AIA Changeover: Claiming Subject Matter Not Found in the Provisional Application

By Dennis Crouch

New patent applications are now being examined under the first-to-file rules codified in the America Invents Act of 2011. In my patent class, I talk about these as effectively rules of evidence that indicate what does and does-not count as evidence against patentability. Any change in the rule of law always has changeover difficulties where policymakers must figure out where to draw the line between the old and new rules. For the AIA, new patent applications filed on or after March 16, 2013 are examined under the new rules so long as the new application contains (or ever contained) at least one claim whose effective filing date is on or after March 16, 2013.

Under the new rules, the USPTO also requires that patent applicants help the PTO understand whether a new application should be examined under the AIA. In particular, the applicant must tell the PTO whenever it is pursuing a patent application that claims priority to a pre-AIA filing but that includes (or once included) at least one claim that had a post-AIA priority date. In the cut-out above, this statement is shown as a check-box as part of the application data sheet form.

The Risk: Over the next year, this issue will arise in thousands of cases – typically those will involve a pre-AIA provisional application followed by a post-AIA non-provisional application with some amount of new matter added in the claims. Under the rules, if any of the claims in that non-provisional lacked sufficient support in the provisional then the entire application is to be analyzed under the first-to-file regime of the AIA. Of course, the difficulty is that in US law the dividing line between supported and unsupported subject matter is not crisp and the determination is now being placed on patent applicants to make that determination at the risk of an inequitable conduct finding down-the-line.

Overturning the PTOs Approach?: It is possible that the USPTO’s interpretation of the new law is incorrect. The PTO rules require a patent-by-patent analysis of the effective filing date. Under the USPTO’s approach either a patent is an AIA patent or it is not. However, another reading of the AIA suggests that the proper approach is to go claim-by-claim rather than patent-by-patent. In particular, revised Section 102 focuses on the “effective filing date of the claimed invention” not the effective filing date of the patent application as a whole. 35 U.S.C. 102(a). In addition, the definitions Section 100(i) also focuses on individual claims – indicating that the effective filing date of a “claimed invention” is “(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority [or benefit].” It seems to me that the statutory guidance of Sections 102 and 100(i) collectively instruct us to consider the effective date of a claimed invention rather than for a patent application as a whole, and when thinking about prior provisional/parent/grandparent applications, the focus should be on whether those prior applications disclose the claimed invention in question.

But the PTO’s Approach is Probably Correct: Now, the PTO’s rule makes sense under the AIA, Section 3(n) that provides that the first-to-invent rules apply to

any application for patent, and to any patent issuing thereon, that contains or contained at any time— (A) a claim to a claimed invention that has an effective filing date as defined in [35 U.S.C. §] 100(i) … that is on or after the effective date described in this paragraph; or (B) a specific reference under [35 U.S.C. §§] 120, 121, or 365(c) … to any patent or application that contains or contained at any time such a claim.

The result here is really that whether-or-not a claim is adjudicated under the first-to-file regime is determined on a patent-by-patent basis but the priority date (i.e., effective filing date) associated with any particular claim may be prior to March 16, 2013, even when the patent is being adjudicated under first-to-file.

68 thoughts on “AIA Changeover: Claiming Subject Matter Not Found in the Provisional Application

  1. I’d be interested to hear your thoughts on establishing the earliest priority dates for improvements on an invention disclosed in a provisional. An inventor may want to include additional disclosure (refinements, etc.) but doing so may blow his earlier priority date when it comes time for conversion, if the additional disclosure is claimed in the non-provisional. One could disclose the improvements in the non-provisional application, and not claim them explicitly … then, if those elements needed protection some time in the future a continuing application could be filed claiming priority back to the conversion application, right? But what about the IMplicit subject matter overlap between the provisional disclosure and slight modifications or improvements? If there is overlap could the case be made that the applicant claimed new subject matter and therefore lose the priority date of the provisional?

  2. Malcolm either finding or inserting an anchor in the web page in order to jump to a specific comment does not help the perception that Malcolm has an undue influence on the content or editorial control of this blog.

