Q) 35 USC 102(e) (4.02.11a)

by patentbar on September 4, 2008 · 44 comments

in Exam Questions

Recent test takers report question #11 from the April 2002 (am) exam is in the Patent Bar database of tested questions.

Questions 11 and 12 are based on the following factual background. Consider questions 11 and 12 independently of each other.

Applicant files a patent application in Japan on February 28, 1996. Applicant files a PCT international application designating the United States on February 27, 1997, based on the Japanese application. The international application is published in English on August 28, 1997. The international application enters the national stage in the United States on August 28, 1998. The USPTO publishes the application on June 7, 2001 at the request of the applicant. The application issues as a United States patent on December 4, 2001.

11. When examining an application filed on or after November 29, 2000 or any application that has been voluntarily published, what is its earliest possible prior art date, for the June 7th U.S. published application in view of 35 U.S.C. § 102(e) as amended by the American Inventors Protection Act of 1999?
(A) February 28, 1996.
(B) February 27, 1997.
(C) August 28, 1997.
(D) August 28, 1998.
(E) June 7, 2001.

11. ANSWER: (B) is the most correct answer. 35 U.S.C. § 102(e)(1) provides that a USPTO published application, based on an earlier international application, has prior art effect as of its international filing date, if the international application designated the United States, and was published in English. Because in the above fact pattern, the international application designated the United States and was published in English, the USPTO published application is entitled to its international filing date of February 27, 1997 for prior art purposes. (A) is wrong because the Japanese filing date is relevant under 35 U.S.C. § 119 only for priority, but not for prior art purposes. (C) and (E) are wrong because they recite prior art dates that are later than February 27, 1997. (D) is wrong because the amendments to § 102(e) by the American Inventors Protection Act of 1999 make the national stage entry date irrelevant for prior art purposes.

{ 41 comments… read them below or add one }

1 patentbarNo Gravatar September 4, 2008 at 3:46 pm

The 102(e) flow charts in MPEP 706.02(f) are extremely useful, and you may see up to a dozen questions on when a patent or patent application is available as prior art under 102(e).

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2 patentbarNo Gravatar September 4, 2008 at 3:55 pm

Another reported question — The example from my exam is actually on 700-31

Example 4 + additional info

If the IA properly claimed priority to an earlier-filed US provisional application or the benefit of an earlier-filed US nonprovisional application, the 102(e) date for all references would be the filing date of the EARLIER-FILED US application

**********
The question here Agent_X (should you chose to accept it) is why, then, “D” was the correct answer to April 2002 #11, AM.

I have no doubt you can answer it, just a non sequitor what you posted + the key to this question.

**********

My answer key says “B” is the correct answer to that question.
The answer appears to be in agreement with Example 3 on 700-30

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3 BigbadvoododaddyNo Gravatar June 28, 2011 at 11:15 pm

Yes given your fact pattern – since it claims priority to a US APPLICATION. It gets a 102 E date. However a PCT application by itself prior to AIPA will not get a 102 e date, unless it enters the US national stage or is filed as a US national application

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4 bfibelNo Gravatar November 20, 2008 at 6:32 pm

I am completely confused by this question and the answer. Is it just me or are there facts missing from the fact pattern.

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5 SandybossNo Gravatar December 19, 2008 at 10:59 am

The explanation given justifying ‘answer B’ I think is wrong. Pre 11/29/2000 PCT application publication never gets a 102e date.

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6 triedandtestedNo Gravatar June 10, 2009 at 6:39 pm

Thats not true

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7 toomuch23No Gravatar October 31, 2010 at 5:06 pm

I believe it would have gotten a 102(e) when it entered the national stage.

8 Rich TopoleskiNo Gravatar December 23, 2008 at 8:25 pm

question is missing facts.
Here are the missing facts:
Applicant files a patent application in Japan on February 28, 1996. Applicant files a PCT
international application designating the United States on February 27, 1997, based on
the Japanese application. The international application is published in English on August
28, 1997. The international application enters the national stage in the United States on
August 28, 1998. The USPTO publishes the application on June 7, 2001 at the request of
the applicant. The application issues as a United States patent on December 4, 2001.

