that nullify foreign filed patents that were not filed within the 12 month window of the provisional but were filed within 12 months of the non-provisional filing? I hope I am making sense with my question.*
USPTO 34: EDITED ANSWER Dmorgan5: The requirements and timing for claiming the benefit of the filing date of the provisional application in your non-provisional application are set forth in our rules, 37 CFR 1.78(a)(4) to (a)(6) (http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf). 37 CFR 1.78(a)(6) sets forth what is required for a late claim of the benefit of the filing date of the provisional application. As to your question on foreign filing, note that a provisional application is a regular national filing that starts the Paris Convention priority year. Foreign filings must be made within 12 months from the filing date of the provisional application if you wish to rely on the filing date of the provisional application in the foreign filed application. See MPEP 201.04(b) (http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r5_0200.pdf). You can contact the Inventor’s Assistance Center at 1-800-786-9199.
DEVICE: Is there any fines for misuse of Patent Pending?
USPTO 15: Device: Regarding your question pertaining to use of the term patent pending, 35 U.S.C. 292 addresses the false marking of products with any of the terms “patent,” “patent applied for,” or “patent pending.” The statute sets forth the penalties for improper marking and provides for proper/improper marking. To ascertain how the statute applies to your particular situation, it is recommended that you consult a registered patent attorney.
NickLeggett: Does the USPTO have patent copies that are accessible to blind inventors?
USPTO 17: NickLeggett: U.S. patents since 1976 and U.S. published patent applications since March 2001 are available in html format in the PatFT and AppFt databases on the USPTO Website. Existing software used by many public libraries at dedicated workstations can read aloud these patents' text but cannot translate any drawings.
Steven Wilson: Good Afternoon. I would like a little information on Service Marks and what is the criteria and the process for filing one?
USPTO 22: Steven - The criteria and process for registering a service mark is the same as for a trademark. Information concerning service mark registration may be found in the TMEP - Trademark Manual of Examining Procedure - that is available at the USPTO Website.
Steven Wilson: Thank you
firstname.lastname@example.org: Do you know of any online resources that allow a text search going back prior to 1900? My understanding is that unless I pay an attorney $$$$$ or buy the USPTO database products $$$$$$$$$$, I can only conduct a textual search back to 1975 because prior issued patents are just scanned images.
USPTO 17 In searching older patents, one can do the most comprehensive job by searching via the U.S. Patent Classification. Keyword searching, even if it were available for pre-1900 patents would likely miss patents due to the change in the language of technology from the pre-1900's. One can learn how to search via U.S. patent classification at any one of the 81 Patent and Trademark Depository Libraries in our network (see www.uspto.gov/go/ptdl). Some vendors have scanned early patents using OCR scanning with mixed results.
Scarlett: Does USPTO provide any assistance of any kind to inventors that are minors?
USPTO 8: Scarlett - minors who are independent inventors are afforded a 50% discount of the large entity fees in most instances. They can get assistance on filing of applications for patents and trademarks from the independent inventor program at the USPTO.
DEVICE: What is the latest Manual of Patent Examining Procedure (MPEP) Eighth Edition, August 2001 Latest Revision July 2008.
USPTO 15: DEVICE: the latest edition of the MPEP available is the Eighth Edition, August 2001, Revision 7 dated July 2008. For more information about the MPEP or to order see: http://www.uspto.gov/web/offices/pac/mpep/mpep.htm
Online Guest: How can I determine which class my goods should be classified in when I file my trademark application? I do some consulting work, I have a blog, and I may want to publish some training materials.
USPTO 22: Online Guest - The best thing to do is consult the on-line Acceptable Identification of Goods and Services Manual that is at the USPTO Website. Search "blog" and you should find various iterations of acceptable descriptions for this activity and the appropriate classification.
email@example.com: Because a provisional application is not public, it is then possible for the USPTO to issue a patent that may subsequently not be patentable if the person filing the provisional a year later claims an earlier filing date. True? If so, how dow the USPTO handle wrongfully issueing a patent?
