AIA Patents: Trickle becomes a Stream

by Dennis Crouch

The first-to-invent rules of the America Invents Act of 2011 began taking effect in March 2013. New patent applications filed after the changeover date are examined under the new rules while those that were eather already on file or properly claim priority* to a pre-AIA filing are examined under the old rules. [updated to fix typo]

Although more than three years have passed since the changeover date, most new patents still fall under the old-rule. This long transition period is explained by the reality that most patents that issue claim priority to a prior patent filing document such as a foreign priority filing, international PCT application, US provisional application or parent non-provisional US filing.  Once the non-provisional application is filed, patent prosecution process still that typically takes around three years.  This results in an average pendency from priority filing to issuance of around five years.

The chart below shows results of a sample of 6,000 recently issued patents and their AIA status.  Time series is grouped by the quarter-year in which the patent issued.

AIAPatents

* My reading of the statute is that the determination of whether an application is an AIA application or pre-AIA application is determined as a whole – for the whole application. If an application ever included a claim to an invention whose earliest effective filing date (counting priority claims) is on or after March 16 2013.  This automatically includes all applications filed after the March 2013 deadline that do not claim priority to any earlier applications. Applications filed before the March 2013 date are all pre-AIA because the new-matter restriction would require that all claims be associated with that pre-AIA filing date.  In the middle are applications filed after the March 2013 date but that claim priority to a pre-AIA application.  For those bridge applications, the patent applicants have been asked to self-determine whether their applications are considered pre- or post-AIA.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

17 thoughts on “AIA Patents: Trickle becomes a Stream

  1. Dennis –
    I believe a typo remains in the first few words. I believe is the First-to-FILE rules that kicked in in 2013, not First-to-Invent.

  2. The transitional-only provision of the AIA for applications filed before March 2013 but ever having had a claim not supported by the pre-March 2013 specification will have little impact. It is not “new matter” in the sense of an amendment of the specification improperly adding new matter, which a PTO examiner is far more likely to notice. This issue cannot be raised in an IPR. Thus, it is only likely to be raised, if at all, in the very few such patents with such an issue [from among the relatively few such transitional applications] which are fully litigated in a D.C. suit, AND where it makes a difference. That is, where the AIA makes something prior art against the claims in suit which would not be prior art if the patent remains a pre-AIA patent, or, if there is an IC allegation of the applicant having deliberately slipped in a 112-unsupported claim without telling the PTO.

    1. Actually it’s had some impact on us when filing continuation and divisional applications. Some examiners have been incredibly picky about identifying exact wording in new claims which wasn’t present in the original specification, and calling it new matter. In this way, they can consider the application a CIP and the entire application and any progeny now falls under post-AIA examination. We’ve been more cautious about filing the exact claim set of the parent, with preliminary amendments filed the next day so they aren’t considered part of the original filing and new matter has to be rejected rather than entered and changing the prosecution status.

      1. That sounds like a great idea to me, and I have heard of others doing so also.
        I’m only surprised that you have some examiners having or taking the time to compare claim wording to specification text in that detail. Until recently the USPTO was in general not that famous for 112 scrutiny and rejection except perhaps for “means function” claim elements.

      2. …and once again, the bigger picture of what the AIA was sold as: something better for this country and for innovators.

        If that were actually true, this would be a deliberate roadmap in order to bring any and all pre-AIA items into AIA status (and not – as appears here – a plague to be avoided).

        That’s some “elephant” in the room, isn’t it?

        1. anon, there is not a inventor alive that does not recognize that first to invent is better for inventors.

          That is why the “term” innovators must be examined carefully. Innovators are what the likes of Microsoft and Google do — rapid produce new products without regard to the patent rights of others. To such innovators, any patents system is burden, and the best patent system is no patent system at all.

          Thus, when the likes of Night say that “our” tremendous U.S. software industry was built by patents, the obvious answer to that is that in the case of Microsoft and Google and perhaps every other big software company, big software was built by “innovation.”

          1. Ned,

            I cannot be more vehement about rejecting your abomination of defining innovators in the way that you have attempted here.

            Also, you misrepresent the statements of Night Writer in ascribing the building of the strength of the software industry as you do with those who NOW, once they have climbed to the heights, would pull up the ladders behind them and NOW weaken new innovation that might supplant those on the lofty perch. Night Writer’s comments are geared to HOW they reached their lofty perch and NOT their current desire to STAY there.

  3. Considering the scope of the AIA patent law changes, and the large number of such patents already issued and far more pending, it seems surprising that the AIA does not seem to have generated more PTAB or Fed. Cir. appeals alleging legal ambiguities in those AIA statutory changes? [Not counting some legal challenges by patent owners just to IPRs and CBMs]. Is anyone aware of any other such legal challenges? Especially re pending applications?

