Comments on: Q) Spanish Phone (MPEP 1500, Design Patent) http://mypatentbar.com/2007/11/14/q27-spanish-phone/ Patent Bar Review and Study Guide Sat, 19 May 2012 22:04:39 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: CG http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-39482 CG Thu, 26 Apr 2012 11:28:10 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-39482 Got the variant on 4/25/12 Got the variant on 4/25/12

]]> By: Sol http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-38070 Sol Wed, 11 Apr 2012 19:11:58 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-38070 Foreign Utility disclosing a drawing showing the design 12 month, US Utility nonpro claiming foreign priority while the US nonpro is still pending filing a Design Continuation app to claim the priority of the US Utiliy nonpro, 120 met(since you have a drawing showin the design, then OK you get the date of the US Utility nonpro fiing date. BUT, can you further reach the Foreign date? NO, because it is out of 6 month Meanwhile, the Foreign Utility is a 102(d) art Foreign Utility disclosing a drawing showing the design 6 month, US Utility nonpro claiming foreign priority while the US nonpro is still pending filing a Design Continuation app to claim the priority of the US Utiliy nonpro, 120 met(since you have a drawing showin the design, then OK you get the date of the US Utility nonpro fiing date. BUT, can you further reach the Foreign date? YES, because it is within 6 month Meanwhile, the Foreign Utility is NOT a 102(d) art. If the drawing is not included in the US Utility nonpro, then the design is NOT even entitled to the US Utility nonpro date let alone the Foreign Utilty date. Then you can say it is CIP, of course, but it does no good. The actual filing date is the effective filing date, if >6 month, Foreign is a 102(d) art. If <6 month, Foreign is not a 102(d) art. Also, the Foreign app need to issue or say has mature into enforcable rights. Drawing is just an easy example to mean 112 needs to be satisfied. It can words. Foreign Utility disclosing a drawing showing the design
12 month, US Utility nonpro claiming foreign priority
while the US nonpro is still pending
filing a Design Continuation app to claim the priority of the US Utiliy nonpro, 120 met(since you have a drawing showin the design, then OK you get the date of the US Utility nonpro fiing date.
BUT, can you further reach the Foreign date? NO, because it is out of 6 month
Meanwhile, the Foreign Utility is a 102(d) art

Foreign Utility disclosing a drawing showing the design
6 month, US Utility nonpro claiming foreign priority
while the US nonpro is still pending
filing a Design Continuation app to claim the priority of the US Utiliy nonpro, 120 met(since you have a drawing showin the design, then OK you get the date of the US Utility nonpro fiing date.
BUT, can you further reach the Foreign date? YES, because it is within 6 month
Meanwhile, the Foreign Utility is NOT a 102(d) art.

If the drawing is not included in the US Utility nonpro, then the design is NOT even entitled to the US Utility nonpro date let alone the Foreign Utilty date. Then you can say it is CIP, of course, but it does no good. The actual filing date is the effective filing date, if >6 month, Foreign is a 102(d) art. If <6 month, Foreign is not a 102(d) art.

Also, the Foreign app need to issue or say has mature into enforcable rights.

Drawing is just an easy example to mean 112 needs to be satisfied. It can words.

]]> By: TheGhostOfBilski http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-37999 TheGhostOfBilski Wed, 11 Apr 2012 03:46:31 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-37999 4/6/2012 4/6/2012

]]> By: MC http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-37498 MC Thu, 05 Apr 2012 17:51:42 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-37498 Like Voodoodaddy, I also agree with Interen. The CIP is NOT automatically barred via 102(d), however, it IS vulnerable to a 103 rejection based on the foreign patent. So basically "102(d) is the enemy of the CIP" ONLY if the CIP is an obvious variant of the foreign patent, which is usually the case anyway. [MPEP 2135.01, I. B: "If the foreign application issues into a patent before the filing date of the CIP, it may be used in a 35 U.S.C. 102(d)/103 rejection if the subject matter added to the CIP does not render the claims nonobvious over the foreign patent.... Foreign patent can be combined with other prior art to bar a U.S. patent in an obviousness rejection based on 35 U.S.C. 102(d)/103).] Misspatent's explanation is incorrect because the MPEP quote she provides is NOT in the context of a CIP. Rather, it is referring to the "same invention" requirement of the original US application. Can someone confirm? Like Voodoodaddy, I also agree with Interen. The CIP is NOT automatically barred via 102(d), however, it IS vulnerable to a 103 rejection based on the foreign patent. So basically “102(d) is the enemy of the CIP” ONLY if the CIP is an obvious variant of the foreign patent, which is usually the case anyway. [MPEP 2135.01, I. B: "If the foreign application issues into a patent before the filing date of the CIP, it may be used in a 35 U.S.C. 102(d)/103 rejection if the subject matter added to the CIP does not render the claims nonobvious over the foreign patent.... Foreign patent can be combined with other prior art to bar a U.S. patent in an obviousness rejection based on 35 U.S.C. 102(d)/103).]

Misspatent’s explanation is incorrect because the MPEP quote she provides is NOT in the context of a CIP. Rather, it is referring to the “same invention” requirement of the original US application.

Can someone confirm?

]]> By: JRS http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-32623 JRS Thu, 23 Feb 2012 21:41:19 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-32623 Checked this at PTO. "C" is the Correct Answer. Checked this at PTO. “C” is the Correct Answer.

]]> By: seanz http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-30456 seanz Thu, 02 Feb 2012 22:18:56 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-30456 I think they're referring to the point that when you file a CIP, your added disclosure has to be less than 6 months after the filing date of foreign application too to properly claim priority as to the added new disclosure I think they’re referring to the point that when you file a CIP, your added disclosure has to be less than 6 months after the filing date of foreign application too to properly claim priority as to the added new disclosure

]]> By: Jen http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-29403 Jen Thu, 19 Jan 2012 19:10:10 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-29403 Can you please explain to me what "CIP kills the design" or something like that? If you file a CIP, what happens? Can you please explain to me what “CIP kills the design” or something like that? If you file a CIP, what happens?

]]> By: Bagelman http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-29395 Bagelman Thu, 19 Jan 2012 18:01:26 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-29395 Got the variant version 1/18/12 Got the variant version 1/18/12

]]> By: ChemEEE http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-21874 ChemEEE Wed, 09 Nov 2011 23:26:56 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-21874 Got Maggie's variant 11-7-11 answered same as her -- If the prior patents anticipate or render obvious the new design, 102(d) kills the CIP Got Maggie’s variant 11-7-11
answered same as her — If the prior patents anticipate or render obvious the new design, 102(d) kills the CIP

]]> By: Jamecam http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-19409 Jamecam Mon, 31 Oct 2011 02:34:30 +0000 http://mypatentbar.com/2007/11/14/q27-spanish-phone/#comment-19409 I got this question on 10/29/2011. The facts stated that the a foreign design patent was obtained and a U.S. design patent was filed within 6 months. A CIP application was filed after the 6 month deadline which could not claim the filing date of the previous application because the claims were not supported by its disclosure. I chose the answer that the applicant was barred by 102(d). I got this question on 10/29/2011.

The facts stated that the a foreign design patent was obtained and a U.S. design patent was filed within 6 months. A CIP application was filed after the 6 month deadline which could not claim the filing date of the previous application because the claims were not supported by its disclosure.

I chose the answer that the applicant was barred by 102(d).

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