On Line Chat Transcripts

A-E

A

Abandoned Trademark

I've searched your site and come across an existing application for the same TM name. My question is at what point is the application considered abandoned?

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.

So if the TM application is officially abandon 8 months after last correspondence than I could file an application and not be refused?

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.

Acronyms

What does IFW TSS Processing by Tech Center Complete mean?

This is really an internal code for PTO staff, but it means that our technical support staff is processing the application in image format.

Amendments

Is an applicant allowed to make voluntary amendment (specification/claim) before first Office Action (OA), in response to first OA, and after the first OA, which indicates, all claims are allowed?

You may amend your application before first Office action (this is called “preliminary amendment” and preliminary amendments are governed by 37 CFR 1.115), or in response to a first Office action (amendments filed in reply to a first Office action are governed by 37 CFR 1.111). All amendments must comply with 37 CFR 1.121 (manner of making amendments) and no amendment may introduce new matter into the disclosure of an application. After all claims are allowed your right to amend is limited.

Application Access

Once a utility patent is filed, will the inventor be allowed access to examiner notes (e.g., patentability reports, search criteria, etc.) contained in the file wrapper at any time?

Yes, an applicant may access the entire file through Private PAIR. See the Electronic Business Center on our web page on how to use this feature. http://www.uspto.gov/main/faq/p120pair016.htm

Application Forms

Do I need to send in the following with my utility invention hardcopy? The Fee Transmittal Form (Form PTO/SB/17) Utility Patent Application Transmittal (Form PTO/SB/05) Application Data Sheet (see 37 CFR § 1.76) Specification, Drawings Oath or Declaration- Forms PTO/SB/01, PTO/SB/01A, PTO/SB/02, and PTO/SB/02LR Post card and required fees.

No forms are required, however we suggest you use the forms you mentioned with the exception of only 1 oath or declaration form is needed. Everything else you mentioned is correct.

Application Process

Please describe the application process or where to get application process information.

Contact our Inventors Assistance Center at 1-800-786-9199 to request a packet of information and ask specific questions.

Art Unit Status

I have applications filed in August 2003, pre-assigned to art unit 2673 and 2674. I haven't heard from PTO except for reception and publication notice, can you tell me the status of these two art units?

One can check on the status of applications in the art unit by checking the OG notices. For example, go to http://www.uspto.gov/, then click on Patents, under the heading “Search Aids” click on OG (Official Gazette) then click on 2005, week 38, then scroll down to the Technology Centers specific to your application. It will give you the average filing date of application receiving a first office action in the last 3 months. 2670 includes the two art units that you mentioned and the average filing date of application receiving a first Office action in the 3 months is 8/11/03.

Assignee

When applying for a patent do you have to disclose the name of your assignee if you have one?

While it is recommended, it is not required to file your assignment document with the USPTO.

Assignment

How does an inventor set aside an assignment, rendered under false promises since reneged?

The USPTO merely records patent assignments. We make no determination as to the validity of an assignment.

I filed a patent application with Assignment. The USPTO replied confirming the receipt of the Assignment. The patent was granted, but published without the Assignment. Any reason for that? What corrective action needs to be taken?

Unless the assignee name and residence data is included in the “Part B – Fee(s) Transmittal” form (PTOL-85), this information will not appear on the patent. If you did include this information on the form, you should file a request for a Certificate of Correction using a form PTO/SB/44 (http://www.uspto.gov/web/forms/index.html - patent) see MPEP Chapter 1400 (http://www.uspto.gov/web/offices/pac/mpep/index.html)

Attorney

Do I need an attorney?

There are no requirements that you must use a registered patent attorney or agent. However the process of securing a patent can be complicated and the Office strongly suggests using the services of a registered patent attorney or agent. A listing is available at:
http://www.uspto.gov/web/offices/dcom/olia/oed/
roster/index.html

How do I find a patent attorney in my area?

