Question 1

What is the statement requirement for transition applications?

Accepted Answer

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.

Question 2

What is the significance of the March 16, 2013 date in patent applications?

Accepted Answer

March 16, 2013 is a crucial date in U.S. patent law due to the implementation of the America Invents Act (AIA). This date marks the transition from the pre-AIA first-to-invent system to the AIA first-inventor-to-file system. The significance includes:

Applications filed on or after this date are generally subject to AIA provisions
The effective filing date of claimed inventions determines which law applies
Transition applications may require special statements
Different examination standards may apply based on the effective filing date

The MPEP states: "The first inventor to file provisions of Public Law 112-29, sec. 3, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective March 16, 2013. These provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time— (A) a claim to a claimed invention that has an effective filing date as defined under section 100(i) of title 35, United States Code, that is on or after March 16, 2013; or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim."

Question 3

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

Accepted Answer

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)

Question 4

What is the applicability of MPEP 715.01(b) to AIA applications?

Accepted Answer

MPEP 715.01(b) has limited applicability to applications subject to the America Invents Act (AIA). The section begins with an important editor's note:

This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).

This means that for most AIA applications, the provisions discussed in MPEP 715.01(b) do not apply. However, there are exceptions:

It may be applicable when overcoming a pre-AIA 35 U.S.C. 102(g) rejection.
For AIA applications, different rules apply, as noted: For applications subject to current 35 U.S.C. 102, see MPEP § 2154.02(c).

It's crucial for patent professionals to understand which rules apply based on the filing date and status of their application.

To learn more:

Question 5

What is a transition application under the AIA?

Accepted Answer

A transition application under the America Invents Act (AIA) is:

A nonprovisional application filed on or after March 16, 2013
That claims foreign priority to, or domestic benefit of, an application filed before March 16, 2013

Transition applications can be 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).

The MPEP states: "Transition applications are nonprovisional applications that: (A) are filed on or after March 16, 2013; and (B) claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013. 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)."

Question 6

What changed for patent applications filed on or after September 16, 2012?

Accepted Answer

The MPEP 409.03(g) section on proof of irreparable damage is not applicable to patent applications filed on or after September 16, 2012. This change is due to the implementation of the America Invents Act (AIA), which brought significant reforms to the U.S. patent system. Key changes include:

Transition from a 'first-to-invent' to a 'first-inventor-to-file' system
New procedures for challenging patents at the USPTO
Expanded definition of prior art
Changes to inventor oath and declaration requirements

For applications filed on or after September 16, 2012, different rules and procedures apply regarding the representation of applicants and the handling of situations that might have previously fallen under the irreparable damage provisions.

To learn more:

America Invents Act
AIA
September 16 2012
patent reform
first-inventor-to-file

Question 7

Is MPEP 715.07(b) applicable to applications subject to the AIA first inventor to file provisions?

Accepted Answer

No, MPEP 715.07(b) is generally not applicable to applications subject to the America Invents Act (AIA) first inventor to file provisions. The MPEP section explicitly states:

This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g).

For applications subject to AIA provisions, refer to MPEP § 717 for discussions on affidavits or declarations of attribution or prior public disclosure, and MPEP § 718 for affidavits or declarations under 37 CFR 1.131(c).

To learn more:

Question 8

Is MPEP 715.01(d) applicable to AIA (America Invents Act) applications?

Accepted Answer

No, MPEP 715.01(d) is generally not applicable to applications subject to the first inventor to file provisions of the AIA (America Invents Act). The section explicitly states:

"[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g)."

This means that the procedures outlined in MPEP 715.01(d) for overcoming rejections based on prior use or knowledge are primarily relevant to pre-AIA applications. For AIA applications, different procedures apply, which are covered in other sections of the MPEP.

The note also directs readers to other relevant sections:

To learn more:

Question 9

How does the America Invents Act (AIA) affect affidavits and declarations under 37 CFR 1.131(a)?

Accepted Answer

The America Invents Act (AIA) has significantly impacted the applicability of affidavits and declarations under 37 CFR 1.131(a):

For applications subject to the first inventor to file provisions of the AIA, 37 CFR 1.131(a) is generally not applicable.
These affidavits or declarations can still be used to overcome rejections under pre-AIA 35 U.S.C. 102(g).
For AIA applications, 37 CFR 1.130 provides for affidavits or declarations of attribution or prior public disclosure.

As noted in the MPEP, "This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g)." This highlights the limited applicability of 37 CFR 1.131(a) in the post-AIA era.

To learn more:

Question 10

How does the AIA FITF system affect priority claims in patent applications?

Accepted Answer

How does the AIA FITF system affect priority claims in patent applications?

