On Line for Independent Inventors (19OCT2004)

This is a transcript of the on-line chat held on Tuesday, October 19, 2004. 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.

szcombi (Oct 19, 2004 2:09:02 PM)
Beware that an applicant whose invention is "in use" or "on sale" (see 35 U.S.C. §102(b)) in the United States during the one-year provisional-application pendency period may lose more than the benefit of the provisional application filing date if the one-year provisional-application pendency period expires before a corresponding non-provisional application is filed. Such an applicant may also lose the right to ever patent the invention (see 35 U.S.C. §102(b)). -- QUESTION - I did not understand, can you explain. My product is still in Idea. If I try to make this as a product within a provisional year, do I loose the patent filing right?

USPTO EXPERT
The statement above refers to the period of time during which a provisional application is pending (the one year time period from date of filing of the provisional application). If you have filed a provisional application, then this statement warns that public use or sale of your invention could jeopardize your ability to obtain a U.S. Patent if you do not file a non-provisional application within the pendency of your provisional application. There is no "provisional year". Once you have put your invention into public use or offered it for sale, you have one year to file either a provisional or non-provisional patent application. If you choose to file a provisional application, you will have one year from the filing date of the provisional application in which to file your non-provisional application. Failure to do so may result in loss of the right to obtain a U.S. Patent. See MPEP § 2133.

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2133.htm - sect2133

Ideaguy (Oct 19, 2004 2:13:18 PM)
Ideaguy asked "My patent application has been in limbo for a couple of years, it needed a response in ten days to office space re: clarification. I was out of state, 10 days past. Number1 is my patent application considered abandoned? Number 2 can I still put "patent pending" on product? Number 3 what is process to reactivate application? Thanks for any info"

USPTO EXPERT
All Office actions from the USPTO will notify the applicant of a period for response to the action. If you fail to reply within the period for reply, the application will become abandoned. The period for reply may be a "shortened statutory period" which can be extended by filing a petition for extension of time and paying an extension of time fee. The fee for an extension of time can be paid after the end of the shortened statutory period, but must be paid before the end of the extension period.

If you were given a shortened statutory period of three months to respond to an office action, and you were out of town and missed the three-month deadline, you may file a petition for extension of time and pay an extension of time fee and buy up to three additional months to respond. See MPEP § 710.02(e).

http://www.uspto.gov/web/offices/pac/mpep/documents/0700_710_02_e.htm#sect710.02e

Fees for extensions of time can be found on our website using the link:

http://www.uspto.gov/web/offices/ac/qs/ope/fee2004oct1.htm#extend

Under 35 U.S.C. 292, it is unlawful to mark or designate any article as "patent pending" or "patent applied for" for the purpose of deceiving the public, if an application for patent has not been filed or if your application is not pending. You may be fined up to $500 for each such offense.

If your application has become abandoned, you may "revive" it by filing a petition under 37 CFR 1.137(a) or (b). For these petitions to be granted, they must include the required response to the Office action, and the petition fee. The fee amounts can be found using the link above. Forms PTO/SB/61 and PTO/SB/64 may be used to file these petitions and may be found on our website using the link:

http://www.uspto.gov/web/forms/index.html#startforms

A petition under 37 CFR 1.137(a) is used when the abandonment of the application was unavoidable. For such a petition to be granted you must provide evidence that despite exercising diligence as generally used and observed by prudent and careful person in relation to their most important business, you were unable to respond to the Office action.

A petition under 37 CFR 1.137(b) is used when the abandonment of the application was unintentional. The fee for this type of petition is higher than for the unavoidable type, but you are not required to provide evidence regarding the circumstances of the abandonment of the application.

See MPEP § 711.03(c) for information regarding petitions for reviving an abandoned application.

http://www.uspto.gov/web/offices/pac/mpep/documents/0700_711_03_c.htm#sect711.03c


rjl (Oct 19, 2004 2:14:00 PM)
I have 3 patent applications. Two will absolutely help disadvantaged people in every day use.3rd is a rescue system with military engineers already interested in. I have been battling cancer to severe degree. Your suggestions on an attempt for petition to make special; will it matter and estimated time of process. I am 40 yrs.

