RE: US equivalent to EP 1,159,137

Kaz,

Thank for your comments and your additional questions.

I have looked in more detail for patents of GEMPLUS (France)[The world leader in smart card solutions] and found that my suggestion that O9/914868 is abandoned is likely incorrect, and O9/914868 is very likely pending.

I also bring below a question how complete for recent years INPADOC data for US nat. phase entry for PCT applications.


Your question 2 from the initial posting:
>>> > 2. In view of the above, is it possible that the corresponding US
> application is still pending and remains confidential?

For the GEMPLUS patent application O9/914868, it is highly likely that this application is pending.

I checked several other GEMPLUS US patent applications filed through PCT, for which US patent has been recently issued:
PCT No. US appl.No. 371(c) date PreGrant Pub. US pat. No. Issue Date Nat.Phase Entry data in INPADOC
WO99/66387 09/719432 2001/02/16 None US6931542 B1 2005/08/16 YES
WO00/28489 09/831147 2001/08/20 None US6786418 B1 2004/09/07 YES
WO00/30048 09/831634 2001/05/11 None US6839840 B1 2005/01/04 YES
WO00/51818 O9/914868 2001/09/04 None Could be pending YES
WO02/01727 10/312530 2003/04/23 Yes US6903663 B2 2005/06/07 No
WO02/25583 10/381022 2003/09/22 None US6950023 B1 2005/09/27 No
WO02/39375 10/416189 2003/05/09 Yes US6827264 B2 2004/12/07 No

As it clear from this table, that for PCT publication entered in the national phase even in 2003 was not published, and US patent was issued with a kind code B1.

So, you is likely right in you analysis that there no reason for abandonment of O9/914868, especially taking into account that EP1159137 was granted.

As you suggested, the reasons for non-publishing of PreGrant Publications could be technical of the interim/transition period (rather than legal).



Regarding question 3:
>>>3. Assuming that the number "US 20010914868" contains a serial number of an
UNPUBLISHED patent application, how this information has entered the public
domain?

I have checked INPADOC website. USPTO participated in so-named WIPO Project P25 from 1998, data for Entry in US national phase is available retrospectively from 1993
http://www.european-patent-office.org/inpadoc/inpadoc_faq.htm#wipocov
See also PRS Newsletters PRS 1998/03, PRS 1998/06
http://www.european-patent-office.org/inpadoc/news/prs.htm
 http://www.european-patent-office.org/inpadoc/news/prs/prs9805.pdf)
(For recent changes on US PCT data see INPADOC Newsletter 2005/02. p.7
http://www.european-patent-office.org/inpadoc/news/inp/inp_0502.pdf)

What puzzle me, why for some (as above) PCT patent applications entered into the US national phase in 2003, entry in US national phase information is missing in INPADOC. Have anybody observations/statistics how INPADOC data on US nat. phase entry is complete?

Regards,

Alex.


PS A link to 35 U.S.C. 122 in previous posting was incomplete; the correct link is:
http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_122.htm

-----Original Message-----
From: Kazimierz Kaminski [mailto:ktk_at_infoscitech.ca]
Sent: Wednesday, October 12, 2005 7:17 PM
To: Belinskiy, Aleksandr PH/US
Cc: piug-l_at_derwent.co.uk
Subject: RE: US equivalent to EP 1,159,137


Alexandr,

Thank you very much for your very detailed and thoughtful response. I have
read it very carefully and I hope that I have missed no point of importance.
However, your comments raised some additional questions I would like to ask
you (as anybody else in the group) to consider.

First of all, I agree with you that the number "2001 914868" (no "gap
filling" zero between the year and the number) shown in Esp_at_cenat database
makes it quite convincing that the zero in the number "20010914868" shown in
the INPADOC database is only a "formatting ploy", with no relation to the
number which follows. I also agree with your conclusion that the mysterious
INPADOC number represents the US application (serial) number 09/914868, the
series code "09" being consistent with the US filing date of September 4,
2001. In fact, most of my numerical searches in the USPTO databases were
based on this assumption.

I also agree with you that the fact that the application was not published
seems to suggest (according to 35 U.S.C. 122) that the application is no
longer pending, as this appears to be the only applicable exception to the
publication rules set forth by 35 U.S.C. 122. What puzzles me is the
mechanism by which the application ceased to be pending (became abandoned),
assuming this is the case (which may not be true, as speculated later in
this message).

