Patent Bar Review and Study Guide
Someone file PCT in Australia and finally went to national stage. On the expiration day of 30 months, he file the fee and specification and maybe drawing or else of application with express mail properly. What’s the result? I choose it is abandoned.
Is this correct?
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{ 27 comments… read them below or add one }
More concepts tested on the exam re: PCT
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).
My reading of Rule 26.2 is that the applicant has two months, not one month, to correct the application and/or supply missing parts. The two-month deadline also appears consistent with Rule 20.7/a/i.
Thanks, Art Williams
I agree with you Art Williams. See my post http://mypatentbar.com/2008/08/18/q-missing-parts-pct/
Art, are you sure you’re looking at the rule from MPEP 8th Edition, 4th Revision?
I had PCT Question 2 re Pre-Nov. 29, 2000 PCTs get a 102(e) date as of receipt of last of Fee/Oath/Translation,
In my fact pattern, the very last thing received was the Oath!
Agreed.
I had a similar 102(e) question today:
date1=US app 1
date2=PCT app in Australia claiming priority to US app 1
date3=US app 2 is a continuation of PCT app
the question asks for the 102(e) date of US app 2 — the answer is date3
Do you remember if this was pre 11/29/00 or after?
706.02.f.1 examples cover most all of the variations.
Additional Priority/Benefit Claims:
If the IA properly claimed priority/benefit to any earlier-filed U.S. application (whether provisional or nonprovisional),
there would still be no 35 U.S.C. 102(e)(1) date for the U.S. and WIPO application publications, and
the 35 U.S.C. 102(e) date for the patent will still be 01 July 2002 (the date of fulfillment of the requirements
under 35 U.S.C. 371(c)(1), (2) and (4)).
ANDY – THINK YOU ARE MISTAKEN.
If the potential reference resulted from, or claimed the benefit of, an international application, the following must be determined:
(1)If the international application meets the following three conditions:
(a)an international filing date on or after November 29, 2000;
(b)designated the United States; and
(c)published under PCT Article 21(2) in English,
then the international filing date is a U.S. filing date for prior art purposes 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. *****The subject matter used in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112, first paragraph, in order for that sub706.02(
f)(1) MANUAL OF PATENT EXAMINING PROCEDURE
Rev. 6, Sept. 2007 700-30
ject matter to be entitled to the earlier filing date under 35 U.S.C. 102(e). Note, where the earlier application is an international application, the earlier international application must satisfy the same three conditions (i.e., filed on or after November 29, 2000, designated the U.S., and had been published in English under PCT Article 21(2)) for the earlier international filing date to be a U.S. filing date for prior art purposes under 35 U.S.C. 102(e).
For Post 11/29/2000 app 102(e) dates are based on the Earliest Effective US Filing date for
(1) Domestic 119(e) and 120
(2) International/USA 365(c)
(3) but NOT Foreign filing dates 119(a-d)
102(e) dates for Pre-11/29/2000 app are base when last component to complete application shows up (usually oath)
I think the one weird thing is to overcome a 102(e) rejection from examiner you CAN use foreign priority! But you can’t use foreign priority to est your 102(e) date.
The filing date can also be antedated by applicant’s earlier foreign priority application or provisional application if 35 U.S.C. 119 is met and the foreign application or provisional application “supports” (conforms to 35 U.S.C. 112, first paragraph, requirements) all the claims of the U.S. application.
I got this. Dont remember the fact pattern.
But the answer choices had something to do with 20 months, 26 months, 30 months and 36 months.
Got this question on 6/02/2010. Hoping there was a better answer here.
I rember the answer choices better than the fact pattern.
Fact pattern involves an Aussie PCT; US national stage; only submits specification, oath authorization to charge fees on the last day of the deadline.
Here are almost the exact answer choices:
a. Allowed
b. Disallowed
c. Allowed but need substitute specification
d. 371 treated as a 111
e. Abandoned
What is the answer??
If he mailed the fee via express mail on the date of the 30 month expiration, then the fee was not properly received *prior* to the expiration. Therefore the application is abandoned.
I believe the fee is the only thing (besides S/C/D) that needs to be there before 30 months, Oath and Translation can come late if accompanied with a fee for late submission.
As well as what Francois below says:)
by properly received fee – you mean it should be before the last date?
As I read it, if the fee is deposited by express mail on the date of the deadline, you are good. (371 says “by the date of commencement of the national stage”) US national stage will commence upon expiration of 30 mos from priority date – so date of the deadline counts.
I think you are mistaken babyeater
It is allowed, if I read your question where he submits spec to mean a copy of the IA. Then it is allowed.
If you mean no IA only literally the spec – then it is abandoned.
I think the answer is abandoned because he didn’t submit a copy of the IA.
1893.01(a)(1)Submissions Required by 30
Months from the Priority Date
[R-3]
To begin entry into the national stage, applicant is required to comply with 37 CFR 1.495(b) within 30 months from the priority date. Thus, applicant must pay the basic national fee on or before 30 months from the priority date and be sure that a copy of the international application has been received by the
U.S. Designated or Elected Office prior to expiration of 30 months from the priority date.
And regarding the original question as to abandonment, etc….
1893.02 Abandonment [R-1]
If the requirements of 35 U.S.C. 371(c) are not
complied with by the time period set in ** 37 CFR
1.495(b) and (c), ** the application is considered to
be abandoned, see ** 37 CFR 1.495(h).
Examiners and applicants should be aware that
sometimes papers filed for the national stage are deficient
and abandonment results. For example, if the fee
submitted does not include at least the amount of the
basic national fee that is due, the application becomes
abandoned.
Applicant may file a petition to revive an abandoned
application in accordance with the provisions
of 37 CFR 1.137. See MPEP § 711.03(c).
see also oct.2003.pm
#15
patentbar：
I see you post
More concepts tested on the exam re: PCT
multiple times here. Thanks for the input.
But I really don’t get your #3.
because I am pretty sure a PCT filed before the magic 11.29.2000, get a 102(e) priority date as a PATENT as of the EARLIER fullfillment of 371 c (1) (2) (4), which correspond to fee, copy of IA and oath/declaration.
Where do you get the LATER of oath/fee/translation?
rainliner:
I think you may be confusing patentbar’s post. Let me try to clarify:
An IA filed pre-11/29/2000, or an IA publication based on an IA filed pre-11/29/2000, can NEVER get a 102(e) date, as they are not considered to be filed w/in the U.S. for purposes of 102(e).
However, a PATENT issuing from the national stage entry of an IA filed pre-11/29/2000 gets a 102(e) date corresponding to the date that 371(c)(1), (2) and (4) are satisfied, and not until they are ALL satisfied.
Thus, if and when a patent issues based off that national stage entry, it will have a 102(e) date corresponding to the day the last of the national fee, copy of IA (and translation if not in English), and oath are submitted.
Hope that helps.
To begin entry into the national stage, applicant is required to comply with 37 CFR 1.495(b) within 30 months from the priority date. Thus, applicant must pay the basic national fee on or before 30 months from the priority date and be sure that a copy of the international application has been received by the U.S. Designated or Elected Office prior to expiration of 30 months from the priority date.
Facsimile transmission is not acceptable for submission of the basic national fee and/or the copy of the international application. See 37 CFR 1.6(d). Likewise, the certificate of mailing procedures of 37 CFR 1.8 do not apply to the filing of the copy of the international application and payment of the basic national fee. See 37 CFR 1.8(a)(2)(i)(F).
1893.01(a)(1) Applicant may file fee/ IA copy using Express Mail procedures set for in 37 CFR 1.10