Intellectual Property Professionals
"An inventor is a man who asks 'Why?' of the universe and lets nothing
stand between the answer and his mind." John Galt, Atlas Shrugged
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What is the role of the U. S. Patent and Trademark Office (USPTO)?
(It does more, but this is enough for now). The USPTO examines patent applications to determine if an applicant is entitled to a patent, and grants the patents when he or she is so entitled. It also examines trademark applications to determine if the applicant is entitled to register his or her trademark and issues trademark registrations.

Who can help me protect my ideas?
Only attorneys or agents who are registered to practice before the USPTO are permitted to file and prosecute patent applications on behalf of others. Of course, we are affiliated with PATENT ATTORNEYS and would love to put you in touch with one. Patent and Trademark Depository Libraries (PTDLs) are a nationwide network of public, state and academic libraries that provide patent and trademark information to the public. Using the collections of a PTDL with the help of a trained librarian, you may be able to determine if someone else has already patented your invention or obtained a federal registration for a trademark on goods or services similar to that you are seeking to use (of course, patent attorneys can assist you with this also).

How do I finance and/or market my invention?
There are many sources that can be tapped to finance your patent application and your invention, such as SBA loans, lines of credit, and investors. We cover many of these options in our seminar FINANCING YOUR INVENTION. If for whatever reason you choose not to contact us, be aware that the Small Business Administration (SBA) provides excellent information about starting, planning, marketing, obtaining venture capital and financing a small business. Your local SBA may also provides training and counseling (you can find them in your yellow pages).

Do I need to hire a lawyer or agent?
Ask yourself this-would you ever hire a patent attorney if you knew your patent application was the first one he would ever work on? Would you hire a plumber to fix your pipes if it were his first job? Worse yet, would you hire the patent attorney to fix your pipes or a plumber to write a patent application? Unless you're a patent attorney, we think you see the point. The patent application process is extremely complex-if you doubt this, just attend a few of our SEMINARS. Not only is there the substance of describing your invention correctly, and in a very "legalistic" manner, there is also the tremendous hurdle of understanding USPTO procedure (do you know the difference between an OBJECTION and a REJECTION, and which one may spell your doom?). It's such a challenge that you as an inventor or manager should NOT make it your goal to learn how to write and get a patent yourself (this takes literally years of training)-your goal should rather be to understand the language of inventions so that you can identify when you should speak with a professional, and to minimize your time in front of that professional so that you will save money! Thus, our seminars are not designed to enable you to "be your own attorney," but rather to assist you in understanding what the patent office and your attorney are discussing (we chuckle at the thought that people read (start?) 500-page books on "writing your own patent application"). Most patent attorneys are experts in a field of engineering, have studied patent law in law school, and many have a PhD. They do all this before they ever write their first patent application. Most honest patent attorneys will tell you that they wrote dozens of patent applications before they "got it."

This is what the USPTO says:

The USPTO cannot assist in the preparation of patent application papers. If you are ready to apply for a patent, we strongly advise you contact a registered patent attorney or agent. Only registered attorneys and agents may help others to obtain patents.

I've been scammed, what can I do?
The USPTO does not have jurisdiction over invention promotion firms. However, the USPTO does provide a forum for complaints against invention promoters/promotion firms.
Check out the FTC, which is often pursuing invention scams.
You may wish to attend our seminar on PATENTS AND INVENTION SCAMS, which covers some ways to identify invention scams, and teaches you how to put together a free marketing report/patent search similar to the ones invention submission companies charge $8,000.

How do I register a complaint against an invention promotion firm with the USPTO?
While the USPTO does not investigate complaints or participate in any legal proceedings against invention promoters/promotion firms, the American Inventors Protection Act of 1999 does provide that the USPTO will:
(1) accept complaints filed against invention promoters/promotion firms;
(2) forward these complaints to the invention promoter, and
(3) make the complaints and responses publicly available.
The USPTO does not accept complaints submitted under this system if the complainant requests confidentiality.


What is a patent?
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.

