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• 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 StatementCheck 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• 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