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(Message started by: mattnlaw on Jul 2^nd, 2007, 1:46pm)

Title: Q11 and 12, April 2002 Am
Post by mattnlaw on Jul 2^nd, 2007, 1:46pm

Could anyone please explain why the answers are 'B' and 'E' for Q11 and Q12?

Title: Re: Q11 and 12, April 2002 Am
Post by MrSnuggles on Jul 2^nd, 2007, 1:51pm

If you post the questions, I may be able to help.

Title: Re: Q11 and 12, April 2002 Am
Post by mattnlaw on Jul 2^nd, 2007, 2:01pm

Questions 11 and 12 are based on the following factual background. Consider questions
11 and 12 independently of each other.
Applicant files a patent application in Japan on February 28, 1996. Applicant files a PCT
international application designating the United States on February 27, 1997, based on
the Japanese application. The international application is published in English on August
28, 1997. The international application enters the national stage in the United States on
August 28, 1998. The USPTO publishes the application on June 7, 2001 at the request of
the applicant. The application issues as a United States patent on December 4, 2001.

11. When examining an application filed on or after November 29, 2000 or any
application that has been voluntarily published, what is its earliest possible prior art date,
for the June 7th U.S. published application in view of 35 U.S.C. § 102(e) as amended by
the American Inventors Protection Act of 1999?
(A) February 28, 1996.
(B) February 27, 1997.
(C) August 28, 1997.
(D) August 28, 1998.
(E) June 7, 2001.

12. For the United States patent, what is the patent’s earliest date, for prior art
purposes as a patent, in view of the amendment to 35 U.S.C. § 102(e) by the American
Inventors Protection Act of 1999?
(A) February 28, 1996.
(B) February 27, 1997.
(C) August 28, 1997.
(D) August 28, 1998.
(E) December 4, 2001

Title: Re: Q11 and 12, April 2002 Am
Post by jman63 on Jul 2^nd, 2007, 2:18pm

on 07/02/07 at 14:01:43, mattnlaw wrote:

11. 35 U.S.C. § 102(e)(1) provides that a USPTO
published application, based on an earlier international application, has 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, the USPTO published application is entitled to
its international filing date of February 27, 1997 for prior art purposes.

12. 35 U.S.C. § 102(e)(2), as amended by the
American Inventors Protection Act, provides that a United States patent is prior art as of its
earliest filing date in the United States. Section 102(e)(2) also specifically notes that a patent is
not entitled to any international application filing date for prior art purposes. Because in the
above fact pattern, no application was ever filed in the United States, the patent is not entitled to
any prior art date earlier than its issue date, December 4, 2001.

hope this helps

Title: Re: Q11 and 12, April 2002 Am
Post by mattnlaw on Jul 2^nd, 2007, 2:30pm

Thank you for your help, but i thought the standard date for 102(e) date is 11/29/2000. According to the fact pattern, IA date is 2/27/97 so i think there should be fee, oath, and translation in order to be qualified as 102(e) date...
Any comments?
Thank you!

Title: Re: Q11 and 12, April 2002 Am
Post by yoderbop on Jul 2^nd, 2007, 6:57pm

Based on 706.02(f)(1), I would say the application publication does not have a 102(e) date and the patent has a 102(e) date as of the fullfillment of the national stage requirements (8/28/1998). See example 6. Perhaps it is because the tests is old and laws have been updated???

Title: Re: Q11 and 12, April 2002 Am
Post by MrSnuggles on Jul 3^rd, 2007, 8:54am

For Q11, under MPEP 2136, for an int'l application filed before Nov 29, 2000, you have to use the old 102(e). In this case, we have to make the assumption that when the applicaton went national stage, it fully complied with USC 371(c)(1), (2), and (4), as provided in the older 102(e). Under the older 102(e), if 371 is satisfied, then the patent is given the international filing date as the priority date for prior art purposes.

For Q12, if you look at MPEP 2136, it does mention that 102(e) was amended in 1999 as part of the AIPA, and then again in 2002 as part of the Intellectual Property and High Technology Technical Amendments Act. We only see the current version and the pre-AIPA version in 2136, the current MPEP does not have the intervening version. As this test was provided in April 2002, 7 months before the 2002 change (see notes in USC 102 in MPEP), it was using this intervening version.

The intervening version states:

(e) the invention was described in—
(1) an application for patent, published under
section 122(b), by another filed in the United States
before the invention by the applicant for patent,
except that an international application filed under the
treaty defined in section 351(a) shall have the effect
under this subsection of a national application published
under section 122(b) only if the international
application designating the United States was published
under Article 21(2)(a) of such treaty in the
English language; or
(2) a patent granted on an application for
patent by another filed in the United States before the
invention by the applicant for patent, except that a
patent shall not be deemed filed in the United States
for the purposes of this subsection based on the filing
of an international application filed under the treaty
defined in section 351(a);

In this fact pattern, we are looking at a patent, not an application, so we look to (e)(2), which expressly states that international applications are not considered as being filed in the US, and thus only given their patent date as a priority date.

This seems very odd and probably is the basis for the change in 2002 to have applications and patents treated alike.

Title: Re: Q11 and 12, April 2002 Am
Post by jman63 on Jul 3^rd, 2007, 9:26am

yea, i wouldnt worry too much about this question. one of my prep material test replaced these two because it felt they were out dated questions based on the current mpep. there better japanese patent questions out there..