    What the …?

    Dang, that’s some serious tinfoil.

  3. What I mean is that management hasn’t even told the examining corps that this is the test. Some of us actually do know how to determine whether a claim is eligible for the earlier effective filing date of a provisional (though this is only touched on briefly during academy training). Instead, for AIA versus pre-AIA, all they’ve told us is that the test is to do what eDAN says and shut up.

    Now I find out that what eDAN says actually comes from the attorney checking a box.

  4. Apparently you think you DO need an excuse for placing a materially false statement on the record, Slick. And there you are correct, since an objectively false statement is prima facie evidence of intent to deceive.

    Ever heard of the Darwin Award? You might apply…

  5. Malcolm either finding or inserting an anchor in the web page in order to jump to a specific comment does not help the perception that Malcolm has an undue influence on the content or editorial control of this blog.

    Just another perception thing to make you go ‘hmmm.’

    Wouldn’t it be better if Malcolm focused on delivering content rather than shenanigans?

  6. Apotu,

    How is this any different than a pre-AIA determination of claim by claim effective date of a non-provisional that claims priority to a provisional?

    Certainly not best practice, but I have seen MANY inherited non-provisional applications with such claimed priority that have next to useless provisionals (typically some marketing schlock slapped into a provisional filing). My presumption being that some half-@ssed representative gave some client the idea that since provisionals are not examined that anything quick and dirty will suffice to preserve a date for a later detailed real application.

    While in certain art fields, the ‘assumption’ of the up-to-a-year difference may have little impact, in the more active art units I cannot see this ‘assumption’ having any merit.

    As the exchange by Prof. Crouch and 6 above would seem to indicate, this claim by claim prior date support would seem to be a standard skill and one you should not only be actively using, but one that should really need no new training for.

  7. From our viewpoint on the inside, the way this works is we have an indicator in eDAN (our file wrapper viewer) that gives us a yes/no flag as to whether the app should be examined under AIA law. My guess is that if you check that box, then eDAN says “yes”.

    Management has so far provided us with zero… ZERO… training on how to make this determination independently from the AIA indicator in eDAN. We haven’t even been told that this status can change if you start claiming things not supported in a pre-AIA parent.

  8. Nothing silly about it.

    The information is there for you to use – you just cannot use the innovations tied to the applications from that information.

    And this shows that it is you that engage in the silly assumptions, like software is merely information. Or that my position has something to do with stopping development (a redinkulous strawman – one of your specialities)

    Software is a manufacture, a machine component.

    The advice to grow up is good advice – and something you need to apply to yourself.

  9. Any non prov app seeking benefit of a non AIA prov app without any claims — just to Be clear about what I meant in the above post

  10. It may be sad to see those prov apps that did not contain claims. Once claims are added now to any non prov app from before AIA, they will trigger scrutiny under AIA/later enforcement :(

  11. I don’t need an excuse; you need to show an intent to deceive. Regarding the “but for” question, I think you’re wrong. Therasense says explicitly that that the materiality prong does NOT depend on the level of intent. In any case, I don’t know how you get to “objectively false” from my “colorable argument.”

  12. Why is it that you never put your money where your mouth is and abstained from all of the software-impacted aspects of the modern world?

    There seem to be at least three or four really big assumptions buried in that question.

    But more importantly, why does my utilization of “software-impacted aspects of the modern world” make any difference? I happen to use “information-impacted aspects of the modern world”. Am I to abstain from using them in order to appear credible when I suggest that information shouldn’t be eligible for patenting? In other words, your question is silly and assumes that without software patents technology will stop evolving, or worse. Grow up. It’s all about you and you know it.

  13. Malcolm,

    Why is it that you never put your money where your mouth is and abstained from all of the software-impacted aspects of the modern world?

  14. all this new-fangled software “j*nk” don’t deserve no patents neither, why them’s patent thangs is fur real inventions like gears and wheels and pulleys and sich.

