This is a transcript of the on-line chat held on Thursday, May 21, 2009. This final version is an edited version of the actual transcript. Where you see “edited answer” below, the original on-line chat answer has been modified to ensure completeness and accuracy of the answers originally provided by USPTO staff.
Michael: I work for Clear Logic and can’t figure out whether money is owed for Patent 6311316-Is money due now
USPTO 4: Michael – Maintenance fees are due for all utility patents at the 3rd, 7th and 11th anniversary. To see if your maintenance fees is due go to https://ramps.uspto.gov/eram/patentMaintFees.do. In order to make a payment you will need the application number and the patent number.
Guest: If I apply on line for a patent do my chances of getting a patent get deminished?
USPTO 4: Guest, Whether you apply on-line or submit a paper application does not effect whether or not you will receive a patent. However, we encourage you to file on-line, since you do get a reduction in the filing fees.
Tibet: I would like to add an example to an exiting patent application at pre-final status to make use and distinction of invention by adding two examples of use in spec section witout affecting the claim structure. Would this be okay while declaring no new matter or would this be considered new matter? Thank you
USPTO 1: EDITED ANSWER Tibet – Unless there is clear support for the subject matter that you want to add at this time as examples in the original disclosure, the added subject matter would be considered new matter. See 35 U.S.C. 132(a).
Joel: Once the trademark is in process,how long do I have to wait to tell other companies with the same name to stop.
USPTO 6: Once you use your trademark, you have some rights against others who used it later than you. However, to have the benefits of the US Trademark Act, you must wait until your trademark is registered by the USPTO. While your application is in the examination process, you have no further rights than you had based on just your use of the mark.
BJ Crawford: how do I get started to patten my invention?
USPTO 1: Crawford – Go the USPTO homepage www.uspto.gov, at the top of the webpage go to Guides Tools and Manuals and there you will find general information concerning patents and filing utility and design patents.
Meglr78: Once I’ve submitted my provisional application when can I use the term “patent pending”?
USPTO 9: immediately
Steve: yes, this chat is great
USPTO 4: Steve – Thanks
Texas747: Thank you for this chat. It has been helpful.
USPTO 6: You’re welcome. Glad to have been of help.
Texas747: On my “Mirage” question, does that require two applications and fees if we plan to use both names like in my example?
USPTO 6: Yes, it would be two separate applications and each would have appropriate fees paid.
David: I did not see the answer to my question about how long it will take to get a patent?
USPTO 4: David – Different technologies have different backlogs. In general it can be as little as 18 months or in excess of 36 months.
Msawyer: If we are doing a computer script that allows a user to control a camera through another camera. We this be a design or utility patent?
USPTO 4: Msawyer – You would want to file a utility application.
James: I am a colleg senior, I have a 12 step utility procces that I would like to patent. Will filing be overwhelming and too much work? How much work will actually be needed to put in the work?
USPTO 22: Our Inventor Resource page is a great place to start the learning process. Lots of information and how-to guides. http://www.uspto.gov/web/offices/com/iip/index.htm
Mac: what is Private Pair?
USPTO 22: EDITED ANSWER Private PAIR is the Patent Application Information Retrieval system that displays information regarding patent application status. Private PAIR provides secure access for customers who want to view the status information of their own patent applications electronically via the Internet. Please see the following for more info: http://www.uspto.gov/ebc/pair_help.html
Texas747: Do you know if you would need two trademarks if for instance you had the name: The Mirage Hotel, but people also called it just “The Mirage.” Does this type of thing require two trademarks?
USPTO 6: It depends on whether YOU are using it in those two forms, not how people are using it when they speak of your business. If you are using the phrase in both forms as a trademark, you may be able to obtain registration for both forms – if you want both forms registered.
Mikell: What happens to provisional patents which are not carried forward to a nonprovisional patent?
USPTO 9: EDITED ANSWER A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter. Note that since a provisional application is not examined, if you want a patent, you will have to file a non-provisional application within 12 months from the filing date of the provisional application. The non-provisional application may claim the benefit of the filing date of the provisional application under 35 U.S.C. 119(e).
Steve: Yes, the business name will be used as a trademark. So should I secure a patent or a copywrite if the business name is being used as a trademark?
