Q19) Germany – PCT / Patent Term (MPEP 1800)

by patentbar on May 19, 2007 · 33 comments

in Exam Questions


One question asked about a PCT application that was filed in Germany before Nov 29, 2000 (95 or 96) and asked when to measure the US patent term (I hope it was from the date of the PCT application and not when it entered the national stage).

2701 Patent Term
[…]
INTERNATIONAL APPLICATIONS
A patent granted on an international application filed on or after June 8, 1995 and which enters the national stage under 35 U.S.C. 371 will have a term which ends twenty years from the filing date of the international application. A continuation or a continuation-in-part application claiming benefit under 35 U.S.C. 365(c) of an international application filed under 35 U.S.C. 363 designating the United States will have a term which ends twenty years from the filing date of the parent international application.
FOREIGN PRIORITY
Foreign priority under 35 U.S.C. 119(a)-(d), 365(a), or 365(b) is not considered in determining the term of a patent. Accordingly, an application claiming priority under 35 U.S.C. 365(a) or 365(b) has a term which ends twenty years from the filing date of the application in the United States and not the prior international application.

{ 33 comments… read them below or add one }

1 patentbarNo Gravatar August 19, 2008 at 3:01 pm

One annoying question which was partially mentioned in the forum in the past (as a suspect for one of the beta testing questions), is about John a registered practitioner not of record visiting a client in Germany. John prepares a reply plus declaration and (I think) authorization to charge his account, on the last day of the six month period to reply. The options were:

Mail by regular mail – no good
Mail by German express mail. – no good
File RCE without reply. – no good.
File notice of appeal by fax to buy time and then mail to Smith so he can sign (who the heck is Smith? He was not mentioned in the question. I assume he is the attorney of record).-
Fax it to the patent office before midnight which is 5-6 hours before midnight in Arlington Virginia.

I think they were checking if you knew that the registered practitioner signature is good enough and you don’t need the signature of the attorney of record. I was worried about filing a declaration with the reply by fax but I think it is OK.

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2 T.A.No Gravatar March 23, 2009 at 11:16 am

You’re right about faxing declarations. See 502.01:

“37 CFR 1.6(d) specifies the types of correspondence which may be transmitted by facsimile. These would include CPAs filed under 37 CFR 1.53(d) (available for design applications only), amendments, declarations, petitions, information disclosure statements (IDS), terminal disclaimers, notices of appeal and appeal briefs, requests for continued examination (RCEs) under 37 CFR 1.114, assignment documents, issue fee transmittals and authorizations to charge deposit accounts.”

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3 John DoeNo Gravatar April 8, 2009 at 1:26 pm

Had the question regarding the traveling patent attorney in Germany needing to file something just before the expiration of six months. I think the fax is the only way to go.

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4 passthepatentbarNo Gravatar May 22, 2009 at 1:59 pm

Remember not to get tripped up by the blurring of international filing date and 102(e). They are separate and distinct.

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5 pttNo Gravatar July 16, 2009 at 9:15 pm

I concur with the answer regarding the German inventor and practitioner . You can send a declaration by FAX and the fact scenario illustrates you are almost out of time before the application goes abandoned. There was no answer option that said “none of the above” leaving the FAX answer option the only way to get it there in a timely fasion.

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6 DJNo Gravatar July 17, 2009 at 11:05 am

Ptt,

There are two fax answewrs. Which one did you pick? THe one with smith?

Thanks

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7 DJNo Gravatar July 17, 2009 at 4:13 pm

What is the answer to comment 1? The answer with Smith or the one with Virginia?

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8 pttNo Gravatar July 18, 2009 at 1:21 pm

