frequently asked questions
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Q: Do you apply a patent marking
to your marketing collateral for a patented product? If so, what form should
A: Presuming that "marketing
collateral" means promotional material, the marking is simply the patent
number, i.e., "US Patent No. _______". Such patent marking should be placed
on the product, and placing it on promotional material is also recommended.
Q: A company has been manufacturing a product that was once patented
in the 50's. This company has tried to acquire exclusive rights to
manufacture the product through trade dress protection, or registering the
image of the product. Is this "through the back door" approach effective or
legal, and can I start manufacturing the product itself?
A: Yes and no. Presuming that the
expired 1950's patent was a utility patent, the design/appearance of the
product as depicted in the patent drawings went into the public domain when
the patent issued and the functional subject matter disclosed in the patent
went into the public domain when the patent expired. (I am presuming in this
answer that by "registering" you mean a trademark registration on the
product's design or a part of it.) Neither trademark or trade dress
protection has a "new" requirement equivalent to patent protection. To be
protectable as a trademark, the subject (words, graphics, product
appearance) must be capable of "flagging" to the relevant consumer
population that it is acting as a brand name, signaling the source of the
product. There is therefore a potential that this company may succeed in
acquiring exclusive rights in the product's appearance. (Calling the odds on
success would require an evaluation well outside of FAQS.) Anyone can
manufacture a product that has the functional features disclosed in the
expired patent as long as they do not infringe another's trademark or trade
dress rights in the product's appearance. I therefore strongly recommend an
assessment of the situation by an experienced patent attorney before you
proceed in any manner. This is not for amateurs; this is not a diy
Q: If a provisional application is expired, may
a normal patent on the same subject and even with the same detailed
description be applied to the same USPTO?
A: Yes, both a normal
(non-provisional), and even another provisional, application can be filed. Because
an expired provisional application is not available to the public, it is not
prior art. You have, however, lost the priority-date benefit of the first
Q: I thought of an amazing slogan for a MLM company with over 600,000
distributors. Would I be able to patent and license it if it's not my
company? Would I be able to market to the distributors?
A: Unlikely. Slogans are protectible, if at all, under trademark law,
and they are not in any way subject to patent protection. Trademark
protection is acquired only through legitimate commercial use as a trademark
by the person/entity seeking proprietary rights.
Q: Someone filed a patent application on my trade secret!
A: Trade secrets do not protect
against third-party invention.
Q: Is an expired provisional patent in the public domain?
A: No. A provisional patent
application is a confidential USPTO document not available to the
public. It's content does not enter the public domain before or after
If, however, a
non-provisional application claiming priority from the provisional
application is filed, and if then it is published and/or a patent is issued,
the entire chain of applications is opened to the public.
Q: Can I re-patent an idea if the patent is expired?
A: No. To be patentable, the
idea must be new (among other conditions). An idea which is described
in an expired patent (or in a book, magazine, ...) is known, and therefore
it cannot meet the standard of being new. (Inventorship is also a
™ symbol and the
Q: What is the difference between the
™ symbol is used on trademarks that are not
federally registered and the ® symbol is used on
trademarks that are federally registered.
Q: Are my trade secrets destroyed if I file a provisional?
A: No. Filing a provisional
patent application does not destroy trade secrets. Subsequent events
(all within your control) can, however, destroy the trade secrets.
Q: Is an expired patent prior art?
A: Yes. Everything disclosed
in a patent is prior art, and the eventual expiration of the protection it
provides its owner has no impact on its prior art status.
Q: What is "patentable weight."
A: A feature or characteristic
that has patentable weight is capable (or possibly capable), if included in
the claims, of raising a claim from a not-allowable to an allowable status.
Q: Can my patent application be
A: No, if you mean correction to
cure a defect (error, omission, etc.) in the description, because no new
matter can be added. A continuation-in-part (CIP) application with a
corrected description can be filed, but the new matter therein has a
priority date only as of the CIP filing date.
Q: Can I get an extension on my provisional?
Q: Someone has stolen my ideas by copying my business format after
visiting visiting my website. Can I stop them?
A: No. Commercial exposure
of your business format puts it into the public domain, freely available for
use by others (unless protected by a patent).
Q: Is a patent enforceable during the time it is in a USPTO
Q: When does patent infringement start?
A: Patent infringement can occur
only during the term of a patent. The possibility of patent
infringement therefore does not arise until a patent has issued. (A
patent application is just an application, not a patent, and therefore
cannot be infringed.)
Q: What is the current USPTO backlog in processing patent
A: According to the USPTO, the
current delay between filing and prosecution (patent examiner examination of
an application and issuance of the first Office Action) is between one and
more on patent application examination
Q: Can I get an extension on my provisional patent application?
A: No. There are no
Q: Can I put a patent on a slogan?
A: No. Not even close.
Q: Why are patent applications examined?
A: Because patents are not
available upon request. Patents are issued only when and if the
application and its subject matter are determined to meet the required
Q: Where do I find an application to protect my trade secret?
