Post-AIA Applications | Patently-O

by Dennis Crouch

The America Invents Act became law in September 2011, but the first-to-invent provisions only took effect for patent applications filed after March 16, 2013.  Most US utility applications claim back to an earlier application filing: either prior utility patent application, provisional patent application, PCT application, or foreign patent application.  We apply pre-AIA status so long as every claim within the chain-of-priority has an effective filing date prior to the March 2013 date. AIA § 3(n). Otherwise, post-AIA law applies.  Id.

For the chart below, I pulled up records from US patent application publications from the past 10 years and looked at whether the applicant claimed pre-AIA or post-AIA status.

I have marked three portions of the chart with letters A, B, and C.

• A – The first set of published applications claiming post-AIA status started being released about 6-months after the March 2013 date.  Although applications are generally published 18-months after the filing date, the PTO calculates this from the earliest US/PCT date being claimed. For the most part, these are applications that claim priority back to a provisional application filing, but likely involved new-matter being added to the utility application and rewriting of the claims. Because of the new-matter, the applicant was unable to claim that every claim had  a pre-AIA effective filing date.
• B – Once we hit the 18-month mark applications started publishing regularly.  This block is a bit of a mess, but what we have here, for the most part are applications relying upon a PCT filing, and that 30-month deadline.
• C – Throughout both B and C, we also have applications publishing that claimed priority back to pre-AIA utility applications.   Once the noise of the PCT filings ended, we start to see something of a steady decay as fewer applications are filed claiming priority so-far-back.  As of November 2022, about 3.5% of the new publications claimed pre-AIA status. These are applications typically filed earlier in 2022 that claim priority back to an original filing from 9+ years go.

Side note – The chart above is based upon applicant-reported data that the PTO has largely accepted.  Some percentage of these Pre/Post AIA claims likely wrong — and could even become wrong ex post based upon interpretive changes in the law of enablement and written description.  As far as I recall, the Federal Circuit has not yet had the opportunity to interpret the priority provision found in AIA § 3(n).