United States
Transitional Provisions General: • The America Invents Act (AIA) introduced a raft of changes between 2011 and 2013, some of which were phased in, or depend upon what happens during the prosecution of a case. For a list of all the changes, see http://www.uspto.gov/aia_implementation/aia-effective-dates.pdf. • Most of these provisions are now unlikely to be a topic in FD1, but are included for completeness. • US and PCT(US) applications filed before 16 March 2013 will stay under the old FTI system, and • US and PCT(US) applications with a priority date on or after 16 March 2013 will be under the new FITF system, but • US and PCT(US) applications claiming a priority date before 16 March 2013 from an earlier application, but filed after 16 March 2013, will qualify for the old FTI system, unless… the application contains, at any point in its existence, a claim that is not entitled to the priority… in which case the entire application is irreversibly re-classified as being under the new FITF system. • Hence one can easily envisage a case where, for example, an applicant has two priority applications GB1 and GB2 filed before 16 March 2013, and then files US applications US1 and US2 after 16 March 2013, where US2 claims additional subject matter with respect to GB2. In this case, US1 is prosecuted under the old FTI system whilst US2 is prosecuted under the new FITF system. Consequently, the whole of US2 may be open to additional prior art, compared with US1. • Similarly one may envisage the case where US2 merely contains additional subject matter but does not claim it. Then something happens necessitating a claim amendment to include the new subject matter, so that US2 switches from FTI to FITF – which in turn may make a further piece of prior art now citable under the broader novelty provisions of new § 102. – However, the likelihood of this scenario being used in FD1 now is very small. • Note that if you do add subject matter as per the US2 example above, then you are required to notify the USPTO of the existence of such subject matter, and also whether it has been claimed, within four months of filing the application (or four months from national phase entry), and/or when an amendment creates such a claim during prosecution. Failure to notify results in loss of your priority claim. As noted elsewhere herein, however, the number of pending cases for which this could apply is becoming ever smaller.
Miscellaneous Changes by the AIA Applicant: • The applicant no longer needs to be the inventor but can be the assignee. – An oath / declaration by the actual inventor(s) is still required to state that they are the inventor and authorise filing. File within the time provided by the Notice to File Missing Parts to keep the patent term adjustment (the additional patent term based on the time over 14 months before receiving the 1st OA or NoA).
Study Guide to the Patents Acts (2021 edition)
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