Getting a Patent on a New Hot Water Demand System.

Patents, Prototypes, Manufacturing, and Marketing New Inventions

Provisional patent applied for... what's next?




 

 

 

 

 

Getting a New Patent -  A New Hot Water Demand System Patent

Getting a New Patent -  A New Hot Water Demand System Patent

We recently filed a provisional patent application for our new hot water demand system.  A year prior to that we had done what our patent attorney called a "document dump". As I understand it, that gave us a year's worth of protections in so far as establishing a date of invention.  Once the year expired we decided to pursue a provisional patent.

Provisional Patent

A provisional patent allows you to establish a filing date for your patent, but you can still modify the patent later.  However, making later modifications does not extend the protection period... which lasts 20 years.

We file the new patent application a couple of weeks ago.  I just received this letter from our patent attorneys...

Gentlemen,

We enclose for your records a copy of the above-referenced patent application as filed with the United States Patent and Trademark Office (USPTO), as well as a copy of the Filing Receipt received from the USPTO. The application number has been assigned U.S. Application No. 12/621,492 and has an official filing date of November 18, 2009.

Also enclosed is a copy of a Notice To File Missing Parts of Application received from the USPTO. A response is due on February 4, 2009. After that date, up to five one-month extensions are available for a progressively increasing fee making the final due date July 4, 2009.  As you recall, we did not submit the Declaration at the time of filing.  Attached is the inventors' declaration, please sign the declaration and fax or PDF it back to me. 

We want to remind you that there is a strict and continuing duty to disclose to the USPTO prior art and other information that is material to the patentability of your invention. There is no obligation to perform a prior art search, but if you already know or become aware of any material information while the application is pending, it must be submitted to the USPTO. We will file an Information Disclosure Statement with the USPTO for the search that was done prior to filing of this application.

If you or anyone associated with the prosecution of this application knows or becomes aware of any information that may be material to the patentability of the invention, please contact me so that I may arrange to have the information submitted to the USPTO. If I do not hear from you, I will assume that there is no additional information to submit at this time.

The USPTO typically publishes an application at about 18 months from the original priority date.

The American Inventors Protection Act of 1999 makes available to patent applicants extensions of the patent term where the USPTO causes delays during examination. The USPTO defines the types of delays giving rise to such extensions of time. However, any potential term extensions caused by USPTO delay are offset or reduced by any delays caused by an applicants' "failure to engage in reasonable efforts to conclude prosecution." Consequently, filing any papers (Information Disclosure Statements, Responses to USPTO Office Actions, etc.) is best done promptly.

We will keep you informed of further developments. If you have any questions or comments, please call me.

 Kindest Regards,

 Name withheld by me.

I thought it was an interesting letter. 

And here is what the inventor's declaration looks like...

 

PTO/SB/01 (10-08)

Approved for use through 06/30/2010. OMB 0651-0032

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE

Under the Paperwork Reduction Act of 1995. no persons are required to respond to a collection of information unless it contains a valid OMB control number.

DECLARATION FOR UTILITY OR

DESIGN

PATENT APPLICATION

(37 CFR 1.63)

Attorney Docket Number

 FORMTEXT 40467-031-001

 

First Named Inventor

 FORMTEXT Lund, William J

 

COMPLETE IF KNOWN

 

Application Number

 FORMTEXT 12/621,492

 FORMCHECKBOX

 

Declaration

Submitted          OR

With Initial

Filing

 

 FORMCHECKBOX

 

 

 

 

Declaration

Submitted after Initial

Filing (surcharge

(37 CFR1.16 (f))

required)

Filing Date

 FORMTEXT November 18, 2009

 

Art Unit

 FORMTEXT To Be Assigned

 

Examiner Name

 FORMTEXT To Be Assigned

 

I hereby declare that:  (1) Each inventor's residence, mailing address, and citizenship are as stated below next to their name; and (2) I believe the inventor(s) named below to be the original and first inventor(s) of the subject matter which is claimed and for which a patent is sought on the invention entitled:

 

 

 

(Title of the Invention)

the application of which

 FORMCHECKBOX       is attached hereto

OR

 FORMCHECKBOX    was filed on (MM/DD/YYYY)

 

as United States Application Number or PCT International

 

Application Number

 

 and was amended on (MM/DD/YYYY)

 FORMTEXT      

(if applicable).

I hereby state that I have reviewed and understand the contents of the above identified application, including the claims, as amended by any amendment specifically referred to above.

I acknowledge the duty to disclose information which is material to patentability as defined in 37 CFR 1.56, including for continuation-in-part applications, material information which became available between the filing date of the prior application
and the national or PCT international filing date of the continuation-in-part application.

Authorization To Permit Access To Application by Participating Offices

 FORMCHECKBOX   If checked, the undersigned hereby grants the USPTO authority to provide the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and any other intellectual property offices in which a foreign application claiming priority to the above-identified application is filed access to the above-identified patent application.  See 37 CFR 1.14(c) and (h).  This box should not be checked if the applicant does not wish the EPO, JPO, KIPO, or other intellectual property office in which a foreign application claming priority to the above-identified application is filed to have access to the application.

