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AIA Final Rules AIA Transition Applications AIA Final Rules AIA Transition Applications

AIA Final Rules AIA Transition Applications - PowerPoint Presentation

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AIA Final Rules AIA Transition Applications - PPT Presentation

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

application aia filed transition aia application transition filed statement applications 2013 march date claim claims priority pre matter required

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Presentation Transcript

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