102e date prior ro 11/29/2000 would have been when all the Fee Oath and translation arrive at the PTO.

On or After 11/29/200 to get a 102e date the facts must have meet the three part test 1) after the magical 11/29/2000 2) PCT application was published in English and 3) designate the US. If all three of these were true then it get the 102e date of the PCT filing date.

In this case the patent in question was before 11/29/2000 so it depends on when enters national stage, facts say 8/28/1998 (D).

But the PTO answer guide does say “B”. This was cleared up to me by the expert John White’s contemperanious evaluation in which he concludes “the PTO answer follows the literal wording of the statute, but it completely contradicts the MPEP guidelines. The question is unanswerable.” Full text and explanation can be found on this web site.

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9 JingNo Gravatar August 14, 2009 at 6:31 pm

Concur.

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10 SandybossNo Gravatar December 24, 2008 at 8:45 am

No offense, but its incorrect. Pre 11/29/00 PCT applications do not have any 102e, calculated 102e is applicable only for the patents (see below). If you look into the call of the question then I think its more complicated; its asking “102e for (not of) the June 7th U.S. published application’, which probably means the earliest 102e date of US National application (post 11/29/00)that can be applied to this application.

706.02(f)(1) MPEP700-29
If the international application has an international filing date prior to November 29, 2000, apply the reference under the provisions of 35 U.S.C. 102 and 374, prior to the AIPA amendments:

(a)
For U.S. patents, apply the reference under 35 U.S.C. 102(e) as of the earlier of the date of completion of the requirements of 35 U.S.C. 371(c)(1), (2) and (4) or the filing date of the later-filed U.S. application that claimed the benefit of the international application;
(b)
For U.S. application publications and WIPO publications directly resulting from international applications under PCT Article 21(2), never apply these references under 35 U.S.C. 102(e). These references may be applied as of their publication dates under 35 U.S.C. 102(a) or (b);

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11 TexPatBarNo Gravatar May 8, 2009 at 1:03 pm

Is there any consensus on this question? I think Sandyboss is correct. The IA had a filing date before Nov. 29, 2000. The reference is a U.S. app publication, thus according to the flowchart on 700-40 there isn’t a 102(e) date. Am I missing something??

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12 Alan FlumNo Gravatar May 25, 2009 at 12:17 pm

The answer to the question is definitely wrong. Here is the reason why. The question was asked BEFORE HR2215 was passed and came into effect in 2003 which fixed problems the implementation of 102(e) and clarified what to do with international applications filed before Nov 29, 2000. What HR2215 did was restore the rules governing international applications filed before Nov 29, 2000 (the 102(e) reference date under pre AIPA was the date the application entered the national stage). Since there was no published US applications under 35 USC 122(b) before AIPA, then they have no 102(e) date for pre Nov 29, 2000 international applications

For a great presentation of 102(e) with all of its permutations see: http://www.uspto.gov/web/offices/dcom/olia/aipa/102e_hr2215slides.pps

The answer definitely is that there is no 102(e) reference to the published application. If they had asked if there was a 102(e) reference to the patent that issued from that fact senario, then the answer would have been the date it entered the national stage.

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13 KeenerNo Gravatar April 27, 2012 at 4:26 pm

Oh Thank you, thank you, thank you, Alan.
This question is in Longacre’s study guide published in 2010 and it has been bothering me for the past 3 months. I KNEW it had to be wrong, but couldn’t pin down why.
Thank you for clearing this up.

14 PaulNo Gravatar September 15, 2012 at 9:29 pm

Thanks, The linked presentation is really great for better understanding. But, It seems that the slide #61 has something wrong. The 111(b) application should have been filed in US not in Swedish for the right answer. Do someone confirm it ?

15 danNo Gravatar June 2, 2009 at 3:39 pm

I love this site… :)) If there is doubt for a specific question, for sure I will find it on this site within minutes…

I do agree that that answer for 11 is wrong… as there is no date for 102(e) (1)

Next, answer for 12 is also wrong… the patent date should be when 371(c) 1, 2 and 4 are fulfilled… not when patent was issued…

thx all!!

