MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2: Comments on New AIA Rules

by McDonnell Boehnen Hulbert & Berghoff LLP
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On March 16, 2013, the final (and most significant) portion of the Leahy-Smith America Invents Act (AIA) took effect, and the United States broke from a first-to-invent regime to a first-inventor-to-file (FITF) regime. Of course, this break is far from clean, as applications filed before March 16, 2013, as well as certain applications filed after March 15, 2013, will continue to enjoy the advantages of the old firstto- invent system.

Since the AIA was enacted on September 16, 2011, the U.S. Patent and Trademark Office (USPTO) has played an important role in implementing the new patent law. In the eighteen months between the statute’s enactment and the March 16 effective date, the USPTO published twelve notices of proposed rulemaking, issued a patent trial practice guide, and published a guidance document on the FITF provisions of the AIA, all of which culminated in the revision of the rules of practice in title 37 of the Code of Federal Regulations (C.F.R.). Set forth below are a few rule revisions that practitioners should pay careful attention to as we proceed into the FITF regime.

One such revision provides that for a non-provisional application filed on or after March 16, 2013 that claims the benefit of the filing date of an application (i.e., foreign, provisional, non-provisional application, or international application designating the U.S.) filed prior to March 16, 2013, wherein the non-provisional application filed on or after March 16, 2013 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 applicant must provide a statement to that effect.1 Such a statement must be provided within the latter of: (a) four months from the actual filing date of the later-filed application, (b) four months from the date of entry into the national stage in an international application, (c) sixteen months from the filing date of the prior-filed application, or (d) the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013 is presented in the application.2

The final rule indicates that “a statement is required only if a transition 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.”3 The final rule defines a “transition” application as “a non-provisional application filed on or after March 16, 2013, that claims priority to, or the benefit of the filing date of an earlier application (i.e., foreign, provisional, or non-provisional application, or an international application designating the United States) filed prior to March 16, 2013.”4 Notably, the proposed rulemaking had also required a statement if a transition application discloses subject matter not also disclosed in the prior-filed foreign, provisional, non-provisional application, or international application designating the U.S. even if the transition application never contained a claim that has an effective filing date on or after March 16, 2013. However, the final rule does not include a requirement to make this latter statement.

Applicants will not have to indicate the specific claims that have a post March 16, 2013 effective filing date, or the effective filing date of each claim, as the USPTO does not need this information to determine whether the application is an AIA application or a pre-AIA application.5 In addition, the final rule specifies that “no statement is required if the applicant reasonably believes on the basis of information already known to the individuals identified in § 1.56(c) that the non-provisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.”6

To provide a mechanism for making the statement, the USPTO has revised the application data sheet to include a check box that enables applicants to easily indicate whether a transition application contains or ever contained a claim to a claimed invention having an effective filing date that is on or after March 16, 2013.

In responding to comments made on the rule revisions, the USPTO noted that this requirement “should not affect continuation or divisional applications because a continuation or divisional application discloses and claims only subject matter also disclosed in the priorfiled application.”7 Additionally, the USPTO responded that “in view of the one-year filing period requirement in 35 U.S.C. 119(a) and 119(e), this requirement should not affect applications filed after May 16, 2014, that claim only a right of priority to one or more foreign applications, or that only claim the benefit of one or more provisional applications (the critical date is May 16, 2014, rather than March 16, 2014, in view of the changes to 35 U.S.C. 119 in section 201(c) of the Patent Law Treaties Implementation Act of 2012, Pub. L. 112- 211 (2012)). Therefore, after March 16, 2014, (or May 16, 2014), the statement required by §§ 1.55 and 1.78 as adopted in this final rule for certain transition applications should be necessary only in certain continuation-in-part applications.”8

The Office further clarified that “[f]or an application filed on or after March 16, 2013, that discloses and claims only subject matter also disclosed in a previously filed pre-AIA application to which the application filed on or after March 16, 2013, is entitled to priority or benefit under 35 U.S.C. §§ 119, 120, 121, or 365, an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim to a claimed invention that is directed to new matter would not convert the application into an AIA application.”9 In addition, “if an application on filing contains at least one claim having an effective filing date before March 16, 2013, and at least one claim having an effective filing date on or after March 16, 2013, the application will be examined under AIA even if the latter claims are cancelled.”10

The Office’s response to submitted comments suggest that if an applicant wants to have a transition application examined as a pre-AIA application under pre-AIA 35