The fact that the application has assigned a US application number and
filing date seems to suggest that applicant complied with the requirements
of 35 U.S.C. 371, i.e., that the application has not become abandoned due to
non-compliance with those requirements. Or is it possible that for some 35
U.S.C. 371 requirements, such as the payment of the national fee, some grace
period provisions apply, so that the PCT application may formally enter the
US national phase (and have a serial number assigned) and then lapse for
non-compliance with this provision after the grace period has expired?
Assuming this was not the reason of abandonment, is requesting the
withdrawal of the application the only other way to prevent its publication?
The latter option seems to be a bit senseless to me, for an application
having a number of published equivalents (starting from the published PCT
application).

Another point coming to my mind is that the PCT application in question
entered the US national phase very close to the time when the publication
requirements were added to the US patent law. Such changes frequently
include transitional provisions which may have governed the publication of
this application, providing applicant with the possibility of keeping it
confidential (and still pending). This does not seem very likely, as I have
located several applications with serial numbers and filing dates very close
to those of 09/914,868, which applications have been duly published (e.g.,
09/914,898 of September 4, 2001, published as 20030093382, or 09/914,896 of
September 4, 2001, published as 20020166358), but this might be another
possibility to consider when trying to explain why the application in
question was not published.

If you (or anybody else) can comment on this, I would be really grateful for
any insight.

