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Law360, New York (January 23, 2014, 12:55 PM ET) — On March 16, 2013, the most significant provisions of the America Invents Act went into full effect, including the transition of the U.S. patent laws from a first-to-invent regime to a first-inventor-to-file regime. The post-AIA law imposes an almost-absolute novelty requirement for patent applications, with a limited inventor grace period.[1]

The AIA also significantly expanded the scope of prior art available by the U.S. Patent and Trademark Office and U.S. courts to defeat patentability. These changes may affect applications filed after March 16, 2013, but claiming priority to pre-March 16, 2013, disclosure, including, continuation applications, continuation-in-part-applications, and nonprovisional applications claiming priority to pre-March 16, 2013, provisional and/or foreign applications.

Do Pre-AIA or Post-AIA Provisions Apply?

Generally speaking, there is more prior art available to use against applications subject to post-AIA laws than pre-AIA laws. Thus, the important question for companies and patent practitioners has become — which set of laws, pre-AIA or post-AIA, apply to a given patent application? For U.S. patent applications that were filed before March 16, 2013, the answer is easy. Those pre-AIA patent applications will forever be subject to the old, pre-AIA first-to-invent patent laws. The answer is similarly easy for U.S. patent applications that were filed after March 16, 2013, and do not claim priority to any pre-March 16, 2013 disclosure — such applications will always be subject to post-AIA, first-to-file provisions.

Transition Applications

Determining whether pre-AIA law or post-AIA law applies to a particular patent application is a more difficult question to answer when an application filed after March 16, 2013, claims priority to an application filed before March 16, 2013, a so-called “transition application.”

The new, post-AIA provisions apply to any patent application that contains or contained at any time, a claim having an effective filing date of March 16, 2013, or later, or a specific reference under 35 U.S.C. §§ 120, 121, or 365(c), to any patent or application that contains or contained at any time such a claim.[2]

Patent applicants may thus be advised to ensure that claims presented in applications filed after March 16, 2013, but claiming priority to applications filed before March 16, 2013, are fully supported by the pre-March 16, 2013, disclosure in order to receive the benefit of pre-AIA provisions, possibly excluding novelty or nonobviousness-defeating prior art.

Further, because the post-AIA provisions also apply to applications that “contained at any time” or “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,”[3] presenting a claim only supported by post-March 16, 2013, disclosure will taint the instant application and any application claiming priority to the application. This defect is not curable[4] and can be detrimental to patent portfolios whose novelty and inventiveness are hinged upon the application of pre-AIA prior art provisions.

Applicants wanting to file claims that are arguably not supported by pre-March 16, 2013, disclosure may wish to pursue alternative filing and/or claiming strategies to help ensure that certain disclosure will be entitled to the benefit of pre-AIA prior art provisions.

The following examples illustrate circumstances and potential strategies for pursuing transition applications.

Scenario 1 — The transition application adds no new disclosure and presents claims that are fully supported by the priority application.

In this scenario, the transition application should be treated under the old, pre-AIA law. For example, if the transition application is a continuation or divisional application that presents claims previously presented in a pre-AIA nonprovisional application (e.g., that were nonelected due to a restriction requirement, or were canceled to expedite issuance of a parent application), the transition application should be subject to only pre-AIA, first-to-invent provisions.

Similarly, if the transition application is a nonprovisional application fully supported by a foreign application, provisional application, or Patent Cooperation Treaty application filed before March 16, 2013, the transition application should only be subject to pre-AIA, first-to-invent provisions.

To ensure that transition applications are entitled to pre-AIA, first-to-invent provisions, Applicants should take care to make sure that claims initially presented in the transition application filing are fully supported by the parent and/or priority applications. This can be achieved, for example, by presenting at the time of filing the transition application, only claims that were presented in the priority application.

If new claims submitted after the filing date of the transition application are deemed to be unsupported by the priority application, the application is not converted to post-AIA first-to-file provisions, but will instead be rejected as introducing new matter under 35 U.S.C. § 132.[5] Filing a preliminary amendment any day after filing of the transition application may insulate patent applicants from arguments that the new claims are not supported by pre-March 16, 2013, disclosure and subject to post-AIA laws.

