How does the AIA’s first-inventor-to-file (FITF) provision affect perfecting foreign priority claims?

The America Invents Act’s (AIA) first-inventor-to-file (FITF) provision has significant implications for perfecting foreign priority claims, especially in cases where the foreign application has a pre-March 16, 2013 filing date. Key points include:

• If a patent was examined under FITF provisions, but the foreign priority application has a pre-AIA filing date, perfecting the priority claim may require further examination.
• In such cases, a certificate of correction is not sufficient, and a reissue application is necessary.
• This situation arises because changing the effective filing date could potentially subject the patent to a different statutory framework.

The MPEP states: In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA.

This requirement ensures that patents are not inadvertently subjected to different legal standards without proper examination.