USPTO 6: If your business name is used as a trademark, you may file an application to register it as a trademark at the USPTO.
Laura: Still unanswered– If you sell your patent pending product to a manufacturer in the United States, can you still get a patent on your product in China or Europe?
USPTO 8: Laura, the filing rules (and fees) are specific to each country. You will have to address your question to each country in which you seek protection. You might also want to consult an attorney as your assignment may affect the questions to ask of each country.
Dave 6: how much can I trust the 1st action prediction on private pair? I had an application that said 6 months and then 20 days later the 1st action arrived in my mail. I had been planning to revise the claims prior to the action.
USPTO 4: Dave 6 – Private PAIR makes the prediction based on current backlogs. You still have the option to file an amendment to the claims even after the first Office Action.
Rodimus166 2: Do i need a customer number before I begin?
USPTO 1: Rodimus166 – No, you can file without a customer number.
james: Is there a website that goes step by step with you through the utility app?
USPTO 4: James – We have a Guide to filing a Patent Application at http://www.uspto.gov/web/offices/pac/utility/utility.htm and we also have Computer Based Training on the Inventors Resource Page.
Najj: We are starting a cothing company and wanted to have a logo for our company. Where do we go to find out if the logo is taken or if we can use it?
USPTO 6: You can search the logo to see if someone else has applied for or registered it as a trademark. That search can be done at the USPTO website in the trademark search system (TESS). Please keep in mind that this is a search of USPTO filings only – it will not provide information as to whether the mark is being used by someone else who has not registered or filed to register it at the USPTO.
Tanya: Are drawings for provisional patents uploadable via PDF?
USPTO 9: Yes.
Steve: I am about to startup a business that handles a speific type of photography. Is there a way to patent or copywrite the name?
USPTO 6: If the name of your business is being used as a trademark, it may be registered with the US Patent and Trademark Office. However, we cannot advise you as to whether your business name is being used in such a way to support its registration as a trademark. You must get advice from your own trademark counsel concerning that
Howard Hunt: Can the provisional patent be filed on line? Will original drawings then have to be sent to USPTO?
USPTO 9: EDITED ANSWER Yes you may file a provisional patent application online. If drawings are necessary to understand the invention described in the provisional application, drawings must be filed with the provisional application. If drawings are necessary but not filed with the filing of the provisional application, the provisional application will not be entitled to a filing date.
Jim L: My understanding is that you have one year to file a patent application upon first disclosure of your idea (provided it does not get into the public domain). If my understanding is correct, how does the filing of a provisional patent impact that timing?
USPTO 9: EDITED ANSWER An applicant may disclose his or her own work no more than one year before the filing of his or her patent application (so-called “one year grace period” – see 35 U.S.C. 102(b)). If the disclosure is more than one year from the filing of a patent application, the applicant is barred from obtaining a patent under 35 U.S.C. 102(b). If you file a provisional application, then that one year grace period is measured from the filing date of the provisional application. That is, the applicant may disclose his or her own work no more than one year before the filing date of the provisional application. In addition, the filing of a provisional application will give you a year to file a non-provisional application which may claim the benefit of the filing date of the provisional application under 35 U.S.C. 119(e). That non-provisional application will be examined by the Office.
Alex: what about these ads for “Invent Tech” and other things
USPTO 4: EDITED ANSWER Alex – We cannot comment about any particular company but strongly suggest you review the complaints posted on our web site at http://www.uspto.gov/web/offices/com/iip/complaints.htm
Laura: do you have any information on United Patent Research
USPTO 4: Laura – please see the answer previously given to Alex
Tibet: My question “WHAT IS IDS” is not answered by the response.
USPTO 1: EDITED ANSWER IDS stands for information disclosure statement. Under 37 CFR 1.56, each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to the patentability of each pending claim in the application. IDS is a way for applicant to disclose such material information to the Office. 37 CFR 1.97 and 1.98 are rules governing the timing and content of the IDS respectively.
