“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 Statement Check 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