Q) Costa Rica and Sweeden – PCT (1800)

by patentbar on September 20, 2007 · 67 comments

in Exam Questions

There were two PCT questions regarding 102(e) date, one in which the filing date was november 20, 2000 and an identical one in which the filing date was in december 2000. a couple of PCT questions regarding filing dates of PCT aplications in US/RO where applicants are not citizens (one where inventors are from costa rica and one where inventors are from sweden). the answers to the two questions are the same (filing date as of date received at US/RO), but the sweden questions tries to trick you up and make you think they will not be afforded a filing date as of the date received at US/RO).

PCT Questions
1) Filing date is same as filed at RO/US when everything’s right but all apps are non-US citizens
2) There is NO 102(e) date for a PCT national stage patent or publication filed after Nov. 29, 2000 that does not publish in English (even if Fee/Oath/Translation submitted)
3) Pre-Nov. 29, 2000 PCTs get a 102(e) date as of receipt of last of Fee/Oath/Translation
4) When an applicant doesn’t file a complete spec with the International RO, an invitation to correct will be sent, giving between 10 days and 1 month to correct (see PCT rule 26.2). However, the filing date accorded the application, much like with a Notice of Omitted Items, will be when the error is corrected; thus, if the 1-year term from the priority app sought to be claimed in the PCT expires DURING the 1-month period to correct, the latest you can really file the missing spec pieces is the 1-year deadline, regardless of how much time is left in the 1-month invitation. (Again, see PCT Rule 26.2 and MPEP 1810).

About 10 PCT. It was funny – I got 2 questions of the same type (Costa Rican inventors, US RO sends it to IB RO then same exact details – with German inventors)


PCT Q – 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.

I narrowed to 2 choices & selected a. b/c the extra publication sounded hokie in b. – note that I’m not sure if my answer is correct. 

{ 67 comments… read them below or add one }

1 mymrhNo Gravatar August 11, 2008 at 1:37 am

I had 3 questions (yes, three questions including the two above) related to this topic in my exam. For all 3 questions, I chose applcant got the filling date and RO will forward the applicantion to IB, but I could be wrong on one or two of 3 questions. I suggest to study this topic before the exam.

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2 mkw September 2, 2008 at 12:44 pm

Costa Rica is a member of the PCT (MPEP 1817)

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3 patentbarNo Gravatar September 3, 2008 at 3:52 pm

““I also wanted to note that I did get both the Costa Rican and the German nationals PCT questions. It was bizarre, and I almost wasted a ton of time trying to figure out what the difference was, but, in the end, I decided they had the exact same fact pattern and the exact same answers, so I doubled down on both, and am pretty sure I got them right (forwarded to the international bureau).” Are these questions not in the exam questions yet? I thought that they were already documented.

And do these questions relate to “I think the question gave a fact pattern and then asked where the international application will be sent to. The answers listed were various offices: US receiving, IB, ISA. The answer was:

“By 13 months from the priority date, the receiving Office should prepare and transmit a copy of the international application, called the search copy (SC), to the International Searching Authority (ISA); and forward the original, called the record copy (RC), to the International Bureau (IB)” (MPEP 1800, p.4)”

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4 PatentbarNo Gravatar January 27, 2009 at 10:45 pm

1/29/08 – 3 Questions on this. Swedens, Germans & Costa Ricans. Hopefully the answer was the same for all; They get the filing date when they gave the IA to the USPTO, but the USPTO will forward it to the IB.

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5 Matt B.No Gravatar March 11, 2009 at 11:45 am

I also got 3 questions on this, with the only differences being the country the applicants were from. Two were PCT countries and one was a non-PCT country. I answered for all three that they would get a filing date and the app would be forwarded to the IB.

I believe that PCT Rule 19.4 (Appendix T) answers this question.