USPTO EXPERT
There are certain conditions, which will allow your application to be expedited without a fee; your health is one of them. All applications are examined in date order, if a petition to make special is granted, your application will move to the front of the line. I am attaching the particular rule that covers these petitions.
§ 1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Director to expedite the business of the Office, or upon filing of a request under paragraph (b) of this section or upon filing a petition under paragraphs (c) or (d) of this section with a showing which, in the opinion of the Director, will justify so advancing it.
(b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason may be advanced for examination.
(c) A petition to make an application special may be filed without a fee if the basis for the petition is:
(1) The applicant's age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy resources; or
(iii) Contribute to countering terrorism.
(d) A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the fee set forth in § 1.17(h).

Please see MPEP § 708.02 for all requirements specific to petitions to make special,
http://www.uspto.gov/web/offices/pac/mpep/documents/0700_708_02.htm#sect708.02

Dr. DeCarlo (Oct 19, 2004 2:17:32 PM)
Hi. Just a simple question for now; does the 20-year clock on patent duration begins at the priority date, for example a provisional patent receipt, or from when?

USPTO EXPERT
The twenty year patent term is not measured from the filing date of a provisional application. See 35 U.S.C. 154(a)(3) which states that "[p]riority under section 119, 365(a), or 365(b) of this title shall not be taken into account in determining the term of a patent." The basis for relying upon a provisional application in a subsequently filed non-provisional application is 35 U.S.C. 119(e), which is specifically excluded in calculating the patent term under 35 U.S.C. 154(a)(3).

For all utility and plant applications filed on or after June 8, 1995, the twenty year term is measured from the filing date of the non-provisional application. If the non-provisional application claims benefit under 35 U.S.C. 102, 121 or 365(c) to an earlier filed application, then the twenty year patent term is measured from the earliest effective U.S. filing date for which benefit is claimed.

Allan (Oct 19, 2004 2:19:37 PM)
I have an idea for a telecommunications device that will require both hardware and software. How do I go about obtaining a patent for this idea? Can I apply for a patent while it is still and idea, or do I have to have it functioning first? Also, what level of detail do I have to provide in order to obtain a patent?

USPTO EXPERT
The first step is deciding what you want your patent to cover. Since your invention is a device with both hardware and software you may be able to obtain patent protection on both. After you decide this, filing a patent application would be the next step. There is a lot of information on our website that will explain the basics of filing a patent application. Please see the following link: http://www.uspto.gov/web/offices/com/iip/index.htm

A brochure, General Information Concerning Patents is also available on our website:

http://www.uspto.gov/web/offices/pac/doc/general/index.html

While it is generally not necessary to have the device completely manufactured at the time you file the application, you can apply for your patent as long as the application that is filed adequately conveys how to make and use your invention (the disclosure of the application as filed must comply with 35 U.S.C. 112, first paragraph). I would highly recommend reading through previous patents to get an understanding of what is needed in order to file an adequate disclosure that complies with 35 U.S.C. 112. The following link will take you to the US patent data base where you can begin looking through issued US patents to study both form and content: http://www.uspto.gov/patft/index.html

The level of detail in the application is what would be needed for one skilled in the art to make and use the device; again, compliance with 35 U.S.C. 112, first paragraph is essential. After reading through numerous patents, you will have a better understanding of the level of detail needed. If you are unsure how to proceed after studying the issued US patents and looking through the information on our website, you may want to consider seeking assistance from a registered patent attorney or patent agent. A registered patent attorney and agent listing by geographic region is available on our website:

http://www.uspto.gov/web/offices/dcom/olia/oed/roster/region/index.html

oldscout (Oct 19, 2004 2:21:06 PM)
I have an idea for cleaning engine-cooling systems and there is an existing patent which has part of my idea included in it. Can you give me any guidelines as to how different or perhaps upgraded an idea has to be to be patentable under these circumstances?

USPTO EXPERT
35 U.S.C. 103 states that "a patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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."

