Q) Filing Date (10.03.39p)

by admin on April 19, 2010 · 13 comments

in Exam Questions

Recent test takers report that question #39 from the October 2003 (PM) test is in the patent bar exam database.


39. An international application is filed in the United States Receiving Office on September 18, 2002. In accordance with the PCT and USPTO rules and the procedures set forth in the MPEP, which of the following will result in the application not being accorded an international filing date of September 18, 2002?
(A) The description and claims are in German.
(B) The Request is signed by a registered attorney rather than the applicant.
(C) The sole applicant is a Canadian resident and national.
D) The application does not contain a claim.
(E) The application is not accompanied by any fees.

ANSWER: The correct answer is (D). PCT Article 11(1)(iii)(e); 35 U.S.C. § 363; 37 CFR § 1.431(a); MPEP § 1810. Under PCT Article 11(1)(iii)(e) to be accorded an international filing date an application must have “a part which on the face of it appears to be a claim or claims.” (A) and (C) are incorrect. Under PCT Rule 19.4 if an application is not filed in the prescribed language or is filed by an applicant for which the Office to which the application is submitted is not competent, such application will be forwarded to the International Bureau which will act as receiving Office and accord a filing date as of the date of receipt in the USPTO. (B) is not correct. The Request may be signed by an attorney or agent who is registered to practice before the USPTO. In such a situation the application will be accorded an international filing date of September 18, 2002, and under PCT Article 14 an invitation to correct the defect will be mailed. See MPEP § 1805, paragraph 7; MPEP 1810, under the heading “The ‘International Filing Date,” second paragraph. (E) is also incorrect. Under PCT Rules 14.1(c), 15.4(a), 16.1(f), and 16bis.1 the fees may be paid at a date later than the original receipt date.

{ 13 comments… read them below or add one }

1 maggieNo Gravatar November 15, 2011 at 1:01 pm

This Q. It is being tested by new variants
(1) The applicants are not a USA resident and national.
(2) The description and claims are not in English.

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2 ENo Gravatar November 21, 2011 at 3:01 pm

The international app can still get the international filing date if the applicant is a resident or national of one of the PCT contracting states and it pays the transmittal fee to the US RO. The US RO will then forward the app to the IB.

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3 KFNo Gravatar March 3, 2012 at 10:27 am

Can anyone tell me where I can find PCT Rules? These seem to be different from the PCT articles. I’m trying to figure out of you can still get an international filing date on the original filing date (as in this question) if the app has to be transferred to the International Bureau because it is not in English if the transmittal fee is not paid. I know you can pay the filing fee later and still get the original filing date, but I’m wondering about the transmittal fee. The answer references 14(c) and I can’t find that PCT rule anywhere.

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4 KFNo Gravatar March 3, 2012 at 10:27 am

I have access to Patware too….but don’t see them in there. I have the PCT Articles/.TOC.

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5 KFNo Gravatar March 3, 2012 at 10:28 am

Ahhh should have googled first. Here they are: http://www.wipo.int/pct/en/texts/rules/

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6 KFNo Gravatar March 3, 2012 at 10:29 am

14.1(c)-transmittal fee must be paid within one month.

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7 KFNo Gravatar March 3, 2012 at 10:30 am

International filing fee must also be paid to the recieving office within 1 month. PCT rules 15.3

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8 SolNo Gravatar April 4, 2012 at 1:16 pm

PCT rules 15.3 no longer exists in my R8

US recieved on 2.1.2011
Transmitte to IB and IB recieved on 2.15.2011

For the fling date, it is still 2.1.2011
19.4(b)
The international application so transmitted shall be considered to have been received by the International Bureau as receiving Office under Rule 19.1(a)(iii) on the date of receipt of the interna-tional application by that national Office.

For paying the fee, the deadline is 1 month from 2.15.2011
19.4(c)
(c)
For the purposes of Rules 14.1(c), 15.4 and 16.1(f), where the international application was trans-mitted to the International Bureau under paragraph (b), the date of receipt of the international application shall be considered to be the date on which the inter-national application was actually received by the International Bureau. For the purposes of this para-graph, the last sentence of paragraph (b) shall not apply.

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9 MirandaNo Gravatar March 3, 2012 at 11:51 am

FYI the PCT Rules are listed in Appendix T after the Articles…

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10 KFNo Gravatar March 3, 2012 at 11:57 am

Thanks!!

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11 Kyle GurleyNo Gravatar December 27, 2012 at 2:15 am

Can someone please explain this to me? I don’t understand why (d) is correct. MPEP 1810 states
(section entitled THE “INTERNATIONAL FILING DATE”):

>>In applications filed on or after April 1, 2007, if the defect under PCT Article 11(1) is that the purported international application fails to contain a portion which on its face appears to be a description or claims, and if the application, on its initial receipt date, contained a priority claim and a proper incorporation by reference statement, the initial receipt date may be retained as the international filing date if the submitted correction was completely contained in the earlier application. See PCT Rules 4.18 and 20.6.<<

It sounds to me like you can still get the filing date EVEN WITHOUT a claim as long as the application to which you claimed priority contains a claim and you submit a correction to add a claim in the instant case.

Any thoughts?

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12 JetNo Gravatar December 27, 2012 at 1:08 pm

“applications filed on or after April 1, 2007″

September 18, 2002 < April 1, 2007

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13 KyleNo Gravatar December 27, 2012 at 1:54 pm

THANKS !!! man, it’s frustrating when that happens… Much appreciated.

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