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.
{ 8 comments… read them below or add one }
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.
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.”
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.
Remember not to get tripped up by the blurring of international filing date and 102(e). They are separate and distinct.
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.
Ptt,
There are two fax answewrs. Which one did you pick? THe one with smith?
Thanks
What is the answer to comment 1? The answer with Smith or the one with Virginia?
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.