Test takers report a question regarding foreign prioirty and Mexican Nationsal. This question is ssometimes confused with the “Spanish Phone” question.
Foreign Prioirty
Three people in Mexico apply for a patent in Spanish at the Mexican Patent Office. Two people are Mexican native, but reside in the U.S. (Mexican nationals), and one is a U.S. citizen, but resides in Mexico. Is the UPSTO the receiving office and why?
Variant – also include an American Company
- I think the point of that question was that the application was still filed in Spanish to the USPTO, so the PTO would not be able to be the RO regardless of nationality.
- In response to the question about the mexican/corp, I answered that the application would be forwarded to the IB because it was filed in Spanish. Based on the rule that I found, if the application was in English, it would have been ok because at least one inventor was a US resident and the applicant (corporation) was a US national. I’m pretty sure I found that somewhere in Chapter 1800.
- The USPTO can act as R/O if at least one of the inventors is a U.S. National.
{ 11 comments… read them below or add one }
For the foreign priority variant of the application -
MPEP 1803: “The U.S. Receiving Office continues to accept applications only in English. See 35 U.S.C. 361(c). PCT Rules 20.4(c), 26.3ter(a) and 26.3ter(c) permit an international filing date to be accorded even though portions of an international application are in a language not acceptable to the Receiving Office. PCT Rules 20.4(c), 26.3ter(a) and 26.3ter(c) are not compatible with the national law applied by the United States Patent and Trademark Office (USPTO) as Receiving Office. Thus, the USPTO has taken a reservation on adherence to these Rules pursuant to PCT Rules 20.4(d), 26.3ter(b) and 26.3ter(d). As a result, PCT Rules 20.4(c), 26.3ter(a) and 26.3ter(c) shall not apply to the USPTO as Receiving Office for as long as the aforementioned incompatibility exists.”
Does MPEP 1803 mean then it wouldn’t be filed, and the USPTO would forward it to the international RO?
MPEP 1810: “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 19.4 provided they are in a language accepted by the International Bureau as receiving Office.”
The Spanish application should be afforded the filing date as its priority date, however, because the USPTO is not a competent RO, any initial search or examination will be performed at the Int’l RO.
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I disagree; the Spanish application should not be afforded the filing date in the US RO as priority date.
1803 states that the US has taken a “reservation” to the PCT rules: meaning it will ignore those specific rules. The PCT rules that are “ignored” require a RO to afford the filing date to an application that does not comport to the RO’s language requirements. So, under the PCT rules, the US would have to grant the filing date to the Spanish application even though it violates the USC rule that all apps must be in English to get a filing date. That means that they will not obey the PCT rules and will accordingly not grant a filing date to any application not in the RO’s designated language (here Spanish).
Pay special attention to the paragraph of 1810 quoted above. There is no mention of according a filing date as of the date received. However, the paragraph in section 1810 preceding the quoted paragraph explicitly states that an application that does not comply with the requirement of having nationals as applicants will still be afforded a filing date:
“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.”
Such statement is noticeably absent from the paragraph discussing affording filing date. Therefore, filing date is date received by International RO.
1810, under “THE INTENATIONAL FILING DATE”, in particular the passage quoted above (“Nonetheless, …”).
Even if none of the applicants was either a US resident or a US national, as the MPEP states, the date will not be lost as a filing date for the IA if at least one applicant is a resident or national of any PCT Contracting State, here Mexico. So if one of the applicants is Mexican or resides in Mexico, doubtless you will receive the filing date from the IB, and it will be the date it was filed with the incompetent RO.
Here there was a US resident and a US national as well, each again qualifying to receive the filing date even though an incompetent RO was used due to the language not being English.
edit: “(here English)” at the end of the second paragraph beginning 1803.
In my opinion, if a non-English application is submitted to the US/RO, then you are accorded a filing date and the app is submitted to the IB.
See 1810 (with arrows added for emphasis): “PCT Rule 19.4 provides for transmittal of an international application to the International Bureau as Receiving Office in certain instances. For example, when the international application is filed with the United States Receiving Office and the language in which the international application is filed is not accepted by the United States Receiving Office, or if the applicant does not have the requisite residence or nationality, the application may be forwarded to the International Bureau for processing in its capacity as a Receiving Office. See 37 CFR 1.412(c)(6). >>The Receiving Office of the International Bureau will consider the international application to be received as of the date accorded by the United States Receiving Office.<>or is in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office.<<”
Note that his is in accordance with PCT Rule 19.4, which I don’t believe is in conflict with any US rules (i.e., there isn’t a US Rule which supplants PCT Rule 19.4, and therefore PCT RUle 19.4 applies).
I believe the question is getting at the following portion of the MPEP:
1810 – “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).”
Question39 from the October03 PM exam asked which one of the following would not get a filing date:
(A) The description and claims are in German.
(B) The Request is signed by a registered attorney rather than the applicant.
(C) The sole applicant is a Canadian resident and national.
(D) The application does not contain a claim.
(E) The application is not accompanied by any fees.
Answer key: correct choice is D) app does not contain a claim. The explanation says tha A) and C) are incorrect b/c PCT Rule 19.4 says that if an application is not filed in the prescribed language or is filed by an applicant for which the Office to which the application is submitted is not competent, such application will be forwarded to the International Bureau which will act as receiving Office and accord a filing date as of the date of receipt in the USPTO
PS: Q39 Oct03 fact pattern: app was filed in US RO
Thanks Derrick, that question pretty much explains the PCT rules:
If Applicant not a US citizen or national, or
the application is in different language (i.e. for US/RO not in english)
application still receives a filing date, but app. is sent to IB
Got this Q. Maxican, file PCT to USPTO, in Spanish. The answer is USPTO will not be the receiving office because it is not in English. There was no option related to forwarding to international RO.