USPTO 8: EDITED ANSWER mbiddle - Your facts appear to be as follows: Inventor X files provisional application A1 and within 12 months files a non-provisional application A2 claiming the benefit of the filing date of the provisional application A1 under 35 U.S.C. 119(e). Inventor Y files a non-provisional application B claiming the same invention as in A2 before the filing date of A2 and obtains a patent. Your concern is that since A1 is not published, the examiner may not be aware of the invention in A1 and therefore, can issue a patent for application B even though A2 may have the earlier effective U.S. filing date. Note that when an application is in condition for allowance, our examiner will perform an interference search (see MPEP 2304.01(a) available at http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r5_2300.pdf). In addition, if application A2 is published, the examiner during the examination of application B would apply the application publication of A2 in a rejection of the claim(s) of application B if appropriate. Note also that every patent is presumed to be valid (see 35 U.S.C. 282). USPTO personnel are not permitted to express any opinion as to the validity or invalidity of any claim in any U.S. patent except where (1) a reissue application is filed, (2) a reexamination proceeding is instituted, or (3) an interference is invoked.
Scarlett: USPTO 8: mbiddle - provisional applications are not published therefore another could file a provisional at a later date and a nonprovisional of that provisional application and get a patent. A provisional application since it is not published does not protect an inventor from someone else filing a provisional and getting a ????? the rest was chopped off
USPTO 8: EDITED ANSWER scarlet - Please see the revised response above.
20100112chat: United States Patent and Trademark Office Accountability Report 2009 includes within the approximate five percent error rate patents that were issued. If the error occures in advance of or after issuance, an error continues as an error. Implement an error and take the individual independent inventor's money. How does an individual independent inventor receive a monetary refund?
USPTO Expert – EDITED ANSWER The allowance compliance rate in the Accountability Report 2009 only refers to allowance prior to issue. If one of those applications is withdrawn from issue after the payment of the issue fee and the application is subsequently found allowable, applicant may request to reapply a previously paid issue fee toward the issue fee that is now due in the same application.
20100112chat: United States Patent and Trademark Office Accountability Report 2009 acknowledges an approximate five percent error rate. When the USPTO implements an error, how does an individual independent inventor receive a monetary refund?
USPTO 19: EDITED ANSWER 20100112 - All the errors that are mentioned in the report are prior to issuance of a patent thus no refund is necessary. See also the response above. Note that 37 CFR 1.26 governs refunds. Refunds are only permitted when the fee paid was by mistake or in excess of that required.
firstname.lastname@example.org: If an inventor requests that a non-provisional application NOT be made public, how can an attorney conduct a thorough patent search?
USPTO 88: email@example.com it is true that non-published non-provisional applications cannot be searched, an attorney can nevertheless conduct a thorough search of all available published documents. Non-published non-provisional applications are by far the exception rather than the rule.
Scarlett: continue mbiddle's question- does that mean it is in an inventor's best interest to file a non-provisional patent following the provisional ASAP to prevent another nonprovisional filer of getting a patent but not you, who filed earlier?
USPTO 8: Scarlett - that is a business decision.
firstname.lastname@example.org: If my invention is an improvement on, or otherwise involves, someone else's intellectual property how do I properly reference that in my patent application without violating their copyright, trademark, etc.? I know I can't use it in the title of the invention, but can I reference it by name? Can I include photographs or images taken from an add or web page?*
USPTO 34: EDITED ANSWER Contess_miriam@msn.com: If you want to reference someone else’s trademark in your application, you may do so by following the guidance set forth in MPEP 608.01(v) (http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r7_0600.pdf). If you want to reference a U.S. patent or a U.S. patent application publication, you may include the patent number or the U.S. patent application publication number. As to photographs or images taken from an advertisement or Web page, you may submit such information as an information disclosure statement (IDS) if such information is material to the patentability of the claims in your application. See 37 CFR 1.97 and 1.98 (http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf)for rules governing IDS
George H. Baptiste: How can me send a email to Mr> kappos about my frustration with my patent filing since Oct 2006.
USPTO 19: George - It is not our intent to have applicants frustrated, so please email us at email@example.com with details and contact information.
firstname.lastname@example.org: could you please provide links describing how to file an appeal as an independent inventor?
USPTO 45: cmthompson2, here is a link that provides an overview of the appeal process: http://www.uspto.gov/patents/process/appeal/index.jsp. As per guidance on how to file an appeal, the best resource is Chapter 1200 of the Manual of Patent Examining Procedure (MPEP) available at http://www.uspto.gov/web/offices/pac/mpep/documents/1200.htm. Please note sections 1204, 1205, 1205.01, & 1205.02, in particular. In addition, please see 37 CFR 41.31 and 41.37 available at http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf
Mike: Exactly what Fees are required for Initial International PCT fillings with 12 Months after filling a U.S. Non Provisional Patent I want to know the costs of filling international patents in order to recieve the additional 18 months before filling in other countries. How does filling international effect an U.S. non provisional patent application.
