USPTO Final Rule Changes Need for Statement about Transition Applications

On February 14, the U.S. Patent and Trademarks Office (USPTO) announced its final rules implementing the first-inventor-to-file (FITF) provisions of the AIA, scheduled to go into effect on March 16, 2013. After a number of comments from stakeholders, the USPTO changed the rule regarding patent applications filed on or after March 16 that claim priority to an earlier-filed application.

Previously, the United States Patent and Trademark Office had issued proposed rules implementing the first-inventor-to-file provisions of the America Invents Act (AIA).

Among other things, the Office had proposed additional requirements for nonprovisional applications filed on or after March 16, 2013, that claim the benefit of the filing date of a foreign, provisional, or nonprovisional application filed prior to March 16, 2013. According to the proposed rule, if a nonprovisional application contains at any time a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant would be required to provide a statement to that effect. A statement would also have been required if the nonprovisional application does not have a claim to a claimed invention that has an effective filing date on or after March 16, 2003 but discloses subject matter not also disclosed in the foreign, provisional, or nonprovisional application.

The Office is providing in the final rule that a statement is required only if a transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013. Thus, no statement is required if a transition application discloses subject matter not also disclosed in the prior- filed foreign, provisional, nonprovisional application, or international application designating the United States of America but does not ever contain a claim to a claimed invention that has an effective filing
date on or after March 16, 2013. The Office is also providing that an applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated as having a duty of disclosure with respect to the application that the transition application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.

Thus, an applicant in this situation is not required to conduct any additional investigation or analysis to determine the effective filing date of the claims in their applications.

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Posted on February 22, 2013, in Legislation, Patent, Procedure and tagged . Bookmark the permalink. Comments Off on USPTO Final Rule Changes Need for Statement about Transition Applications.

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