14 thoughts on “Nice short piece on the risks of AIA transition & 102/103 and malpractice”
3
Anon, let me see if I understand you now, there are two not provisional applications, a first before the magic date in the second after the magic date. The second is a continuation of the first. But the first claims priority to a divisional application.
I don’t think under the circumstances that the AIA would apply to any claim presented in the second application because it is supported, or must be supported in the application as filed and therefore it is supported in the non-provisional application that is filed before the AIA magic date. It becomes irrelevant whether or not the claims are supported in the earlier provisional application.
If there is subject matter in the provisional application that is not carried forward into the non-provisional, then it is also not carried forward into the continuation. Because of the gap, one cannot claim the subject matter that appears in the provisional does not appear in the first non-provisional.
3.1
No Ned, you are still messing up my hypo.
Let me lay it out this way:
Date 1 (pre AIA): provisional filed
Date 2 (AIA): non-provisional 1 filed, claims priority to provisional. Claims fully supported by provisional. Pre-AIA law will apply.
Date 3 (AIA): non-provisional 2 filed, filed as legitimate continuation of non-provisional 1 with same specification and drawings; filed with a preliminary amendment containing a new set of claims. These claims are fully supported by the non-provisional 1 (thus no new matter), but are not supported by the provisional. Thus, the AIA-realm law is invoked for non-provisional 2.
Date 4(AIA): amendment filed for non-provisional 2, canceling all claims and submitting new set of claims that are fully supported by the provisional. TOO LATE. Even though we now have a legitimate continuation with ONLY claims supported by the pre-AIA provisional, the pre-AIA law will not be applied to the non-provisional 2.
Please do not try to confuse yourself by changing my hypo.
3.1.1
OK. All non provisionals are filed after the AIA magic date claiming.
Yes, you are right. We do not even have to get into the continuation setting. If the any claim in the first non provisional is not fully supported in the provisional, it too is AIA, and so is its continuation.
3.1.1.1
The wrinkle I was attempting with my hypo was to show that one non-provisional (the first) was in the pre-AIA realm, while the other non-provisional (the second) was in the AIA realm.
This while BOTH (after the second is ‘corrected’) have the same specification, the same drawings, and draw the same full support for (existing) claims to the same pre-AIA provisional.
This is how the AIA was meant to be understood – it is how it was written.
Now, the question as to “why” is a question that I do not have an answer to.
2
I need to read it more closely – right now, I’m writing a final for civil procedure! I go from talking about patents to Pennoyer v. Neff in just a few minutes!
1
One comment, I believe the new statute also has a grace period. So, is the author suggesting there is a difference between the two, or are we talking about the same thing?
Second, I do not understand how the problem is not confined to CIPs or claims under 119 where the CIP or non provisional is filed after the magic date. If one changes the claim such that one loses written description support in the priority document, so long as all the parent documents were filed before the magic date, there should be no change in the law. Is there something I am missing?
1.1
Ned,
To your first comment, we have discussed the fact that the new grace period and the old grace period are radically different. Even if the author of the linked article does not recognize this, we both do, right?
I am not sure I understand your second comment. The way that I took the linked article is that even for a straight continuation, there are risks that a desired application of pre-AIA law for prosecution may be lost (inadvertently). This would be the case if a claim is entered that would in essence make the continuation be deemed a CIP (as new matter or lack of support to the pre-AIA priority) – even if that particular claim is later dropped. The continuation application, now amended to be a true Continuation rather than a CIP will still be processed with post AIA law, given the way the AIA was written. Once the threshold is crossed, deletions will not revert the application back to pre-AIA processing.
1.1.1
Okay now I’m really worried. But, guess what, I’m still writing my final.
1.1.2
anon, will I to agree that the new only applies actions of the applicant.
Regarding the second issue, I simply do not agree that there could ever be an issue when the continuation has the same specification and drawings of its parent. If your claim is not supported in the parent application, it is also not supported in the current application.
1.1.2.1
But Ned – you miss the point of how the law has been written.
Once you cross the threshold, there is no going back. Eliminating the touchpoint that causes you to move to AIA land will NOT allow you to move back to pre-AIA land.
I will admit that this may be a bit more nuanced than my writing admits – as I give recognition to one poster who pointed out that a claim to something evidently new matter may not be entered in the first place so as to invoke the situation as I have painted it (canceling a claim that would move the application into AIA prosecution territory).
But the law is as I indicate: once you lose that pre-AIA status, you cannot return to the prior realm.
Let me see if I can paint a nuanced example to contemplate: A fresh filing of a continuation is made post AIA that uses the exact same specification and drawings of a first non-provisional application, but is filed with a complete set of preliminary amendments. The first non-provisional application was filed in the AIA time realm, but claimed priority to a “data-dump” style provisional filed in the pre-AIA time realm.
The first non-provisional claim set is fully supported by the content of the provisional application.
