First Inventor to File

Effective Date of First-Inventor-to-File Provisions

Question FITF1000: What is the effective date of the first-inventor-to-file provisions?

The effective date for the first-inventor-to-file provisions is March 16, 2013.

Definition of Effective Filing Date for the Claimed Invention

Question FITF1100: Under the new section 35 U.S.C. 102(a)(1) introduced by the AIA, what does the term “effective filing date” of a claimed invention mean?

The “effective filing date” of a claimed invention is defined to be the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the nonprovisional application claims domestic benefit or foreign priority of another application that describes the subject matter. For example, the effective filing date could be the filing date of (i) an earlier-filed nonprovisional application or international application designating the United States (benefit under 35 U.S.C. 120/121); (ii) a provisional application (benefit under 35 U.S.C. 119(e)); (iii) a foreign application (priority under 35 U.S.C. 119(a)-(d)); or (iv) a PCT (international) application under 35 U.S.C. 365(c).

Applying First Inventor to File Provisions to Patent Applications

Question FITF1200: Do the first-to-invent provisions apply to all applications filed before March 16, 2013?

Yes. The first-to-invent provisions apply to applications filed before March 16, 2013.

Question FITF1210: Do the first-inventor-to-file provisions apply to all applications filed on or after March 16, 2013?

No. Whether an application filed on or after March 16, 2013 is subject to the first-inventor-to-file provisions depends on the effective filing date of the claimed invention. If all of the claims have an effective filing date before March 16, 2013, then the application will be subject to the first-to-invent provisions. Alternatively, if all of the claims have an effective filing date on or after March 16, 2013, then the application will be subject to the first-inventor-to-file provisions. Additionally, if some of the claims have an effective filing date before March 16, 2013, and other claims have an effective filing date on or after March 16, 2013, then the application will be subject to the first-inventor-to-file provisions. The first-inventor-to-file provisions apply to an application that contains, or ever contained, a claim to an invention having an effective filing date on or after March 16, 2013.

Question FITF1220: If an applicant filed a nonprovisional patent application before March 16, 2013, but examination begins after March 16, 2013, will the application be subject to the first-inventor-to-file provisions?

No. An application filed before March 16, 2013 will not be subject to the first-inventor-to-file provisions. Instead, the application will be subject to the first-to-invent provisions of the law in effect on March 15, 2013.

Question FITF1230: If an applicant files a nonprovisional application on April 1, 2013, and may properly claim domestic benefit for all of the claims to a provisional application filed on April 1, 2012, will the application be subject to the first-inventor-to-file provisions?

No. The nonprovisional application will be examined under the first-to-invent provisions because the all of claims in the nonprovisional are supported by the provisional application filed before March 16, 2013. The provisional application need not have included claims.

Question FITF1240: If an applicant files a nonprovisional application on April 1, 2013, properly claiming domestic benefit for some of the claims to a provisional application filed on April 1, 2012, and also adds new claims not supported by the provisional application, will the application be subject to the first-inventor-to-file provisions?

Yes. The nonprovisional application will be examined under the first-inventor-to-file provisions because the application contains claims newly added after the first-inventor-to-file provisions became effective on March 16, 2013.

Question FITF1250: If an applicant enters the national stage (35 U.S.C. 371) in the United States after March 16, 2013, where the claims in the PCT application have an effective filing date before March 16, 2013, will the national stage application be subject to the first-inventor-to-file provisions?

No. The first-to-invent provisions will apply to the national stage application because the effective filing date of all claims is before March 16, 2013.

Question FITF1260: If an applicant files a nonprovisional application on or after March 16, 2013, claiming domestic benefit of or foreign priority to a different application filed before March 16, 2013, but subsequently deletes the domestic benefit or foreign priority claim during prosecution, will the application switch from being subject to the first-to-invent provisions to the first-inventor-to-file provisions?

Yes. When the domestic benefit or foreign priority claim is deleted, the nonprovisional application will switch from being subject to the first-to-invent provisions to the first-inventor-to-file provisions because the claims will have an effective filing date that is on or after March 16, 2013.

USPTO Electronic System Indications of First Inventor To File Applications

Question FITF1400: How will an applicant know whether his/her application will be examined under the first-to-invent provisions of pre-AIA law or the first-inventor-to-file provisions of the AIA?

An applicant will be notified of the statutory framework to be applied to his/her application in a variety of ways.

First, there will be a viewable field in the application contents tab of PRIVATE PAIR (for unpublished applications) and a similar field in PUBLIC PAIR (for published applications and patents) indicating either “AIA (First Inventor To File): yes” for an application to be examined under the first-inventor-to-file provisions or “AIA (First Inventor To File): no” for an application to be examined under the first-to-invent provisions. The field will show a hyphen for applications not yet ready for examination.

