Q) Japanese Patent – PCT (1800)

by patentbar on August 10, 2007 · 43 comments

in Exam Questions

Question #1)

Japanese Application (45 days); Application under Non-Pub Request filed in JP, Unlicensed foreign filing – 45 days to correct – 10/03 AM 44 – Japan application filed after request for nonpublication results in abandonment of US filing b/c no notice filed in 45 days, Japanese app exceeding 45-day window to correct promise not to publish outside US. – Post 11/29/2000 Inventor files IA based on Japanese patent app that’s designated to all contracting states except to Japan. Inventor doesn’t request publication for IA but requests priority to Japanese app. After, same inventor files un-translated non-provisional at USPTO basing priority on IA. Which of following will result?

a. App will be sent to USRO who’ll forward app to IO, USPTO won’t publish but will invite inventor to file app and it’ll publish at USPTO if inventor requests it go national.

b. Will publish IA at 18 months & then publish again at USPTO when translated to English, USPTO will invite inventor to file and re-publish if inventor goes national.

c-e were choices I eliminated & can’t remember.

Question #2)

On January 19, 1999, inventor B filed a patent application in the PTO claiming invention X. Inventor B did not claim priority based on a foreign application filed by inventor B on April 3, 1998, in the Patent Office in Japan. In the foreign application, inventor B disclosed and claimed invention X, which inventor B had conceived on August 11, 1997, and reduced to practice on November 5, 1997, all in Japan. The U.S. patent examiner issued an Office action where all the claims in the patent application were properly rejected under 35 USC §102(a) and (e) as being anticipated by a U.S. patent granted to inventor Z on September 1, 1998, on a patent application filed in the PTO on December 5, 1997. There is no common assignee between Z and B, and they are not obligated to assign their invention to a common assignee. Moreover, inventors Z and B, independently of each other, invented invention X, and did not derive anything from the other. The U.S. patent to Z discloses, but does not claim, invention X. Which of the following is/are appropriate reply (replies) which could overcome the rejections under §§102(a) and (e) when timely filed?

(A) File an antedating affidavit or declaration under 37 CFR §1.131 showing conception on August 11, 1997, and actual reduction to practice on November 5, 1997, all in Japan.

(B) File a claim for the right and benefit of foreign priority wherein the Japanese application is correctly identified, file a certified copy of the original Japanese patent application, and argue that as a result of the benefit of foreign priority, the U.S patent is no longer available as a prior art reference against the claims.

(C) Amend the claims to require particular limitations disclosed in inventor B’s application, but not disclosed or suggested in inventor Z’s patent, and argue that the limitations patentably distinguish the claimed invention over the prior art.

(D) (A) and (C).

(E) (B) and (C).

D is the correct answer. Why is B incorrect? Is it because it does not state to use an oath or declaration?

Question #3)

It doesn’t state when the office action was mailed, but is it too late to perfect priority (e.g., 12 months after the Japanese application was filed)?

Question #4)

Applicant filed Japanese app. Then file PCT app, correctly claiming priority. Then file USA national stage app. But there is prior art against USA app. The prior art may be overcome if applicant can make a claim of priority to the Japanese National app. Can the claim of priority be made? I said Yes, so long as verified copy of Japanese National App is filed. There may have been a 16-month requirement too, for claim of priority from the National(?) or PCT (?) app. Or was that a different question? Sorry, there were 3 to 4 different Japanese app questions. There definitely was a question that wanted to know about the 16-month (or was it 17?) requirement for PCT apps, for correcting ..something..

7/18/07 — Sounds like MPEP1828, Priority Claim and Document, may be relevant.

Effective July 1, 1998, applicant may correct or add a priority claim by a notice submitted to the Receiving Office or the International Bureau within 16 months from the priority date, or where the priority date is changed, within 16 months from the priority date so changed, whichever period expires first, provided that a notice correcting or adding a priority claim may in any event be submitted until the expiration of 4 months from the international filing date.