The USPTO maintains a roster of registered patent attorneys/agent, go to http://www.uspto.gov. The roster is searchable by geographical location.
http://www.uspto.gov/web/offices/dcom/olia/oed/
roster/index.html

We are looking for a patent attorney. What is the best way to research them or find ratings on them. We are in Jacksonville, FL.

The USPTO maintains a roster of registered patent attorneys/agents. To access this list go to http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html . You can search by geographical location.

B

Basic Information About Patents

How do I found basic information about patents?

You can visit our Inventors Resource Page at http://www.uspto.gov/web/offices/com/iip/index.htm, where the brochure, General Information Concerning Patents and A Guide to Filing a Utility Application can be found. And you can contact our Inventors Assistance Center at 1-800-786-9199 for answer to specific questions.

Beginner's Kit

Is there a beginner's kit that I can get to help start the process of my idea?

The Inventor Assistance Center, 1-800-786-9199, can send you an information packet to help you get started.

Rather than call the Inventor Assistance Center, can I download the Packet to get started? If yes, what is the address?

Yes, you can go to the Inventors Resource page at http://www.uspto.gov/web/offices/com/iip/index.htm
and view a number of our brochures on-line.

Board Games

Can a board game be patented? And if so, how can I see current board games that have been patented? Also, how much different does one game need to be from another?

Yes, a board game can be patented. You can see examples by conducting a search on our web site, go to http://www.uspto.gov/patft/index.html. For information regarding whether you invention is patentable or not, go to the Inventors’ Resource page on the USPTO web site.

Business Method Patent

Is there a Business Method Patent?

It is a utility patent. Utility patent applications may be filed for business methods. For additional information go to http://www.uspto.gov/web/menu/pbmethod

C

Call

Can applicants call in and speak with the examiner directly?

Yes, this is called an "interview" and is generally conducted after the first Office action has been mailed. Please see MPEP 713 for a detailed explanation of interview practice.
http://www.uspto.gov/web/offices/pac/mpep/
mpep.htm

Certificate of Corrections

My last name on my patent certificate is incorrect. is there any way i can submit the proper spelling and get a new certificate?

Yes you may file a request for a certificate of correction. The patent, however, will not be reprinted. See http://www.uspto.gov/web/offices/pac/doc/
general/correct.htm

Change the Name of My Product

What should I do if I want to change the name of my product? Do I need to do notify the Patent Office?
The name of the product protected by your patent sounds like you're referring to a trademark for those goods. If you are referring to the brand name by which your product is or will be known by the public, you should look into filing an application to register that name as a trademark.

Characters in a Trademark

How are characters like a hyphen treated in a trademark. For example if "i-name" is registered could I register "iname"

The pronunciation of the trademark is the most controlling factor. So whether or not similar marks have dashes separating elements of one or the other mark wouldn't make much difference in deciding whether there would be a likelihood of confusion in the market place.

Chat

Is there another chat scheduled?

We will be hosting our On-line Chats every other month and information is always posted on our home page, www.uspto.gov

Where can I find other archived chats hosted by USPTO?

All previous chat questions and answer are posted at http://www.uspto.gov/web/offices/com/iip/onlineiip.htm. You can find answer to many of your questions there.

Claims

If an application is made for an idea in it's broadest sense, does the USPTO make the determination of how broad the scope of the patent can be?

The USPTO examiner will review the application when filed and will make a search of the prior art. If a claim is too broad because it is not supported by the description in the application as originally filed, or by an enabling disclosure, the examiner will reject the claim under 35 U.S.C. 112, 1st paragraph. If a claim is too broad because it reads on the prior art (the claim is supported by the description), the examiner will reject the claim under either 35 U.S.C. 102 or 103, as appropriate.

Do claims have to be backed up by scientific literature or evidence?

All patented inventions must be operable. While initially you don't have to provide evidence that an invention is operable, an examiner may reject a claim as being inoperable. In this instance you would be required to prove the invention is operable.

Is there anyway to make claims broader after a patent is issued?

This can be done by filing a reissue application within 2 years of the issue date of the patent.

