October 16, 2021

Volume XI, Number 289

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A Look at AIA § 3(n)(2): Part Two of a Two-Part Series on AIA § 3(n) Effective Filing Date Provisions

Interpreting the language of the America Invents Act (AIA) remains an exciting challenge. The effective date provisions of the AIA transition sections 3(n)(1) and 3(n)(2) are no exceptions. Part 1 of this series discussed a recent Patent Trial and Appeal Board (“Board”) decision interpreting the language of § 3(n)(1) . AIA § 3(n)(1) defines the effective date of the AIA’s amendments to 35 U.S.C. §§ 102 and 103.

In this Part 2 installment, we discuss AIA § 3(n)(2). AIA § 3(n)(2) covers how certain sections of the old pre-AIA law will continue to apply to all claims of some patents along with the new AIA law. 

(n) EFFECTIVE DATE. —

(1) IN GENERAL. — Except as otherwise provided in this section, 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 [March 15, 2013], 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.—The provisions of sections 102(g), 135, and 291 of title 35, United States Code, as in effect on the day before the effective date set forth in paragraph (1) of this subsection [March 15, 2013], shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent contains or contained at any time

(A) a claim to an invention having an effective filing date as defined in section 100(i) of title 35, United States Code, that occurs before the effective date set forth in paragraph (1) of this subsection [March 15, 2013]; 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.

(Emphasis and bracketed dates added.)

AIA § (3)(n)(2) expressly brings pre-AIA §§ 102(g), 135, and 291 into play for certain patents and applications.[1]

As seen below, the provisions of AIA § 3(n) give rise to the following three scenarios:

1. If all claims in a patent application have an effective filing date before March 16, 2013, only the pre-AIA law applies and neither section 3(n)(1) nor 3(n)(2) of the AIA applies.

2. If all claims in a patent application have an effective filing date after March 15, 2013, the AIA prior art provisions, exceptions, and definitions apply through transition section 3(n)(1).

3. However, if a patent application contains (or ever contained) at least one claim with an effective filing date before March 16, 2013, and at least one claim with an effective filing date after March 15, 2013 (so-called “transition applications”), the AIA law applies ALONG WITH pre-AIA §§ 102(g), 135, and 291.[2]

Takeaways

As the more creative among our readers have likely determined, there may be times when a patent drafter deliberately creates a “transition application,” such as to potentially eliminate a Metallizing Engineering forfeiture if an inventor secretly used a claimed process more than a year before applying for patent protection, or to take advantage of the provisions of AIA 35 U.S.C. §102(c) to eliminate a novelty problem for inventions that result from joint research agreements.  However, careful consideration must be made of the implications of such a decision, including expanding the temporal and geographic scope of the available prior art available (since all the AIA prior art provisions will apply).


[1]This means lab notebooks still may be important! 

[2]AIA Section 3(n); 78 Fed. Reg. 11,030 (Feb. 14, 2013).

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 267
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M. Paul Barker Attorney Patent Prosecution Finnegan Law Firm Palo Alto
Partner

Paul Barker has a diverse practice, including interferences, post-grant proceedings, patent prosecution, arbitration, opinions, due diligence, and strategic counseling. He focuses in the areas of biotechnology, pharmaceuticals, and diagnostics. 

In his patent office practice, Paul prepares patent applications and responses to office actions, represents clients in reexamination and reissue proceedings, and prepares briefs to the appeal board. He has also prepared numerous validity and infringement opinions and represented clients in due diligence...

650-849-6620
Michele C. Bosch Attorney Chemical and Metallurgical Group Finnegan Washington DC
Partner

Michele Bosch leads the firm’s Chemical and Metallurgical practice group. Her practice includes many areas of intellectual property law with an emphasis on post-grant proceedings, including inter partes review (IPR), post-grant review (PGR) and patent interference proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO); portfolio management and analysis; due diligence investigations; pre-litigation analysis; and comprehensive strategic client counseling in the life sciences, consumer product, petrochemical and organic...

202-408-4193
Jill K. MacAlpine Patent Attorney Finnegan Washington DC
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Jill MacAlpine, Ph.D., leader of the firm’s patent office practice, focuses on strategic counseling, prosecution, and patent litigation, primarily in the chemical and pharmaceutical areas. With over 15 years of experience in intellectual property law, she spends a significant portion of her time involved in pre-litigation analyses, due diligence investigations, opinion preparation, and strategic client counseling, including patent portfolio management, Orange Book listings of patents covering FDA-approved drugs, and patent term extensions.

As a...

202-408-4105
Amanda Murphy IP Lawyer Finnegan
Partner

Amanda Murphy, Ph.D., focuses her practice on strategic client counseling, portfolio management, and patent prosecution for a range of clients, including small startup companies, research foundations, and large biotechnology and pharmaceutical companies.

Amanda provides patentability opinions, prepares new patent applications, prosecutes U.S. and foreign applications, and represents appellants before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). She has experience in prosecuting inter partes ...

202 408 4114
Adriana Burgy Chemical Patent Attorney Finnegan Law Firm
Partner

Adriana Burgy’s practice focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. Adriana brings a unique perspective by blending her legal, technical, and industry experience. 

Recognized by The Legal 500 U.S. for patent prosecution, re-examinations, and post-grant proceedings, Adriana counsels her clients on a diverse range of patent issues. She has managed the prosecution of hundreds of patent applications domestically and internationally...

202-408-4345
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