Tibet: There was no response for this question: I have a question about a 103 Claim Rejection. Examiner quoting three references, where two have siginificantly different and incompatibe architecture as described in their spec and claims. Examiner states mere apperance of two words in a reference ”vector” and ”mask” indicates the two could be combined regardless of the different architecters. (How) is it possible for examiner to state it would be obvious to a skilled person by just reading these two words and applying them differently than what is taught by these two references? Examiner states ”the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference, … rather the is what the combined teachings of the references would have suggested to those of ordinary skill in the art. But it boils down to two words ”vector” and ”masK. By jsut reading these two words, even though they are applied differently — what is the quantif
USPTO: EDITED ANSWER Tibet -If you disagree with the examiner’s rejection, 37 CFR 1.111(b) states that “[i]n order to be entitled to reconsideration or further examination, the applicant…must reply to the Office action. The reply by the applicant…must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references…A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the reference does not comply with the requirements of this section.” mike: what is Surcharge – Late provisional filing fee or cover sheet ?
USPTO 4: Mike – If you do not submit a complete application at the time of filing the Office will send you a notice and requesting the missing items and require a surcharge.
Dave 5: So a Patent Pending could actually put an inventor at risk because someone could review his filing and ‘Scoop’ his idea with another filing?
USPTO 4: EDITED ANSWER Dave 5 – An inventor that has filed a patent application may use the phrase “patent pending” on his or her product. Any member of the public can review the file of an application once that application is published. See 35 U.S.C. 122. Regarding your concern about someone “scooping” your idea with another filing after that person sees the phrase “patent pending” on your product, keep in mind that only an “inventor” may file an application or may authorize an application to be filed. See 35 U.S.C. 111(a)(1). A person who has not invented may not file an application for an invention which that person has taken from someone else.
Alex: what is my first step to getting my design patent?
USPTO 1: Go the USPTO homepage www.uspto.gov, at the top of the webpage go to Guides Tools and Manuals and there you will find general information concerning patents and filing utility and design patents.
David: How much protection does a patent pending have over a regular patent?
USPTO 4: EDITED ANSWER The marking of an article as patented when it is not in fact patented is against the law and subjects the offender to a penalty. See 35 U.S.C. 292(a). Some persons mark articles sold with the terms “Patent Applied For” or “Patent Pending.” These phrases have no legal effect, but only give information that an application for patent has been filed in the USPTO. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited. A patent is a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.
Allen: is there anyway to check the status of a patnet? ie active, expired, inactive, etc……
USPTO 9: EDITED ANSWER You can call the Inventors Assistance Center at 1-800-PTO-9199 or you can check the status via our Public PAIR system on the web site.
Dave 5: does a provisional patent provide any IP protection or other benefits?
USPTO 9: it can establish an earlier filing date for a non-provisional application.
Rodimus166: What are the first steps in getting a provisional application?
USPTO 9: EDITED ANSWER The requirements for a provisional application are a provisional application cover sheet, PTO/SB/16, a written description that complies with 35 USC 112 first paragraph, drawings if necessary for the understanding and the current fee (which can be found at http://www.uspto.gov/web/offices/pac/provapp.htm). Claims and an oath or declaration are not required for a provisional application. However, a provisional application is not examined. You will need to file a non-provisional application within one year from the filing of the provisional application if you want a patent. The non-provisional application may claim the benefit of the filing date of the provisional application under 35 U.S.C. 119(e).
Curious applicant 2: My understanding is that it is possible to file petition for extension of time, and the corresponding fee for it, instead of filing Appeal Brief on due date or before due date for the Appeal Brief in ex parte appeal, without my patent application to consequentially become deemed abandoned for failure to reply within time period. Is my aforementioned understanding correct ?
USPTO 4: EDITED ANSWER curious applicant 2 – From your question, you are currently prosecuting an application and are appealing the decision of the examiner to the Board of Patent Appeals and Interferences. Upon the filing of the Notice of Appeal, a two month time period is set for the filing of applicant’s brief. If the brief is not filed within the two month period, an extension of time may be requested to make the filing of applicant’s brief timely. An applicant may request up to a five month extension of the original two month period in which to file the brief. Thus, applicant can get a total of seven months from the filing of the Notice of Appeal to filing of the brief. The request for extension of time must be filed prior to the expiration of the period being extended. The request must be a written request specifying the amount of time requested and include payment of the extension of time fee. Please use the attached link to see the current fees. http://www.uspto.gov/web/offices/ac/qs/ope/fee2009january01_2009may01.htm
One final note on this issue, the extensions of time requested here are for a nonstatutory period. Simply put, this is a time period that is not governed by statute but one that is set by rule. Hence, the maximum extendable period for filing the brief is seven months and not six as it would be for a statutory period, for example, the maximum extendable period for response to an Office Action is six months.
