Q) Foreign prior art date (10.03.40p)

by admin on April 19, 2010 · 9 comments

in Exam Questions

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.

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September 5, 2012 at 10:09 am

{ 8 comments… read them below or add one }

1 BeckerNo Gravatar May 17, 2011 at 3:27 pm

I got this question 5/16/2011.

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2 ohsoobviousNo Gravatar May 25, 2011 at 6:11 pm

i also got this question on 5/18/11

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3 ENo Gravatar July 19, 2011 at 1:38 pm

I originally picked (c) because I thought the international application’s 102(e) date would be the last date the requirements of published in English + designate US on international application was fulfilled. But it is the international filing date regardless of whether it was published in English later? However, if the international application was filed before Nov 29, 2000, that international application’s 102(e) date is actually the date the last of the fee/oath/translation was submitted, if it resulted in a patent?

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4 JunNo Gravatar July 19, 2011 at 7:32 pm

If the international filing date is on or after 11/29/2000, the 102(e) prior art date is the international filing date (not the priority date, not the receiving date of the documents).

If the international filing date is before 11/29/2000, the 102(e) prior art date is the date that USPTO receives all the three items: fee, oath, and translation.

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5 JimNo Gravatar August 9, 2011 at 1:01 am

Here is my summary:
(1) Prior to 11/29/2000, US Patent Expiration date is 20 years from the PCT Filing date (designating US), and 102(e) date is the National Stage entrance completion date.
(2) After 11/29/2000, US Patent Expiration date is 20 years from the PCT Filing date (designating US, English or not), and 102(e) date is the PCT Filing date (designating US, and must be in English).
(3) After 1/1/2004, If PCT is in English, the US Patent Expiration date and 102(e) date are the PCT filing date (plus 20 years for the expiration date).

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6 fengyuwuzuNo Gravatar October 12, 2011 at 3:31 pm

what if After 1/1/2004, If PCT is NOT in English

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7 KFNo Gravatar March 3, 2012 at 10:44 am

Example 4 in 706.02(f)(1) is spot on. Just replace the dates with this fact pattern and voila!

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8 Get SmartNo Gravatar November 28, 2013 at 2:24 am

(1) The applicant must file a claim of priority within six months of the filing date of the first-filed foreign application. 15 U.S.C. 1126(d)(1) ; 37 C.F.R. §§2.34(a)(4)(i) and 2.35(b)(5); TMEP §§1003.01 and 1003.02. (2) The applicant must: (a) specify the filing date and country of the first regularly filed foreign application; or (b) state that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority. 15 U.S.C. 1126(d) ; 37 C.F.R. §§2.34(a)(4)(i)(A) and (B). (3) The applicant must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. 1126(d)(2) . If the verified statement is not filed with the initial application, the verified statement must allege that the applicant has had a bona fide intention to use the mark in commerce since the filing date of the application. 37 C.F.R. 2.34(a)(4)(ii) . (4) Both the applicant’s country of origin and the country where the foreign application is filed must be a party to an international treaty or agreement with the United States that provides a right of priority, or must extend reciprocal rights to priority to United States nationals. 15 U.S.C. 1126(b) and (d); TMEP §§1002.02 , 1002.03 and 1002.04. (5) The scope of the goods covered by the §44(d) basis cannot exceed the scope of the goods or services in the foreign application. 37 C.F.R. 2.32(a)(6) ; TMEP §1402.01(b) . (6) The applicant must specify the serial number of the foreign application. 37 C.F.R. 2.34(a)(4)(i)(A) ; Paris Convention Article 4(D)(5).

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