Can an application be subject to both pre-AIA and AIA provisions simultaneously?
Yes, an application can be subject to both pre-AIA and AIA provisions simultaneously, but with specific limitations. The MPEP 2159.03 states:
“Thus, if an application contains, or contained at any time, any claim having an effective filing date that occurs before March 16, 2013, and also contains, or contained at any time, any claim having an effective filing date that is on or after March 16, 2013, each claim must be patentable under AIA 35 U.S.C. 102 and 103, as well as pre-AIA 35 U.S.C. 102(g), for the applicant to be entitled to a patent.”
However, it’s important to note that the MPEP also clarifies: “an application will not otherwise be concurrently subject to both pre-AIA 35 U.S.C. 102 and 103 and AIA 35 U.S.C. 102 and 103.” This means that while pre-AIA 102(g) may apply alongside AIA provisions, the application won’t be subject to the full pre-AIA and AIA regimes simultaneously.
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