    Ah yes, I remember them well. “A gear, wherein said gear facilitates the transmission of torque, wherein said torque facilitates the delivery of a message, wherein said message comprises copyrighted content and a slide show presentation, and wherein a recipient of said message is a subscriber to a delivery system.”

    Those were the days! And then all that super inventey action moved to computers, I guess.

  15. And 6, Malcolm went off the rails when he decided to be a sm@rt@$$ (without the smart) when he threw up the ‘examination’ bit.

    Pay attention.

  16. Not surprised to see use of a dying, broke, antiquated, Industrial Age government service that has been eclipsed by private carriers and modern technology as an example. But then, all this new-fangled software “j*nk” don’t deserve no patents neither, why them’s patent thangs is fur real inventions like gears and wheels and pulleys and sich. Whar in tarnation did “they” ever git the idear that little scribblins and picturs was anything more ‘n copyright fodder even if sich like has danged near kilt the U.S. of A. Postal dadgum Service?

  17. “LOL – pay attention 6 – now that is some SERIOUS goal post moving.”

    I agree, he moved it back to where he originally had it. Though you are too dense to understand this.

    As to the “responsibility” talk, didn’t the USPTO get special regulatory powas to exercise during the switch over for things like this? I could be remembering wrong, but I thought I heard something about that.

  18. Actually we are taking about

    LOL – pay attention 6 – now that is some SERIOUS goal post moving.

    Malcolm, here’s a hint: re read Tafas and note exactly who has the responsibility for examination (spoiler alert – it is not the applicant)

  19. Asking for examiners to show proper responsibility for their jobs

    Actually we’re talking about whether a government agency can require applicants who seek a privilege to provide certain information before that privilege is granted.

    What’s “properly” allocated to applicants and the agency is something to be continually evaluated based on, e.g., the quantity and the type of privileges being sought.

    My awesome mail carrier’s job is to deliver the mail. I help him with that by keeping the mailbox in a place where he can find and reach it easily. Probably if too many people made it difficult for the mail carrier to find their mailboxes, a rule would be put in place so that if your mailbox is too difficult to find, you won’t get your mail. And nobody would blink an eye except maybe for some angry hermit waving a stick around and shouting “why are we doing their job for them?!” You know, the same guy who complained when we provided mail carriers with mail-carrying vehicles.

  20. I quite agree, the number of examiners that understand the WD requirement is abysmally low. I can walk down my hallway right now and find 5 that couldn’t make a valid 112 1st or even find a valid 112 1st problem right now. Admittedly, while the law is clear and crisp, it is not terribly easy to pick up, especially without proper edumacation, reading and experience.

  21. That’s really more of a report of something observed in the wild moreso than something that needs to be thought all that much about.

    Although I will also say that you’re slightly moving the goalposts. I’d say that the corps already has shown the proper responsibility for their jobs, as a whole, individual’s actions may vary. Of course that is according to them, and those that oversee them. And again, that’s more of a historical observation rather than some subject that needs deep pondering.

  22. Asking for examiners to show proper responsibility for their jobs has historically been asking too much…?

    LOL – 6, THINK man.

  23. D, if it comes down to the change over to AIA, yes I suspect we will have to do just that so that we know which statute we’re under in that case.

    In a routine case today, what I do is note the actual filing date of the application itself. I also note the foreign priority or domestic priority claims, including provisionals along with all those dates. Then I see what the prior art holds in store during my search. If I have a reference which would be antedated by the provisional, and I wish to try to use that reference, then I look to the provisional to see if he had written description. If I don’t have such a piece of art I could care less if he gets that provisional date. Though on occasion I might do it backwards and just glance at his provisional for kicks before the search. So far as I’m aware that is standard practice or at least it is supposed to be.

    If we’re talking about a continuation or some special thing like that then I usually just look back to the parent or provisional at the outset to see what all is going on right up front. Again, standard practice.

