You might wonder what is a “specimen” of use and how is it different from a drawing in reference to a trademark?

A specimen is an example of how you actually use the mark to sell your goods or services.  A drawing shows only your mark but the specimen shows the mark as your purchasers encounter it at the store or anywhere else (e.g., on a label on your website).

You might also ask what is a proper specimen for use of a mark of goods?

At most times, a specimen for a mark used on goods shows the mark as it would appear on the good or on labeling or packaging of the goods.  For example, your specimen may be a tag displaying the mark, or a picture showing the mark on the goods or its packaging.  The specimen must be a photograph of what you actually use or a picture of the actual packaging.  Showing a picture of the actual mark alone is not sufficient.  The mark must be shown on or in direct connection with the goods.  If your specimen shows the mark being used in a decorative or purely ornamental manner, this will may not be an acceptable specimen.  For example, a slogan or design across the front of a t-shirt or other clothing or a tote bag would not be acceptable because it is likely perceived as being ornamental or decorative rather than a trademark.  But, a small word or design, such as an animal on shirt pocket, may create the commercial impression that it is a trademark and would be acceptable as a specimen.

You might wonder if your website is a proper specimen for good and what is not acceptable.

If the mark appears near a picture of the goods (or a text description of the goods) and your customers can order the goods from the website then it is acceptable.  It is not acceptable if your website just advertises the good.  Providing an actual screenshot of the website is acceptable but merely providing the website address is not acceptable. 

Business cards, letterhead, announcements, invoices, order forms, brochures and publicity releases generally are not acceptable specimens for goods.

You might also wonder what is a proper specimen for use of a mark with services and what is not acceptable?

A specimen for a mark used in connection with services must show the mark used in providing or advertising the services.  For example, your specimen may be a photograph of a brochure about the services, an advertisement for the services, a website or webpage, a business card, or stationery showing the mark but it must show or contain some reference to the services. Just a display of the mark itself would be insufficient.

Printer’s proof of advertisements or news articles about your services are not acceptable.  Your use of the mark must be shown. 

You are probably thinking this information is great but how and when do I file the specimen. 

You can file your specimen electronically or by paper but filing electronically is preferred.  If you are filing electronically, you must submit the specimen in .jpeg or .pdf format.  If you are filing by paper the specimen must be flat and no larger than 8½ by 11 inches but you could also provide compact discs, or DVDs, with files in .jpg, .pdf, .wav, .wma, .wmv, .mp3, .mpg, or .avi format with your filing.

If your application is based on “use in commerce,” submit one specimen for each class of goods/services must be submitted when you file your trademark application. If your trademark application is based on “intent to use,” one specimen for each class of goods/services must be submitted when you file the “allegation of use.”

I hope this article answers most of your questions about specimens.  

You may wonder how to name your invention and what rules the US Patent Office requires for the title.

How to title your patent might seem simple at first but it really can be difficult.  Like a book, you probably have the main idea for your story but when it comes down to naming it, this can prove to be very challenging.  Below are some guidelines that I hope you will find useful.

First, you want the examiner to approve your title.  You want to make a good first impression because this will be one of the first things that the examiner sees when looking at your patent application.  You probably also want your title to be somewhat unique to market your product and excite your consumers. 

The title must not exceed 500 characters in length and must be as short and as specific and descriptive as possible.  The title should be one that is easily searchable by third parties by using a few key words during the patent search process.  Please take note that certain words such as “new,” “improved,” “improvement of,” and “improvement in” are not considered as part of the title of an invention and should not be included at the beginning of the title of the invention and will be deleted when the US Patent Office enters the title into their computer records, and when any patent issues.  Also, the words/articles “a,” “an,” and “the” should not be included as the first words of the title of the invention and will be deleted in the same manner.  Characters that cannot be captured and recorded in the Office’s automated information systems may not be reflected in the US Patent Office’s records in such systems or in documents created by the US Patent Office.  There is a website with the characters that are valid in the title.  This website is https://www.uspto.gov/ebc/portal/infotitle.htm.  It is important to include the title on the application data sheet but the title of the invention should also appear as a heading on the first page of the specification of your patent application.

           If the title is not descriptive of the invention to which the claims are directed, the examiner should require the substitution of a new title that is clearly indicative of the invention to which the claims are directed.

           If a change in the title is being suggested by the examiner, this may result in slightly longer titles, but the loss in the brief title will be more than offset by the gain in its descriptive value in indexing, classifying, searching, and etc.  If the applicant does not use a satisfactory title, at the time of allowance for the patent application, the examiner may change the title by an examiner’s amendment.

           When applying for a patent, it is best to hire an attorney to guide you through the whole process, including helping you decide on a good and sufficient title to your patent.  I hope this helped you answer the question how and what are the rules in order to title my patent. 

Have you ever wondered if there is a way to get your patent application approved or examined faster?

           You can usually expect to wait, on average, two years or more after filing a patent application, before the patent is approved.  There are some recommendations on how to get your application moving faster that I will discuss below.

