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Friday Jun 28, 2013

Message from Janet Gongola, Patent Reform Coordinator: USPTO Examination of an Application Under Pre-AIA (First-To-Invent) Or AIA (First-Inventor-To-File) Law and Submission of Compliant 1.55/1.78 Statements for Transition Applications

Since the March 16, 2013 effective date of the first-inventor-to-file provision, the USPTO and patent applicants are prosecuting patent applications under two legal frameworks for prior art—first-to-invent provisions and first-inventor-to-file provisions.  There are three possible scenarios that may arise in terms of which framework to apply to an application.  These three scenarios are depicted in the graphic below. 

  • First, as shown in the far left green circle, if an application was filed before March 16, 2013 and all domestic benefit or foreign priority claims made in the application are to applications filed before March 16, 2013, then the application is subject to examination under the pre-AIA law (first-to-invent).
  • Second, as shown in the far right blue circle, if an application is filed after March 16, 2013 and all domestic benefit or foreign priority claims made in the application are to applications filed on or after March 16, 2013, then the application is subject to examination under the AIA law (first-inventor-to-file).
  • Third, as shown in the middle red circle, if an application is filed after March 16, 2013 but all domestic benefit or foreign priority claims made in the application are to applications filed before March 16, 2013, then the applicant must file a statement under 37 CFR 1.55 or 1.78 (1.55/1.78 Statement) with the Office if the application contains claims to subject matter not supported by the domestic benefit or foreign priority filing and therefore should be examined under the AIA law (first-inventor-to-file).  The USPTO has designated an application that falls into this third scenario as a "transition" application, and they are the focus here.

Chart to determine if AIA applies based on filing and priority/benefit claim dates

SCOPE OF 1.55/1.78 STATEMENT IN TRANSITION APPLICATION

In filing a 1.55/1.78 Statement, an applicant simply needs to state that the application contains at least one claims that does not find support in one of the applications to which benefit or priority is sought.  Here are example statements that an applicant could file:

  • This application filed on or after March 16, 2013 which claims benefit or 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 benefit or 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.

Notably, the applicant is not required to identify the subject matter lacking support in the pre-March 16 domestic benefit or foreign priority filings.  Nor is the applicant required to identify the specific claims drawn to the newly-added subject matter.  To make it easy for an applicant to provide a 1.55/1.78 Statement to the Office, the USPTO has included a 1.55/1.78 Statement on the Application Data Sheet (ADS) with a check box that an applicant can use and thereby meet the statement requirement.  More information about the use of the 1.55/1.78 Statement on an ADS is discussed below.

RATIONALE FOR 1.55/1.78 STATEMENT IN TRANSITION CASE

The Office is requiring applicants to file 1.55/1.78 Statements for transition applications when there are newly-added claims that lack support in an application to which benefit or priority is sought that is filed before March 16, 2013, so that examiners apply the correct legal framework (i.e., first-to-invent or first-inventor-to-file) from the outset of examination.  On the face of a transition application, it appears by virtue of the pre- March 16, 2013 domestic benefit or foreign priority claims that the application is subject to examination under pre-AIA law (first-to-invent).  However, because the application was filed after March 16, 2013, it could be subject to examination under the  AIA (first-inventor-to-file) if any newly-claimed subject matter is not supported by the domestic benefit or foreign priority filings.  Because USPTO cannot readily ascertain whether the application contains claims to such newly-added subject matter, an applicant must specify to the Office whether the AIA (first-inventor-to-file) applies via a 1.55/1.78 Statement.  Absent a 1.55/1.78 Statement from an applicant, the Office will examine the application under the pre-AIA law (first-to-invent).

USE OF CHECK BOX ON ADS TO MAKE 1.55/1.78 STATEMENT

By marking the check box on an Application Data Sheet (ADS) for a 1.55/1.78 Statement, an applicant is designating that the application should be examined under the AIA (first-inventor-to-file) by virtue of the inclusion of claimed subject matter which is not supported in an earlier filed application to which priority or benefit has been made.  Indeed, as shown in the excerpt from an ADS below, there is a notation accompanying the 1.55/1.78 Statement emphasizing that the application will be examined under the first-inventor-to-file provisions of the AIA if the check box is marked.

FITF checkbox

Applicants may want to carefully review application filings made since the March 16, 2013 effective date of the first-inventor-to-file provision to ensure that they correctly used the 1.55/1.78 Statement check box on the ADS.  The USPTO advises applicants who filed applications after March 16, 2013, to conduct this review because some applicants appear to have erroneously marked the 1.55/1.78 Statement check box on the ADS.  Specifically, some applicants have filed applications as continuations or divisionals of parent applications that were filed before March 16, 2013, and at the same time, marked the 1.55/1.78 Statement check box on the ADS.  These two actions appear to be in conflict.  Identification of an application as a continuation or divisional of a parent application filed before March 16, 2013 makes the application subject to pre-AIA law (first-to-invent).   By contrast, selection of the 1.55/1.78 Statement check box makes the application subject to the AIA (first-inventor-to-file).  In such conflict situations, the USPTO is contacting the applicant to ascertain the propriety of the statement made via the checkbox.  Additionally, applicants must correct the error—be it the identification of the application as a continuation-in-part or the de-selection of the 1.55/1.78 Statement check box.

WHAT TO DO IF A 1.55/1.78 STATEMENT WAS FILED IN ERROR

In the situation where an applicant erroneously identified a transition application as claiming subject matter not supported by the earlier filed domestic benefit or foreign priority application filing which was before March 16, 2013, the applicant can correct the error by filing a separate paper to rescind the statement.  If the applicant files the rescission electronically, the applicant should select the document description “Make/Rescind AIA (First Inventor to File) 1.55/1.78 Stmnt” to properly index the paper.  The USPTO does not have a specific rescission form; an applicant merely needs to state that all the claims in the application find support before March 16, 2013 and therefore that the 1.55/1.78 Statement previously submitted to the Office was filed in error.  

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