The Ins and Outs of Transition Applications
March 11, 2013
Authored and Edited by Denise W. DeFranco
What is a transition application? A “transition application” is any nonprovisional application that is filed on or after March 16, 2013, that claims the benefit of the filing date of a pre-AIA (filed prior to March 16, 2013) provisional, foreign, nonprovisional, or PCT application that designates the United States. An application is considered a transition application if it meets these filing requirements regardless of whether or not it adds or claims new matter.
Where a transition application adds new matter and that new matter is claimed (or ever was claimed) in the transition application, the applicant must provide a statement to the U.S. Patent and Trademark Office (USPTO) indicating that the transition application contains at least one claim supported by the added matter. In other words, the statement is an affirmation that the transition application has at least one claim having an AIA effective filing date. If the transition application discloses but does not claim new matter, no statement is needed.
Why does the USPTO require a statement? The submission of a statement in a transition application assists the USPTO by alerting them that the transition application should be examined under AIA. Where no statement is provided, the USPTO will presume that the transition application does not claim new matter and will examine the applications under pre-AIA law.
When must a statement be made? If a statement is required, it must be submitted no later than 4 months from the actual filing date of the transition application, 16 months from the filing date of the priority application, or on the date when the first claim with an AIA effective filing date is presented.
According to the USPTO, if the applicant “reasonably believes on the basis of information already known” that the transition application does not, and did not at any time, claim new matter, no statement is required. See, e.g., Changes To Implement the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 31, 11027 (Feb. 14, 2013) (to be codified at 37 C.F.R. pt. 1)
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