USPTO 19: Mike - You may want to visit our Web site at http://www.uspto.gov/patents/int_protect/index.jsp or contact the PCT help desk at 571-272-4300.
Donna Lawson: Can you share the information Ms Carrol Thomas Martin shared with us at the convention in Nov 2009 about Commerce Connet that is going on in Michigan for inventor/making inventions?
USPTO 19: Donna - we are in the process of compiling and posting information from the conference, as soon as it is completed it will be on the Web site.
email@example.com: Hi, I'm in the process of going through the trademark process for the first time. Here is an example that mirrors my situation. Let's say Nike is trademarked and they have a special shoe called Steve Mercury. Is the outcome Nike TM Steve Mercury TM? Does one trademark the brand and the line of merchandise?
USPTO 51: Waterbearingfish, it depends on the mark that you are using and/or intending to use and what you are interested in protecting in your trademark application(s). You could conceivably have up to three applications in this scenario, one for your "house" mark, or your primary mark, one for this particular product line, and one that combines both. Whether to trademark the brand and/or the line is a business decision.
jvv: will there be more chats in the future? A regular schedule, perhaps?
USPTO 34: jvv: The next online chat will be held in March 2010. Forth coming information about the chat will be posted on the USPTO Website.
Scarlett: USPTO 88- The first link says "sorry the link not found," maybe part of the link was not posted? Please advise.
USPTO 88: Scarlett---try to copy and paste the link and delete the period at the end---that was my part. If that doesn't work, go to www.uspto.gov and follow the 'file online' link in the leftmost portion.
firstname.lastname@example.org: Is on your site, http://www.uspto.gov/web/offices/ac/qs/ope/fee2009september15.htm#search that a Patent Search Fee for a small entity is $270. Can I file a provisional and then just pay 270 and have the USPTO conduct a search instead of the thousands to pay an attorney?
USPTO 8: EDITED ANSWER mbiddle - no, the search fee is only directed to a non-provisional application. Provisional applications are not searched nor examined by the USPTO.
NickLeggett: If a computer program generates an invention, who is listed as the inventor on the patent application?
ANSWER EDITED ANSWER Here is a draft response: 35 U.S.C. 101 states that “[w]hoever invents or discovers any new and useful process, manufacture, or composition of matter or any new and useful improvement thereof, may obtain a patent…” It is difficult to answer your question based on your statement that “a computer program generates an invention” without more facts. Whether someone should be listed as an inventor should be determined by the inventor(s) and/or the inventor(s)’s registered patent practitioner.
USPTO 19: There appear to be a number of people logged into the chat but few questions being posted, we encourage those of you that have not asked a question to please do so.
Richard: is it true A comprehensive patentability search cannot be conducted online because many patents have not been posted by the USPTO
USPTO 17: Richard, a comprehensive patentability search involves searching both patent documents and non-patent literature. U.S. patent and U.S. published applications may be searched on the USPTO Website. Non U.S. patents and non U.S. published patent applications (e.g., foreign patent documents) may be searched on various free search databases of other patent offices. Non-patent literature disclosures of inventions may be found in a variety of publications, many of which may not be freely available online such as journals and conference proceedings. So, yes, there is more to a comprehensive patent search than just searching U.S. patents and U.S. published applications. Searchers can get guidance on how to do comprehensive patent searching by visiting one of our 81 Patent and Trademark Depository Libraries, a nationwide network of libraries with trained personnel.
Susan Cutler: The U.S. Dept of Commerce put a lot of money into grants to upload Merwyn Reports to Planet Eureka. It seems as though there are only inventors on the site. When or how will you get this out to the public/corporations that will be possible investors, buyers or licensees? Otherwise, it seems like a waste.
USPTO 19: Susan - This is really an initiative under the Department of Commerce. You may want to visit their Website at http://www.mep.nist.gov/manufacturers/eureka-winning-ways/winning-ways-process.htm for additional information.
aguest: Would you happen to know why it is that the MUTCD (Manual of Uniform Traffic Control Devices) cannot include any patented or copyrighted devices? Further, the FHWA (Federal Highway Administration) will not approve experimentation with patented or copyrighted devices unless the owner signs a release on a form acceptable to their attorneys. As an independent inventor with a new traffic control device, I'm curious to know 'why' and/or more importantly 'why not'? Thanks in advance for your reply.