Fran White: What is the difference between a cancelled and a withdrawn claim?
USPTO 22: EDITED ANSWER Withdrawn claims are generally the result of a restriction requirement. Claims directed to the non-elected invention(s) are withdrawn from consideration, but may later be rejoined for examination, if appropriate (see MPEP 821.04). Cancelled claims are permanently canceled.
Rozzy: Can you please answer this for me?: What is the difference between a provisional and a nonprovisional patent?
USPTO 9: Provisional applications are not examined. Once a provisional application is filed applicant may use the term “patent pending”. Within one year of the filing date of the provisional application, the applicant must file a non-provisional application which claims the benefit of the provisional application and the non-provisional application will be examined by the Office.
Rodimus166: How do i start getting a provisional patent?
USPTO 1: The requirements for a provisional application are a provisional application cover sheet, PTO/SB/16, a written description that complies with 35 USC 112 first paragraph, drawings if necessary for the understanding and the current fee (which can be found at http://www.uspto.gov/web/offices/pac/provapp.htm)
Tibet: Examiner stated: “Applicant should have provided this reference as part of IDS”. What is IDS? Is it allowed to incorporate matter from a co-pending patent application into the patent without being considered new matter. Examiner stated: the subject matter would have to be incorporated into the specification explicitly, and it is highly recommended by Examiner the if Applicant is referring to his own invention, that he at least at some point can point to his own specification and drawings and another application, which strongly raises the possibility of new matter.” So does this mean I should incorporate matter from one of my other co-pending and similarly dated applications without considering it new matter for completeness in a given application?
USPTO 22: We recommend that you contact the Examiner to clarify his/her comments. For information concerning IDS’s, see MPEP 609+.
Rozzy: If I need to make a modification to my nonprovisional patent how do I do that and is there an extra cost?
USPTO 4: Rozzy-Since this is case specific question, we recommend you contact our Inventors Assistance Center at 1-800-786-9199.
Eric livers: Does a Trademark cover all of the following: Business name, product name, business and product logos, website domain names, product concept, etc ?
USPTO 6: The matter presented for registration must function as a trademark – that is, it must identify the goods and services of the provider and distinguish it from those of others. Some of your examples may be problematic to establish that use. As representatives of the USPTO, we cannot provide legal advice. You should consult with your own trademark counsel to determine which of your examples are being used in a way that would support use as a trademark for purposes of registration under the Federal Trademark Act.
Mac: the difference between the Attorney’s and Agents on this list are?
USPTO 4: Mac – Both agents and attorneys are required to be registered to practice before the U.S. Patent and Trademark Office. However, only attorneys may represent you in a court of law.
John T: I wish to Trademark a name but actually 2 names a company name and a service name under the company. (Example of this: Nabisco/ Keebler Cookies.) How do I go about it and what does is usually cost.
USPTO 6: If the marks are used together and create a single commercial impression they may be included in a single application. If they create separate commercial impressions, they may be in two separate applications. The specific fees apply to each application. An answer to an earlier question provided a link to the fee schedule at the USPTO website. Go to that link to find out about the fees associated with trademark registration.
Dave 6: An on-line MPEP is provided as part of the computer system in the room for the agent exam registration. Is a copy of this same on-line MPEP available (to allow practice prior to taking the exam.)?
USPTO 22: An online version of the MPEP can be found here. http://www.uspto.gov/web/offices/pac/mpep/mpep.htm
Dave 5: Can you provide advice on how to select a patent attorney?