(a) Where an international application is filed with a national Office which acts as a receiving Office under the Treaty but
[…]

(i) that national Office is not competent under Rule 19.1 or 19.2 to receive that international application, or

(ii) that international application is not in a language accepted under Rule 12.1(a)

[…]

(b)…that national Office shall[…]promptly transmit it to the International Bureau. […] The international application so transmitted shall be considered to have been received by the International Bureau[…]on the date of receipt of the international application by that national Office.

The filing date is thus the date it was received, except that, per Rule 19.4(c), the date will be slightly different for Rules: 14.1(c) (transmittal fee), 15.4 (international filing fee), and 16.1(f) (search fee).

Because the questions asked only when the priority/filing date will be, I answered for all that it will be given the date the application was received at the office that was not competent to receive it.

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6 Art WilliamsNo Gravatar October 6, 2009 at 11:09 am

Matt,

I don’t understand how to reconcile the three cases below from Rule 19 of Appendix T with your statement above that a person who is neither citizen nor resident of a PCT member state can get an IA filing date? I understand the three cases below to cover all the possibilities of getting a filing date.

(i) — with the national Office of or acting for the Contracting State of which the applicant is a resi-dent,
(ii) — or with the national Office of or acting for the Contracting State of which the applicant is a national, or
(iii) — irrespective of the Contracting State of which the applicant is a resident or national, with the International Bureau.

Thanks, Art Williams

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7 T.A.No Gravatar March 23, 2009 at 10:15 am

1803 discussed a second publication:

“Even though the United States Patent and Trademark Office has begun pre-grant publication under 35 U.S.C. 122(b), the United States has not removed its reservation under PCT Article 64(3) because not all United States patent applications are published. See 35 U.S.C. 122(b)(2). The application will, however, be published under 35 U.S.C. 122(b) if it enters the national stage in the United States. It will be published again if it is allowed to issue as a United States patent.”

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8 matt30No Gravatar May 10, 2009 at 11:45 am

I got both Costa Rica and Sweden versions yesterday.

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9 balokNo Gravatar September 1, 2009 at 8:49 pm

If all of the applicants are from non-PCT countries, the application won’t get an international filing date because PCT Rule 19.4 doesn’t apply (MPEP 1806).

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10 samboNo Gravatar September 12, 2009 at 10:20 am

Got Cotsa Rica, Sweeden, and Germany, and all the fact patterns of two of them were almost identical, all 3 dealt with the US/Ro. In two of them, all three applicants were not citizens of the US. I believe both had application written in English. One answer was saying that they wont get a filing date b/c US/RO is not competent (due to applicant lack of citizenship) and they wont get a filing date. Another answer was, although the US/RO may be incompetent, they will forward to US/RO. I put that answer for both b/c I saw it verbatim in MPEP but I didnt know the process enough to distinguish the questions

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11 BalokNo Gravatar September 14, 2009 at 5:41 am

I got the Costa Rica and Sweden versions when I took the exam on September 2d. The actual answer choices were slightly different in the two cases, but the net result was the same. My guess is that either they included the duplicate questions as a psychological test (how many people taking the exam will give the same answer when the same question is asked twice) or that it was the result of a mistake: either the Costa Rica question in the early 1990s and the exam writers failed to notice that Costa Rica joined the PCT, or that they meant for one of the questions to have a submission in a language other than English, but forgot to make the change when they cut and pasted the question.

I got a German inventor question, but the intent of the question was not related to PCT and priority dates (even though that information was given in the question), but rather to test whether you know that the inventor doesn’t have to provide a translation into English of a foreign-language priority document unless the USPTO specifically asks him. 35 USC 119 (b)(1) says that you only have to submit the application number, country, and filing date; 35 USC 119 (b)(3) says that the Director *may* request a translation.

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12 BalokNo Gravatar September 14, 2009 at 5:45 am

My previous reply should have read “. . .either the Costa Rica question *was originally written* in the early 1990s, and the exam writers failed to notice that Costa Rica joined the PCT *in 1999*. . .”

Sorry about that.

