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

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.