Patents > Inventors Resources > On Line for Independent Inventors (24FEB2005)

This is a transcript of the on-line chat held on Thursday, February 24, 2005. 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 Expert3 (Feb 24, 2005 2:05:57 PM)
Welcome to the Inventors On-Line chat, we will begin promptly at 2:00. Please note, that questions posted before 2:00 pm may not be addressed when the chat goes live. By the way the Federal Government has issued an early dismissal, but we will be here throughout the duration of the chat, so keep those questions coming.

tms (Feb 24, 2005 2:11:52 PM)
Question regarding TMs. I've search via your site and come across an existing application for the same TM name. My question is at what point is the application cinsidered abandon? The reason is based on the web site the last corrospondence is 4/15/2004 and the trademark was filed 3/15/2004. Can I contact the TM attorney to get further info.?

USPTO Expert (Feb 24, 2005 2:12:19 PM)
A trademark application is considered abandoned when there is no response to an office action within the statutory six-month response period. However, the application is not noted as abandoned for approximately 2 months following the expiration of the response period. This is done to allow a response that was filed on the last day of the response period time to be associated with the file. It appears that this application should be noted as abandoned but until that is posted as the official status you cannot assume that is correct. You may check the status of this application on the TARR system at the USPTO website. Since you are not the applicant in this application you may not contact the Examining Attorney assigned to the application for further information.

twojays (Feb 24, 2005 2:12:30 PM)
What are the pros and cons of a provisional vs, non-provisional patent and what are the differences?

USPTO Expert3 (Feb 24, 2005 2:12:34 PM) (edited answer)
A provisional application cannot become a patent and it will automatically be abandoned 12 months after its filing date. If you filed a provisional application and you want a patent, you will have to file a non-provisional application within 12 months from the filing date of the provisional application referencing the provisional application. A non-provisional application can become a patent and is the mechanism to provide actual patent protection. See for additional information about provisional application and for additional information about utility applications.

twojays (Feb 24, 2005 2:13:06 PM)
I do a search on the uspto website and 'Page not found" comes up?

USPTO Expert3 (Feb 24, 2005 2:13:49 PM)
It is likely that the browser has "timed out", just resubmit the search query when the network is not as busy.

Nick Leggett (Feb 24, 2005 2:13:54 PM)
Is the USPTO considering methods to help independent inventors to enforce their patents in court? It is difficult for most independent inventors to handle the financial and legal requirements for patent cases . Thank you for your attention. Nick Leggett

USPTO Expert2 (Feb 24, 2005 2:13:57 PM) (edited answer)
While we sympathize with your concerns, the USPTO cannot get involved in ligitation strategy as this would be a conflict of interest. Once a patent issues, the USPTO can no longer be involved unless a reissue application is filed or a reexamination proceeding is instituted. Further the rights you obtain as a patent owner are your rights and your responsibility to enforce. Independent inventor groups may be able to provide help and guidance in the area of enforcement.

bucko (Feb 24, 2005 2:17:00 PM)
What is the least expensive way to conduct a pentability search?

USPTO Expert3 (Feb 24, 2005 2:17:03 PM)
Do the search yourself. There are 84 Patent and Trademark Depository Libraries (PTDLs) located nationwide and Puerto Rico. PTDLs have qualified and experienced staff who can assist you with patent and trademark databases and search tools and finding information on related topics such as starting a business, prodcut licensing, market research, finding a patent attorney or agent, etc. Visit the USPTO web site for a list of PTDLs with links to library web sites and telephone numbers. List of PTDL libraries is

Guest (Feb 24, 2005 2:17:43 PM)
Hi, Have a start up company for skin care products. I know to get my slogan trademark. Is there anything else i should do?

USPTO Expert (Feb 24, 2005 2:18:51 PM)
Registering your slogan as a trademark will protect that slogan from use by others of a similar slogan for similar or related goods - that's a good start. Other start-up issues are business or legal decisions or you must make and the USPTO cannot assist in that area.

James (Feb 24, 2005 2:19:21 PM)
What can we do as independent inventors to improve the time between issue fee payment and patent number issue and publication? Is there an expedited request and fee available for this? Thank you.

USPTO Expert2 (Feb 24, 2005 2:19:24 PM) (edited answer)
Unfortunately, there is nothing you can do other than pay your issue fee in a timely manner. Publication depends on many factors within the publishing contractor's control. There is no process available to expedite publication.

kazza (Feb 24, 2005 2:23:12 PM)
my question is that my father and I have a pop up trailer that we want to apply for a patent in Australia as well in US. Do we have to link the 2 applications linked in some way? He has retired in Australia and has had the application prepared by an attorney over there.