USPTO 47 : aguest - Unfortunately, these resources are outside of the jurisdiction of the USPTO. Accordingly, we are not able to comment on restrictions presented by these resources.
NickLeggett: Are there any circumstances where a patent model is still required as part of an application?
USPTO 15: EDITED ANSWER NickLeggett: The USPTO can request an applicant to submit a patent model in certain circumstances. Note 35 U.S.C. 114 (reproduced below).
35 U.S.C. 114 Models, specimens.
The Director may require the applicant to furnish a model of convenient size to exhibit advantageously the several parts of his invention.
When the invention relates to a composition of matter, the Director may require the applicant to furnish specimens or ingredients for the purpose of inspection or experiment.
Models or exhibits are generally not admitted as part of an application or patent unless the requirements of 37 CFR 1.91 (reproduced below) are satisfied.
37 CFR 1.91 Models or exhibits not generally admitted as part of application or patent.
(a) A model or exhibit will not be admitted as part of the record of an application unless it:
(1) Substantially conforms to the requirements of § 1.52 or § 1.84;
(2) Is specifically required by the Office; or
(3) Is filed with a petition under this section including: (i) The fee set forth in § 1.17(h); and
(ii) An explanation of why entry of the model or exhibit in the file record is necessary to demonstrate patentability.
(b) Notwithstanding the provisions of paragraph (a) of this section, a model, working model, or other physical exhibit may be required by the Office if deemed necessary for any purpose in examination of the application.
(c) Unless the model or exhibit substantially conforms to the requirements of § 1.52 or § 1.84 under paragraph (a)(1) of this section, it must be accompanied by photographs that show multiple views of the material features of the model or exhibit and that substantially conform to the requirements of § 1.84.
Additional information about patent models can be found at MPEP 608.03 available at http://www.uspto.gov/web/offices/pac/mpep/documents/0600_608_03.htm.
Scarlett: Is there any instruction on how to file provisional patent application online as a first time filer?
USPTO 88: Scarlett---you can find information on how to file your provisional application electronically on our Website through the following link: http://www.uspto.gov/patents/process/file/efs/index.jsp. The Manual of Patent Examination Procedure (MPEP), Chapter 600, also available online at this link: http://www.uspto.gov/web/offices/pac/mpep/documents/0600.htm describes the parts, form, and content of a provisional application. You may also contact our Inventors Assistance Center at 1-800-PTO-9199.
NickLeggett: How will the new rules allowing third parties to intervene in patent applications impact independent inventors?
USPTO 52: NickLeggett: This question appears to relate to the pending patent reform legislation that is before Congress. Unfortunately, we are not able to comment upon the legislation. However, if you are interested in viewing the legislation, please visit the Library of Congress at http://thomas.loc.gov.
rgggg: What is the differences of 101, 102, 103 and 112 rejection and I reply to each?
USPTO 47 : EDITED ANSWER rggg - Each of these statutes addresses different rejections made by the examiner in an Office action. In order to provide a reply that is considered responsive to the examiner’s Office action, you must reply to every ground of objection and rejection in the Office action. See 37 CFR 1.111(b) available at http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf. These statutes are accessible at the link http://www.uspto.gov/web/offices/pac/mpep/documents/appxl.htm.
rgggg: Now that the construction at the USPTO in Alexandria is completed, why are application taking very longespecially when the Examiner got new applications to produce office actions.
USPTO 8: rgggg - there is no correlation between construction of the new buildings and the examination process. While we do have new examination tools, we still have applications being filed at record rates.
email@example.com: USPTO 19. The last chat transcript is dated April 2008!! Obviously you have stop posting the chat text. Could you raise the issue of posting the actual chat text again with the proper authorities?
USPTO 19: mbiddle-We will post previous chats within the next two weeks.
firstname.lastname@example.org: I've read articles written by patent attorneys that imply that a Provisional Patent is not worth much. My sense is that it at least provides a "beginning" of the process, and thus has value. Comments?
USPTO 45: Turbineguy2, a primary benefit of filing a provisional application is to establish a filing date for your invention. It also enables you to indicate that your invention is "patent pending." More information about the provisional patent process is available at http://www.uspto.gov/web/offices/pac/doc/general/index.html#prov
ed s: I am a consultant who is an inventor on patent applications filed by a client. The patent rights are assigned to the client. Is there any way I can independently track progress of the applications? Although I signed away the benefits from patents to these inventions, I didn't (to my knowledge) agree to be kept away from the patenting process.