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13 Lucifer JohnsonvilleNo Gravatar December 8, 2009 at 1:02 pm

Q: 3 inventors from Sweden file a IA in a USRO on Jan 4, 2004 (*Non Us residents) with english translation and necessary documents.

1. Is the USRO competent?
2. What will they do with the application?

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14 GoJacketsNo Gravatar December 8, 2009 at 2:19 pm

Quoting 1805:

“PCT Rule 19.4 provides for transmittal of an IA to the IB as RO in certain instances. For example, when the IA is filed with the USRO and

[a] the language in which the IA is filed is not accepted by the USRO, or
[b] if the applicant[s] does not have the requisite residence or nationality,

[then] the IA may be forwarded to the IB for processing in its capacity as a RO. See 37 CFR 1.412(c)(6). The RO of the IB will consider the IA to be received as of the date accorded by the USRO.”

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15 Lucifer JohnsonvilleNo Gravatar December 8, 2009 at 6:10 pm

The three inventors were from sweden and it was filed in english.

Is the USRO competent? I would say yes and they will fwd to the IB for processing in its capacity as a RO.

if so there were two different answers where they were competent (*1 were they were not).

Who had this question recently? What was the answer.

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16 Lucifer JohnsonvilleNo Gravatar December 9, 2009 at 11:48 am

I was wrong:

The office is not competent-

*A pct application designating the US must include one applicant who is a resident or national of the US, and the application must be made in the name of the inventors.

Therefore, the office is not competent, but the inventors will be afforded the FD as received in the USRO (*since filed in english and other criteria met).

Please confirm.

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17 BigbadvoododaddyNo Gravatar July 2, 2011 at 4:49 pm

confirmed

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18 Lucifer JohnsonvilleNo Gravatar December 9, 2009 at 12:24 pm

PCT Rule 59.3 was amended July 1, 1998 to provide a safeguard in the case of a Demand filed with an International Preliminary Examining Authority which is not competent for the international preliminary examination of a particular international application. The USPTO will forward such a Demand to the International Bureau and the International Bureau will forward the Demand to a competent International Preliminary Examining Authority pursuant to PCT Rule 59.3(c). The competent International Preliminary Examining Authority will process the Demand based on the date of receipt in the USPTO. See 37 CFR 1.416(c)(2).

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19 Lucifer JohnsonvilleNo Gravatar December 9, 2009 at 12:35 pm

Where no applicant indicated on the request papers is a resident or national of the United States, the USPTO is not a competent receiving Office for the international application under PCT Rule 19.1(a). Nonetheless, the date the international application was filed in the USPTO will not be lost as a filing date for the international application if at least one applicant is a resident or national of any PCT Contracting State.

Sorry for the mulitple SWEDEN posts—- here is the final answer.

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20 ADNo Gravatar December 11, 2009 at 10:42 am

BE CAREFUL Filing Date v. Prior Art 102(e) Date:

I had two back to back questions as mentioned in the original post with Costa Rica & Germany.

One of the questions asked about the prior art 102(e) date and one asked about the patent term being measured from the filing date (which claimed a US provisional priority).

I believe (and correct me if I am wrong) that the 102(e) date is measured from the US provisional, while the filing date is from International Application (no priority claimed)

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21 SNo Gravatar April 14, 2010 at 4:17 pm

Is a provisional application ever used to measure the 102(e) date?

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22 SNo Gravatar April 14, 2010 at 4:18 pm

Can somebody pl direct me to the concerned chapter?
Thank you/

23 RickNo Gravatar May 16, 2010 at 4:11 am

706.02(f)(1) Examination Guidelines for Applying References Under 35 U.S.C. 102(e)

“If such an international application properly claims benefit
to an earlier-filed U.S. or international application,
or to an earlier-filed U.S. provisional application,
apply the reference under 35 U.S.C. 102(e) as of the
earlier filing date, assuming all the conditions of
35 U.S.C. 102(e), 119(e), 120, or 365(c) are met.”

