Transition Applications During The Stages of Prosecution

Jeffrey R. Filipek

April 27, 2015

U.S. patent applications that have an effective U.S. filing date on or after March 16, 2013, but a priority date before March 16, 2013 are referred to as “transition” applications.  If the application is a US PCT National Stage application, the effective US filing date is the PCT international filing date.

For transition applications, there is an issue as to which laws will apply to the application: the America Invents Act (AIA) or Pre-AIA law.  If a transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide “a statement to that effect” within the later of four months from the actual U.S. filing date, four months from the entry into the US PCT national stage, or sixteen months from the filing date of the prior-filed foreign application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013 is presented in the application. See 37 C.F.R. 1.55(j) and 1.78(a)(6). 

There could be claims in the U.S. transition application that are not supported by any of the application’s pre-March 16, 2013 priority applications, and are only supported by the U.S. application itself or a priority application that was filed on or after March 16, 2013, such as a U.S. parent application.  If there are any such “AIA-only” claims in a US application, then the applicant must make a statement to the USPTO indicating that fact.  This statement, or lack thereof, enables the USPTO to apply the correct set of laws in transition applications.  When making the 1.55/1.78 statement, it is not necessary for the applicant to point out which claim or claims are “AIA-only” claims, just to state that such a claim or claim exists in the application.  The USPTO has provided a box on the ADS form to make the 1.55/1.78 statement.

A transition application without a 1.55/1.78 statement will be treated under the pre-AIA laws, whereas in a transition application where the statement has been made, all claims in the application will be treated under the AIA laws.

An applicant does not have a “choice” of designating an application as AIA or pre-AIA. The applicant is required to provide a statement if a transition application contains or ever contained a claim to a claimed invention having an effective filing date on or after March 16, 2013, in which case the AIA laws apply, whereas otherwise, the pre-AIA laws apply.

The 1.55/1.78 “statement to that effect” must be made in a timely manner.  Timely means that for newly filed US applications, if the original claims contain any AIA-only claims, the 1.55/1.78 statement must be made within the later of four months from the actual U.S. filing date, (or if the application is a PCT national stage application, four months from the entry into the national stage), or sixteen months from the filing date of the prior-filed pre-March 16, 2013 priority application.  For newly added AIA-only claims, such as AIA-only claims added in response to an Office Action well after the above deadlines, then the 1.55/1.78 statement is due by the date that a first AIA-only claim is presented in the application.

There will be times, however, due to oversight for example, when the need for the “statement” is only discovered after the time periods set forth in the rules have lapsed.  An applicant should file a 1.55/1.78 statement as soon as the applicant becomes aware that the statement is necessary and has been unintentionally overlooked in order to make sure that the application will be examined under the correct statutory framework.  If the need for a 1.55/1.78 statement is not discovered until after the application is allowed, then in order to ensure that the 1.55 statement is considered by the USPTO and to ensure that the application is examined under the correct statutory framework, the applicant should file the 1.55/1.78 statement along with a Request for Continued Examination (RCE).  If the issue fee has already been paid, a petition to withdraw the application from issue will be needed as well when filing the RCE.  It is therefore important for applicants to determine as soon as possible whether a statement under 37 CFR § 1.55 or 1.78 needs to be made in U.S. transition applications.

One of the requirements when filing an RCE is that there be some sufficient “submission” for consideration in the RCE.  The requirement of a submission is met, for example, by an amendment or an information disclosure statement (IDS).  The USPTO has not yet made a determination as to whether the filing of the 1.55/1.78 statement is, on its own, a sufficient “submission” required for the filing of an RCE.  Therefore, it is recommended at this time that some other submission, such as an IDS, be submitted with the RCE along with the 1.55/1.78 statement in order to ensure that the USPTO will consider that the RCE has a sufficient required “submission.”

While Rules 55 and 78 set forth the due dates for the 1.55/1.78 statements with precision, there are no ramifications set forth in the rules for failure to file the statement, if necessary, by the due dates.  Presumably, the duty of good faith and candor before the USPTO would require that the 1.55/1.78 statement be made in a timely way under the rules, except for unintentional omissions.  In instances of unintentionally omitted statements, the duty of good faith and candor would also seem to require that the statement be made as soon as possible after the oversight is discovered.  However, the later into prosecution a late statement is made, the higher potential there is for problems to arise.  There will be times when simply filing the statement as soon as possible will not be enough.

