Comments on: Q) 35 USC 102(e) (4.02.11a)

By: Matt D

Matt D — Sat, 26 Nov 2011 04:27:50 +0000

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.

By: Andrew

Andrew — Fri, 05 Aug 2011 22:56:52 +0000

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.

By: Bo

Bo — Sat, 09 Jul 2011 20:11:15 +0000

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

By: Bigbadvoododaddy

Bigbadvoododaddy — Wed, 29 Jun 2011 03:17:20 +0000

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

By: Bigbadvoododaddy

Bigbadvoododaddy — Wed, 29 Jun 2011 03:15:18 +0000

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

By: Bigbadvoododaddy

Bigbadvoododaddy — Wed, 29 Jun 2011 03:08:47 +0000

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

By: zao

zao — Fri, 17 Jun 2011 03:46:41 +0000

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

By: studier

studier — Thu, 09 Dec 2010 00:18:23 +0000

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.

By: toomuch23

toomuch23 — Sun, 31 Oct 2010 21:06:03 +0000

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

By: Stephen

Stephen — Thu, 12 Aug 2010 04:51:55 +0000

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….