Kaz Kaminski
   

> -----Original Message-----
> From: Aleksandr.Belinskiy_at_sanofi-aventis.com
> [mailto:Aleksandr.Belinskiy_at_sanofi-aventis.com]
> Sent: October 12, 2005 1:06 PM
> To: ktk_at_infoscitech.ca; piug-l_at_derwent.co.uk
> Cc: Piug-discussion_at_piug.org
> Subject: RE: US equivalent to EP 1,159,137
>
> Kazimierz,
>
> The answer on the first question is appear to be clear. I am
> interested that somebody comment my reply on 2 and 3 questions.
>
> >>1. What does the number "US 20010914868" represent?
>
>
> It is apparently US national application number (09/914868),
> and 20010904 is 371(c) date, the date when requirement of 35
> U.S.C. 371 (c) performed for a commencement of US national
> phase of a PCT application
> (http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_
> U_S_C_371.htm#usc35s371).
>
> Let's compare legal status information for WO 200051818 and
> WO 200051819 (chosen as an example)
>
> Legal status (INPADOC) of WO0051818
>
> PRS Date : 2001/09/04
> PRS Code : ENP US
> Code Expl.: ENTRY INTO THE NATIONAL PHASE IN:
> CORRESP. PATENT D.: 2001 914868
> KD OF CORRESP. PAT.: A
> PUBL. DATE CORR. P.: 20010904
> FILING(F)/PUBLIC(P): F
>
>
> Legal status (INPADOC) of WO0051819
>
>
> PRS Date : 2000/11/02
> PRS Code : ENP US
> Code Expl.: ENTRY INTO THE NATIONAL PHASE IN:
> CORRESP. PATENT D.: 2000 673653
> KD OF CORRESP. PAT.: A
> PUBL. DATE CORR. P.: 20001102
> FILING(F)/PUBLIC(P): F
>
>
> For WO0051819 there is an issued patent:
>
> Patent number: US6589708
> Publication date: 2003-07-08
> Inventor: KATANO YASUO (JP); TOMITA SATORU (JP); MORIKAWA
> MINORU (JP); HARA KEI (JP)
> Applicant: RICOH KK (JP)
> Application number: US20000673653 20001102 Priority
> number(s): JP19990053587 19990302; WO1999JP01081 19990305
>
> And this is from PAIR for 09/673653
>
> Application Number: 09/673,653
> Filing or 371 (c) Date: 11-02-2000
> First Named Inventor: Yasuo Katano , Kanagawa, (JP)
> Status: Patented Case
> Status Date: 06-19-2003
> Patent Number: 6,589,708
> Issue Date of Patent: 07-08-2003
>
>
> >>2. In view of the above, is it possible that the corresponding US
> application is still pending and remains confidential?
>
> In accordance with
>
> 35 U.S.C. 374, "...an international application designating
> the United States shall be deemed a publication under section
> 122(b)..." and "shall be published...promptly after the
> expiration of a period of 18 months from the earliest filing
> date " with exception of 35 U.S.C. 122 (b)(2)(A)(i) that
> application is (i) no longer pending. etc.
> http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U
> _S_C_374.htm
> http://www.uspto.gov/web/offices/pac/mpep/documents/usc35s122
>
> Therefore, it is possible to suggest that the likely reason
> why 09/914868 was not published because it was abandoned.
>
> >>>3. Assuming that the number "US 20010914868" contains a
> serial number
> >>>of an
> UNPUBLISHED patent application, how this information has
> entered the public domain?
>
> This is a good question. It is appear that communication from
> national office to the International Bureau, that PCT
> application entered a national phase contains national
> application number and a date of commencement of a national
> phase. It is unclear for me, should date of entry and
> national application number kept confidential under Article
> 30 of PCT (or US national law)
> http://www.uspto.gov/web/offices/pac/mpep/documents/appxt_a30.
> htm#pctarticle-30
>
> Best Regards,
>
> Alex.
>
> Regards,
> Aleksandr Belinskiy
> Patent Information Scientist
> Patent Department
> sanofi-aventis
>
>
> 1041 Routes 202/206
> P.O. Box. 6800, Mail Stop BW-D-203A,
> Bridgewater, NJ 08807-0800
> Phone : (908) 231-3294 Fax: (908) 231-4766
> E-mail: aleksandr.belinskiy_at_sanofi-aventis.com
>
>
>
> -----Original Message-----
> From: owner-piug-l_at_derwent.co.uk [mailto:owner-piug-l_at_derwent.co.uk]On
> Behalf Of Kazimierz Kaminski
> Sent: Wednesday, October 12, 2005 2:07 AM
> To: piug-l_at_derwent.co.uk
> Subject: US equivalent to EP 1,159,137
>
>
> Dear all,
>
> I recently came across a situation which raised questions I
> wish I knew answers to. I hope that somebody will be able to
> shed some light on what is a mystery to me.
>
> Looking for possible US equivalent(s) to EP 1,159,137, I
> checked its INPADOC patent family record, where I found the
> following entry:
>
>
> UNITED STATES OF AMERICA (US)
> Legal Status (No,Type,Date,Code,Text):
> US 20010914868 A 20010904 US REFW CORRESPONDS TO PCT
> APPLICATION
> WO 200051818 P
>
>
> (I found a similar entry in Esp_at_cenet database, when checking
> "INPADOC legal
> status" of WO 200051818 (or WO0051818), where the date of 20010904 was
> additionally qualified as "publication date". There is no US
> equivalent of
> EP 1,159,137 or WO0051818 according to "INPADOC patent
> family" information
> provided by Esp_at_cenet database. The USA appears among the
> designated states
> of the PCT application published as WO 200051818.)
>
> The above raises the following questions:
>
> 1. What does the number "US 20010914868" represent?
>
> Even though consistent with the format used by USPTO for
> publication numbers
> (and assuming no data entry errors), this number seems way
> too high to be a
> publication number. Assuming that the number represents a
> combination of a
> US filing year (US national entry year) and a US filing
> (serial) number
> makes things no better. Is the number "0914868" a combination
> of the series
> code "09" and the serial number "14868" (i.e., 09/14868), or
> is it simply a
> serial number "914868" with leading zero added to comply with
> a format's
> requirement? To make the long story short, searches of USPTO
> databases of
> patents and published patent applications, and the Public
> PAIR based on all
> the above assumptions plus the name of the inventor and assignee of EP
> 1,159,137 failed to locate any US equivalent of the latter.
>
> 2. In view of the above, is it possible that the corresponding US
> application is still pending and remains confidential?
>
> This is not a trivial question, for me at least. WO 200051818 claims
> priority from FR 1999/2515 filed March 1, 1999. As the preliminary
> examination of the PCT application was requested, it likely
> entered the US
> national phase under Chapter 2 of the PCT, i.e., in 30 months from the
> priority date, which apparently almost fits the date of
> September 4, 2001
> shown in the INPADOC record and in Esp_at_cenet database
> (September 1, 2001 was
> a Saturday). However, it seems that with such a US filing date, this
> application should have been published. Is it possible that
> this has not
> happened and, if so, why?
>
> 3. Assuming that the number "US 20010914868" contains a
> serial number of an
> UNPUBLISHED patent application, how this information has
> entered the public
> domain? My understanding is that any data regarding US
> unpublished patent
> applications (including their serial numbers) remain
> confidential until a
> patent is granted.
>
> Any enlightenment regarding the above-raised questions would
> be greatly
> appreciated.
>
> Kazimierz T. Kaminski, Ph.D.
> ktk_at_infoscitech.ca
>
> InfoSciTech
> 5929 Jeanne d'Arc Blvd.
> Suite 112
> Orleans, ON
> K1C 7K2
> Canada
>
> tel (613) 824-9076
> fax (613) 824-9562
>
>
>
>
>
>


Received on Thu Oct 13 2005 - 08:05:18