USPTO Expert2 (Feb 24, 2005 2:23:16 PM) (edited answer)
If you have a foreign application you can claim priority to that foreign application in the U.S. provided that the foreign application was not filed more than one year before the U.S. filing date and all the requirements of 35 U.S.C.119(a) – (d) are satisfied. Priority should be claimed at the time of filing the U.S. application; however, you do not have to claim priority if you do not choose to do so.

halberg (Feb 24, 2005 2:24:39 PM)
Does the USPTO do any foreign patent search as part of the utility patent issue process?

USPTO Expert2 (Feb 24, 2005 2:24:41 PM)
Yes, we search all appropriate areas including foreign patents and publications.

tms (Feb 24, 2005 2:26:34 PM)
So if the TM applicaton is offically abandon 8 months after last corrospondence than I could file an application and not be refused?

USPTO Expert (Feb 24, 2005 2:26:50 PM)
That’s much too broad a statement to say “yes” to. There are many factors that go into allowing or refusing registration of a mark. It is also possible for an abandoned application to be revived. You can submit your application at any time but, of course, you take the chance of refusal. If your application is refused because this prior-filed application was revived and the Examining Attorney finds there is a likelihood of confusion between it and your application, you will be refused registration until prosecution of the prior-filed application is complete.

Randy (Feb 24, 2005 2:26:55 PM)
I've had a copyright registered at your copyright office since 1997 for a board game I have invented. It is finally coming to market this year. Do I need a patent also on the product? Even though the product is being sold with my

USPTO Expert3 (Feb 24, 2005 2:27:00 PM)
You should check with a patent attorney/agent since you filed for a copyright in 1997 you may be subject to a statutory bar due to possible disclosure of your product.

Harry (Feb 24, 2005 2:29:14 PM)
Does USPTO provide any special discounts for student inventors

USPTO Expert2 (Feb 24, 2005 2:29:15 PM)
Student inventors would most likely qualify for small entity status and be eligible for reduced fees. Our website details the process for obtaining small entity status.

littleyiu (Feb 24, 2005 2:29:44 PM)
I checked the File History of my application using private PAIR and found the remark "Receipt into Pub" on 2/23/2005.This remark was done after " Workflow -Printer Rush request-finished". The issue fee was paid on Sep. 2004. Could you explain the meaning of " Receipt into Pub "? Is this FMF? Also, How soon the allowed appication will be issed?

USPTO Expert3 (Feb 24, 2005 2:30:11 PM)
You should contact customer service in the Office of Publication at 703.308.6789/1.888.786.0101 or E-mail: Pubscustomerservice@USPTO.GOV.

Jessica (Feb 24, 2005 2:32:11 PM)
What is the cost of the issue fee?

USPTO Expert3 (Feb 24, 2005 2:32:37 PM)
Issue fees can be found on our fee schedule located on the web site at - patapp

Individual Inv hsntsc@hotmail.c (Feb 24, 2005 2:32:58 PM)
Question 2: What is the easiest and simplest way for individual inventor to write his own inventor application personally ? with a minimum required info and contect and without any further and optional infomration?

USPTO Expert3 (Feb 24, 2005 2:33:49 PM)
You should search the area of your invention and use a patent as your guide. If you see a particularly well written patent you should use this as the basis for writing your application. Remember, the claims are the most important thing in your application. Since they define your patent protection.

Jimmy Newtron (Feb 24, 2005 2:39:26 PM)
What is the point of getting a Patent?

USPTO Expert2 (Feb 24, 2005 2:39:26 PM) (edited answer)
Patents grant a right to exclude others from making, using, offering for sale, or selling the patented invention. Often the mere fact that a product is patented will prevent others from copying in order to avoid the possibility of litigation. Patents also provide a mechanism to allow inventors to license and sell their inventions. The courts are the mechanism for enforcing patent rights so lawyers necessarily are involved.

Jimmy Newtron (Feb 24, 2005 2:40:55 PM)
I have invented a fashion accessory that uses an integrated circuit. Should file for a utility patent or a design patent?

USPTO Expert3 (Feb 24, 2005 2:41:22 PM)
The accessories' ornamental design may be protected by a design patent and it's function may be protectable by a utility patent.

Craig327 (Feb 24, 2005 2:42:06 PM)
I have an idea for a new home product. Do I have to manufacture a working model before I am issued a patent?

USPTO Expert2 (Feb 24, 2005 2:42:10 PM)
A working model is not required in order to obtain a patent. The filing of an application which completely describes the invention is considered to be a constructive reduction to practice and is sufficient.