For completness, I may open a new question on the ‘exam questions and concepts’ because this is a different type of question that has nothing to do with the PCT patent term question originally under Q19. I chose Ans. option (E) fax to Arlington, VA because it’s the only way to get the information to the USPTO in a timely fashion. I had the exact feelings of ‘patentbar’ when I read answer option (D) — “Who the heck is Smith?” It’s true, Smith isn’t mentioned in the fact scenario…A little bit of humor thrown in from the test question writers at the USPTO, perhaps. Also, I don’t recall that this was a PCT application, otherwise the information may have been required to be sent to the IB, instead of the USPTO. This question is under the ‘Q19’ heading apparently because it relates to practitioner John being in Germany. The call of the question is to recognize the delivery means to get the information to the USPTO without the application going abandoned.
(A) Regular mail — Definitely no help, practitioner John is in Germany and would mail it from Germany in the regular mail and the fact scenario states that it’s almost 12:00AM German time, and with a few hours to go before the ‘next day’ at the USPTO (time difference between Germany and the U.S.) at which time the application would then be abandoned. Date-in would be when recieved at the USPTO, SEVERAL DAYS after the statatory deadline.
(B) German Express Mail – USPTO doesn’t recognize the mailing date of German Express Mail, therefore the same untimely result as in (A).
(C) RCE with no reply — This doesn’t work…Need the reply and the oath at the USPTO in a timely fashion to allow the RCE to be acceptable. Filing the RCE alone doesn’t stay a response to the action. Additionally, the answer option is silent on the method to get the RCE to the USPTO so that it can be entered in timely fashion, which is the call of the question.
(D) Notice of Appeal and Smith — again no mention regarding the delivery means on how the Notice of Appeal would get to the USPTO in a timely fashion — remember, the fact scenario illustrates the application is on the verge of abandonment.
(E) (Correct) This answer option addresses the delivery means to get the oath and the reply to the USPTO and and does so in a timely fashion.
FURTHER NOTE: Before heading into the Exam compare what can be sent by FAX in U.S. applicaitons according to MPEP 502.01 and 37 CFR 1.6(d) and FAX in PCT applications in MPEP 1834.01. Varient questions may exist to see if the test taker discerns the difference. This is a good example of the USPTO designing a ‘real life’ situation surrounding a FAX transmission and see if the test taker grasps the situation and then can apply the knowledge of the MPEP instead of just providing a question that merely requires the test taker to recognize a list of documents that can/cannot be faxed (see 4.03.05a), which is more typical in the older exams.

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9 RodneyNo Gravatar January 25, 2011 at 5:31 pm

I got two questions today on “what 102(e) date do you get on pre-Nov 29 2000 PCT going into national stage?” One answer was the national stage filing date but the second question the applicant didn’t file the oath. The 102(e) date on the second question is the date when all the paper work gets there.

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10 VeNo Gravatar January 27, 2011 at 7:13 pm

Got a question where applicant filed priority in Germany, followed by PCT wich published in German and 102(e) date of subsequent US filed application. Chose date where national stage was filed in the US. Also had a similar question where the PCT published in English but only designated the US in Chapter II. I wasn’t sure if the FOT/DUSE meant “designate US at the time of filing” or if US could be designated later…. ended up going with 102(e) date of US filing.

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11 InterenNo Gravatar March 31, 2011 at 4:19 pm

Good question. I wonder whether you can designate a country in the middle of your IA. Perhaps the fact pattern means ‘designating US as the international preliminary examining authority’. Upon filing, you HAVE TO designate some country. By electing one country, you effectively elect all PCT countries. That means to me you don’t need to specifically designate US at the time of filing…

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12 BigbadvoododaddyNo Gravatar July 2, 2011 at 6:08 pm

Ve,
Re: your first question.
I dont believe that the date of the national stage is the 102(e) date. There is no 102(e) date in this scenario – see example 5 under 706.02(f)(1)
Re: your second question
I dont believe the answer was correct. If it is published in english and designates the US (specifically – in the international stage, cannot be designated by entering the national stage only) then the 102 (e) date is the international filing date.

PCT Article 11(3) provides that
…an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.

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13 BigbadvoododaddyNo Gravatar July 2, 2011 at 6:14 pm

To further clarify – both the designation and the publication must have happened in the international stage to qualify under 102(e) if the demand was filed such that the publication happened before (as I suspect it did) then it will not be a 102(e) and I would be corrected in my response above

14 skhNo Gravatar March 31, 2011 at 1:28 am

706.02(f)(1) – Example 5
“All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent, of an international application (IA) that was filed on or after November 29, 2000 but was not published in English under PCT Article 21(2) have no 35 U.S.C. 102(e) prior art date at all.”

