Q) Invitation to Correct PCT Application (10.03.4p)

by admin on April 10, 2010 · 10 comments

Recent takers report that question #4 from the October 2003 (PM) test is in the patent bar exam question database.

4. A registered practitioner files an international application submission that includes a description, claims and drawings in the United States Receiving Office (RO/US) on Wednesday, January 8, 2003. The submission did not include the required request, international and search fees, or the designation of a PCT contracting State. The RO/US mails an “Invitation to Correct the Purported International Application,” dated January 10, 2003, to the practitioner indicating that the designation of at least one Contracting State, as required by PCT Article 11(1)(iii)(b), was not included. A one-month period for response is set in the Invitation. On Monday, February 10, 2003, the practitioner submits by facsimile a designation sheet of the Request Form designating every available Contracting State, and authorization to charge all required fees. In accordance with the patent laws, rules and procedures as related in the MPEP, will the application be accorded an international filing date?

(A) Yes. The application will be accorded a filing date of January 8, 2003.

(B) Yes. The application will be accorded an international filing date of February 10, 2003.

(C) No. The application will not be accorded an international filing date because the failure to designate at least one contracting State cannot be cured by a facsimile transmission.

(D) No. The application was given a one-month period for response. The practitioner would have had to have filed the response on Friday, February 7, 2003 in order to have been timely.

(E) None of the above.

ANSWER: (C) is the correct answer. 37 CFR §§ 1.6(d)(3) and 1.8(a)(2)(i)(d); MPEP § 502 (reproducing Rule 1.6(d)(3)); MPEP § 512 (reproducing Rule 1.8(a)(2)(i)(d)); and MPEP §1817.01. As stated in MPEP § 1817.01, “[a]ll designations must be made in the international application on filing; none may be added later.” The application will not be accorded an international filing date since the practitioner has tried to cure the failure to designate at least one contracting State by filing a paper using facsimile which is not permitted according to 37 CFR §§ 1.6(d)(3) and 1.8(a)(2)(i)(d). (A) is wrong because applicant has failed to comply with Article 11(1)(iii)(b) on such date. See MPEP § 1810 (reproducing PCT Article 11(1)(iii)(b). (B) is wrong because according to 37 CFR 1.6(d)(3) and 37 CFR 1.8 (a)(2)(i)(d), applicant cannot file an international application by facsimile. See MPEP § 502 (reproducing 37 CFR § 1.6(d)(3)); MPEP § 512 (reproducing 37 CFR § 1.8(a)(2)(i)(d)). Since no designations were included on filing, the application papers cannot be accorded an international filing date. See PCT Article 11(1)(iii)(b). Applicant cannot correct this by filing the designation sheet by facsimile. See MPEP § 502 (reproducing Rule 1.6(d)(3)); MPEP § 512 (reproducing Rule 1.8(a)(2)(i)(d)). (D) is wrong because according to PCT Rule 80.5, when a response is due on a day where the receiving Office is not open for business, applicant has until the next business day. See Appendix T of the MPEP. (E) is incorrect because (C) is correct.

1 studier December 3, 2010 at 11:50 am

Problem says: “The submission did not include the required request, international and search fees, or the designation of a PCT contracting State.”

But note from 1801: “For international applications filed on or after January
1, 2004, the filing of an international application
will automatically constitute the designation of all
contracting countries to the PCT on that filing date.”

2 LM March 27, 2011 at 1:24 am

Just to remember for exam purpose and otherwise for any IA things

= NO fax for purpose of IA filing or any related communication for International / PCT / National stage requirement

3 Sol April 3, 2012 at 5:18 pm

The question is badly worded.

The request is missing, so the applicant needs to submit the request. AND don’t use fax to submit the request. Anything required to obtaine a IA filing date cannot be faxed.

By submittint the requst, all states are automatically desiganted.

The question is misleading by asking how to cure state desgination, which is out of date now.

To get a filing date, you need “indication” and “designation”. A request does both at the same time.

4 Miranda April 3, 2012 at 7:18 pm: If all states are designated by default, what is the purpose of the designation? and what effect does this have on 102(e)?
5 Sol April 3, 2012 at 8:14 pm: you need to file the request to indicate and to designate. Before, you have to designate one by one, now you desginate all at filing the request. But you still need to file the request. Effect on 102(e), I guess, all new PCT properly filed in US/RO will have 102(e) date since it has to ben in English when filed with US/RO and necessarily designate US.
6 TheGhostOfBilski April 5, 2012 at 9:58 pm: Agreed – My read is that under the new rule, as long as you file the request (and even if you don’t designate) all states are designated. This question would therefore be out of date if the applicant had included a “request” with the initial I.A. submission…

7 patentgeekchick September 22, 2011 at 8:10 pm