aia final rules aia transition applications march 20, 2013

AIA Final Rules

AIA Transition Applications

March 20, 2013

AIA Transition Applications• “Transition Application”- nonprovisional

application claiming priority (foreign or domestic) to an earlier application that was filed before March 16, 2013.

• Need to file a statement that AIA applies when– Transition application contains, or contained at

any time, a claim (even a single claim) to a claimed invention that has an effective filing date on or after March 16, 2013. 37 CFR § 1.55(j), § 1.78(a)(6), or § 1.78(c)(6) (p.41)

AIA Transition Applications• Rationale for Statement

– “This information is needed to assist the Office in determining whether the nonprovisional application is subject to AIA 35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102 and 103.” p. 38.

• If you provide a statement, the transition application is generally subject to AIA 102 and 103 prior art standards.– Note may be still subject to Pre-AIA 102(g)

standard for interference.


Application

FiledFiled

Priority Application

March 16, 2013

CON, DIV, CIP, 119,…

Transition Application

AIA Transition Applications• Number of Claims Does Not Matter

– Statement required even if just a single claim has an effective date on or after March 16, 2013 while the rest of the claims have an earlier date.

• Claim Counts Not Disclosure• You Can’t Fix It

– Timing of the claim generally doesn’t matter– Canceling the claim(s) with an effective date on

or after March 16, 2013 will not help you avoid the need for a statement. FR p. 11083

– Once an AIA application, always an AIA application (child cases even poisoned)

AIA Transition Applications• Asking for a Final Office Action When

Submitting AIA Claims in Pre- AIA Case– USPTO considers amendment necessitating

new grounds for rejection

• If AIA claim is new matter to the application, the Pre-AIA application will not be considered an AIA application– Application is never considered to “contain” the

AIA claim because new matter– Doesn’t count for Preliminary Amendments filed

with the application


• Applicant Statement– “there is a claim in the nonprovisional application

that has an effective date on or after March 16, 2013.”

– No requirement to identify how many claims– No requirement to identify the subject matter.See e.g., 37 CFR 1.55(j), p. 32.

• ADS Includes Checkbox for AIA Statement

• If statement, transition application is generally subject to AIA 102/103 prior art standard.


• ADS- AIA Statement

Check the Box for AIA Transition Aplication


• Timing- must submit the statement by the later of:– 4 Months from actual filing– 4 Months from entering national stage– 16 Months from prior provisional application filing

date– 16 Months from prior foreign application filing

date– Date the first claim with effective date on or after

March 16, 2013 is presented. (e.g., introduce claim during prosecution)

See, 37 CFR § 1.55(j), § 1.78(a)(6), or § 1.78(c)(6)


TransitionApplication

FiledFiled


March 16, 2013


No StatementRequired

All Claims Pre-AIA

Date



FiledFiled


March 16, 2013


StatementRequired!

One Claim Post-AIA

DateAIA Statement

4 Months



FiledFiled


March 16, 2013

All Claims Pre-AIA

Date

Amendment

Filed

One ClaimPost-AIA

Date

StatementRequired!



FiledFiled


March 16, 2013

All Claims Pre-AIA

Date

Amend#1

Filed

One ClaimPost-AIA

Date

Amend#2

Filed

Post-AIA ClaimCanceled

StatementRequired!

AIA Transition Applications• No statement for:

– Transition application only ever claims subject matter disclosed in parent application(s) filed before March 16, 2013.

– Nonprovisional application only claims priority to applications filed on or after March 16, 2013.

– CON/DIV/CIP where AIA Statement was filed in the parent application


Application

FiledFiled


March 16, 2013


No StatementRequired

More Information and Questions…

• Contact: Chuck Schmal

Phone: (317)713-4954Email: [email protected]

aia final rules aia transition applications march 20, 2013

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