Patent Bar Examination (USPTO Registration Exam) International Patent Practice (PCT and Hague) Flashcards

24 sample cards from the International Patent Practice (PCT and Hague) deck

Sampled from the end of the deck, so these are different cards from the ones shown on the syllabus page.

1. In a 35 USC 371 national stage application, when is the inventor's oath or declaration due?

   It may be postponed; under the AIA it can be filed up to the date the issue fee is paid, but a notice of allowance will not issue without it. Historically the national-stage commencement required various documents by 30 months, with the oath fileable later upon notice.

2. What is a 'bypass' continuation application under 35 USC 111(a)?

   Instead of entering the U.S. national stage under 371, the applicant files a new U.S. application under 111(a) claiming benefit of the PCT application under 35 USC 365(c)/120. It 'bypasses' the national stage and is examined as an ordinary continuation.

3. What is one key advantage of a 111(a) bypass continuation over a 371 national stage entry?

   It is treated as a regular U.S. application from filing, giving flexibility (e.g., new claims, easier preliminary amendments, U.S. continuation/CIP practice) and avoiding some national-stage formalities; it can also add new matter via a CIP (which 371 cannot).

4. By when must a 35 USC 111(a) bypass continuation be filed to claim benefit of the PCT application?

   It must be filed while the PCT application is pending — i.e., before the PCT application's national stage rights lapse, generally before or by the 30-month date, claiming benefit under 120/365(c) (copendency required).

5. What does 35 USC 365(c) provide regarding benefit claims?

   A national application may claim the benefit of the filing date of a prior PCT international application that designated the United States, the same way 120 applies to U.S. national applications (enabling bypass continuations).

6. What is restoration of the right of priority under the PCT?

   If a PCT application is filed after the 12-month Paris Convention priority period but within 2 additional months (i.e., up to 14 months from priority), the RO may restore the priority right if the delay was unintentional or despite due care (depending on the standard applied).

7. What are the two standards a Receiving Office may apply for restoring the right of priority?

   'Unintentional' (a more lenient standard) or 'in spite of due care' (a stricter standard). The USPTO as RO applies the 'unintentional' standard.

8. What is the time limit to request restoration of the right of priority, and from what date?

   The PCT application must be filed within 14 months of the priority date (the 12-month period plus 2 months), and the restoration request is generally due within that 2-month window / by the time of national stage entry as set by rule.

9. Does priority restoration granted by the Receiving Office bind every designated office?

   Not necessarily. A designated office may review the restoration; if the RO used a standard that office accepts (or a stricter one), it is generally honored, but offices that made a reservation or apply a stricter standard may re-examine it.

10. What is 'unity of invention' in the PCT?

    The requirement that an international application relate to a single general inventive concept; claims may cover a group of inventions only if linked by a 'special technical feature' that defines a contribution over the prior art.

11. How does PCT 'unity of invention' differ from U.S. restriction practice?

    PCT unity uses the 'special technical feature' / single general inventive concept test (an a posteriori analysis). U.S. restriction practice (35 USC 121) uses 'independent and distinct' inventions and a serious-search-burden analysis. They are different standards, so a PCT can be unitary yet still face U.S. restriction.

12. What happens if the ISA finds lack of unity of invention in a PCT application?

    The ISA searches the first-claimed invention and invites the applicant to pay additional search fees for the other inventions; unpaid inventions are not searched (the applicant may pay under protest).

13. What is the Hague Agreement and what does it cover?

    The Hague Agreement Concerning the International Registration of Industrial Designs lets an applicant obtain protection for industrial DESIGNS in multiple contracting parties through a single international design application filed with WIPO's International Bureau.

14. What U.S. statutory provisions govern international design applications (Hague)?

    35 USC chapter 38 (sections 381-390), added by the Patent Law Treaties Implementation Act, govern international design applications designating the U.S. and the USPTO's role.

15. What is the term of a U.S. design patent issued from a Hague international design application?

    15 years from the date of grant (same as other U.S. design patents filed on/after May 13, 2015). The international registration itself is renewable in 5-year increments for other countries.

16. Where can a Hague international design application be filed?

    Directly with WIPO's International Bureau, or indirectly through an office of a contracting party (e.g., the USPTO as an office of indirect filing) for transmittal to the IB.

17. How does an applicant designate the United States in a Hague international design application?

    By indicating the United States among the designated contracting parties in the international design application. Designating the U.S. triggers special requirements (e.g., inventor's oath/declaration and a single design due to U.S. unity-of-design practice).

18. What special U.S.-specific requirement applies when the U.S. is designated in a Hague application?

    The application must include claims (the U.S. requires a claim) and the inventor's oath or declaration; the U.S. also limits each design patent to a single design (unlike some offices that allow multiple designs per registration).

19. How are Hague international design applications designating the U.S. examined?

    The USPTO substantively examines them like any U.S. design application (for novelty, nonobviousness, ornamentality, etc.); if allowable, the USPTO grants a U.S. design patent. WIPO does NOT examine for patentability.

20. What is the effective filing date of an international design application designating the U.S.?

    The international registration date (the filing date accorded by the IB) is treated as the U.S. filing date; it has the effect of a regularly filed U.S. national design application as of that date.

21. When is a Hague international design registration published, and what is the default?

    WIPO publishes the international registration in the International Designs Bulletin; standard publication is about 6 months after registration, but the applicant may request immediate or deferred publication (deferment up to 30 months, subject to designated-party limits; the U.S. does not permit deferment).

22. Can an international design application designating the U.S. claim priority, and under what period?

    Yes. It may claim Paris Convention priority to an earlier design application filed within the prior 6 months (the priority period for industrial designs is 6 months, not 12).

23. For a PCT application, when must a U.S. national-stage applicant furnish an English translation if the application was not filed in English?

    By the 30-month national stage deadline (a translation of the international application, including amendments if relied upon, must be filed; a late translation may be accepted with a surcharge in limited circumstances).

24. What is the International Preliminary Report on Patentability (IPRP), and what are its two forms?

    A report on novelty, inventive step, and industrial applicability. IPRP Chapter I = the Written Opinion of the ISA reissued by the IB (when no Demand is filed). IPRP Chapter II = the report from the IPEA when a Chapter II Demand is filed. Both are non-binding.

What this deck covers

International Patent Practice (PCT and Hague) flashcards FAQ