           You can expedite your examination by using the United States Patent Office’s (USPTO) Prioritized Patent Examination Program.  This is known as “Track One.”  You would have to pay an extra fee for this program but this will let the application “jump the line” and be examined before patent applications that were filed earlier. 

           Another way to expedite your examination is by actually speaking with the examiner reviewing your application.  Most communications between you and the examiner would occur in writing, which can be frustrating and inefficient.  The examiner may want to explain in person some distinction between the invention and what existed before and sometimes it is better to do this over the phone or in person.  The USPTO allows applicants to speak directly with the examiner via telephone, web conference or in-person interviews.  Interviews can prove to be helpful because the examiner can associate a human face with the application.  It could be valuable to have the inventor/applicant participate in the interview, if, for example, the technology is complex.  Interviews that are conducted early in the process can help prevent misunderstandings that could result in a longer and more expensive patenting process.  You could use the USPTO’s First Action Interview pilot program so the examiner could make an initial full evaluation of the application.  This would give you the opportunity to influence the examiner’s understanding of the invention from the beginning.

           Another way to expedite a patent is to the use the USPTO’s Patent Prosecution Highway (PPH).  This would help to leverage positive results from an examination that has already been performed by a foreign patent office.  Under this program, the USPTO fast-tracks the examination of U.S. patent application with claims that are already allowed by a foreign patent office.  There are many foreign patent offices eligible for PPH review, including Canada, China, Europe, Japan, Korea and the United Kingdom.  While the USPTO does still makes its own independent evaluation of the patent application, the PPH program can yield improved results over regular processing.  This program can be a particularly effective tool for companies with foreign patenting activities that are looking to take advantage of their successes in foreign patent offices in order to quickly obtain the same scope of patent protection in the U.S.

           In summary, few U.S. patent applicants would ever describe the patenting process as either quick or easy but by using one or more of the recommendations described above, applicants can possibly accelerate the process and increase their likelihood of achieving their patenting goals.  If you are interested in having your patent move along faster, you could also discuss these options with an attorney.

The Patent Cooperation Treaty authorizes the filing of a single patent application to be treated as a patent application in countries around the world.  This is most commonly referred to as a PCT.  You can file an International patent Application pursuant to the rules of the PCT and the application will effectively act as a world-wide patent application, at least a patent application in these countries that have ratified the PCT.  These countries are basically all of the countries where you would a patent.

The reason there is single world-wide patent but no world-wide patent is because patents are granted by individual countries but not by any international authority. 

Individual countries have different patent laws which makes a uniform world-wide patent granting process impossible.

When one wants international patent rights it is best to draft the patent application so that it would be appropriate in the United States and China.  The United States and China have the most stringent disclosure requirements.

Most inventors pursue filing their first patent application in the country in which they reside.  This is referred to as direct filing.  This option is accomplished pursuant to the regulations and laws of the country the application is being filed in.  A U.S. patent application, such as a non-provisional patent application or provisional patent application is a direct filing option. From the United States perspective, a filing in a patent office other than the United States Patent and Trademark Office (USPTO) that is not filed pursuant to the Patent Cooperation Treaty (PCT) is considered a foreign application.  

Note, if you file a patent application or a foreign patent application, you can still file an international patent application within twelve months of the earliest filing date and then your international patent application is given priority as of the filing date of the first application.  This means that anything that happens after the earliest filing date cannot be considered prior art.

If you use an earlier filed patent application to support priority of the PCT Application, as is discussed above, or you file an international application without a previous direct filing, you need to enter into what is called “national phase” in every country where you wish to obtain a patent.  You have 30 months from the priority filing date to enter the national phase in any country but it can get extremely expensive.

It is always best to seek advice from a patent attorney on where you should file your patent applications.  

What Is The Difference Between A Provisional Patent Application And A Regular Patent Application?

A provisional patent application can be filed in the U.S. Patent Office for an invention, and will be pending for exactly one year from the date of filing. Provisional patent applications are never examined by the U.S. Patent Office. During this time, however, the business owner can mark the invention as “Patent Pending” or “Pat. Pend.” A provisional patent application automatically goes abandoned after one year from the date of filing, and so a regular patent application has to be filed claiming priority to the provisional patent application before the one year expires.
A patent attorney can help file regular patent application in the U.S. Patent Office. Unlike the provisional patent application, the regular patent application will be examined by an Examiner at the U.S. Patent Office.
The U.S. Patent Office typically takes 1-3 years (sometimes longer) before they examine a patent application. But during this time, and until the patent application either issues or goes abandoned, you are entitled to mark the invention as “Patent Pending” or “Pat. Pend.” In addition, there is nothing preventing business owners from licensing or selling rights in the patent application (e.g., to a manufacturer), or from selling the product of your invention. In fact, you should get started marketing your invention as soon as the patent application is filed.

What You Need To Know About Provisional Patent Applications

A provisional patent application automatically goes abandoned after one year from the date of filing. Therefore, business owners must file a regular patent application claiming priority to their provisional patent application before the one year expires.
Business owners often ask “Then why should we file a provisional patent application if it goes abandoned after one year?”