Second, certain form paragraphs used for Office actions will state whether the application is examined under the first-to-invent provisions of pre-AIA law or the first-inventor-to-file provisions of the AIA.

Third, certain USPTO forms that accompany Office actions will indicate “AIA (First Inventor to File) Status: Yes” for an application to be examined under the first-inventor-to-file provisions or “AIA (First Inventor to File) Status: No” for an application to be examined under the first-to-invent provisions.

Patents Awarded to Inventors

Question FITF1500: Once the first-inventor-to-file provisions become effective on March 16, 2013, would someone who copies my idea and files a patent application on the subject matter before I do be entitled to a patent?

No. In accordance with 35 U.S.C. 101, only inventors are entitled to a patent. Someone who copies another’s idea cannot be an inventor and therefore will not be entitled to a patent.

Question FITF1510: For applications examined under first-inventor-to-file provisions, how will an examiner address a situation of improper inventorship since the pre-AIA basis for rejecting under 35 U.S.C. 102(f) does not exist?

In the rare situation where it clear that the application does not name the correct inventorship and the applicant has not filed a request to correct inventorship under 37 C.F.R. 1.48, the Office will reject the claims under 35 U.S.C. 101 and 35 U.S.C. 115.

Prior Art and Exceptions

Question FITF1600: Under the first-inventor-to-file provisions, does a public use or sale activity have to occur “in this country” to qualify as prior art?

No. Under the first-inventor-to-file provisions, a prior use or sale activity may occur anywhere in the world and qualify as prior art under AIA 35 U.S.C. 102(a)(1). If such public use or sale activity were by the inventor, either directly or indirectly, and not more than one year before the effective filing date of the claimed invention, then the public use or sale activity would fall into a prior art exception under 35 U.S.C. 102(b)(1)(A).

Question FITF1610: Many plant breeders grow or sell their seeds outside the United States prior to filing for a plant patent in the United States. Under AIA 35 U.S.C. 102(a)(1), will seeds grown or sold outside the United States be available as prior art?

Yes. The public use or sale of the seeds outside the United States may constitute prior art under AIA 35 U.S.C. 102(a)(1), unless an exception provision in AIA 35 U.S.C. 102(b)(1) applies.

Question FITF1620: When does a U.S. patent or a published U.S. or PCT application become available as prior art?

A U.S. patent or published U.S. or PCT application becomes available as prior art on date that the U.S. patent or published application is “effectively filed.” The date that a U.S. patent or U.S. or PCT published application is “effectively filed” is the earlier of: (i) the actual filing date of the U.S. patent or U.S. or PCT published application; or (ii) the filing date of the earliest application to which the U.S. patent or U.S. or PCT published application is entitled to claim a right of foreign priority or domestic benefit which describes the subject matter.

Question FITF1630: What is the effective prior art date of a Japanese patent application publication that was filed on December 12, 2013, and published on May 12, 2015?

A Japanese patent application publication has a prior art effect under AIA 35 U.S.C. 102(a)(1) as of its publication date—May 12, 2015. Prior art under 35 U.S.C. 102(a)(2), which becomes available as the basis for a rejection as of the date that it was “effectively filed,” is limited to U.S. patents, U.S patent application publications, and published PCT applications which designate the United States.

Question FITF1640: My co-inventor disclosed our invention at a trade show one month before the filing date of our U.S. nonprovisional application. Will that disclosure prevent us from obtaining a patent?

No. Regardless whether the application was filed before or after the first-inventor-to-file provisions take effect on March 16, 2013, a disclosure made one month prior to a filing date is not prior art to the claimed invention by virtue of a one-year grace period available to an inventor.

Question FITF1650: Does the exception to prior art under the common ownership provision in AIA 35 U.S.C. 102(b)(2)(C) apply if used for an obviousness rejection?

Yes. The commonly owned disclosure exception of AIA 35 U.S.C. 102(b)(2)(C) applies to prior art defined under AIA 35 U.S.C. 102(a)(2), regardless whether that art is used in making an anticipation or an obviousness rejection.

Statement Under 1.55 or 1.78

Question FITF1700: If an applicant intends to file a statement indicating that his/her application contains a claim that is supported only by an application filed on or after March 16, 2013, where should the applicant place the statement?

An updated version of the application data sheet or ADS (Form PTO/AIA/14) and the 371 Transmittal Letter (Form PTO-1390), each with a checkbox, are available for an applicant to make the statement on filing. For follow-on papers, an applicant may provide the statement or rescind such a statement in a separate document. Applicants must select the document description “Make/Rescind statement under 37 CFR 1.55/1.78” to index this separate document when filing online.