Whether a change or improvement to an old invention is patentable or not does not depend on how different or upgraded the new idea is, but rather, whether the differences would have been obvious to a person having ordinary skill in the art to which the invention pertains. Patent examiners carry the responsibility of making a determination of whether a claimed invention is obvious in view of the prior art. Examiners determine whether the features of an invention are disclosed or suggested in prior patents or publications. They then make a determination whether the differences between the claimed invention and similar devices would have been obvious. Examiners consider many factors, such as the level of skill of artisans in the pertinent art, commercial success, long felt but unsolved needs, failure of others to solve a problem, and whether the prior art as a whole suggests the desirability and thus the obviousness of the changes to the prior invention, when making a determination whether a claim is patentable or not.

Barry d (Oct 19, 2004 2:27:24 PM)
If I file a design patent application, do I place "patent pending" or design patent pending on the product? Also, is shading still necessary on design patents? Can I have different embodiments on a design patent to protect against small changes? Thank you.

USPTO EXPERT
Once a design patent application is filed with the USPTO "patent pending" may be included on the commercial product in which the design is embodied. Also, while surface shading is no longer required by 37 CFR 1.152, applicants are encouraged to include surface shading on the claimed design shown in the drawing so as to clearly understand its shape and contour. Multiple embodiments of a single design concept may be included in a single design patent application so long as the shape and appearance of the embodiments are not considered to be patentably distinct from each other.

thomasmcruise (Oct 19, 2004 2:28:02 PM)
I have been attempting to file for my patent electronically, and am having challenges getting the drawings to compress with the right compression ration format (CCIG....etc). Would you please offer any suggestions in getting these files to scan properly? (I know this is a fairly specific question, but thought others may learn from the answer. (I already have my customer number and PKI Cert from you). Thanks!

USPTO Expert (Oct 19, 2004 2:29:58 PM)
Thomasmcruise please contact the Electronic Business Center at 866-217-9197

oldscout (Oct 19, 2004 2:30:04 PM)
I recently spoke to representatives of Invent Tech Co and Invention Submission Corp. I showed one of my ideas to a representative of Invention Submission Corp. He signed a non-disclosure agreement that I have a copy of. I have since found out that they have had legal proceedings against them for misrepresenting their services. I wish to proceed with the patent application in the next few weeks. Does this letter and meeting establish in anyway a basis for the conception of my idea?

USPTO EXPERT
The Office strongly suggests you visit our web site, http://www.uspto.gov/web/offices/com/iip/data.htm#Complaints, for information you should be aware of before doing business with any invention promotion firm. You will not only see the published complaints the USPTO has, but you will also find information that invention promotion firms are required by the American Inventors Protection Act (AIPA) to answer. Questions like, Total number of customers, known by the Company, who have received a net financial profit as a direct result of the Company's promotion services and what is the Company's success rate over the past five years [that is, the number of clients who have made more money from their invention than they have paid to the Company].

The Federal Trade Commission is another source to view published complaints as well, http://www.ftc.gov/foia/frequentrequest.htm.

Since your intent is to proceed with your patent application, please contact our Office at 1-800-786-9199 for patent information or visit the USPTO's web site.

As far as the legal implication of the agreement you signed, the USPTO does not provide legal advice. We recommend that you should consult with a registered patent attorney/agent. A registered patent attorney and agent listing by geographic region is available on our website:

http://www.uspto.gov/web/offices/dcom/olia/oed/roster/region/index.html

shaoyu (Oct 19, 2004 2:31:34 PM)
What is the average time between paying issue fee and being published?

USPTO Expert (Oct 19, 2004 2:31:58 PM)
The average time is 3-4 months.

May (Oct 19, 2004 2:32:08 PM)
Hi I would like to know if there is a temporary patent that I can apply to. I don't know if this is an appropriate question, but I'm very new at this.

USPTO EXPERT
Although there is no category called "temporary patent" there is a type of application that is called a provisional patent application. A provisional application is not examined and cannot issue as a patent. You have one year from the filing date of the provisional application to file a regular/non-provisional application. The non-provisional application may claim the benefit of the filing date of the provisional application. The subsequently filed non-provisional application may mature into a patent.