The second non-provisional claim set (the set filed in the continuation as the preliminary amendment) is supported by the content of the first non-provisional, BUT NOT supported by the content of the provisional application.
This removes the subtle “changes not actually entered – new matter” wrinkle.
Let’s say that after filing the preliminary amendment, applicant realizes that the new claim set in the second non-provisional (the continuation) fails this pre-AIA/AIA distinction. The applicant files an action seeking to drop the claims already submitted and provide a set of claims in the continuation application that are supported by the provisional application.
Even as those new claims are entered, and the original set of claims are deleted, the fact that the original set of claims in the continuation application invoked the AIA rules makes it IMPOSSIBLE for the continuation to be processed under the pre-AIA rules.
All that it takes to overcome your “not ever” is a single example. This is that single example of an identical specification/drawing continued application that cannot recover to the pre-AIA rule realm.
1.1.2.1.1
anon, when you add a provisional application into the mix, you change everything. The post-AIA application claiming priority to a provisional application is not a continuation by definition. Whether it contains new matter or not is a subject of inspection. I don’t think there can be a categorical rule in this situation.
I confine my previous remarks to traditional continuations where the post-AIA continuation has the same specification the pre-AIA non-provisional.
1.1.2.1.1.1
Ned – you seem to not want to address the fact pattern presented: a continuation is still a proper continuation if that continuation claims the benefit of the first application’s claim to the earliest priority date.
The example and the reliance “on inspection” is a red herring. You seem to not ant to understand what the categorical rule is (the categorical rule is related to which set of law applies).
I have met the non-provisional to continuation non-provisional stipulation that you are maintaining. My example still defeats your position.
1.1.2.1.1.2
anon, a continuation is more than a claim to a priority and you must know that. It requires a non-provisional application. Requires a second not provisional application. The disclosure in the two must be the same. Further, they must be co-pending. Finally, a claim to the benefit of the former must be in the latter application.
You are seeking to extend the concept of continuation to places where it does not apply. In particular, claims to priority under 119 to earlier filed provisional some foreign applications are not continuations regardless of the claims by before supported in the priority document.
Now, what do the AIA rules say about not provisional applications claiming priority to earlier provisional applications or to non-US priority applications? I can look up, but you should know this this as well as I.
1.1.2.1.1.3
“It requires a non-provisional application. ”
Read again the hypo as I gave it to you – I gave you three applications, a provisional, a first non-provisional and a second non provisional. The two non-provisionals share the same specification and drawings. Make them co-pending ( I was not explicit about that, but I did call the second non-provisional a proper continuation filing). There is no notion of a foreign application in the hypo I set out for you.
Again, my example – as set out – defeats your position.
Anon, let me see if I understand you now, there are two not provisional applications, a first before the magic date in the second after the magic date. The second is a continuation of the first. But the first claims priority to a divisional application.
I don’t think under the circumstances that the AIA would apply to any claim presented in the second application because it is supported, or must be supported in the application as filed and therefore it is supported in the non-provisional application that is filed before the AIA magic date. It becomes irrelevant whether or not the claims are supported in the earlier provisional application.
If there is subject matter in the provisional application that is not carried forward into the non-provisional, then it is also not carried forward into the continuation. Because of the gap, one cannot claim the subject matter that appears in the provisional does not appear in the first non-provisional.
No Ned, you are still messing up my hypo.
Let me lay it out this way:
Date 1 (pre AIA): provisional filed
Date 2 (AIA): non-provisional 1 filed, claims priority to provisional. Claims fully supported by provisional. Pre-AIA law will apply.
Date 3 (AIA): non-provisional 2 filed, filed as legitimate continuation of non-provisional 1 with same specification and drawings; filed with a preliminary amendment containing a new set of claims. These claims are fully supported by the non-provisional 1 (thus no new matter), but are not supported by the provisional. Thus, the AIA-realm law is invoked for non-provisional 2.
Date 4(AIA): amendment filed for non-provisional 2, canceling all claims and submitting new set of claims that are fully supported by the provisional. TOO LATE. Even though we now have a legitimate continuation with ONLY claims supported by the pre-AIA provisional, the pre-AIA law will not be applied to the non-provisional 2.
Please do not try to confuse yourself by changing my hypo.
OK. All non provisionals are filed after the AIA magic date claiming.
Yes, you are right. We do not even have to get into the continuation setting. If the any claim in the first non provisional is not fully supported in the provisional, it too is AIA, and so is its continuation.
The wrinkle I was attempting with my hypo was to show that one non-provisional (the first) was in the pre-AIA realm, while the other non-provisional (the second) was in the AIA realm.
This while BOTH (after the second is ‘corrected’) have the same specification, the same drawings, and draw the same full support for (existing) claims to the same pre-AIA provisional.
This is how the AIA was meant to be understood – it is how it was written.
Now, the question as to “why” is a question that I do not have an answer to.
I need to read it more closely – right now, I’m writing a final for civil procedure! I go from talking about patents to Pennoyer v. Neff in just a few minutes!