In accordance with 37 CFR 1.14(h)(3), access will be provided to a copy of the application-as-filed with respect to: 1) the above-identified application, 2) any foreign application to which the above-identified application claims priority under 35 USC 119(a)-(d) if a copy of the foreign application that satisfies the certified copy requirement of 37 CFR 1.55 has been filed in the above-identified US application, and 3) any U.S. application from which benefit is sought in the above-identified application.

In accordance with 37 CFR 1.14(c), access may be provided to information concerning the date of filing the Authorization to Permit Access to Application by Participating Offices.

                           

[Page 1 of 3]

This collection of information is required by 35 U.S.C. 115 and 37 CFR 1.63. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 21 minutes to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

If you need assistance completing the form, call 1-800-PTO-9199 and select option 2


 

 

PTO/SB/01 (10-08)

Approved for use through 06/30/2010. OMB 0651-0032

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE

Under the Paperwork Reduction Act of 1995. no persons are required to respond to a collection of information unless it contains a valid OMB control number.

DECLARATION Utility or Design Patent Application

 

Claim of Foreign Priority Benefits

I hereby claim foreign priority benefits under 35 U.S.C. 119(a)-(d) or (f), or 365(b) of any foreign application(s) for patent, inventor's or plant breeder's rights certificate(s), or 365(a) of any PCT international application which designated at least one country other than the United States of America, listed below and have also identified below, by checking the box, any foreign application for patent, inventor's or plant breeder's rights certificate(s), or any PCT international application having a filing date before that of the application on which priority is claimed.

Prior Foreign Application Number(s)

Country

Foreign Filing Date (MM/DD/YYYY)

Priority

Not Claimed

Certified Copy Attached?

YES                   NO

 FORMTEXT      

 FORMTEXT      

 FORMTEXT      

 FORMCHECKBOX

 FORMCHECKBOX                FORMCHECKBOX

 FORMCHECKBOX

 FORMCHECKBOX                FORMCHECKBOX

 FORMCHECKBOX

 FORMCHECKBOX                FORMCHECKBOX

 FORMCHECKBOX

 FORMCHECKBOX                FORMCHECKBOX

 FORMCHECKBOX       Additional foreign application numbers are listed on a supplemental priority data sheet PTO/SB/02B attached hereto.

[Page 2 of 3]


 

PTO/SB/01 (10-08)

Approved for use through 06/30/2010. OMB 0651-0032

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE

Under the Paperwork Reduction Act of 1995. no persons are required to respond to a collection of information unless it contains a valid OMB control number.

DECLARATION Utility or Design Patent Application

 

 

Direct all                            FORMCHECKBOX   The address

correspondence to:                       associated with Customer Number:

 

OR        FORMCHECKBOX     Correspondence

address below

 

 

 

Name

 FORMTEXT      

Address

 FORMTEXT        FORMTEXT      

City

 FORMTEXT      

State

 FORMTEXT      

ZIP

 FORMTEXT      

Country

 FORMTEXT      

Telephone

 FORMTEXT      

Email

 FORMTEXT      

WARNING:

Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application that may contribute to identity theft.  Personal information such as social security numbers, bank account numbers, or credit card numbers (other than a check or credit card authorization form PTO-2038 submitted for payment purposes) is never required by the USPTO to support a petition or an application. If this type of personal information is included in documents submitted to the USPTO, petitioners/applicants should consider redacting such personal information from the documents before submitting them to the USPTO.  Petitioner/applicant is advised that the record of a patent application is available to the public after publication of the application (unless a non-publication request in compliance with 37 CFR 1.213(a) is made in the application) or issuance of a patent.  Furthermore, the record from an abandoned application may also be available to the public if the application is referenced in a published application or an issued patent (see 37 CFR 1.14).  Checks and credit card authorization forms PTO-2038 submitted for payment purposes are not retained in the application file and therefore are not publicly available. Petitioner/applicant is advised that documents which form the record of a patent application (such as the PTO/SB/01) are placed into the Privacy Act system of records DEPARTMENT OF COMMERCE, COMMERCE-PAT-7, System name: Patent Application Files. Documents not retained in an application file (such as the PTO-2038) are placed into the Privacy Act system of COMMERCE/PAT-TM-10, System name: Deposit Accounts and Electronic Funds Transfer Profiles.

I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false
statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001 and that such willful false statements may jeopardize the validity of the application or any patent issued thereon.

NAME OF SOLE OR FIRST INVENTOR:

 FORMCHECKBOX  A petition has been filed for this unsigned inventor

Given Name (first and middle [if any])

 

Family Name or Surname

 

Inventor's Signature

 

Date

 

Residence: City

 

State

 

Country

 

Citizenship

 

Mailing Address

 FORMTEXT      

City

 

State

 

Zip

 

Country

 

 FORMCHECKBOX    Additional inventors or a legal representative are being named on the  FORMTEXT 1 supplemental sheet(s) PTO/SB/02A or 02LR attached hereto.

                         

[Page 3 of 3]

 

 

The next step, if memory serves me well, is we will get something from the patent examiner telling us that our patent has problems.  I've never had a patent application that was just simply accepted by the patent examiner.  It's like they have to put up some kind of objection.  So I expect that to happen this time as well.

We will argue and usually we will loose a claim or two but keep most of the claims intact, or only slightly modified. At least that is my hope.

 

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