USPTO ANNUAL CONFERENCE 1999

by Chuck Umeda 9910

Lisa Lloyd, IAA President, related her experiences at the U.S. Patent & Trademark Office (USPTO) Annual Conference in Houston, TX.  She scheduled a business trip to coincide with this event so that members could benefit from information at minimal cost to the IAA.  The IAA web site has links to the USPTO web site, among others.

The United Inventors Association of USA (UIAUSA) has lobbied Congress in behalf of inventors.  They have a web site, www.uiausa.com where one can logon and request to be put on their mailing list.

The USPTO web site, www.uspto.gov, allows individuals to order copies of patents to be sent by mail, e-mail or fax, conduct a patent search, find other useful information.  The database for patents is presently from Jan. 1976 to present, but will be extended soon to include all patents.

Scams abound!  There a number of these groups including the Inventor’s Submission Corp., which prey on unsuspecting inventors by promising great things and delivering little.  These groups will take thousands of dollars in fees for “services.”  The informed inventor should ask questions to unmask the scam artists:

          How many products have been brought to market through your services?

          How can I contact your organization, names, addresses, phone numbers?

What percent of the patents you have handles have been successful in the marketplace?

Lisa participated in a Q&A session asking, “Can the Government use a patent without paying the inventor (royalty)?  Answers:  If during the process, the inventors used a federal grant, the government has rights to use the patent without payment.  In a national emergency, the government can use your patent without payment.  (See article about John Stuart)

At this time, patents take about 9 months average to process.  The USPTO is working to reduce this time.  The steps in the process are: the patent application is delivered, goes to a receiving area, is stamped, dated, inventor receives a patent pending notification, is delegated to the appropriate USPTO department.  It is assigned to a patent examiner.  If the inventor is over 65 years old or if the patent matter is technology-related where a delay can cause obsolescence, a $50 fee prioritizes the processing. 

The inventor can call the USPTO once in the course of patent processing.  Lisa suggests that it is best to wait until the first office action, when specific clarification can be requested of the examiner.

While the USPTO is attempting to be “user friendly,” the patent examiner has to do the right thing.  The examiner is awarded more points if the application is accepted the first time, but they try to find something in the prior art.

Inventors, being the creative type, have many ideas.  But since it is impractical to work on many patents simultaneously, make a prioritized list.  A provisional patent may be beneficial in some instances.

IAA members who wish to begin the patenting process must first pay the organization a $25 access fee.  Lisa will review your idea to ensure it is ready.  Once this is done, the inventor can arrange to meet with one of the patent attorneys or patent agents to proceed.  Typical costs are $1,950 for a basic utility patent (preparing application, filing fee).  These are special rates given by the patent attorneys for IAA members.  Cost of patent drawings are extra.  IAA Luis Milan is one source for patent drawings.   Responding to office actions is typically $90 per hour for the patent attorney/agent.

A provisional patent (about $200) is a good way to establish a date for your patent.  It buys the inventor protection for one year.  The inventor has that one-year period to file for a utility patent. 

A patent becomes “pending” as soon as it is mailed to the USPTO.  It takes about 6 weeks for the USPTO to respond with their actual “patent pending” notification.

Lisa urged members to call their congressmen to tell them that the fees collected paid to the USPTO goes back to that organization.   This is not the case now.

Other information:  there are 50,000 new products annually.  The largest single class of patents issued involve golf!  5% of patents are issued to foreigners.

The USPTO has literature to help the inventors.  Among the titles are: Basic Facts About Patents; General Information Concerning Patents; USPTO Products and Services Catalog.  These and others are available though the Patent & Trademark web site.  There is a General Information Services phone number 800-786-9199.