What is the statement requirement for transition applications?

The statement requirement for transition applications was introduced as part of the implementation of the first inventor to file provisions of the America Invents Act (AIA). Transition applications are:

• Nonprovisional applications filed on or after March 16, 2013
• Applications that claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013

The statement requirement is outlined in 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6). As stated in the MPEP:

The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect (unless the later-filed application is a nonprovisional international design application).

The statement must be provided within specified time limits. Applicants are not required to provide the statement if they reasonably believe the application does not contain claims with an effective filing date on or after March 16, 2013.

For more information on America Invents Act, visit: America Invents Act.

For more information on first inventor to file, visit: first inventor to file.

For more information on transition applications, visit: transition applications.