Harry (Feb 24, 2005 2:45:30 PM)
Does US patents are protected Internationally

USPTO Expert2 (Feb 24, 2005 2:46:37 PM) (edited answer)
No, U.S. Patent only give you the right to keep others from making, using, offering for sale, or selling the invention in the United States.

yunsong (Feb 24, 2005 2:46:58 PM)
What are the common mistakes the independent inventors intend to make when they file a patent application without using patent attorney/agent?

USPTO Expert
(Feb 24, 2005 2:48:30 PM) (edited answer)
First, the most common mistake is not doing your homework by understanding what is needed in an application. Our web site, has a wealth of information. Second, the claims are usually written as what the invention does, how it works or what it is intended to do rather than how it is made. It is important to clearly define what the invention is. Finally, the written descriptions that most often cause trouble are those that don't clearly describe their invention. You can contact our Inventors Assistance Center at 1-800-786-9199 for additional information.

Guest (Feb 24, 2005 2:48:34 PM)
Hi how can I find out if there is another product like mine already patented

USPTO Expert2 (Feb 24, 2005 2:50:01 PM)
You want to search for similar products. A good place to start is a patent and trademark depository library (PTDL). Librarians at PTDL's can assist you in searching patents and patent publications. A list of PTDL's can be obtained from our website

rabbit (Feb 24, 2005 2:52:41 PM)
I got ahold of a business and submitted my idea to them since then they have call to want a large amount of money but I have not sent them anything I since have done some research on your web site and found they have 7 complaints against them.I have sent for information from you to do my own patent,Should I tell them I want my paper work back or do they have to send them back to me I don't want to say anything to them untill I get my patent submitted.Thanks Rabbit

USPTO Expert3 (Feb 24, 2005 2:53:40 PM)
You should contact the Inventors Assistance Program at 1-866-767-3848 to discuss your concerns with the invention promotion company.

Mammy (Feb 24, 2005 2:54:07 PM)
Can you take pictures of a prototype to use as your art in the actual patent, and not use drawings?

NJS (Feb 24, 2005 2:55:18 PM)
What is a ballpark estimate for filing a patent

USPTO Expert2 (Feb 24, 2005 2:55:40 PM)
NJS - Fees charged by the Office are posted on our website Attorney fees are set by attorneys.

USPTO Expert3 (Feb 24, 2005 2:55:44 PM) (edited answer)
Mammy - Photographs are not ordinarily permitted in utility and design patent applications. The USPTO will accept photographs in utility and design patent applications if photographs are the only practicable medium for illustrating the claimed invention. See 37 CFR 1.84(b) for additional information regarding photographs.

tms (Feb 24, 2005 2:56:08 PM)
can the same TM name be used by seperate companys in differenct areas of business and will the TM office approve the application?

USPTO Expert (Feb 24, 2005 2:56:18 PM)
Again, too broad to simply say “yes.” The standard for finding likelihood of confusion is a comparison of the marks and a comparison of the goods or services provided under that mark. The closer either one of those elements are, the more possible is a finding of likelihood of confusion. Thus, it is possible for somewhat similar marks to be registered for differing goods or services. Remember, though, a third party can oppose the registration of a mark even if the Examining Attorney has allowed the mark to publish for opposition.

USPTO Expert3 (Feb 24, 2005 2:57:42 PM)
Please note, if you are not seeing your question, understand we can only post a limited amount of questions and answers.

Michele (Feb 24, 2005 2:58:39 PM)
Is it necessary to go to a depository for patent research or does an online search at the uspto website have the same info?

USPTO Expert2 (Feb 24, 2005 2:59:29 PM) (edited answer)
It's not necessary to go to a PTDL. Our website has searchable copies of U.S. patents and patent application publications. However, PTDL's can offer search assistance and other resources.

Bill Schneider (Feb 24, 2005 2:59:33 PM)
FYI: the Federal government announced a 2 hour early dismissal for Washington DC area employees due to the snow storm. I will have to leave in my vanpool at 3pm so I can't continue this conversation.

USPTO Expert3 (Feb 24, 2005 2:59:35 PM)
Thanks Bill, our session is over at 3pm and we will be departing promptly.

Harry (Feb 24, 2005 3:00:27 PM)
Whom to contact for unanswered questions ?

USPTO Expert3 (Feb 24, 2005 3:01:11 PM)
You can contact the Inventors Assistance Center at 1-800-786-9199 and also review our previous on-line chat, your question may already have been answered.

magna (Feb 24, 2005 3:03:58 PM)
How can I go about pursuing a patent on a non- useful novelty item?

USPTO Expert3 (Feb 24, 2005 3:04:33 PM)
To receive a patent an invention must be useful, novel and non-obvious.

