Q) PCT Publication (which old test is this from?)

by patentbar on May 18, 2007 · 21 comments

in Exam Questions

Test takers report that MPEP Chapter 1800, PCT, is tested heavily on the Prometric Patent Bar Exam. Experiencing 3-4 questions on this topic is common and some test takers report as many as 10-15 questions (most likely some are beta questions).

Publication

A test taker reports a question about publication of a PCT application under PCT rules if the application is filed with the US receiving office and ONLY designates the US. Answer – MPEP 1803 (if the US is the only contracting state in an IA, IA will not be published at 18 months). Otherwise, the application is published 18 months from the priority date of the IA.


PCT 1803 Reservations Under the PCT Taken by the United States of America
[…]It has also declared that, as far as the United States of America is concerned, international publication is not required (PCT Article 64 (3)). Accordingly, under PCT Article 64(3)(b), if the United States is the only PCT Contracting State designated in an international application, the international application will not be published by the International Bureau (IB) at 18 months. Even though the United States Patent and Trademark Office has begun pre-grant publication under 35 U.S.C. 122(b), the United States has not removed its reservation under PCT Article 64(3) because not all United States patent applications are published. See 35 U.S.C. 122(b)(2). The application will, however, be published under 35 U.S.C. 122(b) if it enters the national stage in the United States. It will be published again if it is allowed to issue as a United States patent.

{ 21 comments… read them below or add one }

1 mmmNo Gravatar May 17, 2008 at 4:58 am

This is perhaps the question (as presented in an earlier exam):

Which of the following statements regarding publication of an international (PCT) patent application is most correct?

(A) International applications filed after November 29, 2000 that designate only the United States are not published by the International Bureau.

(B) All international applications, including international applications filed after November 29, 2000 designating only the United States, are published by the International Bureau at 18 months after the filing date, pursuant to Article 21(2) of the Patent Cooperation Treaty.

(C) An international application filed after November 29, 2000 that is published by the International Bureau in English and thereafter enters the national stage in the United States will not be published again by the USPTO.

(D) If an international application filed after November 29, 2000, designating only the United States, enters the national stage in the USPTO without having been published by the International Bureau, the application will not be published by the USPTO.

(E) Both (B) and (D) are correct.

The correct answer is (A), for the reasons cited above: MPEP 1803.

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2 CWNo Gravatar June 11, 2009 at 1:34 pm

That’s not the same question. It wanted to know if it would be published as an IA and/or under 122. The choices were it would be published once, under each, not at all, etc.

The correct answer is that it would not be published as an IA, since the US was the only designated state, but it would be published when it entered the national stage.

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3 BigbadvoododaddyNo Gravatar July 2, 2011 at 7:33 pm

A. is correct
B. Is false – if they desinate only the US, no publication
C. is correct.
D. is false – because all international applications are published.
E. is false
This seems to be a beta or incorrect question.
I cant find any reference which disputes statement C. See 1893.03(e)

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4 BigbadvoododaddyNo Gravatar July 2, 2011 at 11:15 pm

CORRECTION:
I’ve looked it up and C is false.
Every PCT application after it enters the national stage is once again published as a US application.
Sorry for any confusion

5 NarNo Gravatar July 5, 2012 at 8:02 pm

Dont understand why B is false. Which section of MPEP?

6 NarNo Gravatar July 5, 2012 at 8:09 pm

Never mind, 1803 has the answer. This was a tough one, I would have gone with B & D.

7 Art WilliamsNo Gravatar August 29, 2009 at 5:30 pm

With regard to the test question involving publication of international applications received by the USPTO as receiving office, can anyone tell me how one might find MPEP 1803 by searching. I am quite impressed by Dan’s post #38 on the “Prometric Patent Bar” tab which the advocates the extensive use MPEP search, but I don’t see how to apply Dan’s test-taking strategy to a case like this one. I have yet to find a keyword or key phrase that leads to 1803.

Thanks, Art Williams

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8 Chemist62No Gravatar March 18, 2010 at 12:38 pm

This is how you may find it:

In the MPEP E8R4 go into Appendix T: PCT. Search for “not published”. After one ot two clicks you see the reference to Article 64(3), the title of the Article is Reservations.

In the MPEP E8R4 do into Chapter 1800, PCT, search for 64(3) or Reservation, It will take you pretty quickly to 1803.

