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By now, nearly all inventors have heard of the America Invents Act (the “AIA”) and some of the big changes in patent practice that are in effect, or which will be in effect in the near future.  While the AIA presents challenges in many areas, the unique characteristics of provisional patent filings present some really interesting and thought-provoking complexities.  This is especially true if you plan on filing a provisional patent application before March 16, 2013, which is the date that the “first to file” provisions of the AIA go into effect.

For example, if an inventor files his provisional application before March 16, 2013 he or she may think that the “old” patent rules (i.e., the “first-to-invent” rules) will apply to the non-provisional patent that the inventor plans on filing within the one-year period to file his or her non-provisional patent. However, the AIA may hold some surprising and potentially unpleasant surprises for the inventor. In particular, under the AIA, the content of the inventor’s related non-provisional application will determine whether the claims will be examined under the “old” (i.e., first-to-invent) or “new”(i.e., first-to-file) rules.

While this and many aspects of the AIA are quite confusing, the distinction between the “old” and “new” systems affects the type of disclosures that will be considered “prior art” and thus a potential bar to your ability to obtain a patent on your invention.  For the time being, we’ll put aside certain situations where a foreign applicant may actually want the new system under the AIA to apply to his or her patent filing.

U.S. applications filed after the first-to-invent provisions go into effect, but claiming  a priority date  before then (March 16, 2013), are termed ‘transitional’ applications. Thus, a non-provisional patent application filed on April 16, 2013, but claiming priority from a provisional application filed on April 16, 2012 would be ‘transitional’.  Since the application has a priority date before the March 16, 2013 effective date, the inventor may breathe a sigh of relief, thinking that the application will be examined under the “old” first-to-invent rules. What may surprise many inventors is that there is only one scenario where this will be the case for applications filed after March 16, 2013. To be examined under the old rules, the claims of the non-provisonal patent must be fully supported by the earlier filing upon which priority is based. In other words, any “new matter” claims  in the non-provisonal application will cause the Patent Office to examine the entire application under the new rules. In fact, the inventor cannot later try to cancel the new matter claims in the hopes of getting the application back under the old first-to-invent rules.

So, how might this affect the inventor and his or her patent application? Say the inventor had been diligently working on his invention and reduced it to practice before filing the provisional application. Later when he or she files the non-provisional application the examiner cites as prior art an article that was published after the inventor’s reduction to practice but before the provisional filing date. Under the old rules, the inventor would have the option of presenting evidence that he or she conceived of and reduced the invention to practice before the effective date of the cited prior art (i.e., the inventor could “swear behind” the cited prior art).  Under the new system, the inventor no longer has this option.

Thus, for transitional patent applications, inventors should carefully consider their strategy  and needs as they pertain to the particular patent application.  This is particularly true for the claim set presented in the non-provisisional application, as well as for U.S. non-provisional applications claiming priority from foreign applications. Later, we’ll present some potential strategies to increase an inventor’s chances of keeping his or her option to have the application examined under the old first-to-invent rules.