MPEP § 2159.03 — Applications Subject to the AIA but Also Containing a Claimed Invention Having an Effective Filing Date Before March 16, 2013 (Annotated Rules)
§2159.03 Applications Subject to the AIA but Also Containing a Claimed Invention Having an Effective Filing Date Before March 16, 2013
This page consolidates and annotates all enforceable requirements under MPEP § 2159.03, 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.
Applications Subject to the AIA but Also Containing a Claimed Invention Having an Effective Filing Date Before March 16, 2013
This section addresses Applications Subject to the AIA but Also Containing a Claimed Invention Having an Effective Filing Date Before March 16, 2013. Primary authority: 35 U.S.C. 102, 35 U.S.C. 102(g), and 35 U.S.C. 100(i). Contains: 2 requirements and 2 other statements.
Key Rules
AIA Effective Dates
Even if AIA 35 U.S.C. 102 and 103 apply to a patent application, pre-AIA 35 U.S.C. 102(g) also applies to every claim in the application if it: (1) contains or contained at any time a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) is ever designated as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time such a claim. Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting from an application to which pre-AIA 35 U.S.C. 102(g) applied. See MPEP § 2138 for guidance on pre-AIA 35 U.S.C. 102(g).
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, 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.
For these reasons, when subject matter is claimed in an application filed on or after March 16, 2013 having priority to or the benefit (e.g., under 35 U.S.C. 120, 121, or 365(c)) of a prior application filed before March 16, 2013, care must be taken to accurately determine whether AIA or pre-AIA 35 U.S.C. 102 and 103 applies to the application. See also MPEP § 2151.
AIA vs Pre-AIA 102 (MPEP 2151)
Even if AIA 35 U.S.C. 102 and 103 apply to a patent application, pre-AIA 35 U.S.C. 102(g) also applies to every claim in the application if it: (1) contains or contained at any time a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) is ever designated as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time such a claim. Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting from an application to which pre-AIA 35 U.S.C. 102(g) applied. See MPEP § 2138 for guidance on pre-AIA 35 U.S.C. 102(g).
Citations
| Primary topic | Citation |
|---|---|
| AIA Effective Dates AIA vs Pre-AIA 102 (MPEP 2151) | 35 U.S.C. § 100(i) |
| AIA Effective Dates AIA vs Pre-AIA 102 (MPEP 2151) | 35 U.S.C. § 102 |
| AIA Effective Dates AIA vs Pre-AIA 102 (MPEP 2151) | 35 U.S.C. § 102(g) |
| AIA Effective Dates | 35 U.S.C. § 120 |
| AIA Effective Dates AIA vs Pre-AIA 102 (MPEP 2151) | MPEP § 2138 |
| AIA Effective Dates | MPEP § 2151 |
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 § 2159.03 — Applications Subject to the AIA but Also Containing a Claimed Invention Having an Effective Filing Date Before March 16, 2013
Source: USPTO2159.03 Applications Subject to the AIA but Also Containing a Claimed Invention Having an Effective Filing Date Before March 16, 2013 [R-01.2024]
Even if AIA 35 U.S.C. 102 and 103 apply to a patent application, pre-AIA 35 U.S.C. 102(g) also applies to every claim in the application if it: (1) contains or contained at any time a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) is ever designated as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time such a claim. Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting from an application to which pre-AIA 35 U.S.C. 102(g) applied. See MPEP § 2138 for guidance on pre-AIA 35 U.S.C. 102(g).
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, 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.
For these reasons, when subject matter is claimed in an application filed on or after March 16, 2013 having priority to or the benefit (e.g., under 35 U.S.C. 120, 121, or 365(c)) of a prior application filed before March 16, 2013, care must be taken to accurately determine whether AIA or pre-AIA 35 U.S.C. 102 and 103 applies to the application. See also MPEP § 2151.