Who can apply for a patent?
A patent may be applied for only in the name(s) of the actual inventor(s). However, a company/employer who has an employee who invents in the scope and course of employment may also be entitled to some patent rights.
What can be patented?
Utility patents are available for a 1) new (novel), 2) nonobvious and 3) useful:
· Process (including business methods)
· Machine · Article of manufacture
· Composition of matter
· Improvement of any of the above


How do I know if my invention is patentable? The best way to assess patentability is to have a patentability search done for you by a qualified professional. BEWARE that there are many scams that claim to perform a patent search for you, but provide you with very little actual searching (looking at patent databases is not enough!), or with any clear indication regarding the patentability of your idea-especially since different items will have different impacts on patentability. There are many types of patent searches and this is the most common and most practical (see out seminar on PATENT SEARCHES). It really pays to be educated about types of patent searches, and to know exactly what you will be getting from a search.
For example, the following "prior art" can prevent your idea from being patented: public publication of your idea ANYWHERE IN THE WORLD prior to your invention; public use by another prior to your invention; and one year after an offer to sale or license by you, even without a public disclosure.
These are just some examples of prior art that can cause problems.
After an application is filed, the USPTO will conduct a search as part of the official examination process.

Does the USPTO determine patent infringement?
The USPTO makes no determination about patent infringement. In fact, an improvement on an existing invention may be patentable, but it might infringe upon a prior unexpired patent (see PATENTS 101 seminar). Also, the USPTO does not participate in enforcing issued patents (see ENFORCING PATENTS seminar).

Who owns a patent?
Patents are granted to and in the name(s) of the actual inventor(s) who is considered the owner until he or she sells, transfers or assigns/licenses all or part of his or her interest, which may happen simultaneously with the application.

How long does patent protection last?
Utility patents are granted for a term of 20 years from the date of the earliest related application (patents may be the result of several related applications). This term can be extended, particularly for pharmaceutical patents which do not issue quickly due to administrative delays. All patents are subject to the payment of appropriate maintenance fees. Design patents last 14 years from the date of issue. Design patents are not subject to maintenance fees.
Note: Send us a note if your patent was filed prior to June 8, 1995 since different rules apply to you.


How can I lose patent protection?
If you fail to pay the periodic maintenance fees, your patent will "expire." In addition, other factors, such as "misuse" can cause the loss of patent protection (a patent can be held invalid by a court).

What types of patents are there?
Utility patents may be granted to anyone who invents or discovers any new, useful, and nonobvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.
Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.
Plant patents may be granted to anyone who invents or discovers AND asexually reproduces any distinct and new variety of plant. WE DO NOT TEACH ABOUT PLANT PATENTS (IN FACT VERY FEW PATENT ATTORNEYS DO), BUT WE WILL BE HAPPY TO REFER YOU TO SOMEONE WHO DOES IF YOU CONTACT US.

How do I get a patent?
Substantively, you must submit a valid patent application. Procedurally, you must correctly "prosecute" (or guide) your patent through the administrative approval process. Begin by attending some of our seminars, and plan on seeing a patent attorney very soon (if your idea is more than one year old, you should do so immediately).

Do I need a prototype?
No. You only need to be able to describe your idea in enough detail to enable another person "in your art" to make and use the invention. When does an application have to be filed? An application should be filed as soon as possible. An invention is complete when the inventor can provide a description that would be adequate for one of ordinary skill in the art to make and use the invention. By law, an application must be filed within one year of the date that the invention is known of, or used by others, or offered for sale. If your invention is still in the early developmental stage, and you are not yet ready to file an application,
the USPTO offers the Disclosure Document program. The disclosure is
not an application for a patent, and it will not provide any patent
protection for your invention. While the disclosure document is accepted as evidence of the date of conception of the invention, it will not necessarily provide the basis to establish an earlier filing date for any later filed patent application on your invention.


Are there different basic types of utility patent applications?
There are two basic types - the non-provisional and the provisional
application. Both types of applications are held in confidence, however they are very different! A patent application is examined for patentability, whereas a provisional patent is never examined (except in court). It is our opinion that a provisional patent application is misnamed, and should be more properly considered a provisional filing, since it has very few of the advantages of a traditional utility patent application. An application for a design patent must be filed as a non-provisional application.