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16 DanNo Gravatar June 10, 2009 at 8:50 pm

for triedandtested

why not? if you have an opinion, please state the reasoning behind it…

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17 scruffNo Gravatar June 20, 2009 at 2:46 pm

Alan Flum is absolutely correct. The question was written after the amendment imposed on 35 USC 102(e) by the American Inventors Protection Act but BEFORE the Intellectual Property and High Technology Technical Amendments Act, and therefore the answer choices are obsolete.

As of today:
It’s true that a publication after national stage entry, based on an IA filed before Nov. 29, 2000, does NOT have a 102(e) date. A patent, on the other hand, has a 102(e) date when the application was in compliance with the provisions of 371(c)(1),(2),(4), i.e., when it reached the national stage.

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18 SNo Gravatar May 24, 2010 at 9:59 am

Here’s something I found from patentbarquestions.com. A thumb rule! Seems to work in most cases.

I found it useful.
***************************************************************************************
Here is some information you may find helpful in understanding 102(e) dates.

The key to understanding 102(e) date is to understand that the 102(e) date is the effective U.S. filing date.

Here is a condensed explanation of the 102(e) rule. It works every time. You won’t have to remember complicated

charts, rules or flow charts. Here it is:

102(e) reference date of a U.S. patent, published U.S. patent application, or WIPO publication is the
“earliest effective U.S. filing date” of that document. If the document doesn’t have an “earliest effective
U.S. filing date”, then it does not have a 102(e) reference date.

An International Application (IA) can be considered part of the chain of the earliest effective U.S. filing date if:

1) Filed on or after November 29, 2000;

2) WIPO publication is in English; and

3) The US is one of the designated countries

For US patents only, the National Stage Entry date, for the purpose of this analysis, is considered

the earliest effective U.S. filing date if:

1) IA filed before November 29, 2000

2) The US is one of the designated countries

Otherwise, it should not be considered.

Note:

A foreign application filed under 35 USC §119(a)-(d) is never considered an earliest effective U.S. filing date;

see MPEP 706.02. Don’t confuse “earliest effect filing date”, which is used to claim priority benefit

and is a shield against prior art, with “earliest effective U.S. filing date”.

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19 SNo Gravatar June 3, 2010 at 5:52 pm

This is something I found from freepatentbar.com outline.

Patent as prior art, 102(e):

PCT applications are handled differently:
1. Filed in PCT prior to Nov 29, 2000: Follow the date it entered the national phase at the USPTO
2. Filed in PCT on/after Nov 29, 2000 AND Published in English: Follow PCT filing date
3. Filed in PCT on/after Nov 29, 2000 AND NOT published in English: Becomes prior art under (a) or (b) upon issue date. Not Prior art under this subsection.

Hope this thumb rule helps!

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20 lets goNo Gravatar July 5, 2010 at 10:56 am

I think the answer is E.

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21 MattNo Gravatar August 11, 2010 at 10:28 am

The question is definitely wrong. The facts presented follow the pre-11/29/2000 rules, so it wouldn’t get a 102(e) date UNTIL the fee/oath/translation are all submitted in the national phase. Somehow the answer follows POST 11/29/2000 rules.

I think that it is important to understand that the USPTO seems to have very little quality control in their questions/answers, so I wouldn’t recommend “learning” from their incorrect answer.

The only way I’d answer (B) is if I saw this identical question on the actual patent bar.

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22 StephenNo Gravatar August 12, 2010 at 12:51 am

The answer is clearly “C” going by the MPEP. The question is really confusing when it says “When examining an application filed on or after November 29, 2000 or any application that has been voluntarily published….” because the application is clearly not filed after November 29, 2000…it’s filed in 1999. According to the MPEP 1857.01 “[If the international application has not met the three conditions (filed after November 29, 2000, designated the U.S., and has been published in English),] the publication of the international application and the U.S. application publication of the national stage after compliance with 35 U.S.C. 371 may only be used as prior art as of its publication date under 35 U.S.C. 102(a) or (b).”

