Patent Law FAQ

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.

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:

1. 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.
2. 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.
3. 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.

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)

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).”

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.

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)

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.

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)

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).”

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.

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:

1. 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.
2. 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.
3. 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.

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)

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.

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)

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).”

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.

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:

1. 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.
2. 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.
3. 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.