Question #2 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.
2. A registered practitioner filed in the USPTO a client’s utility patent application on December 30, 2002. The application was filed with a request for nonpublication, certifying that the invention disclosed in the U.S. application has not and will not be the subject of an application in another country, or under a multilateral international agreement, that requires eighteen month publication. Subsequently, the client files an application in Japan on the invention and some recent improvements to the invention. The improvements are not disclosed or supported in the utility application. Japan is a country that requires eighteen month publication. Two months after filing the application in Japan, and before filing any other papers in the USPTO, the client remembers that a nonpublication request was filed and informs the practitioner about the application that was filed in Japan. Which of the following courses of action is in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) The application is abandoned because the practitioner did not rescind the nonpublication request and provide notice of foreign filing within 45 days of having filed the application in Japan. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
(B) The application is abandoned because the applicant did not rescind the nonpublication request before filing the application in Japan. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
(C) The applicant should file an amendment to the specification of the U.S. application, adding the recent improvements to the disclosure in the specification.
(D) The application is abandoned because the applicant did not rescind the nonpublication request by notifying the Office under 37 CFR 1.213(c) within the appropriate time. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).
(E) The applicant could today notify the USPTO of the foreign filing. It is not necessary to file a petition and fee to revive for the application to continue to be examined in the USPTO.
ANSWER: (A) and (D) are accepted as the correct answers. Regarding answer (A), see 35 U.S.C. § 122(b)(2)(B)(iii); 37 CFR § 1.213; MPEP § 901.03 for information on nonpublication requests. See 37 CFR § 1.137(f); MPEP § 711.03(c), under the heading “3. Abandonment for Failure to Notify the Office of a Foreign Filing After Submission of a Non-Publication Request.” (D) was also accepted because the statement characterizes the status of the application as being abandoned, though the application has not necessarily attained abandoned status. The course of action postulated in (D) is a proper reply if the application was abandoned. Accordingly, (D) was accepted as a correct answer under these circumstances. (B) is incorrect. The notice of foreign filing can be filed as late as 45 days after the foreign filing before the U.S. application becomes abandoned. (C) is incorrect. See MPEP § 608.04(a). The improvements would constitute new matter and new matter cannot be added to the disclosure of an application after the filing date of the application. (E) is not correct. The applicant was required to provide notice of foreign filing within 45 days of filing in Japan, and two months have passed. As a result, a petition to revive under 37 CFR § 1.137(b) is required for examination to continue. Also see 37 CFR § 1.137(f).
I don’t understand the explanation of the answers. Both A & D state the application would be abandoned, and according to MPEP 1123 it would be abandoned. The applicant should have notified the director within 45 days of the foreign filing. By failing to do so the application is clearly abandoned. The explanation for D makes it sound like it wouldn’t be in abandoned status…but it doesn’t say that for answer A which is worded exactly the same aside from the more specific explanation of why it would be abandoned (the 45 days). I agree A & D are both right, I believe A to be “more” correct because it’s more specific.
See the answer for the same question under 10.03.44a, which states the answer is only (A) because:
“(D) is not correct. The applicant is required to provide notice of foreign filing, not merely rescind the nonpublication request within the appropriate time.”
Maybe the extreme subtly of this difference is why both A and D have been accepted.
To Phosita and Stephen,
I think D is not correct because it implies a wrong understanding
D says “the applicant did not rescind the nonpublication request BY notifying the Office under 37 CFR 1.213(c) within the appropriate time.”
Notice and Rescission are two different things. A notice does not operate as a rescission. So D is wrong. My analysis is different from the later model answer.
In sum,
Recission before or on foreign filing, you are fine, a notice is not required.
After foreign filing, you need two things “rescission” and “notice in 45 days” to avoid abandonment. This is A
Got this on 8/2/11
still with A and D unchanged?
Got this. 06.30.2012
Sol’s analysis is very helpful.
Thank you.
Got this 3/30/13.
The non-publication request may be rescinded at any time before filing a foreign application (that will be subject to publication). If no rescission is made in advance, the applicant must notify the Office within 45 days. If failed to notify in 45 days, the application is considered abandoned. See MPEP 1123.
In other words, the applicant who had not rescinded the request timely only need to notify within 45 days to avoid abandonment. Note, it’s a separate requirement from the foreign filing license requirement discussed in MPEP 140.