USPTO 1: The USPTO maintains a roster of registered patent attorneys/agent, go to http://www.uspto.gov. The roster is searchable by geographical location. https://oedci.uspto.gov/OEDCI
MDL: I understand that before a trademark is published on the Official Gazette, the examining attorney conducts his/her own search to ensure that there are no conflicts. In a case where a mark is opposed after publication, do the USPTO decision makers assign any wieght to the fact that the examining attorney determined that no conflicts exist?
USPTO 6: The determination made at the Trademark Trial and Appeal Board in an opposition is based on the arguments and evidence presented by the two parties at issue. The decision by the Examining Attorney may be referenced but the arguments and evidence presented by the parties will be of greatest significance to the TTAB.
Bud: does it cost anything?
USPTO 1: REGARDING ALL FEE QUESTIONS, go to the USPTO homepage www.uspto.gov, click on the link for patents, there is a drop down menu – click on number 8 fees, click on the link that is “Current FY2009 Fee Schedule “ and there you will find information on any type of fees.
Texas747: Is there a difference in a trademark TM and a registered trademark, the R within the circle, and does it protect you internationally?
USPTO 6: A TM merely indicates that the user believes the designated notation – words or design – is being used as a trademark. It has no legal significant. The circle R may only be used when the mark is actually registered in the USPTO. Trademark registration is good only in the country of registration. A US registration does not have affect in any other country.
David: I renewed a trademark with $100 and found out it failed and needed a memo that the trademark was in use and another $100… Confused me…
USPTO 6: All instructions for filing continuing maintenance documents are available at the USPTO website. The forms are available electronically and the required fees are clearly indicated. Every 10 years, affidavits under Sections 8 and 9 must be filed. They may be filed individually or you may use the online form that combines the two required forms in order to avoid errors like this.
Dcomeau: I have a disgin patent and what to know when it expires
USPTO 4: dcomeau – Design patents expire 14 years from date of issue and are not renewable.
Inventor: For security reasons I want to avoid making available to public any information about my invention. Could I still patent my invention?
USPTO 22: Applicants may file a non-publication request with their application. See 35 USC 122 for more details.
Humberto Castro: HOLA PUEDE ESCRIBIR ESPAÑOL
USPTO 1: Lo siento, pero no hay nadie aqui que puede hablar en espanol.
MDL: Thank you, USPTO 6. Just to make sure I’m understanding your response. Are you saying that I gain nothing by applying for the logo image and text in 2 separate applications, rather than in one? It seems as though the USPTO will prevent others from applying for text contained in an already registered stylized mark (or logo) any time the text is similar, even if the earlier registration contains many other elements. Is that right?
USPTO 6: You can file it in one application or, if the design is considered to have a separate commercial impression from the mark, you can file an application for the wording and the design in two separate applications. But that decision is up to you – we cannot give you advice as to whether you should file one application for the word and design combined or two applications – one for the wording and one for the design element.
Kim: is a patent search necessary?
USPTO 22: A search by the applicant is not required though the applicant has a duty to disclose to the Office all information known to the person to be material to patentability. A thorough search prior to filing though may help you focus the drafting of your claims to aid in finding patentable subject matter at the earliest time.
David: Is it recommended to get a Provisional patent first then finalize it?
USPTO 4: David It is not required for you to file a provisional application. For additional information on provisional applications please see http://www.uspto.gov/web/offices/com/iip/transcriptsn_s.htm
HEAROE: To get a worldwide patent do I need to pay a fee to each country I want the patent in?
USPTO 22: A US Patent is only enforceable in the United States. If you wish to have patent coverage in another country, you should also file there.
Jim L: I noticed that you are in the process of updating the guidelines for utility patents pertaining to business methods. Can you provide some guidance about how the new criteria may be expected to change given recent rulings? What should I do if I would like to pursue a business method patent during this interim time? Are there guidelines that I can rely upon? Thanks.
USPTO 1: Jim L –The Office is in the process of updating the guidelines set forth in MPEP 2106 in view of recent Federal Circuit decisions. Once the guidelines are finalized, the Office will make them available to the public. Currently our examiners are following the test set forth by the Federal Circuit in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)(en banc).