U.S.C. §§ 102 and 103, the applicant must include claims directed only to subject matter disclosed in a previously filed pre-AIA application. For this reason, applicants may also want to consider filing only one claim with a transition application. In view of the Office’s responses, any other claims or claim amendments should be presented after the filing date and not in a preliminary amendment filed on the same day as the transition application. This is because the office has stated that claim amendments or new claims presented in an amendment other than a preliminary amendment filed on the same day as such application that are not supported by a pre-AIA application would be treated as new matter. As the Office indicates in the final rule notice, “an application may not actually ‘contain’ a claim to a claimed invention that is directed to new matter,” and therefore, “a claim to a claimed invention that is directed to new matter would not convert the application into an AIA application.”11 The final rule also makes clear that if an application on filing contains at least one claim having an effective filing date on or after March 16, 2013, the application cannot be examined as a pre-AIA application under pre-AIA 35 U.S.C. §§ 102 and 103 simply by cancelling the claim having an effective filing date on or after March 16, 2013. The final rule notice further makes clear that if a claim having an effective filing date on or after March 16, 2013 is inadvertently presented on filing, the application cannot be examined as a pre-AIA application under pre-AIA 35 U.S.C. §§ 102 and 103.12

Another revision to the rules of practice provides that where a U.S. patent or U.S. patent application publication has a prior art effect as of the filing date of a foreign priority application, a certified copy of the foreign application or an interim copy of the foreign application must be filed within the later of four months from the actual filing date of the application filed under 35 U.S.C. 111(a) or sixteen months from the filing date of the prior foreign application.13 The USPTO noted that under some circumstances, the above requirement will not apply – e.g., if the foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement (such offices currently consist of the European Patent (EPO), the Japan Patent (JPO), the Korean Intellectual Property (KIPO), and the World Intellectual Property Organization (WIPO)).14 Further, in some circumstances applicants will be permitted to submit an interim copy within the required time frame and then submit a certified copy before a patent is granted.15

(Please see chart below.)

Finally, the USPTO recently exercised its new fee-setting authority under § 10 of the AIA. The accompanying table lists the revised fees as they might be paid during the course of prosecution. Almost all of the new fees took effect on March 19, 2013, with the exception of the following fees, which will take effect on January 1, 2014:

  • § 1.18(a)(1), (b)(1), (c)(1), and (d)(1) – patent issue and publication fees;
  • § 1.21(h)(1) – fee for recording a patent assignment electronically;
  • § 1.482(a)(1)(i)(A), (a)(1)(ii)(A), and (a) (2)(i) – international application filing, processing and search fees; and
  • § 1.445(a)(1)(i)(A), (a)(2)(i), (a)(3)(i), and (a)(4)(i) – international application transmittal and search fees.

Endnotes

  1. 37 C.F.R. § 1.78(a)(6).
  2. Id.
  3. Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11,024, 11,027 (February 14, 2013).
  4. Id. at 11,026.
  5.  Id. at 11,040.
  6. Id.
  7. Id. at 11,041-42.
  8. Id. at 11,042.
  9. Id. at 11,043.
  10. Id.
  11. Id.
  12. Id.
  13. 37 C.F.R. § 1.55(f); Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America  Invents Act, 78 Fed. Reg. at 11,024.
  14. Id. at 11,024-25.
  15. 37 C.F.R. § 1.55(i).
  16. Id. at § 1.16(a).
  17. Id. at § 1.16(k).
  18. Id. at § 1.16(o).
  19. Id. at § 1.16(h).
  20. Id. at § 1.16(i). 
  21. Id. at § 1.16(j).
  22. Id. at § 1.16(s).
  23. Id. at § 1.17(c).
  24. Id. at § 1.21(h)(2).
  25. Id. at § 1.21(h)(1).
  26. Id. at § 1.18(d)(1).
  27. Id. at § 1.18(d)(3).
  28. Id. at § 1.17(d).
  29. Id. at § 1.17(a)(1).
  30. Id. at § 1.17(a)(2).
  31. Id. at § 1.17(a)(3).
  32. Id. at § 1.17(a)(4).
  33. Id. at § 1.17(a)(5).
  34. Id. at § 1.17(e)(1).
  35. Id. at § 1.17(e)(2).
  36. Id. at § 41.20(b)(1).
  37. Id. at § 41.20(b)(2)(i).
  38. Id. at § 41.20(b)(4).
  39. Id. at § 1.18(a)(1).
  40. Id. at § 42.15(c)(1).
  41. Id. at § 1.20(k)(1).
  42. Id. at § 1.20(c)(1).
  43. Id. at § 42.15(a)(1).
  44. Id. at § 42.15(a)(2).
  45. Id. at § 42.15(b)(1).
  46. Id. at § 42.15(b)(2).
  47. Id. at § 1.20(e).
  48. Id. at § 1.20(f).
  49. Id. at § 1.20(g).

Dr. Donald L. Zuhn, Jr., an MBHB partner, has more than a decade of experience in all aspects of patent prosecution, litigation, counseling, and licensing. He represents a variety of clients, including biotechnology and pharmaceutical companies both large and small, and universities. Dr. Zuhn is also the editor and co-founder of the Patent Docs weblog (www.patentdocs.org).

zuhn@mbhb.com

Cole B. Richter, an MBHB law clerk, is experienced in all phases of U.S. and foreign patent prosecution. His representative experience includes preparing patent applications and arguments in support of patentability for Fortune 500 companies as well as individual inventors.

richter@mbhb.com

 

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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