What's the difference between provisional and non-provisional patent applications?
The non-provisional (regular utility) application establishes a filing date AND initiates the examination process. The provisional application only establishes a filing date in so far as the invention is properly disclosed in the provisional and automatically becomes abandoned after one year from filing. Thus, a provisional application simply establishes a filing date at a lower cost for a first patent application filing in the United States and allows the term "Patent Pending" to be applied to the invention. In addition, a provisional application cannot become a patent, unless a very specific process is used (in which, in almost 100% of the cases, you would have been better off with a utility application in the first place).

How important are the claims?
Claims are extremely important-they are the essence of patentability. Whether a patent will be granted is determined by the wording of the claims. After a patent issues, courts use the claims to determine validity and infringement issues.

How much does it cost to get a patent?
Fees vary depending on the type of patent application you submit, and depending on the size of your organization (if your submitting a patent that is assigned to a company). Fees may also vary according to the way you "claim" your invention.
See our seminar on PATENT BUDGETING to learn more about patent costs, attorney fees, and how long it takes to get a patent.

What about foreign patents? Is my patent valid in foreign countries?
A U.S. patent protects your invention in this country only. For more information, see our seminar on INTERNATIONAL PATENT PROTECTION. These rules are much more strict, and you need to begin your invention with the idea of foreign patent protection, if you intend to pursue foreign patent protection at all.



What is a trademark?
Trademarks identify a source of origin for a good or service. "Trademark" may refer to any of the four types of marks that can be registered with the USPTO. The two primary types of marks that can be registered with the USPTO are:
Trademarks - used to identify goods which may be natural, manufactured, or produced, and which are sold or otherwise transported/distributed. Service marks - used to identify services which are performed by one person for the benefit of another. Other marks that can be registered in the USPTO are certification and collective marks (there have some different requirements for registration). For more information, attend our seminar TRADEMARK 101.

Why should I apply for a trademark?
If you may wish to nationally reserve the right to use your name for identifying your product/service, or if you may wish to expand your business one day beyond your current geographical location, then securing a trademark could keep you from needing to re-brand your product or service. There are other reasons covered in the seminar TRADEMARKS 101.

How do I register my trademark?
Submitting a proper application with the U.S. Patent and Trademark Office (USPTO) starts the process. Merely submitting an application does not guarantee registration, and the registration process typically takes a year or more.

How much does it cost to apply for a trademark registration?
You will almost never want to file for a trademark registration without doing a search first, and we suggest contacting THOMPSON AND THOMPSON for a search report. This could cost a few hundred to a few thousand dollars, depending on your mark and the type of search requested. The minimum governmental fee for applying for registration of a trademark is $350. However, trademarks exist across many "classes" (think of "standard industrial categories"), and this may increase the fee costs substantially. Attorney fees for trademark registration will depend on the type of mark (word, logo, etc.) and the class, and should run a few hundred to one thousand dollars. After filing, attorney fees are accrued overcoming USPTO objections and rejections as typical hourly professional rates. Other fees apply, and are discussed in our TM BUDGETING TIME AND MONEY seminar.

How do I do a federal trademark search?
Due to what we call the "Tommy Hilfiger" case, you should not do a trademark search and your attorney should probably not do one either. We suggest contacting THOMPSON AND THOMPSON for a search report.

Does the USPTO determine federal trademark infringement?
No. The USPTO has no powers of enforcement concerning the use of trademarks in the marketplace-this is done only in a federal court. Thus, if the USPTO determines that there is no likelihood of confusion between the mark in the application and a previously registered trademark or another mark in a prior-pending application, then the examining attorney can approve the mark for publication.



What is a copyright?
A copyright protects artistic expressions of a creator against copying. Literary, dramatic, musical and artistic works are included within the protection of U.S. copyright law. If you want to protect a book you've written, or a song you've recorded, this is the place for you (at last!).

How long does it take to get a copyright? Copyrights are immediately earned by the creator at the moment an artistic expression is created. However, the artistic expression should be registered immediately to build several rights and privileges that come from registering a copyright, especially since registration is simple, quick, and inexpensive.

Where do I go to register my artistic expression?
Copyrights are protected in the Copyright Office-which is a department of the Library of Congress.
Learn more about copyrights by attending COPYRIGHT 101.

What do the terms "patent pending" and "patent applied for" mean? They are used to inform the public that an application for patent on that article is on file in the Patent and Trademark Office. Since this places certain burdens on an infringer with knowledge, the law imposes a fine on those who use these terms falsely to deceive the public.