Can I modify the claims after the application is submitted (and before it is issued)?

Yes, but you cannot add new matter, that is, new material that is not supported by the original specification.

How many times can a claim be amended before prosecution of the application?

Our current regulations do not have a limit as long as no new matter is added. However, once prosecution of the application is closed (e.g., final rejection), amendments are no longer entered as a matter of right. Only certain amendments may be entered. See 37 CFR 1.116.

Common Mistakes

What are the common mistakes the independent inventors intend to make when they file a patent application without using patent attorney/agent?

First, the most common mistake is not doing your homework by understanding what is needed in an application. Our web site, http://www.uspto.gov/ 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.

Complaints

Do you have complaints against the Davidson company, an invention promotion firm?

All of our complaints are posted on our web site at:
http://www.uspto.gov/web/offices/com/iip/
complaints.htm

Company Filing for Patents

Can a company file for a patent or only a natural person(s)?

Applications must be filed in the name of the inventor(s). The inventor(s) must sign the oath or declaration for patent application. However, a company may have the patent rights assigned to them. Once the inventor(s) has assigned the rights to the company, the company may take action in the patent application.

Cost of a Patent

What is the average cost of a patent, and what is the average cost for a Patent Attorney or Patent Agent?

The Office has no oversight over attorney/agent fees. The USPTO fees can be found on the Inventors Resource Page at http://www.uspto.gov/web/offices/com/iip/index.htm

Continuation-in-Part

What is the time limit for filing a continuation-in-part application? Does it have to be before the publication date, or the issue date? When does the terminal disclaimer for the parent application have to be filed? If the only independent claim in my patent is too restricted, is it possible to remove some restrictions by filing a continuation-in-part application?

A continuation-in-part must be filed while the parent application is co-pending, in other words before the issue date, termination of proceedings date, or abandoned date of the parent application.

A terminal disclaimer can be filed at any time before allowance but should not be filed unless the examiner has made a double-patenting rejection.

Yes, however the broader claim must be supported by the written description of the parent specification and enabled by it as well in order to receive the benefit of the filing date of the parent application.

Continuation/Continuation-in-Part

If I am not satisfied with the allowed claims of my application, can I file a continuation or continuation in part application with amended claims and let the original application go abandoned?

Yes, but you have to file the continuation or continuation in part before the original goes abandoned.

Copyright

Are copyright laws linked with the USPTO?

Please see our web site if you are looking for information about the Library of Congress which administers copyrights.

Can you protect the text and symbols on an LCD display via a copyright?

Copyrights fall under the Library of Congress, you can contact them at 202-707-3000.

I've had a copyright registered in the 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?

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.

Copyright vs. Patent

Copyright vs. Patent If one develops an unusual book format /structure with the intent to display a specific kind of information (e.g. the structure makes learning celestial navigation easier), does one protect that using copyright (as 3-dimensional art) or as a patent (as a useful item)?

The answer to your question depends on how you want to protect your invention. If you want to protect unauthorized publication of your book, then a copyright may be sufficient, http://www.loc.gov/copyright If you want to protect the ornamental features of the product, then a design patent may be the best choice. Lastly, if you want to protect the use or the products utility, then a utility patent would give you the best coverage. For example, if your product is an educational device, then your product may be eligible for a utility patent. Often, more than one type of intellectual property protection (i.e. a combination of copyright, trademarks and/or patents) may yield the best coverage for your product. You should seek legal advice to see which intellectual property protection is most appropriate for your invention.

Correspondence Address

I let my patent attorney know of my address change...should I notify the USPTO, both of us have gotten correspondence from them.

Once you have an attorney, we only deal with that attorney. We do not provide dual correspondence sent to both the applicant and his or her attorney.

Cost to file for a trademark

What is the cost to file for a trademark or to register a name of your product? And can a book name be registered.
The cost of filing for a trademark registration is dependent on the number of classes included in your application and the nature of the application process you choose to use. There are also additional fees if your application is based on an intent to use the mark in commerce. These fees and more information on trademark application filing is available at the USPTO website at http://www.uspto.gov/web/trademarks/workflow/start.htm

D

Dead Trademark

How does one find out status of a dead trademark & how to take ownership if available?