  24. Assuming the accuracy of aBSTRACTIONs analysis below

    link to patentlyo.com

    By virtue of the “conains or contained” language, the statute seems to set up a timing problem where if any claims are presented at the time of utility filing (or anytime in the priority chain, if there were multiple provisionals with claims) that are not supported by the pre-AIA provisional, then any opportunity to get pre-AIA examination of any claim in that application family (regardless of where the claims find support) is lost forever.

  25. A false statement on the written record is a big deal to the CAFC. Yes, you can try the “incorrect box checked” excuse but the problem will be formidable in court since an objectively false statement is right there in black and white. The “but for” test in Therasense does not, I believe, apply to deliberate false statements.

  26. perhaps we should take this discussion over to the shadow

    …zzzzz – your humor meter is broken Leopold.

    Where are my answers?It is so immature to keep me waiting.

  27. To you the line may be crisp. I can assure you that many examiners practicing before me have been quite crisply reversed on WD. And I would say the fraction is well north of 1/3.

  28. Seems to me that the best strategy for moving forward with such an application is to find the best (i.e., most likely to succeed, with some real value) claim with the best support in the earliest filed case and pursue that first (along with similarly supported dependent claims). In other words, the same strategy you’d apply if we were still in the old regime and a number of provisionals had been filed prior to the 1 year deadline for converting to a utility app.

    Of course, if there is some “flaw” or “mistake” in the earlier disclosure that relates to the desired claims then the situation gets more complicated (again, this is not a problem that is unique to the AIA regime).

  29. I came to the same conclusion as aBSTRACTION. I think the statue is clear that the AIA provisions apply on an *application* basis, not on a claim-by-claim basis, when you read the “effective date” section of the law.

    Another item that most people overlook (because it’s in the “effective date” section) is that § 102(g) of the ’52 Act still applies (to *all* claims – even AIA claims) for applications that undergo the “conversion” from pre-AIA to AIA coverage:

    (2) INTERFERING PATENTS.–The provisions of sections 102(g), 135, and 291 of title 35, United States Code, as in effect on the day before the effective date set forth in paragraph (1) of this subsection, shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent contains or contained at any time–

    (A) a claim to an invention having an effective filing date as defined in Section 100(i) of title 35, United States Code, that occurs before the effective date set forth in paragraph (1) of this subsection; or

    (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

  30. I think that’s right. You only need a single claim to trigger the AIA provisions for the entire application/patent. And you can have situations where the new provisions apply, but 102(g) still applies as well. See 3(n)(2) Interfering Patents.

  31. “But that’s a sign of desperation and usually easy to detect.”

    Exactly. And besides that most times if you even bring up the specter of a WD problem an attorney that knows what he is doing will likely simply amend back into safe waters. There is, generally speaking (though there are exceptions) not much point in risking your whole claim on account of a difficult to understand legal requirement like written description that a judge or jury could boink up easily. Play it safe boys and girls, it’s what the good professionals do.

  32. Re “claim by claim” approaches in general, that has always been required for a CIP application.

    Also, more than one application can be filed off of the provisonal, with different claims, to get non-AIA treatment for the application filed with only fully provisional-supported claims, although will that risk an obviousness type double patenting rejection in the PTO or in litigation?

  33. “Implicit and inherent blur the line quite a bit in my opinion. And that is before we start arguing about what the drawings disclose.”

    How the WD is or is not met in a given case may be somewhat unclear in those limited and rare situations (like 1 out of a hundred or thousand cases involve that inherent/implicit stuff and like 1 out of a hundred make a even arguably borderline reliance on the drawings), especially for new people in an art. but that doesn’t mean that the law itself or the WD requirement is not crystal clear and quite crisp.

    I should note that complicating the facts doesn’t mean that the law is not itself crisp and clear.

  34. software already exists that handles that task.

    And therefore it doesn’t promote innovation to make people do this task.

    Honestly, Mal, sometimes I don’t think you’re even trying.

  35. software already exists that handles that task.

    So? Then the applicant can use the software and the redline is available to the public, as it should be, and the USPTO can focus its resources on providing a better examination of the claims.

    Right? Better examination? Isn’t that what you are always crying about, Tr0 llb0y?