USPTO 8: EDITED ANSWER ed s - If you are a named inventor in a patent application, you may obtain status information regarding your patent application from the Technology Center (TC) where your application is/will be examined. You may follow the prosecution process of your application via Private PAIR only if your client (I am assuming that your client is the assignee of record of the application) provides you with the Customer Number that is associated with the application. If your client does not provide you with the Customer Number information then you will need to contact the TC as noted above or you may follow the prosecution process once the application is published and is available in Public PAIR. If you are not a named inventor in a patent application, then you will either have to obtain permission from the applicant, attorney/agent of record, or the assignee of record to access the application (see 37 CFR 1.14(c)) or wait for the application to be published and is available via Public PAIR.
ed s: USPTO 8: Thank you for the information. Unfortunately your response was cut off at "...will give you rights to acces t". What followed? Also, you've described a limitation of private PAIR. To me that says the existing mechanism doesn't support my ability to monitor progress. However, regardless of the mechanism, do I have any rights to monitor the progress and/or participate in any way?
USPTO 8: ed s – Please see the revised response above.
email@example.com: Why does it take so long after the allocated time to receive an answer from the Examiner?
USPTO 88: firstname.lastname@example.org your question refers to the time that it takes a newly filed application to first be taken up for examination, the time depends upon the pipeline of work or pendency in the particular art area that your application is assigned. Please take a look at the weekly Official Gazette notices (see for example, http://www.uspto.gov/web/offices/com/sol/og/2010/week03/TOC.htm#ref18) to see what is the average filing date that a particular Technology Center is working on. Once prosecution has begun, examiners generally have up to 2 months to respond to communications filed by applicants. These timeframes depend on what stage of prosecution the application is in and what kind of communication it is.
email@example.com: Regarding the Patent Application Backlog Reduction Stimulus Plan, you state "Small entity applicants that have two or more co-pending applications filed...". What constitutes a co-pending application?
USPTO 47: EDITED ANSWER mbiddle, copending applications are applications that are all pending (not patented or abandoned) at the point in time when you are looking to see if the applications are copending or not. Note that under the Patent Application Backlog Reduction Stimulus Plan, the copending application that you will expressly abandon in favor of having the other copending application be advanced out of turn for examination must not have been taken up for examination yet. See the notice at http://www.uspto.gov/web/offices/com/sol/og/2009/week51/TOC.htm#ref12
NickLeggett: Are ordinary citizens, who are not corporate leaders, ever appointed to the Public Patent Advisory Committee?
USPTO 15: NickLeggett: The selection of individuals for the Patent Public Advisory Committee (PPAC) is done in accordance with 35 U.S.C. § 5 subsection (b) reproduced herein. The USPTO strives to have the PPAC represent a wide variety of viewpoints including but not limited to corporate stakeholders.
35 U.S.C. 5(b) BASIS FOR APPOINTMENTS.- Members of each Advisory Committee- (1) shall be citizens of the United States who shall be chosen so as to represent the interests of diverse users of the United States Patent and Trademark Office with respect to patents, in the case of the Patent Public Advisory Committee, and with respect to trademarks, in the case of the Trademark Public Advisory Committee;(2) shall include members who represent small and large entity applicants located in the United States in proportion to the number of applications filed by such applicants, but in no case shall members who represent small entity patent applicants, including small business concerns, independent inventors, and nonprofit organizations, constitute less than 25 percent of the members of the Patent Public Advisory Committee, and such members shall include at least one independent inventor; and(3) shall include individuals with substantial background and achievement in finance, management, labor relations, science, technology, and office automation. In addition to the voting members, each Advisory Committee shall include a representative of each labor organization recognized by the United States Patent and Trademark Office. Such representatives shall be nonvoting members of the Advisory Committee to which they are appointed.
rgggg: What Department of the excutive branch does the USPTO work for?
USPTO 8: rgggg - the USPTO is an agency of the U.S. Department of Commerce.
firstname.lastname@example.org: I cant find the answer to questions asked during a previous chat session. Is it possible to have you post (or email) the actual chat transcript instead of parsing into alphabetical topics?
USPTO 19: Mbiddle - We do have a number of the chat transcripts posted at http://www.uspto.gov/inventors/independent/chats/index.jsp
Susan Cutler: I have received a Notice of Allowance to file for Use of Mark in Commerce. Does this include a marketing sheet, or does it actually have to sell?