You can find the status of a trademark application at the USPTO website using TARR. A dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing. It does not necessarily mean that there are not other marks that the trademark examining attorney would cite. It is also possible to revive an abandoned application (for example, if the USPTO declared the application abandoned for failure of the applicant to respond to an Office action, but the applicant later proved that a response was sent and the USPTO simply failed to match it with the file in a timely manner, then the case could be revived). Also, regardless of the status of an application within the USPTO, the owner may still claim common law rights, i.e, the mark may still be in use in commerce.

Design Application Fees

I've seen the fee's for application fee, search fee and examination fee, what other fee's am I missing for a design that’s one page in description and design.

There are no other fees required to file a design application. An additional fee will be required upon issue.

Design or Utility patent

I have a new design for an existing (commodity) product, but much improved. Is it better to consider a Design or Utility patent, as the improvements can change the way the product is used?

Design and utility inventions are protected under 2 statutes: 35 USC 101 and 171; they are concerned with different subject matter; so they are not exclusive; the same invention could be appropriate for both patents.

Design Patent and A Utility Patent On The Same Item

Can I file a design patent and a utility patent on the same item? Does it make sense to do that based on their definitions?

On the same product, yes. The design patent would protect the ornamental appearance and the utility patent would protect the way the product is used or works.

Design Patents

Can design patents be filed under PCT

No.

Designs

Are shoe designs (ornamental designs) patentable?

Yes, as long as it meets the requirements of U.S. Design Patent Law.

Disclaimers

What is a disclaimer and why is it used?

A disclaimer is a statement filed by an owner (of an undivided part interest or of the entire interest) of a patent or of a patent to be granted (i.e., an application), in which the owner relinquishes certain legal rights to the patent. There are generally two types of disclaimers: a statutory disclaimer and a terminal disclaimer.

Statutory Disclaimers:
Under 37 CFR 1.321(a) the owner of a patent may disclaim a complete claim or claims of his or her patent. This may result from a lawsuit or because he or she has reason to believe that the claim or claims are too broad or otherwise invalid. A statutory disclaimer is not, however, a vehicle for adding or amending claims, since there is no provision for such in the statute (35 U.S.C. 253) nor the rules (37 CFR 1.321). Thus, claims of a patent cannot be disclaimed in favor of new claims to be added to the patent or an amendment to existing claims. The following link will provide you with a form for disclaimers under 1.321(a):
http://www.uspto.gov/web/forms/sb0043.pdf [PDF]

Terminal Disclaimers: 37 CFR 1.321(a) also provides for the filing by an applicant or patentee of a terminal disclaimer which disclaims or dedicates to the public the entire term or any portion of the term of a patent or patent to be granted. 37 CFR 1.321(c) specifically provides for the filing of a terminal disclaimer in an application or a reexamination proceeding for the purpose of overcoming a judicially created double patenting rejection. See MPEP § 804.02 at the following link: (http://www.uspto.gov/web/offices/
pac/mpep/ documents/0800_804_02.htm
- sect804.02) This link will provide you with a form that can be used to file a terminal disclaimer to overcome an obviousness-type double patenting rejection: http://www.uspto.gov/
web/forms/ sb0026_fill.pdf [PDF]

For more on Disclaimers, please see the Manual of Patent Examining procedure (MPEP) Chapter 1490 (see link below): http://www.uspto.gov/web/offices/
pac/mpep/documents/1400_1490.htm - sect1490

Disclosure Document Program

Under what circumstance(s) does a disclosure need to be filed under the USPTO's Disclosure Document Program?

It is not ever required.

I would like to know if after a Disclosure Document has ran out if you can get an extension.

