Q) Design Patent in Country X (10.03.27p)

by patentbar on July 4, 2007 · 10 comments

in Exam Questions

Question #29 from the October 2003 (PM) patent bar exam is in the Prometric database.

On Thursday, February 6, 2003, applicant files an application for a design patent in Country X, which issues the patent on the filing date. In accordance with the patent laws, rules and the procedures as related in the MPEP, what is the last date applicant can file a U.S. design application to avoid any loss of patent rights?

(A) Friday, February 6, 2004 (assume not a Federal holiday).

(B) Thursday, February 5, 2004 (assume not a Federal holiday).

(C) Wednesday, August 6, 2003.

(D) Wednesday, May 6, 2003.

(E) None of the above are correct.

ANSWER: The correct answer is (C). See 35 U.S.C. § 172; MPEP § 1504.02. 35 U.S.C. § 172 provides that the time specified in 35 U.S.C. 102(d) shall be six months in the case of designs. Thus, to avoid a statutory bar under 35 U.S.C. § 102(d), the U.S. design patent application must be made within six months of the foreign filing, i.e., by August 6, 2003. MPEP § 1504.02 states “[r]egistration of a design abroad is considered to be equivalent to patenting under 35 U.S.C. 119(a)-(d) and 35 U.S.C. 102(d), whether or not the foreign grant is published. (See Ex parte Lancaster, 151 USPQ 713 (Bd. App. 1965); Ex parte Marinissen, 155 USPQ 528 (Bd. App. 1966); Appeal No. 239-48, Decided April 30, 1965, 151 USPQ 711, (Bd. App. 1965); Ex parte Appeal decided September 3, 1968, 866 O.G. 16 (Bd. App. 1966). The basis of this practice is that if the foreign applicant has received the protection offered in the foreign country, no matter what the protection is called (‘patent,’ ‘Design Registration,’ etc.), if the United States application is timely filed, a claim for priority will vest. If, on the other hand, the U.S. application is not timely filed, a statutory bar arises under 35 U.S.C. 102(d) as modified by 35 U.S.C. 172. In order for the filing to be timely for priority purposes and to avoid possible statutory bars, the U.S. design patent application must be made within 6 months of the foreign filing.” (A) and (B) are incorrect because they are after the six month period. (D) is not correct because it is not the latest date for filing as required by the question. (E) is not correct because answer (C) is correct.

{ 10 comments… read them below or add one }

1 StephenNo Gravatar August 13, 2010 at 2:01 pm

Question #27 is

27. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is not within the scope of the term “on sale” as it is used in 35 USC 102(b)?

(A) A sale conditioned on buyer satisfaction.
(B) A sale that did not result in a profit.
(C) A single sale of the claimed subject matter.
(D) A commercial offer to sale the claimed subject matter.
(E) An offer to sale the patent rights in the claimed subject matter.

The answer is E because a sale of the patent rights does not qualify as a sale under the a statutory bar under 102(b). I’ve seen a question testing this same concept on one of the old exams as well.

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2 BobNo Gravatar August 3, 2011 at 2:15 am

I got the question about the design patent and country X on 8/2/11

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3 KFNo Gravatar October 23, 2011 at 6:44 pm

Bob or anyone can you help clear up a point of confusion. I thought that the patent application had to be filed within the U.S. PRIOR to the patent being issued in the other country. Here the application was filed and the patent were issued on the same day, so wouldn’t that bar the patent filing in the US?? Or would that only be for utility patents, and because this isa design patent the rule I stated above doesn’t apply. Thanks to everyone-this site is great!

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4 HSNo Gravatar November 23, 2011 at 5:28 pm

I agree with KF. (E) should be the right answer. Patent issued on the same day as filing date. Hence 102(d) bar.

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5 SolNo Gravatar April 4, 2012 at 12:35 am

Within/on 6 months of foreign filing, entitle to foreign priority

after 6 months of foreign filing, NOT entitle to foreign priority

after 6 months of foreign filing, foreign rights become enforceable beofore US filing, BAR

after 6 months of foreign filing, foreign rights become enforceable after and on? US filing, NO BAR

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6 RBL 5/12/12No Gravatar May 3, 2012 at 11:32 am

I think it’s 1yr generally, 6mo design, safe harbor period to file, regardless of what happens in foreign country.

“Rejections under 35 U.S.C. 102(d) as modified by 35 U.S.C. 172 should only be made when the examiner knows that the application for foreign registration/patent has actually issued before the U. S. filing date based on an application filed more than six (6) months prior to filing the application in the United States.” 1500 pg26

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7 KillianRedNo Gravatar March 17, 2012 at 5:23 pm

Got this one 3/17/12

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8 GDBNo Gravatar April 19, 2012 at 7:11 pm

Got this on 04/19/12

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9 mimiNo Gravatar September 21, 2012 at 5:20 am

OK, I was confused what the answer is herein when I read this Q.
(c)? (e)?
I got the answer in Sol’s explanation. (She or he is great)
Applicant can file the US design application having the priority because the US design application was filed within 6 months of filing date of the foreign application. (This is what the Question asks)
But, if the examiner know the fact(already patented), the examiner will reject claims under 102(d).

Is this correct? Any thoughts?

Thank you for everyone..I love this site.

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10 tappylilyiNo Gravatar September 21, 2012 at 12:08 pm

No, if 102(d) does not apply if a US patent application was filed within 6 months of the foreign filing. It doesn’t matter if the foreign application was patented, as long as applicant applies for a US patent within 6 months of the foreign filing, 102(d) will not apply as a bar. See 35 USC 172.

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