Patent Filing Considerations Under the AIA on the Eve of March 16th

March 16, 2013 is rapidly approaching. This date is significant because it is the effective date of Section 3 of the American Invents Act (AIA). Section 3 of AIA includes the first-inventor-to-file provisions (FITF). Most of these provisions will be codified in Title 35 of the U.S. Code, most notably, as a complete rewrite of 35 U.S.C. 102 – the section that defines what constitutes prior art. The effective date provisions of AIA Section 3 are found in Sections 3(n)(1) and 3(n)(2). These two provisions provide a complicated transition period requiring practitioners to consider two regimes – pre-AIA 102 or AIA 102 – when contemplating claiming strategies. Significantly, while sections 3(n)(1) and 3(n)(2) will not actually be codified in Title 35, they nonetheless will impact patent law practitioners for years to come. Thoughtful prosecution and claim presentation will allow a practitioner to exert some control over which section 102 applies for examination of a particular application.

Section 3(n)(1) indicates that, with a few exceptions, the amendments in AIA section 3 will take effect on March 16, 2013, and shall apply to any application (or patent issuing thereon), that contains or contained at any time (A) a claim to an invention that has an effective filing date that is on or after March 16, 2013; or (B) to any continuation, divisional or continuation-in-part application of any patent or application that contains or contained at any time such a claim. In other words, “new” AIA section 102 applies for examination of applications that include at least one claim having an effective filing date on or after March 16, 2013. Once an application falls under AIA section 102 it always remains under AIA 102. Moreover, any progeny of an application subject to AIA section 102 will be subject to AIA section 102.

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