1 seNo Gravatar March 8, 2008 at 9:12 pm

You do not need to state the priority in an oath and declaration:

MPEP 201.14(b), third paragraph states:

For all applications, the claim to priority need be in no special form, and may be made by a person authorized to sign correspondence under 37 CFR1.33(b). No special language is required in making the claim for priority, and any expression which can be reasonably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority. The claim for priority may appear in the oath or declaration, an application data sheet ( 37 CFR1.76), or the application transmittal letter with the recitation of the foreign application.

2 NarNo Gravatar July 4, 2012 at 12:58 pm

Note for application claiming priority after Nov 29th 2000

§ 1.55 Claim for foreign priority.

(a) An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b).


(i) In an original application filed under 35 U.S.C. 111(a), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable. The claim must identify the foreign application for which priority is claimed, as well as any foreign application for the same subject matter and having a filing date before that of the application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply in an application under 35 U.S.C. 111(a) if the application is:

(A) A design application; or

(B) An application filed before November 29, 2000.

3 michaelNo Gravatar March 17, 2008 at 12:00 am

B may be incorrect simply because even if priority is claimed, it is not early enough to antedate the reference.

4 wenabbyNo Gravatar July 31, 2011 at 12:01 am

You also need ENGLISH translation.

5 NarNo Gravatar July 4, 2012 at 1:00 pm

Rule 55


(i) An English language translation of a non-English language foreign application is not required except:

(A) When the application is involved in an interference (see § 41.202 of this title),

(B) When necessary to overcome the date of a reference relied upon by the examiner, or

(C) When specifically required by the examiner.

6 JamieNo Gravatar July 20, 2012 at 10:18 am

Q#2, B is incorrect because prior art patent has a US f/d on Dec. 5, 1997 which is earlier than subject application’s priority date (JP) Apr. 3, 1998. Therefore, prior art patent is still 102(e) prior art even though the applicant perfects the priority benefit from its JP app’n (it means the subject invention was made on the JP f/d). Does this make sense?

7 SWMNo Gravatar March 24, 2008 at 9:43 pm

I believe michael above is correct.
The 102e date will be the filing date.. here that is 12/5/97.

A 3/3/98 foreign priority date will not overcome the rejection.

8 NightB4ExamNo Gravatar June 4, 2008 at 7:58 am

Are you sure (A) is correct. It says nothing about diligence.

9 Sarah W.No Gravatar May 7, 2011 at 7:58 pm

Don’t need diligence because the reduction to practice is before both reference dates. You only need diligence when the reference date is after conception but before reduction to practice.

10 patentbarNo Gravatar August 19, 2008 at 4:42 pm

Variant from forum “Question #5” – Japanese National who is a US resident (what does that mean?) files in Japanese at USRO. Answers: Invite him to provide translation with surcharge, without surcharge, forward to IB (I picked this answer)

11 tttgasNo Gravatar August 20, 2008 at 12:52 am

As for the variant question above, I hope I’m not confusing myself. The way I interpret the MPEP and PCT Rules is that if none of the applicants are either US nationals or US residents (but are residents or nationals of some other PCT contracting state), then an IA submitted to the USRO (or USPTO) requires the transmittal fee in order to forward the IA to the IB and not lose the filing date as the date received by the USRO. (MPEP 1810)

Also, if any IA is not in English and is submitted to the USRO (or USPTO), then the transmittal fee is required to forward the IA to the IB and not lose the filing date as the date received by the USRO. (MPEP 1810)
– So in variant above, the IA would be forwarded to the IB but would require a fee equal to the transmittal fee

But, if an IA is in English, but there are questions regarding residence or nationality (i.e., the US is not clearly competent), there is no fee required for the USRO to forward the IA to the IB and not lose the filing date as the date received by the USRO. (MPEP 1805)
– This might be the case if in the variant above the Japanese national, but US resident, had filed the IA in English.

Also note, if all of the applicants are either residents or nationals of non-PCT contracting states, an IA submitted to the USRO (or USPTO) will not be granted an international filing date at all. (But does being a US resident trump being a non-PCT national??)

As for providing a translation to the USRO in order for them to act in a “receiving office” capacity, that won’t happen. The US has stated they are not competent to receive applications not in English.

