reserving first-to-invent status under the America Invents Act

Now that the first-inventor-to-file provisions of the America Invents Act (AIA) have taken effect, stakeholders should understand how to preserve the first-to-invent status of patent applications that were filed before March 16, 2013.

The Basics

An application will be examined under the first-to-invent versions of 35 USC §§ 102 and 103 as long as every single claim ever presented in the application has an effective filing date of March 15, 2013 or earlier, and as long as the application only claims priority to applications that also satisfy that requirement.

The Details

The AIA defines “effective filing date” in new 35 USC § 100(i):

(i)(1) The term ‘effective filing date’ for a claimed invention in a patent or application for patent means—

(A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or

(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).

(2) The effective filing date for a claimed invention in an application for reissue or reissued patent shall be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.

New 35 USC § 100(j) also is relevant:

(j) The term ‘claimed invention’ means the subject matter defined by a claim in a patent or an application for a patent.

The Danger Zones

A U.S. applicant is most likely to bring a U.S. application with a priority date of March 15, 2013 or earlier (a “pre-AIA application) under the first-inventor-to file provisions of the AIA in the following situations:

• Filing a non-provisional application based on a pre-AIA provisional application.
• Filing a continuation-in-part application based on a pre-AIA application.

A foreign applicant is most likely to bring a U.S. application with a priority date of March 15, 2013 or earlier (a “pre-AIA application) under the AIA in the following situations:

• Filing a PCT or U.S. application based on a pre-AIA priority application.
• Filing a U.S. Paris Convention application based on a pre-AIA foreign application.

(These are circumstances where applicants often add new subject matter to their applications. If no new subject matter is added, the risk is low, except for the “ticking time bomb” situations outlined below.)

The Ticking Time Bomb

While most post-AIA applications with a disclosure identical to a pre-AIA priority application (e.g., continuation applications and PCT and Paris Convention applications with no new matter added) will remain under the first-to-invent laws because the post-AIA claims are fully supported by the priority application, two situations come to mind where such an application could be brought under the first-inventor-to file provisions of the AIA.

• Claims in the post-AIA application that are literally supported by the pre-AIA application are only entitled to a post-AIA effective filing date because the claimed invention was not enabled as of the filing date of the pre-AIA application, but is enabled as of the filing date of the post-AIA application due to advances in the state of the art.
• Claims presented in the post-AIA application constitute “new matter” vis-à-vis the pre-AIA application, and so only are entitled to a post-AIA effective filing date.

These situations may be difficult to identify and avoid in advance. The enablement and new matter issues may not come to light until raised by an Examiner during examination, raised by a third-party during an inter partes review or post grant review proceeding, or raised by an opponent during litigation. Because a claim with a post-AIA effective filing date brings the entire application and all applications that claim priority to the application under the AIA, a late determination that a claim only is entitled to a post-AIA effective filing date could impact an entire patent portfolio.

A Cautious Approach To Continuation Applications

One possible way to reduce the risks of inadvertently bringing a continuation application (or other application with a disclosure identical to a pre-AIA priority application) under the AIA is to file the continuation application with the original claims of the pre-AIA application, and present the desired claims of the post-AIA application later, after the post-AIA application has been filed.

While this strategy might not avoid the enablement issue discussed above, it might avoid other new matter issues, depending on how the effective date provisions of § 3(n)(1) of the AIA and new 35 USC § 100(i) are interpreted.

If §100(i)(A) is interpreted as providing that the “effective filing date” of a claim presented after an application is filed is the filing date of the application it was presented in, even if the application does not support the claim, and if § 3(n)(1) is interpreted as providing that an application “contains or contained at any time” such a claim even if it is not entered by the Examiner because it is directed to new matter, then presenting a claim after the application is filed would not avoid the ticking time bomb problem.

On the other hand, if §100(i)(A) is interpreted as providing that a claim presented during prosecution only is entitled to the effective filing date of the application if the application supports the claim, or if § 3(n)(1) is interpreted as providing that an application does not “contain” and did not contain “at any time” such a claim because it was not entered by the Examiner, then this strategy could be useful. Under such interpretations, a claim that is not supported by any as-filed application would have no “effective filing date,” or at least would not bring the application under the first-inventor-to-file provisions of the AIA. While the applicant would not be able to obtain the added, unsupported claim or sustain it against a challenge, it at least would not be putting its other claims and subsequent applications at risk of being subject to the first-inventor-to-file laws.

The USPTO Requirement To Identify Transition ApplicationsThat Fall Under The First-Inventor-To-File Laws

The USPTO rules require applicants to identify “transition” applications–applications that have an actual filing date on or after March 16, 2013, but an earlier priority date–that fall under the first-inventor-to-file laws by submitting a statement to the effect that the application “contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013.” The statement can be provided on an Application Data Sheet (ADS), as indicated by the new ADS available on the USPTO website. If such a statement is not submitted, the application will be examined under the first-to-invent laws.