What is the relationship between 37 CFR 1.131(c) and the first inventor to file provisions of the AIA?

The provisions of 37 CFR 1.131(c) are not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the America Invents Act (AIA). This is clearly stated in the editor’s note at the beginning of MPEP 718:

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159.]

This means that 37 CFR 1.131(c) is only applicable to applications and patents that are subject to the pre-AIA (first-to-invent) system. Specifically, it applies to:

• Applications that contain, or contained at any time, a claim to an invention with an effective filing date before March 16, 2013
• Applications that claim priority to an application that contains or contained such a claim

For applications subject to the AIA, different provisions apply for addressing prior art issues related to common ownership or joint research agreements. These are typically covered under 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c).

To learn more:

• 37 CFR 1.131(c)
• AIA
• first inventor to file
• pre-AIA
• effective filing date

To learn more:

• 37 CFR 1.131(c)