The America Invents Act (AIA) First-Inventor-to-File (FITF) system, which went into effect on March 16, 2013, significantly impacted how priority is determined for patent applications. According to MPEP 210:

The AIA converted the U.S. patent system from a 'first to invent' system to a 'first inventor to file' system. Specifically, the changes to 35 U.S.C. 102 and 103 in the AIA apply to any patent application subject to the first inventor to file provisions of the AIA.

Key effects of the AIA FITF system on priority claims include:

The effective filing date of a claimed invention is crucial for determining prior art.
Applications filed on or after March 16, 2013, are subject to FITF provisions.
Transitional applications (those with claims to pre-AIA and post-AIA effective filing dates) may be subject to both systems.
Priority claims must be carefully evaluated to determine which system applies to each claim.

For more information on effective filing date, visit: effective filing date.

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

For more information on FITF, visit: FITF.

Question 11

How does the AIA first-inventor-to-file system affect benefit claims?

Accepted Answer

How does the AIA first-inventor-to-file system affect benefit claims?

The America Invents Act (AIA) introduced the first-inventor-to-file system, which has significant implications for benefit claims. While the MPEP 211.01 doesn't directly address this, it's an important consideration for applicants. Here's how it affects benefit claims:

Effective Filing Date: The effective filing date of a claimed invention is crucial under the AIA system. It's determined by the earliest application in the priority chain that describes the claimed invention.
Prior Art: The prior art date is now based on the effective filing date, making proper benefit claims even more critical.
Grace Period: The one-year grace period for disclosures by the inventor is now measured from the effective filing date.
Continuation and CIP Applications: These applications can still claim benefit to earlier applications, but the effective filing date for each claim is determined individually based on when its subject matter was first disclosed in the application chain.

For more information on the AIA and its impact on patent applications, refer to MPEP 2151 and the USPTO's AIA FAQ page.

To learn more:

Question 12

How does the AIA First Inventor to File system affect priority claims?

Accepted Answer

How does the AIA First Inventor to File system affect priority claims?

The America Invents Act (AIA) introduced the First Inventor to File (FITF) system, which has significant implications for priority claims. Under the AIA:

Applications filed on or after March 16, 2013, are subject to the FITF provisions.
Priority claims can still be made to earlier applications, but the effective filing date is crucial for determining prior art.
The effective filing date is the earlier of:
1. The actual filing date of the application, or
2. The filing date of the earliest application for which benefit or priority is claimed and which describes the subject matter.

As stated in MPEP 210: "The AIA provides that the right of priority and the benefit of an earlier filing date are available to a claim only if that claim is supported by the prior-filed application to which priority or benefit is claimed."

This means that each claim in a later-filed application must be fully supported by the prior-filed application to receive its priority date. Applicants must carefully consider the content of their priority applications when making claims in subsequent filings.

For more information on effective filing date, visit: effective filing date.

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

Question 13

How does the AIA first inventor to file system affect prior art rejections?

Accepted Answer

How does the AIA first inventor to file system affect prior art rejections?

The America Invents Act (AIA) introduced the first inventor to file system, which significantly impacts prior art rejections. According to MPEP 706.02:

'AIA 35 U.S.C. 102(a)(1) and (a)(2) define the prior art that will preclude the grant of a patent on a claimed invention unless an exception in AIA 35 U.S.C. 102(b) is applicable.'

Key points about the AIA's impact on prior art rejections include:

Prior art now includes public disclosures before the effective filing date
The one-year grace period is limited to disclosures by inventors or obtained from inventors
Prior-filed applications that are published or patented can be used as prior art as of their filing date

Examiners must carefully consider these new provisions when applying prior art rejections under the AIA system.

To learn more:

35 U.S.C. 102

Question 14

How does MPEP 715.05 apply to applications subject to the AIA?

Accepted Answer

MPEP 715.05 has limited applicability to applications subject to the America Invents Act (AIA). The section specifically states:

"[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g)."

For applications subject to AIA, different rules apply. The MPEP directs readers to other sections for guidance:

For a discussion of 37 CFR 1.130, see MPEP § 717
For affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718

It's crucial for patent practitioners to determine whether an application is subject to AIA or pre-AIA rules to apply the correct procedures.

To learn more:

MPEP 715.05

Question 15

How does MPEP 715.01(c) apply to AIA applications?

Accepted Answer

MPEP 715.01(c) is primarily focused on pre-AIA applications. The section begins with an important note:

[Editor Note: This MPEP section is not applicable to applications subject to the first inventor to file provisions of the AIA unless being relied upon to overcome a rejection under pre-AIA 35 U.S.C. 102(g). See 35 U.S.C. 100 (note) and MPEP § 2159.]