J Weis: Is it uncommon to submit both Design and Utility patent request on a single idea? Thanks from Deep in the Heart of Texas
USPTO 8: EDITED ANSWER J Weis, it is not uncommon at all, as design and utility patents protect different aspects of your invention. A board game, for example, often has both a design application and a utility application filed as well as an application to the Copyright Office for copyright protection. And a Trademark is frequently applied for as well.
Texas747: Even though all this information is on-line here, do we probably need an attorney to file this stuff or can the average person understand and do it? For a trademark.
USPTO 6: There is no requirement to have an attorney. We have tried to make the application process as clear as possible so you can apply without using the services of an attorney. You might want to consider retaining an attorney if you get a response from the USPTO that seems to be complicated for you to answer on your own. But you should be able to file your application on your own using the online TEAS or TEAS Plus form.
Howard Hunt: If drawings are not complete (or we determine to add other drawings) on a Provisional application, can the drawings be amended or added to or completely replaced for the Non-Provisional application?
USPTO 22: EDITED ANSWER Yes, anything new may be added to the nonprovisional after filing the provisional, but any matter in the non-provisional application which does not have support in the provisional application will not receive the benefit of the filing date of the provisional application under 35 U.S.C. 119(e).
Bud: how old do you need to be to sign a patten?
USPTO 9: There is no age limit for signing an oath or declaration for a patent application.
MDL: 1) I have a logo that contains text. If I file the logo, as one stylized mark, do I get protection for the text in the image. That is, if another user attempts to register my text mark on its own (without the other graphic elements), will the USPTO allow for its registration. And if not, do I lose anything, or dilute the mark, by filing the text and image together in an attempt to save on an additional filing?
USPTO 6: While marks are considered in their entirety when determining likelihood of confusion, the word portion of a mark that contains wording and design is often considered the dominant element. The standard likelihood of confusion analysis will be used – similarity of the marks and relatedness of the goods or services.
Howard Hunt: What are required elements to file the provisional Utility Patent? (please give a concise list – there are several lists that differ on the internet and I cannot find anything that is definitive or that I am confident is up-to date)
USPTO 4: EDITED ANSWER Howard Hunt – Please see the answer to BonnieB 37 CFR 1.51(c) sets forth the required elements for a provisional application. A complete provisional application comprises: (1) a cover sheet identifying: (i) the application as a provisional application, (ii) the name or names of the inventor(s), (iii) the residence of each named inventor, (iv) the title of the invention, (v) the name and registration number of the attorney or agent (if applicable), (vi) the docket number used by the person filing the application to identify the application (if applicable), (vii) the correspondence address, and (viii) the name of the U.S. government agency and government contract number (if the invention was made by an agency of the U.S. government or under a contract with an agency of the U.S. government); (2) a specification as prescribed by the first paragraph of 35 U.S.C. 112; (3) drawings, when necessary; and (4) the prescribed filing fee and application size fee. See also MPEP 201.04(b) and 601.01(b).
Mac: At any time, can up-front fee’s be paid at the “back end”?
USPTO 1: No.
BJ Crawford: Can I research my own patten and file an application on my own?
USPTO 22: Yes, with some homework and determination you can very much perform your own patent search and file a patent application. See the following link for a good place to start learning how to search: http://www.uspto.gov/main/profiles/acadres.htm
Jen Andrew: How much does it cost to trademark a small business name?
USPTO 6: Someone else asked about fees and the answer included a link to the fee schedule at the USPTO website. Both patent and trademark fees are at that link.
BonnieB: When submitting a provisional patent, is it beneficial to include background/introduction and claims in addition to the description?
USPTO 4: Bonnie B – You should provide a complete description of what your invention is. You may also submit claims, however, there is no requirement that you include claims. For additional information please go to http://www.uspto.gov/web/offices/com/iip/transcriptsn_s.htm#prov
Mac: What is the 1st step in pursuing an idea I have for an invention?
USPTO 1: Mac – www.uspto.gov , click on inventor’s support, click on inventor resources and under patents click on “How do I know my invention is patentable.” Here you will find pertinent information that will direct you.
