Can adding new claims after March 16, 2013, make AIA laws applicable to a pre-AIA application?
No, adding new claims after March 16, 2013, does not make AIA laws applicable to a pre-AIA application. The MPEP 2159.01 states:
“Additionally, adding claims after March 16, 2013 in an application filed before March 16, 2013 via an amendment which contains new matter does not make the changes to 35 U.S.C. 102 and 35 U.S.C. 103 in the AIA applicable to the application because 35 U.S.C. 132(a) prohibits the introduction of new matter into the disclosure.”
This means that the original filing date of the application remains the determining factor for which laws apply, regardless of subsequent amendments or new claims.
To learn more:
Topics:
2013,
MPEP 2100 - Patentability,
MPEP 2159.01 - Applications Filed Before March 16,
Patent Law,
Patent Procedure