Final Implementation of Patent Reform (America Invents Act) Close at Hand

Posted Sunday, March 10, 2013.

The final date for implementation of the America Invents Act of 2011 (the “AIA”, otherwise known as the patent reform act) is later this week. All applications for a patent filed through March 15th will be considered under the existing patent law. Applications filed after that date will receive consideration under the law set by the AIA. That includes implementation of First-to-File rules, among other things.

But what is the impact of the AIA for applications filed on or after March 16th which claim priority to an application submitted prior to the transition date? For example, for applicants with provisional applications filed prior to 3/16/13, under which rules will a related non-provisional application filed on or after that date be considered?

The answer is that patent claims filed after 3/16/13 which draw their support from subject matter disclosed in the provisional filed before that date will be considered under the old law. However, if the claims in that non-provisional are not supported by the provisional filing, those claims will effectively get the filing date of the non-provisional application, meaning they will be considered under the AIA law.

Inventors with a provisional application on file are advised to have the non-provisional filed on or before March 15th, particularly if the non-provisional application will contain a fuller description of the invention than the provisional filing. Claims submitted for consideration after March 15th will be subject to the AIA if it can’t be shown that the claim is supported by adequate description in the provisional application.

Similarly, a Continuation-in-Part (“CIP”) application filed once the AIA is fully implemented that claims priority to a pre-AIA application will only have its claims treated under the old rules if there is support in the prior application for the claims of the CIP. A CIP usually includes new subject matter and ordinarily the claims refer to the new subject matter, so it would be unusual for a CIP to get consideration under the old rules.

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