A provisional application must clearly describe your invention in term that would allow someone having ordinary skill in the specific area of your invention the ability to make and/or use the invention with having to unduly experiment in putting your invention together or taking a great amount of time in learning how to use it. This is the same requirement that is placed on regular applications. The difference between a provisional application and a regular/non-provisional application is that the regular application is required to have at least one claim that clearly defines what the invention is, how it works or how it is made. No claims are required for the provisional application. Our web site has the current fee schedule.

http://www.uspto.gov/web/offices/ac/qs/ope/fee2004oct1.htm

Kayt (Oct 19, 2004 2:32:41 PM)
How do I find out if an idea similar to mine has already been patented?

USPTO Expert (Oct 19, 2004 2:34:30 PM)
You can conduct a patent search via our web site, http://www.uspto.gov/, click on "search". Or you can go to a Patent and Trademark Depository Library located throughout the United States and conduct a search there. To find the library nearest you go to our web site.

http://www.uspto.gov/go/ptdl/

thomasmcruise (Oct 19, 2004 2:38:36 PM)
Method Question - I'm filing a utility patent for a device, and the method for usage. Do these go into the same patent? or do I file a separate Method separate from the Utility Patent? Thank you in advance! :-)

USPTO Expert (Oct 19, 2004 2:39:16 PM)
You can file them in the same application, the examiner may require a restriction. If so, that will be included in the Office Action.

Dr. DeCarlo (Oct 19, 2004 2:41:12 PM)
In the say line of questioning as cruise, we had restrictions, which we accepted. Now should we take the restrictions and submit a new use patent app, and if so, how do we claim the original priority date?

USPTO EXPERT
If two or more independent and distinct inventions are claimed in a single application, the examiner may require the applicant to elect one of the inventions for examination. This is called a restriction. The other invention is withdrawn from consideration.

A) If the restriction was between claims drawn to a product and a process claims (process of making/process of use) and you elected to have the product claims examined then you may be entitled to have the process claims rejoined with the product claims when the product claims are allowable. The process claims must include all the limitations of the patentable product and those claims must be in the application prior to a final rejection or allowance, whichever is earlier. After final rejection, amendments are not entered as a matter of right (See 37 CFR 1.116). The same applies to amendments after allowance (See 37 CFR 1.312). In the event of a rejoinder, the claims will be fully examined for patentability. That means, in order to be allowable, the process claims must meet all the criteria for patentability including the requirements for utility, enablement, clarity, novelty, and non-obviousness.

B) Another option is to file a divisional application (second application) claiming benefit to the first application. This application would be an exact copy of the first application including the specification, oath, etc. You need to file this application while your first application is still pending in order to claim benefit of the earlier application. The Application Data Sheet needs to reflect the claim for benefit of the earlier application, or the specification needs to be amended to contain a reference to the earlier application in the first sentence of the specification, for example, "This application is a divisional of US Application SN_______, filed _____." On the Utility Patent Application Transmittal form (PTO/SB/05), available on our website, you would also check the box "Divisional" under item 18.

The restriction practice is often difficult to understand for inventors. Your examiner who made the restriction requirement is an excellent resource for the options available to you.
Alternatively, since restrictions practice is often case specific you can contact the Inventors Assistance Center to discuss in greater detail. 800-786-9199

Guest (Oct 19, 2004 2:42:48 PM)
My examiner seems to have a poor grasp of the English language. I get vague office actions, he does not give clear answers, he does not call my attorney with little questions that could be cleared up in 20 seconds. I want to know if it is possible to get another Examiner on my application. (I've waded through 2 years of silly office actions and I have infringers out there).

USPTO EXPERT
We have answered this question at the end of the chat.

Kayt (Oct 19, 2004 2:43:56 PM)
I am having trouble finding answers to my questions on the USPTO's website. I find it a little perplexing. Perhaps I need an "Idiot's guide to the USPTO".


USPTO Expert (Oct 19, 2004 2:44:55 PM)
You should contact the Inventors Assistance Center and speak to one of the representatives there for answers to specific questions. Contact them at 1-800-786-9199.