For example, continuation applications are sometimes filed concurrently with a preliminary amendment, often to present a different claim set than was originally presented in the parent application. This practice may carry some risk to companies filing transition applications. The USPTO has stated that if claims are presented in a transition application on the same day as the filing of the application and are not supported by the pre-March 16, 2013, disclosure to which priority is claimed, the transition application and any application claiming priority to the transition application will forever be subject to the post-AIA first-to-file provisions.[6]

A new matter rejection under 35 U.S.C. § 132 would not be appropriate in this circumstance, as the new claims would be supported as of the transition application filing date. However, the fact that the transition application would be subject to post-AIA prior art provisions may introduce a significant amount of novelty or nonobviousness-defeating prior art that can weaken or extinguish a patent applicant’s rights.

Further, because the AIA states that an application will be subject to post-AIA provisions if it contains or contained at any time, disclosure with an effective filing date after March 16, 2013, simply cancelling the claims presented in the preliminary amendment will not convert the transition application back to pre-AIA status.[7]

Patent applicants may thus choose to preserve pre-AIA status in the patent application family by filing patent applications having identical disclosures and claims, and amending the claims after the filing of the application. This practice may be extended throughout the potential lifetime of the disclosure, particularly in patent applications covering high-value or potentially high-value commercial embodiments.

Scenario 2 — The transition application adds new disclosure but only presents claims that are fully supported by the priority application.

This transition application only contains claims that are fully supported by pre-March 16, 2013, disclosure and is subject to pre-AIA, first-to-invent laws.

Scenario 3 — The transition application adds new disclosure and presents claims that are only supported by the new disclosure.

This transition application, and all applications claiming priority to this application, will be subject to post-AIA, first-to-file laws.

Applications Claiming Priority to Non-English Language Patent Applications

Many companies file patent applications in the U.S. claiming priority to a non-English patent applications filed abroad or via the Patent Cooperation Treaty. In some cases, patent applicants may amend the specification and claims to comply with U.S. practice. While this practice may result in better prosecution in the U.S. (via, e.g., fewer formality-type objections), if such amendments are filed on the same day of filing, a question may be raised regarding whether the amendments are supported by the priority patent application.

In these situations, patent applicants may wish to file unamended translations when filing the U.S. application, and file any subsequent amendments to the claims and/or specification at least one day after filing the U.S. application, to help ensure that the application is entitled to the benefit of pre-AIA laws.

Strategic Considerations

Patent applicants should carefully determine whether claims to be filed in the transition applications are fully supported by the parent and/or priority application having pre-March 16, 2013, disclosure. Whether claims in transition applications are patentable may hinge upon what prior art can be applied against them. In most circumstances, patent applicants may prefer that their patent applications be subject to pre-AIA, first-to-invent laws.

When filing and prosecuting transition applications, and particularly, for transition applications directed toward high-value or potentially high-value commercial embodiments, patent applicants may consider filing preliminary amendments at least one day after filing the transition application. By filing transition applications that are identical to priority applications, patent applicants can help ensure that transition applications, and further continuation applications claiming priority to the transition applications, will be treated under the pre-AIA, first-to-invent laws.

—By Naomi Abe Voegtli, SAP, and Jameson Ma, Bookoff McAndrews PLLC

Naomi Abe Voegtli is a vice president of global IP at SAP. Jameson Ma is an attorney in Bookoff McAndrews’s Washington, D.C., office.

This article was written by the authors not in their capacity as an employee of SAP or an associate of Bookoff McAndrews.

The opinions expressed are those of the authors and do not necessarily reflect the views of SAP AG, Bookoff McAndrews, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] 35 U.S.C. §102(b)(1) (2013).

[2] AIA § 3(n)(1).

[3]AIA § 3(n)(1).

[4] See e.g., Federal Register, Vol. 78, No. 31 at 11043, Feb. 14, 2013.

[5] Id.

[6] Id.

[7] Federal Register, Vol. 78, No. 31 at 11043.