A deluge of patent applications were filed at the United Stated Patent and Trademark Office on the day before central provisions of the new America Invents Act (AIA) went into effect on March 16, 2013. This rush to file indicates many inventors wish to preserve their patent status under the pre-AIA provisions.
The first-to-file provisions apply to any patent application that contains OR CONTAINED AT ANY TIME a claim having an effective filing date on or after March 16, 2013, and also apply to any patent application claiming priority of another application/patent that contains OR CONTAINED AT ANY TIME such a claim. America Invents Act § 3(n)(1) (emphasis added).
The “effective filing date” is defined as the filing date of the earliest application for which the application is entitled to priority under § 119, 365(a), or 365(b) or to the benefit of an earlier filing date under §120, 121, or 365(c) or the actual filing date of the invention, if no priority is claimed. 35 U.S.C. § 100(i)(1). Also, the application must comply with the written description and enablement requirements of 35 U.S.C. 112 in order for priority to properly be applied.
These rules lead to at least three possible scenarios. The first is one where both the actual U.S. filing date and the earliest priority date, if priority is claimed, are before March 16, 2013. These applications will be examined under the pre-AIA provisions. The second scenario is one where both the actual filing date and the earliest priority date are after March 16, 2013. These applications will be examined under the new AIA rules. The third scenario occurs when the earliest priority date is before March 16, 2013, but the actual U.S. filing date is after March 16, 2013. The claims determine whether these are applications are pre-AIA or under the new AIA rules. If the application contains one claim AT ANY TIME having an effective filing date after March 16, 2013, the first-to-file AIA rules apply, even if the claim is later canceled.
It is therefore critical to carefully analyze any new claims to be added or any claim amendments to be made during prosecution of a pending application. One slip can lead to a change in status for the pending application and any future applications that may claim priority to it. These considerations are especially important in the chemical arts where genus/species issues may come into play.
Those inventors who may want to file claims or amendments that could possibly be found to be outside the scope of the original disclosure might consider filing an additional continuation application to preserve the pre-AIA status for related applications that may be filed in the future.