  36. With respect to Jason’s comment: It seems to me that the statutory guidance of Sections 102 and 100(i) collectively instruct us to consider the effective date of a claimed invention rather than for a patent application as a whole, and when thinking about prior provisional/parent/grandparent applications, the focus should be on whether those prior applications disclose the claimed invention in question.

    I think this is probably correct. The presumption for a utility application filed after the AIA should be that the AIA law will be applied to all the claims. The burden should be placed on the applicant to identify any claims that are entitled to examination under the previous regime, along with evidence showing where those claims are supported in the original (pre-AIA) disclosure.

    Nothing unreasonable at all about that. Applicants already are obliged to provide similar information in other examination contexts.

  37. Implicit and inherent blur the line quite a bit in my opinion

    “Quite a bit”? I suppose if you want to be extremely agressive about it. But that’s a sign of desperation and usually easy to detect.

    I think in nearly all cases it’s a pretty easy call to see whether a claim was supported by the initial filing versus a subsequent (or intermediate) filing.

    In addition, it seems like it would not be too much to ask for all applicants who wish to claim the benefit of pre-AIA provisionals to file redlined versions of any subsequent applications claiming the benefit of the earlier application. That would make it easier to see what was added/changed.

  38. “While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure.” MPEP 2163(I)(B).

    Implicit and inherent blur the line quite a bit in my opinion. And that is before we start arguing about what the drawings disclose.

  39. I say, Yes, but why not make it simple and file two applications. Include pre claims in one and post claims in the other.

  40. How does the “claim-by-claim” reading suggested above make sense in light of Section 3(n) of the AIA?:

    (n) EFFECTIVE DATE.—
    (1) IN GENERAL.—Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the
    date of the enactment of this Act, and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time-
    (A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date described in
    this paragraph; or
    (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

  41. Not sure why that would necessarily be any less messy given that the same examiner needs to know how to apply the different versions of 102 in back to back (distinctly different) applications.

  42. generally musn’t restrict if examination of multiple inventions doesn’t present an undue burden

    Doesn’t that answer your original question?

  43. Does this post imply that examiners might need to apply different versions of 102 to different claims in the same action? What a mess…

  44. One argument might be that an accused device/method infringes on multiple claimed “embodiments” of a single “invention”. (I’m not sure any court has ever expounded upon the distinction between “invention” and “embodiment”.) Also, I suppose it’s lawfully possible to sneak multiple inventions into a single patent. The PTO doesn’t have to restrict if they don’t want to, and generally musn’t restrict if examination of multiple inventions doesn’t present an undue burden.

  45. Dennis, perhaps we should take this discussion over to the shadow board, but off the top of my head I think that a finding of inequitable conduct is very unlikely in the case where there is a colorable argument that the filed claims were in fact supported by the provisional application.

    First, a defendant alleging inequitable conduct would have to show that checking the box incorrectly was material – I think that under today’s law that just about requires showing that the claim would not have issued but for that the box was checked incorrectly. (Note that this showing would also tend to work against a subsequent malpractice claim.) Second, I believe there has to be an intent to deceive under today’s law – it would be hard to find intent to deceive if there’s a decent legal argument that support exists, even if a later court decides that it doesn’t. Now if Therasense is overruled, then all bets are off. But while it may be rolled back a little, I don’t see the basic contours changing that much.

  46. “Of course, the difficulty is that in US law the dividing line between supported and unsupported subject matter is not crisp”

    If you think that then you obviously have no understanding of the concept of “supported” and “written description support” in general. The line is very crisp and clear. And that is part of the very reason why nearly 1/3 of the applicant’s that amend a claim before me will be facing a 112 1st paragraph rejection for at least one claim in short order. From my conversations with them, that is the approximate percent of attorneys practicing before me that just aren’t clear on one or more of what the WD requirement is, what compliance entails, and why it is important to amend, and draft new claims, with it squarely in mind. It is regrettable that this situation exists, but the requirement itself is very crisp and clear.

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