Recent test takers report that question #40 from the October 2003 (PM) test is in the patent bar exam database.
40. Applicant files a patent application in Japan on January 5, 2000. Applicant files a PCT international application designating the United States on January 5, 2001, based on the Japanese application. The international application is published in English on July 5, 2001. The international application enters the national stage in the United States on September 5, 2001. The USPTO publishes the application on June 6, 2002. The application issues as a United States patent on December 3, 2002. What is its earliest possible 35 USC 102(e) prior art date for the application published by the United States, in view of the amendment to Title 35 by the American Inventors Protection Act of 1999 and the Intellectual Property and High Technology Technical Amendments Act of 2002?
(A) January 5, 2000.
(B) January 5, 2001.
(C) July 5, 2001.
(D) June 6, 2002.
(E) December 3, 2002.
ANSWER: (B) is the most correct answer. 35 U.S.C. § 102(e)(1) provides that a US published application of a national stage of an international application filed on or after November 29, 2000 has a prior art effect as of its international filing date, if the international application designated the United States, and was published in English. Because in the above fact pattern, the international application designated the United States and was published in English, and was filed on or after November 29, 2000, the USPTO published application is entitled to its international filing date of January 5, 2001 for prior art purposes under 35 U.S.C. § 102(e)(1). See Example 4 of MPEP § 706.02(f)(1). (A) is wrong because the Japanese filing date is relevant under 35 U.S.C. § 119(a) only for priority and not prior art purposes. (C) and (E) are wrong because they recite prior art dates that are later than January 5, 2001. (D) is wrong because the prior art date under 35 U.S.C. § 102(e)(1) is earlier than the application publication date, June 6, 2002.