AIA Final Rules AIA Transition Applications March 20

AIA Final Rules AIA Transition Applications 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. • 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.

AIA Transition Applications CON, DIV, CIP, 119, … Filed Transition Application March 16, 2013 Priority 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

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.

AIA Transition Applications • ADS- AIA Statement Check the Box for AIA Transition Aplication

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)

AIA Transition Applications Filed No Statement Required CON, DIV, CIP, 119, … Filed All Claims Pre-AIA Transition Application Date March 16, 2013 Priority Application

AIA Transition Applications CON, DIV, CIP, 119, … Filed 4 Months One Claim Post-AIA Transition AIA Statement Application Date March 16, 2013 Priority Application Statement Required!

AIA Transition Applications All Claims Pre-AIA Filed Date One Claim Statement Post-AIA Required! Date Filed March 16, 2013 Priority Application Transition Amendment Application

AIA Transition Applications All Claims Pre-AIA Filed Date One Post-AIA Claim Statement Post-AIA Canceled Required! Date Filed Amend #1 Amend #2 March 16, 2013 Priority Application Transition Application

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

AIA Transition Applications No Statement Required CON, DIV, CIP, 119, … Filed March 16, 2013 Priority Application

More Information and Questions… • Contact: Chuck Schmal Phone: (317)713 -4954 Email: cschmal@uspatent. com

AIA Final Rules AIA Transition Applications March 20, 2013 © 2013 Woodard, Emhardt, Moriarty, Mc. Nett & Henry LLP