24 StephenNo Gravatar August 14, 2010 at 5:08 pm

Yes, the EARLIEST of the filing dates. The patent term would be from the international filing date I believe. I don’t think provisional applications are ever used as a measurement for patent term.

25 toomuch23No Gravatar November 1, 2010 at 9:08 pm

The above is correct: Priority claims = 102(e) dates for U.S. apps, Int/PCT filing for Patent term

26 LMNo Gravatar March 21, 2011 at 4:29 am

provisional application:

102(e) can be measured from filing date of provisional application PROVIDED all the conditions are met.

BUT

Patent term will never be from provisional/foreign application even if all conditions are met.

Patent Term is always from earlier non-provisional application (PCT is included as US application if all the conditions are met – resident / citizen, english, designated US, filed after 11/29/2000)

27 LostNo Gravatar March 21, 2011 at 11:58 pm

What if the IA claims priority to a NP US patent? When would the term of the ensuing 371 be measured from? the IA or the NP US?

28 LMNo Gravatar March 22, 2011 at 3:26 am

Lost,

to my understanding, yes IA can be used for patent term if later filed NP claim benefits of IA and IA does comply with requirements.

29 LMNo Gravatar March 22, 2011 at 3:29 am

Lost,

Sorry, got it wrong for your questions – if IA claims benefits of NP then terms starts from NP

This is what I understand. Correct me if I am wrong.

LM

30 International Searching AuthorityNo Gravatar January 23, 2010 at 3:44 am

It’s Sweden, not Sweeden.

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31 Emily M.No Gravatar February 13, 2010 at 9:02 pm

I got Sweden, Germany, and Costa Rica – same fact pattern, same date – all had answer choices of keeping the filing date but forwarding to IB. There was also another similar question, I think the IA was filed in another language.

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32 SNo Gravatar June 5, 2010 at 6:33 am

I got all the three with the same fact patterns, same date- all had answer choices of keeping the filing date but forwarding to IB.

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33 AnneNo Gravatar January 19, 2011 at 4:00 pm

I got this one today, all three version of applicants being nationals & residents of Swden or Costa-rica or Germany.

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34 RodneyNo Gravatar January 25, 2011 at 5:13 pm

Just like Anne, I got all three versions on my exam today.

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35 PattiNo Gravatar February 19, 2011 at 6:05 pm

I got the Sweden question. The answer is what mymrh said it was: chose applcant got the filling date and RO will forward the applicantion to IB; USPTO is not competent

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36 YesUCanNo Gravatar February 20, 2011 at 4:25 am

Had the same question as Patti on 2/18.

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37 Ying JiangNo Gravatar February 21, 2011 at 9:09 pm

I am going to take the Pat bar in early March, 2011. Do we have any other kind of PCT questions? Please post. I will post my questions as much as I can remember after the exam. Thank you!

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38 patentworldNo Gravatar March 13, 2011 at 8:36 pm

I took the exam 3/3/2011, and a version of this question included some different information, in that: The applicant, a corporation that is a US resident, and two inventors, both from Mexico, and neither are residents/citizens. I chose an answer similar to “gets a FD and is forwarded by the US/RO.” The applicant vs. inventor seems tricky. Any thoughts?

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39 LMNo Gravatar March 21, 2011 at 4:39 am

hmm, I think applicant refers to real person and not legal person like corporation. However, if any one applicant is member of PCT country it will be given filing date – and Mexico is a member country so it will get filing date regardless of one of being corporation.

Any thoughts?

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40 OverworkkedNo Gravatar April 23, 2011 at 7:46 pm

MPEP 1805, CFR 1.421 and PCT 59.3 all point to the Mexican fact pattern getting FD on date filed with USRO and then forwarded for processing.

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41 misspatentNo Gravatar March 31, 2011 at 12:23 pm

MPEP 1805: “However, the laws of the various designated States regarding the requirements for applicants must also be considered when filing an international application. For example, the patent law of the United States of America requires that, for the purposes of designating the United States of America, the applicant(s) must be the inventor(s) (35 U.S.C. 373, PCT Article 27(3)).”

