3. 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)
4. 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.
6. 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)
7. 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
8. 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.
10. 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)
15. 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