  4. I see that we have assumed again that the “no new matter rule” blocks an attempt to make a pre-AIA application into a post-AIA application.

    I am still not sure that is such an iron-clad keep-out though.

    An applicant enters any amendment (whether new matter or not), and that amendment is on the record. Yes, it will (or should) be subsequently rejected for introducing new matter, but that action does not mean that it was not on the record.

    At this point, and to use your words, “If an application ever included a claim to an invention whose earliest effective filing date is on or after March 16, 2013″ (emphasis added).

    The fact that the claim is rejected as new matter meets the effective filing date after requirement, and, as mentioned, the attempt itself meets the “ever” requirement.

    I “get” that your view hinges on a claim being “properly accepted,” but that is just not what “on the record” includes. “On the record” includes anything put on the record by the applicant.

    Your words do not say “If an application ever included a claim to an invention whose earliest effective filing date is on or after March 16, 2013, and that claim was not rejected for introducing new matter.

    If (ever) a beneficial reason for applicants is found to provide a preference to be under the wonderful rules of the AIA, I still do not see a reason why this path would not provide for that switch.

    1. …further, an applicant would not even need to wait for an official rejection. At some point in time after submission on the record of the defective claim – but prior to examination by the Office – applicant can file another amendment canceling the defective amendment. Such cancelation does NOT expunge what was on the record, and the record will reflect both the claim and the removal of the claim. Since the record does in fact include the (errant) claim, it is easily seen that the application did in fact “ever” include a claim which (being new matter) would have had an effective date placing the application into the AIA realm.

      This is sort of the opposite edge of the sword that applicant’s remarks are held against the applicant. Remember that if an applicant makes an admission that something is prior art – even if it is not a true statement and the admitted item is NOT in fact prior art, the admission, as untrue as it is, stands.

    2. The Office takes the other position:

      From MPEP 2159.02

      As 35 U.S.C. 132(a) prohibits the introduction of new matter into the disclosure, an application may not contain a claim to a claimed invention that does not have support under 35 U.S.C. 112(a) in the application (that is directed to new matter). Thus, an application cannot “contain” a claim to a claimed invention that is directed to new matter for purposes of determining whether the application ever contained a claim to a claimed invention having an effective filing date on or after March 16, 2013. Amendments that are believed to contain new matter should be treated as follows: (1) a new drawing should not be entered if the examiner discovers that the drawing contains new matter (MPEP § 608.02, subsection II.); and (2) amendments to the written description or claims involving new matter are ordinarily entered, but the new matter is required to be canceled from the written description and the claims directed to the new matter are rejected under 35 U.S.C. 112(a) (MPEP § 608.04). This process for treating amendments containing new matter is purely an administrative process for handling an amendment seeking to introduce new matter into the disclosure of the invention in violation of 35 U.S.C. 132(a), and for resolving disputes between the applicant and an examiner as to whether a new drawing or amendment to the written description or claims would actually introduce new matter into the disclosure of the invention. Therefore, an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim to a claimed invention that is directed to new matter in an application filed on or after March 16, 2013, that, as originally filed, discloses and claims only subject matter also disclosed in an earlier application filed before March 16, 2013 to which the application filed on or after March 16, 2013, is entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365, would not change the application from a pre-AIA application into an AIA application.

      1. Les,

        Just noticed your post, and yes, the Office does feel differently and makes a plainly conclusory statement in its non-legally binding MPEP (note the lack of any statutory or court reference with the key bare-conclusory final statement).

        I am sure that you are aware that the MPEP has been known to be flat out wrong on legal matters.

        I also would point out that the very section that you pulled the quote from is very much contradicted by the preceding paragraphs.

        And lastly, I will also remind you that another path to the same effect HAS been shared on this very thread – see post 4.2.

        At any time an applicant can file a CIP with an added claim (with the otherwise still valid priority claim to the patent filing date), then turn around and cancel the “new matter” (as well as then expressly abandon the parent), and have the exact same item as the parent but under the “new and improved”*** patent law examination environment of the AIA.

        The exact same.

        Which points out that the Office view must be wrong if yet another valid path leads to the exact same point.

        *** by “new and improved” I do mean that huge elephant in the room as to what the AIA was sold as to the American public (and innovators). THAT is something that no one (and I do mean absolutely no one) seems to want to touch.

  5. QUOTE : The first-to-invent rules of the America Invents Act of 2011 began taking effect in March 2013. New patent applications filed after the changeover date are examined under the new rules while those that were already on file or properly claim priority* to a pre-AIA filing are examined under the new rules.

    I believe that should read “are examined under the old rules” at the end, yes?

    1. The problem (or maybe a problem) with the first sentence is that it should read :The first-to-file rules, not first-to-invent rules.

Comments are closed.