Denver patent attorney Mark Trenner offers these four very good reasons for filing a provisional patent application:

1. Filing a provisional patent application may be a good idea if you are watching your budget. As you will see below, provisional patent applications can be filed relatively inexpensively. After you file a provisional patent application, you can mark your invention (and any marketing materials describing your invention) as “Patent Pending.” This shows customers, competitors, and potential investors that you are serious about your invention.
2. You have up to one year to test-market your invention before investing in a regular patent application. If your invention is a success, you can file a regular patent application and claim priority to your provisional patent application. If after 9 or 10 months you realize that your invention just isn’t being received that well, you can drop it and you haven’t spent that much money yet.
3. If you will be making changes to your invention, the provisional patent application at least identifies those aspects of your invention that belong to you at the time of filing. Any changes and improvements can then be added to the regular patent application without having to file a separate application.
4. A provisional patent application can also be evidence that the invention belonged to you if someone you share your invention with later claims that the invention is theirs.

What Happens After Filing A Regular Patent Application?

After filing a regular patent application, the U.S. Patent Office examines the patent application and either issue an Office Actions or a Notice of Allowance. While a Notice of Allowance would be nice, it is rare that the Examiner will issue a Notice of Allowance after the first examination. It’s more likely that you will get an Office Action.
In the Office Action, the Examiner may reject the claims in the patent application, or reject a portion of the claims in the patent application and indicate those portions which may be allowable. You have an opportunity to respond to the Office Action. Typically, you will have 3 months in which to file a formal written Response. You can typically buy extensions of time for an additional 3 months (for a total of 6 months to file a Response). Failure to file a Response within the allotted time will result in your patent application going abandoned.

If you are in need of assistance or have questions about filing a patent application in Colorado or anywhere in the USA please do not hesitate to contact patent attorney (Denver) Mark Trenner via our contact page.

Should Small Businesses File Foreign Patent Applications?

A U.S. Patent Application does not offer any protection for your invention outside of the United States. If you want to protect your invention outside of the United States, then you will need to file a patent application in the particular country or countries of interest, or a PCT patent application.

Filing foreign patent applications can be costly. The international phase of a PCT patent application can cost thousands of dollars alone. Then in the national phase, you can quickly incur thousands of dollars (and significantly more, depending on the number of countries you decide to file in) – and none of this assures the business that a patent will even issue.

For more small businesses, the money saved by not filing international patent applications can better be used for marketing the invention in the United States. It’s always disappointing when someone has to stop pursuing their invention everywhere, even in the United States, because they blew their entire budget filing patent applications all over the world.

While I’m not saying that you shouldn’t consider filing foreign patent applications for your invention, you need to think seriously about the impact this will have on your budget and your ability to effectively advance your invention in the United States.
There are certain deadlines that apply, therefore you must notify your patent attorney immediately if you want to file any foreign patent applications.

Contact Colorado Patent Attorney Mark Trenner today for help with you patent needs.

What Does Patent Pending Mean? Part 2 of 3

From Patent attorney Mark Trenner

Watch 8 minute Video of Interview With Denver Patent Attorney Mark Trenner

Facts are that a company usually will not want to spend money for research and development of a product if there is a chance it will not be given the patent, due to the fact that someone has beaten them to the punch.

On the other hand, it does not “legally” protect anything. Your idea is not protected until the patent is actually granted; even though you let others know the wheels are in motion. Someone else can legally market, sell, or use your invention before the patent is granted.
Once your patent is issued, you would stop using the words “patent pending”, and start using the phrase “covered by US Patent Number *****”.  At this point you are legally protected from others copying your idea.

It’s also important to note that just because you created a product, you do not have the right to use “patent pending” if this is not the case.  You are obligated to have applied for the patent with the USPTO before claiming a patent is in process.  In fact, using the term “patent pending” in a false or misleading way is a federal crime which may be punishable by major fines and even jail time.  Many inventors with small budgets and potential to gain investment capital may be tempted to use this designation before going through the costly and time consuming process.  It is important they know the consequences before doing so, as it can lead to major charges against the in a legal sense.

What Does Patent Pending Mean? Part 3 of 3

What Does Patent Pending Mean? Part 3 of 3

From Colorado Patent Attorney Mark Trenner

Here is information from the USPTO regarding using the words “patent” and “patent pending”:

A patentee who makes or sells patented articles, or a person who does so for or under the patentee is required to mark the articles with the word “Patent” and the number of the patent. The penalty for failure to mark is that the patentee may not recover damages from an infringer unless the infringer was duly notified of the infringement and continued to infringe after the notice.
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. 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 Patent and Trademark Office. 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.

In conclusion, patent pending can be valuable to help protect others from infringing on your product idea. However, designating something as patent pending will not protect you legally from others trying to make, use, or sell your invention.  Also, it is very important to go through the proper application process with the USPTO before claiming something is patent pending, as false claims are taken very seriously.  If you have any questions regarding the patent process, it is advised to seek the council of an experienced Patent attorney.