There are no extensions for disclosure documents. For information about the disclosure document program, go to http://www.uspto.gov/web/offices/pac/disdo.html

Domain Names

If I registered a Trademark for 'QWERTY' that sells 'qwerties'. And then find somebody else has the Internet domain www.qwerty.com and is also selling 'qwerties'. Can I stop them from using that Internet domain?

You may have some recourse against the later domain name user. You should consult the Domain Name Resolution Policy. I'm sorry I don't have a link for that but you should be able to find references for it on the web if you do a comprehensive search on a good search engine.

Drawings

Is there a guideline to follow about drawings, drafting patents ?

The drawing requirements are available in MPEP 608.02.
http://www.uspto.gov/web/offices/pac/mpep/
mpep.htm

E

EFS - lost my registration info

Would like to file EFS - lost my registration info. Can I file as a non-registered?

You should be able to contact the Electronic Business Center for assistance, http://www.uspto.gov/ebc/indexebc.html

EFS-Web

Will the EFS-Web be secure, or is "snail mail" submissions still considered to be the most secure method?

EFS uses a secure transmission protocol.

Does the EFS-WEB pdf file need to be text-searchable?

Check the EFS-Web help and tutorial site for the pdf creation tips. http://www.uspto.gov/ebc/efs_help.html

EFS Web will likely be a target for hackers. Has it been tested for security?

Yes, and procedures have been put in place to mitigate any suspicious activity.

I searched EFS-WEB FAQ, and did a Google search of USPTO site, but didn't find an answer to my question. PDF files are of 2 kinds: (a) test-searchable, (b) image-only which requires OCR to be searchable. Can I submit image-only PDF files to EFS-WEB?

Image based PDF is fine. We OCR these images to do classification and security clearance on the documents

EFS-WEB beta

Is participation in the EFS-WEB beta still open?

Membership in EFS-WEB beta is closed. We are ending the beta on March 10, 2006 and everyone will be able to use EFS-WEB on March 17, 2006. Check the EFS-WEB portal site for current information. http://portal.uspto.gov/external/portal/pair

Electronic Application

What is the likelihood that electronic application filing by pdf will be available by May 2006?

March 17th, EFS-Web will be available to everyone on the USPTO website. You will be able to submit PDF files with this system. Go to http://www.uspto.gov/ebc/efs_help.html

Existing Product

I have a product idea. How can I tell if there is an existing product or a similar one? What trustworthy party can I discuss concept with? What does one do after an idea?

You can find other patents for similar inventions on the USPTO web site.
http://www.uspto.gov/patft/index.html
You can also find a listing of registered attorneys and agents there.
http://www.uspto.gov/web/offices/dcom/olia/oed/
roster/index.html
You could also consult a professional search firm.

Would I be allowed to patent a new "skin" to outside of an existing product and add audio software to the existing software? I would need to obtain licenses from the creator of the character to use the new 'skin' and audio. Thru entertainment these additions would encourage children to correctly use a medical device which helps their doctor monitor a chronic disease.

A new "skin" for an existing product would be patentable if the differences between the new product and the existing product were novel or non-obvious. Basically, when you are improving on an existing device, the change you make to the device must be novel or non-obviousness for you to obtain a patent (See 35 USC sections 102 and 103). The USPTO examiner will analyze the differences between the claim(s) in your patent application and the existing device (generally called the “prior art”). The examiner then applies the standards of 35 USC 102 and 103 to determine if the claim is novel or if the differences between the claim and the “prior art” would have been “non-obviousness”. As long as the claim meets the statutory requirements of 35 U.S.C. 101, 102, 103 and 112, it may be patented.

Expedited Publication

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?

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.

Expiration Date

How can one find the expiration date for a specific patent?

Patent term is usually 20 years from the earliest effective U.S. filing date subject to the payment of the maintenance fees.

Extension

After the first response from the USPTO I have 3 months to respond back. How would I get an additional 3 months extension?

In order to receive an extension of time you must file a "petition for an extension of time" under 37 CFR 1.136 along with your response and pay the appropriate fee for a 3 month extension of time. The current fees are available at http://www.uspto.gov under "How to pay fees".