Please consider the following prosecution time periods and scenarios.  Note that the following information and any recommendations are based on the current preliminary unofficial positions by the USPTO and are subject to change as the practice regarding these rules evolves.

Time Period 1: From Filing until Examination

Of course, there is no problem if the statement is filed within the later of four months from the actual U.S. filing date, four months from the entry into the US PCT national stage, or sixteen months from the filing date of the prior-filed foreign application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013 is presented in the application.  Statements in this time frame are on-time. 

From the time after the above acceptable time frame up until just before examination of the application by the Examiner, a late 1.55/1.78 statement will seemingly cause little or no potential harm.  If the statement is of record prior to examination, then the Examiner will have the information to be able to know that the AIA laws apply during the search and examination.  Therefore, in this stage of the prosecution, the unintentionally late statement should be made as soon as possible, before examination begins, in keeping with the duty of good faith and candor, and the lateness of the statement should not have any negative ramifications.

The recommendation by the USPTO for this time frame is simply that unintentionally late 1.55/1.78 statements be filed as soon as possible.

Time Period 2: After Examination Has Begun

For the time period after the substantive examination by the Examiner has begun, it is still of course necessary to file the statement as soon as possible to satisfy the duty of good faith and candor.  This time period would include the time after the first action on the merits is issued, but could also include the time frame between the beginning of examination by the Examiner and the actual issuance of the Office Action. 

The world of prior art that is applicable to applications under the AIA is broader than that applicable to applications under the pre-AIA laws.  If the examination was performed with the understanding by the Examiner that the pre-AIA laws apply, then arguably the Examiner will not have considered all the possible prior art applicable as prior art to the application under the AIA.

The current preliminary recommendation by the USPTO concerning late 1.55/1.78 statements made during this time period is that examiners will be able to make the next Office action final if the statement is submitted after the first action and before the next office action if the examiner has to make a new rejection.  Time will tell how these scenarios will play out in actual practice before the USPTO.  However, it is possible that the USPTO would treat a late filing of a 1.55/1.78 statement in this time period as necessarily causing the next Office Action to be made final, because of the possibility of uncovering prior art that is newly applicable due to the AIA status of the application, or even perhaps due only to the need to update the search in light of the newly understood AIA status of the application.  In this time period applicants can file the statement as soon as possible along with or before the filing of an amendment/response to the office action without filing an RCE and wait to see whether the examiner issues a final rejection.

After Final or After Notice of Allowance (but before patent issuance)

For the time period after a final rejection, or after a notice of allowance has been issued, while it is still necessary to file the 1.55/1.78 statement as soon as possible, the mere filing of the statement is not enough, and it necessary to file the statement along with a Request for Continued Examination (RCE), and an additional submission such as an IDS, in order to ensure examination under the AIA laws.  Additionally, if the issue fee has already been paid, a petition to withdraw the application from issue will be needed as well when filing the RCE.

After Issuance of the Patent

If the need for the 1.55/1.78 statement is determined only after the patent has issued, then the question is whether to file a reissue or reexamination, and whether these procedures will cure the problem. 

The current preliminary information from the USPTO is that after issuance, something more than just the filing of the statement would be necessary to institute a reexamination, reissue, or supplemental examination.  The USPTO would view the lack of a statement as a mere formality, and some actual reason for the reissue or reexamination would be needed.  So for example in a reexamination applicant would need some new piece of prior art, and for reissue or supplemental examination applicant would need to show that the patent is either wholly or partly inoperative for some other reason. 

The overarching requirement in all the time periods discussed above is that if a 1.55/1.78 statement is needed in an application, then the statement must be filed as soon as possible after the necessity of the statement is discovered.  Simply providing the USPTO with the late statement should suffice before first office action, whereas after first action but before second action, the late filed statement could lead to a final rejection.  After final rejection and after notice of allowance, the late statement must be made with an RCE, and also a petition to withdraw from issue if the issue fee has been paid.  However, the best course of action is to review the claims within the time periods set forth in 37 C.F.R. 1.55(j) and 1.78(a)(6), including whenever adding new claims or making claim amendments, and make the statement, if applicable, within the acceptable time periods.