USPTO 35: .Susan - I assume you are asking about what would constitute an acceptable specimen to support use of the mark in commerce. It depends on whether you are using the mark in connection with goods or services. Tags, label, containers, or pictures of the goods bearing the mark are generally acceptable specimens for goods. Advertisements showing the mark used in connection with the services are generally acceptable for services. You do not have to "sell" a product to fulfill the requirement for use in commerce. The mark has to move on the goods in commerce in an arms-length business transaction.
Susan Cutler: I have applied for a couple of patents and trademarks. As an individual inventor, was I able to get 50% fee reduction? I was not aware of this. If so, can I get a refund?
USPTO 47 : EDITED ANSWER Susan, a refund may only be obtained if an assertion of small entity status and a request for refund of the excess amount are filed within 3 months of the timely payment of the full fee (see 37 CFR 1.28(a) available at http://www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf).
email@example.com: Hello, I have a patent that was issues last month and was wondering how I can go about getting protection in Europe.
USPTO 8: EDITED ANSWER Under the Paris Convention, you have 12 months from the earliest effective filing date of the application filed in the first country to file an application for the same invention in a second country. See Article 4 of the Paris Convention available at http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r5_appxp.pdf. I am assuming that you received a U.S. patent. If the earliest effective filing date of your U.S. application which issued as a patent is still within the Paris Convention 12 months mentioned above then you may seek patent protection in Europe by filing an application in Europe claiming Paris Convention to your U.S. application. If you are outside the Paris Convention 12 months then you cannot seek patent protection for the same invention in any other foreign countries.
firstname.lastname@example.org: thank you #8- Does this mean that I can never apply for protection in Europe? or will I get another opportunity to submit an application in Europe?
USPTO 8: solut10ns – Please see revised response above.
email@example.com:Any free help for patent search for new inventor? Do you have to have an attorney for a provisional patent.
USPTO 17:Inventors who need help in learning how to search patents can use the services of any of the 81 Patent and Trademark Depository Libraries (PTDLs) around the country. For the PTDL nearest you check the USPTO Website: www.uspto.gov/go/ptdl . As for the second question, no you do not have to hire a patent attorney or agent to file a provisional patent application. Please contact our Inventors Assistance Center at 1-800-PTO-9100 for additional information.
firstname.lastname@example.org:I see Google has a free online patent search. Any comments as to problems or accuracy?
USPTO 17 (EDITED ANSWER):mbiddle: Google is one of many customers of patent data from the USPTO.
email@example.com:Is there a provision in the examination process to allow the Examiner to use the phone for simple questions and avoid the 60 to 90 day wait to keep the process flowing? The patent applicant often waits 90 days to recieve an answer that could have been resolved in a 5 minute call from the Examiner.
USPTO 15:firstname.lastname@example.org: Yes! Examiners and applicants alike are encouraged to make use of interviews, both telephonic and in person, to expedite prosecution. Interviews are a wonderful way in which an applicant and an examiner can address prosecution issues in an application undergoing examination. In fact, the USPTO last year provided updated interview practice training to the entire patent corps to better equip patent examiners with the education and tools necessary to conduct efficient and beneficial interview. The USPTO, on a related note, has also begun a pilot program entitled First Action Interview Pilot to help expedite the examination of eligible applications through interviews. More information about the First Action Interview Pilot Program is available at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/faipp_v2.htm Section 713 of the MPEP provides useful guidance for examiners and applicants regarding the use of interviews and interview practice and procedure guidance.
Online Guest:How can I determine which class my goods should be classified in when I file my trademark application? I do some consulting work, I have a blog, and I may want to publish some training materials.
USPTO 22:Online Guest - The best thing to do is consult the on-line Acceptable Identification of Goods and Services Manual that is at the USPTO Website. Search "blog" and you should find various iterations of acceptable descriptions for this activity and the appropriate classification.
email@example.com: Who are the people answering these questions? All internal Patent Examiners?
USPTO 19: mbiddle - yes, we are all USPTO employees and experts from different areas within the Office. We actually did a quick count of years of experience and it was over 300 years worth of experience.
firstname.lastname@example.org:How about scheduling this chat monthly?
USPTO 34:email@example.com - Thank you for your comment. We will definitely consider it.
USPTO 19:Thank you for participating in today's chat. The full transcript of today's chat will be posted in the next 2- 3 weeks. The next on-line chat will be March 16, 2010.