[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131–MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]
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: (1) the actual filing date of the patent or the application for the patent containing the claimed invention; or (2) 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 under 35 U.S.C. 119, 120, 121, 365, or 386. See 35 U.S.C. 100(i)(1).
In examining applications subject to AIA 35 U.S.C. 102, the effective filing date is the actual filing date of the U.S. application, unless situation (A), (B), (C), or (D) as set forth below applies. Note that the actual filing date of an application that entered the national stage under 35 U.S.C. 371 is the international filing date (see 35 U.S.C. 363 and MPEP § 1893.03(b)); the actual the filing date of an international design application in the United States is the date of international registration determined by the International Bureau under the Hague Agreement (in the absence of a petition for review)(see 37 CFR 1.1023 and MPEP § 2908).
- (A) If the application is a continuation or divisional of one or more earlier U.S. applications or international applications and if the requirements of 35 U.S.C. 120, 365(c), or 386(c) have been satisfied, the effective filing date is the same as the earliest filing date in the line of continuation or divisional applications.
- (B) If the application is a continuation-in-part of an earlier U.S. application or international application, any claims in the new application not supported by the specification and claims of the parent application have an effective filing date equal to the actual filing date of the new application. Any claims which are fully supported under 35 U.S.C. 112 by the earlier parent application have the effective filing date of that earlier parent application.
- (C) If the application properly claims benefit under 35 U.S.C. 119(e) to a provisional application, the effective filing date is the filing date of the provisional application for any claims which are fully supported under 35 U.S.C. 112 by the provisional application.
- (D) If the application claims foreign priority under 35 U.S.C. 119(a)-(d), 365(a) or (b), or 386(a) or (b), the effective filing date is the filing date of the foreign priority document if the claim is adequately supported in the foreign priority document.
See MPEP § 1893.03(c) for a discussion of claims for priority to, or the benefit of, the filing date of a prior-filed foreign or domestic application in an application that entered the national stage under 35 U.S.C. 371. See MPEP §§ 211.01(c) and 1895 for additional information on determining the effective filing date of a continuation, divisional, or continuation-in-part of a PCT application designating the U.S. See also MPEP §§ 1895.01 and 1896 which discuss differences between applications filed under 35 U.S.C. 111(a) and international applications that enter national stage under 35 U.S.C. 371.
See MPEP §§ 2920.05(d) and 2920.05(e) for a discussion of claims for priority to, or the benefit of, the filing date of a prior-filed foreign or domestic application in international design applications.
The one-year grace period (as defined in MPEP § 2151) 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. See MPEP § 2133.01 for a discussion of relevant pre-AIA case law in the context of continuation-in-part applications. 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. MPEP § 2151 and MPEP § 2159 discuss the applicability date provisions of section 3 of the AIA.
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. See 35 U.S.C. 100(i)(2).