Curious applicant: According to the USPTO, “Review of the examiner’s decision that the declaration under 37 CFR 1.132 does not overcome a rejection is by appeal to the Board.” 37 CFR § 1.132 Practice, Jean Witz, Quality Assurance Specialist, Page 19. However, “Reference to unentered evidence is not permitted in the brief.” 37 C.F.R. § 41.37 (c)(1) (ix); “A brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence.” 37 C.F.R. § 41.37 (2). Please inform me whether it is possible to seek, by appeal to the Board of Patent Appeals and Interferences ( “BPAI” herein ), review of the examiner’s decision that “The affidavit or other evidence filed after a final action, but before or on the date of filing a Notice of Appeal will not be entered because applicant failed to provide a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. See 37 CFR 1.116(e).” Furthermore, is there any other way
USPTO 4: EDITED ANSWER Curious applicant: In responding to an Office Action, rebuttal evidence may be submitted in the form of an affidavit or declaration under 37 CFR 1.132. There are restrictions on when such evidence may be submitted to the examiner. If the evidence is being submitted after a final office action then the evidence must be such that it would overcome all of the rejections in the application and applicant must put forth good and sufficient reasons why the evidence was not presented earlier. That being the case, if the examiner refuses to enter the evidence it will not be considered by the Board of Patent Appeals and Interferences since the entry of the evidence relates to a procedural matter. Objections to procedural issues are made by way of petition to the Director of the U.S. Patent and Trademark Office. In this instance, the petition should be filed within two months of the action complained of; otherwise, the petition may be dismissed as untimely.
Heather: After having an idea for an invention, what is the next best step?
USPTO 8: Heather, the Patent and Trademark Depository Library Program (PTDLP), administered by the U.S. Patent and Trademark Office, is often a next best step. They are a nationwide network of university, public, state, and special research libraries which receive and maintain collections of patent materials for public use. The PTDL representatives there are expertly trained and can provide additional guidance to you. You can find a PTDL near you at: http://www.uspto.gov/go/ptdl/ptdlib_1.html
Roni: Can I get an answer please
USPTO 8: Roni, see the answer for Heather above.
Tina: can something as simple and universal as a comb design or a hat be already patented?
USPTO 9: EDITED ANSWER Yes, You may file a patent application on something as simple as a comb or hat. If you wish to have a patent on how something looks or its appearance then you would file for an application for a design patent. If the invention is directed to how a product, an apparatus or device functions, or how it is made or is used then you would file for an application for a utility patent.
BJ Crawford: What is the application fee to get started?
USPTO 1: Crawford – Go to the USPTO homepage www.uspto.gov, click on the link for patents, there is a drop down menu – click on number 8 fees, click on the link that is “Current FY2009 Fee Schedule“ and there you will find information on any type of fees.
CAROLYN: CAN YOU PROVIDE A LINK TO FIND OUT HOW TO SELL MY PATENT? I AM ON THE SITE AND CAN’T SEE IT
USPTO Carolyn – The only mechanism to list your patent for sale through the US Patent and Trademark Office is through the Official Gazette, please see http://www.uspto.gov/web/patents/pubs/pubsservices.htm#lpsl
Meglr78: Do you recommend consulting an attorney when filling out a provisional application? Are there any benefits to using an attorney versus doing it yourself?
USPTO: Meglr78 – There are no requirements that you must use a patent attorney/agent. Filing a patent application is a legal process and can be a challenge to the novice inventor. However, if you do your homework and are willing to spend the time to familiarize yourself with the rules, there is nothing that prohibits you from filing your own application.
Mikell: Even if a provisional patent is considered “abandoned” what happens to the documents. Are they stored by the patent office? For instance, could they be resurrected to prove that another person who filed after the date of the provisional filing was not the true inventor?
USPTO: Mikell – If a provisional application is not claimed as priority in a later issued non-provisional application then once the provisional application expires (1 year from filing) then it’s as if the provisional application never existed.
Praveen: hey, i am a citizen of india want to file my patent right here from India. Can you guide me for online filing please
USPTO: Praveen – We have extensive information available on our web site to assist with filing electronically, please go to http://www.uspto.gov/ebc/efs_help.html
Laura: thank you
USPTO 4: To all that participated in today’s chat. Today was the first chat we held with new software, and were able to answer more questions than in the past. If you would like to provide any feedback about the chat please email email@example.com
Last Modified: December 5th, 2009