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 2150    Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First Inventor To File Provisions of the Leahy-Smith America Invents Act

MPEP SECTION SUMMARY

This section covers examination guidelines for 35 U.S.C. 102 and 103 as amended by the first inventor to file provisions of the AIA. Essentially, the changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any application filed before March 16, 2013. Submission of an amendment including a claim that includes new matter on or after March 16, 2013, also does not affect an application’s status as a pre-AIA application.

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The Leahy-Smith America Invents Act (AIA) revised 35 U.S.C. 102 and thereby, the standard to determine what prior art is available during examination of an application.

The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any application filed before March 16, 2013.

Applications filed before March 16, 2013, are governed by pre-AIA 35 U.S.C. 102 and 103 (i.e., the application is a pre-AIA (first to invent) application (hereinafter “pre-AIA application”)).

  • Neither the filing of a request for continued examination, nor entry into the national stage, constitutes the filing of a new application.
  • Accordingly, even if a request for continued examination under 37 CFR 1.114 is filed on or after March 16, 2013, in an application that was filed before March 16, 2013, the application remains subject to pre-AIA 35 U.S.C. 102 and 103.

Submission of an amendment including a claim that includes new matter on or after March 16, 2013, also does not affect an application’s status as a pre-AIA application.

  • Similarly, a PCT application filed under 35 U.S.C. 363 before March 16, 2013, is subject to pre-AIA 35 U.S.C. 102 and 103, regardless of whether the application enters the national stage before or after March 16, 2013.

Applications filed on or after March 16, 2013 are also subject to pre-AIA 35 U.S.C. 102 if the application has never contained a claim with an effective filing date on or after March 16, 2013 and has never claimed the benefit of an application that ever contained such a claim.

 

» 2151 Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA