New Patent Application Filing Considerations in View of AIA Changes


As you may know, the America Invents Act (AIA) has introduced several changes to U.S. patent law.  On March 16, 2013, the AIA moves the U.S. from a First-to-Invent system to a First-to-File system.  This and other provisions of the AIA that will be effective on March 16, 2013 may result in a patent application filed on or after this date being more vulnerable to attack than if it were filed before this date.

Take Note of Expanded Definition of Prior Art.  Among the upcoming changes, the new law expands the universe of references or disclosures that can potentially be asserted as “prior art” against a patent application.  For example, the date of conception of the claimed invention will no longer be a factor in excluding a reference from being asserted as “prior art.”  Thus, there may be additional publications or disclosures that qualify as “prior art” under the new law that would not qualify under the old law.  In some cases, this additional “prior art” under the new law may result in additional rejections that need to be overcome in order to obtain a patent, and/or additional invalidity challenges that need to be refuted in order to uphold the validity of the resultant issued patent.

Consider Filing Applications Covering New Subject Matter.  The old First-to-Invent law will apply to any patent application claiming the benefit of priority of an application filed prior to March 16, 2013 provided that no claims are presented that are not entitled to the benefit of priority.  Thus, a continuation or divisional application of an application filed prior to March 16, 2013 would generally be subject to the old law.  However, any patent application filed on or after March 16, 2013 that includes one or more claims that are not fully supported by subject matter in a priority application filed prior to March 16, 2013 will be subject to the new expanded definition of “prior art.”  Thus, examples of applications that will be subject to the new law if filed on or after March 16, 2013 include: 

a new application (provisional or non-provisional), 

a non-provisional application claiming the benefit of a provisional application where the non-provisional application includes new subject matter, and 

a continuation-in-part (CIP) application that introduces and claims new subject matter. 

In view of these and other potential ”prior art” issues, it may be advantageous to file the foregoing types of applications, before March 16, 2013.  At your earliest convenience, please contact your Knobbe Martens professional to discuss filing strategies.

Given the potential for a high volume of filings, we would greatly appreciate receiving any specific filing instructions no later than February 20, 2013.

With over 275 lawyers and scientists nationwide, Knobbe Martens Olson & Bear LLP dedicates its practice to all aspects of intellectual property law including litigation.  Consistently ranked among the top intellectual property firms worldwide, Knobbe Martens serves a diverse group of clients from multinational corporations to emerging businesses of all stages.  Headquartered in Orange County, California, Knobbe Martens also has offices in San Diego, Los Angeles, Riverside, San Francisco, Silicon Valley, Seattle and Washington, D.C.  More information about the firm can be found at


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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