Question FITF1710: If an applicant files a statement, how will the USPTO acknowledge the statement?

If an applicant uses the updated Application Data Sheet (Form PTO/AIA/14) which provides a checkbox so that an applicant can make the statement, the Office of Patent Application Processing (OPAP) will indicate on the filing receipt that such a statement was made. Alternatively, if an applicant uses the updated 371 Transmittal Letter (Form PTO-1390) which provides a checkbox so that an applicant can make the statement, OPAP will indicate on the filing receipt that such a statement was made. Lastly, if an applicant makes the statement in a separate paper during the course of prosecution, the Technology Center staff will indicate on a corrected filing receipt that such a statement was made.

Question FITF1720: If an applicant erroneously files a 1.55/1.78 statement indicating that an application filed on or after March 16, 2013 with a domestic benefit or foreign priority claim before March 16, 2013, contains a claim(s) lacking support in the application filed before March 16, 2013 (i.e., should be examined under the first-inventor-to-file provision), how should an applicant correct the error?

If an applicant erroneously submits a statement under 37 CFR 1.55 or 1.78, the applicant should file a separate paper to rescind the statement. If the applicant files the separate paper of rescission electronically, the applicant should select the document description " Make/Rescind statement under 37 CFR 1.55/1.78" to properly index the paper.

Question FITF1730: If an applicant is required to submit a statement under 37 CFR 1.55 or 1.78 to indicate that an application filed on or after March 16, 2013 with a domestic benefit or foreign priority claim before March 16, 2013, contains claim(s) lacking support in the application filed before March 16, 2013 (i.e., should be examined under the first-inventor-to-file provision), what is an example of a compliant statement?

Here are four examples of a compliant 1.55/1.78 statement that an applicant may file with the Office:

- This application filed on or after March 16, 2013 which claims priority to an application filed before March 16, 2013, contains one or more claims NOT entitled to a filing date before March 16, 2013.
- This application claims priority to an application filed before March 16, 2013, and contains one or more claims NOT entitled to a filing date before March 16, 2013.
- This application contains one or more claims NOT entitled to a filing date before March 16, 2013.
- This application contains a claim having an effective filing date on or after March 16, 2013.

Interim Copies of Foreign Priority Documents

Question FITF1800: If an applicant submits an interim copy of a foreign priority application, will the applicant still need to provide a certified copy of the foreign priority document? How will an interim copy submission be reflected in the USPTO’s records?

Yes. If an applicant files an interim copy of a foreign priority application, the applicant must provide a certified copy of the foreign priority document before patent grant in order to perfect the priority claim. An interim copy of a foreign priority application will be entered into the file wrapper of the application in which it was filed and labeled as “Interim copy of Foreign Priority Document.”

Question FITF1810: Are there any special instructions for filing an interim copy of the foreign priority application?

Yes. Main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and possibly Sequence Listing or Computer Program Listings, along with the separate cover sheet required by 37 CFR 1.55(i), may be filed as a single PDF file via EFS-Web (or as a single paper document). The PDF file will be stored in the Image File Wrapper of the application, and applicants must select the document description “Interim copy of Foreign Priority Application” to index this document when filing online.

Application parts that were filed in a foreign patent office only as plain text computer files (e.g. TXT file), such as a Sequence Listing, lengthy Tables(s), or Computer Program Listing appendix, may be filed as a TXT file via EFS-Web (or on compact disc). When filing online via EFS-Web, applicants must select the document description “Interim copy of Foreign Priority (text file)” to index a plain text file part of the application. Please note that EFS-Web will not perform preliminary validation on an interim sequence listing text file, and that an interim sequence listing over 25 MB must be split into multiple files under the 25 MB upload limit. If a TXT file is filed on compact disc, the compact disc must be labeled as “Text File of Interim Copy of Foreign Priority Application” along with (1) the country code and application number of the foreign priority document, (2) at least two pieces of identifying information for the application (e.g., application number, docket number, title, etc.) in which the interim copy of the foreign application was filed, and (3) if multiple compact discs are submitted, a label indicating their order (e.g. “1 of X”).

The file name of each TXT file must begin with the country code and application number of the foreign priority application of which it is a part (any punctuation or space in the application number must either be omitted or replaced with a dash “-“ or underscore ”_” character); e.g. “EP111838637_SequenceListing.txt” or “EP_11183863_7_Table 2”. Where an original TXT file must be split into multiple parts, the file name for each part should indicate the order; for example, EP111838637_SeqList_part1of2.txt and EP111838637_SeqList_part2of2.txt.