The USPTO’s final rules and examination guidelines for the first-to-file provisions of the Leahy-Smith America Invents Act, which was issued on February 14, 2013, contain several provisions that require Applicant action or consideration.
Key Rules Applicants Should Know -
Treatment of transition applications -
The first-to-file system is applicable to any application or patent that contains, or contained at any time, any claimed invention having an effective filing date on or after March 16, 2013. Once an application is subject to first-to-file rules, any progeny (i.e. continuation or divisional) of that application will also be subject to first-to-file rules.
The USPTO places the burden on Applicants to indicate if a transition application (i.e. an application filed on or after March 16, 2013, which claims priority to an earlier application filed before that date) is subject to the first-to-file system. Unless Applicants indicate otherwise, the USPTO will examine a transition application under the first-to-invent system. Applicants must file a statement with the USPTO indicating that a transition application is subject to first-to-file when the application contains or contained at any time a claim having an effective filing on or after March 16, 2013. The statement may, therefore, be necessary in any application filed on or after March 16, 2013, claiming domestic or foreign priority to an earlier filed application and which adds new disclosure to the application which is required for the support of any claim made in the application. No claim-by-claim analysis is necessary. This statement has to be filed within the later of: (a) four months from the actual U.S. filing date; (b) four months from the entry into U.S. national stage; (c) sixteen months from the filing date of the prior filed application; or (d) the first time a claim having an effective filing date on or after March 16, 2013 is presented. The USPTO is revising the application data sheet template to include a check box to make this statement.
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