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9 calvinNo Gravatar March 22, 2010 at 3:06 am

Searching “18 months” from top of 1800 PCT finds 1803 on the third hit.

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10 Recent JDNo Gravatar June 7, 2011 at 10:48 pm

For what it’s worth: these search hints still hold for E8R8.

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11 little yellow duckNo Gravatar June 8, 2011 at 9:49 am

When goes to national stage

A US PCT filed on July 23, When will be the latest date goes to national stage?

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12 BPYNo Gravatar September 1, 2011 at 9:15 am

Should not it be 30 months after the priority date (may or may not be the filing date depending on whether priority is claimed)?

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13 PaulNo Gravatar October 7, 2011 at 4:10 am

Saw this one on 10/3.

Answer included something along the lines of: “IB will not publish, but US will publish upon entry into the national stage”.

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14 GDBNo Gravatar April 19, 2012 at 11:24 pm

I had one similar on 04/19/12.

PCT filed in US receiving office. Applicant only designated US and didn’t request publication. Question asked whether the patent would be published by the IB or ISA or USPTO with a few variations.

Answer that I chose after looking at MPEP: PCT will not be published by IB or ISA but will be published by USPTO when it goes to national stage.

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15 KeenerNo Gravatar May 19, 2012 at 5:57 pm

I thought PCT had to publish at 18 months. I can’t find where it says otherwise.

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16 jkpatentlawNo Gravatar June 14, 2012 at 12:18 pm

Based on looking at Keeners Second post, I would agree and add that the entrance to National Stage would need to be in the US, of course, because the USPTO would be the one publishing it.

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17 KeenerNo Gravatar May 19, 2012 at 6:04 pm

Oh bloody hell, PCT 1800 is one big monkey wrench!
I failed to keep reading 1803 in the proper tense. Even thought it starts in the past tense this section reverse to present tense when it gets to….
Accordingly, under PCT Article 64(3)(b), if the United States is the only PCT Contracting State designated in an international application, the international application will not be published by the International Bureau (IB) at 18 months. Even though the United States Patent and Trademark Office has begun pre-grant publication under 35 U.S.C. 122(b), the United States has not removed its reservation under PCT Article 64(3) because not all United States patent applications are published. See 35 U.S.C. 122(b)(2). The application will, however, be published under 35 U.S.C. 122(b) if it enters the national stage in the United States. It will be published again if it is allowed to issue as a United States patent.

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18 passedatlastNo Gravatar June 19, 2012 at 6:03 pm

Got 10+ PCT questions.

One strange one involved how do you correct inventorship during the first stage with the ISA. It mentioned a specific PCT provision (something bis, can’t remember). The choices all involved how many months there was to correct it (20? 30? 36?) and what kind of fee was involved.

Many basic ones involving priority and 102(e) dates. Several involving when an application properly enters the national stage. It was really just a few PCT provisions tested (esp. 1893).

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19 zanNo Gravatar June 25, 2012 at 10:28 am

Appendix T.

92bis.1 Recording of Changes by the International Bureau

(b)
The International Bureau shall not record the requested change if the request for recording is received by it after the expiration of 30 months from the priority date.

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20 SeattlePaulNo Gravatar April 18, 2014 at 10:58 am

I am studying to take the exam around May 2014. With regard to the question posted mmm … “Which of the following statements regarding publication of an international (PCT) patent application is most correct?”

The current version of the MPEP for the exam, E8R9, and the recently published E9R11, still have the same 1803 reservation regarding publication of the IA if the IA only designates the US. Thus it appears that Answer A is still correct if this question were to be posed. However, as of January 1, 2004, “the filing of an international application will automatically constitute a designation of all contracting countries to the PCT on that filing date” [MPEP 1801 and 1817]. There is an automatic all-inclusive designation of contracting states Germany, Japan and the RoK which may be excluded from being designated but that does not come into play for this test question. In fact, looking at the Form PCT/RO/101 Box V “Designations” it doesn’t appear that is possible NOT to create an IA request that designates the US and slew of other contracting states. Given this, I don’t see how a situation that would invoke the MPEP 1803 publication reservations would occur after Jan 1, 2004. So why does the MPEP 1803 reservation still exist and why would the USPTO Registration Exam have a question about this?

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21 PrepNo Gravatar July 17, 2016 at 10:16 am

Well, you can automatically designate all states. At the same time you can de-designate any state you want, including all states except the U.S. You may want to do that for applications which you want to keep secret in the U.S., until its patented.

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