MPEP § 2159.04 — Applicant Statement in Transition Applications Containing a Claimed Invention Having an Effective Filing Date on or After March 16, 2013 (Annotated Rules)
§2159.04 Applicant Statement in Transition Applications Containing a Claimed Invention Having an Effective Filing Date on or After March 16, 2013
This page consolidates and annotates all enforceable requirements under MPEP § 2159.04, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Applicant Statement in Transition Applications Containing a Claimed Invention Having an Effective Filing Date on or After March 16, 2013
This section addresses Applicant Statement in Transition Applications Containing a Claimed Invention Having an Effective Filing Date on or After March 16, 2013. Primary authority: 35 U.S.C. 102, 37 CFR 1.55, and 37 CFR 1.78. Contains: 2 requirements.
Key Rules
Benefit Claim in Specification
The Office revised 37 CFR 1.55 and 1.78 to require that if a nonprovisional application filed on or after March 16, 2013, claims the benefit of or priority to an application where the filing date of a foreign, U.S. provisional, U.S. nonprovisional, or international application is prior to March 16, 2013 (termed as “a transition application”), and also contains or contained at any time a claimed invention having an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect (“the 37 CFR 1.55 or 1.78 statement”). This information will assist the Office in determining whether the transition application is subject to AIA 35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102 and 103. However, applicant is not required to provide this information if the transition application claims the benefit of an earlier transition application in which a 37 CFR 1.55 or 37 CFR 1.78 statement has been filed. See 37 CFR 1.78(c)(6)(i). See also MPEP § 210.
The Office revised 37 CFR 1.55 and 1.78 to require that if a nonprovisional application filed on or after March 16, 2013, claims the benefit of or priority to an application where the filing date of a foreign, U.S. provisional, U.S. nonprovisional, or international application is prior to March 16, 2013 (termed as “a transition application”), and also contains or contained at any time a claimed invention having an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect (“the 37 CFR 1.55 or 1.78 statement”). This information will assist the Office in determining whether the transition application is subject to AIA 35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102 and 103. However, applicant is not required to provide this information if the transition application claims the benefit of an earlier transition application in which a 37 CFR 1.55 or 37 CFR 1.78 statement has been filed. See 37 CFR 1.78(c)(6)(i). See also MPEP § 210.
Citations
| Primary topic | Citation |
|---|---|
| Benefit Claim in Specification | 35 U.S.C. § 102 |
| Benefit Claim in Specification | 37 CFR § 1.55 |
| Benefit Claim in Specification | 37 CFR § 1.78 |
| Benefit Claim in Specification | 37 CFR § 1.78(c)(6)(i) |
| Benefit Claim in Specification | MPEP § 210 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2159.04 — Applicant Statement in Transition Applications Containing a Claimed Invention Having an Effective Filing Date on or After March 16, 2013
Source: USPTO2159.04 Applicant Statement in Transition Applications Containing a Claimed Invention Having an Effective Filing Date on or After March 16, 2013 [R-11.2013]
The Office revised 37 CFR 1.55 and 1.78 to require that if a nonprovisional application filed on or after March 16, 2013, claims the benefit of or priority to an application where the filing date of a foreign, U.S. provisional, U.S. nonprovisional, or international application is prior to March 16, 2013 (termed as “a transition application”), and also contains or contained at any time a claimed invention having an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect (“the 37 CFR 1.55 or 1.78 statement”). This information will assist the Office in determining whether the transition application is subject to AIA 35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102 and 103. However, applicant is not required to provide this information if the transition application claims the benefit of an earlier transition application in which a 37 CFR 1.55 or 37 CFR 1.78 statement has been filed. See 37 CFR 1.78(c)(6)(i). See also MPEP § 210.