Therefore the answer should be C because the international application was filed before November 29, 2000. It should be prior art as of its published date. Correct me if I’m wrong, I’m taking the exam in 4 days….

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23 SolNo Gravatar March 29, 2012 at 5:33 pm

The way of reasoning is corrent but the anser is wrong

Be careful with the call of the question:

earliest possible prior art date for the June 7th U.S. published application is its publication date E

earliest possible prior art date for theinternational application published in English on August 28, 1997.is its publication date C

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24 SolNo Gravatar April 9, 2012 at 9:43 pm

I hate PCT rules, national stage date can on or BEFORE 30 months.

Thus, in the absence of an express request for early processing of an international application under 35 U.S.C. 371(f) and compliance with the conditions provided therein, the U.S. national stage will commence upon expiration of 30 months from the priority date of the international application. Pursuant to 35 U.S.C. 371(f), the national stage may commence earlier than 30 months from the priority date, provided applicant makes an express request for early processing and has complied with the applicable requirements under 35 U.S.C. 371(c).<

25 SolNo Gravatar April 9, 2012 at 9:40 pm

earliest possible prior art date for the December 4, 2001 US patent is?
102(a) date is December 4, 2001
102(e) is the last of 371c(1), c(2), c(4), which must be on or slightly after the nationa stage entry date of August 28, 1998.

I correct myself for one point
the last of 371c(1), c(2), c(4) submission date is not necessarily the entry date. Entry date can be earlier than the last submission date of c1, c2, c4 because translation in c2 and oath/dec of c4 can be submitted later. As long as fee of c1 and a copy in c2 are submitted before 30 month, national stage is successfull entered and started on the 30 month date.

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26 studierNo Gravatar December 8, 2010 at 7:18 pm

Very relevant: PLI Analysis of April 17, 2002 PTO Attorney/Agent Exam,
Prepared by John M. White

Analysis of question 11:

I am surprised at this question inasmuch as it focuses attention on the bizarre
102(e)(1) and (2) situation. In addition, the question is fatally flawed and
unanswerable. You see, the publish in English, designate U.S. revisions cannot
have effect on a document filed prior to the effective date of the law. The MPEP
contradicts the chosen PTO model answer absolutely and unequivocally at MPEP
706.02(a) at page 700-22, right hand column, 2/3 of the way down. It says 4
elements are necessary for a published PCT reference to have a 102(e)(1) date, to
wit: international application designates U.S., 2) publishes in English, 3) the
international application was filed on or after November 29, 2000, and, 4) the
application entered the US national stage. Here the PCT is filed as an
international application on February 27, 1997, clearly before November 29,
2000, and therefore clearly not entitled to a 102(e) date as of Feb. 27, 1997. I
agree that the PTO answer follows the literal wording of the statute, but it
completely contradicts the MPEP guidelines. The question is unanswerable.

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27 SolNo Gravatar March 29, 2012 at 7:25 pm

I could not find support for this requirement “4) the application entered the US national stage.”

A WIPO publication satisify 1, 2, 3 but before entering US national stage has NO 102(e) date?

I don’t agree. But any input from others?

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28 MirandaNo Gravatar April 4, 2012 at 9:02 pm

Not sure where that 4th requirement came from. It is obviously wrong.

29 zaoNo Gravatar June 16, 2011 at 11:46 pm

I am having major problems w PCT 102(e) dates. I had a question on my exam asking 102(e) date for the united states patent (unfortunately i do not remember the facts). Question 12 of april 2002 morning got me all confused.
How is the answer for 12 E) Dec 4 2001? Shouldnt it be the date it enters the national stage (assuming since they dont mention 371(c)(1), (2) and (4) fullfilment, national stage is complete in Aug 28, 1998)? How is the answer the issue date? Thanks guys

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30 BigbadvoododaddyNo Gravatar June 28, 2011 at 11:08 pm

This is a question from the same exam. Can someone help me understand why the question is wrong. Thank you.