Only if an IA is submitted in a PCT contracting state (in the language provided for by that state’s RO) that doesn’t have their own International Searching Authority will an applicant be required to provide a translation so soon after filing.
– The applicant will have a month from filing to submit a translation (into a language acceptable by the ISA) to their RO for free (but the ISA doesn’t notify applicant of this requirement).
– Next when the RO informs the applicant via the notice of positive determination (PCT 20.5) that they have a filing date, the RO will invite the applicant to submit the translation:
(a) within a month from filing (above), or
(b) if the month has already expired since filing, then either within a month from this invitation or two months from filing (whichever is later). But, a submission here requires a “late furnishing fee” (not a ‘surcharge’).
– Finally, if a translation (with any required fee) is not submitted via the above requirements, the IA will be considered withdrawn.

12 Aug25/2008No Gravatar November 25, 2008 at 4:24 pm

Based on what SWM said
The 102e date will be the filing date.. here that is 12/5/97.

A 3/3/98 foreign priority date will not overcome the rejection.

For the question #4) above then, priority cannot be claimed to overcome the rejection and the answer is no???

13 BigbadvoododaddyNo Gravatar July 4, 2011 at 12:42 am

I think Q 5 is an independent fact pattern (from Q 4). It states that the JP patent can antedate the prior art – so yes, then it can overcome the rejection.

14 TexPatBarNo Gravatar May 9, 2009 at 3:36 pm

This kind of a picky question, but humor me…

1803 lists the US “reservations.” One reservation includes PCT Rule 26.3(c)(ter) which states:

“(c) Where the request does not comply with Rule 12.1(c), the receiving Office shall invite the applicant to file a translation so as to comply with that Rule.”

and 12.1(c) states:

“(c) Notwithstanding paragraph (a), the request shall be filed in any language of publication which the receiving Office accepts for the purposes of this paragraph.”

Thus the reservation to rule 26.3(c)(ter) basically means that the USRO will not issue an “invitation to correct” an IA filed in a language other than English.

If this is true, then if a US national/resident files an IA in the USRO in a language other than English, the USRO will NOT invite them to correct and instead transmit to the IB. Yes/no?

15 BigbadvoododaddyNo Gravatar July 4, 2011 at 12:46 am

Yes, that is correct – no invitation to correct. It goes to IB

16 nypatbarNo Gravatar May 18, 2009 at 2:13 am

(B) above is wrong because of Rule 1.55(a)(4)(i)(B): “An English language translation of a non-English language foreign application is not required except:…(B) When necessary to overcome the date of a reference relied upon by the examiner, or…”

The claim to priority in (B) is not accompanied by a translation, thus (B) is wrong.

17 babyeaterNo Gravatar June 27, 2010 at 12:51 pm

Utilizing the foreign priority even with a translation still would not antedate the prior art.

18 BigbadvoododaddyNo Gravatar July 4, 2011 at 12:51 am

Also as a learning point. Translated copies of foreign priorities are not required.
However a certified copy is required in the international stage of an IA. So if it enters the national stage – one cannot claim priority in a timely manner to a foreign application, since by defintion it is greater than 16 months.
Also the USPTO will get a certified copy of the patent from the IB as part of the submissions under 371.

19 SarahNo Gravatar May 18, 2009 at 11:17 am

nypatbar, can you please specify which quesiton you are referring to? Also, what is the correct answer

20 nypatbarNo Gravatar May 18, 2009 at 7:38 pm

Question #2) above. D is the correct answer.

21 samboNo Gravatar September 12, 2009 at 10:55 am

Got it yesterday. Answer is 45 days

22 lets goNo Gravatar June 18, 2010 at 10:25 am

what is the answer for Q1???

23 EntropyNo Gravatar September 28, 2010 at 1:42 am

I think A is correct for #1.

See 1893.01(d)..first sentence. It just doesn’t sound like the PTO would be all excited to publish this stuff (also considering the rule that when the US is the only contracting state, you don’t have to publish your IA at all. See 1803).

24 Fred MartinNo Gravatar January 16, 2011 at 9:29 pm

There are way too many questions herein to be addressing in this kind of forum.

