Q) PCT (30 months)

by patentbar on August 1, 2008 · 37 comments

in Exam Questions

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?

{ 37 comments… read them below or add one }

1 patentbarNo Gravatar September 2, 2008 at 2:22 pm

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).

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2 Art WilliamsNo Gravatar August 28, 2009 at 5:38 pm

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

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3 cindyNo Gravatar August 28, 2009 at 6:29 pm

I agree with you Art Williams. See my post http://mypatentbar.com/2008/08/18/q-missing-parts-pct/

4 EmilyNo Gravatar February 4, 2010 at 3:22 pm

Art, are you sure you’re looking at the rule from MPEP 8th Edition, 4th Revision?

5 aliNo Gravatar April 10, 2009 at 7:14 pm

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!

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6 dcnativeNo Gravatar January 14, 2012 at 10:31 am

Agreed.

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7 TRNo Gravatar May 19, 2010 at 8:38 pm

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

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8 SNo Gravatar May 24, 2010 at 2:41 pm

Do you remember if this was pre 11/29/00 or after?

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9 AndyNo Gravatar October 16, 2010 at 1:40 pm

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)).

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10 BigbadvoododaddyNo Gravatar July 2, 2011 at 7:09 pm

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).

11 maggieNo Gravatar October 19, 2011 at 2:13 pm

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)

12 maggieNo Gravatar October 19, 2011 at 2:27 pm

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.

13 SNo Gravatar June 5, 2010 at 7:02 am

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.

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14 makanNo Gravatar June 6, 2010 at 6:46 pm

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??

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15 babyeaterNo Gravatar June 27, 2010 at 3:09 pm

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.

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16 toomuch23No Gravatar October 28, 2010 at 4:31 pm

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.

17 toomuch23No Gravatar October 28, 2010 at 4:32 pm

As well as what Francois below says:)

18 BigbadvoododaddyNo Gravatar July 2, 2011 at 7:03 pm

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

19 JamieNo Gravatar July 20, 2012 at 5:25 pm

BigBadVoodoDaddy, I agree with you. Express mail practice can be used in PCT application.

20 BigbadvoododaddyNo Gravatar July 11, 2011 at 5:25 pm

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.

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21 FrancoisNo Gravatar July 31, 2010 at 6:45 pm

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.

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22 studierNo Gravatar December 4, 2010 at 1:28 pm

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).

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23 toomuch23No Gravatar October 28, 2010 at 7:28 pm

see also oct.2003.pm

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24 toomuch23No Gravatar October 28, 2010 at 7:28 pm

#15

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25 rainlinerNo Gravatar November 17, 2010 at 1:08 am

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?

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26 BrandonNo Gravatar February 5, 2011 at 3:05 pm

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.

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27 KerstinNo Gravatar March 18, 2012 at 4:44 pm

Brandon’s second example above doesn’t make sense….what is the 371 provision he is talking about? I thought that if an IA was filed pre 11/29/00, even if a subsequent US app was filed after 11/29/00 there was still no 102(e) date. Or is that if you file the IA before 11/29/00 and then enter the national stage in the US AFTER 11/20/00, as long as you have designated the US (obviously), published the IA in English you get a 102(e) date as of the date you entered the US national stage?. Can anyone help reconcile or clarify? Thanks.

28 KeenerNo Gravatar May 19, 2012 at 5:33 pm

Kerstin your second part is close to Brandon’s.
He is talking about the PATENT that results from a national stage of the pre 11/29/00 IA. It doesn’t matter when the national stage was and it doesn’t matter if the IA designated the US. The PATENT gets a 102e date as of the last fulfillment of 371(c)(1), (2) and (4) (AKA the Foot Rule: Fee, Oath, Translation).
Search flowchart in 700.

29 BeNiceNo Gravatar May 6, 2011 at 12:11 am

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).

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30 ENo Gravatar November 17, 2011 at 11:00 pm

1893.01(a)(1) Applicant may file fee/ IA copy using Express Mail procedures set for in 37 CFR 1.10

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31 jkpatentlawNo Gravatar June 13, 2012 at 5:16 pm

Even if applicant uses Express Mail procedures, does this override the statement that fee and copy of IA must be received by expiration of 30th month?

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32 Churning AwayNo Gravatar June 16, 2012 at 9:03 pm

I think it has to have a “date-in” on the deadline day to count for the 30th month. Express mail is the only option because CoT, CoM, or facsimile would result abandonment because it go past the 30th month deadline.

1892.02 Abandonment [R-5]

If the requirements **>for the submission of the basic national fee and a copy of the international application (if necessary) prior to the expiration of 30 months from the priority date are not satisfied, then the international application becomes abandoned as to the United States at thirty months from the priority date. 37 CFR 1.495(h). If the requirements under 37 CFR 1.495(b) are timely met, but the requirements under 37 CFR 1.495(c) for an English translation of the international application, oath/declaration, search fee, examination fee and application size fee are not met within a time period set in a notice provided by the Office, then the application will become abandoned
upon expiration of the time period set in the notice. See 37 CFR 1.495(c)(2) and 1.495(h)For applicant’s
convenience, applicant may use either Form PTO/SB/61PCT (unavoidably abandoned application) or Form PTO/SB/64PCT (unintentionally abandoned application), as appropriate, for this purpose. These forms are available online at http://www.uspto.gov/web/forms/index.html#patent.<

33 MirandaNo Gravatar February 4, 2012 at 8:53 pm

PLI instructer John White keeps stating “spec claims drawing” as one of the requirements of entering the national stage under 371- is that essentially referring to a copy of the IA? why doesn’t he just say “a copy of the IA”?

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34 KeenerNo Gravatar May 19, 2012 at 4:59 pm

Miranda,
I think you can you make amendments to the IA at national stage thus filing “a copy of the IA” is not always desire or required. I think you can only amend claims at NP. Brain is fuzzy today, but I’ll see if I can find it.

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35 KeenerNo Gravatar May 19, 2012 at 5:20 pm

I was wrong about the claims limitation….
1893.01(a) (2 and 3) mention how amendments 19 and 34 should be automatically entered into the application by the IB, but, especially with translations, errors can occur. The PTO suggests using preliminary amendment (1.121) to ensure the amendments 19 and 34 are enter properly. Preliminary amendment could be used for any amendment to the national stage, mind you new matter would force a CiP.

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36 brandonsaNo Gravatar February 18, 2013 at 11:45 pm

Who can help me with the confusion about the 102(e) date of the pre-11.29.00 PCTs
” Pre-Nov. 29, 2000 PCTs get a 102(e) date as of receipt of last of Fee/Oath/Translation”.
vs.
“There is no ability to get the earlier filing date of the IA for 102(e) purposes here pre-Nov. 29, 2000 PCTs”

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37 paulNo Gravatar February 19, 2013 at 12:50 am

The timelines in 706.02(f)(1) are a great help.

I’m not too worried about pre-11/29/00 issues on the exam.

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