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15 OverworkkedNo Gravatar April 28, 2011 at 1:25 pm

VARIANT on 4/27/2011 E8R8:

John a registered practitioner not of record visiting a client in Germany. John prepares a reply plus declaration and (I think) authorization to charge his account, on the last day of the six month period to reply. Drama with inventor or other signatory. The PTO is 5-6 hours behind Germany. The approximate options were:

A. Mail by regular mail – no good
B. Mail by German express mail. – no good
C. File RCE without reply. – no good.
D. File notice of appeal by fax to buy time and then mail to Inventor so he can sign
E. Fax it to the patent office. (MY ANSWER)

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16 BigbadvoododaddyNo Gravatar July 2, 2011 at 5:53 pm

In this scenario E is correct. However D is a pretty good answer, since the notice of appeal can be faxed, if it is under a second or final rejection, and need not be signed.

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17 jacquiegardnerNo Gravatar May 3, 2011 at 7:03 pm

I got this questions today too. Pretty sure I got it right.

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18 SarahNo Gravatar May 18, 2011 at 3:57 pm

Got this today 5/18/11

Know patent term is NEVER measured from priority documents, whether its a provisional application or a foreign priority document. Its measured from the filing date of the international application.

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19 wenabbyNo Gravatar July 30, 2011 at 11:25 pm

First file provisional, then file non-provisional claiming priority of the provisional, and then file PCT claiming both priority. In this senario, the patent term will be calculated from the filing date of NON-PROVISIONAL not the filing date of PCT.

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20 DanielNo Gravatar August 3, 2011 at 11:13 am

Got the one where you should fax from Germany as well as the one where you go from the INTERNATIONAL FILING date on 7/29/2011

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21 TJLNo Gravatar August 18, 2011 at 11:41 pm

On 8/18 got a variant. German app is basis for international app (after 11/129/00) which designates US, enters US, when will patent term be measured from. I didn’t spend much time looking for this one in the MPEP as I was a bit short on time in my afternoon session, but was fairly confident that term was measured from International Filing. I could, however, be wrong.

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22 maggieNo Gravatar August 27, 2011 at 2:45 am

Q: PCT-fax oath/representative capacity.
German app is basis for international app needs to be filed today at USPTO. Germany attorney is too late because of time difference. US Agent, that is not a Power of attorney in PCT can fax oath and will be there several hours before due. – answer choices (A) Mail by regular mail (B) German express mail. (C) US attorney file by FAX and will be there several hours before midnight. (D) Germane Attorney FAX’s and get there 9 hour too late.

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23 patentgeekchickNo Gravatar September 22, 2011 at 8:35 pm

Got overworked’s variant today 9.22.11

What to do?
Certificate of mailing from Germany? Not.
Express mail from Germany? Not.
Fax it to USPTO. yes

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24 TheGhostOfBilskiNo Gravatar April 10, 2012 at 11:47 pm

4/6/2012

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25 passedatlastNo Gravatar June 19, 2012 at 5:36 pm

I think I got this today. 6/19/12.

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26 fluidNo Gravatar September 23, 2012 at 8:57 am

I had it 9/22/2012.

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27 RandomNo Gravatar October 15, 2012 at 8:33 pm

Got this one today.

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28 bubzkiNo Gravatar December 11, 2012 at 8:26 am

Saw this 12/10

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29 SteveNo Gravatar December 29, 2012 at 10:26 pm

Had this question 12/29.
One of the possible answers was for John (the not-of-record attorney) to send the document (forget what it was) to Steve (another attorney of-record) who would then send the doc to the PTO, but I answered that that John could fax from Germany to the PTO.

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30 patentmanNo Gravatar August 1, 2015 at 9:49 pm

Fax cannot be used-MPEP 1834.01 paragraph 2

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31 ZNo Gravatar March 31, 2013 at 3:05 pm

Got Overworkked’s variant on 3/30/13.

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32 VinoNo Gravatar November 21, 2013 at 10:18 pm

Had this on 11/14

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33 TheHumanFamilyNo Gravatar January 8, 2014 at 12:36 pm

Had this one. Measured the start date for future calculation of term to be the PCT filing date (or the date the Fee Oath and Translation arrive if before 11/29/00), and NOT the prior German filing date. Passed.

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