Q) Filing date (10.03.29p)

by admin on April 18, 2010 · 5 comments

in Exam Questions

Recent test takers report that question #29 from the October 2003 (PM) test is in the patent bar exam database.


29. On Thursday, February 6, 2003, applicant files an application for a design patent in Country X, which issues the patent on the filing date. In accordance with the patent laws, rules and the procedures as related in the MPEP, what is the last date applicant can file a U.S. design application to avoid any loss of patent rights?
(A) Friday, February 6, 2004 (assume not a Federal holiday).
(B) Thursday, February 5, 2004 (assume not a Federal holiday).
(C) Wednesday, August 6, 2003.
(D) Wednesday, May 6, 2003.
(E) None of the above are correct.

ANSWER: The correct answer is (C). See 35 U.S.C. § 172; MPEP § 1504.02. 35U.S.C. § 172 provides that the time specified in 35 U.S.C. 102(d) shall be six months in the caseof designs. Thus, to avoid a statutory bar under 35 U.S.C. § 102(d), the U.S. design patentapplication must be made within six months of the foreign filing, i.e., by August 6, 2003. MPEP§ 1504.02 states “[r]egistration of a design abroad is considered to be equivalent to patentingunder 35 U.S.C. 119(a)-(d) and 35 U.S.C. 102(d), whether or not the foreign grant is published.(See Ex parte Lancaster, 151 USPQ 713 (Bd. App. 1965); Ex parte Marinissen, 155 USPQ 528(Bd. App. 1966); Appeal No. 239-48, Decided April 30, 1965, 151 USPQ 711, (Bd. App. 1965);Ex parte Appeal decided September 3, 1968, 866 O.G. 16 (Bd. App. 1966). The basis of thispractice is that if the foreign applicant has received the protection offered in the foreign country,no matter what the protection is called (‘patent,’ ‘Design Registration,’ etc.), if the United Statesapplication is timely filed, a claim for priority will vest. If, on the other hand, the U.S.application is not timely filed, a statutory bar arises under 35 U.S.C. 102(d) as modified by 35U.S.C. 172. In order for the filing to be timely for priority purposes and to avoid possiblestatutory bars, the U.S. design patent application must be made within 6 months of the foreignfiling.” (A) and (B) are incorrect because they are after the six month period. (D) is not correctbecause it is not the latest date for filing as required by the question. (E) is not correct becauseanswer (C) is correct.

{ 5 comments… read them below or add one }

1 StephenNo Gravatar August 13, 2010 at 2:28 pm

Can someone explain this answer to me. The question asks about the loss of “all patent rights” but the explanation talks about priority. All 1504.02 says is that you must file within 6 months of the foreign filing in design apps to be able to claim priority. Priority as in the benefit of the filing date of the foreign application correct? That wouldn’t necessarily mean you lose all patent rights, you still have within a full 12 months to file a U.S. app based on a foreign app don’t you? Maybe I’m not understanding priority as well as I thought. My understanding was priority is basically claiming the benefit of a prior application so that it’s examined much faster. By claiming priority you are being put in the same place in the examination “line” as your previous application that was filed much earlier, therefore your patent is issued faster. Additionally, the earlier your app is filed the less opportunity someone else has to jump in file ahead of you, instigating an interference.

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2 JimboNo Gravatar August 13, 2010 at 5:24 pm

for design patents, you have to file within 6 months of the foriegn application, or lose your priority claim. The question states that the foreign application was patented the same day it was filed. so under 102(d), you have an application filed and patented more than 6 months before the US application was filed.

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3 StephenNo Gravatar August 13, 2010 at 5:35 pm

I see. I did not read the MPEP very carefully. It specifically says 102(d) is only 6 months for design patents. I don’t understand why that isn’t mentioned in section 700 under Examination of Applications where it lays out the requirements of a statutory bar for 102(d). If you just go by that you would have no idea that design patents have a different statutory bar deadline. I would think they would have at least cross-referenced 1504.02.

4 ZNo Gravatar March 31, 2013 at 2:05 pm

Got this 3/30/13.

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5 mikeNo Gravatar March 5, 2015 at 4:38 pm

what about deadline for a UTILITY to claim priority to a design? All US cases. YES, you can do this…

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