In the US, the applicant must be an inventor, and an inventor must be a person.

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42 FredsNo Gravatar May 31, 2011 at 2:05 am

Supreme Court in Citizen United said Corp is a person, but I don’t think the USSC controls PTO. PTO answers to no except the president! j/k

The last part of the language is really confusing. “For the purpose of designating …” Is applying an IA for the purpose of designating …? I don’t think so.

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43 MongrelNo Gravatar September 20, 2012 at 12:36 am

I think the issue here is not so much whether a Corporation is a person but whether Corporation was the inventor. As 1805 states that “…for the purposes of designating the United States of America, the applicant(s) must be the inventor(s) (35 U.S.C. 373, PCT Article 27(3))”

44 PatfieldNo Gravatar July 6, 2011 at 3:59 pm

Definitely Read the very first intro chapter of MPEP 1800 …1801.

It is a great review for those familiar and a good first read for those just starting out.

It is also where the answers to these questions come from.

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45 giaps2No Gravatar July 26, 2011 at 8:09 pm

Saw this question or a variant on 07/25/11. One or all of the inventors was competent to file with the US/RO but it wasn’t in English.

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46 BobNo Gravatar August 3, 2011 at 2:00 am

Variant on 8/2/11

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47 maggieNo Gravatar September 14, 2011 at 4:51 pm

Collected from Old posts and my own test

Q14 A) Costa Rica + Sweden variants
All three inventors from Sweden file a IA in a USRO on Jan 4,2004 (*Non Us residents) with English translation and necessary documents. Q Is the USRO competent? Q What will they do with the application?
All three applicants were From Sweden and not citizens of the US. But had application written in English.
(1) Wont get a filing date b/c US/RO is not competent (due to applicant lack of citizenship) and they wont get a filing date.

Q14B) Mexican PCT variant —
Two Mexican inventors and one US national inventor, and a corporation that is a US resident file an IA application in Spanish language at USPTO. Q Is the USRO competent? Q What will they do with the application?
(1) Although the US/RO may be incompetent, they will forward to US/RO.
(2) App will be forwarded to IB/RO and given date which it was received at US/RO.

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48 TheGhostOfBilskiNo Gravatar April 6, 2012 at 3:13 pm

Just noting for those of you reading through – Q14A above is lacking two answer choices. Read next post from Maggie for add’l choices.

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49 KeenerNo Gravatar May 18, 2012 at 3:45 pm

Thanks Ghost…We need more posts like yours. Too bad we can’t flag outdated or erroneous posts.

50 maggieNo Gravatar September 14, 2011 at 4:53 pm

Q14A) Costa Rica + Sweden variants
All three inventors from Sweden file a IA in a USRO on Jan 4, 2004 (*Non Us residents) with English translation and necessary documents. Q Is the USRO competent? Q What will they do with the application?
1) wont get a filing date b/c US/RO is not competent (due to applicant lack of citizenship) and they wont get a filing date.
2) although the US/RO may be incompetent, they will forward to US/RO.
(3) App will be forwarded to IB/RO and given date which it was received at US/RO.

Answer (3) checked at PTO VA –will be forwarded to IB/RO and given date which it was received at US/RO.

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51 MIANo Gravatar September 19, 2011 at 2:52 pm

Thank you maggie for that posting!!

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52 TomodachiNo Gravatar October 15, 2011 at 1:33 am

Thanks maggie!

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53 DavidNo Gravatar February 19, 2012 at 1:17 am

Saw Sweden Q on 2/10/2012.
Just remember that app will receive filing date and that USPTO will forward the app to IB.

