Reminder on AIA-Transition Applications

Patent

Reminder: The USPTO is beginning to examine post-AIA applications. Anyone with a transition case should be cautious about amendments. These transition cases are ones that were filed on or after March 16, 2013 but that claim priority to a prior filing. The application will be examined under pre-AIA rules so long as all of the claims that were ever in the application can properly claim priority to the priority filing.

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14 thoughts on “Reminder on AIA-Transition Applications”

  1. 3

    if filing a continuation application, you may want to consider filing it with no claims, and then add them the next day. If you add the claims later and they are found to be new matter, it seems to me that you do not lose FTI you just get a 112 rejection and you can just cancel those claims.

  2. 2

    Risks here are modest at best. If an amendment in a transitional application is not supported by 112(a), it will not be entered and will not trigger FITF treatment. 35 USC 132(a). Thus, the only way for a transitional application to get FITF treatment is to file a continuation with claims failing 112(a) (wrt the original application).

    1. 2.1

      “If an amendment in a transitional application is not supported by 112(a), it will not be entered and will not trigger FITF treatment.”

      Not necessarily true.

        1. 2.1.1.1

          Thanks V – so the purely new matter claim won’t be counted in the first instance – I stand corrected.

        2. 2.1.1.2

          Thanks Vercin, your link confirmed the veracity of my post #3. If anyone’s ever wondered why anyone would submit an application with no claims, this might be a good reason. If,in a continuation, you just copy a claim exactly as filed in the parent, I wonder if that would raise an ethical issue because you are submitting claims you know aren’t patentable (double patenting).

  3. 1

    Others can chip in here, but just to provide a reminder, here are important examination [and disclosure duty?] differences automatically caused by said having even ONE post-3/16/13 claim in an application, expressed as simply as possible:
    What “prior art” applies significantly changes. Prior art now essentially includes any prior PUBLIC knowledge, anywhere in the world [not just in the U.S.] before the effective filing date or priority date for that claim. [Also there is no more Rule 131 “swearing behind” prior art.] [With only a narrow prior public disclosure 1 year exception for the applicants themselves.] Furthermore, a U.S. published patent application or patent that is based on a foreign patent application [as roughly half of U.S. applications are] will now be full 103 prior art citeable as of its FOREIGN filing date, no longer just its U.S. filing date.

    2. 1.2

      Thanks Paul.

      Any effect(s) on cons / cons where one or more claims are amended / added (with priority from a pre-3.16.13 issued parent patent)?

      CIPs?

      1. 1.2.1

        CIPs are clearly treated post-AIA
        cons remain prior** less as noted by Paul.

        **another word of warning is that if a con is amended with a claim that cannot draw its support to the pre-AIA information (aka new matter), even the cancellation of the claim will not save the application from post-AIA treatment. You make an amendment – even if in error – and that amendment is duly removed, you will stay in the post-AIA examination world. One cannot go back, even with an application that may be identical to the pre-AIA document.

      2. 1.2.2

        The new prior art law applies rather than the old law unless you can show that every element of every claim is fully 112 supported by a valid priority claim to a pre-3/16/13 application.

        1. 1.2.2.1

          The point of warning I wanted to add was that even the attempt (and later retracting) of something not supported as Paul notes at 1.2.2 will result in the application of the new AIA rules.

          Once you invite the vampire in, he no longer needs your invitation for any further visits.

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