Dominique (Oct 19, 2004 2:45:09 PM)
I'm new to this and would like to know if I could learn to do an complete and accurate patent search on my own that would be thorough enough to depend on as being totally correct??? Thank you!

USPTO Expert (Oct 19, 2004 2:46:22 PM)
You can go to our web site or a Patent and Trademark Depository Library located throughout the United States. There are skilled librarians that can give you guidance on patent searching. To locate the library nearest you to go our Patent and Trademark Depository Library web site, http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html

ODIN (Oct 19, 2004 2:46:26 PM)
Can I file a patent online if I am outside USA? Can get ePAVE?

USPTO EXPERT
Yes, Patent Attorneys and Independent Inventors, regardless of geographic location, may file Patent Applications and follow-up on submissions to the USPTO, securely over the Internet using the Electronic Filing Software supplied by USPTO. Software may be downloaded from the USPTO web site, http://www.uspto.gov/ebc/efs/downloads/downloadndx.htm or may be requested by contacting the Patent Electronic Business Center (EBC). The EBC can be reached at 866-217-9197 (toll-free) or 703-305-3028 or 703-308-6845 or via email at ebc@uspto.gov. For Additional information regarding electronic filing please refer to the main eFiling web page, located at http://www.uspto.gov/ebc/efs/index.html

Guest (Oct 19, 2004 2:48:37 PM)
How do I apply for a patent if not online?

USPTO EXPERT
Patents may be applied for either online or by mail. If filing by mail, new applications for all types of Patents should be mailed to the following address:

U.S. Department of Commerce
Patent and Trademark Office
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

For example, in order to file a Non Provisional Utility Patent Application, please submit the following items to the address listed above:
1) Utility Patent Application Transmittal Form (Form PTO/SB/05)
http://www.uspto.gov/web/forms/sb0005.pdf

2) Executed Oath or Declaration (Form PTO/SB/01 or the like)
http://www.uspto.gov/web/forms/sb0001.pdf

3) Fee Transmittal Form (Form PTO/SB/17) and Appropriate Fee
http://www.uspto.gov/web/forms/sb0017.pdf

4) Application Data Sheet (See 37 CFR § 1.76) http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_76.htm - cfr37s1.76

5) Specification (with at least one claim)

6) Drawings (when necessary)

7) Nucleotide and/or Amino Acid Sequence Listing (when necessary)

For a more detailed explanation of the filing requirements for a Non-Provisional Utility Patent Application, please see the USPTO's website at http://www.uspto.gov/web/offices/pac/utility/utility.htm.


WINK (Oct 19, 2004 2:50:55 PM)
When a patent is accepted by the patent office for reexam, how long does it take to finish and or what is the full time process window?

USPTO Expert (Oct 19, 2004 2:52:39 PM)
All re-exams are handled with special dispatch, i.e. the examiner takes them out-of turn. It is difficult to put a time frame on it, since it depending on the complexity of the prosecution and the number of actions. We are not familiar with the term, "full time process window" Hope this answers your question.

oldscout (Oct 19, 2004 2:54:20 PM)
What is ePAVE?

USPTO Expert (Oct 19, 2004 2:54:57 PM)

ePAVE stands for Electronic Packaging and Validation Engine This is the software component for electronic filing. Go to http://www.uspto.gov/and click on "patents"

szcombi (Oct 19, 2004 2:55:17 PM)
The English language on the USPTO is worded so that only lawyers can understand. Do you have web page where everything is explained in a very simple language to common man?

USPTO Expert (Oct 19, 2004 2:55:57 PM)
Yes, you can go to the Independent Inventors Resource page for "plain language" http://www.uspto.gov/web/offices/com/iip/index.htm

Frustrated (Oct 19, 2004 2:56:55 PM)
Are you getting my posts?

USPTO Expert (Oct 19, 2004 2:58:17 PM)
Dear Frustrated, your questions was what to do if you don't feel the examiner in charge of the application is providing assistance. We recommend that you contact the examiner's supervisor for clarification and assistance. That person's title is SPE (Supervisory Patent Examiner).