Another variation where in 2002, Japanese resident/national file PCT app in Japaneses at USPTO, designating ONLY Japan. What should USPTO do?
A) invite to submit English translation
B) invite to submit English translation w/ surcharge fee
C) give filing date once English translation is submitted
D) forward it to Japanese RO and not give a filing date
E) transmit it to IB once transmit fee is submitted

I believe E is the correct answer

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54 KerstinNo Gravatar March 18, 2012 at 5:09 pm

I believe E is right above-it was my understanding that if the US receives an IA that is not in English and doesn’t designate US, it is unequipped to handle it, thus it will automatically forward on to IB to deal with language barrier issue. Sorry I don’t have a reference.

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55 peeJNo Gravatar May 23, 2012 at 6:09 pm

“An all too common occurrence is that applicants will file an international application in the U.S. Receiving Office and no applicant has a U.S. residence or nationality. Applicants are cautioned to be sure that at least one applicant is a resident or national of the U.S. before filing in the U.S. Receiving Office. Where no applicant indicated on the request papers is a resident or national of the United States, the USPTO is not a competent receiving Office for the international application under PCT Rule 19.1(a). Nonetheless, the date the international application was filed in the USPTO will not be lost as a filing date for the international application if at least one applicant is a resident or national of any PCT Contracting State. Under PCT Rule 19.4, the USPTO will receive the application on behalf of the International Bureau as receiving Office (PCT Rule 19.4(a)) and, upon payment of a fee equal to the transmittal fee, the USPTO will promptly transmit the international application to the International Bureau under PCT Rule 19.4(b). However, if all of the applicants are indicated to be both residents and nationals of non-PCT Contracting States, PCT Rule 19.4 does not apply, and the application is denied an international filing date.
The USPTO is also not competent to receive international applications that are not in the English language and, upon payment of a fee equal to the transmittal fee, the USPTO will forward such applications to the International Bureau under PCT Rule 19.4provided they are in a language accepted by the International Bureau as receiving Office.”
MPEP 1810, under The International Filing Date

56 GDBNo Gravatar April 19, 2012 at 6:58 pm

Got Sweden on 19/04/12

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57 GDBNo Gravatar April 20, 2012 at 12:37 am

Also got the Japan one that David quoted above in post #51. I also said E was the answer.
04/19/12

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58 Nick KNo Gravatar April 24, 2012 at 11:50 am

Got Costa Rica today. 4/24/2012

Three inventors, I chose forward to IB and keep filing date

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59 MT40No Gravatar July 27, 2012 at 8:12 pm

Thanks for the above post PeeJ. It really cleared things up!

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60 GerdNo Gravatar September 6, 2012 at 10:27 am

Hi,

if the USPTO forwards the IA to the IB because it is not competent, it has the right to charge a transmittal fee from the applicant.
Does the applicant then also have to pay one additional transmittal fee to the IB?

And if the filing was done electronically by EPO Online Filing software, where you can only select English as the language, and so you stated the language to be English but it is actually german, what will happen?

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61 fluidNo Gravatar September 23, 2012 at 8:55 am

I had it 9/22/2012.

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62 MojoNo Gravatar September 23, 2012 at 5:59 pm

9/23

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63 Wishful ThinkingNo Gravatar September 25, 2012 at 3:37 pm

Had this on 9/24/12.

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64 RandomNo Gravatar October 15, 2012 at 8:30 pm

Got both Costa Rica and Sweden (10/15).

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65 HopeNo Gravatar November 1, 2012 at 1:07 pm

so is a corporation considered an applicant under the PCT requirements?

MPEP1817.01 “file an international application and to designate Contracting States or regions exists if the applicant is a resident or national of a PCT Contracting State. The applicant can be an individual, corporate entity or other concern. In the case where there are several applicants who are different for different designated states, the right to file an international application and to designate Contracting States or regions exists if at least one of them is a resident or national of a Contracting State. If entry into the U.S. national phase is desired, inventors must be indicated as applicants at least for purposes of the United States.”

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66 TimsvagNo Gravatar February 14, 2013 at 1:46 pm

I got the Swedish citizens with the US as RO, and Japan without foreign filing license. 02/12/13

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67 ZNo Gravatar March 31, 2013 at 2:56 pm

Got Sweden question on 3/30/13.

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