Today, the PTO is publishing Final Rules and Examination Guidelines for the implementation of the first-to-file provisions of the AIA that take effect March 16, 2013. These documents are extremely lengthy and detailed.
The most important provisions to remember are that the new rules apply to all applications filed after the March 16, 2013 effective date, unless the application claims the benefit of an earlier filed application (foreign, international, provisional, or non-provisional) and all claims of the later-filed application are fully supported by the earlier filed application.
In the case where the later-filed application claims the benefit of an earlier-filed application, but includes at least one claim that is not fully supported by an earlier application, the rules require the applicant to provide a statement to that effect. This rule applies if the application contains such an unsupported claim at any time. It does not matter if the claim is later cancelled. The rules also contain strict time frames for applicants to file such a statement. “This procedure will permit the Office to readily determine whether the nonprovisional application is subject to the changes to 35 U.S.C. 102 and 103 in the AIA.”
Thus, the burden is squarely on the applicant to be certain that the application is to be governed by the first-to-invent rules rather than the first-to-file rules.
Several suggestions for avoiding any questions as to whether the application will be governed by the old rules or the new rules are listed below.
- File any possible application before the March 16 deadline. This includes any foreign application or international application where the deadline may be several months away, as well as any provisional applications that may not expire for several months, and even continuation, divisional, or continuation-in-part applications that are being contemplated prior to that date.
- After March 16, if you plan to file an application that will include some claims that are supported by an earlier application and some that are not, segregate the claims into separate applications. At least the entire application will not be “contaminated” by the claims that are not supported.
- Consider this issue carefully when preparing new applications or when adding new claims to pending applications.
First-to-invent rules are clearly more applicant friendly; applicants should seek to remain under those rules for as long as possible. The transition period will be one of confusion as to which rules should apply during prosecution and litigation. Planning ahead can only help avoid the confusion.
Patent Docs includes a good analysis of the rules and PTO responses to comments.