When is a newly executed inventor’s oath or declaration required in a continuing application?
For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if: An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application…
Read MoreHow does claiming foreign priority affect the prior art date in my application?
Claiming foreign priority can significantly affect the prior art date in your application: For applications subject to pre-AIA law, the foreign priority date becomes the effective U.S. filing date for prior art purposes under 35 U.S.C. 102(a), (b), and (d) For applications subject to AIA law, the foreign priority date is treated as the effective…
Read MoreWhat is a transition application under the America Invents Act (AIA)?
A transition application under the America Invents Act (AIA) is: Filed on or after March 16, 2013 Claims foreign priority to or domestic benefit of an application filed before March 16, 2013 Transition applications may be subject to either pre-AIA or AIA rules depending on the effective filing date of the claimed inventions. The MPEP…
Read MoreWhat statement is required for transition applications under 37 CFR 1.55 and 1.78?
For transition applications, 37 CFR 1.55 and 1.78 require a statement if: The application contains or contained a claim with an effective filing date on or after March 16, 2013 The statement must be provided within specified time limits The MPEP notes: “The statement provisions of 37 CFR 1.55 and 1.78 require that if the…
Read MoreHow does the AIA’s first-inventor-to-file (FITF) provision affect perfecting foreign priority claims?
The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include: If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim…
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