Mary Ann (Feb 24, 2005 3:05:23 PM)
When filing for a patent, where do you find the proper classifications?

USPTO Expert2 (Feb 24, 2005 3:06:06 PM)
The Patent Office will determine the proper classification. If you are e-filing, there is a place for you to suggest a classification, but this portion can be left blank.

Michele (Feb 24, 2005 3:06:14 PM)
When fighting an opposition to a TM application, should you have an independent company perform a survey to show there is no likelihood of confusion? Is it OK to conduct a survey yourself? Is a survey necessary at all?

USPTO Expert (Feb 24, 2005 3:06:21 PM)
Whether or not to have a survey done is a huge legal question with many ramifications. It’s a question that you should discuss with a trademark attorney. The USPTO cannot provide advice on this issue.

Invent (Feb 24, 2005 3:06:46 PM)
Can you protect the text and symbols on an LCD display via a copyright?

USPTO Expert3 (Feb 24, 2005 3:07:15 PM)
Copyrights fall under the Library of Congress, you can contact them at 202-707-3000.

beachgirllookingforaball (Feb 24, 2005 3:09:29 PM)
what do you mean by non-obvious

USPTO Expert3 (edited answer)
Obviousness is covered by 35 U.S.C 103. Under this statute, a patent may not be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. In a rejection under this statute, it is necessary to modify a single reference or to combine it with one or more other references. The term "obvious" applies to this modification/combination. If the modification/combination is obvious, then the rejection is proper.

To determine if a modification/combination is obvious, three basic criteria must be met.
First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. See MPEP 2142.

alisha (Feb 24, 2005 3:10:35 PM)
Is there an organization that we could call to ask questions about filing a trademark application?

USPTO Expert2 (Feb 24, 2005 3:10:59 PM)
Trademark Assistance Center can help. Phone 703-308-9000.

eddie (Feb 24, 2005 3:11:05 PM)
Can Copy righted names be registered for Trade Mark?

USPTO Expert (Feb 24, 2005 3:11:09 PM) (edited answer)
Yes they can, provided they meet all of the requirements of the Trademark Act.

OCG (Feb 24, 2005 3:11:47 PM)
Dear Experts, Thank you for your time. I have a number of published patents. I would like to refer to one or more of them in new applications to the USPTO. What is the method to refer back ? Also, does the USPTO refer or recommend prototype services?

USPTO Expert3 (edited answer)
I am assuming that you are referring to a U.S. patent in your question and not a foreign patent. To answer your first question, I will cover the situations when a prior U.S. patent may be cited in a later filed application. There are situations when a prior patent may be cited in an application: 1) as background information, 2) to incorporate by reference the subject matter of that prior application or patent.

1) The simplest situation is when you are using the published patent to establish the background of the invention. This is sometimes called the state of the art for the particular invention. There are two purposes for doing this. You can either put the invention in context related to other inventions or to provide a framework for others to understand your invention. When citing a published patent, all that must be done is to list the patent number and the inventor's name in the "Background Of The Invention" section of your application and describe the details of that patent that you think are relevant.

2) An application may incorporate by reference the subject matter of another patent or application. Incorporation by reference is a shorthand way of saying that the disclosure of the earlier application or patent is a part of the present application. Incorporation by reference is clearest when you use the phrase "incorporation by reference" when you first mention the application or patent that you want to incorporate by reference into your application. See 37 CFR 1.57 and MPOEP 608.01(p) on incorporation by reference.

If your “new applications” were filed in the USPTO during the pendency of your “patents,” meaning that your “patents” have not issued as patents at that time and these applications are pending in the Office, your “new applications” may claim the benefit of the filing dates of the prior applications under 35 U.S.C. 120 provided 5 requirements must be met. These requirements are set forth in MPEP 201.11.

Finally, in answer to your second question, the USPTO cannot recommend the services of any business.

Guest (Feb 24, 2005 3:13:05 PM)
Can a new software idea/program be patented?

USPTO Expert3 (Feb 24, 2005 3:13:57 PM) (edited answer)
The answer to this question can be found in our January transcript and it inserted below:
When software is claimed as part of the claimed invention, the applicant does not need to specify the end user platform. There is an important distinction between copyright protection on software and patent protection for inventions that utilize software. Patent claims to a computer system which includes executable software can be made. In addition, claims to computer readable media are also statutory and eligible for patent protection. For further information see Examination Guidelines for Computer-Related Inventions which is available for download on the USPTO website

USPTO Expert3 (Feb 24, 2005 3:14:43 PM)
Good-bye and thanks to everyone that participated, look for our posted transcript next week.

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