Patent It Yourself - PDF Archive

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418 | Patent it YOURSELF Definitely not worth it, unless you like your ego stroked for a price. A sixth recent scam comes in the form of an email to a patentee. The email states that it comes from a Japanese industrialist who is seeking to buy patents that cover inventions he can manufacture. A client traced back the email and found that the sender was a grifter based in Nigeria. As a patentee, you may receive other offers along the lines of the foregoing. Be sure to investigate and think about it carefully (or ask a trusted advisor) before you follow up on any offer. Beware of Published Application Scams Recently I filed a PCT application for a client and the PTO published it in due course. Shortly afterward the client received an official-looking “bill” in the mail from an official-sounding organization in Florida, listing the details of his PCT application and asking for $1,629.30 for “Charges For Registration.” This is a scam. I complained about this to the Florida Attorney General and found that they were already investigating this organization for other scams. You may get a similar “bill” if your regular patent application is published, so beware. Ask an attorney or your own state’s attorney general if you receive any similar “bill” that’s not from a source with which you’re familiar. H. Maintenance Fees In 1983, a law was passed under which the PTO instituted a maintenance fee (MF) system. While MFs are new to the U.S., their use had been commonplace in most countries for decades. Under the U.S. MF system, your patent, when granted, will subsist in force for 20 years from the filing date of its application, provided three maintenance fees are paid. If you don’t pay any MFs, your patent will expire four years from grant. If you pay a first MF between years 3.0 and 3.5 from grant, the PTO will extend the patent to expire eight years from grant. If you pay a second (much higher) MF between years 7.0 and 7.5, the PTO will extend the patent to expire 12 years from grant. And if you pay a third and final (much higher yet) MF between years 11.0 and 11.5, the PTO will extend the patent to expire 20 years (plus any extension the PTO has granted), from filing. This information is presented in Fig. 15B, an MF timing chart. The adjustable arrow indicates that the expiration date varies, depending upon the length of pendency of the application. The online calculator in Section F above will calculate your maintenance fees for you. To help you remember when to pay your MFs, I’ve provided an MF Reminder Sheet as Form 15-3; a sample is completed in Fig. 15C. You should copy this sheet and fill it out in ink—except write the year of MF I (three years after issue) in pencil on the top line and leave the last three columns in the table blank. Put the sheet at the end of your current year’s calendar. Keep moving it ahead to the end of each new year’s calendar at the end of each year, until the third year after issue when the fee is due. Write that the MF is due on the appropriate date on your calendar for the third Fig. 15B—Maintenance Fee Timing Chart
ChAPtER 15 | AFTER YOUR PATENT ISSUES: USE, MAINTENANCE, AND INFRINGEMENT | 419 Maintenance Fee Reminder 2002 7 16 Next fee due: / / yr mo date (Write year in pencil and change after each payment) Patent Nr.: 5,032,015 Issued: 1995/7/16 Application Serial Nr.: 07/427,862 Filed: 93/10/27 Title: “Shower Mirror with Valve” Patentee(s) (Inventor[s]/Applicant[s]): T.R. Christianson ShowerTek, Inc. Assignee(s) (if any): 13/10/27 Expires (if all three maintenance fees are paid). 1 Small entity status was filed in application or patent. (If not, large entity fees 2 must be paid.) Fee Due Received Maintenance Fee Sent Form Receipt Number From: To: & Check 4 Amount Statement I. Due 3.0 - 3.5 YAI 3 98 / 7 / 16 99 / 1 / 16 99 / 8 / 16 $ 320 99 / 9 / 15 II. Due 7.0 - 7.5 YAI 02 / 7 / 16 03 / 1 / 16 02 / 8 / 12 $ 1,020 02 / 9 / 14 III. Due 11.0 - 11.5 YAI 06 / 7 / 16 07 / 1 / 16 / / $ / / Notes: 1 For applications filed after 1995 Jun 7, expiration is 20 years from filing date of application, or from any earlier domestic nonprovisional (regular) application from which it claims priority, plus any adjustment (extension) granted by the PTO. 2 Please check all fee amounts before paying, since PTO fees change often. 3 YAI = Years After Issue date. 4 Send or make Internet payment at least a month before due date to allow time to take corrective action before entering grace (penalty) period in case PTO does not accept payment. Fig. 15C—Maintenance Fee Reminder (Form 15-3 in Appendix 7)
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N O LO ® “The best roll-up-your-
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Products & Services Books & Softwar
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15th edition Patent It Yourself You
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Acknowledgments My deep thanks go t
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2 3 4 The Science and Magic of Inve
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8 9 E. Make and Sell Your Invention
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13 14 J. The Patent Laws of Other C
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Appendixes 1 2 Abbreviations Used i
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Your Legal Companion A. You Don’t
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Your Legal COMPANION | 3 D. Should
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Your Legal COMPANION | 5 E. New Mat
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C H A P T E R 4 Will Your Invention
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ChaPter 4 | Will Your INVENTION SEL
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C H A P T E R 7 What Should I Do Ne
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Fig. 7A—Invention Decision Chart
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ChaPter 7 | What SHOULD I do Next?
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Appendix 4 | Fee SCHEDULE | 475 37
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A p p e n d i x 6 Quick-Reference T
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A P P E N D I X 7 Tear-Out Forms No
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Nondisclosure Agreement 1. Parties.
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Invention Disclosure Sheet of Inven
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Form 3-4: Application Data Sheet—
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Form 3-4: Application Data Sheet—
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Positive and Negative Factors Evalu
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Consultant’s Work Agreement 1. Pa
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Searcher’s Worksheet Sheet of Inv
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Form 10-1A: Declaration for Utility
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Form 10-4: Credit Card Payment Form
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In the United States Patent and Tra
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Design Patent Application—Preambl
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Maintenance Fee Reminder Next fee d
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Joint Applicants—Statement of Res
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they may do so with the written con
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Form 16-4: Recordation Form Cover S
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Universal License Agreement 1. Part
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whether or not any royalty payment
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compensation it recovers for any su
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Index A “A,” correct use of, 20
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INDex | 577 Biotechnology patents e
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INDex | 579 Classification searches
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INDex | 583 including all possible,
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INDex | 595 digital, for use in CAD
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INDex | 601 in notebook, 50, 51, 53
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Bestsellers The Small Business Star
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Online Legal Forms Nolo offers a la
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Keep Up to Date 1 Go to Nolo.com/ne
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About the Author David Pressman is
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