Q) Foreign Priority (10.03.24p)

by admin on April 18, 2010 · 18 comments

in Exam Questions

Recent test takers report that question #24 from the October 2003 (PM) test is in the patent bar exam database.

This question concept is reported to be heavily tested.

24. Applicant filed a provisional patent application in the USPTO under 35 USC 111(b) on Tuesday, November 30, 1999. On Tuesday, November 28, 2000, applicant filed a nonprovisional application in the USPTO under 35 USC 111(a) that properly claimed priority under 35 USC 119(e) to the filing date of the provisional application. On Wednesday, November 29, 2000, applicant filed an international application for patent in the USPTO under the Patent Cooperation Treaty that designated the United States and properly claimed priority to both the provisional and the nonprovisional applications. On Friday, July 28, 2001, applicant filed a national stage application in the USPTO under 35 USC 371, providing all of the requirements under 35 USC 371 and properly claiming benefit to the filing date of the provisional application under 35 USC 119(e) and the nonprovisional application under 35 USC 120. The national stage application was published on Tuesday, January 30, 2002 and issued as a patent on Tuesday, February 4, 2003. Assuming no patent term extension or adjustment, the patent term ends on the date that is 20 years from which of the following dates in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) Tuesday, November 30, 1999
(B) Tuesday, November 28, 2000
(C) Wednesday, November 29, 2000
(D) Friday, July 28, 2001
(E) Tuesday, February 4, 2003


ANSWER: The filing date of the nonprovisional application, (B), is the correct answer.  See MPEP § 201.04(b), which states “[t]he [Uruguay Agreement Round Act] provides a mechanism to enable domestic applicants to quickly and inexpensively file provisional applications. Under the provisions of 35 U.S.C. § 119(e) applicants are entitled to claim the benefit of priority in a given application in the United States. The domestic priority period will not count in the measurement of the 20-year patent term. See 35 U.S.C. 154(a)(3). Thus, domestic applicants are placed on the same footing with foreign applicants with respect to the patent term.” A provisional application is filed under 35 U.S.C. § 119(e) and according to 35 U.S.C. § 154(a)(3), such a filing date is not taken into account in determining patent term. Therefore, (A) is incorrect. The fact pattern states that benefit was properly claimed in the international application to both the provisional application and the national application and that the national stage application filed under 35 U.S.C. § 371 claimed benefit to the filing date of the nonprovisional application under 35 U.S.C. § 120. According to 35 U.S.C. § 154(a)(2), where an application contains a reference to an earlier filed application or applications under 35 U.S.C. § 120, 121, or 365(c), the patent term ends 20 years from the date on which the earliest such application was filed; in this fact pattern that date would be (B), the filing date of the nonprovisional application. The filing date of the international application, (C), is not correct in view of 35 U.S.C. § 154(a)(2) since the international application claimed the benefit under 35 U.S.C. § 120 to the filing date of the nonprovisional application. The date of commencement of the national stage in the United States, (D), is not correct, since the date of commencement of the national stage in the U.S. is not relevant in the determination of the patent term of a patent issuing form the national stage of the international application. Furthermore, as noted in (B) above, since the international application claims the benefit under 35 U.S.C. §120 to the nonprovisional application, the patent term of the patent issuing from the national stage is measured from the filing date of the nonprovisional application. Finally, the issue date, (E), is not correct, because in 1994, 35 U.S.C. § 154 was amended to provide that for applications filed on or after June 8, 1995, the term of a patent begins on the date the patent issues and ends on the date that is twenty years from the date on which the application for the patent was filed in the United States or, of the application contains a specific reference to an earlier filed application or applications under 35 U.S.C. § 120, 121, or 365(c), twenty years from the filing date of the earliest of such application(s).

{ 18 comments… read them below or add one }

1 DNo Gravatar March 27, 2011 at 4:14 pm

WTF?!
This does not agree with 2700. Under 2700, the date should be (C) 11/29/2000, correct?

2701:
“INTERNATIONAL APPLICATIONS
A patent granted on an international application filed on or after June 8, 1995 and which enters the national stage under 35 U.S.C. 371 will have a term which ends twenty years from the filing date of the international application. A continuation or a continu-ation-in-part application claiming benefit under 35 U.S.C. 365(c) of an international application filed under 35 U.S.C. 363 designating the United States will have a term which ends twenty years from the filing
date of the parent international application.”

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2 LMNo Gravatar March 27, 2011 at 5:57 pm

Patent term starts from US Non Provisional application or IA application whichever is earlier – if all requirements are met.