For applications subject to AIA provisions, the MPEP provides different guidance:

For affidavits or declarations of attribution or prior public disclosure in AIA applications, refer to MPEP § 717.
For affidavits or declarations under 37 CFR 1.131(c), see MPEP § 718.
For applications subject to current 35 U.S.C. 102, see MPEP §§ 2153 and 2154.

It's crucial for patent attorneys and examiners to determine whether an application is subject to pre-AIA or AIA provisions before applying the guidance in MPEP 715.01(c).

To learn more:

MPEP 715.01(c)

Question 16

How do the first inventor to file provisions of the AIA affect claiming priority to a prior-filed application?

Accepted Answer

The first inventor to file provisions that took effect on 3/16/2013 require additional statements for certain "transition" applications:

- Transition applications are those filed on or after 3/16/2013 that claim priority to an application filed before 3/16/2013.
- If a transition application ever contained a claim having an effective filing date on or after 3/16/2013, a statement to that effect is required within the later of 4 months from the actual filing date, 4 months from national stage entry, 16 months from the prior application, or the date the claim was first presented.
- This statement requirement does not apply if the application only claims priority to applications filed on or after 3/16/2013, or if the applicants reasonably believe the application never contained such a claim.

See MPEP 210 and MPEP 2159 for more details.

Question 17

How do the first inventor to file provisions affect priority and benefit claims?

Accepted Answer

The first inventor to file provisions of the America Invents Act (AIA) have significant implications for priority and benefit claims, particularly for applications filed on or after March 16, 2013. Key points include:

The effective filing date of each claimed invention determines whether an application is subject to examination under AIA or pre-AIA 35 U.S.C. 102 and 103.
Applications that contain or contained at any time a claim with an effective filing date on or after March 16, 2013, are subject to the AIA version of 35 U.S.C. 102 and 103.
Applications that claim priority to or benefit of a pre-AIA application may be subject to additional requirements.

As stated in the MPEP: These provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time— (A) a claim to a claimed invention that has an effective filing date as defined under section 100(i) of title 35, United States Code, that is on or after March 16, 2013; or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim. (MPEP 210)

For transition applications (those filed on or after March 16, 2013, that claim priority to or benefit of a pre-AIA application), applicants may need to provide a statement regarding the presence of claims with an effective filing date on or after March 16, 2013. This requirement is outlined in 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6).

For more information on effective filing date, visit: effective filing date.

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

For more information on pre-AIA, visit: pre-AIA.

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

Here’s the complete FAQ:

MPEP 200 - Types and Status of Application; Benefit and Priority (5)

What is the statement requirement for transition applications?

How does the AIA FITF system affect priority claims in patent applications?

How does the AIA FITF system affect priority claims in patent applications?

How does the AIA first-inventor-to-file system affect benefit claims?

How does the AIA first-inventor-to-file system affect benefit claims?

How does the AIA First Inventor to File system affect priority claims?

How does the AIA First Inventor to File system affect priority claims?

How do the first inventor to file provisions affect priority and benefit claims?

MPEP 200 - Types and Status of Application; Benefit and Priority Claims (3)

What is the significance of the March 16, 2013 date in patent applications?

What is a transition application under the AIA?

How do the first inventor to file provisions of the AIA affect claiming priority to a prior-filed application?

MPEP 400 - Representative of Applicant or Owner (1)

What changed for patent applications filed on or after September 16, 2012?

Patent Law (9)

What is the statement requirement for transition applications?

What is the significance of the March 16, 2013 date in patent applications?

What is a transition application under the AIA?

What changed for patent applications filed on or after September 16, 2012?

How does the AIA FITF system affect priority claims in patent applications?

How does the AIA FITF system affect priority claims in patent applications?

How does the AIA first-inventor-to-file system affect benefit claims?

How does the AIA first-inventor-to-file system affect benefit claims?

How does the AIA First Inventor to File system affect priority claims?

How does the AIA First Inventor to File system affect priority claims?

How do the first inventor to file provisions of the AIA affect claiming priority to a prior-filed application?

How do the first inventor to file provisions affect priority and benefit claims?

Patent Procedure (9)

What is the statement requirement for transition applications?

What is the significance of the March 16, 2013 date in patent applications?

What is a transition application under the AIA?

What changed for patent applications filed on or after September 16, 2012?

How does the AIA FITF system affect priority claims in patent applications?

How does the AIA FITF system affect priority claims in patent applications?

How does the AIA first-inventor-to-file system affect benefit claims?

How does the AIA first-inventor-to-file system affect benefit claims?

How does the AIA First Inventor to File system affect priority claims?

How does the AIA First Inventor to File system affect priority claims?

How do the first inventor to file provisions of the AIA affect claiming priority to a prior-filed application?

How do the first inventor to file provisions affect priority and benefit claims?