What is "Prior Arts"? (0)

"Prior arts" is a phrase that is often used with claim rejections.  A prior art is an evidence which may be used to determine patentablity of claimed subject matter in an application.  The evidence can take many forms, such as paper documents, items posted online, and public disclosures.  What may be used as prior art is limited by 35 U.S.C. §102(a)(1) and 102(a)(2) and their corresponding set of exceptions under USC §102(b)(1) and 102(b)(2).

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What is patent eligible subject matter? (0)

There are boundaries on the types of subject matter that can be patented.  First, the claimed invention must be to one of the four statutory categories, i.e. process, machine, manufacture, or composition of matter.  Second, the claimed invention must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception.  Judicial exceptions are limited to abstract ideas, laws of nature, and natural phenomena.

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What is a provisional patent application? (0)

Provisional applications are not examined and do not result in a patent unless they are followed up with a non-provisional application within 12 months of the fling date of the provisional application. Provisionals have fewer requirements and lower filing costs than non-provisional applications. They allow the applicant to establish an early effective filing date for the later-filed non-provisional patent application.   Filing a provisional application also allows the term "Patent Pending" to be applied in describing and marketing the invention and in soliciting potential investors. This puts others on notice that a patent application has been filed.  If you are interested in filing a provisional application, contact us toll free at 1-844-6PATENT (1-844-672-8368) to get started.

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Can I get a discount for the USPTO filing fee? (0)

The regular USPTO filing fees can be reduced when the applicant qualifies for micro entity status.  In addition to meeting all requirements for small entity status, qualifying for micro entity status on the gross income basis requires that each inventor and applicant not be named as an inventor on more than four previously filed applications, not have had a gross income in the year prior to when the fees are paid exceeding the USPTO-reported gross income limit, and not to have made or be obligated to make an assignment, grant or conveyance of a license or other ownership interest in the application to another entity that does not meet the same gross income limit. 

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Are patent applications kept confidential by the USPTO? (0)

Generally, a pending non-provisional patent application is not made accessible to the public by the USPTO unless it is published, which can be within 18 months from the filing date, unless applicant requests not to publish. The request not to publish must certify that the invention has not been and will not be the subject of either an application filed in another country, or an application filed under a multilateral international agreement that requires publication of applications 18 months after filing.  Provisional applications are not published.

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What's the advantage of having a non-provisional patent application published? (0)

One important advantage of publication is that it provides applicant with the opportunity to obtain provisional rights that start from the application’s publication date. This can allow applicant to collect reasonable royalty from a third party that infringes a published application claim provided actual notice is given to the third party by applicant through, for example, a cease-and-desist letter, and a patent issues from the application with a substantially identical claim.

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What are the requirements of a non-provisional application? (0)

For a complete non-provisional application to be accorded a filing date, the following are required:  (1) a specification including a claim or claims; (2) an oath or declaration (may be postponed if an ADS is filed); (3) drawings when necessary; (4) a filing fee, search fee and examination fee, and (if required) an application size fee.  Note that an oath or declaration may be postponed until the application is otherwise in condition for allowance provided an ADS has been filed identifying the name of, and a mailing address for, each inventor.  The applicant must file each required oath or declaration no later than the date on which the issue fee for the patent is paid - 37 CFR 1.53(f)(3).

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What is a specification of a patent application? (0)

The specification includes a written description of invention and the manner and process of making and using invention.  The specification must be written in such clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention pertains to make and use the same.  Some of the sections of the specification includes title of the invention, cross reference to related applications, background of the invention, description of the drawings, detailed description of the invention, claims, and abstract of the disclosure.  Note that drawings are normally black and white, but color drawings and photographs can be accepted after grant of petition explaining why they are the only practical medium for illustrating the claimed invention.

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What is first to file? (0)

An inventor who wants to protect their invention in the U.S. needs to get a patent from the U.S. Patent and Trademark Office (USPTO). One of the main patent rights is the right to prevent someone else from getting a patent for the same invention.  This is because it is possible for many inventors to come up with similar ideas at the same time.  When this is the case, how does the patent office determine who invents first?  Prior to 2013, this used to be a problem, and inventors had to prove who was the first to invent.   This has changed.   Under the America Invents Act (AIA), the USPTO now uses the approach that whoever files their patents first get priority over whoever files later.  This means inventors have to race to the patent office to get their applications filed.  Don't let someone else be the first to file.

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What is the difference between a patent and a trade secret? (0)

A U.S. utility patent has a limited or term which generally starts from the date the patent is issued and lasts for 20 years counting from the date the patent application is filed with the USPTO.  The holder of the patent has exclusive right to the invention and can enforce the right against others.  In contrast, a trade secret does not need to be filed with the USPTO.  A trade secret can be protected indefinitely as long as the secret is commercially valuable.  The owner of the trade secret needs to take reasonable precautions to maintain its secrecy.

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Can I protect a mark that has not been used? (0)

If you have not used your mark in commerce yet, but have a good faith intention to do so in the future, you can file an application early to register your trademark or service mark with an intent-to-use (ITU) filing basis. Although you don’t need  to use your mark in commerce before filing an application, you must show actual use of your mark in commerce by filing documents and paying additional fees within certain time frames before your mark may register.  Filing early also provide you a higher priority when your mark is determined to be conflicting with another mark that is filed at a later date.

How does the USPTO determine the trademark application fee? (0)

The type of business that you use your trademark with has an important role in determining how much fee you have to pay for your trademark application.  The fee is determined based on the number of classification that you want your mark to be protected under.   The more classification you select, the higher the fee.  It's important to note that selecting a correct classification can protect your business against an infringer who uses a similar name or logo to compete against you in that same business.  Selecting an incorrect classification and the protection of your mark against an infringer can be reduced. 

What's the difference between state trademark and USPTO trademark? (0)

When applying for a trademark with the USPTO, the mark provides a broadest protection in the US.  If you only want to protect the mark exclusively within a particular state, apply for the trademark at the state level via the state trademark office.  When there is a conflict, the mark with the earlier first-use date has the priority.  An owner of a mark registered with a state and has an earlier first-use date can prevent people from using the mark within the border of the state, even when those people also own the same mark federally but with a later first-use date.

When can I start using the "R" or "TM" on my product to show to the public? (0)

When the trademark is registered.  When a trademark is registered federally with the United States Patent and Trademark Office (USPTO), the owner of the trademark may use the registered trademark symbol ®.  It is unlawful to use the trademark symbol R when there is no trademark registration.   When the trademark or service mark is registered within a state (and not registered federally with the USPTO), then the appropriate symbol for a trademark would be ™, whereas the appropriate symbol for a service mark would be ℠.

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