1. AIA Final RulesAIA Transition ApplicationsMarch 20, 2013

2. AIA Transition Applications 3. AIA Transition Applications Transition Application- nonprovisionalapplication claiming priority (foreign ordomestic) to an earlier application that wasfiled before March 16, 2013. Need to file a statement that AIA applies when Transition application contains, or contained atany time, a claim (even a single claim) to aclaimed invention that has an effective filing dateon or after March 16, 2013. 37 CFR 1.55(j), 1.78(a)(6), or 1.78(c)(6) (p.41) 4. AIA Transition Applications Rationale for Statement This information is needed to assist the Office indetermining whether the nonprovisionalapplication is subject to AIA 35 U.S.C. 102 and103 or pre-AIA 35 U.S.C. 102 and 103. p. 38. If you provide a statement, the transitionapplication is generally subject to AIA 102 and103 prior art standards. Note may be still subject to Pre-AIA 102(g)standard for interference. 5. AIA Transition ApplicationsCON, DIV, CIP, 119,FiledFiledMarch 16, 2013PriorityApplicationApplication 6. AIA Transition Applications Number of Claims Does Not Matter Statement required even if just a single claimhas an effective date on or after March 16, 2013while the rest of the claims have an earlier date. Claim Counts Not Disclosure You Cant Fix It Timing of the claim generally doesnt matter Canceling the claim(s) with an effective date onor after March 16, 2013 will not help you avoidthe need for a statement. FR p. 11083 Once an AIA application, always an AIAapplication (child cases even poisoned) 7. AIA Transition Applications Asking for a Final Office Action WhenSubmitting AIA Claims in Pre- AIA Case USPTO considers amendment necessitatingnew grounds for rejection If AIA claim is new matter to theapplication, the Pre-AIA application will not beconsidered an AIA application Application is never considered to contain theAIA claim because new matter Doesnt count for Preliminary Amendments filedwith the application 8. AIA Transition Applications Applicant Statement there is a claim in the nonprovisional applicationthat 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 generallysubject to AIA 102/103 prior art standard. 9. AIA Transition Applications ADS- AIA StatementCheck the Box for AIA Transition Aplication 10. AIA Transition Applications Timing- must submit the statement by the laterof: 4 Months from actual filing 4 Months from entering national stage 16 Months from prior provisional application filingdate 16 Months from prior foreign application filingdate Date the first claim with effective date on or afterMarch 16, 2013 is presented. (e.g., introduceclaim during prosecution)See, 37 CFR 1.55(j), 1.78(a)(6), or 1.78(c)(6) 11. AIA Transition ApplicationsCON, DIV, CIP, 119,FiledFiledMarch 16, 2013PriorityTransitionApplication Application 12. AIA Transition ApplicationsCON, DIV, CIP, 119,FiledFiled4 MonthsMarch 16, 2013PriorityTransition AIA StatementApplication Application 13. AIA Transition ApplicationsFiledFiled FiledMarch 16, 2013PriorityTransition AmendmentApplication Application 14. AIA Transition ApplicationsFiledFiledFiled FiledMarch 16, 2013PriorityTransitionAmend AmendApplication Application#1#2 15. AIA Transition Applications No statement for: Transition application only ever claims subjectmatter disclosed in parent application(s) filedbefore March 16, 2013. Nonprovisional application only claims priority toapplications filed on or after March 16, 2013. CON/DIV/CIP where AIA Statement was filed inthe parent application 16. AIA Transition Applications CON, DIV, CIP, 119,FiledFiledMarch 16, 2013PriorityApplicationApplication 17. More Information and Questions Contact: Chuck SchmalPhone: (317)713-4954Email: cschmal@uspatent.com 18. AIA Final RulesAIA Transition ApplicationsMarch 20, 20132013 Woodard, Emhardt, Moriarty, McNett & Henry LLP