March 20 2013 AIA Transition Applications AIA Transition Applications Transition Application nonprovisional application claiming priority foreign or domestic to an earlier application that was filed before March 16 2013 ID: 726952
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Slide1
AIA Final Rules
AIA Transition Applications
March 20, 2013Slide2
AIA Transition Applications Slide3
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)Slide4
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.Slide5
AIA Transition Applications
Application
Filed
Filed
Priority
Application
March 16, 2013
CON, DIV, CIP, 119,…
Transition
ApplicationSlide6
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)Slide7
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 applicationSlide8
AIA Transition Applications
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.Slide9
AIA Transition Applications
ADS- AIA Statement
Check the Box for AIA Transition AplicationSlide10
AIA Transition Applications
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)Slide11
AIA Transition Applications
Transition
Application
Filed
Filed
Priority
Application
March 16, 2013
CON, DIV, CIP, 119,…
No Statement
Required
All Claims
Pre-AIA
DateSlide12
AIA Transition Applications
Transition
Application
Filed
Filed
Priority
Application
March 16, 2013
CON, DIV, CIP, 119,…
Statement
Required!
One Claim
Post-AIA
Date
AIA Statement
4 MonthsSlide13
AIA Transition Applications
Transition
Application
Filed
Filed
Priority
Application
March 16, 2013
All Claims
Pre-AIA
Date
Amendment
Filed
One Claim
Post-AIA
Date
Statement
Required!Slide14
AIA Transition Applications
Transition
Application
Filed
Filed
Priority
Application
March 16, 2013
All Claims
Pre-AIA
Date
Amend
#1
Filed
One Claim
Post-AIA
Date
Amend
#2
Filed
Post-AIA Claim
Canceled
Statement
Required!Slide15
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 applicationSlide16
AIA Transition Applications
Application
Filed
Filed
Priority
Application
March 16, 2013
CON, DIV, CIP, 119,…
No Statement
RequiredSlide17
More Information and Questions…
Contact: Chuck
Schmal
Phone: (317)713-4954
Email: cschmal@uspatent.comSlide18
AIA Final Rules
AIA Transition Applications
March 20,
2013
©2013 Woodard,
Emhardt
, Moriarty,
McNett
& Henry LLP