One comment, I believe the new statute also has a grace period. So, is the author suggesting there is a difference between the two, or are we talking about the same thing?
Second, I do not understand how the problem is not confined to CIPs or claims under 119 where the CIP or non provisional is filed after the magic date. If one changes the claim such that one loses written description support in the priority document, so long as all the parent documents were filed before the magic date, there should be no change in the law. Is there something I am missing?
Ned,
To your first comment, we have discussed the fact that the new grace period and the old grace period are radically different. Even if the author of the linked article does not recognize this, we both do, right?
I am not sure I understand your second comment. The way that I took the linked article is that even for a straight continuation, there are risks that a desired application of pre-AIA law for prosecution may be lost (inadvertently). This would be the case if a claim is entered that would in essence make the continuation be deemed a CIP (as new matter or lack of support to the pre-AIA priority) – even if that particular claim is later dropped. The continuation application, now amended to be a true Continuation rather than a CIP will still be processed with post AIA law, given the way the AIA was written. Once the threshold is crossed, deletions will not revert the application back to pre-AIA processing.
Okay now I’m really worried. But, guess what, I’m still writing my final.
anon, will I to agree that the new only applies actions of the applicant.
Regarding the second issue, I simply do not agree that there could ever be an issue when the continuation has the same specification and drawings of its parent. If your claim is not supported in the parent application, it is also not supported in the current application.
But Ned – you miss the point of how the law has been written.
Once you cross the threshold, there is no going back. Eliminating the touchpoint that causes you to move to AIA land will NOT allow you to move back to pre-AIA land.
I will admit that this may be a bit more nuanced than my writing admits – as I give recognition to one poster who pointed out that a claim to something evidently new matter may not be entered in the first place so as to invoke the situation as I have painted it (canceling a claim that would move the application into AIA prosecution territory).
But the law is as I indicate: once you lose that pre-AIA status, you cannot return to the prior realm.
Let me see if I can paint a nuanced example to contemplate: A fresh filing of a continuation is made post AIA that uses the exact same specification and drawings of a first non-provisional application, but is filed with a complete set of preliminary amendments. The first non-provisional application was filed in the AIA time realm, but claimed priority to a “data-dump” style provisional filed in the pre-AIA time realm.
The first non-provisional claim set is fully supported by the content of the provisional application.
The second non-provisional claim set (the set filed in the continuation as the preliminary amendment) is supported by the content of the first non-provisional, BUT NOT supported by the content of the provisional application.
This removes the subtle “changes not actually entered – new matter” wrinkle.
Let’s say that after filing the preliminary amendment, applicant realizes that the new claim set in the second non-provisional (the continuation) fails this pre-AIA/AIA distinction. The applicant files an action seeking to drop the claims already submitted and provide a set of claims in the continuation application that are supported by the provisional application.
Even as those new claims are entered, and the original set of claims are deleted, the fact that the original set of claims in the continuation application invoked the AIA rules makes it IMPOSSIBLE for the continuation to be processed under the pre-AIA rules.
All that it takes to overcome your “not ever” is a single example. This is that single example of an identical specification/drawing continued application that cannot recover to the pre-AIA rule realm.
anon, when you add a provisional application into the mix, you change everything. The post-AIA application claiming priority to a provisional application is not a continuation by definition. Whether it contains new matter or not is a subject of inspection. I don’t think there can be a categorical rule in this situation.
I confine my previous remarks to traditional continuations where the post-AIA continuation has the same specification the pre-AIA non-provisional.
Ned – you seem to not want to address the fact pattern presented: a continuation is still a proper continuation if that continuation claims the benefit of the first application’s claim to the earliest priority date.
The example and the reliance “on inspection” is a red herring. You seem to not ant to understand what the categorical rule is (the categorical rule is related to which set of law applies).
I have met the non-provisional to continuation non-provisional stipulation that you are maintaining. My example still defeats your position.
anon, a continuation is more than a claim to a priority and you must know that. It requires a non-provisional application. Requires a second not provisional application. The disclosure in the two must be the same. Further, they must be co-pending. Finally, a claim to the benefit of the former must be in the latter application.
You are seeking to extend the concept of continuation to places where it does not apply. In particular, claims to priority under 119 to earlier filed provisional some foreign applications are not continuations regardless of the claims by before supported in the priority document.
Now, what do the AIA rules say about not provisional applications claiming priority to earlier provisional applications or to non-US priority applications? I can look up, but you should know this this as well as I.
“It requires a non-provisional application. ”
Read again the hypo as I gave it to you – I gave you three applications, a provisional, a first non-provisional and a second non provisional. The two non-provisionals share the same specification and drawings. Make them co-pending ( I was not explicit about that, but I did call the second non-provisional a proper continuation filing). There is no notion of a foreign application in the hypo I set out for you.
Again, my example – as set out – defeats your position.
Comments are closed.