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3 TheGhostOfBilskiNo Gravatar April 5, 2012 at 6:52 pm

Also, think of the purpose behind the law as well – where applicant files a U.S. patent, then files an I.A., and then turns around and files a national stage app again in U.S., one would be able to improperly extend the life of the patent if the 20 years were measured from the I.A. or nat’l stage app in this scenario. This would seem to be outside the intent of the Uruguay Agreement.

4 DNo Gravatar March 27, 2011 at 7:17 pm

So, the concept here is that the passage about PCT IA’s from 2701 above is completely useless any time the IA applicaiton claims priority from a nonprovisional US application?

Therefore, 2701 is only true where the PCT IA claims priority from a foreign app, a provisional app, or makes no claim of priority at all?

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5 LMNo Gravatar March 27, 2011 at 9:20 pm

To my understanding yes.

For the purpose of the patent term, it will never be measured from provisional or foreign filing date. It is always from non-pro or IA filinf date, provided all requirements are met.

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6 AustinNo Gravatar April 20, 2011 at 7:36 pm

LM do you have a cite for your understanding?

usc 154(a)(3) does not agree with your answer to D.

I think the correct answer is C for that reason and also because the whole point of claiming priority to a provisional instead of converting the provisional is to save money and avoid the adverse patent term consequences. 601.01(c)(II)

7 KGNo Gravatar March 28, 2011 at 9:44 pm

Glad a few others are lurking here this close to the test change! Good luck!

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8 ISNo Gravatar March 29, 2011 at 12:31 am

i had more than 5 questions on just this on my exam in Feb 2011

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9 BobNo Gravatar June 16, 2011 at 1:01 am

I think the first paragraph of 1893.03(c) helps explain it:

A U.S. national stage application may be entitled
to: (A) a right of priority under 35 U.S.C. 119(a) and
365(b) based on a prior foreign application or international
application designating at least one country
other than the United States; and (B) the benefit of an
earlier filed U.S. national application or international
application designating the United States pursuant to
35 U.S.C. 119(e) or 35 U.S.C. 120 and 365(c).

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10 KFNo Gravatar October 31, 2011 at 10:57 pm

So, is this answer still correct today-the one the answer gives, B?

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11 KFNo Gravatar October 31, 2011 at 11:17 pm

Got it. This makes perfect sense. Check out 706.02(f)(1)(I). This walks you through it perfectly. Because the reference here did not result from or claim the benefit of an international application the 102 (e) date is the earliest effective us filing date, so 11/28/00. Does this make sense? Although I admit I wondered wouldn’t the provisional date be the “earliest effective filing date”??

706.02(f)(1)Examination Guidelines for Applying References Under 35 U.S.C. 102(e) [R-5]
I.DETERMINE THE APPROPRIATE 35 U.S.C. 102(e) DATE FOR EACH POTENTIAL REFERENCE BY FOLLOWING THE GUIDELINES, EXAMPLES, AND FLOW CHARTS SET FORTH BELOW:
(A)The potential reference must be a U.S. patent, a U.S. application publication (35 U.S.C. 122(b)) or a WIPO publication of an international application under PCT Article 21(2) in order to apply the reference under 35 U.S.C. 102(e).
(B)Determine if the potential reference resulted from, or claimed the benefit of, an international application. If the reference does, go to step (C) below. The 35 U.S.C. 102(e) date of a reference that did not result from, nor claimed the benefit of, an international application is its earliest effective U.S. filing date, taking into consideration any proper benefit claims to prior U.S. applications under 35 U.S.C. 119(e) or 120 if the prior application(s) properly supports the subject matter used to make the rejection in compliance with 35 U.S.C. 112, first paragraph. See MPEP § 2136.02.

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12 maggieNo Gravatar November 1, 2011 at 12:39 pm

This is a patent term Q.
Patent term does not take into account (1) provisional (2) Foreign filings. It is only counted from the earliest US non-provisional date.

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13 maggieNo Gravatar November 1, 2011 at 12:52 pm

PCTs in English that designate USA… are considered ” US applications” and therefore are calculated in patent term.

14 KFNo Gravatar March 2, 2012 at 10:01 pm

Please ignore my post above! Sorry. Still learning. Wish we could delete things on here.

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15 DavidNo Gravatar February 19, 2012 at 1:33 am

Had this Q on 2/10/2012

I went over this Q twice, days before the exam but got it wrong on the actual exam! ><

20yrs start from nonprovisional app, not provisional!!! still, i passed. :)

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16 KillianRedNo Gravatar March 17, 2012 at 5:24 pm

Got this one 3/17/12

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17 GDBNo Gravatar April 20, 2012 at 1:06 am

Got this 04/19/12

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18 MarioNo Gravatar April 27, 2015 at 9:36 pm

Got this one on 4/25/15.

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