49. Which of the following practices or procedures may be properly employed to
overcome a rejection properly based on 35 U.S.C. § 102(e)?
(A) Claiming priority under 35 U.S.C. § 119(a)-(d) based on a foreign
application having a foreign priority filing date that antedates the
reference.
(B) Claiming priority under 35 U.S.C. §§ 119(e) or 120 by filing an
application data sheet under 37 CFR 1.76 that contains a specific reference
to the prior application in accordance with 37 CFR 1.78(a), where the
prior application has a filing date prior to the reference.
(C) Claiming priority under 35 U.S.C. §§ 119(e) or 120 by amending the
specification of the application to contain a specific reference to a prior
application having a filing date prior to the reference.
(D) Amending the claims to patentably distinguish over the prior art.
(E) (A), (B), (C), and (D).

ALL ANSWERS ARE ACCEPTED – SINCE IT IS A FAULTY QUESTION

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31 BigbadvoododaddyNo Gravatar June 28, 2011 at 11:17 pm

Sorry about the second post.
I meant to add it to the previous one.

I was going to say that the question seems to be wrong because choice B says, by filing an ADS, where as it should really read – amend the spec to contain a reference to the priority claim.

Can some one confirm or clarify. thx

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32 AndrewNo Gravatar August 5, 2011 at 6:56 pm

I am pretty sure that you can claim priority by filing an IDS. Take a look at CFR 1.76(b)(5):

(5) Domestic priority information. This information includes the application number, the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120, and § 1.78(a)(2) or § 1.78(a)(5), and need not otherwise be made part of the specification.

33 BoNo Gravatar July 9, 2011 at 4:11 pm

Are these questions still in the exams? Has anyone had them recently?

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34 Matt DNo Gravatar November 25, 2011 at 11:27 pm

Glad I saw this. Both 11 and 12 seem incorrect. 11 Appears to have no prior art date as the publication was for a PCT prior to 11/29/00. 12 Seems incorrect because the answer should be that the patent obtains a prior art date as of entry into the national stage. Section 706.02(F)(1) EXAMPLE 6.

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35 RTNo Gravatar April 8, 2012 at 6:01 pm

Is it just me or are these 102(e) questions the most confusing questions on the tests?

Are there any good recent discussions of the 102(e) questions?

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36 SolNo Gravatar April 8, 2012 at 8:34 pm

Just follow those two flow charts.

Essence of new 102(e) is that some IA (11/29/00, des US pub Eng) can viewed as US pat app.Then just think it as a US pat app and do the analysis.

Be careful with the questions, 102(e) date of what?
of IA application? (never)
of IA publication? (yes if 11/29/00, des US pub Eng; no if not)
of again publication of IA in US after entering national stage?(yes if 11/29/00, des US pub Eng; no if not)
of patent from an IA that entered national stage? (the complicated one before 11/29/00, it is the calculated 102(e) date, i.e. the nation stage entry date. i.e. the last of c(1), c(2), c(4) submited. on or after 11/29/00 then follow yes if 11/29/00, des US pub Eng; no if not.

only when 11/29/00, des US pub Eng, the IA can be viewed as a regular app filed in US, then it can be used as the bridge to connect earlier US app whose benifit was claimed in IA, TO the pat iussed from IA or any later US app claiming benift of the IA

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37 MirandaNo Gravatar April 8, 2012 at 10:32 pm

trust me, you don’t need a simulator. i was tempted to buy catprep(?-can’t remember) but am glad i didn’t. i thought the demo on the prometric site was plenty sufficient for my overall mental prep.

38 SolNo Gravatar April 9, 2012 at 9:28 pm

Thank you. I finally saw your recommendation here. This website is good, but it is really inconvenient to track down comments and questions.

39 PotentialNo Gravatar July 3, 2012 at 2:28 am

I am glad no one has reported getting this repeat for 2 years. I was confused as well…

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40 PatentGrrlNo Gravatar July 3, 2012 at 7:10 am

Same here, Potential. There has been a couple like that in the older exams. I hope they’ve been phased out.

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41 kingNo Gravatar September 17, 2012 at 5:40 pm

The flow chart in Example 3, 706.02(f) directly gives the answer to this question. It also gives information that isnt as relevant, so you have to sort through it.

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