How does the AIA (America Invents Act) affect the treatment of CIP applications?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. The America Invents Act (AIA) significantly changed the treatment of Continuation-In-Part (CIP) applications for patents filed on or after March 16, 2013. The MPEP 2133.01 notes: “[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]” Under the AIA, the focus shifts from the “first to invent” system to a “first inventor to file” system. This change affects how prior art is determined and applied, potentially impacting the strategic use of CIP applications. Applicants and practitioners should consult MPEP § 2159 and MPEP § 2150 for guidance on applications subject to AIA provisions. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse FITF Provisions Not Applicable to CIP Rejections MPEP 2133.01 Rule Not Applicable to FITF Applications MPEP 2133 Prior Art Disclosing Invention Before Filing Date Bars Patent Issuance for CIP MPEP 2133.01 Prior Art Disclosing Invention Bars Patent Issuance MPEP 2133.01 Public Use, Sale, Publication, or Patent Discloses Invention MPEP 2133 Obvious Variant Prior Art Bars Patentability MPEP 2133 Determining Effective Filing Date for AIA Provisions MPEP 2159 Child CIP Effective Date When No Parent Support MPEP 2133.01 Effective Filing Date Determined Claim-by-Claim MPEP 2133.01 Claims Must Be Fully Supported by Parent Application MPEP 2133.01 Other Related FAQs 5 FAQs Collapse How do examiners determine which clai...