A: Trade secrets are not protected
by filing an application, anywhere - trade secrets are not registered or
Q: Where is the Chicago patent office?
A: There is only one patent office
in the U.S., and it is in Alexandria, Virginia. Its website is
and its business is conducted by mail and electronics. No need to stop
Q: What about mail-it-to-myself patent protection?
A: No way. Please see
about disclosure documents
(USPTO program discontinued),
Q: Who protects copyrights?
A: In the U.S., it is the U.S.
Copyright Office (and no one else).
Q: Is it better to get a patent or a trademark registration?
A: Both is best (if possible) and
never shelve a potential patent for a mere trademark. See
trademarking (most recommended)
Q: Should I bother to patent my
A: Maybe yes, maybe no.
patent it or not
Q: How can I protect a slogan?
A: Slogans are not protectable
under the patent law or copyright law. They might be protectible under
the trademark law if properly used as a trademark or service mark.
Warning - slogans used only by displaying on the front of t-shirts
etc. will likely be refused registration on 'merely ornamental use'.
Q: I have a copyright registration
on a very important technique, and someone is out there using it. How
do I stop that?
A: See an experienced IP attorney
quickly, but expect a disappointment. Copyright protects only how you
said it, not what you said.
Q: I want to sell my idea to a certain company about its buying
another company. Should I protect my idea with a patent before I
A: Unfortunately, that type of
idea typically cannot be protected under the patent law.
Q: Are patents considered
A: Yes, and patents are possibly
of the highest sophistication in the IP field. Note that some firms
have IP practices that exclude patents. Possibly they have no
registered patent attorneys.
Q: Does the U.S. Patent Office
provide assistance to inventors?
A: The United States Patent and
Trademark Office is not enabled to provide hands-on assistance, but it does
provide a wealth of information. See their Index to topics for
independent inventors at
A link for the Index is also on the USPTOs home page a
Q: How long does a patent last?
A: U.S. utility patent - begins on
date of patent issuance and ends twenty years after the filing date, which
comes out to lasting about 17 years (if a patent is issued and if periodic
maintenance fees are paid). U.S. design patent lasts fourteen years
from date of issuance. more -
Q: Can I have trade secret
protection for an expired patent?
A: Probably not. When a
patent expires, everything disclosed in it is in the public domain.
more - patent
or trademark it
Q: Our company has filed a patent
application on a new product. The designer quit last year, and his new
employer has just introduced its version of the product. Can we stop
A: Probably not, or not yet.
You cannot seek an injunction under the patent laws until a patent issues,
and then only if the other's product infringes the issued patent claims.
You could, and probably should, put them on formal notice if your patent
attorney believes (1) a patent probably will eventually issue (2) with one
or more claims infringed by their version.
Q: Can I add links on my website
to media articles about my company?
A: Only if permission is requested
and granted. more
Q: Should we use the ® after our
A: Yes if the trademark is
federally registered, and no if it isn't.
Q: How often does a business need
an IP audit.
A: Once a year is the general
recommendation. More frequently for trademark issues if the business
has a fast turnover in advertising copy or frequent website changes.
Q: What can I do if someone steals my idea?
Q: We have a federal registration
for our trademark for automotive vehicle parts. We have just added
automotive vehicle cleaners to our product line. Should we use the ®
after the trademark on these products also?
A: No, not until you have
registered the trademark for the cleaners also.
Q: Are you an attorney or a
registered patent attorney, and can registered patent attorneys do
A: Both an attorney and a
registered patent attorney, and yes registered patent attorneys can and
often do handle other IP matters such as trademark registrations.
(Presuming that by "trademarking" you mean registration of trademarks and service
marks.) more - see Firm
Profile and About
Q: I saw an awesome item for sale
at a street fair last summer, and want to know if I can put a patent on it.
A: Probably no and no. Only
the inventor or the inventor's assignee can seek patent protection.
Someone who sees, or even buys, an item created by another does not, by
these activities, become the inventor or the inventor's assignee. In
addition, public use, publications about and sales of an item preclude
seeking U.S. patent protection unless an application is filed within one
year of the first date on which any of such activities occurred.
Q: Can I trademark my website's
A: Presuming the question is
whether a domain name is (or can become) a trademark, the answer is yes, if
(1) you use the domain name as a trademark and (2) the words are not a
generic term for the products or services you sell. more - see
About Domain Names,
and About Trademark
Q: What does "put a patent" on
A: A now commonly used phrase for
obtaining patent protection. Misleading because it incorrectly
suggests that obtaining patent protection just requires filling out some
forms and paying a fee. more -
About Patent Applications,
Examination of Patent Application
Application Ready pages
Q: I've had no luck getting my
book published. Is self-publishing a reasonable option?
A: Yes if, and only if, you can
afford to risk the outlay.
Q: Do I need to file a provisional to get a "patent
A: No. Filing a conventional
non-provisional patent application also gets a "patent pending."
Q: Isn't trade secret protection
better than patent protection because it won't expire?
A: Trade secret longevity is
potential only, and provides no protection against independent development
or reverse engineering. more -
trade secret it
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