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.
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?
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)?
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.