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.