25 AnneNo Gravatar January 19, 2011 at 9:56 pm

Got three questions involving japan patent- nonpublication request+45 days retroactive notice of foreign filing, start day of patent term of PCT appl. claiming priority on both US provisional 119(e) and 120, and 102(e) date of PCT appl. with pre Nov.29.2000 filing date.

26 patenttipsNo Gravatar March 17, 2011 at 3:54 pm

I remember that applicant must rescind nonpublication request AND file notice of foreign filing within 45 days, otherwise it goes ABN and requires petition to revive.

27 BigBadVoodoDaddyNo Gravatar July 11, 2011 at 9:27 pm

Regarding Q 4. If the PCT made a claim to priority of the JP, then that priority claim is automatically transfered to the national stage US app. So there should be no need to claim priority again to the JP app.

28 giaps2No Gravatar July 26, 2011 at 8:10 pm

Saw several Japanese questions on 07/25/11.

29 NickNo Gravatar September 7, 2011 at 5:01 pm

Got Q1 on 9/7/11.

30 patentgeekchickNo Gravatar September 22, 2011 at 8:37 pm

Variant 9.22.11

31 KFNo Gravatar November 2, 2011 at 7:46 pm

Is the answer to Question 1 A or B? I was thinking B….I wish someone would post the answers to all of the questions in one post….

32 AGMNo Gravatar November 15, 2011 at 8:38 pm

I agree anyone wanna put these questions to rest?

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

Got this on 04/19/12

34 jkpatentlawNo Gravatar June 11, 2012 at 3:20 pm

@GDB which one did you get?

35 jkpatentlawNo Gravatar June 11, 2012 at 3:59 pm

About Question Number 3:

Given I don’t know anything about the question other than what is disclosed above, I would say that you have 12 months in a utility patent to assert priority and 6 months in a design patent to do this. Then you have 16 months after the priority date or 4 months after filiing whichever is later to tell the PTO that is what you did (i.e. in order to be given the benefit of the priority you asserted).

Question 4: This just deals with asserting priority within the 12 or 6 months appropriately, then also telling the PTO that you did this within the 16 or 4 months.

36 MikeNo Gravatar September 19, 2012 at 9:12 am

I think that is a bit different. You have 12 months before it can be used as prior art against you. Under 201.14(a), after nov 29,2000 you have 4 months from u.s. file or 16 months from foreign filing to claim the benefit of the priority. If not you have to petition and show it was unintentional for that time period

37 YZNo Gravatar June 12, 2012 at 9:41 pm

Got Q1 on 6/9/12

38 passedatlastNo Gravatar June 19, 2012 at 5:40 pm

Got Q1 on 6/19/12. Inventor files no publication request, than files a patent application in Japan. What affect on U.S. patent application?

I chose A, U.S. application has been abandoned (but can be revived for a fee) because more than 45 days has passed since Japanese application was filed.

39 IndiJonesNo Gravatar June 30, 2012 at 1:47 am

got this 6/29/12

40 NamelessNo Gravatar October 25, 2012 at 9:25 pm

Got this today, but it was word for word the question 44 from the October 13, 2003 exam the the USPTO published.

41 NamelessNo Gravatar October 25, 2012 at 9:30 pm

PS, this isn’t a PCT from MPEP 1800 question, it’s a MPEP 901.03 Nonpublication Requests question.

42 NamelessNo Gravatar October 25, 2012 at 9:37 pm

Sorry, as posted I guess it’s a different question. Q1 needs to be moved, Japan as a title for the question isn’t relevant to the PCT questions. Japan shows up in a lot of questions (rightfully so, Japan and Germany are like #1 and #2 for foreign filings!) But just because it’s Japan doesn’t make it a PCT question. The PCT (international application) questions don’t really have anything to do with the question about foreign filing licences (that’s a totally different topic!)

43 patentmanNo Gravatar July 11, 2015 at 4:43 pm

For question 4, under Hilmer I and II, you cannot claim foreign application offensively but you can claim defensifely, i.e., you can cannot claim foreign application as prior art but you can claim priority date as for foreign application.

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