Is there any danger that the Patent and Trademark Office will give others information contained in my application while it is pending?
Even though the patent office says "No", take heed. Supposedly, all patent applications are maintained in the strictest confidence until the patent is issued. However, if you accidentally (or intentionally) let the file number, name and filing date fall into the hands of an unscrupulous competitor, they can (illegally) fake your identity and obtain a copy of the file, or fake your identity and speak to the examiner regarding the status of your application. Keep your file number, actual patent name, and filing date completely secret. After the patent is issued, however, the Office file containing the application and all correspondence leading up to issuance of the patent is made available in the Files Information Unit for inspection by anyone and copies of these files may be purchased from the Office.


May I write to the Patent and Trademark Office directly about my application after it is filed?
The USPTO will NOT comment about the content of your application other than through the specific "office actions" that are a part of the patent examination process. The USPTO will answer an applicant's inquiries as to the status of the application, and inform you whether your application has been rejected, allowed, or is awaiting action. However, if you have a patent attorney or agent of record in the application file the USPTO will not correspond with both you and the attorney/agent concerning the merits of your application. All comments concerning your application should be forwarded through your attorney or agent.

Is it necessary to go to the Patent and Trademark Office to transact business concerning patent matters?
Not at all. Most business with the USPTO is conducted by mail and phone. Live interviews regarding pending applications can be arranged with examiners if necessary (and they love the attention!).

If two or more persons work together on an invention, to whom will the patent be granted?
If each had a share in the ideas forming the invention, they are "joint inventors" (also called "co-inventors") and a patent will be issued to them jointly. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone

If one person furnishes all of the ideas to make an invention and another employs him or furnishes the money for building and testing the invention, should the patent application be filed by them jointly?
No. The application must be signed by the true inventor, and filed in the Patent and Trademark Office, in only the inventor's name. This is the person who furnishes the ideas, not the employer or the person who furnishes the money. This is a common misconception we address in the FOR MANAGERS ONLY seminar.


Does the Patent and Trademark Office control the fees charged by patent attorneys and agents for their services? No. This is a matter between you and your patent attorney or agent in which the Office takes no part. To avoid misunderstanding you may wish to ask for estimate charges for: (a) the search (b) preparation of the patent application, and (c) Patent and Trademark Office prosecution. This is addressed in our BUDGET STRATEGIES seminar.

Will the Patent and Trademark Office advise me as to whether a certain patent promotion organization is reliable and trustworthy?
No. The Office has no control over such organizations. It is advisable, however, to check on the reputation of invention promotion firms before making any commitments. It is suggested that you obtain this information from the Better Business Bureau of the city in which the organization is located, or from the bureau of commerce and industry or bureau of consumer affairs of the state in which the organization has its place of business (unfortunately, these invention promotion firms are suing persons who file a complaint to the BBB, and so this may only be of limited value). You may also undertake to make sure that you are dealing with reliable people by asking your own patent attorney or agent or by asking others who may know them. Learn more by sitting in our workshop on INVENTION SCAMS.

Are there any organizations in my area which can tell me how and where I may be able to obtain assistance in developing and marketing my invention? Yes. In your own or neighboring communities you may inquire of such organizations as chambers of commerce, and banks. Many communities have locally financed industrial development organizations which can help you locate manufacturers and individuals who might be interested in promoting your idea. Other great resources are the local Small Business Administration, local Universities, and organizations such as the MIT Enterprise Forum, and INVENTOR'S DIGEST.

Can the Patent and Trademark Office assist me in the developing and marketing of my patent?
The USPTO cannot offer advise on business transactions or arrangements that are involved in the development and marketing of an invention. However, the Office will publish, at the request of a patent owner, a notice in the Official Gazette that the patent is available for licensing or sale. The fee for this is $25. (note: this service is often what invention scams charge you hundreds of dollars for, and rely on the publication to appear legitimate-learn more about these tricks at our seminar on INVENTION SCAMS).

We have provided information and links to sites because we believe that the information provided may be of interest to our users. We do not necessarily endorse the views expressed or the facts presented on these sites. In addition, we do not endorse any commercial products that may be advertised or available on these sites.

Thrasher Associates | | Tel:214-502-5923 | Fax:214-291-5991

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