2152.01 Effective Filing Date of the Claimed Invention
This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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Pre-AIA 35 U.S.C. 102(a) and (e) reference patent-defeating activities occurring before the applicant invented the claimed invention.
- AIA 35 U.S.C. 102(a)(1) and (a)(2) make no mention of the date of the invention, but instead concern documents that existed or activities that occurred “before the effective filing date of the claimed invention.”
- As a result, it is no longer possible to antedate or “swear behind” certain prior art disclosures by making a showing under 37 CFR 1.131 that the applicant invented the claimed subject matter prior to the effective date of the prior art disclosure.
The AIA defines the term “effective filing date” for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) as the earliest of:
- the actual filing date of the patent or the application for the patent containing the claimed invention; or
- the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date.
Thus, the one-year grace period in AIA 35 U.S.C. 102(b)(1) is measured from the filing date of any U.S. or foreign patent application to which the patent or application is entitled to benefit or priority as to such invention, whereas the one-year grace period in pre-AIA 35 U.S.C. 102(b) is measured from only the filing date of the earliest application filed in the United States (directly or through the PCT).
- As under pre-AIA law, the effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis.
- That is, the principle that different claims in the same application may be entitled to different effective filing dates vis-à-vis the prior art remains unchanged by the AIA.
However, it is important to note that although prior art is applied on a claim-by-claim basis, the determination of whether pre-AIA 35 U.S.C. 102 and 35 U.S.C. 103 or AIA 35 U.S.C. 102 and 103 apply is made on an application-by-application basis.
Finally, the AIA provides that the “effective filing date” for a claimed invention in a reissued patent or application for a reissue patent shall be determined by deeming the claim to the claimed invention to have been contained in the patent for which reissue was sought.
