Recent test takers report that question #34 from the October 2003 (PM) test is in the patent bar exam database.
34. In accordance with the patent laws, rules and procedures as related in the MPEP , which of the following paper is precluded from receiving the benefit of a certificate of mailing or transmission under 37 CFR 1.8?
(A) An amendment, replying to an Office action setting a period for reply, transmitted by mail with a certificate of mailing to the USPTO from a foreign country.
(B) An amendment, replying to an Office action setting a period for reply, transmitted by facsimile with a certificate of transmission to the USPTO from a foreign country.
(C) An information disclosure statement (IDS) under 37 CFR 1.97 and 1.98 transmitted after the first Office action.
(D) A request for continued examination (RCE) under 37 CFR 1.114.
(E) An appeal brief.
ANSWER: (A) is the most correct answer. See MPEP § 512, which states “The Certificate of Mailing procedure does not apply to papers mailed in a foreign country.” (B) is not correct. See MPEP § 512. Certificate of transmission procedure applies to correspondence transmitted to the Office from a foreign country and an amendment is not prohibited from being transmitted by facsimile and is not precluded from receiving the benefits under 37 CFR § 1.8. (C) is not correct. See MPEP § 609, subsection “Time for Filing.” An IDS will be considered to have been filed on the date of mailing if accompanied by a properly executed certificate of mailing or facsimile transmission under 37 CFR § 1.8. (D) is not correct. See MPEP § 706.07(h) Comparison Chart. An RCE is entitled to the benefit of a certificate of mailing or transmission under 37 CFR § 1.8. (E) is not correct. See MPEP § 1206. An appeal brief is entitled to the benefit of a certificate of mailing or transmission under 37 CFR § 1.8 because it is required to be filed in the Office within a set time period which is 2 months from the date of appeal.
Certificate of mailing can not be used for:
(1) Any paper from a foreign country.
(2) Any paper for a PCT
(3) CPA 1.53(d) filing (because considered a new application)
(4) No new applications
(5) No interference paper
(6) No requests to rescind a nonpublication request
no to rescission
but yes to notice of foreign filing
and also
no to Papers submitted for redaction
Faxing CAN be used for an amendment from a foreign country. But NOT for filing an Int’l application and transmitting the fee?? I had it in my head that faxing and international apps didn’t go together, but it looks like they can when it is amendments or othe responses to office actions?
Maggie-when do you take the test?
Had this Q on 2/10/2012
Got this 3/30/13.
{ 1 trackback }