Chapter §7A.05 Effective Date for AIA §3 "First Inventor to File" Amendments

• Jurisdiction: United States

§7A.05 Effective Date for AIA §3 "First Inventor to File" Amendments

A critical threshold issue for patent practitioners, particularly those preparing to file or already prosecuting patent applications in the USPTO during the transition period from pre- to post-AIA regimes, is whether the AIA §3 amendments apply to their applications. Section 3(n) of the AIA controls the issue. Section 3(n) provides that the first inventor to file system implemented by the AIA (as well as its associated new definitions of "prior art") are strictly prospective.¹⁷⁷

Notably, the AIA does not incorporate the §3(n) transition provision into the text of the Patent Act. The transition provision reads:

(n) EFFECTIVE DATE.—

(1) IN GENERAL.—Except as otherwise provided in this section [AIA §3], the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—

(A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or

(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

(2) INTERFERING PATENTS. . . . ¹⁷⁸

This treatise interprets the statutory phrase "shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act" to mean that the AIA §3 amendments took effect on March 16, 2013 (i.e., 18 months after the AIA's September 16, 2011 enactment date).¹⁷⁹ In accordance with the two prongs of §3(n)(1), the AIA §3 first inventor to file amendments (to §102 and other sections of the Patent Act) apply to a patent or patent application in either of two situations: (1) under §3(n)(1)(A), because the effective filing date of a claim contained (at any time) in the patent or patent application is on or after March 16, 2013; or (2) under §3(n)(1)(B), because the patent or application makes a specific type of reference to another patent or application that contained (at any time) a claim having an effective filing date that is on or after March 16, 2013.

Both prongs of the §3(n)(1) transition provision in turn reference the "effective filing date" of a claimed invention in a patent or...