What precautions should be taken when claiming priority to a pre-AIA application?
When claiming priority to a pre-AIA application (filed before March 16, 2013) in a new application filed on or after March 16, 2013, special care must be taken. The MPEP 2159.03 advises:
“For these reasons, when subject matter is claimed in an application filed on or after March 16, 2013 having priority to or the benefit (e.g., under 35 U.S.C. 120, 121, or 365(c)) of a prior application filed before March 16, 2013, care must be taken to accurately determine whether AIA or pre-AIA 35 U.S.C. 102 and 103 applies to the application.”
This means patent attorneys and applicants should:
- Carefully review the effective filing dates of all claims in the new application
- Determine if any new matter has been added that wasn’t in the priority application
- Consider the implications of having claims subject to different patentability criteria
- Ensure compliance with both AIA and pre-AIA provisions where applicable
Proper analysis is crucial to avoid potential issues during examination and to ensure the strongest possible patent protection.
To learn more:
Topics:
2013,
MPEP 2100 - Patentability,
MPEP 2159.03 - Applications Subject To The Aia But Also Containing A Claimed Invention Having An Effective Filing Date Before March 16,
Patent Law,
Patent Procedure