1. AIA Final Rules
AIA Transition Applications
March 20, 2013

2. AIA Transition Applications

3. AIA Transition Applications
• “Transition Application”- nonprovisional
application claiming priority (foreign or
domestic) to an earlier application that was
filed before March 16, 2013.
• Need to file a statement that AIA applies when
– Transition application contains, or contained at
any time, a claim (even a single claim) to a
claimed invention that has an effective filing date
on or after March 16, 2013. 37 CFR § 1.55(j), §
1.78(a)(6), or § 1.78(c)(6) (p.41)

4. AIA Transition Applications
• Rationale for Statement
– “This information is needed to assist the Office in
determining whether the nonprovisional
application is subject to AIA 35 U.S.C. 102 and
103 or pre-AIA 35 U.S.C. 102 and 103.” p. 38.
• If you provide a statement, the transition
application is generally subject to AIA 102 and
103 prior art standards.
– Note may be still subject to Pre-AIA 102(g)
standard for interference.

5. AIA Transition Applications
CON, DIV, CIP, 119,…
Filed Filed
March 16, 2013
Priority Application
Application

6. AIA Transition Applications
• Number of Claims Does Not Matter
– Statement required even if just a single claim
has an effective date on or after March 16, 2013
while the rest of the claims have an earlier date.
• Claim Counts Not Disclosure
• You Can’t Fix It
– Timing of the claim generally doesn’t matter
– Canceling the claim(s) with an effective date on
or after March 16, 2013 will not help you avoid
the need for a statement. FR p. 11083
– Once an AIA application, always an AIA
application (child cases even poisoned)

7. AIA Transition Applications
• Asking for a Final Office Action When
Submitting AIA Claims in Pre- AIA Case
– USPTO considers amendment necessitating
new grounds for rejection
• If AIA claim is new matter to the
application, the Pre-AIA application will not be
considered an AIA application
– Application is never considered to “contain” the
AIA claim because new matter
– Doesn’t count for Preliminary Amendments filed
with the application

8. AIA Transition Applications
• Applicant Statement
– “there is a claim in the nonprovisional application
that has an effective date on or after March 16,
2013.”
– No requirement to identify how many claims
– No requirement to identify the subject matter.
See e.g., 37 CFR 1.55(j), p. 32.
• ADS Includes Checkbox for AIA Statement
• If statement, transition application is generally
subject to AIA 102/103 prior art standard.

9. AIA Transition Applications
• ADS- AIA Statement
Check the Box for AIA Transition Aplication

10. AIA Transition Applications
• Timing- must submit the statement by the later
of:
– 4 Months from actual filing
– 4 Months from entering national stage
– 16 Months from prior provisional application filing
date
– 16 Months from prior foreign application filing
date
– Date the first claim with effective date on or after
March 16, 2013 is presented. (e.g., introduce
claim during prosecution)
See, 37 CFR § 1.55(j), § 1.78(a)(6), or § 1.78(c)(6)

11. AIA Transition Applications
CON, DIV, CIP, 119,…
Filed Filed
March 16, 2013
Priority Transition
Application Application

12. AIA Transition Applications
CON, DIV, CIP, 119,…
Filed Filed 4 Months
March 16, 2013
Priority Transition AIA Statement
Application Application

13. AIA Transition Applications
Filed Filed Filed
March 16, 2013
Priority Transition Amendment
Application Application

14. AIA Transition Applications
Filed Filed Filed Filed
March 16, 2013
Priority Transition Amend Amend
Application Application #1 #2

15. AIA Transition Applications
• No statement for:
– Transition application only ever claims subject
matter disclosed in parent application(s) filed
before March 16, 2013.
– Nonprovisional application only claims priority to
applications filed on or after March 16, 2013.
– CON/DIV/CIP where AIA Statement was filed in
the parent application

16. AIA Transition Applications
CON, DIV, CIP, 119,…
Filed Filed
March 16, 2013
Priority Application
Application

17. More Information and Questions…
• Contact: Chuck Schmal
Phone: (317)713-4954
Email: cschmal@uspatent.com

18. AIA Final Rules
AIA Transition Applications
March 20, 2013
©2013 Woodard, Emhardt, Moriarty, McNett & Henry LLP