Patent Law FAQ

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 may require further examination.
• In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
• This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.

The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.

This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.

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
• A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed

However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).

For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).

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 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.” (MPEP 210)

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 states: “Transition applications are either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications depending on the effective filing date of the claimed invention(s).” (MPEP 210)

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 filing date for prior art purposes under 35 U.S.C. 102(a)(1) and (a)(2)

This means that intervening disclosures between your foreign filing date and your U.S. filing date may not be considered prior art against your application. However, it’s important to note that the claimed subject matter must be fully supported by the foreign application to get the benefit of its filing date. Additionally, the priority claim must be proper and timely made for this benefit to apply.

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
• A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed

However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).

For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).

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 filing date for prior art purposes under 35 U.S.C. 102(a)(1) and (a)(2)

This means that intervening disclosures between your foreign filing date and your U.S. filing date may not be considered prior art against your application. However, it’s important to note that the claimed subject matter must be fully supported by the foreign application to get the benefit of its filing date. Additionally, the priority claim must be proper and timely made for this benefit to apply.

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 may require further examination.
• In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
• This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.

The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.

This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.

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
• A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed

However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).

For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).

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 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.” (MPEP 210)

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 states: “Transition applications are either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications depending on the effective filing date of the claimed invention(s).” (MPEP 210)

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 may require further examination.
• In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
• This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.

The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.

This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.

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 filing date for prior art purposes under 35 U.S.C. 102(a)(1) and (a)(2)

This means that intervening disclosures between your foreign filing date and your U.S. filing date may not be considered prior art against your application. However, it’s important to note that the claimed subject matter must be fully supported by the foreign application to get the benefit of its filing date. Additionally, the priority claim must be proper and timely made for this benefit to apply.

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
• A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed

However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).

For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).

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 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.” (MPEP 210)

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 states: “Transition applications are either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications depending on the effective filing date of the claimed invention(s).” (MPEP 210)

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 may require further examination.
• In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
• This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.

The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.

This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.

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 filing date for prior art purposes under 35 U.S.C. 102(a)(1) and (a)(2)

This means that intervening disclosures between your foreign filing date and your U.S. filing date may not be considered prior art against your application. However, it’s important to note that the claimed subject matter must be fully supported by the foreign application to get the benefit of its filing date. Additionally, the priority claim must be proper and timely made for this benefit to apply.